Judgment of the General Court (Ninth Chamber) of 10 March 2021 –

Kerry Luxembourg v EUIPO – Ornua (KERRYMAID)

(Case T‑693/19)

(EU trade mark – Opposition proceedings – Application for EU word mark KERRYMAID – Earlier EU figurative mark Kerrygold – Relative ground for refusal – Geographical name – Dominant element – Peaceful coexistence – Article 8(1)(b) of Regulation (EC) No 207/2009 – Application of the law ratione temporis)

1. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Re-evaluation of the facts in the light of evidence produced for the first time before it – Precluded (Council Regulation No 207/2009, Art. 65) (see paras 33, 34)

2. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 40, 41, 133-135)

3. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity of the marks concerned – Criteria for assessment – Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 48, 52, 54, 89, 124)

4. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Similarity of the marks concerned – Assessment of the distinctive character of an element of which a trade mark is composed (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 53)

5. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Word mark KERRYMAID and figurative mark Kerrygold (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 65-68, 94, 136-139, 145, 166)

6. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Assessment of the descriptive nature of a sign – Geographical names (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 78-80)

7. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity of the marks concerned – Elements of a trade mark having a descriptive character (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 92, 146)

8. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Similarity of the marks concerned – Visual similarity between a figurative mark and a word mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 102)

9. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Weighing elements of similarity or difference between the signs – Objective marketing considerations to be taken into account (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 142)

10. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Coexistence of earlier marks on the market – Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 159, 160)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 23 July 2019 (Case R 2473/2013-5), relating to opposition proceedings between Kerry Luxembourg and Ornua.

Operative part

The Court:

1. Dismisses the action;