Judgment of the General Court (Sixth Chamber) of 30 November 2016 —

Fiesta Hotels & Resorts v EUIPO — Residencial Palladium (PALLADIUM PALACE IBIZA RESORT & SPA)

(Case T‑217/15)

(EU trade mark — Invalidity proceedings — EU figurative mark PALLADIUM PALACE IBIZA RESORT & SPA — Earlier national trade name GRAND HOTEL PALLADIUM — Relative ground for refusal — Use in the course of trade of a sign of more than mere local significance — Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009)

1. EU trade mark—Surrender, revocation and invalidity—Relative grounds for invalidity—Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009—Conditions—Interpretation in the light of EU law—Assessment by reference to the criteria determined by the national law governing the sign relied on (Council Regulation No 207/2009, Arts 8(4), and 53(1)(c)) (see paras 15-17)

2. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade—Use of the sign in trade—Concept—Use in the context of a commercial activity for economic advantage (Council Regulation No 207/2009, Art. 8(4)) (see para. 20)

3. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade—Local scope of sign—Means of proof (Council Regulation No 207/2009, Art. 8(4)) (see paras 22-27, 52)

4. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade—Use of the sign in trade—Temporal criterion (Council Regulation No 207/2009, Art. 8(4)(a)) (see para. 35)

5. EU trade mark—Appeals procedure—Action before the EU judicature—Jurisdiction of the General Court—Review of the lawfulness of decisions of the Boards of Appeal—Re-examination of the facts in the light of evidence not previously submitted before EUIPO bodies—Precluded (Council Regulation No 207/2009, Art. 65) (see paras 39, 83)

6. EU trade mark—Surrender, revocation and invalidity—Relative grounds for invalidity—Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009—Figurative mark PALLADIUM PALACE IBIZA RESORT & SPA and trade name GRAND HOTEL PALLADIUM (Council Regulation No 207/2009, Arts 8(4), and 53(1)(c)) (see paras 50, 66, 72, 77, 78, 90)

7. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade—Sign giving its holder the right to prohibit the use of a more recent trade mark—Burden of proof (Council Regulation No 207/2009, Arts 8(4)(b), and 76(1)) (see paras 57, 67, 82)

8. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade—Conditions—Existence of an earlier right not invalidated by a court decision which has become final (Council Regulation No 207/2009, Art. 8(4)) (see para. 64)

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—Coexistence of earlier marks on the market—Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 88)

Re:

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 23 February 2015 (Case R 2391/2013-2) relating to invalidity proceedings between Residencial Palladium and Fiesta Hotels & Resorts.

Operative part

The Court:

1. Dismisses the action;