Judgment of the General Court (Third Chamber) of 19 September 2017 — Tamasu Butterfly Europa v EUIPO — adp Gauselmann (Butterfly)

(Case T‑315/16)

(EU trade mark — Opposition proceedings — Application for EU word mark Butterfly — Earlier EU word mark and national trade name Butterfly — Relative grounds for refusal — Article 8(1)(b) and (4) and (5) of Regulation (EC) No 207/2009)

1. 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 20, 21)

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 — Assessment of the likelihood of confusion — Attention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 24)

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 between the goods or services in question — Complementary nature of the goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 27)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions (Council Regulation No 207/2009, Art. 8(5)) (see para. 48)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Reputation of the mark in the Member State or the EU — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 50, 51)

6. EU trade mark — Procedural provisions — Statement of reasons for decisions (Council Regulation No 207/2009, Art. 75) (see para. 70)

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 — Conditions (Council Regulation No 207/2009, Art. 8(4)) (see para. 78)

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 — Local scope of sign — Means of proof (Council Regulation No 207/2009, Art. 8(4)) (see paras 79, 81-84)

9. 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 — Word mark Butterfly — Trade name Butterfly (Council Regulation No 207/2009, Art. 8(4)) (see paras 97-99)

Re:

ACTION brought against the decision of the First Board of Appeal of EUIPO of 17 March 2016 (Case R 221/2015-1) relating to opposition proceedings between Tamasu Butterfly Europa and adp Gauselmann.

Operative part

The Court:

1. Dismisses the action;