Judgment of the General Court (First Chamber) of 26 March 2020 –

Armani v EUIPO — Asunción (le Sac 11)

(Case T‑654/18)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark le sac 11 — Earlier national word mark LESAC and earlier national figurative marks lesac — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EU) 2017/1001 — Genuine use of the earlier mark — Article 47(2) and (3) of Regulation 2017/1001)

1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Alteration of a decision of the Office — Assessment in the light of the powers conferred on the Board of Appeal (European Parliament and Council Regulation 2017/1001, Arts 51, 71(1), 72(3)) (see paras 15, 16)

2. EU trade mark — Appeals procedure — Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal — Functional continuity between those two bodies — Examination of the appeal by the Board of Appeal — Scope (European Parliament and Council Regulation 2017/1001, Art. 71(1)) (see para. 22)

3. EU trade mark — Decisions of the Office — Observance of the rights of the defence — Scope of the principle (European Parliament and Council Regulation 2017/1001, Art. 94(1)) (see paras 25, 27)

4. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Objective of the requirement (European Parliament and Council Regulation 2017/1001, Recital 24, Art. 47(2) and (3)) (see para. 33)

5. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Partial use — Effect — Concept of (part of the goods or services) covered by the registration (European Parliament and Council Regulation 2017/1001, Art. 47(2) and (3)) (see paras 34, 35)

6. EU trade mark — Lodging of application for EU trade mark — Identification of the goods or services concerned by the trade mark — Use of the general indications in the headings of the classes of the Nice classification — Obligation on the applicant to specify the products or services covered by his application (see paras 36, 37)

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 — Likelihood of confusion with the earlier mark — Figurative mark le Sac 11, word mark LESAC and figurative marks lesac (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 41, 74, 82-84, 88, 92, 99)

8. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment — Company or trade name (European Parliament and Council Regulation 2017/1001, Art. 47(2) and (3)) (see paras 50, 51)

9. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Subject matter and material scope of Article 18(1)(a) of Regulation 2017/1001 (European Parliament and Council Regulation 2017/1001, Art. 18(1)(a)) (see para. 57)

10. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Simultaneous use of several signs (European Parliament and Council Regulation 2017/1001, Art. 47(2) and (3)) (see para. 59)

11. 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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 64, 65, 93)

12. 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 — Criteria for assessment — Complementary nature of the goods or services (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 71)

13. 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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 75, 77)

14. 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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 76)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 13 August 2018 (Case R 2464/2017-4), relating to opposition proceedings between Mr Asunción and Giorgio Armani.

Operative part

The Court:

1. Dismisses the action;