Judgment of the General Court (Third Chamber) of 6 December 2017 – Tulliallan Burlington v EUIPO – Burlington Fashion (BURLINGTON THE ORIGINAL)

(Case T-121/16)

(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark BURLINGTON THE ORIGINAL — Earlier national word marks BURLINGTON and BURLINGTON ARCADE — Earlier EU and national figurative marks BURLINGTON ARCADE — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Use in the course of trade of a sign of more than mere local significance — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — Unfair advantage taken of the distinctive character or the repute of the earlier trade marks — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001)

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 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. 20)

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 enjoying a reputation–Protection of well-known earlier mark extended to dissimilar goods or services–Conditions–Similarity of the marks concerned–Degree of similarity required (Council Regulation No 207/2009, Art. 8(5)) (see paras 21-23)

3. Approximation of laws–Trade marks–Directive 2008/95–Service marks–Concept of retail trade–Shopping arcade’s services in relation to sales–Included (European Parliament and Council Directive 2008/95) (see paras 33, 34)

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–Proof to be adduced by proprietor–Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see paras 37, 39, 42)

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–Taking unfair advantage of the distinctive character or repute of the earlier mark–Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 38, 40, 41)

6. 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–Figurative mark BURLINGTON THE ORIGINAL–Word marks BURLINGTON and BURLINGTON ARCADE and figurative marks BURLINGTON ARCADE (Council Regulation No 207/2009, Art. 8(5)) (see paras 43-45)

7. EU trade mark–Procedural provisions–Decisions of the Office–Observance of the rights of the defence–Scope of the principle (Council Regulation No 207/2009, Art. 75) (see paras 54, 55)

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 (Council Regulation No 207/2009, Art. 8(4)) (see para. 56)

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–Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 66, 67)

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–Figurative mark BURLINGTON THE ORIGINAL–Word marks BURLINGTON and BURLINGTON ARCADE and figurative marks BURLINGTON ARCADE (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 69-72)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 11 January 2016 (Case R 2501/2013-4), relating to opposition proceedings between Tulliallan Burlington and Burlington Fashion.

Operative part

The Court:

1. Dismisses the action;