Judgment of the General Court (Ninth Chamber) of 2 June 2016 — Staywell Hospitality Group and Sheraton International IP v EUIPO — Sheraton International IP and Staywell Hospitality Group (PARK REGIS)

(Joined Cases T‑510/14 and T‑536/14)

‛European Union trade mark — Opposition proceedings — Application for European Union figurative mark PARK REGIS — Earlier European Union figurative mark ST. REGIS — Partial refusal to register — Article 64(1) of Regulation No 207/2009 — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009’

1. EU trade mark — Appeals procedure — Action before the EU judicature — Decision of an EUIPO body forming part of the context of the decision of the Board of Appeal (Council Regulation No 207/2009, Art. 65) (see para. 29)

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 36, 37, 87, 95)

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 — Likelihood of confusion with the earlier mark — Figurative marks PARK REGIS and ST. REGIS (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 40, 41, 43, 65, 81-83, 86, 91, 96)

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 — Similarity between the goods or services in question — Criteria for assessment — Complementary nature of the goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 42, 58, 60, 64)

5. EU trade mark — Procedural provisions — Statement of reasons for decisions (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see paras 50, 51)

6. EU trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice (Council Regulation No 207/2009) (see para. 66)

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 — Criteria for assessment — Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 68-70)

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 — Likelihood of confusion with the earlier mark — Criteria for assessment — Earlier mark occupying a distinctive independent position in the trade mark sought (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 79)

Re:

ACTIONS brought against the decision of the Fifth Board of Appeal of the EUIPO of 30 April 2014 (Joined Cases R 240/2013-5 and R 303/2013-5) relating to opposition proceedings between Sheraton International IP and Staywell Hospitality Group.

Operative part

The Court:

1. Dismisses the actions in Cases T‑510/14 and T‑536/14;

2. In Case T‑510/14, orders Staywell Hospitality Group Pty Ltd to pay the costs;