Judgment of the General Court (First Chamber) of 7 February 2018 — Şölen Çikolata Gıda Sanayi ve Ticaret v EUIPO — Zaharieva (Ice cream cornet packaging)

(Case T‑794/16)

(Community design — Invalidity proceedings — Registered Community design representing an ice cream cornet — Earlier international registration designating Bulgaria — Ground for invalidity — Use in the subsequent design of a distinctive sign the holder of which has the right to prohibit such use — Article 25(1)(e) of Regulation (EC) No 6/2002 — Obligation to state reasons — Article 62 of Regulation No 6/2002 — Duty of diligence — Article 63(1) of Regulation No 6/2002)

1. Community designs—Ground for invalidity—Use of a distinctive sign in a subsequent design—Use of a sign representing a similarity with the distinctive sign—Included (Council Regulation No 6/2002, Art. 25(1)(e)) (see paras 22-24)

2. Community designs—Ground for invalidity—Use of a distinctive sign in a subsequent design—Comparison between the design at issue and the distinctive sign—Likelihood of confusion (Council Regulation No 6/2002, Art. 25(1)(e)) (see paras 27, 79)

3. Community designs—Ground for invalidity—Use of a distinctive sign in a subsequent design—Comparison between the design at issue and the distinctive sign—Relevant public (Council Regulation No 6/2002, Art. 25(1)(e)) (see para. 29)

4. Community designs—Ground for invalidity—Use of a distinctive sign in a subsequent design—Comparison between the design at issue and the distinctive sign—Design representing an ice cream cornet—Figurative mark OZMO cornet (Council Regulation No 6/2002, Art. 25(1)(e)) (see paras 33-35, 39, 40, 59, 78, 80-82, 89)

5. Community designs—Ground for invalidity—Use of a distinctive sign in a subsequent design—Comparison between the design at issue and the distinctive sign—Similarity between the goods or services in question—Complementary nature of the goods or services (Council Regulation No 6/2002, Art. 25(1)(e)) (see paras 36-38)

6. Community designs—Ground for invalidity—Use of a distinctive sign in a subsequent design—Comparison between the design at issue and the distinctive sign—Similarity between the design at issue and the distinctive sign—Criteria for assessment—Complex sign (Council Regulation No 6/2002, Art. 25(1)(e)) (see paras 41-43, 49)

7. Community designs—Appeals procedure—Action before the EU judicature—Power of the General Court to alter the contested decision—Limits (Council Regulation No 6/2002, Art. 61(3)) (see paras 85-88)

Re:

ACTION brought against the decision of the Third Board of Appeal of EUIPO of 12 September 2016 (Case R 1144/2015-3), relating to invalidity proceedings between Şölen Çikolata Gıda Sanayi ve Ticaret and Mrs Zaharieva,

Operative part

The Court:

1. Annuls the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 September 2016 (Case R 1144/2015-3);

2. Grants the application for a declaration that the design registered under number 002343244-0001 is invalid;

3. Orders EUIPO to bear its own costs and to pay the costs incurred by Şölen Çikolata Gıda Sanayi ve Ticaret before the General Court and before the Board of Appeal of EUIPO;