Judgment of the General Court (Tenth Chamber) of 14 April 2021 –

Berebene v EUIPO – Consorzio vino Chianti Classico (GHISU)

(Case T‑201/20)

(EU trade mark – Opposition proceedings – Application for the EU figurative mark GHISU – Earlier collective national figurative mark CHIANTI CLASSICO – Relative ground for refusal – Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001) – Taking unfair advantage of the distinctiveness or reputation of the earlier mark)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(5)) (see para. 18)

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 22, 23)

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 enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions – Link between the marks – Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 32, 39, 40, 44, 50)

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 – Figurative marks GHISU and CHIANTI CLASSICO (Council Regulation No 207/2009, Art. 8(5)) (see paras 38, 51, 54, 57, 69)

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 – Detriment to the distinctive character or repute of the earlier mark – Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see para. 58)

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 – Proof to be adduced by proprietor – Future, non-hypothetical risk of unfair advantage or detriment (Council Regulation No 207/2009, Art. 8(5)) (see para. 63)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 23 January 2020 (Case R 592/2019-1), relating to opposition proceedings between Consorzio vino Chianti Classico and Berebene.

Operative part

The Court:

1. Dismisses the action;