Judgment of the General Court (Ninth Chamber) of 4 December 2019 –

Billa v EUIPO — Boardriders IP Holdings (Billa)

(Case T‑524/18)

(EU trade mark — Opposition proceedings — Application for the EU word mark Billa — Earlier EU word marks BILLABONG — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Comparison of the goods and services — Article 8(1)(b) of Regulation (EU) 2017/1001)

1. EU trade mark — Appeals procedure — Appeals before the Boards of Appeal — Competence of the Boards of Appeal — New full examination of the merits — Condition — Admissibility of the action — Excessive scope of the examination to be carried out by the Board of Appeal — Effect (European Parliament and Council Regulation 2017/1001, Art. 71; Commission Regulation 2018/625, Arts 2(2)(b)(i) and 27(2)) (see paras 22, 23)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 26-28, 87)

3. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits (European Parliament and Council Regulation 2017/1001, Art. 72(3)) (see para. 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 registered for identical or similar goods or services — Similarity between the goods or services in question — Overlap between two categories of goods or services with different purposes (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 36-38, 45, 46)

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 registered for identical or similar goods or services — Similarity of the marks concerned — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 54, 55, 66, 73-75)

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 registered for identical or similar goods or services — Similarity of the marks concerned — Whether conceptual differences may neutralise visual or aural similarities — Conditions (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 79)

7. EU trade mark — Definition and acquisition of the EU trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Earlier registration of the mark in certain Member States or third countries — Decisions not binding EU bodies (European Parliament and Council Regulation 2017/1001) (see para. 84)

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 — Word marks Billa and BILLABONG (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 90-94)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 21 June 2018 (Case R 2235/2017-4), as rectified on 4 October 2018, relating to opposition proceedings between Boardriders IP Holdings and Billa.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2018 (Case R 2235/2017-1) as regards the goods ‘games’ in Class 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, covered by the mark applied for;

2. Dismisses the action as to the remainder;