Judgment of the General Court (Ninth Chamber) of 12 January 2022 –

1031023 B.C. v EUIPO – Bodegas San Valero (Representation of a circle drawn by a brush)

(Case T‑366/20)

(EU trade mark – Opposition proceedings – Application for an EU figurative mark representing a circle drawn by a brush – Earlier national figurative mark ORIGIUM 1944 – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 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 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 21, 22, 89)

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 – Assessment of the likelihood of confusion – Determination of the relevant public – Attention level of the public – Wines (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 28-30)

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 representing a circle drawn by a brush and ORIGIUM 1944 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 32, 93-97)

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 of the marks concerned – Criteria for assessment – Composite mark – Determination of the dominant elements (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 34, 36, 47, 48)

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 – Assessment of the distinctive character of an element of which a trade mark is composed (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 35)

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 – Elements of a trade mark having a descriptive character (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 37)

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 – Figurative marks without verbal elements – Phonetic comparison (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 73, 74)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 9 March 2020 (Case R 2142/2019-1) relating to opposition proceedings between Bodegas San Valero and 1031023 B.C.

Operative part

The Court:

1. Dismisses the action;