ddrg/super_eurlex huggingface dataset:
Judgment of the General Court (Third Chamber) of 1 June 2016 —

Mega Brands v EUIPO — Diset (MAGNEXT)

(Case T‑292/12 RENV)

‛European Union trade mark — Opposition proceedings — Application for European Union word mark MAGNEXT — Earlier national word mark MAGNET 4 — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009’

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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 17, 18, 38)

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 — Word marks MAGNEXT and MAGNET 4 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 20, 30, 36, 42)

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 — Similarity of the marks concerned — Criteria for assessment — Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 23, 24, 31, 34)

4. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits (Council Regulation No 207/2009, Art. 65(3)) (see para. 44)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 24 April 2012 (Case R 1722/2011-4), relating to opposition proceedings between Diset and Mega Brands International, Luxembourg, Zweigniederlassung Zug.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 April 2012 (Case R 1722/2011‑4);
52

At the hearing, the applicant relied on the judgment in Deutsche Post and Germany v Commission, cited in paragraph 22 above (paragraphs 43 to 45), in order to substantiate its argument that the form in which the contested decision was adopted is decisive in determining whether that decision could form the subject-matter of an action for annulment. Admittedly, in that judgment, the Court of Justice held that, by providing that ‘the information injunction’ under Article 10(3) of Regulation No 659/1999 should take the form of a decision, the EU legislature intended to confer a binding character on such a measure, and that, consequently, such an injunction was intended to produce binding legal effects and therefore constituted an act open to challenge for the purposes of Article 263 TFEU. None the less, it must be noted that the Court did not simply rely on that analysis in order to hold that the measure contested in the case in point could be the subject-matter of an action for annulment. In the remainder of the judgment in Deutsche Post and Germany v Commission, cited in paragraph 22 above, the Court of Justice examined whether, as the General Court had found in the order which was the subject-matter of the appeal before the Court of Justice, the contested measure constituted an intermediate measure preparatory in nature and whether it entailed independent legal effects against which the applicants in that case could be ensured sufficient legal protection by the bringing of an action against the decision terminating the procedure concerning the alleged State aid (paragraphs 48 to 63). The Court of Justice found that this was not the case since, although the contested measure constituted an intermediate measure, the effects of the possible illegality of that measure were not capable of being removed by an action brought against the final decision terminating the State aid procedure (Deutsche Post and Germany v Commission, cited in paragraph 22 above, paragraphs 56 to 60). Consequently, although the Court took into account the form in which the contested measure had been adopted, namely a decision within the meaning of Article 288 TFEU, in order to hold that it was a measure which could form the subject-matter of an action for annulment, that assessment was only one factor in its reasoning in order to reach that conclusion.
15

Fourthly, the Board of Appeal concluded that there was no likelihood of confusion between the signs at issue on the following grounds. First, it observed that, although Coca-Cola was the proprietor of a range of highly famous and well-known Coca-Cola trade marks whose reputation was connected to their depiction in Spenserian script, that did not mean that it was the proprietor of that — undeniably elegant — script, which was freely available to be used by all. Next, the Board found that, although the goods were identical and the earlier trade marks had an undeniable reputation, it was difficult to see why a consumer would confuse the word ‘master’, combined with an Arabic word, with the earlier trade marks containing the words ‘coca-cola’ when there was no point of overlap textually. According to the Board of Appeal, there was nothing tangible in the earlier signs which was reproduced in the sign applied for, apart from the ‘tail’ element of each sign, flowing from the base of the letters ‘c’ and ‘m’ respectively. However, the Board added that that element on its own, divorced from the main Coca-Cola context, was not sufficient to generate any degree of similarity between the signs, as the evidence did not show that consumers focused on that detail when it was divorced from that context. In addition, the Board held that the Spenserian script was not highly fanciful — despite its tails, flourishes and other embellishments — and not so distinctive that its appearance in trade marks other than those owned by Coca-Cola would give rise to any suspicion that those marks had the same commercial origin. Lastly, it dismissed Coca-Cola’s assertion that, in practice, Mitico was supplying products bearing labels mimicking those to be found on Coca-Cola’s products, on the ground that the relevant question in the case before it was whether the mark as applied for was confusingly similar to the earlier trade marks as registered, and the way in which the trade marks might be used in practice was irrelevant for the purposes of an assessment of that kind.
101

The assertion that the Commission could not simultaneously refuse to permit the risk shield being taken into account and require that the anticipated restructuring and compensatory measures be taken into consideration must be regarded as irrelevant. It should be pointed out here that those measures, such as the sale of portfolios or cessation of certain business activities would, in any event, have been required by the markets and the banks, once a consensus on the survival of the undertaking was reached, to increase the latter’s profitability. In that context, as the Commission rightly noted in the rejoinder, the purpose of the Valuation Report was to determine the value of HSH Nordbank without aid, in order to set, on that basis, the issue price of the shares specifically intended to fund the aid measures. It was therefore natural that, in order to determine the value of the undertaking, HSH Nordbank took into account the constraints relating to the procedures which should be foreseen by a prudent and alert economic operator. That does not apply to the aid measures to which the contested decision relates, which do not correspond to part of the undertaking’s market value, but constitute extraordinary facilities aimed at preventing the bankruptcy of that undertaking and enabling its recovery over time. It is therefore clear from the case-law that, in accordance with the Commission communication entitled ‘The application of State aid rules to measures taken in relation to financial institutions in the context of the current global financial crisis’ (OJ 2008 C 270, p. 8), the grant of a State guarantee must be regarded as an emergency measure and must, accordingly, necessarily be temporary, and such a guarantee must also be accompanied by restructuring or liquidation measures in relation to the beneficiary (judgment of 5 March 2015, Banco Privado Português and Massa Insolvente do Banco Privado Português, C‑667/13, ECR, EU:C:2015:151, paragraph 70). Moreover, there was no basis for claiming that the Commission would consider those measures to be lawful, that is, that it would consider them either not to constitute State aid or to constitute State aid compatible with the internal market. In addition, that aid was recognised as compatible only on certain conditions, and the applicants, moreover, dispute those conditions. It should thus be stated again that, although it was logical and useful for HSH Nordbank to have informed its commercial partners and the banks of the financial position it would be in once the risk shield was granted, that risk shield could not be taken into account to determine the value of the new shares issued as part of the recapitalisation without automatically overstating that value.
3.

Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Concept — Mark composed of a word or neologism resulting from a combination of elements (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 23)
6.

Community trade mark — Definition and acquisition of the Community 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 — Similarity of the marks concerned — Aptitude of the conceptual similarity to neutralise visual or phonetic divergences — Conditions (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 52)
Judgment of the General Court (Sixth Chamber) of 11 December 2014 — ‘Millano ’ Krzysztof Kotas v OHIM (Shape of a box of chocolates)

(Case T‑440/13)

‛Community trade mark — Application for three-dimensional Community trade mark — Shape of a box of chocolates — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009’

1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — No power to issue directions (Council Regulation No 207/2009, Art. 65(6)) (see para. 11)

2. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Amendment of a decision by the Office — Assessment having regard to the competences conferred on the Board of Appeal (Council Regulation No 207/2009, Art. 65(3)) (see para. 12)

3. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Concept (Council Regulation No 207/2009, Art. 7(1)(b)) (see para. 17)

4. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Assessment of distinctive character — Criteria (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 18-21)

5. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Three-dimensional mark constituted by the shape of a box of chocolates (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 22, 26-29)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 22 May 2013 (Case R 755/2012-2) concerning an application for registration of a three-dimensional sign consisting in the shape of a box of chocolates as a Community trade mark.

Operative part

The Court:

1. Dismisses the action;
2.

Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Overlap between the scope of the grounds for refusal set out in subparagraphs (b) and (c) of Article 7(1) of Regulation No 207/2009 (Council Regulation No 207/2009, Art. 7(1)(b) and (c)) (see paras 21-23)
1.

Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 May 2013 (Case R 1100/2011‑4) in so far as it concerns time control systems;
6.

Community trade mark — Definition and acquisition of the Community 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 — Weighting of the elements of similarity or difference between the signs — Taking into account of the intrinsic characteristics of the signs or the conditions in which the goods or services are marketed (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 52)
Judgment of the General Court (Fourth Chamber) of 29 April 2015 —

Hostel Tourist World v OHIM — WRI Nominees (HostelTouristWorld.com)

(Case T‑566/13)

‛Community trade mark — Cancellation proceedings — Community figurative mark HostelTouristWorld.com — Earlier international word mark HOSTELWORLD.COM — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Minimal inherent distinctiveness of the earlier mark — Likelihood of confusion’

1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Declaratory judgments — Not included (Council Regulation No 207/2009, Art. 65(2) and (3)) (see para. 15)

2. Community trade mark — Appeals procedure — Appeal to a Board of Appeal — Competence of the Boards of Appeal — New full examination of the merits (Council Regulation No 207/2009, Art. 64(1)) (see paras 30-32)

3. Community trade mark — Definition and acquisition of the Community 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 — Coexistence of earlier marks — Recognition of a certain degree of distinctiveness of an international trade mark designating the Community (Council Regulation No 207/2009, Arts 7(1)(b) and (c), 52, 53, 57, 63, 64, 154 and 158(1) and (2)) (see paras 34-39)

4. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Arts 8(1)(b), and (2)(a)(iv), and 53(1)(a)) (see paras 43, 66, 67)

5. Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a)) (see paras 48-50)

6. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative Community trade mark HostelTouristWorld.com and international work mark HOSTELWORLD.COM (Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a)) (see paras 51, 52, 68, 70-72)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 26 August 2013 (Case R 966/2012-4) concerning cancellation proceedings between the company WRI Nominees Ltd and Hostel Tourist World, SL.

Operative part

The Court:

1. Dismisses the action;
Case T‑559/13

(publication by extracts)

Giovanni Cosmetics, Inc.

v

Office for Harmonisation in the Internal Market

(Trade Marks and Designs) (OHIM)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark GIOVANNI GALLI — Earlier Community word mark GIOVANNI — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Distinctive character of a first name and a surname’

Summary — Judgment of the General Court (Fifth Chamber), 3 June 2015

Community trade mark — Definition and acquisition of the Community 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 — Distinctive character of a first name and a surname — Figurative mark GIOVANNI GALLI and word mark GIOVANNI

(Council Regulation No 207/2009, Art. 8(1)(b))

In the absence of any specific evidence relating to the perception of the public throughout the European Union, it is not appropriate to extend the case-law pursuant to which, in certain Member States, surnames have, as a general rule, a more distinctive character than first names so that it applies to the whole of the European Union.

In view of the fact that, for at least a part of the European Union, it is not established that surnames have, in principle, a more distinctive character than first names, and in view of the fact that the majority of the public located outside Italy will not perceive either of the names Giovanni and Galli as common or rare, there are no grounds for ascribing greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’ from the point of view of the whole of the relevant public. The Board of Appeal was therefore wrong to ascribe greater distinctiveness to the element ‘galli’ than to the element ‘giovanni’ for the whole of the relevant public.

It is true that a part of the relevant public — namely, the part of that public which knows that the element ‘giovanni’ is a common Italian first name and that the element ‘galli’ of that mark is a rare Italian surname or which generally ascribes greater distinctiveness to surnames than to first names — will ascribe greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’. However, for the other part of the relevant public, the inherent distinctiveness of the elements ‘giovanni’ and ‘galli’ is identical, and corresponds to an average distinctiveness.

(see paras 52-54)
It is clear from Article 7(1) of Regulation No 6/2002 on Community designs, that a design is deemed to have been made available once the party relying thereon has proven the events constituting disclosure. In order to refute that presumption, the party challenging the disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those facts from becoming known in the normal course of business to the circles specialised in the sector concerned.

Moreover, the presumption provided for in Article 7(1) of Regulation No 6/2002 applies wherever the events constituting disclosure took place, since it can be seen from the wording of the first sentence of that article that it is not necessary, in order for a design to be deemed to have been made available to the public for the purpose of applying Articles 5 and 6 of that regulation, for the events constituting disclosure to have taken place within the European Union.

The question whether events taking place outside the European Union could reasonably have become known to the persons forming part of the circles specialised in the sector concerned is a question of fact; the answer to that question is dependent on the assessment of the particular circumstances of each individual case.

In order to carry out that assessment, it must be examined whether, on the basis of the facts, which must be adduced by the party challenging the disclosure, it is appropriate to consider that it was not actually possible for those circles to be aware of the events constituting disclosure, whilst bearing in mind what can reasonably be required of those circles in terms of being aware of prior art. Those facts may concern, for example, the composition of the specialised circles, their qualifications, customs and behaviour, the scope of their activities, their presence at events where designs are presented, the characteristics of the design at issue, such as their interdependency with other products or sectors, and the characteristics of the products into which the design at issue has been integrated, including the degree of technicality of the product concerned. In any event, a design cannot be deemed to be known in the normal course of business if the circles specialised in the sector concerned can become aware of it only by chance.

(see paras 26-29)
Where the Civil Service Tribunal merely refers to an unspecified illegality and to the feeling of injustice and pain allegedly suffered by the person concerned, without explaining in particular the reasons why the resulting non-material harm could not have been repaired by the annulment of a measure, the Tribunal breaches the obligation to state the reasons for its decision.

The general principle of equal treatment is a fundamental principle of EU law under which comparable situations must not be treated differently unless such treatment is objectively justified. There is a breach of the principle of equal treatment where two categories of persons whose factual and legal situations are not essentially different receive different treatment or where different situations are treated in the same way.

The situation of a successful candidate in a competition, whose name is belatedly included on the list of suitable candidates the validity of which has been extended pending the outcome of judicial proceedings brought by that candidate, must be compared with that of the person among the other successful candidates whose name was on the list of suitable candidates the longest before he was offered a post as an official. Otherwise, the extension of the list of suitable candidates, which was supposed to be the result of the judicial proceedings brought against the decision to exclude him from the competition by the successful candidate whose name was then added belatedly, would have been of greater benefit to other successful candidates in that competition than to himself.

(see paras 72, 76)

Judgment of 20 February 2009 in Commission v Bertolete and Others, T‑359/07 P to T‑361/07 P, ECR-SC, EU:T:2009:40, paras 37 and 38 and the case-law cited therein