Judgment of the General Court (Seventh Chamber) of 15 October 2015 —

Wolverine International v OHIM — BH Stores (cushe)

(Case T‑642/13)

‛Community trade mark — Invalidity proceedings — International registration designating the European Community — Figurative mark cushe — Earlier national word mark SHE and figurative mark she — Relative ground for refusal — Genuine use of the earlier mark — Article 57(2) and (3) of Regulation (EC) No 207/2009 — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009’

1. Community trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Genuine use — Concept — Interpretation having regard to the rationale of Article 57(2) and (3) of Regulation No 207/2009 (Regulation No 207/2009, Art. 57(2) and (3)) (see para. 18)

2. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept — Criteria for assessment (Regulation No 207/2009, Art. 42(2) and (3)) (see paras 20-23)

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 — Criteria for assessment (Regulation No 207/2009, Art. 8(1)(b)) (see paras 41, 42, 70)

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 — Figurative mark cushe — Word marks SHE and figurative marks she (Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a)) (see paras 44, 48, 69, 72)

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 between the goods or services in question — Criteria for assessment (Regulation No 207/2009, Art. 8(1)(b)) (see para. 47)

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 — Similarity of the marks concerned — Criteria for assessment (Regulation No 207/2009, Art. 8(1)(b)) (see paras 49-51, 54, 57, 62)

7. 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 — Weak distinctive character of the earlier mark — Relevance (Regulation No 207/2009, Art. 8(1)(b)) (see para. 74)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 30 September 2013 (Case R 1269/2012-4) concerning invalidity proceedings between BH Store BV and Wolverine International, LP.

Operative part

The Court:

1. Dismisses the action;

2. Orders Wolverine International, LP to pay the costs, apart from those incurred by BH Store BV before the Cancellation Division of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM);