Judgment of the General Court (Fifth Chamber) of 28 April 2021 –

Linde Material Handling v EUIPO – Verti Aseguradora (VertiLight)

(Case T‑644/19)

(EU trade mark – Opposition proceedings – Application for EU word mark VertiLight – Earlier national word mark VERTI – Relative ground for refusal – No damage to reputation – No link between the marks at issue – Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))

1. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Review of the lawfulness of decisions of the Boards of Appeal – Review of the legal classification given to the facts of the dispute (European Parliament and Council Regulation 2017/1001, Art. 72) (see paras 17, 19, 45)

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 – Link between the marks – Reputation of the mark in the Member State or the EU – Future, non-hypothetical risk of unfair advantage or damage – Cumulative conditions (Council Regulation No 207/2009, Art. 8(5)) (see paras 23-25)

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 26, 36, 37, 85, 95, 96, 102)

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 – 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 – Relevant public (Council Regulation No 207/2009, Art. 8(5)) (see paras 46, 48, 49)

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 – Aim (Council Regulation No 207/2009, Art. 8(5)) (see para. 55)

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 – Conditions – Reputation of the mark in the Member State or the EU – Definition – Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 56-59)

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 enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Word marks VertiLight and VERTI (Council Regulation No 207/2009, Art. 8(5)) (see paras 94, 97-101, 103)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 5 July 2019 (Case R 1849/2018-5), relating to opposition proceedings between Verti Aseguradora, Compañía de seguros y reaseguros, and Linde Material Handling.

Operative part

The Court:

1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 July 2019 (Case R 1849/2018-5);

2. Orders EUIPO to bear its own costs and to pay those incurred by Linde Material Handling GmbH;