Judgment of the General Court (First Chamber) of 5 October 2017 — Forest Pharma v EUIPO — Ipsen Pharma (COLINEB)

(Case T‑36/17)

(EU trade mark — Opposition proceedings — Application for EU word mark COLINEB — Earlier national figurative mark Colina — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 — Extent of the examination to be carried out by the Board of Appeal — Article 76(1) of Regulation No 207/2009)

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—Account taken by the General Court of matters of law and fact not previously raised before the departments of EUIPO—Precluded (Council Regulation No 207/2009, Art. 65) (see para. 18)

2. EU trade mark—Observations of third parties and opposition—Examination of the opposition—Proof of use of the earlier mark—Need to determine that question, once raised by the applicant before the decision on the opposition—Consequence (Council Regulation No 207/2009, Art. 42(2)) (see paras 20, 22, 23)

3. EU trade mark—Observations of third parties and opposition—Examination of the opposition—Proof of use of the earlier mark—Non-submission of plea based on insufficient proof of genuine use (Council Regulation No 207/2009, Art. 42(2)) (see para. 21)

4. EU trade mark—Procedural provisions—Examination of the facts of the Office’s own motion—Opposition proceedings—Examination restricted to the submissions of the parties—Well-known facts taken into account (Council Regulation No 207/2009, Art. 76(1)) (see paras 29, 30)

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—Likelihood of confusion with the earlier mark—Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 47)

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—Likelihood of confusion with the earlier mark—Word mark COLINEB and figurative mark Colina (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 50, 66, 74, 96, 100-102)

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 between the goods or services in question—Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 51, 55, 60)

8. EU trade mark—Decisions of the Office—Legality—Examination by the EU judicature—Criteria (Council Regulation No 207/2009) (see para. 62)

9. 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 75, 76, 81)

Re:

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 October 2016 (Case R 500/2016-5), relating to opposition proceedings between Ipsen Pharma and Forest Pharma.

Operative part

The Court:

1. Dismisses the action;

2. Orders Forest Pharma BV to bear is its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO);