Judgment of the General Court (Sixth Chamber) of 27 September 2012 — Tuzzi fashion v OHIM — El Corte Inglés (Emidio Tucci)

(Case T-535/08)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark Emidio Tucci — Earlier national word mark and international registration TUZZI — Earlier company name Tuzzi fashion GmbH — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) — Duty to state reasons — Article 73 and Article 62(2) of Regulation No 40/94 (now Article 75 and Article 64(2) of Regulation No 207/2009) — Examination of the facts by the adjudicatory body of its own motion — Article 74 of Regulation No 40/94 (now Article 76 of Regulation No 207/2009) — Article 79 of Regulation No 40/94 (now Article 83 of Regulation No 207/2009’

1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Exclusion (Council Regulation No 40/94, Art. 63) (see para. 16)

2. Procedure — Application initiating proceedings — Formal requirements — Brief summary of the pleas in law on which the application is based — Pleas in law not set out in the application — General reference to other documents — Inadmissibility (Statute of the Court of Justice, Art. 21; Rules of Procedure of the General Court, Art. 44(1)) (see para. 18)

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 — Assessment of the likelihood of confusion — Criteria (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 24, 27, 66, 68, 73-74)

4. 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 — Figurative mark Emidio Tucci and word mark TUZZI (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 28-30, 52, 58, 63, 70)

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 — Complex mark (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 35-37)

6. Community 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 40/94, Art. 74(1)) (see paras 44, 101)

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 — Similarity of the marks concerned — Possibility of a similarity between a figurative mark and a word mark (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 50)

8. Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 73, first sentence, of Regulation No 40/94 — Scope the same as that of Article 253 EC — Recourse by the Board of Appeal to implicit reasoning — Lawfulness — Conditions (Art. 253 EC; Council Regulation No 40/94, Art. 73, first sentence) (see paras 80-83)

9. Community trade mark — Definition and acquisition of the Community trade mark — Prior registration of the trade mark in certain Member States — Effect (see para. 89)

10. Community trade mark — Procedural provisions — Decisions of the Office — Observance of the rights of the defence — Scope of the principle (Council Regulation No 40/94, Art. 73) (see para. 91)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 September 2008 (Case R 1561/2007-2), relating to opposition proceedings between Tuzzi fashion GmbH and El Corte Inglés, SA.

Operative part

The Court:

1. Dismisses the action;

2. Orders Tuzzi fashion GmbH to pay the costs.

Judgment of the General Court (Sixth Chamber) of 27 September 2012 — Tuzzi fashion v OHIM — El Corte Inglés (Emidio Tucci)

(Case T-535/08)

‛Community trade mark — Opposition proceedings — Application for Community figurative mark Emidio Tucci — Earlier national word mark and international registration TUZZI — Earlier company name Tuzzi fashion GmbH — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) — Duty to state reasons — Article 73 and Article 62(2) of Regulation No 40/94 (now Article 75 and Article 64(2) of Regulation No 207/2009) — Examination of the facts by the adjudicatory body of its own motion — Article 74 of Regulation No 40/94 (now Article 76 of Regulation No 207/2009) — Article 79 of Regulation No 40/94 (now Article 83 of Regulation No 207/2009’

1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Exclusion (Council Regulation No 40/94, Art. 63) (see para. 16)

2. Procedure — Application initiating proceedings — Formal requirements — Brief summary of the pleas in law on which the application is based — Pleas in law not set out in the application — General reference to other documents — Inadmissibility (Statute of the Court of Justice, Art. 21; Rules of Procedure of the General Court, Art. 44(1)) (see para. 18)

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 — Assessment of the likelihood of confusion — Criteria (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 24, 27, 66, 68, 73-74)

4. 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 — Figurative mark Emidio Tucci and word mark TUZZI (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 28-30, 52, 58, 63, 70)

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 — Complex mark (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 35-37)

6. Community 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 40/94, Art. 74(1)) (see paras 44, 101)

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 — Similarity of the marks concerned — Possibility of a similarity between a figurative mark and a word mark (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 50)

8. Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 73, first sentence, of Regulation No 40/94 — Scope the same as that of Article 253 EC — Recourse by the Board of Appeal to implicit reasoning — Lawfulness — Conditions (Art. 253 EC; Council Regulation No 40/94, Art. 73, first sentence) (see paras 80-83)

9. Community trade mark — Definition and acquisition of the Community trade mark — Prior registration of the trade mark in certain Member States — Effect (see para. 89)

10. Community trade mark — Procedural provisions — Decisions of the Office — Observance of the rights of the defence — Scope of the principle (Council Regulation No 40/94, Art. 73) (see para. 91)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 September 2008 (Case R 1561/2007-2), relating to opposition proceedings between Tuzzi fashion GmbH and El Corte Inglés, SA.

Operative part

The Court:

1. Dismisses the action;