Judgment of the General Court (First Chamber) of 16 October 2018 –

VF International v EUIPO — Virmani (ANOKHI)

(Case T‑548/17)

(EU trade mark — Opposition proceedings — Application for EU figurative trade mark ANOKHI — Earlier EU figurative mark kipling — Earlier EU figurative mark representing the silhouette of a monkey — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001 EU) — Damage to reputation — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation 2017/1001))

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 15, 16)

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—Assessment of the likelihood of confusion—Determination of the relevant public—Attention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 17)

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—Assessment of the distinctiveness of an element composing a trade mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 19-23)

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 registered for identical or similar goods or services—Likelihood of confusion with the earlier mark—Figurative mark ANOKHI—Figurative mark kipling and figurative mark representing the silhouette of a monkey (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 34, 38-40, 48, 50-52, 65-69, 88)

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—Similarity of the marks concerned—Figurative marks without verbal elements—Phonetic comparison (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 74)

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—Taking unfair advantage of the distinctive character or repute of the earlier mark—Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see para. 92)

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—Conditions—Reputation of the mark in the Member State or the EU—Meaning—Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 94-97, 103, 104)

8. 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—Figurative mark ANOKHI—Figurative mark kipling and figurative mark representing the silhouette of a monkey (Council Regulation No 207/2009, Art. 8(5)) (see paras 98, 113, 114, 127-133)

9. EU trade mark—Procedural provisions—Statement of reasons for decisions—Scope (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see para. 124)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 26 May 2017 (Case R 2307/2015-4) relating to opposition proceedings between VF International and Mr Virmani.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 May 2017 (Case R 2307/2015-4);