Judgment of the General Court (Fourth Chamber) of 20 February 2018 — Deutsche Post v EUIPO — bpost (BEPOST)

(Case T‑118/16)

(EU trade mark — Opposition proceedings — Application for EU word mark BEPOST — Earlier EU figurative mark ePost and earlier national word mark POST — Non-registered mark or sign used in the course of trade POST — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) — No detriment to reputation and no dilution — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) — Evidence presented for the first time before the General Court)

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 24, 25, 50, 66)

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—Earlier trade mark constituted by an EU trade mark—Refusal to register on a ground relating to refusal even limited to part of the Union (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 26, 67)

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—Likelihood of confusion with the earlier mark—Word mark BEPOST—Figurative marks ePost and word mark POST (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 27, 72, 73, 81-84, 91-93)

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—Assessment of the likelihood of confusion—Attention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 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—Similarity between the goods or services in question—Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 32)

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—Similarity of the marks concerned—Criteria for assessment—Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 35-37, 51)

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 of the marks concerned—Possibility of a visual similarity between a figurative mark and a word mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 80)

8. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade—Conditions—Assessment by reference to the criteria determined by the national law governing the sign relied on—Verification of the content of national law (Council Regulation No 207/2009, Art. 8(4)) (see para. 98)

9. EU trade mark—Definition and acquisition of the EU trade mark—Relative grounds for refusal—Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade—Word mark BEPOST and unregistered mark POST (Council Regulation No 207/2009, Art. 8(4)) (see paras 102, 103)

10. 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—Protection of well-known earlier mark extended to dissimilar goods or services—Conditions—Similarity of the marks concerned—Degree of similarity required (Council Regulation No 207/2009, Art. 8(5); Council Directive 89/104, Art. 4(4)(a)) (see paras 107-110)

Re:

ACTION brought against the decision of the First Board of Appeal of EUIPO of 18 January 2016 (Case R 3107/2014-1) relating to opposition proceedings between Deutsche Post and bpost.

Operative part

The Court:

1. Dismisses the action;