Judgment of the General Court (Sixth Chamber) of 30 March 2022 –

Kalita and Haas v EUIPO – Kitzbühel Tourismus (Representation of two animals)

(Case T‑206/21) ( 1 )

(EU trade mark – Opposition proceedings – Application for an EU figurative mark representing two animals – Earlier EU figurative mark representing an animal – Relative ground for refusal – Article 8(1)(b) of Regulation (EU) 2017/1001)

1. EU trade mark – Appeals procedure – Action before the EU judicature – Power of the General Court to alter the contested decision – Limits (European Parliament and Council Regulation 2017/1001, Art. 72(3)) (see para. 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 – Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 20-23, 25, 89, 90)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 27, 28)

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 representing two animals and figurative mark representing one animal (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 43, 54, 71, 86, 88, 102)

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 – Coexistence of earlier marks – Recognition of an EU trade mark as having a certain degree of distinctiveness (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 59)

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 – Enhanced distinctiveness of the earlier mark – Criteria for assessment – Taking into consideration relevant evidence to establish reputation (European Parliament and Council Regulation 2017/1001, Art. 8(5)) (see para. 67, 78, 79)

Operative part

The Court:

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 February 2021 (Case R 863/2021-1);

2. Orders EUIPO to pay, in addition to its own costs, half of the costs incurred by Mr Oliver Kalita and Mr Christian Haas;

3. Orders Kitzbühel Tourismus, Körperschaft des öffentlichen Rechts to pay, in addition to its own costs, half of the costs incurred by Mr Kalita and Mr Haas.

( 1 ) OJ C 217, 7.6.2021.