Judgment of the General Court (Eighth Chamber) of 6 June 2018 –

Uponor Innovation v EUIPO — Swep International (SMATRIX)

(Case T‑264/17)

(EU trade mark — Opposition proceedings — Application for the EU word mark SMATRIX — Prior EU figurative mark AsyMatrix — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) — Article 76 of Regulation No 207/2009 (now Article 95 of Regulation 2017/1001) — Extent of the examination to be carried out by the Board of Appeal — Failure to assess an item of evidence produced before the Opposition Division)

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 17, 18)

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—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 para. 19)

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 between the goods or services in question—Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 22)

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—Word mark SMATRIX and figurative mark AsyMatrix (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 27, 35, 51, 61, 68, 71, 76, 82)

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—Complementary nature of the goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 45-47)

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—Similarity of the marks concerned—Criteria for assessment—Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 52, 53, 56)

7. EU trade mark—Appeals procedure—Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal—Functional continuity between those two bodies—Examination of the appeal by the Board of Appeal—Scope (Council Regulation No 207/2009, Art. 76) (see para. 80)

8. EU trade mark—Appeals procedure—Action before the EU judicature—Power of the General Court to alter the contested decision—Limits (Council Regulation No 207/2009, Art. 65(3)) (see para. 86)

Re:

Action brought against the decision of the Second Board of Appeal of EUIPO of 1 March 2017 (Case R 236/2016-2), relating to opposition proceedings between Swep International and Uponor Innovation.

Operative part

The Court:

1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 March 2017 (Case R 236/2016-2);

2. Orders EUIPO to bear its own costs and to pay those incurred by Uponor Innovation in the proceedings before the General Court;