Judgment of the General Court (Ninth Chamber) of 1 September 2021 –

Sony Interactive Entertainment Europe v EUIPO – Wong (GT RACING)

(Case T‑463/20)

(EU trade mark – Opposition proceedings – Application for EU word mark GT RACING – Earlier EU figurative trade mark representing bold curved, vertical and horizontal lines – Earlier EU word mark GT – 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 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) – Earlier non-registered national marks – Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) – Rules governing common-law action for passing off – No misrepresentation – Use in the course of trade of more than mere local significance – Agreement on the withdrawal of the United Kingdom from the European Union and from Euratom)

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 31, 32)

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 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 – Detriment to the distinctive character or repute of the earlier mark – Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 34, 35, 103)

3. 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 (Council Regulation No 207/2009, Art. 8(4)) (see para. 37)

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 – Determination of the relevant public – Attention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 40, 47, 70)

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 – Word mark GT RACING – Figurative mark representing bold curved, vertical and horizontal lines and word mark GT (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 46, 60, 67, 69, 72, 73, 79, 88, 100)

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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 52, 53, 57, 59)

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 – Likelihood of confusion with the earlier mark – Objective marketing considerations to be taken into account (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 58)

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 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. 86)

9. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Review of the lawfulness of decisions of the Boards of Appeal – Account taken by the General Court of matters of law and fact not previously raised before the departments of EUIPO – Precluded (Council Regulation No 207/2009, Arts 65(2) and 76) (see paras 89, 90)

10. National law – Reference to national law – United Kingdom law – Action for passing off (see paras 110, 125, 126)

11. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Relevant date for examining a relative ground for refusal – Date of lodging the application for registration – Withdrawal of the Member State concerned from the European Union – Irrelevant (Council Regulation No 207/2009, Art. 8(4) and (5)) (see paras 118-120)

12. 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 – Local scope of sign – Criteria for assessment (Council Regulation No 207/2009, Art. 8(4)) (see paras 134-136)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 8 May 2020 (Case R 1612/2019-4), relating to opposition proceedings between Sony Interactive Entertainment Europe and Mr Wong.

Operative part

The Court:

1. Dismisses the action;