Judgment of the General Court (First Chamber) of 7 September 2016 — Victor International v EUIPO — Ovejero Jiménez and Becerra Guibert (VICTOR)

(Case T‑204/14)

‛EU Trade Mark — Opposition proceedings — Application for the EU word mark VICTOR — Earlier national figurative mark victoria — Relative ground for refusal — Genuine use of the earlier mark — Nature of use — Form differing in elements which do not alter the distinctive character — Article 15(1) and Article 42(2) and (3) of Regulation (EC) No 207/2009 — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009’

1. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Subject-matter and material scope of Article 15(1)(a) of Regulation No 207/2009 (Council Regulation No 207/2009, Arts 15(1), second para., (a), and 42(2) and (3)) (see paras 23-25)

2. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Figurative mark victoria (Council Regulation No 207/2009, Arts 15(1), second para., (a), and 42(2) and (3)) (see paras 35-41)

3. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Definition — Criteria for assessment (Council Regulation No 207/2009, Arts 15(1), and 42(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(3) and (4)) (see paras 52-56, 69, 72, 74)

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 — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 79-81, 134)

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 105, 106)

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 114, 115)

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 — Word mark VICTOR and figurative mark victoria (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 120, 127, 131, 133, 138, 139, 146)

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 — Likelihood of confusion with the earlier mark — Weak distinctive character of the earlier mark — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 144)

Re:

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 January 2014 (Case R 2208/2012-2), relating to opposition proceedings between Mr Ovejero Jiménez and Ms Becerra Guibert, on the one hand, and Victor International, on the other.

Operative part

The Court:

1. Dismisses the action;