Judgment of the General Court (Fourth Chamber) of 20 April 2018 –

holyGhost v EUIPO — CBM (holyGhost)

(Case T‑439/16)

(EU trade mark — Opposition proceedings — Application for EU word mark holyGhost — Earlier EU word mark HOLY — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

1. 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—Re-examination of the facts in the light of evidence not previously submitted before EUIPO bodies—Not included (Council Regulation No 207/2009, Art. 65) (see para. 14)

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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 23)

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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 24, 35)

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—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 para. 25)

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—Assessment of the likelihood of confusion—Determination of the relevant public (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 26)

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—Similarity of the marks concerned—Breakdown of a word sign into word elements having concrete significance (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 37)

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 marks holyGhost and HOLY (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 38, 39, 52, 58, 62-66, 72, 73)

8. EU trade mark—Definition and acquisition of the EU trade mark—Assessment of the registrability of a sign—EU rules only taken into account—Earlier registration of the mark in certain Member States or third countries—Decisions not binding EU bodies (Council Regulation No 207/2009) (see para. 51)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 30 May 2016 (Case R 2867/2014-5), concerning opposition proceedings between CBM and holyGhost.

Operative part

The Court:

1. The action is dismissed;