Judgment of the General Court (Fifth Chamber) of 9 December 2020 –

Ace of spades v EUIPO – Krupp and Borrmann (JC JEAN CALL Champagne PRESTIGE)

(Case T‑622/19)

(EU trade mark – Opposition proceedings – Application for the three-dimensional EU trade mark JC JEAN CALL Champagne PRESTIGE – Earlier three-dimensional EU trade marks – Relative grounds for refusal – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001) – No damage to reputation – Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))

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 207/2009, Art. 8(1)(b); European Parliament and Council Regulation No 2015/2424) (see paras 22, 23, 64)

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 – Similarity of the marks concerned – Criteria for assessment – Composite mark (Council Regulation 207/2009, Art. 8(1)(b); European Parliament and Council Regulation No 2015/2424) (see paras 26-29)

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 – Likelihood of confusion with the earlier mark – Three-dimensional mark JC JEAN CALL Champagne PRESTIGE and three-dimensional marks (Council Regulation 207/2009, Art. 8(1)(b); European Parliament and Council Regulation No 2015/2424) (see paras 53, 57, 58, 65)

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 enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions (Council Regulation 207/2009, Art. 8(5); European Parliament and Council Regulation No 2015/2424) (see paras 69, 70, 85)

5. EU trade mark – Appeals procedure – Action before the EU Courts – Jurisdiction of the General Court – Amendment of a decision of EUIPO – Assessment in the light of the powers conferred on the Board of Appeal – Single head of claim seeking amendment (European Parliament and Council Regulation 2017/1001, Art. 72(3)) (see para. 88)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 26 June 2019 (Case R 3/2019-5), relating to opposition proceedings between Ace of spades Holdings and Messrs Krupp and Borrmann.

Operative part

The Court:

1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 June 2019 (Case R 3/2019-5) in so far as it dismissed the appeal brought by Ace of spades Holdings LLC and rejected the opposition based on Article 8(1)(b) of Regulation No 207/2009;

2. Dismisses the action as to the remainder;