Judgment of the General Court (Fifth Chamber) of 30 January 2020 –

Julius Sämann v EUIPO — Maharishi Vedic University (Representation of a tree)

(Case T‑559/19)

(EU trade mark — Opposition proceedings — Application for an EU figurative mark representing a tree — Earlier EU and international figurative marks representing an ‘arbre magique’ (magic tree) — Relative grounds for refusal — No likelihood of confusion — No similarity between the signs — Article 8(1)(b) of Regulation (EU) 2017/1001 — No damage to reputation — 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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 17, 18, 44)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 20, 21, 26, 29, 37)

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 — Figurative mark representing a tree and figurative mark representing an ‘arbre magique’ (magic tree) (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 30, 31, 36, 38-40, 45)

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 — Similarity of the marks concerned — Figurative marks without verbal elements — Phonetic comparison (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 32, 33)

5. EU trade mark — Decisions of EUIPO — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case (European Parliament and Council Regulation 2017/1001) (see para. 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 enjoying a reputation — Protection of the well-known earlier mark extended to dissimilar goods or services — Conditions — Similarity of the marks concerned — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b) and (5)) (see paras 51, 52)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 16 May 2019 (Case R 1743/2018-1), relating to opposition proceedings between Julius Sämann and Maharishi Vedic University.

Operative part

The Court:

1. Dismisses the action;