Judgment of the General Court (Second Chamber) of 15 October 2018 –

Apple and Pear Australia and Star Fruits Diffusion v EUIPO — Pink Lady America (WILD PINK)

(Case T‑164/17)

(EU trade mark — Opposition proceedings — Application for EU word mark WILD PINK — Earlier EU and national word marks PINK LADY — Earlier EU figurative marks Pink Lady — 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) — Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001))

1. EU trade mark—Procedural provisions—Examination of the facts of the Office’s own motion—Opposition proceedings—Examination restricted to the submissions of the parties—Well-known facts taken into account—Examination of a legal question of the Office’s own motion—Condition (Council Regulation No 207/2009, Art. 76(1)) (see para. 20)

2. EU trade mark—Appeals procedure—Action before the EU judicature—Jurisdiction of the General Court—Re-evaluation of the facts in the light of evidence produced for the first time before it—Not included (Council Regulation No 207/2009, Art. 65) (see para. 42)

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—Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 46, 49)

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—Word mark WILD PINK—Word marks PINK LADY and figurative marks Pink Lady (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 54, 55, 59, 69, 74, 79, 81, 89, 91)

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 of the marks concerned—Criteria for assessment—Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 61)

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—Assessment of the distinctiveness of an element composing a trade mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 66)

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—Similarity of the marks concerned—Elements of a trade mark having a descriptive character (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 67, 72)

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 enjoying a reputation—Protection of well-known earlier mark extended to dissimilar goods or services—Conditions—Similarity of the marks concerned—Degree of similarity required (Council Regulation No 207/2009, Art. 8(1)(b) and (5)) (see paras 95-99)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 10 January 2017 (Case R 87/2015-4), relating to opposition proceedings between Apple and Pear Australia and Star Fruits Diffusion, on the one hand, and Pink Lady America, on the other.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 January 2017 (Case R 87/2015-4);

2. Orders EUIPO to bear its own costs and to pay half the costs incurred by Apple and Pear Australia Ltd and Star Fruits Diffusion, including half the costs necessarily incurred by them for the purposes of the proceedings before the Board of Appeal of EUIPO;