Judgment of the General Court (Seventh Chamber) of 24 September 2019 –

IAK — Forum International v EUIPO — Schwalb (IAK)

(Case T‑497/18)

(EU trade mark — Invalidity proceedings — EU figurative mark IAK — Earlier national word mark IAK — Institut für angewandte Kreativität — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001 — Genuine use of the earlier mark)

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 26, 27, 94)

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 — Assessment of the likelihood of confusion — Determination of the relevant public — Attention level of the public (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 28)

3. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark IAK — Word mark IAK — Institut für angewandte Kreativität (European Parliament and Council Regulation 2017/1001, Arts 8(1)(b) and 60(1)(a)) (see paras 32, 33, 43-50, 62, 65, 73, 80, 81, 86, 87, 92, 93, 97-99)

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 between the goods or services in question — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 34)

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 — Perception by the relevant public of the importance of a product or service for the use of another product or service (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 39, 40)

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 — Composite mark — Element common to two marks having an independent distinctive role in the earlier mark (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 52, 53, 56, 57, 70, 71, 85)

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 — Assessment of the distinctiveness of an element composing a trade mark (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 55)

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 — Similarity of the marks concerned — Visual similarity between a figurative mark and a word mark (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 77)

9. 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 — Whether conceptual differences may neutralise visual or aural similarities — Conditions (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see para. 90)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 11 June 2018 (Case R 1511/2017-4), relating to invalidity proceedings between Mr Schwalb and IAK — Forum International.

Operative part

The Court:

1. Dismisses the action;