ddrg/super_eurlex huggingface dataset:
Judgment of the General Court (Ninth Chamber) of 26 November 2015 —

Nürburgring v OHIM — Biedermann (Nordschleife)

(Case T‑181/14)

‛Community trade mark — Opposition proceedings — Application for Community word mark Nordschleife — Earlier Community word mark Management by Nordschleife — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009’

1. Community trade mark — Definition and acquisition of the Community 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 17, 71)

2. Community trade mark — Definition and acquisition of the Community 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 Nordschleife and Management by Nordschleife (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 19-21, 48, 76, 77)

3. Community trade mark — Definition and acquisition of the Community 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 paras 23-26)

4. Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — OHIM’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case (see paras 44-46)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 20 January 2014 (Case R 163/2013-4) relating to opposition proceedings between Mr Lutz Biedermann and Nürburgring GmbH.

Operative part

The Court:

1. Dismisses the action;
4.

Community trade mark — Definition and acquisition of the Community 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 44, 48)
The purpose of Article 15(1)(a) of Regulation No 207/2009, which avoids imposing strict conformity between the form of the trade mark as used and the form in which the mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade.

Therefore, for the sign used to be regarded as not altering the distinctiveness of the mark in its registered form, it is not sufficient that the dominant element in latter be included in that sign. Examination of the alteration of the distinctive character consists in comparing the mark in its registered form with the sign used for the purpose of considering whether or not that mark and that sign differ in insignificant respects and whether they may be considered to be broadly equivalent.

(see paras 18, 34)
The obligation arising from the third paragraph of Article 1 of Annex X to the Staff Regulations to adopt general implementing provisions for the second sub-paragraph of Article 10(1) of that Annex before adopting a decision establishing a list of third countries in which living conditions can be deemed equivalent to those normally obtaining in the Union is explained by the fact that the latter provision confers on the appointing authority a particularly broad discretion when it comes to determining those third countries.

In laying down that obligation, therefore, the legislature intended, first, that the criteria to be used for determining the third countries should be established according to the procedure for adopting general implementing provisions described in Article 110(1) of the Staff Regulations, a procedure which allows the appointing authority to seek clarification about the relevant parameters by consulting its Staff Committee and seeking the opinion of the Staff Regulations Committee. Secondly, the legislature intended the criteria to be established in the abstract, independently of any procedure designed to determine, in a specific case, whether the living conditions in a third country were equivalent to those in the EU, in order to avoid the risk that the criteria chosen might be influenced by the outcome which the administration hoped to obtain.

That being so, the third paragraph of Article 1 of Annex X to the Staff Regulations cannot be regarded as merely laying down a formal requirement to be met by a decision establishing a list of third countries in which living conditions can be deemed equivalent to those normally obtaining in the EU. Instead, it provides that the prior adoption of general implementing conditions in accordance with the procedure described in Article 110(1) of the Staff Regulations is a mandatory requirement which must be fulfilled in order for that decision to be legally adopted.

Consequently, the fact that a decision establishing a list of third countries in which living conditions can be deemed equivalent to those normally obtaining in the EU has the effect of withdrawing the allowance for living conditions from the appellant is adequate justification for the appellant’s interest in raising a plea of infringement of the obligation to adopt general implementing provisions, as a legal requirement to which the adoption of that decision was subject.

(see paras 25, 26, 32-34)
Judgment of the General Court (Ninth Chamber) of 21 January 2016 —

BR IP Holder v OHIM — Greyleg Investments (HOKEY POKEY)

(Case T‑62/14)

‛Community trade mark — Opposition proceedings — Application for Community word mark HOKEY POKEY — Unregistered earlier national word mark — Proof of use — Right to prohibit use of the mark sought — Article 8(4) of Regulation (EC) No 207/2009 — Right of a Member State — Obligation to state reasons — Raised by the Court of its own motion’

1. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Conditions — Interpretation in the light of EU law — Assessment by reference to the criteria determined by the national law governing the sign relied on (Council Regulation No 207/2009, Art. 8(4)) (see paras 19-22, 28, 39)

2. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Sign giving its holder the right to prohibit the use of a more recent trade mark — Burden of proof (Council Regulation No 207/2009, Arts 8(4)(b), and 74(1)) (see paras 23, 24)

3. Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see paras 29, 30)

4. Actions for annulment — Grounds — Infringement of essential procedural requirements — Inadequate statement of reasons — To be considered of the Court’s own motion — Obligation to comply with the audi ateram partem principle (Arts 263 TFEU and 296 TFEU) (see paras 31, 32)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 22 November 2013 (Case R 1091/2012-4) relating to opposition proceedings between BR IP Holder LLC and Greyleg Investments Ltd.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 22 November 2013 (Case R 1091/2012-4);
Judgment of the General Court (Second Chamber) of 26 February 2016 —

Vidmar and Others v Commission

(Case T‑507/14)

‛Non-contractual liability — Accession of Croatia to the European Union — Repeal before accession of national legislation establishing the profession of bailiff — Loss suffered by persons formerly appointed as bailiffs — Failure by the Commission to adopt measures to ensure fulfilment of accession commitments — Sufficiently serious breach of a rule of law conferring rights on individuals — Article 36 of the Act of Accession’

1. Non-contractual liability — Infringement by the EU institutions of a legal obligation to act — Commission not adopting measures to ensure compliance by the Republic of Croatia with pre-accession undertakings concerning its legal system — Non-adoption of measures preventing the repeal of a law on bailiffs — No obligation on the Commission to act — No illegality capable of rendering the EU non-contractually liable (Art. 17(1) TEU; Art. 340, second para., TFEU; Act of Accession of 2012, Art. 36 and Annex VII) (see paras 43, 47-50, 52-56, 63)

2. International agreements — European Union Agreements — Fulfilment by a third country of obligations undertaken — Review by the Commission of correct application of the agreement (Art. 17(1) TEU) (see para. 67)

3. EU law — Principles — Protection of legitimate expectations — Conditions — Commission not adopting measures preventing a State joining the EU from repealing a law in the context of reform of its legal system provided for in its act of accession to the EU — Commission support for adoption of the law — No obligation on the joining State to maintain the law in force — No legitimate expectations (Act of Accession of 2012, Art. 36 and Annex VII) (see paras 70, 72-74)

Re:

ACTION for damages seeking compensation for the harm which the applicants claim to have suffered as a result of the wrongful conduct of the Commission while monitoring the fulfilment of accession commitments by the Republic of Croatia.

Operative part

1. The action is dismissed.
Judgment of the General Court (Eighth Chamber) of 28 April 2016 —

Zehnder Group International v EUIPO — Stiebel Eltron (comfotherm)

(Case T‑267/14)

‛EU trade mark — Invalidity proceedings — EU word mark comfotherm — Earlier national word mark KOMFOTHERM — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Likelihood of confusion — Similarity of the goods — Relevant public — Interdependence of factors’

1. 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 — Criteria for assessment (Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a)) (see paras 22, 68, 69)

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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 24, 25, 43, 44)

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 — Word marks comfotherm and KOMFOTHERM (Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a)) (see paras 26, 39, 45, 52, 66, 71)

4. EU trade mark — Lodging of the application for the EU trade mark — Identification of the goods or services concerned by the trade mark — Requirements of clarity and precision — Determination, by the competent authorities and economic operators, of the extent of the protection conferred by the mark (Council Regulation No 207/2009, Art. 26(1)(c); Commission Regulation No 2868/95, Art. 1, Rule 2(2)) (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 — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 50, 55, 63)

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 between the goods or services in question — Overlap between two categories of goods or services with different purposes (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 57)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 21 February 2014 (Case R 1318/2013-4), relating to invalidity proceedings between Stiebel Eltron GmbH & Co. KG and Zehnder Group International AG.

Operative part

The Court:

1. Dismisses the action;
Concerning the criteria for granting market economy operator status, it is apparent from the wording of Article 2(7)(c), third indent, of basic anti-dumping Regulation No 1225/2009 on protection against dumped imports from countries not members of the European Community that granting of that status is excluded where significant distortions in the production costs and the financial situation of the undertaking in question is carried over from the former planned economy system.

In that regard, the various language versions of the basic regulation confirm that the term ‘carried over’ signifies that the former planned economy system must have caused or led to the distortions at issue. Therefore, the advantages at the origin of those distortions cannot refer to any advantage whatsoever procured by the competent national authorities, but only those which stem from the former planned economy system. Otherwise, the effectiveness and illustrative scope of the examples set out in that provision would be compromised.

Moreover, even if tax incentives such as reduced tax rates, which presuppose state intervention, may orientate the conduct of undertakings in a different direction to that caused by the forces present in a market economy, the fact remains that such measures also exist in market-economy countries, so that the mere existence of such measures does not suffice for them to be classified as carried over from a planned economy.

Concerning more particularly the question whether tax advantages granted by the People’s Republic of China to undertakings in the high-tech and new technologies sector are carried over from the former planned economy system, it cannot be disputed that the support of certain business sectors, such as the high-tech sector, considered strategic by a given country, constitutes a legitimate objective in a market economy, irrespective of the legality of the measures at issue with regard, in particular, to EU law on State aid. Nor can it be considered, in that regard, that the objective of attracting foreign investment is carried over from a former planned economy system, since, first, such an objective is pursued by a good number of countries with a market economy and, secondly, such a policy seems, at least in theory, inconsistent with a form of economic organisation based on collective or state ownership of enterprises subject to production objectives defined in a central plan, which characterises a planned economy system.

(see paras 63, 64, 67, 75, 76)
Judgment of the General Court (Sixth Chamber) of 12 May 2016 —

Red Lemon v EUIPO — Lidl Stiftung (ABTRONICX2)

(Case T‑776/14)

‛EU trade mark — Opposition proceedings — Application for the EU figurative mark ABTRONICX2 — Earlier EU word mark TRONIC — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 — Minimal inherent distinctiveness of the earlier mark — Likelihood of confusion’

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 — Account taken by the General Court of matters of law and fact which have not been raised previously before the departments of EUIPO — Not included (Council Regulation No 207/2009, Art. 65(2)) (see para. 15)

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 paras 23, 24, 50, 51, 57)

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 — Composite mark (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 29, 30)

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 — Figurative mark ABTRONICX2 and word mark TRONIC (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 49, 56-59)

5. EU trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality (see paras 60, 61)

Re:

ACTION brought against the decision of the First Board of Appeal of EUIPO of 4 September 2014 (Case R 2078/2013-1), relating to opposition proceedings between Lidl Stiftung & Co. KG and Red Lemon Inc.

Operative part

The Court:

1. Dismisses the action;
The criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. Nonetheless, for the purpose of applying those criteria, the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. Only a three-dimensional mark, consisting in the appearance of the product itself, only a mark which departs significantly from the standards or usual practices of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 on the EU trade mark.

Those criteria, developed on the subject of trade marks which may be confused with the appearance of goods, are also applicable in the case of a sign composed of a design applied to the surface of goods.

In that regard, a sign that is made up of a series of regularly repetitive elements lends itself particularly well to being used as a surface pattern. There is therefore, in principle, a probability, inherent in that sign, that it will be used as a surface pattern, irrespective of its designation by the trade mark applicant as a figurative mark, a three-dimensional mark, a surface pattern or other type of mark. In those circumstances, it is only when the use of a surface pattern is unlikely in the light of the nature of the products at issue that such a sign cannot be considered a surface pattern in respect of the products at issue. Otherwise, the sign at issue, bearing the typical characteristics of a surface pattern owing to the repetitive sequence of its elements, may in fact be held to constitute a surface pattern. That is an objective criterion that is not contingent on the commercial intentions of the undertaking concerned.

The criteria laid down by the case-law concerning assessment of the distinctiveness of trade marks which may be confused with the appearance of goods apply to surface patterns used on the packaging of products that are usually sold in packaging, and are only brought out of their packaging just prior to being consumed.

However, there are no grounds to apply that case-law in the case of a surface pattern used on what is merely transport packaging. A surface pattern used on mere transport packaging cannot be equated with the appearance of the product.

(see paras 23, 24, 26, 54, 55, 57, 66, 67)
Judgment of the General Court (Fourth Chamber) of 18 October 2016 — Eveready Battery Company v EUIPO — Hussain and Others (POWER EDGE)

(Case T‑824/14)

‛EU trade mark — Opposition proceedings — Application for the EU figurative mark POWER EDGE — Earlier EU word mark EDGE — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Genuine use of the earlier mark — Article 15(1) and 42(2) of Regulation No 207/2009’

1. Procedure — Application initiating proceedings — Formal requirements — Brief summary of the pleas in law on which the application is based (Rules of Procedure of the General Court (1991), Art. 44(1)(c)) (see para. 15)

2. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Definition — Criteria for assessment — Requirement of solid and objective evidence (Council Regulation No 207/2009, Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(3)) (see paras 19, 20, 22, 28)

3. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Definition — Interpretation taking account of the rationale of Article 42(2) and (3) of Regulation No 207/2009 (Council Regulation No 207/2009, Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(3)) (see para. 21)

4. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Criteria for assessment — Particular situations of holders — Irrelevant (Council Regulation No 207/2009, Art. 42(2)) (see paras 40-42)

Re:

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 October 2014 (Case R 38/2014-2), relating to opposition proceedings between Eveready Battery Company and Mr and Mrs Hussain.

Operative part

The Court:

1) Dismisses the action;