Judgment of the General Court (Seventh Chamber) of 29 April 2014 — Asos v OHIM — Maier (ASOS)

(Case T‑647/11)

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

1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Direction issued to the Office — Exclusion (Council Regulation No 207/2009, Art. 65(6)) (see para. 15)

2. Community trade mark — Appeals procedure — Action before the EU judicature — Legality of the decision of a Board of Appeal adjudicating in opposition proceedings — Challenge by the adducing of new facts — Inadmissibility — Account taken, for the purposes of interpreting EU law, of EU national or international case-law not cited before the OHIM bodies — Lawfulness (Council Regulation No 207/2009, Art. 65) (see para. 18)

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 — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 22)

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 — Word marks ASOS and ASSOS (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 27, 48-50, 52)

5. 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 — Coexistence of two marks on a given market (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 32, 34)

6. Community trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria (Council Regulation No 207/2009) (see paras 36, 38)

7. 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 between the goods or services in question — Complementary nature of the goods — Clothes, footwear and headgear within Class 25 of the Nice Agreement and clothing accessories of leather and imitations of leather within Class 18 of the Nice Agreement (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 43-45)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 17 October 2011 (Case R 2215/2010‑4), relating to opposition proceedings between Roger Maier and Asos plc.

Operative part

The Court:

1. Dismisses the action;

2. Dismisses Mr Roger Maier’s application;

3. Orders Asos plc to bear its own costs and to pay the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM);

4. Orders Mr Maier to bear his own costs.

Judgment of the General Court (Seventh Chamber) of 29 April 2014 — Asos v OHIM — Maier (ASOS)

(Case T‑647/11)

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

1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Direction issued to the Office — Exclusion (Council Regulation No 207/2009, Art. 65(6)) (see para. 15)

2. Community trade mark — Appeals procedure — Action before the EU judicature — Legality of the decision of a Board of Appeal adjudicating in opposition proceedings — Challenge by the adducing of new facts — Inadmissibility — Account taken, for the purposes of interpreting EU law, of EU national or international case-law not cited before the OHIM bodies — Lawfulness (Council Regulation No 207/2009, Art. 65) (see para. 18)

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 — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 22)

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 — Word marks ASOS and ASSOS (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 27, 48-50, 52)

5. 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 — Coexistence of two marks on a given market (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 32, 34)

6. Community trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria (Council Regulation No 207/2009) (see paras 36, 38)

7. 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 between the goods or services in question — Complementary nature of the goods — Clothes, footwear and headgear within Class 25 of the Nice Agreement and clothing accessories of leather and imitations of leather within Class 18 of the Nice Agreement (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 43-45)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 17 October 2011 (Case R 2215/2010‑4), relating to opposition proceedings between Roger Maier and Asos plc.

Operative part

The Court:

1. Dismisses the action;

2. Dismisses Mr Roger Maier’s application;

3. Orders Asos plc to bear its own costs and to pay the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM);