Judgment of the General Court (Ninth Chamber) of 28 November 2019 –

Runnebaum Invest v EUIPO — Berg Toys Beheer (Bergsteiger)

(Case T‑736/18)

(EU trade mark — Opposition proceedings — Application for the EU word mark Bergsteiger — Earlier Benelux word marks and EU figurative and word marks BERG — Relative ground for refusal — Article 47(1) and (2) of Regulation (EU) 2017/1001 — Admissibility of a request for proof of genuine use — No likelihood of confusion — Article 8(1)(b) of Regulation 2017/1001)

1. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Request presented expressly and on time by the applicant — Possibility of submitting the application for the first time before the Board of Appeal — Precluded (European Parliament and Council Regulation 2017/1001, Art. 47(2)) (see para. 47)

2. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Need to determine that question, once raised by the applicant before the decision on the opposition (European Parliament and Council Regulation 2017/1001, Art. 47(2)) (see para 53)

3. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits (European Parliament and Council Regulation 2017/1001, Art. 72(3)) (see para. 55)

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 — 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 paras 67, 68)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 70, 75)

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 (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 92, 93, 100, 103, 104, 109, 111)

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 — Visual similarity between a figurative mark and a word mark (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 94, 97)

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 — Likelihood of confusion with the earlier mark — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 116, 117)

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 — Word mark Bergsteiger — Figurative and word mark BERG (European Parliament and Council Regulation 2017/1001, Art. 8(1)(b)) (see paras 120-122)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 22 October 2018 (Case R 572/2018-4) relating to opposition proceedings between Berg Toys Beheer and Runnebaum Invest.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 October 2018 (Case R 572/2018-4);

2. Orders EUIPO to bear its own costs and to pay the costs incurred by Runnebaum Invest GmbH;