Source: EURLEX
Language: en
Format: md

Judgment of the General Court (Eighth Chamber) of 15 September 2016 —

Arrom Conseil v EUIPO — Puig France (Roméo has a Gun by Romano Ricci)

(Case T‑358/15)

‛EU trade mark — Opposition proceedings — Application for registration of the EU figurative mark Roméo has a Gun by Romano Ricci — Earlier EU word marks NINA RICCI and RICCI — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Unfair advantage taken of the distinctive character or reputation of the earlier marks — Damage to reputation — Article 8(5) of Regulation No 207/2009’

| 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 (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 32, 47) |

| 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 — Figurative mark Roméo has a Gun by Romano Ricci and word marks NINA RICCI and RICCI (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 33, 34, 50, 51, 64-66, 74, 78) |

| 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 36, 37) |

| 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 — Coexistence of earlier marks on the market — Effect (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 53) |

| 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 56-59, 70) |

| 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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute of the earlier mark — Relevant public (Council Regulation No 207/2009, Art. 8(5)) (see para. 60) |

| 7. | EU trade mark — Decisions of the Office — Observance of the rights of the defence — Scope of the principle (Council Regulation No 207/2009, Art. 75, second sentence) (see para. 76) |

Re:

ACTION brought against the decision of the First Board of Appeal of EUIPO of 26 March 2015 (Case R 1020/2014-1) relating to opposition proceedings between Puig France and Arrom Conseil.

Operative part

The Court:

| 1. | Dismisses the action; |

| 2. | Orders Arrom Conseil to bear its own costs and pay the costs incurred by the European Union Intellectual Property Office and PUIG France SAS. |

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