Judgment of the General Court (Sixth Chamber) of 30 November 2016

EU trade markObservations of third parties and oppositionExamination of the oppositionProof of use of the earlier markGenuine useConceptCriteria for assessment

(Council Regulation No 207/2009, Art. 42(2) and (3))

(see paras 25, 26, 48, 50)

EU trade markObservations of third parties and oppositionExamination of the oppositionProof of use of the earlier markUse of the mark in a form differing by elements not altering the distinctive character of the mark

(Council Regulation No 207/2009, Arts 15(1)(a), and 42(2) and (3))

(see para. 27)

EU trade markObservations of third parties and oppositionExamination of the oppositionProof of use of the earlier markUse of the mark in a form differing by elements not altering the distinctive character of the markFigurative mark Pret A DinerFigurative mark PRET A MANGER and word mark PRET

(Council Regulation No 207/2009, Art. 42(2))

(see para. 49)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesAimProof to be adduced by proprietorFuture, non-hypothetical risk of unfair advantage or damage

(Council Regulation No 207/2009, Art. 8(5))

(see paras 58, 103)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesProtection also granted where a sign used for identical or similar goods or services

(Council Regulation No 207/2009, Art. 8(5))

(see para. 59)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesConditionsTaking unfair advantage of the distinctive character or repute of the earlier markDetriment to the distinctive character or repute of the earlier markCriteria for assessment

(Council Regulation No 207/2009, Art. 8(5))

(see paras 60, 61, 100)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesConditionLink between the marksCriteria for assessment

(Council Regulation No 207/2009, Art. 8(5))

(see paras 62, 63, 99)

EU trade markDefinition and acquisition of the EU trade markAssessment of the registrability of a signEU rules only taken into accountEarlier registration of the mark in certain Member States or third countriesDecisions not binding EU bodies

(Council Regulation No 207/2009)

(see para. 95)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesFigurative mark Pret A DinerFigurative mark PRET A MANGER and word mark PRET

(Council Regulation No 207/2009, Art. 8(5))

(see paras 104-110)

EU trade markAppeals procedureAction before the EU judicatureJurisdiction of the General CourtRe-evaluation of the facts in the light of evidence produced for the first time before itExclusion

(Council Regulation No 207/2009, Art. 65)

(see para. 114)

Re:

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 29 October 2015 (Case R 2825/2014-5), relating to opposition proceedings between Pret A Manger (Europe) and K&K Group.

Operative part

The Court:

Dismisses the action;

Orders K&K Group AG to pay the costs.