Judgment of the General Court (Sixth Chamber) of 27 June 2019

1. 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 itPrecluded

(European Parliament and Council Regulation 2017/1001, Art. 72)

(see para. 17)

2. 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 markCriteria for assessment

(European Parliament and Council Regulation 2017/1001, Art. 8(5))

(see para. 21)

3. 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 servicesConditionsSimilarity of the marks concernedDegree of similarity required

(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b) and (5))

(see paras 25-27)

4. 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 marks ANA DE ALTUN and ANNA

(European Parliament and Council Regulation 2017/1001, Art. 8(5))

(see paras 29, 40, 58-60)

5. 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 servicesConditionsReputation of the mark in the Member State or the EUDefinitionCriteria for assessment

(European Parliament and Council Regulation 2017/1001, Art. 8(5))

(see paras 34, 35)

6. 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 servicesConditionsReputation of the mark in the Member State or the EUUse of a trade mark as part of another trade mark and reputation

(European Parliament and Council Regulation 2017/1001, Art. 8(5))

(see para. 45)

7. EU trade markDecisions of the OfficePrinciple of equal treatmentPrinciple of sound administrationEUIPO's previous decision-making practicePrinciple of legalityNeed for a strict and complete examination in each particular case

(European Parliament and Council Regulation 2017/1001)

(see para. 54)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 14 March 2018 (Case R 173/2018-1) relating to opposition proceedings between Codorníu and Bodegas Altún.

Operative part

The Court:

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 March 2018 (Case R 173/2018-1);

2. Orders EUIPO to bear its own costs and to pay one half of the costs incurred by Bodegas Altún, SL;

3. Orders Codorníu, SA to bear its own costs and to pay one half of the costs incurred by Bodegas Altún.