Judgment of the General Court (Fourth Chamber) of 19 December 2019

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesLikelihood of confusion with the earlier markCriteria for assessment

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

(see paras 21, 22, 83, 84)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesLikelihood of confusion with the earlier markAssessment of the likelihood of confusionDetermination of the relevant publicAttention level of the public

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

(see para. 24)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesLikelihood of confusion with the earlier markFigurative mark THE ONLY ONE by alphaspirit wild and perfectWord mark ONE

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

(see paras 31, 33, 34, 52, 62, 69, 81, 82, 91, 94, 95, 109-111)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesSimilarity of the marks concernedCriteria for assessmentComposite markDetermination of the dominant element or elements

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

(see paras 35, 45, 51, 58, 61)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesSimilarity of the marks concernedAssessment only on the basis of the dominant element of a complex markConditions

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

(see para. 36)

EU trade markDefinition and acquisition of the EU trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesLikelihood of confusion with the earlier markWeighing elements of similarity or difference between the signsObjective marketing considerations to be taken into account

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

(see paras 92, 93)

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 servicesConditions

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

(see paras 96, 97, 108)

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

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

(see paras 114, 115)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 19 November 2018 (Case R 272/2018-4) relating to opposition proceedings between Société des produits Nestlé SA and Amigüitos pets & life.

Operative part

The Court:

Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 November 2018 (Case R 272/2018-4);

Dismisses the action as to the remainder;

Orders EUIPO to pay, in addition to its own costs, half of the costs incurred by Amigüitos pets & life, SA, including those incurred for the purposes of the proceedings before the Board of Appeal;

Orders Société des produits Nestlé, SA to pay, in addition to its own costs, half of the costs incurred by Amigüitos pets & life, including those incurred for the purposes of the proceedings before the Board of Appeal.