Judgment of the General Court (Eighth Chamber) of 8 March 2023

EU trade markObservations of third parties and oppositionExamination of the oppositionProof of use of the earlier markGenuine useUse of the mark in a form differing in elements which do not alter the distinctive character of the markSubject matter and material scope of Article 15(1)(a) of Regulation No 207/2009Examination of alteration of distinctive character

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

(see paragraphs 20-22, 27, 33, 37)

EU trade markObservations of third parties and oppositionExamination of the oppositionProof of use of the earlier markNeed to determine that question, once raised by the applicant before the decision on the oppositionConsequence

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

(see paragraphs 50, 51)

EU trade markProcedural provisionsExamination of the facts of EUIPO’s own motionOpposition proceedingsExamination restricted to the facts, evidence and arguments providedExamination of a legal question of EUIPO’s own motionCondition

(European Parliament and Council Regulation 2017/1001, Art. 95)

(see paragraph 54)

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

(Council Regulation No 207/2009, Art. 42(2); Commission Regulation 2018/625, Art. 10(3))

(see paragraphs 55, 66)

EU trade markAppeals procedureAction before the EU judicatureDecision of an EUIPO unit forming part of the context of the decision of the Board of Appeal

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

(see paragraphs 59, 60)

EU trade markProcedural provisionsStatement of reasons for decisions

(European Parliament and Council Regulation 2017/1001, Art. 94(1))

(see paragraph 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 servicesLikelihood of confusion with the earlier markEnhanced distinctiveness of the earlier markCriteria for assessment

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paragraphs 76-78, 126, 133, 134)

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 markWord marks Sympathy Inside and INSIDE.

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paragraphs 87, 90, 103, 108, 116, 125, 131, 140, 143)

EU trade markDecisions of EUIPOLegalityExamination by the EU judicatureCriteria

(European Parliament and Council Regulation 2017/1001)

(see paragraphs 88, 115)

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 mark

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paragraphs 95-97, 107)

EU trade markAppeals procedureAction before the EU judicatureJurisdiction of the General CourtReview of the lawfulness of decisions of the Boards of AppealAccount taken by the General Court of matters of law and fact not previously raised before the departments of EUIPONot included

(Rules of Procedure of the General Court, Art. 188; European Parliament and Council Regulation 2017/1001, Art. 72)

(see paragraph 142)

Operative part

The Court:

Dismisses the action;

Orders Sympatex Technologies GmbH to pay the costs.