Judgment of the General Court (Ninth Chamber) of 13 September 2018.Eduard Meier GmbH v European Union Intellectual Property Office.EU trade mark — Opposition proceedings — Application for the EU word mark Safari Club — Earlier national figurative mark WS Walk Safari — Relative ground for refusal — Likelihood of confusion — Similarity of signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001).Case T-418/17.

Judgment of the General Court (Ninth Chamber) of 13 September 2018 –Eduard Meier v EUIPO — Calzaturificio Elisabet (Safari Club)

(Case T‑418/17)

(EU trade mark — Opposition proceedings — Application for the EU word mark Safari Club — Earlier national figurative mark WS Walk Safari — Relative ground for refusal — Likelihood of confusion — Similarity of signs — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

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 17, 18)

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 — Earlier trade mark constituted by an EU trade mark — Refusal to register where there is a relative ground for refusal, even if limited to part of the Union

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

(see para. 19)

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 — Determination of the dominant elements(s)

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

(see paras 22, 24-26, 39)

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 — Similarity of the marks concerned — Assessment of the distinctive character of an element of which a trade mark is composed

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

(see paras 23, 36)

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 registered for identical or similar goods or services — Similarity of the marks concerned — Elements of a trade mark having a descriptive character

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

(see para. 27)

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 registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Word mark Safari Club and figurative mark WS Walk Safari

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

(see paras 37, 45, 46, 50, 53, 54, 60-66)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 2 May 2017 (Case R 1158/2016-4) relating to opposition proceedings between Calzaturificio Elisabet and Eduard Meier.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 May 2017 (Case R 1158/2016-4), in so far as it upheld the opposition to registration of the EU word mark Safari Club for the goods ‘game bags’ and ‘clothing for hunting, clothing and hunting boots’;

2. Dismisses the remainder of the action;

3. Orders each party to bear its own costs.