Judgment of the Court (Tenth Chamber) of 17 September 2020.European Union Intellectual Property Office v Lionel Andrés Messi Cuccittini and J.M. EV e hijos SRL v European Union Intellectual Property Office.Appeal – EU trade mark – Regulation (EC) No 207/2009 – Article 8(1)(b) – Opposition proceedings – Application for EU figurative mark MESSI – Earlier EU word marks MASSI – Partial refusal of registration.Case C-449/18 P and C-474/18 P.

Judgment // 17/09/2020 // 3 min read
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Judgment of the Court (Tenth Chamber) of 17 September 2020 – EUIPO v Messi Cuccittini

(Joined Cases C‑449/18 P and C‑474/18 P) ( 1 )

(Appeal – EU trade mark – Regulation (EC) No 207/2009 – Article 8(1)(b) – Opposition proceedings – Application for EU figurative mark MESSI – Earlier EU word marks MASSI – Partial refusal of registration)

  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 – Similarity of the marks concerned – Criteria for assessment

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

(see paras 45-47)

  1. Appeal – Grounds – Incorrect assessment of the facts and evidence – Inadmissibility – Review by the Court of Justice of the assessment of the facts and evidence – Possible only where the clear sense of the evidence has been distorted

(Art. 256(1) TFEU; Statute of the Court of Justice, Art. 58, first para.)

(see para. 55)

  1. EU trade mark – Procedural provisions – Examination of the facts of EUIPO’s own motion – Scope – No obligation to prove matters within common knowledge – Dispute before the General Court – Review by the Court of Justice of the assessment by the General Court of whether matters were within common knowledge – Possible only where the clear sense of the evidence has been distorted

(Art. 256(1) TFEU; Statute of the Court of Justice, Art. 58, first para.)

(see para. 57)

  1. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Review of the lawfulness of decisions of the Boards of Appeal – Re-examination of the facts in the light of evidence not previously submitted before EUIPO bodies – Not included – Arguments relating to matters within common knowledge – Included

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

(see paras 71-73)

  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 – Similarity of the marks concerned – Whether conceptual differences may neutralise visual or aural similarities – Conditions

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

(see paras 84-87)

Operative part

The Court:

  1. Dismisses the appeals;

  2. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs and to pay those incurred by Lionel Andrés Messi Cuccittini in Case C‑449/18 P;

  3. Orders J.M.-E.V. e hijos SRL to bear its own costs and to pay those incurred by Lionel Andrés Messi Cuccittini and by the European Union Intellectual Property Office (EUIPO) in Case C‑474/18 P.

( 1 ) OJ C 392, 29.10.2018.

Trade marks