Judgment of the General Court (Ninth Chamber) of 8 May 2019.J. García Carrión, SA v European Union Intellectual Property Office.EU trade mark — Opposition proceedings — Application for EU word mark JAUME CODORNÍU — Earlier Spanish and EU word marks JAUME SERRA — Relative ground for refusal — No likelihood of confusion — Similarity of the signs — Article 8(1)(b) of Regulation (EU) 2017/1001 — Article 8(5) of Regulation 2017/1001 — Distinctive character of a first name and a surname.Case T-358/18.

Judgment // 08/05/2019 // 3 min read
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Judgment of the General Court (Ninth Chamber) of 8 May 2019 –J. García Carrión v EUIPO — Codorníu (JAUME CODORNÍU)

(Case T‑358/18)

(EU trade mark — Opposition proceedings — Application for EU word mark JAUME CODORNÍU — Earlier Spanish and EU word marks JAUME SERRA — Relative ground for refusal — No likelihood of confusion — Similarity of the signs — Article 8 (1) (b) of Regulation (EU) 2017/1001 — Article 8 (5) of Regulation 2017/1001 — Distinctive character of a first name and a surname)

  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

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

(see paras 27, 28, 82)

  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 — Composite mark

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

(see paras 34, 50, 51)

  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 — Word mark JAUME CODORNÍU and word marks JAUME SERRA

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

(see paras 81, 85-88)

  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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions

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

(see para. 92)

  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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Link between the marks

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

(see paras 95, 96)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 11 April 2018 (Case R 451/2017-4) relating to opposition proceedings between J. García Carrión and Codorníu.

Operative part

The Court:

  1. Dismisses the action;

  2. Orders J. García Carrión SA to pay the costs.

Trade marks