Judgment of the General Court (Eighth Chamber) of 13 June 2019.Radoslaw Pielczyk v European Union Intellectual Property Office.EU trade mark — Invalidity proceedings — EU figurative mark DERMÆPIL sugar epil system — Earlier national figurative mark dermépil — Relative ground for refusal — Genuine use of the mark — Article 57(2) and (3) of Regulation (EC) No 207/2009 (now Article 64 (2) and (3) of Regulation (EU) 2017/1001) — Likelihood of confusion — Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001) read in conjunction with Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation 2017/1001) — Comparison of the goods.Case T-398/18.

Judgment // 13/06/2019 // 4 min read
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Judgment of the General Court (Eighth Chamber) of 13 June 2019 –Pielczyk v EUIPO — Thalgo TCH (DERMÆPIL SUGAR EPIL SYSTEM)

(Case T‑398/18)

(EU trade mark — Invalidity proceedings — EU figurative mark DERMÆPIL sugar epil system — Earlier national figurative mark dermépil — Relative ground for refusal — Genuine use of the mark — Article 57 (2) and (3) of Regulation (EC) No 207/2009 (now Article 64 (2) and (3) of Regulation (EU) 2017/1001) — Likelihood of confusion — Article 53 (1) (a) of Regulation No 207/2009 (now Article 60 (1) (a) of Regulation 2017/1001) read in conjunction with Article 8(1) (b) of that regulation (now Article 8 (1) (b) of Regulation 2017/1001) — Comparison of the goods)

  1. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Subject matter and scope of Article 15(1)(a) of Regulation No 207/2009

(Council Regulation No 207/2009, Art. 15(1), 2nd para., (a))

(see paras 34-39)

  1. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Genuine use — Definition — Criteria for assessment

(Council Regulation No 207/2009, Art. 57(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(3))

(see paras 46-56, 61, 62)

  1. EU trade mark — Procedural provisions — Statement of reasons for decisions — First sentence of Article 75 of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU

(Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, 1st sentence)

(see para. 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 — Likelihood of confusion with the earlier mark — Criteria for assessment

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

(see paras 88, 114-117)

  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 between the goods or services in question — Complementary nature of the goods or services

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

(see paras 89, 90)

  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 between the goods or services in question — Criteria for assessment

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

(see paras 95, 123)

  1. EU trade mark — Appeals procedure — Action before the EU judicature — Application initiating proceedings — Formal requirements — Pleas in law not set out in the application — General reference to other documents — Inadmissibility

(Rules of Procedure of the General Court, Art. 76(d))

(see para. 108)

  1. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark DERMÆPIL sugar epil system and dermépil

(Council Regulation No 207/2009, Arts 8 (1) (b) and 53 (1) (a))

(see paras 110, 127-134, 142, 148-153, 157-159)

  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 — Assessment of the likelihood of confusion — Determination of the relevant public — Attention level of the public

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

(see para. 118)

  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

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

(see paras 125, 126, 136, 137, 146, 147, 156)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 13 April 2018 (Joined Cases R 979/2017-4 and R 1070/2017-4) concerning invalidity proceedings between Thalgo TCH and Mr Pielczyk.

Operative part

The Court:

  1. Dismisses the action;

  2. Orders Mr Radoslaw Pielczyk to pay the costs.

Trade marks