Judgment of the General Court (Ninth Chamber) of 15 October 2020 –Rothenberger v EUIPO – Paper Point (ROBOX)
(Case T‑49/20)
(EU trade mark – Opposition proceedings – Application for the EU word mark ROBOX – Earlier EU word mark OROBOX – Relative ground for refusal – Likelihood of confusion – Independent subcategory of goods – Taking into consideration of a descriptive element – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
- Acts of the institutions – Temporal application – Procedural rules – Substantive rules – Distinction
(see para. 17)
- Judicial proceedings – Application initiating proceedings – Formal requirements – Clear and precise statement of the pleas relied on – Flexible interpretation
(see para. 19)
- 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 23, 24, 92, 96)
- 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 29, 40)
- EU trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Partial use – Effect – Concept of ‘part of the goods or services’ covered by the registration
(Council Regulation No 207/2009, Art. 42(2)
(see paras 32-35)
- 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 – 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 57-60)
- 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 – Distinctive and descriptive character of an element common to both marks – Relevance
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 66-68, 72)
- 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. 99)
- 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 marks ROBOX and OROBOX
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 101, 102)
Re:
Action brought against the decision of the First Board of Appeal of EUIPO of 31 October 2019 (Case R 210/2019-1), relating to opposition proceedings between Paper Point and Rothenberger.
Operative part
The Court:
-
Dismisses the action;
-
Orders Rothenberger AG to pay the costs.