Judgment of the General Court (Third Chamber) of 9 February 2022.Calzaturificio Emmegiemme Shoes Srl v European Union Intellectual Property Office.EU trade mark – Opposition proceedings – Application for EU word mark MAIMAI MADE IN ITALY – Earlier EU word mark YAMAMAY – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Genuine use of the earlier mark – Admissibility of new evidence – Alteration of the distinctive character.Case T-589/20.

Judgment // 09/02/2022 // 3 min read
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Judgment of the General Court (Third Chamber) of 9 February 2022 –Calzaturificio Emmegiemme Shoes v EUIPO – Inticom (MAIMAI MADE IN ITALY)

(Case T‑589/20) ( 1 )

(EU trade mark – Opposition proceedings – Application for EU word mark MAIMAI MADE IN ITALY – Earlier EU word mark YAMAMAY – Relative ground for refusal – Likelihood of confusion – Article 8 (1) (b) of Regulation (EU) 2017/1001 – Genuine use of the earlier mark – Admissibility of new evidence – Alteration of the distinctive character)

  1. EU trade mark – Appeals procedure – Boards of Appeal – Allocation of an appeal to a Board – Referral back by the Board of Appeal to the body which adopted the contested decision – Allocation of the appeal to the same Board – No infringement of the requirement of impartiality

(Charter of Fundamental Rights of the European Union, Arts 41 (1) and 47; European Parliament and Council Regulation 2017/1001, Art. 166(4)(c); Commission Regulation No 2018/625, Art. 35(1))

(see paras 44-47)

  1. EU trade mark – Procedural provisions – Examination of the facts by the Office of its own motion – Facts and evidence not submitted in due time – Account taken – Power of assessment of the Office

(European Parliament and Council Regulation 2017/1001, Art. 95(2); Commission Regulation No 2018/625, Art. 27(4))

(see paras 62, 63)

  1. EU trade mark – Observations by third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use – Use of the mark in a form differing in elements which do not alter the distinctive character of the mark – Subject matter and scope of Article 18(1)(a) of Regulation 2017/1001

(European Parliament and Council Regulation 2017/1001, Art. 18(1)(a))

(see paras 80, 81)

  1. EU trade mark – Observations by third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use – Concept – Criteria for assessment – Territorial extent of the use

(European Parliament and Council Regulation 2017/1001, Art. 18(1))

(see paras 94, 99, 100)

  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 108, 119, 122, 136)

  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 marks MAIMAI MADE IN ITALY and YAMAMAY

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

(see paras 116, 133, 140)

  1. EU trade mark – Decisions made by the Office – Principle of equal treatment – Principle of sound administration – Previous decision-making practice of the Office – Principle of legality – Need for a strict and complete examination in each particular case

(European Parliament and Council Regulation 2017/1001)

(see para. 139)

Operative part

The Court:

  1. Dismisses the action;

  2. Orders Calzaturificio Emmegiemme Shoes Srl to pay the costs.

( 1 ) OJ C 378, 9.11.2020.

Trade marks