Judgment of the General Court (First Chamber) of 6 July 2012 —
Jackson International v OHIM —
Royal Shakespeare (ROYAL SHAKESPEARE)
(Case T-60/10)
Community trade mark — Invalidity proceedings — Community word mark ROYAL SHAKESPEARE — Earlier Community word mark RSC ROYAL SHAKESPEARE COMPANY — Relative grounds for invalidity — Mark with a reputation — Article 53(1)(a) and Article 8(5) of Regulation (EC) No 207/2009 — Likelihood of association — Unfair advantage taken of the distinctive character or the repute of the earlier trade mark
1. Community trade mark — Definition and acquisition of the Community 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 — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 17-21, 25-27)
2. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier identical or similar mark enjoying a reputation — Word marks ROYAL SHAKESPEARE and RSC-ROYAL SHAKESPEARE COMPANY (Council Regulation No 207/2009, Arts 8(5), and 53(1)(a)) (see paras 28-30, 34-37, 45, 46, 58-64, 69-71)
3. Community trade mark — Definition and acquisition of the Community 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 — Reputation of the mark in the Member State or in the Community — Concept (Council Regulation No 207/2009, Art. 8(5)) (see paras 33, 44)
4. Community trade mark — Definition and acquisition of the Community trade mark — Prior registration of the trade mark in certain Member States — Effect (see para. 42)
5. Community trade mark — Definition and acquisition of the Community 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 — Taking unfair advantage of the distinctive character or repute of the earlier mark — Meaning (Council Regulation No 207/2009, Art. 8(5)) (see paras 49, 50)
6. Community trade mark — Definition and acquisition of the Community 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 — Proof to be adduced by proprietor — Future, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see para. 54)
7. Community trade mark — Definition and acquisition of the Community 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 — Taking unfair advantage of the distinctive character or repute of the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 55-57)
Re:
| ACTION brought against the decision of the First Board of Appeal of OHIM of 19 November 2009 (Case R 317/2009‑1), concerning invalidity proceedings between The Royal Shakespeare Company and Jackson International Trading Co. Kurt D. Brühl GmbH & Co. KG. |
Operative part
The Court:
2. | | Orders Jackson International Trading Co. Kurt D. Brühl GmbH & Co. KG to pay the costs. |