Judgment of the General Court (Fifth Chamber) of 23 May 2019 — Dentsply De Trey v EUIPO — IDS (AQUAPRINT)
(Case T‑312/18)
(EU trade mark — Opposition proceedings — Application for EU word mark AQUAPRINT — Earlier national word marks AQUACEM and national unregistered marks AQUACEM and AQUASIL — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001 — Use in the course of trade of a sign of more than mere local significance — Article 8(4) of Regulation 2017/1001 — Action for passing off — No misrepresentation)
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 22, 84, 88)
2. 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 26-28)
3. 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 — Assessment of the distinctiveness of an element of which a trade mark is composed
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))
(see para. 37)
4. 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 AQUAPRINT — Word marks AQUACEM
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b))
(see paras 89-95)
5. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Conditions — Interpretation in the light of EU law — Assessment by reference to the criteria determined by the national law governing the sign relied on
(European Parliament and Council Regulation 2017/1001, Arts 8(4) and 95(1))
(see paras 98-100)
6. National law — Reference to national law — United Kingdom law — Action for passing off
(see para. 102)
7. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Word mark AQUAPRINT — Unregistered marks AQUACEM and AQUASIL
(European Parliament and Council Regulation 2017/1001, Art. 8(4))
(see paras 108-113)
Re
| Action brought against the decision of the Second Board of Appeal of EUIPO of 26 February 2018 (Case R 1438/2017-2), relating to opposition proceedings between Dentsply De Trey and IDS. |
Operative part
The Court:
2. | | Orders Dentsply De Trey GmbH to pay the costs. |