Case T‑47/12

Intesa Sanpaolo SpA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Opposition proceedings — Application for the Community figurative mark EQUITER — Earlier Community word mark EQUINET — Relative ground for refusal — Genuine use of the earlier mark — Article 42(2) of Regulation (EC) No 207/2009 — Obligation to state reasons)

Summary — Judgment of the General Court (Third Chamber), 27 March 2014

1.      Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Partial use — Effect

(Council Regulation No 207/2009, Art. 42(2))

2.      Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU

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

1.      The purpose of opposition proceedings founded on Article 8(1)(b) of Regulation No 207/2009 is to enable OHIM to assess whether there is a likelihood of confusion, which, where the conflicting marks are similar, entails an examination of the similarity between the goods and services designated by those marks. In that context, if the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it is, for the purposes of the examination of the opposition, deemed to be registered in respect only of that part of the goods or services, in accordance with the last sentence of Article 42(2) of Regulation No 207/2009. In the same context, it is also necessary for the Board of Appeal to assess, where use is proved only in respect of a part of the goods or services in a category in respect of which the earlier mark is registered and which is cited as justification for the opposition, whether that category includes independent sub-categories into which the goods and services in respect of which use is demonstrated may be classified, resulting in a finding that use has been proved only in respect of that sub-category of goods and services or, on the other hand, whether such sub-categories are not possible.

Consequently, there are two inseparable parts to the task of assessing whether a mark relied on in support of a notice of opposition has been put to genuine use within the meaning of Article 42(2) of Regulation No 207/2009. The first is intended to determine whether the mark at issue has been put to genuine use in the European Union, even in a form which differs by aspects which do not, however, alter the distinctive character of that mark in the form in which it has been registered. The second is intended to determine the goods or services in connection with which the earlier mark is registered and which are cited as justification for the opposition, to which the genuine use demonstrated relates.

(see paras 20, 21)

2.      See the text of the decision.

(see para. 24)