Case T‑247/12
Argo Group International Holdings Ltd
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark — Opposition proceedings — Application for Community figurative mark ARIS — Earlier Community figurative mark ARISA ASSURANCES S.A. — Relative ground for refusal — Likelihood of confusion — Similarity of the signs — Coexistence of earlier marks on the market — Principle of American law known as the ‘Morehouse defense’ — Article 8(1)(b) of Regulation (EC) No 207/2009)
Summary — Judgment of the General Court (Second Chamber), 20 May 2014
1. Judicial proceedings — Application initiating proceedings — Formal requirements — Clear and precise statement of the grounds relied on
(Statute of the Court of Justice, Art. 21, first para.; Rules of Procedure of the General Court, Art. 44(1)(c))
2. 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 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))
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 registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Assessment of the likelihood of confusion — Attention level of the public
(Council Regulation No 207/2009, Art. 8(1)(b))
4. 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 registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative marks ARIS and ARISA ASSURANCES S.A.
(Council Regulation No 207/2009, Art. 8(1)(b))
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 registered for identical or similar goods or services — Similarity of the marks concerned — Criteria for assessment — Composite mark — Determination of dominant component(s))
(Council Regulation No 207/2009, Art. 8(1)(b))
6. Community trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Not permissible to take account of the principle of American law known as the ‘Morehouse defense’
(Council Regulation No 207/2009)
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 registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Coexistence of earlier marks on the market — Effect
(Council Regulation No 207/2009, Art. 8(1)(b))
1. See the text of the decision.
(see paras 17, 19)
2. See the text of the decision.
(see paras 22, 32, 53)
3. See the text of the decision.
(see para. 23)
4. See the text of the decision.
(see paras 28, 54)
5. See the text of the decision.
(see paras 35, 36)
6. The legality of a contested OHIM decision cannot be assessed by reference to the principle of American law known as the ‘Morehouse defense’, in accordance with which a person opposing the registration of a trade mark cannot be considered to be harmed by that registration where a trade mark that is identical or substantially similar to the mark applied for has already been registered in respect of identical or substantially similar goods or services by the person who has filed the trade mark application. The Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it, which applies independently of any national system, and the legality of decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union.
(see paras 55, 56)
7. See the text of the decision.
(see para. 57)