Judgment of the General Court (Ninth Chamber) of 4 June 2015 —
Stayer Ibérica v OHIM — Korporaciya ‘Masternet’ (STAYER)
(Case T‑254/13)
Community trade mark — Invalidity proceedings — Community figurative mark STAYER — Earlier international word mark STAYER — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009
1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Exclusion (Council Regulation No 207/2009, Art. 65) (see para. 18)
2. Community trade mark — Procedural provisions — Invalidity proceedings — Facts and evidence not submitted in support of the claim for invalidity within the time-limit — Account taken — Discretion of the Board of Appeal (Council Regulation No 207/2009, Arts 42(2) and (3), 57(1), (2) and (3), and 76(2); Commission Regulation No 2868/95, Art. 1, Rules 22(2), and 40(6)) (see paras 27-33)
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 — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 66, 67, 70, 103)
4. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark –Figurative and word mark STAYER (Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a)) (see paras 76, 94, 99, 102, 105-107)
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 between the goods or services in question — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 80)
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 registered for identical or similar goods or services — Similarity between the products concerned — Complementary nature of the goods (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 96, 98)
7. Community trade mark — Appeals procedure — Action before the EU judicature — Application initiating proceedings — Reply of the intervener — Formal requirements — Brief summary of the pleas in law on which the application is based — Pleas in law not put forward in the application and the response — General reference to other documents — Inadmissibility (Statute of the Court of Justice, Art. 21; Rules of Procedure of the General Court, Arts 44(1)(c), 46(1)(b), and 135) (see para. 100)
Re:
| ACTION brought against the decision of the Second Board of Appeal of OHIM of 4 March 2013 (Case R 2196/2011‑2), concerning invalidity proceedings between ZAO Korporaciya ‘Masternet’ and Stayer Ibérica, SA. |
Operative part
The Court:
1. | | Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 March 2013 (Case R 2196/2011‑2) to the extent that it has declared the Community figurative mark STAYER invalid in respect of ‘parts of cutting and polishing diamond machines; bits and cutting wheels for the following industries: marble, granite, stone, clay, slabs, tiles and brick, and, in general terms, cutting tools as parts of the equipment included in Class 7’ in Class 7 and ‘hand held abrasive items (wheels and grinding wheels)’ in Class 8; |
2. | | Dismisses the action as to the remainder; |
3. | | Orders OHIM, Stayer Ibérica, SA and ZAO Korporaciya ‘Masternet’ each to bear their own costs. |