Judgment of the General Court (First Chamber) of 13 November 2018 –
Camomilla v EUIPO — CMT (CAMOMILLA)
(Case T‑44/17)
(EU trade mark — Invalidity proceedings — EU word mark CAMOMILLA — Earlier national figurative mark CAMOMILLA — Rejection in part of the application for a declaration of invalidity — Relative ground for refusal — Likelihood of confusion — Genuine use of the earlier trade mark — Evidence — Counterclaim — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) — Article 57(2) and (3) of Regulation No 207/2009 (now Article 64(2) and (3) of Regulation 2017/1001))
1. EU trade mark — Procedural provisions — Examination of the facts by the Office of its own motion — Opposition proceedings — Examination restricted to the submissions of the parties — Well-known facts taken into account
(Council Regulation No 207/2009, Art. 76(1))
(see para. 33)
2. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Genuine use — Definition — Criteria for assessment
(Council Regulation No 207/2009, Art. 57(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(3) and (4))
(see paras 43, 52-54, 64)
3. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark — Use of the mark in a form differing by elements not altering the distinctive character of the mark
(Council Regulation No 207/2009, Art. 15(1), second para. (a))
(see paras 44, 45)
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 — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 80, 100)
5. 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
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 81, 94)
6. 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 — Assessment of the likelihood of confusion — Determination of the relevant public — Attention level of the public
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 82, 84)
7. 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 CAMOMILLA and figurative mark CAMOMILLA
(Council Regulation No 207/2009, Arts 8(1)(b) and 53(1)(a))
(see paras 85, 86, 93, 97-99, 101-105, 114, 117, 121)
8. 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 between the goods or services in question — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 87, 88)
Re:
| Action brought against the decision of the Fifth Board of Appeal of EUIPO of 21 November 2016 (Case R 2250/2015-5), relating to invalidity proceedings between CMT and Camomilla. |
Operative part
The Court:
2. | | Dismisses the counterclaim; |
3. | | Orders Camomilla Srl and CMT Compagnia manifatture tessili Srl (CMT) each to bear their own costs and to pay half of the costs incurred by the European Union Intellectual Property Office (EUIPO). |