Judgment of the General Court (Second Chamber) of 1 December 2021 –
Inditex v EUIPO – Ffauf Italia (ZARA)
(Case T‑467/20)
(EU trade mark – Opposition proceedings – Application for EU word mark ZARA – Earlier international word mark LE DELIZIE ZARA and earlier national figurative mark ZARA – Proof of genuine use of the earlier marks – Article 42(2) and (3) of Regulation (EC) No 207/2009 (now Article 47(2) and (3) of Regulation (EU) 2017/1001) – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001))
1. Procedure – Time limits – Extension of time limit on account of distance – Application to the bringing of an action against a decision of EUIPO
(Rules of Procedure of the General Court, Art. 60; European Parliament and Council Regulation 2017/1001, Art. 72(5))
(see paras 32, 33)
2. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Review of the lawfulness of decisions of the Boards of Appeal – Review of the facts in the light of evidence not previously submitted before EUIPO bodies – Precluded
(Council Regulation No 207/2009, Art. 65)
(see para. 40)
3. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Relevant date for examining a relative ground for refusal – Date of lodging the application for registration – Withdrawal of the Member State concerned from the European Union – Irrelevant
(Council Regulation No 207/2009, Arts 8(1)(b) and 41)
(see paras 58, 59, 61)
4. EU trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use – Definition – Criteria for assessment
(Council Regulation No 207/2009, Recital 10, Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(3))
(see paras 72-76)
5. EU trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use – Definition – Determination of a minimal quantitative use threshold – Precluded
(Council Regulation No 207/2009, Art. 42(2) and (3))
(see para. 77)
6. EU trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Genuine use – Use of the mark in a form differing by elements not altering the distinctive character of the mark
(Council Regulation No 207/2009, Arts 15(1)(a) and 42(2) and (3))
(see para. 78)
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 – Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 102-104, 148)
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 – Complementary nature of the goods or services
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 108, 121-123)
9. 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 134, 145)
10. 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 ZARA – Word mark LE DELIZIE ZARA and figurative mark ZARA
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 144, 149-156)
Re:
Action brought against the decision of the Fourth Board of Appeal of EUIPO of 8 May 2020 (Case R 2040/2019-4), relating to opposition proceedings between Ffauf Italia and Inditex.
Operative part
The Court:
2. | | Orders Industria de Diseño Textil, SA (Inditex) to pay the costs. |