Judgment of the General Court (Seventh Chamber) of 27 June 2013 — Repsol YPF v OHIM — Ajuntament de Roses (R)
(Case T‑89/12)
Community trade mark — Opposition proceedings — Application for Community figurative mark R — Earlier national figurative mark R — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009
1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Direction issued to the Office — Exclusion (Council Regulation No 207/2009, Art. 65) (see para. 15)
2. 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. 19)
3. Community trade mark — Appeals procedure — Action before the EU judicature — Legality of the decision of a Board of Appeal adjudicating in opposition proceedings — Challenged by the adducing of new facts — Not permissible — Account taken, for the purposes of interpreting EU law, of EU national or international case-law not cited before the OHIM bodies — Lawfulness (Council Regulation No 207/2009, Art. 65) (see para. 22)
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 — Assessment of the likelihood of confusion — Criteria (Council Regulation No 207/2009, Art 8(1)(b)) (see para. 26)
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 — Likelihood of confusion with the earlier mark — Figurative marks R (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 27, 43, 50-55)
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 of the marks concerned — Criteria for assessment (Council Regulation No 207/2009, Art 8(1)(b)) (see paras 28, 29)
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 — Weak distinctive character of the earlier mark — Relevance (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 45, 46, 53)
8. Community trade mark — Appeals procedure — Action before the EU judicature — Modification of the terms of the dispute as brought before the Board of Appeal — Not permissible (Rules of Procedure of the General Court, Art. 135(4)) (see para. 66)
9. Community trade mark — Definition and acquisition of the Community trade mark — Assessment of the registrability of a sign — Account to be taken only of Community legislation — Prior registration of the trade mark in certain Member States — Decisions not binding Community bodies (Council Regulation No 207/2009) (see para. 68)
10. Community trade mark — Decisions of the Office — Legality — OHIM’s previous decision-making practice — Principle of non-discrimination — No effect (Council Regulation No 207/2009) (see para. 69)
Re:
| ACTION brought against the decision of the Second Board of Appeal of OHIM of 5 December 2011 (Case R 1815/2010-2), relating to opposition proceedings between Ajuntament de Roses and Repsol YPF, SA. |
Operative part
The Court:
2. | | Orders Repsol YPF, SA to pay the costs. |