Judgment of the General Court (First Chamber) of 5 October 2017 — Forest Pharma v EUIPO — Ipsen Pharma (COLINEB)
(Case T‑36/17)
(EU trade mark — Opposition proceedings — Application for EU word mark COLINEB — Earlier national figurative mark Colina — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009 — Extent of the examination to be carried out by the Board of Appeal — Article 76(1) of Regulation No 207/2009)
1. 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 — Account taken by the General Court of matters of law and fact not previously raised before the departments of EUIPO — Precluded
(Council Regulation No 207/2009, Art. 65)
(see para. 18)
2. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Need to determine that question, once raised by the applicant before the decision on the opposition — Consequence
(Council Regulation No 207/2009, Art. 42(2))
(see paras 20, 22, 23)
3. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Non-submission of plea based on insufficient proof of genuine use
(Council Regulation No 207/2009, Art. 42(2))
(see para. 21)
4. EU trade mark — Procedural provisions — Examination of the facts of the Office’s 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 paras 29, 30)
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 — Likelihood of confusion with the earlier mark — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
(see para. 47)
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 – Word mark COLINEB and figurative mark Colina
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 50, 66, 74, 96, 100-102)
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 — Similarity between the goods or services in question — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 51, 55, 60)
8. EU trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria
(Council Regulation No 207/2009)
(see para. 62)
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 75, 76, 81)
Re:
| ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 October 2016 (Case R 500/2016-5), relating to opposition proceedings between Ipsen Pharma and Forest Pharma. |
Operative part
The Court:
2. | | Orders Forest Pharma BV to bear is its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO); |
3. | | Orders Ipsen Pharma SAS to bear its own costs. |