Judgment of the General Court (Second Chamber) of 14 November 2017 – Claranet Europe v EUIPO – Claro (claranet)
(Case T-129/16)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark claranet — Earlier Benelux word mark CLARO — Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)
1. 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 18, 20, 88)
2. 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 – Figurative mark claranet and word mark CLARO
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 21, 22, 89, 90)
3. 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 para 23)
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 – Similarity of the marks concerned – Criteria for assessment – Composite mark
(Council Regulation No 207/2009, Art. 8(1)(b))
(see paras 26-28, 35)
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 – Similarity of the marks concerned – Assessment of the distinctiveness of an element composing a trade mark
(Council Regulation No 207/2009, Art. 8(1)(b))
(see para 29)
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 – Similarity of the marks concerned – Elements of a trade mark having a descriptive character
(Council Regulation No 207/2009, Art. 8(1)(b))
(see para 36)
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 – Weak distinctive character of the earlier mark – Effect
(Council Regulation No 207/2009, Art. 8(1)(b))
(see para 47)
8. 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 – Identical number of letters composing two word marks – Presence of several letters in the same order
(Council Regulation No 207/2009, Art. 8(1)(b))
(see para. 54)
9. EU trade mark – Decisions of the Office – Principle of equal treatment – Principle of sound administration – EUIPO’s previous decision-making practice – Principle of legality – Need for a strict and complete examination in each particular case
(Council Regulation No 207/2009)
(see paras 94-96)
10. EU trade mark – Procedural provisions – Statement of reasons for decisions – First sentence of Article 75 of Regulation No 207/2009 – Scope identical to that of Article 296 TFEU
(Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence)
(see para. 101)
11. EU trade mark – Procedural provisions – Statement of reasons for decisions – Scope
(Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence)
(see para. 102)
Re:
| ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 January 2016 (Case R 803/2015-4), relating to opposition proceedings between Claro and Claranet Europe. |
Operative part
The Court:
1. Dismisses the action;
2. Orders Claranet Europe Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).