Whether Article 8(3) of Regulation No 216/96 permits a part of the decision of the Opposition Division of EUIPO to be called into question which has not been challenged by the main appeal and which has therefore become final.

The Court held that BSH could not raise this plea for the first time on appeal, and thus, it was inadmissible.

Whether the General Court erred in its assessment of the likelihood of confusion under Article 8(1)(b) of Regulation No 40/94.

The Court confirmed that the General Court did not err in law and that the likelihood of confusion can exist even for marks with weak distinctive character.

Likelihood of confusion can exist even for marks with weak distinctive character.

European Court of Justice (Grand Chamber) · 8 november 2016 · Judgment · Appeal

‛Appeal — EU trade mark — Application for registration of a figurative mark including the word elements ‘compressor technology’ — Opposition of the proprietor of the word marks KOMPRESSOR PLUS and KOMPRESSOR — Partial refusal of registration — Regulation (EC) No 207/2009 — Article 60 — Regulation (EC) No 216/96 — Article 8(3) — ‘Ancillary’ appeal — Regulation (EC) No 40/94 — Article 8(1)(b) — Weak distinctive character of the earlier national marks — Likelihood of confusion’

Rechtsvraag

Whether the General Court erred in law by dismissing BSH Bosch und Siemens Hausgeräte GmbH’s appeal against the decision of the First Board of Appeal of EUIPO, which partially upheld LG Electronics Inc.’s opposition to the registration of the figurative mark 'compressor technology'.

Conclusie

The General Court did not err in law in dismissing BSH Bosch und Siemens Hausgeräte GmbH’s appeal. The likelihood of confusion between the figurative mark 'compressor technology' and the earlier marks KOMPRESSOR and KOMPRESSOR PLUS was correctly assessed, taking into account the similarity of the signs and the goods, even considering the weak distinctive character of the earlier marks. The appeal was dismissed, and BSH was ordered to pay the costs.

Tijdlijn

24-11-2008 BSH Bosch und Siemens Hausgeräte GmbH filed an application for registration of a figurative sign as an EU trade mark with EUIPO.
02-02-2009 The application was published in the European Union Trade Marks Bulletin No 4/2009.
30-04-2009 LG Electronics Inc. filed a notice of opposition to the registration of the trade mark at issue.
03-05-2012 The Opposition Division of EUIPO partially upheld LG's opposition and rejected the application for registration of the EU trade mark in respect of certain goods.
26-06-2012 BSH filed a notice of appeal with EUIPO seeking annulment of the decision of the Opposition Division.
31-10-2012 LG submitted a response to BSH's appeal, seeking alteration of the decision of the Opposition Division.
08-11-2012 A copy of LG's response was sent to BSH, and the written proceedings were closed.
05-09-2013 The First Board of Appeal of EUIPO dismissed BSH's appeal and partially upheld LG's claim.
03-12-2013 The decision of the First Board of Appeal was amended by a corrigendum.
13-11-2013 BSH filed an action for annulment of the decision at issue at the Registry of the General Court.
04-12-2014 The General Court dismissed BSH's action for annulment of the decision of the First Board of Appeal of EUIPO.
03-02-2015 BSH brought an appeal under Article 56 of the Statute of the Court of Justice of the European Union.