Was the General Court correct in its methodology and criteria for defining use 'in relation to part ... of the goods or services' under Article 42(2) of Regulation No 207/2009?

Yes, the Court confirmed that the General Court correctly applied the criteria for defining an independent subcategory of goods for the purposes of assessing genuine use.

Did the General Court err in its assessment of the visual, phonetic, and conceptual similarities between the conflicting signs 'tigha' and 'TAIGA' under Article 8(1)(b) of Regulation No 207/2009?

No, the Court found that the General Court correctly assessed the similarities and the likelihood of confusion, taking into account the relevant public's perception.

Proof of genuine use must consider actual use and not hypothetical subcategories.

European Court of Justice (Second Chamber) · 16 juli 2020 · Judgment · Appeal

(Appeal — EU trade mark — Regulation (EC) No 207/2009 — Application for registration of EU word mark tigha — Opposition filed by the proprietor of the earlier EU trade mark TAIGA — Partial dismissal of the application for registration — Article 8(1)(b) — Assessment of the likelihood of confusion — Assessment of the conceptual similarity of the signs at issue — Article 42(2) — Proof of genuine use of the earlier mark — Proof of use ‘in relation to part … of the goods or services’ — Determination of an independent subcategory of goods)

Rechtsvraag

Whether the General Court erred in its application of Articles 42(2) and 8(1)(b) of Regulation No 207/2009 in determining the likelihood of confusion between the EU word mark 'tigha' and the earlier EU trade mark 'TAIGA'.

Regel

Article 8(1)(b), Regulation No 207/2009 (Likelihood of confusion)
Article 42(2), Regulation No 207/2009 (Proof of genuine use of the earlier mark)

Conclusie

The Court of Justice dismissed the appeal, finding no errors in the General Court’s application of Articles 42(2) and 8(1)(b) of Regulation No 207/2009. The decision to reject the registration of the mark 'tigha' due to the likelihood of confusion with the earlier mark 'TAIGA' was upheld.

Tijdlijn

28-12-2012 ACTC GmbH filed an application for registration of the EU word mark 'tigha' with the EU Intellectual Property Office (EUIPO).
16-01-2013 The EU trade mark application for 'tigha' was published in the European Union Trade Marks Bulletin No 2013/011.
12-04-2013 Taiga AB filed a notice of opposition against the registration of the 'tigha' mark, citing their earlier EU word mark 'TAIGA'.
09-02-2015 The EUIPO's Opposition Division rejected Taiga AB's opposition against the 'tigha' mark in its entirety.
28-09-2015 Taiga AB filed a notice of appeal with the Office for Harmonization in the Internal Market (OHIM) against the decision of the Opposition Division.
09-12-2016 The Fourth Board of Appeal of EUIPO partially annulled the Opposition Division's decision and rejected the application for registration of the 'tigha' mark for goods in Class 25.
13-02-2017 ACTC GmbH lodged an application at the General Court for annulment of the Board of Appeal's decision.
13-09-2018 The General Court dismissed ACTC GmbH's action for annulment of the Board of Appeal's decision.
14-11-2018 ACTC GmbH brought an appeal under Article 56 of the Statute of the Court of Justice of the European Union to have the General Court's judgment set aside.
19-12-2019 The Advocate General delivered their opinion on the case at the sitting.
16-07-2020 The ECJ (Second Chamber) dismissed the appeal brought by ACTC GmbH and ordered them to pay the costs.