Judgment of the General Court (Eighth Chamber) of 2 October 2015

1. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesLikelihood of confusion with the earlier markAssessment of the likelihood of confusionAttention level of the public (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 24, 25)

2. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesLikelihood of confusion with the earlier markFigurative mark DarjeelingCollective word and figurative marks DARJEELING (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 30, 50, 53, 54)

3. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar collective trade mark registered for identical or similar goods or servicesSimilarity between the goods or services in questionCriteria for assessment (Council Regulation No 207/2009, Arts 8(1)(b), and 66(2) and (3)) (see paras 35, 41-43, 49)

4. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesLikelihood of confusion with the earlier markCriteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 36, 57, 58, 62)

5. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or servicesSimilarity between the goods or services in questionCriteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 37)

6. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar collective trade mark registered for identical or similar goods or servicesLikelihood of confusion with the earlier markCriteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see para. 59)

7. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesConditionsLink between the marksCriteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 66-68, 87, 88)

8. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesConditionsAttention level of the public (Council Regulation No 207/2009, Art. 8(5)) (see paras 70, 71)

9. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesConditionsTaking unfair advantage of the distinctive character or repute of the earlier markFigurative mark DarjeelingCollective word and figurative marks DARJEELING (Council Regulation No 207/2009, Art. 8(5)) (see paras 72, 73, 85, 92, 93, 142-145)

10. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesConditionsReputation of the mark in the Member State or the EUConceptCriteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 75, 81, 82)

11. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesAimProof to be adduced by proprietorFuture, non-hypothetical risk of unfair advantage or damage (Council Regulation No 207/2009, Art. 8(5)) (see paras 97, 134)

12. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesConditionsDetriment to the distinctive character of the earlier markBurden of proof (Council Regulation No 207/2009, Art. 8(5)) (see paras 99-102)

13. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesConditionsDetriment to the repute of the earlier trade mark (Council Regulation No 207/2009, Art. 8(5)) (see para. 114)

14. Community trade markDefinition and acquisition of the Community trade markRelative grounds for refusalOpposition by the proprietor of an earlier identical or similar mark enjoying a reputationProtection of well-known earlier mark extended to dissimilar goods or servicesConditionsTaking unfair advantage of the distinctive character or repute of the earlier mark (Council Regulation No 207/2009, Art. 8(5)) (see paras 123-125)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 September 2013 (Case R 1387/2012-2) concerning opposition proceedings between The Tea Board and Delta Lingerie.

Operative part

The Court:

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 11 September 2013 (Case R 1387/2012-2) as regards the goods in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and the ‘[r]etailing of women’s underwear and lingerie, perfumes, toilet water and cosmetic lotions, household and bath linen’ services in Class 35 of that agreement covered by the mark applied for;

2. Dismisses the action as to the remainder;

3. Orders each party to bear its own costs.