Judgment of the General Court Third Chamber of 2 June 2021, Himmel v EUIPO – Ramirez Monfort Hispano Suiza, T-177/20
| Date | 02 June 2021 |
| Year | 2021 |
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Judgment of the General Court (Third Chamber) of 2 June 2021, Himmel v EUIPO – Ramirez
Monfort (Hispano Suiza), T-177/20
Link to the complete text of the judgment
EU trade mark – Opposition proceedings – Applicatio n for EU word mark Hispano Suiza – Earlier EU word
mark HISPANO SUIZA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation
Mr Monfort filed an application for registration of the EU word mark Hispano Suiza with the European
Union Intellectual Property Office (EUIPO) in respect of cars. Mr Himmel filed a notice of opposition to
registration of that mark on the ground that there is a likelihood of confusion with his ear lier EU word
mark HISPANO SUIZA, registered in respect of horological and chronometric instruments, and
clothing, footwear and headgear.
That opposition was rejected by EUIPO and Mr Himmel therefore brought an action before the
General Court.
In its judgment, the General Court annuls EUIPO’s decision and clarifies the criteria for assessing the
similarity of goods or services in the context of Article 8(1)(b) of Regulation No 207/2009,
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holding
that the existence of a market practice may constitute a relevant criterion for the purposes of that
examination.
The General Court’s findings
First, the General Court recalls the judgment of the Court of Justice in Canon,
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according to which, in
order to compare the similarity of the goods or services covered by the marks at issue, all the relevant
features relating to them should be taken into account, inter alia their nature, their intended purpose,
their method of use, and whether they are in competition with each other or are complementary. The
General Court points out, in the light of the wording used by the Court of Justice, that that list of
criteria is not exhaustive and has, moreover, been supplemented in the case-law of the General Court
and the Court of Justice by other criteria, including the usual origin of the goods concerned, their
distribution channels or the fact that the goods are promoted by the same specialised magazines.
Thus, according to the General Court, it cannot be ruled out that criteria other than those set out by
EUIPO in its decision, namely, besides the criteria established by the judgment in Canon, the
distribution channels and the fact that the sales outlets are the same, may be relevant in as sessing
the similarity of goods or services in general and of the goods in the present case. The General Court
therefore finds that EUIPO erred in law by ruling out, as a matter of principle, an assessment of the
similarity of the goods in the light of the market practices criterion. The General Court notes,
moreover, that that criterion, in particular the fact that goods and services are often sold together or
that consumers would consider it usual for the goods to be sold under the same trade mark, has
previously been taken into account in its case-law in assessing the similarity of goods or services.
Next, the General Court finds that the fact that a criterion is considered relevant to the assessment
under Article 8(5) of Regulation No 207/2009 does not necessarily mean that it is not relevant in the
application of paragraph 1(b) of that article.
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Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended.
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