Judgment of the General Court (Fourth Chamber) of 7 July 2010 – ValigeriaRoncato v OHIM – Roncato (CARLO RONCATO)
(Case T-124/09)
Community trade mark – Opposition proceedings – Application for community word mark CARLO RONCATO – Unregistered national figurative and word marks RV RONCATO and RONCATO – Earlier national figurative and word marks RV RONCATO and RONCATO – No likelihood of unfair advantage being taken of the distinctive character and repute of the earlier marks – Due cause for the use of the mark applied for – Relative grounds for refusal – Article 8(4) and (5) of Regulation (EC) No40/94 (now Article 8(4) and (5) of Regulation (EC) No207/2009)
1.Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the holder of an unregistered mark or other sign used in trade – Conditions (Council Regulation No 40/94, Art. 8(4)) (see para. 18)
2.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 enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions – Taking unfair advantage of the distinctive character or repute of the earlier mark (Council Regulation No 40/94, Art. 8(5)) (see paras 45, 47-51)
Re:
| ACTION brought against the decision of the First Board of Appeal of OHIM of 23 January 2009 (Cases R237/20081 and R236/20081) relating to opposition proceedings between Valigeria Roncato SpA and Roncato Srl. |
Information relating to the case
Applicant for the Community trade mark: | Roncato Srl |
Community trade mark sought: | Word mark CARLO RONCATO for goods in Classes 3, 9 and 14 – Application No 4631719 |
Proprietor of the mark or sign cited in the opposition proceedings: | Valigeria Roncato SpA |
Mark or sign cited in opposition: | Italian figurative mark RV RONCATO (No622773), Italian word mark RONCATO (No510528) and non‑registered Italian figurative marks RV RONCATO |
Decision of the Opposition Division: | Opposition upheld in part |
Decision of the Board of Appeal: | Opposition dismissed; Application for registration upheld in its entirety |
Operative part
The Court:
1. |
| Dismisses the action; |
2. |
| Orders Valigeria Roncato SpA to pay the costs. |