Judgment of the General Court (First Chamber) of 8 September 2010 – Kido v OHIM – Amberes (SCORPIONEXO)
(Case T-152/08)
Community trade mark – Opposition proceedings – Application for Community word mark SCORPIONEXO – Earlier national figurative mark ESCORPION – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009)
1.                     Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Application submitted expressly and on time by the applicant – Possibility of submitting the application for the first time before the General Court – Not included (Council Regulation No 40/94, Art. 43(2) and (3)) (see paras 18-22)
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 registered for identical or similar goods or services – Likelihood of confusion with the earlier mark (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 39-40, 81-83)
3.                     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 registered for identical or similar goods or services – Similarity between the goods or services in question – Criteria for assessment (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 48)
Re:
ACTION brought against the decision of the First Board of Appeal of OHIM of 31 January 2008 (Case R 287/2007-1), relating to opposition proceedings between Amberes, SA and Kido Industrial Ltd.
Information relating to the case
Applicant for the Community trade mark:
Kido Industrial Ltd
Community trade mark sought:
Word mark SCORPIONEXO for goods in Classes 9 and 28 Application No – 3886249
Proprietor of the mark or sign cited in the opposition proceedings:
Amberes, SA
Mark or sign cited in opposition:
Spanish figurative marks (No 339142, No 499599, No 499600 and No 339140) and international figurative marks (No 206346 and No 206347) composed of the design of a scorpion and the word ESCORPION, for goods in Classes 6, 8, 12, 16, 20, 21 and 28; and in Classes 22, 24 to 26 respectively. Spanish word mark ESCORPION (No 555764) for goods in Class 25. Community word mark ESCORPION (No 778217) for goods in Classes 22, 24 to 26.
Decision of the Opposition Division:
The Opposition Division, founding its decision solely on the earlier Spanish figurative mark No 339142 allowed the opposition in respect of goods in Classes 9 and 28, and refused entirely the application for registration in respect of those goods.
Decision of the Board of Appeal:
Appeal dismissed
Operative part
The Court:
1.
Dismisses the action;
2.
Orders Kido Industrial Ltd to pay the costs.