Judgment of the General Court (Fifth Chamber) of 26 September 2012 — IG Communications v OHIM — Citigroup and Citibank (CITIGATE)

(Case T-301/09)

‛Community trade mark — Opposition proceedings — Application for Community word mark CITIGATE — Earlier national and Community word and figurative marks containing the element ‘citi’ — Relative grounds for refusal — Likelihood of confusion — Family of trade marks — Article 8(1)(b) of Regulation (EC) No 207/2009 — Unfair advantage taken of the distinctive character or the repute of the earlier trade mark — Article 8(5) of Regulation No 207/2009’

1. 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 — Likelihood of association — Earlier marks having characteristics allowing them to be regarded as forming part of the same ‘series’ or ‘family’ — Conditions (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 20-23, 86)

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 — Word mark CITIGATE — Word and figurative marks containing the element ‘citi’ (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 43, 60, 79, 87-90)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Taking unfair advantage of the distinctive character or repute of the earlier mark — Word mark CITIGATE — Word and figurative marks containing the element ‘citi’ (Council Regulation No 207/2009, Art. 8(5)) (see paras 103-104, 119-122, 125-126)

Re:

ACTION against the decision of the First Board of Appeal of OHIM of 30 April 2009 (Case R 821/2005-1) concerning opposition proceedings between Citigroup, Inc. and Citibank, NA, on the one hand, and IG Communications Ltd on the other.

Operative part

The Court:

1. Dismisses the action;

2. Orders IG Communications Ltd to pay the costs.

Judgment of the General Court (Fifth Chamber) of 26 September 2012 — IG Communications v OHIM — Citigroup and Citibank (CITIGATE)

(Case T-301/09)

‛Community trade mark — Opposition proceedings — Application for Community word mark CITIGATE — Earlier national and Community word and figurative marks containing the element ‘citi’ — Relative grounds for refusal — Likelihood of confusion — Family of trade marks — Article 8(1)(b) of Regulation (EC) No 207/2009 — Unfair advantage taken of the distinctive character or the repute of the earlier trade mark — Article 8(5) of Regulation No 207/2009’

1. 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 — Likelihood of association — Earlier marks having characteristics allowing them to be regarded as forming part of the same ‘series’ or ‘family’ — Conditions (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 20-23, 86)

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 — Word mark CITIGATE — Word and figurative marks containing the element ‘citi’ (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 43, 60, 79, 87-90)

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Taking unfair advantage of the distinctive character or repute of the earlier mark — Word mark CITIGATE — Word and figurative marks containing the element ‘citi’ (Council Regulation No 207/2009, Art. 8(5)) (see paras 103-104, 119-122, 125-126)

Re:

ACTION against the decision of the First Board of Appeal of OHIM of 30 April 2009 (Case R 821/2005-1) concerning opposition proceedings between Citigroup, Inc. and Citibank, NA, on the one hand, and IG Communications Ltd on the other.

Operative part

The Court:

1. Dismisses the action;