Case C-234/06 P: Appeal brought on  24 May 2006  by Il Ponte Finanziaria SpA against the judgement of the Court of First Instance (Fourth Chamber) delivered on  23 February 2006  in Case T-194/03 Il Ponte Finanziaria SpA v OHIM and Marine Entreprise Project — Società Unipersonale di Alberto Fiorenzi Srl
Date: 2006-07-29
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), appeal, clothing industry, footwear industry, leather, trade-mark law

29.7.2006

EN

Official Journal of the European Union

C 178/23

Pleas in law and main arguments

The appellant maintains that the Court of First Instance erred
in interpreting article 8 (1) (b) of Regulation (EC) No 40/94 (1)
because:

The Court of First Instance ignored the fact that the apprecia-
tion of
the likelihood of confusion depends on numerous
elements, mentioned in the seventh recital of the preamble to
Council Regulation (EC) No 41/94 (2) and, in particular, on the
recognition of the trade mark on the market and not only on
the degree of similarity between the trade mark and the sign
and between the goods and services identified.

The earlier trade mark ‘Ferrero’ is not being used to identify
products sold on the German market. As a result there is no
likelihood of confusion for the average German consumer who
does not associate the trademark ‘Ferrero’ with its products,
whatever the degree of similarity between the two signs.

The Court of First Instance also ignored the fact that, according
to the settled case-law of the Court of Justice, the likelihood of
confusion on the part of the public must be appreciated glob-
ally, taking into account all factors relevant to the circum-
stances of the case. Furthermore, a global assessment of the
likelihood of confusion implies some interdependence between
the relevant factors. The appellant submits that, had the Court
of First Instance taken into account the interdependence of the
relevant factors, it would have concluded that there is little risk
of confusion.

Other parties to the proceedings: Office for Harmonisation in the
Internal Market (Trade Marks and Designs) and Marina Entre-
prise Project — Società Unipersonale di Alberto Fiorenzi

Form of order sought

(1) Set aside the judgement of

Instance
(Fourth Chamber) of 23 February 2003 in Case T-194/03
which dismisses the applicant's action and orders it to pay
the costs.

the Court of First

(2) Uphold the action brought by the applicant before the

Court of First Instance:

(a) by annulling the decision of

the Fourth Board of
Appeal of the OHIM of 17 March 2003 in Case R
1015/2001-4, on the ground that, by dismissing the
it allowed the Community trade
applicant's action,
mark No 940007 BAINBRIDGE
for
products in Classes 18 to 25;

(figurative)

(b) by ordering the OHIM and the intervener to pay the
costs of the proceedings at first instance and of the
present appeal.

(1) OJ L 11, p. 1-36.
(2) OJ L 209, p. 18-19.

Pleas in law and main arguments

Appeal brought on 24 May 2006 by Il Ponte Finanziaria
SpA against the judgement of the Court of First Instance
(Fourth Chamber) delivered on 23 February 2006 in Case
T-194/03 Il Ponte Finanziaria SpA v OHIM and Marine
Entreprise Project — Società Unipersonale di Alberto Fior-
enzi Srl

(Case C-234/06 P)

(2006/C 178/37)

Language of the case: Italian

The applicant submits that
vitiated due to:

the judgement under appeal

is

(1) Misapplication of Article 8(1)(b) of Regulation (EC) No
40/94 in that there is a risk of confusion between the
conflicting trade marks:

— the Court erred in considering that

there was no
minimum degree of similarity between the intervener's
trade mark BAINBRIDGE and the applicant's family of
trade marks including the term ‘THE BRIDGE’, when it
itself recognised that the opposing trade mark BAIN-
BRIDGE has a ‘significant’ phonetic similarity to some
of the applicant's trade marks; a similarity which is not
between
conceptual
outweighed
between the opposing trade marks, given that
the
‘premiss’ on which the Court based itself, according to
which the average Italian consumer has
sufficient
knowledge of the English language to enable them to
understand the meaning of the word ‘BRIDGE’ is clearly
wrong;

difference

by

a

Parties

Appellant: Il Ponte Finanziaria SpA (represented by: P. Ronca-
glia, A. Torrigiani Malaspina, M. Boletto, lawyers)

— if therefore the opposing trade marks have at least a
minimum degree of similarity, the identity of the goods
and the highly distinctive character of the applicant's
trade marks should have led to a finding of a risk of
confusion.

C 178/24

EN

Official Journal of the European Union

29.7.2006

(2) Misapplication of Article 43(2) and (3) of Regulation No
40/94 as the Court did not take into consideration the
applicant's word mark No 642952 THE BRIDGE;

— as regards the word mark THE BRIDGE, the applicant
has provided sufficient proof of use to establish the
serious and effective use of the trade mark in question
within the meaning of Rule 22(2) of Regulation (EC)
No 2868/95;

— the Court misapplied Article 43(2) and (3) of Regulation
No 40/94 in so far as it did not consider the suitability
of the documents provided by the applicant to prove
the use of its trade mark but limited itself to stating
that the Board of Appeal was correct to not take such a
trade mark into consideration as the applicant did not
provide proof of continuous use thereof for all of the
five reference years, which is not a legal requirement.

(3) Misapplication of Articles 15(2)(a) and 43(2) and (3) of
Regulation No 40/94 in that the Court did not take into
consideration the applicant's figurative mark No 370836
BRIDGE;

— the Court, while recognising the fact that the applicant
is the proprietor of a ‘family’ of marks in a series
turning on the sign ‘Bridge’ was in principle relevant for
the purpose of evaluation of the existence of a risk of
confusion, in the specific case, omitted to take those
trade marks into consideration because they are regis-
tered but not used, when in fact the use of those trade
marks is not relevant to the fact that they must be
considered as a ‘series’.

Action brought on 29 May 2006 — Commission of the
European Communities v Italian Republic

(Case C-239/06)

(2006/C 178/38)

Language of the case: Italian

— the proof of use produced by the applicant to demon-
strate the effective use of the trade mark THE BRIDGE
should have been considered sufficient to also demon-
strate the use of the trade mark BRIDGE;

Parties

Applicant: Commission of the European Communities (repre-
sented by: G. Wilms, C. Cattabriga, L. Visaggio, agents)

— in any case, the applicant's figurative mark BRIDGE is
to be considered as a ‘defensive’ trade mark for the
purposes of the Italian law on trade marks and, as such,
is exempt from proof of use;

Defendant: Italian Republic

— the Court erred in accepting the argument put forward
for the first time by the OHIM (making it in any case
inadmissible) that the concept of defensive trade mark
is incompatible with the system of protection of the
Community trade mark. In fact, several arguments mili-
tate in favour of the compatibility of the ‘defensive’
trade mark with the Community system.

(4) Misapplication of Article 8(1)(b) of Regulation No 40/94 in
that the fact that the applicant is the proprietor of several
trade marks all turning on the word ‘bridge’ (marks in a
series) increases the risk of confusion between those trade
marks taken as a whole and the trade mark BAINBRIDGE;

Form of order sought

— Declare that the Italian Republic, by refusing to calculate
and pay the own resources which were improperly not
collected as a result of the exemption from import duties
unilaterally applied to material used for military purposes
and the default interest due by reason of the failure to make
those own resources available to the Commission in good
time, the Italian Republic has failed to fulfil its obligations
under Articles 2, 9, 10 and 11 of Regulation (EEC,
Euratom) No 1552/89 and the corresponding provisions of
Regulation (EC, Euratom) No 1150/2000.

— Order the Italian Republic to pay the costs.