Source: EURLEX
Language: en
Format: md

Case T‑389/16

Agricola italiana alimentare SpA (AIA)

v

European Union Intellectual Property Office

(EU trade mark — Invalidity proceedings — European Union word mark MONTORSI F. & F. — Earlier national word mark Casa Montorsi — Relative ground for invalidity — Likelihood of confusion — Article 53(1)(a) and Article 8(1)(b) of Regulation (EC) No 207/2009 — Agreement on coexistence of the marks — Scope — Article 53(3) of Regulation No 207/2009)

Summary — Judgment of the General Court (Eighth Chamber), 13 July 2017

1. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Proprietor of an earlier right having consented expressly to the registration of an EU mark — Peaceful coexistence no substitute for express consent

   (Council Regulation No 207/2009, Art. 53(3))
2. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Word marks MONTORSI F. & F and Casa Montorsi

   (Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a))
3. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Coexistence of earlier marks on the market — Effect

   (Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a))

1. Article 53(3) of Regulation No 207/2009 on the EU trade mark provides that an EU trade mark may not be declared invalid where the proprietor of a right referred to in paragraphs 1 or 2 consents expressly to the registration of that mark before submission of the application for a declaration of invalidity or the counterclaim.

   Article 53(3) of Regulation No 207/2009 therefore requires that the proprietor of an earlier right have consented expressly to the registration of an EU mark in order to be prevented from subsequently submitting an application for a declaration that that mark is invalid.

   Thus, in a case where the proprietor of disputed trade marks maintained that the applicants for a declaration that those marks were invalid, owing to a likelihood of confusion, had consented to the registration of the marks through, in particular, peaceful coexistence and a coexistence agreement, the General Court has observed that the agreement of the proprietor of the right must be express for the registration of a sign that might result in a likelihood of confusion to be permitted. The General Court inferred, first, that peaceful coexistence of the marks could not take the place of express consent for the purposes of Article 53(3) of Regulation No 207/2009. Secondly, as regards the coexistence agreement, the General Court, after pointing out that that agreement did not concern the contested marks, but a different mark, stated that the agreement could not be interpreted in such a way as to extend beyond its scope without the express consent of the parties, for the purposes of Article 53(3) of Regulation No 207/2009.

   (see paras 38-40)
2. See the text of the decision.

   (see paras 69-71)
3. Whilst it is not precluded that the coexistence of earlier marks on the market could reduce the likelihood of confusion between two competing marks, the fact nonetheless remains that such a possibility can be taken into consideration only if, during the procedure before the European Union Intellectual Property Office, the proprietor of the contested EU trade mark duly demonstrated that such coexistence was based upon the absence of a likelihood of confusion on the part of the relevant public between the earlier marks on which it relies and the earlier mark on which the application for a declaration of invalidity is based and provided that the earlier marks at issue and the competing marks are identical.

   (see para. 70)

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