Source: EURLEX
Language: en
Format: md

**Judgment of the General Court (Fourth Chamber) of 7 July 2010 – Valigeria Roncato 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) No 40/94 (now Article 8(4) and (5) of Regulation (EC) No 207/2009)

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 R 237/2008 1 and R 236/2008 1) 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 (No 622773), Italian word mark RONCATO (No 510528) 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. |

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