CELEX: 62009TJ0124
Language: en
Date: 2010-07-07 00:00:00
Title: Judgment of the General Court (Fourth Chamber) of 7 July 2010. # Valigeria Roncato SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). # 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). # Case T-124/09.

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.