CELEX: 62009TJ0169
Language: en
Date: 2010-11-25 00:00:00
Title: Judgment of the General Court (Third Chamber) of 25 November 2010. # Vidieffe Srl v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). # Community trade mark - Opposition proceedings - Application for Community word mark GOTHA - Earlier Community figurative mark gotcha - Relative ground for refusal - Likelihood of confusion - Similarity of the signs - Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009). # Case T-169/09.

Judgment of the General Court (Third Chamber) of 25 November 2010 – Vidieffe v OHIM – Ellis International Group (GOTHA)
      (Case T-169/09)
      Community trade mark – Opposition proceedings – Application for Community word mark GOTHA – Earlier Community figurative mark gotcha – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) 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 proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood
            of confusion with the earlier mark – Weighting of the elements of similarity or difference between the signs – Taking into
            account of the intrinsic characteristics of the signs or the marketing conditions of the goods or services (Council Regulation
            No 40/94, Art. 8(1)(b)) (see para. 35)
      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 (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 58)
      Re: 
      
         
               ACTION brought against the decision of the First Board of Appeal of OHIM of 12 February 2009 (Case R 657/2008-1), relating
                  to opposition proceedings between Perry Ellis International Group Holdings, Ltd and Vidieffe Srl.
               
            Information relating to the case
      
               Applicant for the Community trade mark:
            
            
               Vidieffe Srl
            
         
               Community trade mark sought:
            
            
               Word mark GOTHA for goods in Classes 18 and 25 – Application No 3665957
            
         
               Proprietor of the mark or sign cited in the opposition proceedings: 
            
            
               Perry Ellis International Group Holdings, Ltd
            
         
               Mark or sign cited in opposition:
            
            
               Figurative Community trade mark gotcha (No 2896199) for goods in Classes 3, 18 and 25
            
         
               Decision of the Opposition Division:
            
            
               Opposition dismissed in its entirety
            
         
               Decision of the Board of Appeal:
            
            
               Appeal partially upheld
            
         
      Operative part 
      The Court:
      
         
                  1.
               
               
                  
               
               
                  	Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs)
                     (OHIM) of 12 February 2009 (Case R 657/2008-1), in so far as it annuls the decision of the Opposition Division, inasmuch as
                     that decision rejected the opposition, first, in respect of ‘[leather and imitations of leather] goods (not included in other
                     classes); trunks and travelling bags; umbrellas, parasols and walking sticks’ in Class 18 and, second, in respect of all the
                     goods in Class 25;
                  
               
            
         
                  2.
               
               
                  
               
               
                  	Dismisses the action as to the remainder;
               
            
         
                  3.
               
               
                  
               
               
                  	Orders OHIM to bear its own costs and pay those incurred by Vidieffe Srl.