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

Operative part

The Court:

1.

Dismisses the action;

2.

Orders Valigeria Roncato SpA to pay the costs.