Appeal brought on 24 May 2006 by Il Ponte Finanziaria SpA against the judgment of the Court of First Instance (Fourth Chamber) delivered on 23 February 2006 in Case T-194/03 Il Ponte Finanziaria SpA v OHIM and Marine Entreprise Project - Società Unipersonale di Alberto Fiorenzi Srl
(Case C-234/06 P)
Language of the case: Italian
Parties
Appellant: Il Ponte Finanziaria SpA (represented by: P. Roncaglia, A. Torrigiani Malaspina, M. Boletto, lawyers)
Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs) and Marina Entreprise Project - Società Unipersonale di Alberto Fiorenzi
Form of order sought
(1) Set aside the judgment of the Court of First Instance (Fourth Chamber) of 23 February 2003 in Case T-194/03 which dismisses the applicant's action and orders it to pay the costs.
(2) Uphold the action brought by the applicant before the Court of First Instance:
(a) by annulling the decision of the Fourth Board of Appeal of the OHIM of 17 March 2003 in Case R 1015/2001-4, on the ground that, by dismissing the applicant's action, it allowed the Community trade mark No 940007 BAINBRIDGE (figurative) for products in Classes 18 to 25;
(b) by ordering the OHIM and the intervener to pay the costs of the proceedings at first instance and of the present appeal.
Pleas in law and main arguments
The applicant submits that the judgment under appeal is vitiated due to:
(1) Misapplication of Article 8(1)(b) of Regulation (EC) No 40/94 in that there is a risk of confusion between the conflicting trade marks:
- the Court erred in considering that there was no minimum degree of similarity between the intervener's trade mark BAINBRIDGE and the applicant's family of trade marks including the term 'THE BRIDGE', when it itself recognised that the opposing trade mark BAINBRIDGE has a 'significant' phonetic similarity to some of the applicant's trade marks; a similarity which is not outweighed by a conceptual difference between between the opposing trade marks, given that the 'premiss' on which the Court based itself, according to which the average Italian consumer has sufficient knowledge of the English language to enable them to understand the meaning of the word 'BRIDGE' is clearly wrong;
- if therefore the opposing trade marks have at least a minimum degree of similarity, the identity of the goods and the highly distinctive character of the applicant's trade marks should have led to a finding of a risk of confusion.
(2) Misapplication of Article 43(2) and (3) of Regulation No 40/94 as the Court did not take into consideration the applicant's word mark No 642952 THE BRIDGE;
- as regards the word mark THE BRIDGE, the applicant has provided sufficient proof of use to establish the serious and effective use of the trade mark in question within the meaning of Rule 22(2) of Regulation (EC) No 2868/95;
- the Court misapplied Article 43(2) and (3) of Regulation No 40/94 in so far as it did not consider the suitability of the documents provided by the applicant to prove the use of its trade mark but limited itself to stating that the Board of Appeal was correct to not take such a trade mark into consideration as the applicant did not provide proof of continuous use thereof for all of the five reference years, which is not a legal requirement.
(3) Misapplication of Articles 15(2)(a) and 43(2) and (3) of Regulation No 40/94 in that the Court did not take into consideration the applicant's figurative mark No 370836 BRIDGE;
- the proof of use produced by the applicant to demonstrate the effective use of the trade mark THE BRIDGE should have been considered sufficient to also demonstrate the use of the trade mark BRIDGE;
- in any case, the applicant's figurative mark BRIDGE is to be considered as a 'defensive' trade mark for the purposes of the Italian law on trade marks and, as such, is exempt from proof of use;
- the Court erred in accepting the argument put forward for the first time by the OHIM (making it in any case inadmissible) that the concept of defensive trade mark is incompatible with the system of protection of the Community trade mark. In fact, several arguments militate in favour of the compatibility of the 'defensive' trade mark with the Community system.
(4) Misapplication of Article 8(1)(b) of Regulation No 40/94 in that the fact that the applicant is the proprietor of several trade marks all turning on the word 'bridge' (marks in a series) increases the risk of confusion between those trade marks taken as a whole and the trade mark BAINBRIDGE;
- the Court, while recognising the fact that the applicant is the proprietor of a 'family' of marks in a series turning on the sign 'Bridge' was in principle relevant for the purpose of evaluation of the existence of a risk of confusion, in the specific case, omitted to take those trade marks into consideration because they are registered but not used, when in fact the use of those trade marks is not relevant to the fact that they must be considered as a 'series'.
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