Judgment of the General Court (Third Chamber) of 25 May 2011 – São Paulo Alpargatas v OHIM – Fischer (BAHIANAS LAS ORIGINALES)

(Case T-422/09)

Community trade mark – Opposition proceedings – Application for Community figurative mark BAHIANAS LAS ORIGINALES – Earlier Community and national figurative trade marks havaianas and earlier national word mark HAVAIANAS – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Article 8(1)(b) of Regulation (EC) No 207/2009

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 207/2009, Art. 8(1)(b)) (see paras 19, 41-42)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 17 August 2009 (Case R 1477/2008-2), concerning opposition proceedings between São Paulo Alpargatas, SA and Enrique Fischer.

Information relating to the case

Applicant for the Community trade mark:	Enrique Fischer
Community trade mark sought:	Figurative mark containing the word component BAHIANAS LAS ORIGINALES for goods in Class 25 – Application No 5024591
Proprietor of the mark or sign cited in the opposition proceedings:	São Paulo Alpargatas, SA
Mark or sign cited in opposition:	Community figurative mark containing the word component havaianas (No 3772431), Spanish figurative mark containing the word component havaianas (M2341904) and Spanish word mark HAVAIANAS (M2341905), all for goods in Class 25
Decision of the Opposition Division:	Application for Community mark dismissed in its entirety
Decision of the Board of Appeal:	Decision of the Opposition Division annulled

Operative part

The Court:

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 17 August 2009 (Case R 1477/2008-2);

2. Orders OHIM to pay its own costs and the costs incurred by São Paulo Alpargatas, SA;

3. Orders Enrique Fischer to pay his own costs.