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.