Action brought on 28 April 2009 - Vidieffe Srl v OHIM

(Case T -169/09)

Language in which the application was lodged: Italian

Parties

Applicant(s): Vidieffe Srl (Bologna, Italy) (represented by: M. Lamandini, avvocato, D. De Pasquale, avvocato, and M. Pappalardo, avvocato)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Other party to the proceedings before the Board of Appeal of OHIM: Perry Ellis International Group Holdings Ltd

Form of order sought

Annul, for breach of Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, OJ 2009 L 78, p. 1) and/or misuse of powers, the decision of 12 February 2009 of the first Board of Appeal of OHIM insofar as it upholds the appeal in part and annuls the part of the decision of the Opposition Division of OHIM which rejects the opposition in relation to 'leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas, parasols and walking sticks' in Class 18 and all goods in Class 25; as a result, uphold in full the decision of the Opposition Division of OHIM (proceedings No B 909 350 of 22 February 2008).

Order OHIM to take the necessary measures to comply with the decision of the Court of First Instance.

Order OHIM and Perry Ellis to bear all the costs of the proceedings.

Pleas in law and main arguments

Applicant for a Community trade mark: Vidieffe Srl

Community trade mark concerned: word mark 'GOTHA' (application for registration No 3 665 957), for goods in Classes 18 and 25.

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 2 896 199) for goods in Classes 3, 18 and 25.

Decision of the Opposition Division: rejection of the opposition in its entirety.

Decision of the Board of Appeal: appeal partially upheld.

Pleas in law: breach of Article 8(1)(b) of Regulation No 40/94 (replaced by Regulation No 207/2009) and misuse of powers in finding that there is a likelihood of confusing signs which are not likely to be confused.

____________