Judgment of the Court of First Instance (Fourth Chamber) of 12 March 2008 – Sebirán v OHIM – El Coto de Rioja (Coto D’Arcis)

(Case T-332/04)

Community trade mark – Opposition proceedings – Application for Community figurative mark Coto D’Arcis – Earlier Community word marks EL COTO and COTO DE IMAZ – Relative ground for refusal – Likelihood of confusion – No damage to reputation – Article 8(1)(b) and (5) of Regulation (EC) No 40/94

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 paras 45, 53)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 15 June 2004 (Case R 550/2003-2) concerning opposition proceedings between El Coto de Rioja SA and Sebirán SL.

Information relating to the case

Applicant for the Community trade mark:	Sebirán, SL
Community trade mark sought:	Figurative mark Coto D’Arcis for goods in Classes 32 and 33 – Application No 1558113
Proprietor of the mark or sign cited in the opposition proceedings:	El Coto de Rioja, SA
Mark or sign cited in opposition:	Community word marks EL COTO (No 339408) and COTO DE IMAZ (No 339333) in Classes 29, 32 and 33; International mark No 442377; and Spanish marks Nos 877219, 907966, 907967, 907985, 907989, 907993, 907994, 907995, 983888, 1290986, 1614514, 1758975 and 2172691
Decision of the Opposition Division:	Dismissal of the registration
Decision of the Board of Appeal:	Partial annulment of the decision of the Opposition Division, registration of the mark refused for goods in Classes 32 and 33

Operative part

The Court:

1. Dismisses the action;

2. Dismisses the application of El Coto de Rioja SA for the partial annulment of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 15 June 2004 (Case R 550/2003-2);

3. Orders Sebirán SL to pay its own costs and those of OHIM and one half of the costs of El Coto de Rioja SA;

4. Orders El Coto de Rioja SA to bear one half of its own costs.