Case T‑133/09

I Marchi Italiani Srl and
Antonio Basile

v

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

(Community trade mark — Invalidity proceedings — Community figurative mark B. Antonio Basile 1952 — Earlier national word mark BASILE — Relative ground for refusal — Limitation in consequence of acquiescence — Article 53(2) of Regulation (EC) No 40/94 (now Article 54(2) of Regulation (EC) No 207/2009) — Likelihood of confusion — Article 8(1) of Regulation No 40/94 (now Article 8(1) of Regulation No 207/2009))

Summary of the Judgment

1.      Community trade mark — Appeals procedure — Appeal before a Court of the European Union — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Account taken by the General Court of matters of law and fact which have not been raised previously before the departments of OHIM — Exclusion

(Rules of Procedure of the General Court, Art. 135(4); Council Regulation No 40/94, Art. 63)

2.      Community trade mark — Surrender, revocation and invalidity — Limitation in consequence of acquiescence — Limitation period — Point from which time starts to run

(Council Regulation No 40/94, Art. 53(2))

3.      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 — Assessment of the likelihood of confusion

(Council Regulation No 40/94, Art. 8(1)(b))

4.      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 — Similarity of the marks concerned — Criteria for assessment — Composite mark

(Council Regulation No 40/94, Art. 8(1)(b))

5.      Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark B. Antonio Basile 1952 and word mark BASILE

(Council Regulation No 40/94, Arts 8(1)(b) and 52(1)(a))

1.      See the text of the decision.

(see paras 16, 19, 23)

2.      Four conditions must be satisfied before the period of limitation in consequence of acquiescence starts running if there is use of a later trade mark which is identical with the earlier trade mark or confusingly similar. First, the later trade mark must be registered. Second, the application for its registration must have been made by its proprietor in good faith. Third, the later trade mark must be used in the Member State where the earlier trade mark is protected. Fourth, the proprietor of the earlier trade mark must be aware of the use of that trade mark after its registration.

The aim of Article 53(2) of Regulation No 40/94 on the Community trade mark is to penalise the proprietors of earlier trade marks who have acquiesced, for a period of five successive years, in the use of a later Community trade mark while being aware of such use, by excluding them from seeking a declaration of invalidity or from bringing opposition proceedings in respect of that trade mark, which will then therefore be able to coexist with the earlier trade mark. It is from the time when the proprietor of the earlier trade mark becomes aware of the use of the later Community trade mark that it has the option of not acquiescing in its use and, therefore, opposing it or seeking a declaration of invalidity of the later trade mark. It may not be held that the proprietor of the earlier trade mark acquiesced in the use of the later Community trade mark once it was aware of its use, if it was not in a position to oppose its use or to seek a declaration of invalidity thereof.

It follows from a teleological interpretation of Article 53(2) of Regulation No 40/94 that the relevant date from which the period of limitation in consequence of acquiescence starts running is when the proprietor becomes aware of the use of that mark. That date must necessarily be later than that of registration of the trade mark, that is to say when the rights in a Community trade mark are obtained (see recital 7 of Regulation No 40/94), and that mark will be used as a registered trade mark on the market with third parties therefore being aware of its use. Therefore, it is from the time when the proprietor of the earlier trade mark is made aware of the use of the later Community trade mark, after its registration, and not the date on which the application for the Community trade mark is filed, that the period of limitation in consequence of acquiescence starts running.

(see paras 31-33)

3.      See the text of the decision.

(see paras 38, 40, 62)

4.      See the text of the decision.

(see paras 41, 42, 45, 46)

5.      There is, for the Italian consumer, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark between the figurative sign B. Antonio Basile 1952, registered as a Community trade mark in respect of ‘Shirts, knitwear, outerwear for men, women and children, except clothing of leather, neckties, underwear, shoes, hats, socks, scarves for men, women and children’ in Class 25 of the Nice Agreement, and the word mark BASILE, previously registered in Italy and as an international mark in respect of ‘Outerwear for men made of fabric, leather, wool or other material, such as jackets, trousers, including jeans, shirts, short-sleeved shirts, t-shirts, vests, jumpers, jackets, overcoats, raincoats, coats, suits, swimming clothes, dressing gowns’ in the same class, in so far as the goods covered by the marks at issue are identical or similar and to the extent that the marks at issue are similar.

(see paras 61, 63, 64, 69)