Action brought on 9 March 2011 - Consorzio vino Chianti Classico v OHIM - Fédération française de rugby (Emblem with a drawing of a rooster)

(Case T-143/11)

Language in which the application was lodged: English

Parties

Applicant: Consorzio vino Chianti Classico (Radda in Chianti, Italy) (represented by: S. Corona and G. Ciccone, lawyers)

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

Other party to the proceedings before the Board of Appeal: Fédération française de rugby (Paris, France)

Form of order sought

Annul the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 10 January 2011 in case R 43/2010-4 and the Community trade mark application No 5713888 shall be prevented for registration, as of the date of the opposition;

Subordinately, alter the above mentioned decision and prevent the application for the contested sign for registration for wines in class 33; and

Order the other party to the proceedings before the Board of Appeal to pay its own costs, as well as those of the applicant, also for the proceedings in front of the Opposition Division and the Board of Appeal.

Pleas in law and main arguments

Applicant for a Community trade mark: The other party to the proceedings before the Board of Appeal

Community trade mark concerned: The figurative mark "F.F.R" with the description "orange-yellow: PMS reference 1235C; gold: PMS reference 145C; red: PMS reference 1795C", for goods in class 33 - Community trade mark application No 5713888

Proprietor of the mark or sign cited in the opposition proceedings: The applicant

Mark or sign cited in opposition: Italian trade mark application No FI2007C00984 of the figurative mark (collective) "CONSORZIO VINO CHIANTI CLASSICO - CHIANTI CLASSICO", for goods in class 33; Italian collective trade mark registration No 856049 of the figurative mark "CHIANTI CLASSICO - CONSORZIO DEL MARCHIO STORICO", for goods in class 33; Italian collective trade mark registration No 856219 of the figurative mark "CHIANTI CLASSICO - CHIANTI CLASSICO - CONSORZIO", for goods in class 33; Italian collective trade mark registration No 1006311 of the figurative mark "CHIANTI CLASSICO - SINCE 1716", for goods in class 33; Italian collective trade mark registration No 856048 of the figurative mark "CHIANTI CLASSICO - CONSORZIO DEL MARCHIO STORICO", for goods in class 33; United Kingdom trade mark registration No 1215633 of the figurative mark "CONSORTIO VINO CHIANTI CLASSICO", for goods in class 33; German and France well known trade mark "CHIANTI CLASSICO - CONSORZIO VINO CHIANTI CLASSICO", for goods in class 33; and non registered trade mark used in the course of trade in Germany and France "CHIANTI CLASSICO - CONSORZIO VINO CHIANTI CLASSICO", for goods in class 33.

Decision of the Opposition Division: Upheld the opposition

Decision of the Board of Appeal: Annulled the decision of the Opposition Division and rejected the opposition in its entirety

Pleas in law: Infringement of Articles 8(1)(b) and 8(5) of Council Regulation No 207/2009, as the Board of Appeal: (i) wrongly concluded that there is no likelihood of confusion between the contested sign and the applicant's trademarks and it did not take into adequate consideration the enhanced distinctiveness of the applicant's marks; (ii) failed to consider the detriment to the applicant's trademarks and the unfair advantage that the contested sign would gain if its registration were allowed; and (iii) failed to consider the specificity of the case, that in the nature of the collective trademark of the applicant's mark, with an institutional function that makes it one of the States hallmarks.

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