Judgment of the General Court (First Chamber) of 9 September 2011 – Ergo Versicherungsgruppe v OHIM – DeguDent (ERGO)

(Case T-382/09)

Community trade mark – Opposition proceedings – Application for Community word mark ERGO – Prior Community and national word marks CERGO – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Duty to rule on the entirety of the action – Scope of the examination to be carried out by the Board of Appeal – Article 64(1) of Regulation No 207/2009

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 207/2009, Art. 8(1)(b)) (see paras 28, 61-62, 66)

Re:

ACTION against the decision of the Fourth Board of Appeal of OHIM of 23 July 2009 (Case R 44/2008‑4) concerning opposition proceedings between DeguDent GmbH and Ergo Versicherungsgruppe AG.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 23 July 2009 (Case R 44/2008‑4) in so far as the Board of Appeal omitted to rule on the action brought before it as regards goods in Class 5;

2. Dismisses the remainder of the action;

3. Orders Ergo Versicherungsgruppe AG, DeguDent Gmbh and OHIM each to bear their own costs.