Judgment of the Court of First Instance (Third Chamber) of 4 November 2008 – Group Lottuss v OHIM – Ugly (COYOTE UGLY)

(Case T-161/07)

Community trade mark – Opposition proceedings – Application for the figurative Community mark COYOTE UGLY – Earlier Community word mark COYOTE UGLY – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) 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 25-26, 35, 37)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 2 March 2007 (Joined Cases R 165/2006-2 and R 194/2006-2) concerning an opposition procedure between Ugly Inc. and Group Lottuss Corp., SL.

Information relating to the case

Applicant for the Community trade mark:	Group Lottuss Corp., SL
Community trade mark sought:	Figurative mark COYOTE UGLY for goods and services in Classes 9, 41 and 42 – Application No 2428795
Proprietor of the mark or sign cited in the opposition proceedings:	Ugly, Inc.
Mark or sign cited in opposition:	Community word mark COYOTE UGLY for goods in Classes 14, 16, 21, 25, 32 and 34, and earlier, well-known, unregistered word and figurative marks COYOTE UGLY for goods and services in Classes 14, 16, 21, 25, 32, 33, 34, 41 and 42.
Decision of the Opposition Division:	Opposition partially upheld; application for Community trade mark refused in relation to services in Class 42.
Decision of the Board of Appeal:	Contested decision annulled in so far as it rejected the opposition to ‘entertainment services and services for discotheques and parties’ in Class 41 referred to in the application for registration; application for registration dismissed for those services

Operative part

The Court:

1. Dismisses the action;

2. Orders Group Lottuss Corp., SL to bear all its own costs, to pay four fifths of the costs of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and to pay four fifths of the costs of Ugly Inc.;

3. Orders Ugly Inc. to bear one fifth of its own costs and to pay one fifth of OHIM’s costs.