Judgments nº T-249/08 of The General Court, April 21, 2010

• Resolution Date: April 21, 2010
• Issuing Organization: The General Court
• Decision Number: T-249/08

In Case T‑249/08,

Coin SpA, established in Venice (Italy), represented by P. Perani and P. Pozzi, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Dynamiki Zoi AE, established in Athens (Greece),

ACTION brought against the decision of the First Board of Appeal of OHIM of 15 April 2008 (Case R 1429/2007‑1), relating to opposition proceedings between Coin SpA and Dynamiki Zoi AE,

THE GENERAL COURT (First Chamber),

composed of F. Dehousse, acting for the President, I. Wiszniewska-Białecka (Rapporteur) and K. O’Higgins, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Court Registry on 24 June 2008,

having regard to the response lodged at the Court Registry on 16 October 2008,

having regard to the written questions put to the parties by the Court,

having regard to the replies to the written questions lodged by the parties at the Court Registry on 2 and 9 October 2009,

further to the hearing on 24 November 2009,

gives the following

Judgment

Background to the dispute

1 On 27 April 2004, Dynamiki Zoi AE filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The mark for which registration was sought is the word mark ‘Fitcoin’.

3 The goods and services in respect of which registration was sought are in Classes 16, 25, 28, 35, 36 and 41 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 16: ‘Paper, cardboard and goods made from those materials; pamphlets, newspapers and periodicals, books; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); printers’ type; printing blocks’;

– Class 25: ‘Clothing, including footwear and slippers’;

– Class 28: ‘Games and playthings; gymnastic and sporting articles (except clothing); playing cards’;

– Class 35: ‘Advertising, business management, business administration, office functions, stocking a variety of goods on behalf of third parties so that customers can examine at their leisure and buy the goods’;

– Class 36: ‘Insurance, financial affairs, monetary affairs, real estate affairs’;

– Class 41: ‘Education, providing of training, entertainment, sporting and cultural activities, gymnasiums; providing information on the aforesaid services via the Internet’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 40/2005 of 3 October 2005.

5 On 30 December 2005, the applicant, Coin SpA, gave notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the trade mark applied for in respect of all the goods and services covered by the application for registration.

6 The opposition was based on a number of earlier rights, all containing the element ‘coin’. As is apparent from the case-file, the earlier trade marks and the goods and services covered by those marks, advanced in support of the opposition, are, in particular, the following:

– the figurative mark represented below:

which is the subject of Community Registration No 109827, applied for on 1 April 1996 and granted on 26 October 1998, in respect of goods and services in Classes 16, 25, 28 and 35 and corresponding, for each of those classes, to the following description:

– Class 16: ‘Paper, cardboard and goods made from these materials not included in other classes; printed matters; bookbinding material; photographs; stationery, adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging; printers’ type; printing blocks’;

– Class 25: ‘Clothing, footwear, headgear’;

– Class 28: ‘Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; playing cards’;

– Class 35: ‘Advertising, business management, business administration, office functions’;

– the figurative mark represented below:

which is the subject of Italian Registration No 160126, applied for on 17 April 1962 and granted on 19 September 1962, in respect of goods in Class 25 and corresponding to the following description: ‘Clothes and clothing in general’;

– the figurative mark represented below:

which is the subject of Italian Registration No 169548, applied for on 23 October 1963 and granted on 14 May 1965, extended under the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22), to Austria, Benelux, France, Hungary and Portugal, in respect...