Judgments nº T-84/08 of The General Court, April 07, 2011

• Resolution Date: April 07, 2011
• Issuing Organization: The General Court
• Decision Number: T-84/08

In Case T‑84/08,

Intesa Sanpaolo SpA, established in Turin (Italy), represented by A. Perani and P. Pozzi, lawyers,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by R. Kaase, J-C. Plate and M. Berger, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 19 December 2007 (Case R 138/2006-4) concerning opposition proceedings between MIP Metro Group Intellectual Property GmbH & Co. KG and Intesa Sanpaolo SpA,

THE GENERAL COURT (Fourth Chamber),

composed of O. Czúcz, President, I. Labucka and K. O’Higgins (Rapporteur), Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Court Registry on 18 February 2008,

having regard to the response of OHIM lodged at the Court Registry on 9 June 2008,

having regard to the response of the intervener lodged at the Court Registry on 30 May 2008,

further to the hearing on 21 September 2010,

gives the following

Judgment

Background to the dispute

1 On 21 March 2003, the applicant – Intesa Sanpaolo SpA (‘Intesa Sanpaolo’) – filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 trade mark in respect of which registration was applied for is the word mark COMIT.

3 The goods and services in respect of which registration was applied for fall within, inter alia, Classes 16, 35, 36, 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; prints; 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 (not included in other classes); printers’ type; printing blocks’;

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

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

– Class 41: ‘Providing of education; training; amusements; sporting and recreational activities’;

– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research; legal services’.

4 The application was published in Community Trade Marks Bulletin No 80/2003 of 3 November 2003.

5 On 29 January 2004, the predecessor to MIP Metro Group Intellectual Property GmbH & Co. KG (‘MIP Metro Group’), the intervener in the present case, filed a notice of opposition to the registration of the mark applied for, invoking a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

6 The opposition was based upon the following German figurative mark, registered under number 39920459:

7 Of the goods and services covered by the earlier mark, the opposition was based on goods and services falling within Classes 9, 16, 35, 36, 41 and 42 and corresponding, for each of those classes, to the following description:

– Class 9: ‘Apparatus for the recording, transmission and reproduction of sound or images; magnetic data carriers, gramophone-records’;

– Class 16: ‘Paper, cardboard (carton) and products made from these materials, as far as contained in Class 16, printed matter; bookbinding materials; photographs; stationery; adhesives for paper and stationery or for household purposes; artists’ requisites; brushes; typewriters and office articles (excepting furniture); instructional and teaching aids (excepting apparatus); packaging material from synthetics, as far as contained in Class 16; playing cards; printing letters; printing blocks’;

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

– Class 36: ‘Insurance services; financial services; cash transactions; real estate services’;

– Class 41: ‘Education, training, entertainment; sporting and cultural activities’;

– Class 42: ‘Technical project planning, construction planning; building advice; all services excepting those relating to the tool and machine tool sectors’.

8 By decision of 12 January 2006, the Opposition Division allowed the opposition in part. It refused the application for a Community trade mark in relation to the goods in Class 16 on the ground that, in German territory, there was a likelihood of confusion in relation to those goods.

9 On 20 January 2006, MIP Metro Group brought an appeal before OHIM in respect of the decision of the Opposition Division in so far as that decision rejected its opposition with regard to the services in Classes 35, 36, 41 and 42. In its response to the appeal, Intesa Sanpaolo contended that the decision of the Opposition Division should be varied in so far as it upheld the opposition in respect...