The General Court (GC) has confirmed a decision of OHIM’s First Board of Appeal (BoA), partially invalidating David Mayer Naman’s (DMN) CTM registration for covering leather and imitations of leather, products made from these materials not included in other classes; animal skins; trunks; suitcases; umbrellas; canes; whips and saddlery in Class 18 and clothing, footwear and headgear in class 25.
The CTM was registered in April 2001, and in October 2007 the intervener filed an application for a declaration of invalidity in respect of the goods covered in classes 18 and 25.
The intervener’s application for a declaration of invalidity was based on its earlier Italian trade mark registration for DANIEL & MAYER MADE IN ITALY, covering “under garments and garments in mesh, ready to wear clothing for men, women and children, haberdashery”, on the grounds of Article 53(1)(a) CTMR, in conjunction with Article 8(1)(b) CTMR and Article 53(1)(c) CTMR in conjunction with Article 8(4) CTMR. OHIM’s Cancellation Division declared that the CTM was invalid under Art 52(1)(a) CTMR in respect of leather and imitations of leather not included in other classes in class 18 and clothing, footwear and headgear in class 25. This decision was confirmed by OHIM’s First Board of Appeal (BoA).
The BoA rejected DMN’s request, which was made for the first time before the BoA, that the intervener provide proof of use of its earlier marks. The BoA concluded that the marks were visually, aurally and conceptually similar, giving a similar overall impression to the relevant public, the average purchaser of clothing in Italy, and that the products in question, in classes 18 and 25, were also similar. In light of this, there was a risk of confusion between the marks. The BoA rejected the arguments that the contested mark had a reputation, that the marks were positioned in different commercial markets, and that they had been peacefully co-existing.
In particular, this case reinforces the importance of making requests within the relevant deadlines set by OHIM.
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