Log in

CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Want to receive Class 46 by email?
Click here subscribe for free.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
FRIDAY, 11 MAY 2012
General Court: KARRA v KARA

In Case T-270/10, the CTM applicant Dima (Turkey) had registered the following CTM for classes 18, 20, 24, 25 and 35: KARRA

Concerial Kara srl (Italy) had brought an opposition on the grounds of Article 8 (1) (b), (4) and (5) CTMR on the basis of earlier CTM and Italian rights  as follows:

-     for classes 18, 25 and 40

- trade name Kara

The Opposition Division and the BoA had found that, upon a request for proof of use, the documents produced showed genuine use of the earlier marks only for Class 18 “Leather and leather imitations” and “leather services” in Class 40 and there was likelihood of confusion in respect of the similar goods in the above mentioned classes due to the similarity of the signs.

The Court confirmed that the website of the applicant states that it produces and sells the raw material made out of leather to its clients. The latter then transform the material into the finished products on which they fix their own trademark which are then sold to the final consumer. Therefore, the GC confirmed that the possible future uses of the applicant’s trademark did not constitute genuine use for other goods; nor does the simple advertising of a trademark-which is sufficient in the meaning of Italian case-law-due to the autonomous Community regime.

Thus the Court confirmed the opposition was only partly grounded for the similar goods whereas the rest of the contested ‘finished’ goods had a different destination and use. As for the ground based on Article 8 (4), it is not sufficient to invoke it but the cumulative conditions must be demonstrated, which was not the present case. Finally, bad faith is a particularly relevant criteria in a procedure for invalidity, however it does not have to be take into account in an opposition procedure on the grounds of Article 8 (1) (b) ( in the sense of Case C-529/07, Chocoladefabriken Lindt).

Posted by: Laetitia Lagarde @ 15.50
Tags: General court, likelihood of confusion, KARA, KARRA, proof of use,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA2829
Reader Comments: 0
Post a Comment


MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


The Class 46 Archive






 

 

 

 

 

 


CONTACT

info@marques.org
+44 (0)116 2747355
POST ADDRESS

9 Cartwright Court, Cartwright Way
Bardon, Leicestershire
LE67 1UE

EMAIL

Ingrid de Groot
Internal Relations Officer
ingrid.de.groot@marques.org
Alessandra Romeo
External Relations Officer
aromeo@marques.org
James Nurton
Newsletter Editor
editor@marques.org
Robert Harrison
Webmaster
robertharrison@marques.org
BLOGS

Signup for our blogs.
Headlines delivered to your inbox