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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
General court, likelihood of confusion, KARA, KARRA, proof of use,
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