In Cases T-507/11 and T-506/11, Peek & Cloppenburg KG (Dusseldorf) registered the word mark Peek & Cloppenburg for retail services in Classes 25 and 35. Peek & Cloppenburg (Hamburg) brought an opposition on the grounds of Article 8 (4) CTMR on the basis of the earlier sign Peek & Cloppenburg used in the course of trade, and infringement of article 5(2), art 6(3) and art 15(2) of the German law of Trademarks (“Markengesetz”).

The OHIM, as upheld by the General Court, recognized that the earlier sign has been used of more than mere local significance in Germany since 1911 for the sales of clothing lines for men, women and children as well as leather accessories. Further, the CTM applicant took unfair advantage of the reputation of the earlier commercial name and the CTM applicant did not bring sufficient proof that the signs coexisted without any risk of confusion for the German consumer. Finally, the Board of Appeal did not have to suspend the proceedings pending a final decision by the German courts regarding whether the Opponent has acquiesced by tolerance the use of the Applicant’s mark because it dealt with Art.21 of the German Trademark law, not object of the present case.

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