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General Court: Gitana (fig) v Kitana (fig)

In Case T-569/11, the General Court had to review the opposition between the following marks

Contested CTM - Gitana SA (Switzerland)

Earlier CTM, international and Italian trademarks - Teddy SpA (Italy)

Class 18-Leather and imitations of leather, goods made of these materials and not included in other classes; trunks and travelling bags; travelling bags; sports bags; sail bags; umbrellas and parasols

Class 25-Clothing, shoes, headgear; water sports clothing

- No sufficient proof of genuine use was submitted for international marks

- after revocation proceedings, CTM was registered only for goods in Class 25, namely ‘[clothing], skirts, trousers, [shirts], jackets, overcoats, waterproof clothing, sweaters and pullovers, bomber jackets, hats, scarves, headscarves, stockings, gloves, belts, shoes, boots, sandals, clogs, slippers’

The Opposition Division upheld the appeal opposition in part, refusing registration of the trade mark sought in respect of the goods in Classes 18 and 25, with the exception of ‘leather and imitations of leather’ on the ground that there was a likelihood of confusion with the earlier CTM.

The Board of Appeal partially upheld the appeal brought by Gitana SA in respect for part of the goods, namely ‘trunks and travelling bags; travelling bags; sports bags; sail bags; umbrellas and parasols’ and for the rest found that the goods were identical or similar to the goods of the earlier CTM.

The General court confirmed the comparison of goods made by the BoA reflects consistent case-law and the goods in the first group in Class 18, namely ‘goods made of these materials [leather and imitations of leather] and not included in other classes’, such as a handbags, coin purses or wallets, are often sold with goods in Class 25 at sales outlets in both major retail establishments and more specialised shops.

Further, the marks at issue are visually and phonetically similar, and there is no conceptual similarity on the ground that the term ‘kitana’ had no particular meaning while ‘gitana’ means ‘gypsy’ in Spanish or Italian.

Therefore, the BoA correctly concluded that there is likelihood of confusion for the afore mentioned goods according to Aricle 8 (1) b) CTMR.

Posted by: Laetitia Lagarde @ 11.05
Tags: General court, likelihoof of confusion, gitana, kitana,
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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.

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