Community trade mark - Opposition proceedings - Application for community word mark CARLO RONCATO - Unregistered national figurative and word marks RV RONCATO and RONCATO - Earlier national figurative and word marks RV RONCATO and RONCATO - No likelihood of unfair advantage being taken of the distinctive character and repute of the earlier marks - Due cause for the use of the mark applied for - Relative grounds for refusal - Article 8(4) and (5) of Regulation (EC) No 40/94 (now Article 8(4) and (5) of Regulation (EC) No 207/2009).

Judgment of the General Court (Fourth Chamber) of 7 July 2010 – Valigeria Roncato v OHIM – Roncato (CARLO RONCATO) (Case T-124/09) Community trade mark – Opposition proceedings – Application for community word mark CARLO RONCATO – Unregistered national figurative and word marks RV RONCATO and RONCATO – Earlier national figurative and word marks RV RONCATO and RONCATO – No likelihood of unfair advantage being taken of the distinctive character and repute of the earlier marks – Due cause for the use of the mark applied for – Relative grounds for refusal – Article 8(4) and (5) of Regulation (EC) No 40/94 (now Article 8(4) and (5) of Regulation (EC) No 207/2009) 1.                     Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the holder of an unregistered mark or other sign used in trade – Conditions (Council Regulation No 40/94, Art. 8(4)) (see para. 18) 2.                     Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services – Conditions – Taking unfair advantage of the distinctive character or repute of the earlier mark (Council Regulation No 40/94, Art. 8(5)) (see paras 45, 47-51) Re: ACTION brought against the decision of the First Board of Appeal of OHIM of 23 January 2009 (Cases R 237/2008 1 and R 236/2008 1) relating to opposition proceedings between Valigeria Roncato SpA and Roncato Srl. Information relating to the case Applicant for the Community trade mark: Roncato Srl Community trade mark sought: Word mark CARLO RONCATO for goods in Classes 3, 9 and 14 – Application No 4631719 Proprietor of the mark or sign cited in the opposition proceedings: Valigeria Roncato SpA Mark or sign cited in opposition: Italian figurative mark RV RONCATO (No 622773), Italian word mark RONCATO (No 510528) and non‑registered Italian figurative marks RV RONCATO Decision of the Opposition Division: Opposition upheld in part Decision of the Board of Appeal: Opposition dismissed; Application for registration upheld in its entirety Operative part The Court: 1. Dismisses the action; 2. Orders Valigeria Roncato SpA to pay the costs.