Community trade mark - Opposition proceedings - Application for Community word mark GOTHA - Earlier Community figurative mark gotcha - Relative ground for refusal - Likelihood of confusion - Similarity of the signs - Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009).

Judgment of the General Court (Third Chamber) of 25 November 2010 – Vidieffe v OHIM – Ellis International Group (GOTHA) (Case T-169/09) Community trade mark – Opposition proceedings – Application for Community word mark GOTHA – Earlier Community figurative mark gotcha – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) 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 proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark – Weighting of the elements of similarity or difference between the signs – Taking into account of the intrinsic characteristics of the signs or the marketing conditions of the goods or services (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 35) 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 registered for identical or similar goods or services – Likelihood of confusion with the earlier mark (Council Regulation No 40/94, Art. 8(1)(b)) (see para. 58) Re: ACTION brought against the decision of the First Board of Appeal of OHIM of 12 February 2009 (Case R 657/2008-1), relating to opposition proceedings between Perry Ellis International Group Holdings, Ltd and Vidieffe Srl. Information relating to the case Applicant for the Community trade mark: Vidieffe Srl Community trade mark sought: Word mark GOTHA for goods in Classes 18 and 25 – Application No 3665957 Proprietor of the mark or sign cited in the opposition proceedings: Perry Ellis International Group Holdings, Ltd Mark or sign cited in opposition: Figurative Community trade mark gotcha (No 2896199) for goods in Classes 3, 18 and 25 Decision of the Opposition Division: Opposition dismissed in its entirety Decision of the Board of Appeal: Appeal partially upheld Operative part The Court: 1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 12 February 2009 (Case R 657/2008-1), in so far as it annuls the decision of the Opposition Division, inasmuch as that decision rejected the opposition, first, in respect of ‘[leather and imitations of leather] goods (not included in other classes); trunks and travelling bags; umbrellas, parasols and walking sticks’ in Class 18 and, second, in respect of all the goods in Class 25; 2. Dismisses the action as to the remainder; 3. Orders OHIM to bear its own costs and pay those incurred by Vidieffe Srl.