(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)

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:

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.