Judgment of the Court of First Instance (Seventh Chamber) of 16 September 2009 – Offshore Legends v OHIM – Acteon (OFFSHORE LEGENDS in black and white and OFFSHORE LEGENDS in blue, black and green)

(Joined Cases T-305/07 and T-306/07)

Community trade mark – Opposition proceedings – Application for two Community figurative marks OFFSHORE LEGENDS, one in black and white, the other in blue, black and green – Earlier national figurative mark OFFSHORE 1 – Relative grounds for refusal – Likelihood of confusion – Similarity of goods and signs – Absence of request for proof of genuine use of the earlier mark – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Article 43(2) and (3) of Regulation No 40/94 in conjunction with Article 15(2)(a) of Regulation No 40/94 (now Article 42(2) and (3) and point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009)

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 paras 60-61, 98-103)

Re:

Two actions brought against two decisions of the Second Board of Appeal of OHIM of 29 May 2007 (Case R 1031/2006-2 and Case R 1038/2006-2) relating to opposition proceedings between Acteon and Offshore Legends.

Information relating to the case

Applicant for the Community trade mark:

Community trade mark sought:

Figurative marks OFFSHORE LEGENDS in black and white and OFFSHORE LEGENDS in blue, black and green for goods in Classes 3, 9, 14, 18, 20, 24, 25, 28 and 35 – Application Nos 3160231 and 2997021

Proprietor of the mark or sign cited in the opposition proceedings:

Acteon

Mark or sign cited in opposition:

National and international figurative mark OFFSHORE 1 for products in Classes 16, 18 and 25

Decision of the Opposition Division:

Opposition dismissed in respect of all the contested goods

Decision of the Board of Appeal:

Partial annulment of the decision of the Opposition Division, to the extent that it dismissed the opposition in respect of products in Classes 18 and 25

Operative part

The Court:

1.Dismisses the actions;

2.Orders Offshore Legends to pay the costs.