Article on World Trademark Review Daily (July 2010)

In Valigeria Roncato SpA v Office for Harmonisation in the Internal Market (OHIM) (Case T- 124/09, July 7 2010), the General Court has dismissed an appeal against the decision of the First Board of Appeal of OHIM in opposition proceedings between Valigeria Roncato SpA and Roncato Srl.
Valigeria Roncato opposed Roncato Srl’s application for the registration of the mark CARLO RONCATO for goods in Classes 3, 9 and 14 of the Nice Classification. The opposition was based on:
• the earlier word and figurative trademarks RONCATO, registered for luggage, among other things, in Class 18; and
• the unregistered trademarks RONCATO for watches, among other things.

The opposition relied on Articles 8(4) and (5) of the Community Trademark Regulation (40/94).
In 2007 the Opposition Division of OHIM upheld the opposition in part and rejected the application for certain goods in Class 3 and for all the goods in Class 14. Both parties appealed. In 2009 the First Board of Appeal of OHIM rejected Valigeria Roncato’s appeal,
but upheld Roncato Srl’s appeal and dismissed the opposition. The board found that:

• the evidence submitted by Valigeria Roncato to prove the reputation of the unregistered marks was insufficient;
• Valigeria Roncato had failed to prove that use of the mark applied for would take unfair advantage of the reputation of the earlier marks; and
• Roncato Srl had due cause to use the mark applied for.

On appeal, the General Court upheld the board’s decision. First, the court reiterated that, under Article 8(4), the proprietor of an unregistered mark may prevent the registration of a later mark if the unregistered mark is of more than mere local significance and its validity is recognised de facto by the law of the member state governing that mark. The court held that the board had to take into account the national legislation and case law, which provide that
an unregistered mark must have acquired a reputation of more than mere local significance. The court concluded that the board had correctly found that Valigeria Roncatohad failed to prove that its marks were notorious and, therefore, did not satisfy the relevant
requirements under national law.
Second, the court clarified that a later mark may take unfair advantage of the reputation of an earlier mark where there is a risk that the image of the notorious mark, or its characteristics, be projected to the goods covered by the mark applied for, so that their commercialisation will be facilitated. Such unfair advantage includes situations where there is a clear possibility of exploitation and parasitism. However, in the present case, it could not be concluded that there was ‘manifest parasitism’ or ‘an attempt to take advantage of the reputation of the earlier marks’.

The court pointed out that the two parties belonged to the same group of companies (which was dissolved in 1995), and that brothers Carlo and Giovanni Roncato had entered into an agreement recognizing their respective rights to use the RONCATO mark. Therefore, the
Italian public had been exposed to the simultaneous use of the RONCATO marks for many years. As a result, the board had correctly found that Valigeria Roncato had failed to prove that use of the mark applied for would take unfair advantage of the reputation of the earlier
marks.

Third, the court held that it was not necessary to consider whether Roncato Srl had due cause to use the mark applied for. This is regrettable, as this issue was discussed at length by the board, and it would have been interesting to know the opinion of the court. According to the board, the coexistence on the Italian market of several RONCATO marks for various goods created a situation where the owner of the RONCATO mark could not oppose the use and registration of the same mark by other members of the Roncato family. The circumstances in which the original company had divided its activities between the two brothers led the board to conclude that this was an exceptional case in which there was due cause to use the later mark.


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