Italian publishing company Arnoldo Mondadori Editore SpA has had an appeal dismissed by the General Court in opposition proceedings brought against the registration of the mark GRAZIA. In 2008, Grazia Equity GmbH sought to register a community trade mark in respect of the word sign GRAZIA under Classes 35 and 36 of the Nice Classification (business consultancy and financial services).
Mondadori filed an opposition based on an earlier mark for GRAZIA under Classes 3, 9, 16, 18, 25 and 38. In rejecting the opposition, the Opposition Division of OHIM said that there was no likelihood of confusion as the goods and services concerned were not similar. Mondadori argued before the OHIM Fourth Board of Appeal that an overall assessment of the likelihood of confusion should have been considered, such as the fact that the mark was well known to the relevant public and that Article 8(5) of the Community Trademark Regulation 207/2009 should apply. Mondadori filed a further appeal at the General Court when that argument was rejected and unfounded.
Article 8(5) of the Community Trademark Regulation 207/2009 sets out the relative grounds for refusal in an application stating that:
“5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”
The General Court rejected the action finding that the third of the three cumulative conditions for the application of Article 8(5) was not fulfilled. It held that while the marks were identical the use of the mark was not likely to take unfair advantage of or be detrimental to the reputation of the earlier mark.