# C_2012032EN.01003202.xml

| 4.2.2012 | EN | Official Journal of the European Union | C 32/32 |
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4.2.2012

EN

Official Journal of the European Union

C 32/32

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Action brought on 30 November 2011 — Beifa Group v OHIM — Schwan-Stabilo Schwanhäußer (Instruments for writing)

(Case T-608/11)

2012/C 32/67

Language in which the application was lodged: English

Parties

Parties

Applicant: Beifa Group Co. Ltd (formerly Ningbo Beifa Group Co. Ltd) (Zhejiang, China) (represented by: R. Davis, Barrister, and N. Cordell, Solicitor)

Applicant:

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Defendant:

Other party to the proceedings before the Board of Appeal: Schwan-Stabilo Schwanhäußer GmbH & Co. KG (Heroldsberg, Germany)

Other party to the proceedings before the Board of Appeal:

Form of order sought

Form of order sought

| — | Annul the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 9 August 2011 in case R 1838/2010-3; and |
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Annul the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 9 August 2011 in case R 1838/2010-3; and

| — | Order the defendant to pay its own costs and pay those of the applicant. |
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Order the defendant to pay its own costs and pay those of the applicant.

Pleas in law and main arguments

Pleas in law and main arguments

Registered Community design subject of the application for a declaration of invalidity: A design for the product ‘instruments for writing’ — registered Community design No 352315-0007

Registered Community design subject of the application for a declaration of invalidity:

Proprietor of the Community design: The applicant

Proprietor of the Community design:

Applicant for the declaration of invalidity of the Community design: The other party to the proceedings before the Board of Appeal

Applicant for the declaration of invalidity of the Community design:

Grounds for the application for a declaration of invalidity: German trade mark registration No 30045470.8 of a figurative mark representing an instrument for writing, for goods in class 16; German trade mark registration No 936051 of a figurative mark representing an instrument for writing, for goods in class 16; German trade mark registration No 2911311 of a three-dimensional mark representing an instrument for writing, for goods in class 16; International trade mark registration No 936051 of a figurative mark representing an instrument for writing, for goods in class 16; International trade mark registration No 418036 of a figurative mark representing an instrument for writing, for goods in class 16

Grounds for the application for a declaration of invalidity:

Decision of the Invalidity Division: Declared the contested registered Community design invalid

Decision of the Invalidity Division:

Decision of the Board of Appeal: Dismissed the appeal

Decision of the Board of Appeal:

Pleas in law: Infringement of Article 61(6) of Council Regulation No 6/2002, as the Board of Appeal proceeded to an impermissible re-examination. Infringement of Article 62 of Council Regulation No 6/2002, as the Board of Appeal; (i) violated the fundamental principles of this Article by the manner it applied the measures necessary to comply with the decision of the General Court; and (ii) erroneously applied the test for both Articles 25(1)(b) and 25(1)(e) CDR. Infringement of Article 25(1)(e) of Council Regulation No 6/2002, as the Board of Appeal; (i) applied the wrong test to determine whether there was the requisite ‘use’ of the mark in the registered Community design; (ii) failed to consider whether the marks had been used both as an ingredient of Article 25(1)(e) CDR and as an ingredient of the German national law; and (iii) proceeded to an incorrect application of the test for right to prevent use. Infringement of Article 25(1)(b) of Council Regulation No 6/2002, as the Board of Appeal wrongly assessed the characteristics of the informed user and both the manner and the method by which the assessment of overall impression should be made.

Pleas in law:

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