# C_2004106EN.01006901.xml

| 30.4.2004 | EN | Official Journal of the European Union | C 106/69 |
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30.4.2004

EN

Official Journal of the European Union

C 106/69

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Action brought on 5 February 2004 by Orsay GmbH against the Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case T-39/04)

(2004/C 106/140)

Language of the case to be determined pursuant to Article 131(2) of the Rules of Procedure language in which the application was submitted: German

An action against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) was brought before the Court of First Instance of the European Communities on 5 February 2004 by Orsay GmbH, Willstätt (Germany), represented by D. von Schultz, lawyer.

José Jiménez Arellano S.A., Madrid, was also a party to the proceedings before the Board of Appeal.

The applicant claims that the Court should:

| — | annul Decision R 394/2002-4 of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market of 3 November 2003 and Decision 405/2002 of the Opposition Division of the Office for Harmonisation in the Internal Market of 25 February 2002 insofar as registration of the Community trade mark sought in Application No 1 042 613 in respect of articles of clothing; boots, shoes and slippers; headgear was refused on the basis of Opposition No B 242 059; |
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annul Decision R 394/2002-4 of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market of 3 November 2003 and Decision 405/2002 of the Opposition Division of the Office for Harmonisation in the Internal Market of 25 February 2002 insofar as registration of the Community trade mark sought in Application No 1 042 613 in respect of articles of clothing; boots, shoes and slippers; headgear was refused on the basis of Opposition No B 242 059;

| — | declare that the Office for Harmonisation in the Internal Market is to register the mark ‘O orsay’, sought in Application No 1 042 613 as a Community trade mark in respect of articles of clothing; boots, shoes and slippers; headgear in Class 25; |
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declare that the Office for Harmonisation in the Internal Market is to register the mark ‘O orsay’, sought in Application No 1 042 613 as a Community trade mark in respect of articles of clothing; boots, shoes and slippers; headgear in Class 25;

| — | order the office for Harmonisation in the Internal Market to pay the costs of the opposition and appeal proceedings and of the present action. |
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order the office for Harmonisation in the Internal Market to pay the costs of the opposition and appeal proceedings and of the present action.

Pleas in law and main arguments:

| Applicant for Community trade mark: | The applicant |
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| Community trade mark sought: | The figurative mark ‘O orsay’ for goods in Classes 23, 24 and 25 (yarn, woven and knitted fabric; bed and table covers; articles of clothing; boots, shoes and slippers; headgear) – Application No 1 042 613 |
| Proprietor of mark or sign cited in the opposition proceedings: | José Jiménez Arellano S.A. |
| Mark or sign cited in opposition. | The Spanish and Portuguese figurative mark ‘D'ORSAY’ for, inter alia, goods in Class 25 |
| Decision of the Opposition Division: | Refusal of the application for registration in respect of the goods ‘articles of clothing; boots, shoes and slippers; headgear’. Rejection of the remainder of the opposition. |
| Decision of the Board of Appeal: | Dismissal of the applicant's appeal |
| Pleas in law: | — | The Office's decision was adopted in breach of Article 8(1) of Regulation (EC) No 40/94. |

Applicant for Community trade mark:

The applicant

Community trade mark sought:

The figurative mark ‘O orsay’ for goods in Classes 23, 24 and 25 (yarn, woven and knitted fabric; bed and table covers; articles of clothing; boots, shoes and slippers; headgear) – Application No 1 042 613

Proprietor of mark or sign cited in the opposition proceedings:

José Jiménez Arellano S.A.

Mark or sign cited in opposition.

The Spanish and Portuguese figurative mark ‘D'ORSAY’ for, inter alia, goods in Class 25

Decision of the Opposition Division:

Refusal of the application for registration in respect of the goods ‘articles of clothing; boots, shoes and slippers; headgear’. Rejection of the remainder of the opposition.

Decision of the Board of Appeal:

Dismissal of the applicant's appeal

Pleas in law:

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The Office's decision was adopted in breach of Article 8(1) of Regulation (EC) No 40/94.

| — | There can be no likelihood of confusion in aural terms where the opposed marks ‘O orsay’ and ‘D'ORSAY’ are compared. |
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There can be no likelihood of confusion in aural terms where the opposed marks ‘O orsay’ and ‘D'ORSAY’ are compared.

| — | Both a likelihood of confusion as a result of the typography and a likelihood of association can be ruled out. |
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Both a likelihood of confusion as a result of the typography and a likelihood of association can be ruled out.

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