# C_2006060EN.01001502.xml

| 11.3.2006 | EN | Official Journal of the European Union | C 60/15 |
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11.3.2006

EN

Official Journal of the European Union

C 60/15

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Appeal brought on 23 November 2005 by Alcon, INC against the judgment of the Court of First Instance (Third Chamber) of 22 September 2005 in Case T-130/03: Alcon, INC v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-412/05 P)

(2006/C 60/32)

Language of the case: English

An appeal against the judgment of the Court of First Instance (Third Chamber) of 22 September 2005 in Case T-130/03: Alcon, INC v Office for Harmonisation in the Internal Market (Trade Marks and Designs) was brought before the Court of Justice of the European Communities on 23 November 2005 by Alcon, INC, Hünenberg (Switzerland) represented by Garrett Breen, Solicitor, Landwell Solicitors.

The applicant claims that the Court should:

| 1. | annul the contested decision; |
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1.

annul the contested decision;

| 2. | if necessary, remit the case back to the Court of First Instance, and |
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2.

if necessary, remit the case back to the Court of First Instance, and

| 3. | order Office for Harmonisation in the Internal Market (Trade Marks and Designs) and /or the intervener to pay the costs. |
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3.

order Office for Harmonisation in the Internal Market (Trade Marks and Designs) and /or the intervener to pay the costs.

Pleas in law and main arguments

The applicant submits that there has been an error of law by the Court of First Instance and an infringement of Article 43(2) and (3) of Regulation No 40/94 (1) on the following grounds:

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| 1. | The Court of First Instance erred in concluding that the submission of the Applicant alleging an infringement of Article 43(2) and (3) of Regulation No 40/94 relating to compliance with the conditions concerning genuine use of the earlier mark on the part of the Intervener was inadmissible as being a new plea within the meaning of Article 48(2) of the Rules of Procedure of the Court of First Instance. The Applicant had always contested the prior use made by the Intervener of its mark and the distinction between the context of the use and the genuineness of the use is a distinction without a difference. It was not therefore a new plea. |
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1.

The Court of First Instance erred in concluding that the submission of the Applicant alleging an infringement of Article 43(2) and (3) of Regulation No 40/94 relating to compliance with the conditions concerning genuine use of the earlier mark on the part of the Intervener was inadmissible as being a new plea within the meaning of Article 48(2) of the Rules of Procedure of the Court of First Instance. The Applicant had always contested the prior use made by the Intervener of its mark and the distinction between the context of the use and the genuineness of the use is a distinction without a difference. It was not therefore a new plea.

| 2. | If, contrary to the foregoing, it was a new plea, it was justified as being based on matters of law which came to light in the course of the procedure, in accordance with the first paragraph of Article 48(2) of the Rules of Procedure. |
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2.

If, contrary to the foregoing, it was a new plea, it was justified as being based on matters of law which came to light in the course of the procedure, in accordance with the first paragraph of Article 48(2) of the Rules of Procedure.

| 3. | The Court of First Instance further erred in law in concluding that even if the plea were admissible, the Court of First Instance was confined to reviewing the legality of the decision of the Board of Appeal of OHIM on the basis of the factual and legal decision as it was before the Board of Appeal. The Applicant contends that this is a misapplication of the legal position and that the Court of First Instance has in effect refused to apply its own jurisprudence concerning genuineness of use. |
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3.

The Court of First Instance further erred in law in concluding that even if the plea were admissible, the Court of First Instance was confined to reviewing the legality of the decision of the Board of Appeal of OHIM on the basis of the factual and legal decision as it was before the Board of Appeal. The Applicant contends that this is a misapplication of the legal position and that the Court of First Instance has in effect refused to apply its own jurisprudence concerning genuineness of use.

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(1)  Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark OJ L 11, 14.01.1994, p. 1-36.

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