# C_2004251EN.01002302.xml

| 9.10.2004 | EN | Official Journal of the European Union | C 251/23 |
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9.10.2004

EN

Official Journal of the European Union

C 251/23

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Action brought on 9 July 2004 by Jabones Pardo, S.A. against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Case T-278/04)

(2004/C 251/43)

Language of the case: Spanish

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 9 July 2004 by Jabones Pardo, S.A., established in Madrid, represented by José Enrique Astiz Suárez, of the Madrid Bar.

The applicant claims that the Court should:

| — | vary the findings of the contested decision as regards the similarity of the signs and the goods, ordering that the opposition be admitted and the application refused in respect of goods in classes 3 and 5; and |
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vary the findings of the contested decision as regards the similarity of the signs and the goods, ordering that the opposition be admitted and the application refused in respect of goods in classes 3 and 5; and

| — | annul the decision in order that a new and accurate comparison of the signs and goods which they identify may be carried out, regard being had to the high degree of visual and phonetic similarity between ‘YUPI’ and ‘YUKI’, as well as the fact that many of the goods which they designate are identical or almost identical. |
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annul the decision in order that a new and accurate comparison of the signs and goods which they identify may be carried out, regard being had to the high degree of visual and phonetic similarity between ‘YUPI’ and ‘YUKI’, as well as the fact that many of the goods which they designate are identical or almost identical.

Pleas in law and main arguments:

| Applicant for Community trade mark: | QUIMI ROMAR S.L. |
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| Community trade mark sought: | Word mark ‘YUKI’ — Application No 1. 353.515 for goods in classes 3, 5 and 28. |
| Proprietor of mark or sign cited in the opposition proceedings: | The applicant. |
| Mark or sign cited in opposition. | The Spanish word mark ‘YUPI’ (No 246.715) for goods in class 3 (all types of perfumery, waxes, essential oils and dentifrices). |
| Decision of the Opposition Division: | Opposition upheld in part in respect of the goods against which it was directed: i.e. ‘soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’ (class 3) and ‘pharmaceutical and sanitary preparations’ (class 5) |
| Decision of the Board of Appeal: | Upheld the appeal brought by the applicant for the trade mark, annulled the contested decision in so far as it upheld the opposition in respect of ‘soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’ (class 3) and ‘pharmaceutical and sanitary preparations’ (class 5) and rejected the case of the opposing party. |
| Pleas in law: | Incorrect interpretation of Article 8(1)(b) of Regulation (EC) No 40/94. |

Applicant for Community trade mark:

QUIMI ROMAR S.L.

Community trade mark sought:

Word mark ‘YUKI’ — Application No 1. 353.515 for goods in classes 3, 5 and 28.

Proprietor of mark or sign cited in the opposition proceedings:

The applicant.

Mark or sign cited in opposition.

The Spanish word mark ‘YUPI’ (No 246.715) for goods in class 3 (all types of perfumery, waxes, essential oils and dentifrices).

Decision of the Opposition Division:

Opposition upheld in part in respect of the goods against which it was directed: i.e. ‘soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’ (class 3) and ‘pharmaceutical and sanitary preparations’ (class 5)

Decision of the Board of Appeal:

Upheld the appeal brought by the applicant for the trade mark, annulled the contested decision in so far as it upheld the opposition in respect of ‘soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’ (class 3) and ‘pharmaceutical and sanitary preparations’ (class 5) and rejected the case of the opposing party.

Pleas in law:

Incorrect interpretation of Article 8(1)(b) of Regulation (EC) No 40/94.

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