EN Official Journal of the European Union C 167/22

Action brought on 26 May 2009 — Mars v OHIM — Marc (MARC Marlon Abela Restaurant Corporation)

(Case T-208/09)

2009/C 167/43

Language in which the application was lodged: English

Parties

Applicants: Mars, Inc. (McLean, United States) (represented by: A. Bryson, Barrister and V. Marsland, Solicitor)

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

Other party to the proceedings before the Board of Appeal: Marc Ltd (London, United Kingdom)

Form of order sought

— Annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 5 March 2009 in case R 1827/2007-2; and

— Order OHIM to pay the costs

Pleas in law and main arguments

Applicant for the Community trade mark: The other party to the proceedings before the Board of Appeal

Community trade mark concerned: The figurative mark ‘MARC Marlon Abela Restaurant Corporation’, for goods and services in classes 29, 30, 31, 32, 33, 35 and 43

Proprietor of the mark or sign cited in the opposition proceedings: The applicant

Mark or sign cited: Community trade mark registrations of the word and figurative marks ‘MARS’ for goods and services in classes 9, 29, 30, 32, and 35, respectively

Decision of the Opposition Division: Upheld the opposition partially

Decision of the Board of Appeal: Annulled the decision of the Opposition Division and rejected the opposition in its entirety

Pleas in law: Infringement of Article 8(1)(b) Council Regulation 40/94 (which became Article 8(1)(b) of Council Regulation 207/2009) as the Board of Appeal (i) wrongly assumed (or found), with no evidential basis, that the trade marks concerned have a clear and specific meaning for the public in the Baltic States so that the public is capable of grasping it immediately. This led the Board, wrongly, to conclude that there was a conceptual difference between the marks which outweighed the visual and aural similarities and justified a conclusion that the trade marks concerned were nor similar; and (ii) failed to take any or a proper account of the circumstances of sale of the goods and services in question and the impact of such circumstances upon (a) the appreciation of the visual and phonetic similarities between the trade marks; and (b) the relative weight to be given, in the global assessment of similarity/likelihood of confusion, to the different elements (visual, aural, conceptual) by which similarity is to be judged. Infringement of Article 8(5) of Council Regulation 40/94 (which became Article 8(5) of Council Regulation 207/2009) as the Board of Appeal wrongly rejected the opposition in respect of this ground on the basis that the applicant had failed to establish the existence of all the cumulative conditions necessary for the application of the said provision. Infringement of Article 8(4) of Council Regulation 40/94 (which became Article 8(4) of Council Regulation 207/2009) as the Board of Appeal wrongly assumed that the likelihood of confusion is to be assessed according to the same principles for the purposes of Articles 8(1)(b) and 8(4) of Council Regulation 40/94.