Case T-34/04: Actionbrought on 28 January 2004 by Plus WarenhandelsgesellschaftmbH against the Office for Harmonisation in the Internal Market (Trade Marksand Designs)
Date: 2004-04-30
Institutions: Court of First Instance
Subjects: European Union Intellectual Property Office, action for annulment (EU), tobacco industry, trade-mark law

C 106/68

EN

Official Journal of the European Union

30.4.2004

Action brought on 29 January 2004 by Lichtwer Pharma
AG against the Office for Harmonisation in the Internal
Market (Trade Marks and Designs)

In the contested decision, the Board of Appeal found that the
appeal proceedings had become devoid of purpose as a result
of the definitive refusal to register the mark sought. Moreover,
the applicant was ordered to pay the fees and costs of both the
preceding opposition proceedings and the appeal proceedings.

(Case T-32/04)

(2004/C 106/138)

(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 29
January 2004 by Lichtwer Pharma AG, represented by H.P.
Kunz-Hallstein and R. Kunz-Hallstein, lawyers.

Laboratoire L. Lafon S.A., Maisons-Alfort (France), was also a
party to the proceedings before the Board of Appeal.

The applicant claims that the Court should:

— annul paragraph 2 of the operative part of the decision of
the Fourth Board of Appeal of the Office for Harmonisation
in the Internal Market (Trade Marks and Designs) of 13
November 2003, that is to say, annul the decision insofar
as the applicant was ordered to pay the fees and costs of
both the opposition and the appeal proceedings;

— order the Office to pay the costs.

Pleas in law and main arguments:

The applicant filed an application for registration of the word
in respect of goods in Classes 5, 29 and 30
mark ‘Lyco-A’
(Application No 1 217 355). Laboratoire L. Lafon S.A.,
the
proprietor of the French word mark ‘LYOC’ for goods in Class
5, filed notice of opposition to that registration. Laboratoire L.
Lafon S.A. also filed two further notices of opposition based on
the marks ‘LYCO PROTECT’ and ‘LYCO Q10’.

By decision of 30 October 2002, the Opposition Division
rejected the opposition based on the mark ‘LYOC’ on the
ground that there was no likelihood of confusion. On the same
day,
the opposition based on the mark ‘LYCO Q10’ was
allowed.

In support of its action, the applicant submits that a statement
that the lodging of an appeal is envisaged is merely an expres-
sion of intention. Moreover, the Board of Appeal ought to have
dismissed the appeal as inadmissible under Rule 49(1) of Regu-
lation (EC) No 2868/95 (1) and ordered the appellant to pay the
costs.

The applicant submits further that the granting of the opposi-
tion cannot lead to rejection of the mark ex tunc but only ex
nunc and that the reasons given for the decision show that the
Board of Appeal applied the wrong criteria for the purposes of
Article 81(1) of Regulation (EC) No 40/94. (2) The decision
therefore infringes substantive law. Moreover,
in accordance
with Rules 21 and 51 of Regulation (EC) No 2868/95, the
defendant ought to have reimbursed the opponent for half of
the opposition costs and all of the appeal costs.

(1) Commission Regulation (EC) No 2868/95 of 13 December 1995
implementing Council Regulation (EC) No 40/94 on the Com-
munity trade mark (OJ 1995 L 303, p. 1).

(2) Council Regulation (EC) No 40/94 of 20 December 1993 on the

Community trade mark (OJ 1994 L 11, p. 1).

Action brought on 28 January 2004 by Plus Warenhan-
delsgesellschaft mbH against the Office for Harmonisation
in the Internal Market (Trade Marks and Designs)

(Case T-34/04)

(2004/C 106/139)

(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)

In December 2002, Laboratoire L. Lafon S.A.
informed the
defendant that it intended to lodge an appeal against the deci-
sion given in the opposition proceedings concerning the mark
‘LYOC’. No appeal was lodged against the decision concerning
the mark ‘LYCO Q10’.

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 28
January 2004 by Plus Warenhandelsgesellschaft mbH, Mülheim
an der Ruhr (Germany), represented by B. Piepenbrink, lawyer.

30.4.2004

EN

Official Journal of the European Union

C 106/69

Joachim Bälz and Friedmar Hiller, Stuttgart (Germany), were
also parties to the proceedings before the Board of Appeal.

Pleas in law:

The applicant claims that the Court should:

— annul the decision of the Second Board of appeal of the
Office for Harmonisation in the Internal Market
(Trade
Marks and Designs) of 25 November 2003 (Case R 620/
2002-2) and cancel the registration of the mark ‘Turkish
Power’ sought in Application No 1 873 561;

— order the Office to pay the costs.

— The Board of Appeal erred in
law in its application of Article
8(1)(b)
(EC)
No 40/94.

of Regulation

— Not only does the mark cited
in itself,
in opposition have,
normal distinctive
character
but it has also been reinforced
by extensive use as a mark.

— There is a likelihood of confu-
sion given that the distinctive
components of
the opposed
marks are identical.

Pleas in law and main arguments:

Action brought on 5 February 2004 by Orsay GmbH
the Office for Harmonisation in the Internal
against

Market (Trade Marks and Designs)

Applicant
munity trade mark:

for

Com-

Joachim Bälz and Friedmar Hiller

(Case T-39/04)

(2004/C 106/140)

Community trade mark
sought:

figurative mark

The
‘Turkish
power’ for goods in Classes 3, 25,
28, 32, 33 and 34 (inter alia,
tobacco,
articles,
smokers'
matches)
Application
No 1 873 561

–

(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), repre-
sented by D. von Schultz, lawyer.

Proprietor of mark or
sign cited in the opposi-
tion proceedings:

The applicant
mann Warenhandelsgesellschaft)

(formerly Tengel-

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:

Mark or sign cited in
opposition.

The German word mark ‘POWER’
for goods in Class 34 (inter alia,
tobacco,
articles,
smokers'
matches)

Decision of the Opposi-
tion Division:

Rejection of the opposition

Decision of
of Appeal:

the Board

Dismissal of the applicant's appeal

— 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
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;

the Community trade mark sought

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