Case T-39/04: Actionbrought on 5 February 2004 by Orsay GmbH againstthe Office for Harmonisation in the Internal Market (Trade Marks and Designs)
Date: 2004-04-30
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), clothing industry, textile industry, trade-mark law

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;

C 106/70

EN

Official Journal of the European Union

30.4.2004

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

The applicant claims that the Court should:

Pleas in law and main arguments:

Applicant
munity trade mark:

for

Com-

Community trade mark
sought:

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

Mark or sign cited in
opposition.

Decision of the Opposi-
tion Division:

The applicant

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

José Jiménez Arellano S.A.

Spanish

The
figurative mark ‘D'ORSAY’
inter alia, goods in Class 25

Portuguese
for,

and

— annul the Commission decision in the communication of
16 December 2003, ref. 116515 Regio E2/JHR/rs D(2003)
the
621494,
balance of
for Gela
Sviluppo;

refusing the application for payment of

the financing of

the global grant

— cancel the Commission decision reducing the financing of
Sicily 94-99

for Gela

Sviluppo,

global

the
grant
ERDF 98.05.26.001;

— annul the Commission decision writing off the sum of

EUR 2 348 580.42 from the balance sheet;

— annul the Commission decision in the debit note for the
sum of EUR 85 806.66, for repayment of the surplus paid;

the

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

— if Article 6.2 of the Guidelines for the financial closure of
operational assistance (1994—1999) of
the Structural
Funds adopted by Decision (ESA) 1999/1316 of 9/9/1999
is considered part of a decision within the meaning of
Article 249 EC, annul that decision;

Decision of
of Appeal:

Pleas in law:

the Board

Dismissal of the applicant's appeal

— 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.

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

— establish the non-contractual

liability of the Commission
with respect to failure to pay the final balance of the finan-
cing of the global grant for Gela Sviluppo, Sicily 94/99
ERDF 98.05.26.001, and order the Commission to compen-
sate for damage under Article 235 EC and Article 288 ECin
the sum of EUR 2 348 580.42, plus interest, or to an
extent considered fair;

— establish the breach of contract and the contractual liability
of the Commission in relation to the agreement signed on
13.09.1999 by Gela Sviluppo and the European Commis-
sion, recognised by the Region of Sicily, and amended on
31.05.2002, also recognised by the Region of Sicily, declare
that the sum of EUR 85 806.66 is not payable by the
Commission, order the Commission to perform its contrac-
tual obligations with regard to the payment of the sum of
EUR 2 262 777.76 or to compensate for damage in the
same amount, or to an extent considered fair;

Action brought on 13 February 2004 by Gela Sviluppo
S.C.p.A. (in liquidation) against the Commission of the
European Communities

— order the Commission to pay the costs.

(Case T-65/04)

(2004/C 106/141)

(Language of the case: Italian)

Pleas in law and main arguments:

An action against the Commission of the European Commu-
nities was brought before the Court of First Instance of the
European Communities on 13 February 2004 by Gela Sviluppo
(in liquidation), represented by Patrizio Menchetti,
S.C.p.A.
lawyer.

The action relates to the Commission decision not to pay the
final balance of the financing of the global grant for Gela
Sviluppo, Sicily 94—99 ERDF 98.05.26.001, and to demand
the sum already paid of EUR 85 806 66.