Case T-398/04: Action brought on 8 October 2004 by Henkel KGaA against the Office for Harmonisation in the Internal Market (Trade Marks and Designs)
Date: 2005-01-22
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, Germany, action for annulment (EU), household electrical appliance, polishing and scouring preparations, trade-mark law

C 19/26

EN

Official Journal of the European Union

22.1.2005

the Board

Applicant's appeal dismissed

Pleas in law and main arguments:

Decision of
of Appeal:

Pleas in law:

— There

is

considerable

aural

similarity between the marks
— Article 8(1)(b) of Regulation
(EC) No 40/94 was applied
incorrectly

— The BIT marks with earlier
priority enjoy extended protec-
tion under Article 8(5) of the
regulation

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:

Anheuser-Busch, Inc.

Figurative mark Anheuser Busch
Bud for goods in Classes 16, 25
and 32 (inter alia paper, clothing,
beer, ale, porter, malted alcoholic
and non-alcoholic beverages) –
Application No 398 867

The applicant

and

German word
figurative
marks Bit, BIT and Bitte ein Bit for
goods and services in Classes 16,
18, 20, 21, 24, 25, 28, 32, 34
and 42 (inter alia beer and non-
alcoholic drinks)

Decision of the Opposi-
tion Division:

Opposition rejected

Action brought on 24 August 2004 by Bitburger Brauerei
Th. Simon GmbH against the Office for Harmonisation in
the Internal Market (Trade Marks and Designs) (OHIM)

(Case T-352/04)

(2005/C 19/56)

Decision of
of Appeal:

Pleas in law:

(Language in which the application was submitted: German)

the Board

Applicant's appeal dismissed

– There is considerable aural simi-
larity between the marks

Article 8(1)(b) of Regulation (EC)
No 40/94 was applied incorrectly

The BIT marks with earlier priority
enjoy extended protection under
Article 8(5) of the regulation

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 24
August 2004 by Bitburger Brauerei Th. Simon GmbH, of
represented by Michaela Huth-Dierig,
Bitburg (Germany),
lawyer. Anheuser-Busch,
Inc., of St Louis (United States of
America), was also a party to the proceedings before the Board
of Appeal.

The applicant claims that the Court should:

Action brought on 8 October 2004 by Henkel KGaA
the Office for Harmonisation in the Internal
against

Market (Trade Marks and Designs)

(Case T-398/04)

(2005/C 19/57)

(Language of the case: German)

— annul the decision of the Second Board of Appeal of the
Office for Harmonisation in the Internal Market
(Trade
Marks and Designs) of 22 June 2004 in appeal R 451/
2002-2;

— order the defendant to pay the costs.

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 8
October 2004 by Henkel KGaA, Düsseldorf (Germany), repre-
sented by C. Osterrieth, lawyer.

22.1.2005

EN

Official Journal of the European Union

C 19/27

The applicant claims that the Court should:

— annul Decision R 771/1999-2 of

the Second Board of
Appeal of the Office for Harmonisation in the Internal
Market of 4 August 2004 relating to Community trade
mark application No 941 971 and served on the applicant
on 9 August 2004;

— order the Office to pay the costs.

Pleas in law and main arguments:

Applicant
munity trade mark:

for

Com-

Community trade mark
sought:

The applicant.

Figurative mark in the form of a
dual-layered/dual-coloured
(red/
white) dishwasher tablet with an
oval blue centre for goods
in
Classes 1 (chemicals for use in
industry), 3 (soaps etc.) and 21
– Application
(sponges
No 941 971.

etc.)

the exam-

Refusal to register.

European Communities on 1 October 2004 by Arch Chemicals
Inc., Norwalk, Connecticut, USA and Arch Timber Protection
Limited, Castleford, United Kingdom represented by K. Van
Maldegem and C. Mereu, lawyers.

The applicants claim that the Court should:

— Order the defendant to respond to the applicants' request;

— Or, in the alternative, order the annulment of the European

Commission's act D 341571(04);

— Order the defendant to compensate the applicants in the
provisional amount of 1 euro for damages suffered as a
result of the defendant's failure to comply with its obliga-
tions under Community law by failing to respond to the
applicants, or, in the alternative, as a result of the European
Commission's act D 341571(04), as well as any applicable
interests, pending the exact calculation and determination
of the exact amount;

— Order the defendant to pay all costs and expenses in these

proceedings.

the Board

Dismissal of the appeal.

Pleas in law and main arguments

Infringement of Article 7(1)(b) of
Regulation No 40/94 (1). Misuse of
powers.

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

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

Action brought on 1 October 2004 by Arch Chemicals,
Inc., and Arch Timber Protection Limited against the
Commission of the European Communities

(Case T-400/04)

(2005/C 19/58)

(Language of the case: English)

in the review of

The applicants produce and sell biocide active substances and
biocidal products. They notified several substances and are a
these substances organised by
participant
Directive 98/8/EC (1)
concerning the placing of biocidal
products on the market, Regulation 1896/2000 (2) on the first
phase of the programme referred to in Article 16(2) of Direc-
tive 98/8/EC and Regulation 2032/2003 (3) establishing the
second phase of the programme referred to in Article 16(2) of
Directive 98/8/EC.

in the review were breached,

Because, according to the applicants, their rights and expecta-
tions as a participant
they
requested the defendant to adopt specific measures to remedy
the alleged illegalities. The applicants claim that Regulation
1896/2000 and Regulation 2032/2003 adversely affect their
data protection rights granted by Directive 98/8/EC. The appli-
cants also submit
the regulations allow evaluators to
conduct a comparative assessment between active substances,
give predominance to hazard based assessments instead of risk
assessment and allows taking into account data submitted by
third parties.

that

An action against the Commission of the European Commu-
nities was brought before the Court of First Instance of the

The applicants claim in the first place that the defendant failed
to define its position and did not adopt the necessary measures.
In the alternative, they claim that the letter of the defendant
rejecting the applicants' request should be annulled.

Decision of
iner:

Decision of
of Appeal:

Pleas in law: