Case C-245/06 P: Appeal brought on  1 June 2006  by Saiwa s.p.a. against the judgement of the Court of First Instance (First Chamber) delivered on  5 April 2006  in Case T-344/03 Saiwa s.p.a. v Office for Harmonisation in the Internal Market (OHIM) and Barilla Alimentare s.p.a.
Date: 2006-07-29
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), appeal, food industry, pasta, trade-mark law

C 178/26

EN

Official Journal of the European Union

29.7.2006

Appeal brought on 1 June 2006 by Saiwa s.p.a. against the
judgement of the Court of First Instance (First Chamber)
delivered on 5 April 2006 in Case T-344/03 Saiwa s.p.a. v
Office for Harmonisation in the Internal Market (OHIM)
and Barilla Alimentare s.p.a.

The applicant submits moreover that the distinctive character
of the word ‘ORO’ is reinforced and/or acquired through use,
with regard to both the trade mark ‘ORO’ and the trade mark
‘ORO SAIWA’.

(Case C-245/06 P)

(2006/C 178/41)

The applicant finally submits that the trade marks ‘ORO’ and
‘ORO SAIWA’ on the one hand, and ‘Selezione ORO BARILLA’
on the other hand, are likely to be confused and that in any
case there is a likelihood of association between them.

Language of the case: Italian

(1) OJ L 22, p. 50.

Parties

Appellant: Saiwa s.p.a. (represented by: G. Sena, P. Tarchini, J.-P.
Karsenty, M. Karsenty-Ricard, lawyers)

Other parties to the proceedings: Office for Harmonisation in the
Internal Market (Trade Marks and Designs) and Barilla Alimen-
tare

Form of order sought

— Set aside the judgement under appeal.

— Grant the form of order sought at first instance, and there-
fore annul, for infringement of Article 8(1)(b) of Regulation
(EC) No 40/94 (1), the decision of the Fourth Board of
Appeal of the OHIM of 18 July 2003 in Case R 480/2002-
4 and the rejection of the application for registration of
Barilla Alimentare s.p.a. No 289.405.

Action brought on 2 June 2006 — Commission of the
European Communities v Kingdom of Spain

(Case C-248/06)

(2006/C 178/42)

Language of the case: Spanish

Parties

Applicant: Commission of the European Communities (repre-
sented by: R. Lyal and L. Escobar Guerrero, acting as Agents)

— Order the OHIM and Barilla Alimentare s.p.a. to pay the

costs of all of the proceedings

Defendant: Kingdom of Spain

Pleas in law and main arguments

Form of order sought

The applicant puts forward a single ground for annulment
based on infringement of Article 8(1)(b) of Regulation (EC) No
40/94 on the Community trade mark. The applicant claims
that the expression ‘ORO’ (of which the trade mark which is
the subject of the dispute consists, or which in any case forms
part thereof) has inherent distinctive character; that with refer-
ence to the international mark (which is also the subject of the
present dispute) part of the relevant public is unaware of the
meaning of the word ‘ORO’ and that this is common knowl-
edge and does not have to be proved by the parties; that
having regard to the principle of interdependence, given the
identity of the goods covered and signs in question, it is suffi-
cient that the earlier sign has only weak distinctiveness.

— declare that, by maintaining in force rules for the deduction
of costs in respect of research and development and techno-
logical
innovation carried out abroad which is more
onerous than the rules applicable to costs incurred in
Spain, as amended by Article 35 of the Law on corporation
tax, approved by Royal Legislative Decree 4/2004 of 5
March, the Kingdom of Spain has failed to fulfil its obliga-
tions under Articles 43 and 49 of
the EC Treaty on
freedom of establishment and freedom to provide services,
and the corresponding articles in the Agreement on the
European Economic Area;

— order the Kingdom of Spain to pay the costs.