Case T-164/06: Action brought on 21 June 2006 — ColArt/Americas v OHIM (BASICS)
Date: 2006-08-12
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), paints and varnishes, trade-mark law

12.8.2006

EN

Official Journal of the European Union

C 190/27

In support of their claims, the applicants plead:

Pleas in law and main arguments

— misuse of powers, in that the defendant had recourse to a
procedure introduced and strictly regulated by a Basic
Regulation implementing an international agreement,
in
order to pursue vaguely social ends (recitals 250 to 252)
that call for the exclusion from the notion of Community
industry of a large proportion of products which are not
merely similar but actually identical;

— manifest errors of fact, in relation to the identification of
such footwear with insoles of less than 24 centimetres with
children's footwear, to the physical and technical features of
children's footwear, and also the description of the sector
concerned, to the alleged financial cost to families and to
the real damage suffered by the children's
footwear
industry;

— infringement of Council Decision 87/369 of 7 April 1987
concerning the conclusion of the International Convention
on the Harmonized Commodity Description and Coding
System in so far as the contested regulation uses the
measurement of the insole as a ground for distinguishing
between one kind of footwear and another.

Finally, the applicants allege breach of the principle of equal
treatment and non-discrimination.

Community trade mark concerned: The word mark ‘BASICS’ for
goods in class 2 — application No 2 433 613

Decision of the examiner: Refusal of the application

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: Infringement of Article 7(1)(b) and (c) and Article
7(3) of Council Regulation No 40/94 as the word ‘BASICS’ is
not a familiar expression in the English language with respect
to the goods applied for and it is not of such nature as to give
the consumers a clear understanding with respect
to the
products covered by the application. In any case, the trade
mark applied for has acquired distinctiveness through use.

Action brought on 19 June 2006 — Fiorucci v OHIM —
EDWIN (word mark ‘Elio Fiorucci’)

(Case T-165/06)

(2006/C 190/50)

Language in which the application was lodged: Italian

Action brought on 21 June 2006 — ColArt/Americas
v OHIM (BASICS)

Parties

(Case T-164/06)

(2006/C 190/49)

Language of the case: English

Parties

Applicant: ColArt Americas, Inc (Piscataway, USA) (represented
by: E. Soler Borda, lawyer)

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

Form of order sought

Applicant: Elio Fiorucci
Giulio Sironi and Francesco Rossi, lawyers)

(represented by: Adriano Vanzetti,

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

Other party to the proceedings before the Board of Appeal of OHIM:
EDWIN CO LTD

Form of order sought

— Annul the decision of the First Board of Appeal of OHIM of
6 April 2006 in Case R 238/2005-1 and declare Com-
munity trade mark No 000709006 ‘Elio Fiorucci’, filed on
23 December 1997 and registered on 6 April 1999,
is
invalid or, in the alternative, revoked;

— order the defendant to pay the costs.

— Annul the decision of the Fourth Board of Appeal of the
Office for the Harmonisation in the Internal Market (Trade
Marks and Designs) (OHIM) of 7 April 2006 concerning
the Trade mark application BASICS No 002433613 (Case R
788/2005-4) in whole;

— in the alternative, annul the contested decision in so far as
it concerns the following products: colouring matters in the
nature of acrylic paints, artists' varnishes.

Pleas in law and main arguments

Registered Community trade mark in respect of which a declaration of
invalidity has been sought: word mark ‘Elio Fiorucci’ (application
for registration No 709.006 for goods in Classes 3, 18 and 25).

Proprietor of the Community trade mark: EDWIN CO. LTD.

Applicant for the declaration of invalidity: the applicant.