Case T-165/06: Action brought on 19 June 2006 — Fiorucci v OHIM — EDWIN (word mark Elio Fiorucci )
Date: 2006-08-12
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), clothing, cosmetic product, leather, 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.

C 190/28

EN

Official Journal of the European Union

12.8.2006

Trade mark right of applicant for the declaration: right to the use of
his own name.

Decision of the Cancellation Division: application for declaration
of invalidity granted.

Decision of the Board of Appeal: appeal granted and application
for declaration of invalidity rejected.

Pleas in law: Infringement of Articles 52(2)(a), 12(a) and 50(1)(c)
of Regulation (EC) No 40/94 on the Community trade mark in
the light of, respectively, Articles 8(3), 21(1)(a), and 26(1)(b) of
the Italian Industrial Property Code.

Action brought on 28 June 2006 — PowderJect
Research v OHIM (POWDERMED)

(Case T-166/06)

(2006/C 190/51)

Language of the case: English

Parties

past tense of a verb by reason of its closing letters ‘…ed’ and
that it would not be immediately apparent to the relevant
public that the trade mark could be dissected into ‘powder’ and
‘med’.

Action brought on 19 June 2006 — Italian Republic v
Commission

(Case T-168/06)

(2006/C 190/52)

Language of the case: Italian

Parties

Applicant: Italian Republic (represented by: Paolo Gentili, Avvo-
cato dello Stato)

Defendant: Commission of the European Communities

Applicant: PowderJect Research Ltd (Oxford, United Kingdom)
(represented by: A. Bryson, Barrister, P. Brownlow, Solicitor)

Form of order sought

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

Form of order sought

— Annul the decision of the Second Board of Appeal of the
Office for Harmonisation in the Internal Market
(Trade
Marks and Designs) of 12 April 2006, relating to the appli-
cant's Community trade mark application No 4202743 for
POWERMED in classes 5, 10 and 42;

— award costs in favour of the applicant.

Pleas in law and main arguments

Community trade mark concerned: The word mark ‘POWDERMED’
for goods and services in classes 5, 10 and 42 — application
No 4 202 743

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) of Council
Regulation No 40/94. The Board of Appeal erred in treating
the trade mark as being composed of two English words in
common usage and it gave no or insufficient consideration to
the structure of the trade mark applied for by not taking into
account that the trade mark would at first sight suggest the

— annul Memorandum No 03232 of 7 April 2006 of the
European Commission, Directorate-General
for Regional
Policy — Programmes and projects in Cyprus, Greece,
Hungary, Italy, Malta and the Netherlands — concerning
payments made by the Commission which differ from the
amount requested. Ref. Programme SPD Lombardia (No
CCI 2000 IT 16 2 DO 014);

— annul Memorandum No 03903 of 5 May 2006 of the Euro-
pean Commission, Directorate-General for Regional Policy
— Programmes and projects in Cyprus, Greece, Hungary,
Italy, Malta and the Netherlands — concerning payments
made by the Commission which differ from the amount
requested. Ref SPD Ob. 2 Lazio 2000-2006 (No CCI 2000
IT 16 2 DO 009);

— annul Memorandum No 04240 of 18 May 2006 of the
European Commission, Directorate-General
for Regional
Policy — Programmes and projects in Cyprus, Greece,
Hungary, Italy, Malta and the Netherlands — concerning
payments made by the Commission which differ from the
amount requested. Ref. Programme SPD Lombardia (No
CCI 2000 IT 16 2 DO 014),

— annul Memorandum No 04241 of 18 May 2006 of the
European Commission, Directorate-General
for Regional
Policy — Programmes and projects in Cyprus, Greece,
Hungary, Italy, Malta and the Netherlands — concerning
certification and declaration of intermediate expenses and
requests for payment. Ref. SPD Veneto Ob. 2 2000-2006
(No CCI 2000 IT 16 2 DO 005);