Case T-202/06: Action brought on 31 July 2006 — Select Appointments v OHIM — Manpower (TELESELECT)
Date: 2006-09-16
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), service, telephone, trade-mark law

C 224/50

EN

Official Journal of the European Union

16.9.2006

Form of order sought

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

— Annulment of

the decision of 15 May 2006 (Case R

1387/2005-2) of the Board of Appeal in its entirety;

— order the Office to pay the applicant the costs incurred in
connection with prosecuting this appeal before the Court of
First Instance.

Other party
Manpower Inc. (Milwaukee, USA)

to the proceedings before

the Board of Appeal:

Form of order sought

Pleas in law and main arguments

Community trade mark concerned: 3-dimensional mark consisting
of ‘the colour light yellow in the shade claimed, applied to the
mesh in the tip of a paint filter’ for goods and services in
classes 16 and 21— application No 3 969 367.

— That the decision of the OHIM Board of Appeal dated 18
May 2006 permitting the registration of application No
1 030 980 and dismissing opposition No B 303 158 be set
aside;

— that the application be refused; and

Decision of the examiner: Refusal of the application.

— that the appellant have its costs of the Appeal and below

before OHIM.

Decision of the Board of Appeal: Dismissal of the appeal.

Pleas in law: Infringement of Article 7(1)(b) of Council Regu-
lation 40/94. The applicant claims that the Board of Appeal
made several factual errors of assessment and adopted at least
one error made by the Examination Division. Moreover, in the
appraisal of the available evidence the Board of Appeal alleg-
edly failed to do the appropriate balancing reaching, thus, a
wrong conclusion when considering Article 7(1)(b) of
the
above mentioned regulation.

The applicant finally contends that the application is distinctive
of one trade source and therefore does not offend Article
7(1)(b) of the regulation. In fact, the applicant claims the use of
colour would be noticed by the relevant public as being asso-
ciated with only the single trade source.

Pleas in law and main arguments

Applicant for the Community trade mark: Manpower Inc.

Community trade mark concerned: The word mark ‘TELESELECT’
for services in classes 35 and 41 (Assessment and training
services in the field of telephone call handling)

Proprietor of the mark or sign cited in the opposition proceedings:
Select Appointments (Holdings)

Mark or sign cited: The Community word mark ‘SELECT’ for
services in classes 35 and 41 — application No 2 111 367
(employment agency, consultancy, information on job opportu-
nities, advertising and personnel management services)

Decision of
entirety

the Opposition Division: Opposition upheld in its

Action brought on 31 July 2006 — Select Appointments v
OHIM — Manpower (TELESELECT)

Decision of the Board of Appeal: Annulment of the Opposition
Division's decision

(Case T-202/06)

(2006/C 224/105)

Language in which the application was lodged: English

Pleas in law: Infringement of Article 8(1)(b) of Council Regu-
lation No 40/94 as, according to the applicant, the likelihood
of confusion even in parts of the European Community justi-
fied the refusal of registration of the contested mark. Consid-
ering the average consumers do not necessarily speak English,
the word mark would not have any significant meaning to
them, as regards the part ‘SELECT’.

Parties

Applicant: Select Appointments (Holdings) Ltd.
(St Albans,
United Kingdom) (represented by: G.R. Fernando, Barrister, C.J.
Leech, Solicitor)

the

applicant

Moreover,
services
claims
provided by the contested mark are encompassed by the wider
employment agency services covered by its own Community
trade mark.

assessment

that