Case T-228/06: Action brought on 28 August 2006 — Giorgio Beverly Hills v OHIM — WHG Westdeutsche Handelsgesellschaft (GIORGIO BEVERLY HILLS)
Date: 2006-10-14
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), cosmetic product, trade-mark law

C 249/16

EN

Official Journal of the European Union

14.10.2006

Form of order sought

— Annul Commission Regulation (EC) No 888/2006 of 16
June 2006 as it fails to classify the applicant's product for
tariff classification purposes under the Combined Nomen-
clature by reference to the objective characteristics and
qualities of the product.

— In the alternative, annul Commission Regulation (EC) No
888/2006 as it was enacted by the Commission on foot of
an abuse of powers by the Commission and/or an infringe-
ment of essential procedural requirements.

— Declare that the customs classification of the product is to
be determined pursuant to the intrinsic characteristic of the
product which is that it is in the nature of an automatic
data processing machine and so falls to be classified within
the terms of chapter 8471 of the Combined Nomenclature.

— In the alternative, declare that the essential characteristic of
the product is its specific capacity to generate and perform
mathematical calculations specified by the user at the time
of purchase and that is so falls to be classified as a calcu-
lating device within the terms of chapter 8470 of
the
Combined Nomenclature.

the user access to the records stored on an ADP machine’ in
the description of the goods in the annex to Regulation No
888/2006. The applicant alleges that these failures are errors of
law which should lead to the annulment of the regulation.

(1) Commission Regulation (EC) No 888/2006 of 16 June 2006
concerning the classification of certain goods in the Combined
Nomenclature (OJ 2006 L 165, p. 6).

Action brought on 28 August 2006 — Giorgio Beverly
Hills v OHIM — WHG Westdeutsche Handelsgesellschaft
(GIORGIO BEVERLY HILLS)

(Case T-228/06)

(2006/C 249/38)

Language in which the application was lodged: English

— Declare that in accordance with the accepted classification
rules of goods for Community customs purposes the essen-
tial characteristic of the product is not that of a security
device or the granting of access to records whether stored
on an automatic data processing machine or otherwise.

Parties

— Order the payment to the applicant of such customs duty
as has been paid by the applicant in respect of the importa-
tion of the product into the Community since the coming
into force of Commission Regulation (EC) No 888/2006
together with the payment of interest to the applicant.

Applicant: Giorgio Beverly Hills Inc. (Cincinnati, USA) (repre-
sented by: M. Schaeffer, lawyer)

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

— Order the Commission to pay the applicant's costs.

Other party to the proceedings before the Board of Appeal: WHG
Westdeutsche Handelsgesellschaft mbH (Hagen, Germany)

Pleas in law and main arguments

Form of order sought

is importing and selling the product

The applicant
‘RSA
SecurID authenticator’ in the Community. The company seeks
the annulment of Commission Regulation No 888/2006 (1) by
which this product was classified under heading 8543 in the
Combined Nomenclature.

— Overrule the decision of the Second Board of Appeal of 21
June 2006 in joined Cases R 107/2005-2 and R 187/2005-
2 as far as appeal No R 187/2005-2 was dismissed;

— reject the opposition B 57259 dated July 6, 1998 as far as
this opposition was upheld by the decision No 4157/2004
of the Opposition Division of 10 December 2004;

in enacting Regulation No
The applicant contends
888/2006, the Commission has failed to identify the essential
characteristics of
the product and it has misdescribed the
product as ‘a security device’ and as a device ‘[which] allows

that,

— order the defendant to bear the costs of the proceedings;

— order the intervener to bear the costs of the proceeding

before the Office for Harmonisation.

14.10.2006

EN

Official Journal of the European Union

C 249/17

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: The word mark ‘GIORGIO
BEVERLY HILLS’ for goods in classes 3, 14, 18 and 25 —
application No 417 709

Proprietor of the mark or sign cited in the opposition proceedings:
WHG Westdeutsche Handelsgesellschaft mbH.

Mark or sign cited: The national word mark and Community
figurative mark ‘GIORGIO’ for goods in classes 18, 24 and 25

Decision of the Opposition Division: Opposition upheld for part
of the contested goods

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: There is no sufficient risk of confusion between the
conflicting trade marks as there does not exist a relevant simi-
larity between the marks.