Case T-317/06: Action brought on 23 November 2006 — Panrico S.L. v OHIM — HDN Development ( Krispy Kreme DOUGHNUTS )
Date: 2006-12-30
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), confectionery product, trade-mark law

30.12.2006

EN

Official Journal of the European Union

C 326/69

Pleas in law and main arguments

The European Community,
represented by the European
Commission, entered into two contracts with a consortium on
11 March 1992 and 29 December 1993, respectively. One of
the members of that consortium was a company for which the
contracts
defendant was
concerned,
project
(‘Knowledge acquisition visualisation and assessment system’)
and the ISAR-AIM A2052 project (‘Integration System Architec-
ture’), carried out under a specific research and technological
development programme in the field of information technolo-
gies
by Council Decision
adopted
91/394/EC (1).

an associated contractor. Those
KAVAS-2 A2019

respectively,

1994)

(1990

the

to

The contracts set out the amounts of the eligible costs for the
projects on the basis of which the Community financial contri-
bution was calculated.
In accordance with the provisions of
those contracts, all payments made by the Commission were to
be regarded as advance payments pending approval in the final
report.
If the total financial contribution to be paid by the
Commission were to prove lower than the payments already
made, the contracting parties undertook to repay the difference
to the Commission without delay. The contracts also provided
that the contracting parties were jointly and severally liable for
any failure to meet contractual obligations, except where one of
them failed to submit financial information or provided finan-
cial information that was false or incomplete. In those cases, the
party concerned was to incur full liability.

Under the contracts, the consortium was required to submit
regular statements of expenditure, as well as regular reports on
the progress of the works.

The financial audit carried out by the Commission in 1996
disclosed several items of non-eligible expenditure invoiced by
Premium SA. In its comments on the audit report, the defen-
dant stated that it considered the report's rejection of a number
of costs to be unacceptable. Following an exchange of cor-
respondence with the defendant, the Commission issued debit
notes to Premium SA, which contested them. In so far as certain
advance payments taken into consideration by the Commission
in its first debit notes had not been transferred to Premium SA
by the coordinator, the Commission issued new debit notes
itemising the amounts actually overpaid, while maintaining its
position vis-à-vis the findings of the audit report regarding the
non-eligible expenditure invoiced by the defendant. The new
notes were also contested by Premium SA.

Several times the Commission presented requests for payment
again where earlier requests had elicited no reaction from the
defendant. As a consequence, on the basis of the arbitration
clauses contained in the contracts, the Commission has brought
the present proceedings claiming that the Court should order
Premium SA to reimburse part of the advance payment made
interest, on the
by the Community,
ground that the defendant has failed to substantiate by relevant
argument
the Commission's position
regarding the expenditure that the audit report found to be non-
eligible.

together with default

to accept

refusal

its

(1) OJ 1991 L 218, p. 22.

Action brought on 23 November 2006 — Panrico S.L. v
OHIM — HDN Development (‘Krispy Kreme DOUGH-
NUTS’)

(Case T-317/06)

(2006/C 326/144)

Language in which the application was lodged: Spanish

Parties

Applicant: Panrico S.L. (Unipersonal) (Santa Perpètua de Mogola,
Barcelona, Spain) (represented by: D. Pellisé Irquiza, lawyer)

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

Other party to the proceedings before the Board of Appeal of OHIM:
HDN Development Corporation

Form of order sought

— annul the decision of the First Board of Appeal of OHIM of
in Case R 0194/2005-1
8 August 2006 in the appeal
relating to opposition proceedings No B 303 992 which
refused Community trade mark application No 1 298 785;

— order the Office and HDN Development Corporation the
applicant for Community trade mark No 1 298 785 to pay
the costs.

Pleas in law and main arguments

Applicant
Corporation.

for a Community

trade mark: HDN Development

Community trade mark concerned: Figurative mark with the words
‘KRISPY KREME DOUGHNUTS’
(Application No 1 298 785)
for goods in Classes 25 and 30 and for services in Class 42.

Proprietor of the mark or sign cited in the opposition proceedings: The
applicant.

Mark or sign cited in opposition: Spanish word marks ‘DOGH-
NUTS’ (No 1 288 926) and ‘DONUT’ (No 399 563) for goods
in Class 30 and the figurative mark ‘donuts’ for goods in Class
25 and services in Class 42.

C 326/70

EN

Official Journal of the European Union

30.12.2006

Decision of the Opposition Division: Opposition dismissed.

Party requesting the declaration of invalidity of the Community trade
mark: The applicant

Decision of the Board of Appeal: Appeal dismissed.

Pleas in law: Incorrect application of Article 8(1)(b) and 5 of
Regulation (EC) No 40/94 on the Community trade mark. The
applicant submits,
in that regard, that the Community trade
mark which is the subject of these proceedings has as its main
component the word ‘DOUGHNUTS’, which may be confused
with the family of opposing marks DONUT-DONUTS-DOGH-
NUTS applied to the same goods and services, giving rise to a
serious risk of confusion on the part of the Spanish public.

Trade mark right of the party requesting the declaration of invalidity:
The earlier national trade name ‘Generalóptica’ for import and
retail sale of optical, precision and photographic apparatus

Decision of the Cancellation Division: Rejection of the request for a
declaration of invalidity

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: Infringement of among others Article 8(1) and (4)
of Council Regulation No 40/94 as there is a likelihood of
confusion between the two signs and the applicant's sign is
granted national protection.

Action brought on 27 November 2006 — Moreira da
Fonseca v OHIM — General Óptica (GENERAL OPTICA)

Infringement of Rule 22 of Commission Regulation No
2868/95 as OHIM omitted its duty to ask the applicant to
present evidence of the earlier use invoked.

(Case T-318/06)

(2006/C 326/145)

Language in which the application was lodged: English

Parties

Applicant: Alberto Jorge Moreira da Fonseca Lda
Portugal) (represented by: M. Oehen Mendes, lawyer)

(Santo Tirso,

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

Action brought on 27 November 2006 — Moreira da
Fonseca v OHIM — General Óptica (GENERAL OPTICA)

(Case T-319/06)

(2006/C 326/146)

Language in which the application was lodged: English

Other party to the proceedings before the Board of Appeal: General
Óptica SA (Barcelona, Spain)

Parties

Form of order sought

— Annul the decision of the First Board of Appeal of OHIM of
8 August 2006 notified to the applicant 4 October 2006, in
cancellation proceedings No 827C (Case No R 947/2005-1)
and consequently declare Community trade mark No
573 592 ‘GENERAL OPTICA’ filed on 10 July 1997 and
registered on 13 September 1999, as invalid, or in the alter-
native, revoked;

Applicant: Alberto Jorge Moreira da Fonseca Lda
Portugal) (represented by: M. Oehen Mendes, lawyer)

(Santo Tirso,

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

Other party to the proceedings before the Board of Appeal: General
Óptica SA (Barcelona, Spain)

— order the defendant to pay the costs.

Form of order sought

Pleas in law and main arguments

the application for a
Registered Community trade mark subject of
declaration of invalidity: The figurative mark ‘GENERAL OPTICA’
for services in class 42 (Opticians' services) — Community trade
mark No 573 592

— Annul the decision of the First Board of Appeal of OHIM of
8 August 2006 notified to the applicant 27 September
in cancellation proceedings No 828C (Case No R
2006,
944/2005-1) and consequently declare Community trade
mark No 2 436 798 ‘GENERAL OPTICA’
filed on 5
November 2001 and registered on 20 November 2002, as
invalid, or in the alternative, revoked;

Proprietor of the Community trade mark: General Óptica SA

— order the defendant to pay the costs.