Case T -327/06: Action brought on 22 November 2006 — Altana Pharma v OHIM — Avensa (PNEUMO UPDATE)
Date: 2006-12-30
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), trade-mark law

30.12.2006

EN

Official Journal of the European Union

C 326/75

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

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

Pleas in law: Infringement of Article 43 of Council Regulation
No 40/94 and Rule 22 of Commission Regulation No 2868/95
as Terumo failed to prove sufficient use of its trade mark, and of
Article 8(1)(b) of the Council regulation as the conflicting trade
marks are not likely to be confused.

Mark or sign cited: The national word mark ‘TOTAL’ for goods in
classes 3, 10 and 21

Decision of the Opposition Division: Rejection of the opposition in
its entirety

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regu-
lation No 40/94 in that the Board of Appeal found a lack of
similarity between the two marks concerned and of Article 63
(2) of the regulation as the Board of Appeal didn't notify any of
the observations submitted by Eric Peterson to the applicant.

Action brought on 21 November 2006 — Total v OHIM —
Peterson (Beverly Hills Formula TOTAL PROTECTION)

(Case T-326/06)

(2006/C 326/153)

Language in which the application was lodged: English

Action brought on 22 November 2006 — Altana Pharma v
OHIM — Avensa (PNEUMO UPDATE)

Parties

Applicant: Total SA (Courbevoie, France)
Aldred, Solicitor)

(represented by: S.

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

Other party to the proceedings before the Board of Appeal: Eric
Peterson (London, United Kingdom)

Form of order sought

— The decision of

the Fourth Board of Appeal dated 5

September 2006 shall be annulled.

— The Court either directs the Board or the Office to refuse Mr
Peterson's
application No
2 988 228, or at its discretion remit the opposition to the
Board for reconsideration.

trade mark

Community

— The applicant receives an award of costs in respect of the
opposition, a reversal of the award of costs made in the
Board's Decision, and an award of costs in respect of this
Application.

Pleas in law and main arguments

Applicant for the Community trade mark: Eric Peterson

Community trade mark concerned: The figurative mark ‘Beverly
Hills Formula TOTAL PROTECTION’ for goods in class 3 —
application No 2 988 228

(Case T -327/06)

(2006/C 326/154)

Language in which the application was lodged: German

Parties

Applicant: Altana Pharma AG (Konstanz, Germany) (represented
by: H. Becker, 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:
Avensa AG (Zug, Switzerland)

Form of order sought

The applicant claims that the Court should:

— annul the decision of the First Board of Appeal of the Office
for Harmonisation in the Internal Market (Trade Marks and
Designs) of 11 September 2006 (Case R 668/2005-2);

— order the Office for Harmonisation in the Internal Market
to dismiss opposition No B

(Trade Marks and Designs)
575 524 brought by the opponent;

— in the alternative, order the Office for Harmonisation in the
Internal Market (Trade Marks and Designs) to make a fresh
decision on opposition No B 575 524 brought by the oppo-
nent in the light of the Court's opinion.

C 326/76

EN

Official Journal of the European Union

30.12.2006

Pleas in law and main arguments

Applicant for a Community trade mark: The applicant.

— annul the decision of the First Board of Appeal of the Office
for Harmonisation in the Internal Market (Trade Marks and
Designs) of 8 September 2006 (Case R 0394/2006-1);

— order the defendant to pay the costs.

Community trade mark concerned: The word mark ‘PNEUMO
UPDATE’ for goods and services in Classes 5, 9, 16, 35, 38 and
41 (Application No 2 462 049).

Pleas in law and main arguments

Proprietor of the mark or sign cited in the opposition proceedings:
Avensa AG.

Community trade mark concerned: The word mark ‘E’ for goods in
Classes 7, 9 and 19 (application No 3 817 566)

Mark or sign cited in opposition: German word mark ‘Pneumo’ for
goods in Class 5, the opposition being brought only against the
registration in Class 5.

Decision of the Examiner: Refusal of the application

Decision of the Board of Appeal: Dismissal of the appeal

Decision of the Opposition Division: Opposition granted.

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

Pleas in law: The contested decision is not reasoned in a compre-
hensible manner and it infringes Article 8(1)(b) of Regulation
(EC) No 40/94 (1), since there is no likelihood of confusion
between the opposing marks. In addition, the applicant claims
that the opposing mark is not in use.

(1) Council Regulation (EC) No 40/94 of 20 December 1993 on the

Community trade mark (OJ 1994 L 11, p. 1).

Pleas in law: Infringement of Article 7(1)(b) of Regulation (EC)
No 40/94 (1) as it was held that the mark for which registration
was sought lacked distinctive character and that its availability
had to be preserved.

(1) Council Regulation (EC) No 40/94 of 20 December 1993 on the

Community trade mark (OJ 1994 L 11, p. 1).

Action brought on 27 November 2006 — Novartis v
OHIM (BLUE SOFT)

Action brought on 27 November 2006 — Enercon GmbH
v OHIM

(Case T-329/06)

(2006/C 326/155)

Language of the case: German

Parties

(Case T-330/06)

(2006/C 326/156)

Language of the case: German

Parties

Applicant: Enercon GmbH (Aurich, Germany) (represented by R.
Böhm, lawyer)

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

Form of order sought

Applicant: Novartis AG (Basel, Switzerland) (represented by N.
Hebeis, lawyer)

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

Form of order sought

The applicant claims that the Court should

— annul

the decision of

the First Board of Appeal of 14

September 2006 in Case R 270/2006-1;

— order the Office for Harmonisation in the Internal Market to

The applicant claims that the Court should:

pay the costs.