Case T-305/06: Action brought on 13 November 2006 — Air Products and Chemicals v OHIM — Messer Group (FERROMIX)
Date: 2006-12-30
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), gas, metalworking, steel, trade-mark law

30.12.2006

EN

Official Journal of the European Union

C 326/61

Proprietor of the mark or sign cited in the opposition proceedings:
Union Investment Privatfonds GmbH, previously Union Invest-
ment Gesellschaft GmbH.

Mark or sign cited in opposition: German word marks ‘UNIFONDS’
(No 991.995) and ‘UNIRAK’ (No 991.997) and German figura-
tive mark ‘UNIZINS’
to distinguish capital
(No 2.016.954),
investments, as referred to in Class 36.

Decision of the Opposition Division: Opposition partially upheld,
in so far as a likelihood of confusion is recognised ‘only as
regards services found to be similar’.

Pleas in law and main arguments

Registered Community trade mark in respect of which a declaration of
invalidity has been sought: The word mark ‘Mozart’ for goods in
Class 30 (Community trade mark No 21 071).

Proprietor of the Community trade mark: The applicant.

Applicant for the declaration of invalidity: Chocoladefabriken Lindt
& Sprüngli AG.

Decision of the Cancellation Division: Declaration of invalidity of
the Community trade mark concerned.

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

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

Pleas in law: The contested decision wrongly applied the theory
of increased protection for so-called marks in a series, developed
by the Court of First Instance in its judgment of 23 February
2006 in Case T-194/03 concerning the trade mark ‘Bainbridge’,
because the two necessary conditions are not fulfilled: (a) the
element common to the series of earlier marks must be distinc-
tive; and (b) the earlier marks must be used and understood by
the relevant public as signifying a multiplicity of products and/
or services.

Pleas in law: Infringement of the duty under Article 73 of Regu-
lation (EC) No 40/94 (1) to state the reasons on which a decision
is based, infringement by the Office of its duty under Article 74
(1) of Regulation No 40/94 to examine the facts of its own
motion, infringement of the principle of good faith and infrin-
gement of Article 7(1)(c) of Regulation No 40/94.

(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 10 November 2006 — Reber v OHIM
(Mozart)

Action brought on 13 November 2006 — Air Products and
Chemicals v OHIM — Messer Group (FERROMIX)

(Case T-304/06)

(2006/C 326/131)

(Case T-305/06)

(2006/C 326/132)

Language in which the application was lodged: German

Language in which the application was lodged: English

Parties

Parties

Applicant: Paul Reber GmbH & Co. KG (Bad Reichenhall,
Germany) (represented by: O. Spuhler, 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:
Chocoladefabriken Lindt & Sprüngli AG (Kilchberg, Switzerland)

Form of order sought

The applicant claims that the Court should:

— annul the decision of the Second Board of Appeal of the
Office for Harmonisation in the Internal Market of 8
September 2006 in appeal case R 97/2005-2;

Applicant: Air Products and Chemicals Inc.
(represented by: S. Heurung, lawyer)

(Allentown, USA)

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

Other party to the proceedings before the Board of Appeal: Messer
Group GmbH (Sulzbach, Germany)

Form of order sought

— Annul the decision of 12 September 2006 of the Second
Board of Appeal of OHIM in joined Cases R 1270/2005-2
and R 1408/2005-2;

— reject the contested application for registration of the trade

mark ‘FERROMIX’ CTM 3 190 063 in its entirety;

— send the decision of the Court of First Instance to OHIM;

— order the defendant to pay the costs of the proceedings.

— order Messer Group to pay all the costs and expenses.

C 326/62

EN

Official Journal of the European Union

30.12.2006

Pleas in law and main arguments

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

Applicant for the Community trade mark: Messer Group GmbH

Community trade mark concerned: The word mark ‘FERROMIX’ for
goods in classes 1 and 4 — application No 3 190 063

Other party to the proceedings before the Board of Appeal: Messer
Group GmbH (Sulzbach, Germany)

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

Form of order sought

Mark or sign cited: The Community word mark ‘FERROMAXX’
for goods in class 1

Decision of the Opposition Division: Opposition upheld in respect
of all goods in class 1; opposition rejected in respect of all
goods in class 4

Decision of the Board of Appeal: Appeal brought by the applicant
(R 1270/2005-2) dismissed; appeal brought by Messer Group
GmbH (R 1408/2005-2) upheld

Pleas in law: Violation of Article 8(1)(b) of Council Regulation
No 40/94 as the Board of Appeal among others:

— Annul the decision of 12 September 2006 of the Second
Board of Appeal of OHIM in joined Cases R 1226/2005-2
and R 1398/2005-2;

— reject the contested application for registration of the trade

mark ‘INOMIX’ CTM 3 190 031 in its entirety;

— send the decision of the Court of First Instance to OHIM;

— order Messer Group to pay all the costs and expenses.

— overestimated the knowledge and awareness of non profes-

Pleas in law and main arguments

sional consumers of welding gas;

— erroneously assumed that the trade mark ‘FERROMAXX’ was

Applicant for the Community trade mark: Messer Group GmbH

inherently weak;

— did not pay sufficient attention to the fact that the goods in
question are partially identical, partially highly similar; and

— failed to consider the overall impression of the marks as a

whole.

Action brought on 13 November 2006 — Air Products and
Chemicals v OHIM — Messer Group (INOMIX)

(Case T-306/06)

(2006/C 326/133)

Community trade mark concerned: The word mark ‘INOMIX’ for
goods in classes 1 and 4 — application No 3 190 031

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

Mark or sign cited: The Community word mark ‘INOMAXX’ for
goods in class 1

Decision of the Opposition Division: Opposition upheld in respect
of all goods in class 1; opposition rejected in respect of all
goods in class 4

Decision of the Board of Appeal: Appeal brought by the applicant
(R 1226/2005-2) dismissed; appeal brought by Messer Group
GmbH (R 1398/2005-2) upheld

Pleas in law: Violation of Article 8(1)(b) of Council Regulation
No 40/94 as the Board of Appeal among others:

— overestimated the knowledge and awareness of non profes-

sional consumers of welding gas;

— erroneously assumed that the trade mark ‘INOMAXX’ was

Language in which the application was lodged: English

inherently weak;

Parties

Applicant: Air Products and Chemicals Inc.
(represented by: S. Heurung, lawyer)

(Allentown, USA)

— did not pay sufficient attention to the fact that the goods in
question are partially identical, partially highly similar; and

— failed to consider the overall impression of the marks as a

whole.