Case T-318/06: Action brought on 27 November 2006 — Moreira da Fonseca v OHIM — General Óptica (GENERAL OPTICA)
Date: 2006-12-30
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), optical industry, service, trade-mark law

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.