Case T-80/07: Action brought on 15 March 2007 — JanSport Apparel v OHIM (BUILT TO RESIST)
Date: 2007-04-28
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), clothing industry, leather, pulp and paper industry, trade-mark law

28.4.2007

EN

Official Journal of the European Union

C 95/55

Pleas in law and main arguments

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Applicant for the Community trade mark: Polaris Software Lab Ltd

Community trade mark concerned: The word mark ‘IXI’ for goods
in class 9 — application No 723 140

Proprietor of the mark or sign cited in the opposition proceedings:
Jochen und Eckhard Klein GbR

Mark or sign cited: The Community word mark ‘ixi’ for goods in
class 9

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

Decision of the Board of Appeal: Appeal dismissed

Pleas in law: The opponent did not adduce evidence of similarity
between the respective goods; the Board of Appeal took an
unduly broad view of the scope of protection of the earlier
mark and failed to properly analyse the relevant
factors
governing the assessment of similarity of the respective goods.
Furthermore, the Board of Appeal took the reasons for the
applicant to select its mark into consideration, which the appli-
cant submits is an irrelevant consideration.

Community trade mark concerned: The figurative mark ‘POLARIS’
for goods and services in classes 9 and 42 — application
No 3 267 713

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

Mark or sign cited: The Community word mark ‘POLAR’ for
goods and services in classes 9, 38 and 42

Decision of the Opposition Division: Opposition upheld for all the
contested goods in class 9

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

Pleas in law: Violation of Article 8(1)(b) of Council Regulation
No 40/94 as i) the earlier trade mark can be applied to software
destined to a non-specialist consumer, which could give rise to a
confusion, ii) the small visual and phonetic differences between
the two conflicting trade marks do not suffice to avoid a likeli-
hood of confusion and iii) both marks are connected to the
same meaning.

Action brought on 9 March 2007 — SHS Polar Sistemas
Informáticos v OHIM — Polaris Software Lab (POLARIS)

(Case T-79/07)

(2007/C 95/110)

Language in which the application was lodged: English

Action brought on 15 March 2007 — JanSport
Apparel v OHIM (BUILT TO RESIST)

(Case T-80/07)

(2007/C 95/111)

Language of the case: English

Parties

Applicant: SHS Polar Sistemas Informáticos, SL (Madrid, Spain)
(represented by: C. Hernández Hernández, lawyer)

Parties

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

Other party to the proceedings before the Board of Appeal: Polaris
Software Lab Ltd (Chennai, India)

JanSport Apparel Corp.

(repre-
Applicant:
sented by: C. Bercial Arias, C. Casalonga, K. Dimidjian-
Lecompte, lawyers)

(Wilmington, USA)

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

Form of order sought

— That the decision of the Second Board of Appeal of the
Office for Harmonisation in the Internal Market dated
8 January 2007 in Case R 658/2006-2 be annulled;

— that OHIM bears its own cost and pays those incurred by

the applicant.

Form of order sought

— Annul the contested decision R 1090/2006-2 of the Second
Board of Appeal, dated 12 January 2007, partially refusing
the registration of CTM Application No 2937522 BUILT TO
RESIST for the following goods:

C 95/56

EN

Official Journal of the European Union

28.4.2007

(patterns),

engravings,

cardboard and goods made from these materials, not
paper,
included in other classes; printed matter; bookbinding material;
advertisement boards of paper or cardboard, albums, announcement
cards, bags of paper or plastic,
for packaging, bags of conical
paper, bibs of paper, books, calendars, cardboard labels, catalogues,
envelopes,
embroidery designs
charts,
folders,
forms, greeting cards, books, magazines, newspapers,
pamphlets, newsletters and other printed publications, photo-
graphs, pictures, portraits, postcards, stationery, address plates,
address
stationery or household
purposes, announcement cards book markers, writing pads, plastic
film for wrapping, paper, cardboard and goods made from these
materials; adhesives for stationery or household purposes; artists'
materials; paint brushes; typewriters and office requisites (except
furniture); instructional and teaching material (except apparatus);
plastic materials for packaging (not included in other classes); prin-
ters' type; printing blocks pencil cases, pens, writing paper, envel-
opes, posters, paper banners, personal organizers, notebooks and
paper binders; mouse pads in class 16;

stamps, adhesive

tapes

for

luggage cases, backpacks, day packs,

leather and imitations of leather, and goods made of these mate-
rials and not included in other classes; animal skins, hides; trunks
and travelling bags; all purpose bags and sporting bags, softlug-
gage,
frame
packs, knapsacks, ski packs, book bags, tote bags, duffle bags,
bicycle bags, handbags, garment bags, clothing bags, suitcases,
pullman cases, briefcases, wallets, umbrellas and parasols, business
card cases and holders, billfolds and money clips, straps, pads and
belts and all related goods to the before mentioned as far as
included in class 18; and

fanny packs,

clothing, headgear and footwear in class 25; and

— order that the Office pay the applicant's costs.

Pleas in law and main arguments

Community trade mark concerned: The national word mark 'BUILT
TO RESIST' for goods and services in classes 16, 18 and 25 —
application No 293 7522

Decision of the examiner: Refusal of the application

Decision of the Board of Appeal: Dismissal of the appeal

in law:

Pleas
Council Regulation 40/94.

Infringement of Article 7(1)(b) and 7(1)(c) of

the word mark
First, with regards to the descriptiveness of
claimed, the applicant submits that the latter enables the rele-
vant public to discern immediately and without further reflec-
tion any of the characteristics of the goods offered. The simple
fact that the word mark at stake is evocative of the goods
to be
claimed is not sufficient, according to the applicant,
refused registration and thus, the afforded protection on the
basis of Article 7(1)(c). Moreover, the applicant contends that
pursuant to established case-law, even if a slogan may also serve
marketing or advertising purposes, in addition to its principal
function as a trade mark, it should not be refused registration.
Furthermore, the applicant submits that the fact that the word
mark was registered at a national level, in the United States, for
the same products, proves that it is capable of being perceived
by the public and in fact for English speaking consumers, as an
indication of commercial origin.

Second, with regards to its inherent distinctiveness, the applicant
claims that the word mark provides at least a minimum degree
of distinctiveness which should allow the registration to
proceed.

Order of the Court of First Instance (Fifth Chamber) of
26 February 2007 — Rathscheck Schiefer und Dach-
Systeme and Others v Commission

(Case T-198/06) (1)

(2007/C 95/112)

Language of the case: German

The President of the Court of First Instance (Fifth Chamber) has
ordered that the case be removed from the register.

(1) OJ C 237, 30.9.2006.