Case T-9/08: Action brought on 7 January 2008 — Volkswagen v OHIM (CAR SILHOUETTE III)
Date: 2008-01-07
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, Germany, action for annulment (EU), motor vehicle industry, trade-mark law

8.3.2008

EN

Official Journal of the European Union

C 64/57

Pleas in law: Violation of Article 8(1)(b) and 8(5) of Council
Regulation No 40/94, as the conflicting trade marks have a
high degree of visual similarity because of an identical arrange-
ment of nine elements present in both the trade mark applied
for and in most of
the earlier marks, which are inherently
distinctive.

Pleas in law: Infringement of Articles 4 and 7(1)(e) of Regulation
(EC) No 40/94 on the Community trade mark, as well as
misconstruction of a number of provisions of Directive
the Member States
89/104/EEC to approximate the laws of
relating to trade marks. It is asserted, in that regard, that both
Article 2 of Directive 89/104/EEC and Article 4 of Regulation
(EC) No 40/94 acknowledge, expressly and unambiguously, the
intrinsic distinctiveness, not only of the packaging of goods, but
also of the very shape of those goods.

Action brought on 2 January 2008 — Piccoli v OHIM
(Representation of a shell)

(Case T-8/08)

(2008/C 64/91)

Language of the case: Italian

Action brought on 7 January 2008 — Volkswagen v OHIM
(CAR SILHOUETTE III)

(Case T-9/08)

(2008/C 64/92)

Language in which the application was lodged: German

Parties

Applicant: G.M. Piccoli Srl (Alzano Lombardo, Italy) (represented
by S. Giudici, lawyer)

Parties

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

Form of order sought

The applicant claims that the Court should:

— Annul or vary the decision of the First Board of Appeal of
28 September 2007, notified on 23 October 2007, to allow
the registration of Community three-dimensional trade mark
No 4522892 consisting in the stylised shape of a (scallop)
shell, also to distinguish ‘brioches, brioches filled with
creams or custards, jams, chocolate or honey’;

— Order the defendant to pay the costs.

Pleas in law and main arguments

Community trade mark concerned: Three-dimensional mark repre-
senting a shell
from four different perspectives (Registration
Application No 4.522.892 for goods in Class 30).

Decision of the Examiner: Rejection of the application for registra-
tion in respect of
‘preparations made from cereals, pastry,
confectionery and ices’.

Applicant: Volkswagen AG (Wolfsburg, Germany)
by H.-P. Schrammek, C. Drzymalla, S. Risthaus, R.
lawyers)

(represented
Jepsen,

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

Form of order sought

— Annul the decision of the Fourth Board of Appeal of the
Office for Harmonisation in the Internal Market
(Trade
Marks and Designs) of 6 November 2007, notified on
9 November 2007, in appeal case R 1306/2007-4;

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

Pleas in law and main arguments

figurative
Community trade mark concerned: The international
mark ‘CAR SILHOUETTE III’ for goods in Class 12 (international
registration,
European Community, No
W 878 349).

designating

the

Decision of the Examiner: Refusal of protection.

Decision of the Board of Appeal: Appeal dismissed.

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

C 64/58

EN

Official Journal of the European Union

8.3.2008

Pleas in law:

— Infringement

of Article

(EC)
No 40/94 (1) due to an incorrect examination of the facts by
the Office of its own motion;

of Regulation

74(1)

combustion engine’ — Community Design No 000 163 290 —
0001

Proprietor of the Community design: The applicant

— Infringement of Article 73 of Regulation No 40/94, namely

the right to a fair hearing;

Party requesting the declaration of invalidity of the Community design:
Honda Giken Kogyo Kabushiki Kaisha Co. Ltd

— Infringement of Article 7(1)(b) of Regulation No 40/94 in
finding the mark to be devoid of any distinctive character.

Design of the party requesting the declaration of invalidity: Registered
US design in respect for an ‘internal-combustion engine’ —
Patent No D 367 070

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

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

Decision of
invalidity in its entirety

the Invalidity Division: Rejected the application for

Decision of the Board of Appeal: Annulled the decision of the
Invalidity Division and declared the design invalid

Pleas in law: Infringement of Articles 4 and 6 of Council Regu-
lation (EC) No 6/2002 on Community Designs.

Action brought on 7 January 2008 — Kwang Yang Motor
v OHIM — Honda Giken Kogyo (Representation of an
internal-combustion engine)

(Case T-10/08)

(2008/C 64/93)

Language in which the application was lodged: English

Action brought on 7 January 2008 — Kwang Yang Motor
v OHIM — Honda Giken Kogyo (Representation of an
internal-combustion engine)

Parties

(Case T-11/08)

(2008/C 64/94)

Applicant: Kwang Yang Motor Co. Ltd (Kaohsiung City, Taiwan)
(represented by: P. Rath and W. Festl-Wietek, lawyers)

Language in which the application was lodged: English

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

Parties

Other party to the proceedings before the Board of Appeal: Honda
Giken Kogyo Kabushiki Kaisha Co. Ltd (Tokyo, Japan)

Applicant: Kwang Yang Motor Co. Ltd (Kaohsiung City, Taiwan)
(represented by: P. Rath and W. Festl-Wietek, lawyers)

Form of order sought

— Annulment of the decision of the Third Board of Appeal of
the OHIM of 8 October 2007 served to the representatives
of
in Case R
1337/2006-3;

applicant on 30 October 2007,

the

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

Other party to the proceedings before the Board of Appeal: Honda
Giken Kogyo Kabushiki Kaisha Co. Ltd (Tokyo, Japan)

— order the OHIM to pay the costs of the proceedings before

the Court and Board of Appeal.

Form of order sought

Pleas in law and main arguments

— Annulment of the decision of the Third Board of Appeal of
the OHIM of 8 October 2007 served to the representatives
of
in Case
applicant on 30 October 2007,
R 1380/2006-3;

the

Registered Community design subject of the application for a declara-
tion of invalidity: Registered Community design for an ‘Internal-

— order the OHIM to pay the costs of the proceedings before

the Court and Board of Appeal.