Case T-27/08: Action brought on 21 January 2008 — Wellcome Foundation v OHIM — Serono Genetics Institute (FAMOXIN)
Date: 2008-01-21
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), pharmaceutical product, trade-mark law

C 92/30

EN

Official Journal of the European Union

12.4.2008

Form of order sought

Form of order sought

— Annul the decision of the Second Board of Appeal of OHIM

dated 25 October 2007;

— annul the decision of the Opposition Division of OHIM

dated 11 October 2006; and

— order the intervener to bear the costs of the action.

— Annul the decision of the First Board of Appeal OHIM dated
20 November 2007 (Case R 10/2007-1) and declare the
request
invalidation brought by the appellant well
founded;

for

— annul all cost orders made against the appellant by the
Office for Harmonisation in the Internal Market and order
the latter to bear the costs of the appellant.

Pleas in law and main arguments

Pleas in law and main arguments

Applicant for the Community trade mark: ALK-Abelló A/S

Community trade mark concerned: The Community word mark
‘DIAQUEST’ for goods in classes 1, 5 and 42

Registered Community trade mark subject of
the application for a
declaration of invalidity: The word mark ‘FAMOXIN’ for goods and
services in class 5 — Community trade mark No 2 491 298

Proprietor of the Community trade mark: Serono Genetics Institute
SA

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

Party requesting the declaration of invalidity of the Community trade
mark: The applicant

Mark or sign cited: The Community word marks ‘QUEST DIAG-
NOSTICS’ for goods and services in classes 5, 10, 16, 35, 39
and 42 — application No 2 402 980 and No 1 958 589

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

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Article 8(1)(b) CTRM.

Trade mark right of the party requesting the declaration of invalidity:
The national word mark ‘LANOXIN’ for goods in class 5

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 Articles 8(1)(b), 52 and 56(2) and
(3) of Council Regulation No 40/94, as the Board of Appeal
found the earlier trade mark to be used for ‘pharmaceutical
preparations with digoxin for cardiovascular illnesses’ and not
‘pharmaceutical preparations with digoxin’ and as it assessed the
relevant public, the level of attentiveness of the different parts of
the relevant public and the similarity of the conflicting trade
marks and goods incorrectly.

Action brought on 21 January 2008 — Laboratórios
Wellcome de Portugal v OHIM — Serono Genetics
Institute (FAMOXIN)

(Case T-26/08)

(2008/C 92/62)

Language in which the application was lodged: English

Action brought on 21 January 2008 — Wellcome
Institute
Foundation v OHIM — Serono Genetics

(FAMOXIN)

(Case T-27/08)

(2008/C 92/63)

Language in which the application was lodged: English

Parties

Applicant: Laboratórios Wellcome de Portugal Lda (Algés,
Portugal) (represented by: R. Gilbey, lawyer)

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

Parties

Applicant: The Wellcome Foundation Ltd (Greenford, United
Kingdom) (represented by: R. Gilbey, lawyer)

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

Other party to the proceedings before the Board of Appeal: Serono
Genetics Institute SA (Evry, France)

Other party to the proceedings before the Board of Appeal: Serono
Genetics Institute SA (Evry, France)

12.4.2008

EN

Official Journal of the European Union

C 92/31

Form of order sought

Form of order sought

— Annul the decision of the First Board of Appeal OHIM dated
19 November 2007 (Case R 9/2007-1) and declare the
request
invalidation brought by the appellant well
founded;

for

— annul all cost orders made against the appellant by the
Office for Harmonisation in the Internal Market and order
the latter to bear the costs of the appellant.

— Annul the decision of the Second Board of Appeal of the
(Trade

Office for Harmonisation in the Internal Market
Marks and Designs) of 23 October 2007;

— order that OHIM bears its own and pays the applicant's

costs.

Pleas in law and main arguments

Pleas in law and main arguments

Registered Community trade mark subject of
the application for a
declaration of invalidity: The word mark ‘FAMOXIN’ for goods and
services in class 5 — Community trade mark No 2 491 298

the application for a
Registered Community trade mark subject of
declaration of invalidity: A three-dimensional mark representing a
chocolate bar for goods in classes 5, 29 and 30 — Community
trade mark No 818 864

Proprietor of the Community trade mark: Serono Genetics Institute
SA

Proprietor of the Community trade mark: The applicant

Party requesting the declaration of invalidity of the Community trade
mark: The applicant

Trade mark right of the party requesting the declaration of invalidity:
The national word marks ‘LANOXIN’ for goods in class 5

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 Articles 8(1)(b), 52 and 56(2) and
(3) of Council Regulation No 40/94, as the Board of Appeal
found the earlier trade marks to be used for ‘pharmaceutical
preparations for cardiovascular illnesses’ and not ‘pharmaceutical
preparations’ and as it assessed the relevant market, the relevant
public, the level of attentiveness of the different parts of the
relevant public and the similarity of the conflicting trade marks
and goods incorrectly.

Action brought on 14 January 2008 — Mars v OHIM —
Ludwig Schokolade (three dimensional mark representing a
chocolate bar)

(Case T-28/08)

(2008/C 92/64)

Language in which the application was lodged: English

Party requesting the declaration of invalidity of the Community trade
mark: Ludwig Schokolade GmbH & Co. KG

Decision of the Cancellation Division: Rejection of the request for a
declaration of invalidity

Decision of the Board of Appeal: Annulment of the Cancellation
Division's decision and declaration of invalidity of the Com-
munity trade mark

Pleas in law: Infringement of Articles 7(1)(b) and (3), 51(2), 73
and 74(1) of Council Regulation No 40/94, as:

— the Board of Appeal ought to have concluded that the shape
in issue was a significant departure from the norms and
customs of the relevant sector;

— the Board of Appeal required proof

the mark had
acquired distinctiveness in every relevant Member State on a
country by country basis and not based on whether it had
acquired distinctiveness in a substantial part of the Com-
munity market for chocolate bars;

that

— the Board of Appeal relied, in the contested decision, on a
point which had not previously been raised either by the
Office, or by Ludwig Schokolade.

Action brought on 23 January 2008 — Quantum v OHIM
— Quantum Corporation (Quantum CORPORATION)

(Case T-31/08)

(2008/C 92/65)

Language in which the application was lodged: English

Parties

Applicant: Mars, Inc. (McLean, United States) (represented by: A.
Bryson, Barrister, and G. Mills, Solicitor)

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

Parties

Other party to the proceedings before the Board of Appeal: Ludwig
Schokolade GmbH & Co. KG (Bergisch Gladbach, Germany)

Applicant: Quantum Corp. (San Jose, United States) (represented
by: J. Barry, Sollicitor)