Case T-447/08: Action brought on 29 September 2008 — FIFA v OHIM — Ferrero (WORLD CUP GERMANY)
Date: 2008-09-29
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), confectionery product, consumer protection, professional sport, trade-mark law

6.12.2008

EN

Official Journal of the European Union

C 313/51

Pleas in law and main arguments

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

Registered Community trade mark subject of
the application for a
declaration of invalidity: The word mark ‘WM 2006’ for goods
and services in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15,
16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35,
36, 37, 38, 39, 40, 41 and 42 — Community trade mark regis-
tration No 2 155 521

Other party to the proceedings before the Board of Appeal: Ferrero
OHG mbH (Stadtallendorf, Germany)

Proprietor of the Community trade mark: The applicant

Form of order sought

Party requesting the declaration of invalidity of the Community trade
mark: The other party to the proceedings before the Board of
Appeal

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

Decision of the Board of Appeal: Annulment of the decision of the
Cancellation Division

invalidity as a whole,

Pleas in law: (i) Infringement of Article 73 and 74(1) of Council
Regulation No 40/94 in so far as the Board of Appeal has
based, largely, its decision on Article 7(1)(c) of Council Regu-
lation No 40/94, a provision which was neither invoked by the
other party to the proceedings before the Board of Appeal, nor
relied upon by the Cancellation Division;
(ii) Alternatively,
infringement of Article 7(1)(c) of Council Regulation No 40/94
as the Board of Appeal failed to consider the registered Com-
munity trade mark subject of the application for a declaration
the average
of
consumer and to apply the relevant law relating to the assess-
ment of descriptiveness of the goods and/or services applied for;
and (iii) Infringement of Article 7(1)(b) of Council Regulation
No 40/94 as the Board of Appeal erred in its finding that the
registered Community trade mark subject of the application for
a declaration of invalidity was devoid of the necessary distinctive
character; and (iv) Infringement of Articles 7(3) and 51(2) of
Council Regulation No 40/94 as the Board of Appeal erred in
its finding that the registered Community trade mark subject of
the application for a declaration of invalidity had not acquired a
distinctive character for services in class 41.

through the eyes of

Action brought on 29 September 2008 — FIFA v OHIM —
Ferrero (WORLD CUP GERMANY)

(Case T-447/08)

(2008/C 313/91)

Language in which the application was lodged: English

Parties

Applicant: Fédération Internationale de Football Association
(FIFA) (Zurich, Switzerland) (represented by: D. Alexander QC,
A. Barav, Barrister, R. Buchel and C. Rassmann, lawyers)

— Annul, in whole or in part, the decision of the First Board
of Appeal of the Office for Harmonisation in the Internal
Market (Trade Marks and Designs) of 30 June 2008 in case
R 1469/2005-1; and

— Order OHIM to pay the costs.

Pleas in law and main arguments

of

the application for a
Registered Community trade mark subject of
declaration
‘WORLD CUP
invalidity: The word mark
GERMANY’ for goods and services in classes 1, 3, 4, 5, 6, 7, 8,
9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29,
30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42 — Com-
munity trade mark registration No 2 152 635

Proprietor of the Community trade mark: The applicant

Party requesting the declaration of invalidity of the Community trade
mark: The other party to the proceedings before the Board of
Appeal

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

Decision of the Board of Appeal: Annulment of the decision of the
Cancellation Division

Pleas in law: (i) Infringement of Article 73 and 74(1) of Council
Regulation No 40/94 in so far as the Board of Appeal has
based, largely, its decision on Article 7(1)(c) of Council Regu-
lation No 40/94, a provision which was neither invoked by the
other party to the proceedings before the Board of Appeal, nor
relied upon by the Cancellation Division;
(ii) Alternatively,
infringement of Article 7(1)(c) of Council Regulation No 40/94
as the Board of Appeal failed to consider the registered Com-
munity trade mark subject of the application for a declaration
of
the average
consumer and to apply the relevant law relating to the assess-
ment of descriptiveness of the goods and/or services applied for;
and (iii) Infringement of Article 7(1)(b) of Council Regulation
No 40/94 as the Board of Appeal erred in its finding that the
registered Community trade mark subject of the application for
a declaration of invalidity was devoid of the necessary distinctive
character.

invalidity as a whole,

through the eyes of