Case T-493/08: Action brought on 14 November 2008 — Sun World International v OHIM — Kölla Hamburg Overseas Import (SUPERIOR SEEDLESS)
Date: 2008-11-14
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), trade-mark law

24.1.2009

EN

Official Journal of the European Union

C 19/33

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 28 August 2008 in case R 403/2006-4; and

— Order the defendant and the other party to the proceedings
before the Board of Appeal to bear their own costs and
those incurred by the applicant.

Action brought on 14 November 2008 — Sun World
International v OHIM — Kölla Hamburg Overseas Import
(SUPERIOR SEEDLESS)

(Case T-493/08)

(2009/C 19/62)

Language in which the application was lodged: English

Pleas in law and main arguments

Parties

Applicant for the Community trade mark: The other party to the
proceedings before the Board of Appeal

Applicant: Sun World International LLC (Bakersfield, United
States) (represented by: M. Holah, Solicitor)

Community
trade mark concerned: The figurative mark ‘GSS
GALILEO SISTEMAS Y SERVICIOS’, for goods and services in
classes 9 and 38.

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

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

Other party to the proceedings before the Board of Appeal: Kölla
Hamburg Overseas
Import GmbH & Co. KG (Hamburg,
Germany)

sign cited: Community

trade mark application
Mark
or
No 170 167 of
for goods and
the word mark ‘GALILEO’
services in classes 9, 39, 41 and 42; Community trade mark
registration No 2 157 501 of the word mark ‘GALILEO’ for
goods and services in classes 9, 16, 35, 38, 39, 41 and 42;
Community trade mark registration No 516 799 of the figura-
tive mark ‘powered by Galileo’
for goods and services in
classes 9, 16, 35, 38, 39, 41 and 42; Community trade mark
the figurative mark ‘GALILEO
registration No 330 084 of
INTERNATIONAL’ for goods and services in classes 9, 39, 41
and 42; Community trade mark registration No 2 159 069 of
the figurative mark ‘GALILEO INTERNATIONAL’ for goods and
services in classes 9, 16, 35, 38, 39, 41 and 42; Earlier signs
protected in various Member States namely, a non-registered
trade mark, a trade name, and a sign, all used in the course of
trade for the specified goods and services.

Form of order sought

— Annul the decision of the First Board of Appeal of the
Office for Harmonisation in the Internal Market (Trade Marks
and Designs) of 3 September 2008 in case R 1378/2007-1;
and

— Order OHIM to pay the costs.

Pleas in law and main arguments

the application for a
Registered Community trade mark subject of
declaration of invalidity: The word mark ‘SUPERIOR SEEDLESS’
for goods in class 31 — Community trade mark registration
No 610 980

Decision of the Opposition Division: Upheld the opposition against
the contested goods and services

Proprietor of the Community trade mark: The applicant

Decision of the Board of Appeal: Annulled the decision of the
Opposition Division

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

Pleas in law: Infringement of Article 8(1)(b) of Council Regu-
lation 40/94 as: (i) the Board of Appeal failed to carry out a
global assessment of the Community trade mark concerned in
relation to the word only trade marks for ‘GALILEO’; (ii) the
Board of Appeal erred in its assessment of the Community trade
mark concerned in relation to the earlier composite trade marks
containing the word ‘GALILEO’; and (iii) the Board of Appeal
erred in its assessment of the similarity of the goods; Infringe-
ment of Article 63(2) of Council Regulation 40/94 as the Board
of Appeal failed to remit the case back to the Opposition Divi-
sion for a finding under Articles 8(4) and 8(5) of Council Regu-
lation 40/94.

Decision of the Cancellation Division: Partial invalidity of the Com-
munity trade mark concerned

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: Infringement of Articles 7(3) and 51(2) of Council
Regulation No 40/94 as the Board of Appeal: (i) wrongly identi-
fied the relevant public; (ii) wrongly refused to allow a with-
drawal of the Community trade mark registration in respect of
some of the goods in the specification; (iii) made an unlawful
assumption based on the lack of a United Kingdom or Irish
registration; and (iv) incorrectly assessed the evidence filed.