Case T-36/09: Action brought on 23 January 2009 — dm-drogerie markt v OHIM — Distribuciones Mylar (dm)
Date: 2009-01-23
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), domestic market, trade-mark law

C 82/30

EN

Official Journal of the European Union

4.4.2009

Pleas in law: Infringement of Article 8(1)(b) of Regulation (EC)
No 40/94 (1) as there is no likelihood of confusion between the
opposing trade marks, and infringement of Rule 22 of Regu-
lation (EC) No 2868/95 (2) inasmuch as use preserving the right
to use the trade mark cited in opposition has not been suffi-
ciently proven.

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

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

(2) Commission Regulation (EC) No 2868/95 of 13 December 1995
implementing Council Regulation (EC) No 40/94 on the Community
trade mark (OJ 1995 L 303, p. 1).

Action brought on 26 January 2009 — Portuguese
Republic v Commission of the European Communities

(Case T-33/09)

(2009/C 82/53)

Language of the case: Portuguese

Parties

Applicant:
Fernandes and J. A. de Oliveira, Agents)

Portuguese Republic

(represented by:

L.

Inez

Defendant: Commission of the European Communities

Forms of order sought

— as

the main plea, annul Decision C(2008) 7419 of
25 November 2008, by which the Commission required the
Portuguese Republic to make the penalty payment imposed
on it by the judgment of
Justice in Case
the Court of
C-70/06 with effect from 10 January 2008;

— in the alternative, annul the decision referred to in so far as

its effects extend beyond 29 January 2008;

— order the Commission of the European Communities to pay
all the costs or, if the amount of the penalty payment is
merely reduced by the Court of Justice, order each party to
bear its own costs.

Pleas in law and main arguments

The applicant seeks annulment of the decision at issue, pursuant
to Article 230 EC, on the ground that the Commission has
infringed the EC Treaty or the legal rules relating to its applica-
tion.

The Commission infringed the EC Treaty or the legal rules
relating to its application by requiring the applicant to make the
daily penalty payment imposed on it by the Court of Justice in
Case C-70/06 in respect of the period between 10 January and
17 July 2008, when the applicant had already fully complied
with its obligation to transpose Directive 89/665/EEC (1).

Justice delivered its judgment

When the Court of
in Case
C-70/06 on 10 January 2008, ordering the applicant to make a
penalty payment for every day of delay in implementing the
in Case
measures necessary to comply with its judgment
C-275/03 Commission v Portugal
[2004] ECR I-0000 —
requiring the repeal of Decree-Law No 48051 of 21 November
1967 which makes the award of damages to persons injured by
a breach of Community law relating to public contracts, or the
national laws implementing it, conditional on proof of fault or
fraud — the Portuguese Republic had already approved Law
No 67/2007. That law repeals the decree-law referred to and
approves the new system for the non-contractual liability of the
State and other public bodies, and had been published by the
Portuguese Republic on 31 December 2007 in the Diário da
República (The Portuguese Official Journal), First Series, No 251.
That law entered into force 30 days after its publication, that is
to say on 30 January 2008.

On 4 January 2008, the applicant notified that fact to the Court
of Justice and requested that a copy of Law No 67/2007 be
added to the file in Case C-70/06. However, due to the advanced
stage of the proceedings, the Court of Justice could no longer
take the fact in question into account, and delivered its judg-
ment on 10 January 2008.

Accordingly, the applicant submits that the penalty payment
claimed may only relate to the period until 9 January 2008 or,
in the worst case until 29 January 2008, as the date on which
Law No 67/2007 entered into force does not coincide with the
date of
its publication. The Commission's claim is therefore
completely unfounded in so far as it relates to subsequent
periods.

(1) Council Directive 89/665/EEC of 21 December 1989 on the coordi-
nation of the laws, regulations and administrative provisions relating
to the application of review procedures to the award of public
supply and public works contracts (OJ 1989 L 395, p. 33).

Action brought on 23 January 2009 — dm-drogerie markt
v OHIM — Distribuciones Mylar (dm)

(Case T-36/09)

(2009/C 82/54)

Language in which the application was lodged: English

Parties

Applicant: dm-drogerie markt GmbH + Co. KG (Karlsruhe,
(represented by: O. Bludovsky and C. Mellein,
Germany)
lawyers)

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

Other party
to the proceedings before
Distribuciones Mylar, SA (Gelves, Spain)

the Board of Appeal:

4.4.2009

EN

Official Journal of the European Union

C 82/31

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 30 October 2008 in case R 228/2008-1
and, by way of correction, reject the opposition entirely;

— Alternatively, annul the decision of the First Board of Appeal
of
the Office for Harmonisation in the Internal Market
(Trade Marks and Designs) of 30 October 2008 in case
R 228/2008-1 and remit the case to OHIM;

— Alternatively, annul the decision of the First Board of Appeal
of
the Office for Harmonisation in the Internal Market
(Trade Marks and Designs) of 30 October 2008 in case
R 228/2008-1; and

Action brought on 26 January 2009 — Advance Magazine
Publishers v OHIM — Selecciones Americanas (VOGUE
CAFÉ)

(Case T-40/09)

(2009/C 82/55)

Language in which the application was lodged: English

Parties

Applicant: Advance Magazine Publishers, Inc. (New York, United
States) (represented by: T. Alkin, Barrister)

— Order the other party to the proceedings before the Board

of Appeal to pay the costs.

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

Pleas in law and main arguments

to the proceedings before
Other party
Selecciones Americanas, SA (Sitges (Barcelona), Spain)

the Board of Appeal:

Applicant for the Community trade mark: The applicant

Form of order sought

Community trade mark concerned: The word mark ‘dm’, for goods
in classes 1, 3-6, 8-11, 14, 16, 18, 20-22, 24-32, 34 and for
services in class 40

Proprietor of the mark or sign cited in the opposition proceedings: The
other party to the proceedings before the Board of Appeal

Mark or sign cited: Spanish trade mark registration No 2 561 742
of the figurative mark ‘DM’ for goods and services in classes 9
and 39

Decision of the Opposition Division: Partially allowed the opposi-
tion

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law:
Infringement of Articles 57 and 59 of Council
Regulation 40/94 as the Board of Appeal erred in its finding
that the letter of the defendant of 8 June 2007 did not suspend
the appeal period; Infringement of Article 8(1)(b) of Council
Regulation 40/94 as the Board of Appeal wrongly assessed that
there was a likelihood of confusion between the trade marks
concerned due to the similarity of the goods covered; Infringe-
ment of Rules 17(2) and (4) of Commission Regulation
No 2868/95 (1), as the Board of Appeal failed to find that the
other party to the proceedings before the Board of Appeal failed
to state the essential details of the opposition.

(1) Commission Regulation (EC) No 2868/95 of 13 December 1995
implementing Council Regulation (EC) No 40/94 on the Community
trade mark (OJ 1995 L 303, p. 1).

— Annul the decision of the Fourth Board of Appeal of the
Office for Harmonisation in the Internal Market (Trade Marks
and Designs) of 19 November 2008 in case R 280/2008-4
insofar as it relates to the opposition based on Spanish trade
marks registration No 255 186 and 2 529 728;

— Alter the decision of the Fourth Board of Appeal of the
Office for Harmonisation in the Internal Market
(Trade
Marks and Designs) of 19 November 2008 in case
R 280/2008-4 such that consideration of the opposition is
suspended pending the outcome of the opposition for Com-
munity trade mark application No 3 064 219; and

— Order the other party to the proceedings before the Board

of Appeal to pay the costs.

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: The word mark ‘VOGUE CAFÉ’,
for goods and services in classes 21, 25 and 43

Proprietor of the mark or sign cited in the opposition proceedings: The
other party to the proceedings before the Board of Appeal

Mark or sign cited: Spanish trade mark registration No 255 186
of the figurative mark ‘Vogue Juan Fort, S.A. — Badalona’ for
goods in class 25; Spanish trade mark registration No 2 529 728
of the figurative mark ‘VOGUE studio’ for goods in class 25;
Community trade mark application No 3 064 219 of the figura-
tive mark ‘VOGUE’ for goods and services in classes 25, 35
and 39.

Decision of the Opposition Division: Allowed the opposition for
the goods applied for in class 25

Decision of the Board of Appeal: Dismissed the appeal