Case T-40/09: Action brought on 26 January 2009 — Advance Magazine Publishers v OHIM — Selecciones Americanas (VOGUE CAFÉ)
Date: 2009-01-26
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), trade-mark law

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

C 82/32

EN

Official Journal of the European Union

4.4.2009

Pleas in law: Infringement of Article 43(2) of Council Regulation
40/94 and/or of Rule 22(3) of Commission Regulation
No 2868/95 (1) as the Board of Appeal erred in its finding the
evidence submitted by the other party to the proceedings before
the Board of Appeal was capable of proving use of Spanish
trade mark registration No 255 186;
Infringement of
Article 8(1)(b) of Council Regulation 40/94 as the Board of
Appeal wrongly assessed that there was a likelihood of confu-
sion between the Community trade mark concerned and
Spanish trade mark registration No 2 529 728; Infringement of
Rules 20(7) of Commission Regulation No 2868/95 as the
Board of Appeal stated inapplicable grounds for refusing to
grant a suspension of proceedings pending determination of the
opposition to Community trade mark application No 3 064 219.

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: The word mark ‘Bebio’,
goods in classes 5, 29, 30 and 32

for

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

or

sign cited:

International

Mark
trade mark registration
No 187 436 of the word mark ‘BEBA’ for goods in classes 5, 29
and 30; Community trade mark registration No 3 043 387 of
the word mark ‘BEBA’ for goods in classes 5, 29 and 30

(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).

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

Action brought on 27 January 2009 — Hipp & Co v OHIM
— Nestlé (Bebio)

(Case T-41/09)

(2009/C 82/56)

Language in which the application was lodged: English

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regu-
lation 40/94 as the Board of Appeal wrongly assessed that there
was a likelihood of confusion between the trade marks
concerned

Action brought on 9 February 2009 — Commission v
Antiche Terre

(Case T-51/09)

(2009/C 82/57)

Language of the case: Italian

Parties

Applicant: Hipp & Co (Sachseln, Switzerland) (represented by: A.
Bognár and M. Kinkeldey, lawyers)

Parties

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

Other party to the proceedings before the Board of Appeal: Sociéte
des Produits Nestlé, S.A. (Vevey, Switzerland)

Applicant: Commission of the European Communities (repre-
sented by: A. Dal Ferro, lawyer, V. Joris, Agent)

Defendant: Antiche Terre scarl Società Agricola Cooperativa
(Arezzo, Italy)

Forms of order sought

Form of order sought

— Annul the decision of the Second Board of Appeal of the
Office for Harmonisation in the Internal Market (Trade Marks
case
of
and Designs)
R 1790/2007-2; and

25 November

2008

in

— Order OHIM to pay the costs.

— Order

the defendant

to repay the principal

(from 4 December 1997 for

sum of
EUR 479 332,40, together with the interest accrued at the
rate set out in Article 5.4.3 of the general conditions of the
Contract (ECB rate + 2 %) from the date of receipt of the
sums
sum of
EUR 461 979,00, and from 18 December 1997 for the sum
of EUR 17 353,40) until 1 April 2003, in addition to the
interest accrued at the same rate from 4 January 2004 until
the date of final settlement, less the sum of EUR 461 979
called on and paid on 25 January 2005;

the