CELEX: 62011TN0608
Language: en
Date: 2011-11-30 00:00:00
Title: Case T-608/11: Action brought on 30 November 2011 — Beifa Group v OHIM — Schwan-Stabilo Schwanhäußer (Instruments for writing)

4.2.2012   
            
            
               EN
            
            
               Official Journal of the European Union
            
            
               C 32/32
            
         Action brought on 30 November 2011 — Beifa Group v OHIM — Schwan-Stabilo Schwanhäußer (Instruments for writing)
   (Case T-608/11)
   2012/C 32/67
   Language in which the application was lodged: English
   
      Parties
   
   
      Applicant: Beifa Group Co. Ltd (formerly Ningbo Beifa Group Co. Ltd) (Zhejiang, China) (represented by: R. Davis, Barrister, and N. Cordell, Solicitor)
   
      Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)
   
      Other party to the proceedings before the Board of Appeal: Schwan-Stabilo Schwanhäußer GmbH & Co. KG (Heroldsberg, Germany)
   
      Form of order sought
   
   
               —
            
            
               Annul the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 9 August 2011 in case R 1838/2010-3; and
            
         
               —
            
            
               Order the defendant to pay its own costs and pay those of the applicant.
            
         
      Pleas in law and main arguments
   
   
      Registered Community design subject of the application for a declaration of invalidity: A design for the product ‘instruments for writing’ — registered Community design No 352315-0007
   
      Proprietor of the Community design: The applicant
   
      Applicant for the declaration of invalidity of the Community design: The other party to the proceedings before the Board of Appeal
   
      Grounds for the application for a declaration of invalidity: German trade mark registration No 30045470.8 of a figurative mark representing an instrument for writing, for goods in class 16; German trade mark registration No 936051 of a figurative mark representing an instrument for writing, for goods in class 16; German trade mark registration No 2911311 of a three-dimensional mark representing an instrument for writing, for goods in class 16; International trade mark registration No 936051 of a figurative mark representing an instrument for writing, for goods in class 16; International trade mark registration No 418036 of a figurative mark representing an instrument for writing, for goods in class 16
   
      Decision of the Invalidity Division: Declared the contested registered Community design invalid
   
      Decision of the Board of Appeal: Dismissed the appeal
   
      Pleas in law: Infringement of Article 61(6) of Council Regulation No 6/2002, as the Board of Appeal proceeded to an impermissible re-examination. Infringement of Article 62 of Council Regulation No 6/2002, as the Board of Appeal; (i) violated the fundamental principles of this Article by the manner it applied the measures necessary to comply with the decision of the General Court; and (ii) erroneously applied the test for both Articles 25(1)(b) and 25(1)(e) CDR. Infringement of Article 25(1)(e) of Council Regulation No 6/2002, as the Board of Appeal; (i) applied the wrong test to determine whether there was the requisite ‘use’ of the mark in the registered Community design; (ii) failed to consider whether the marks had been used both as an ingredient of Article 25(1)(e) CDR and as an ingredient of the German national law; and (iii) proceeded to an incorrect application of the test for right to prevent use. Infringement of Article 25(1)(b) of Council Regulation No 6/2002, as the Board of Appeal wrongly assessed the characteristics of the informed user and both the manner and the method by which the assessment of overall impression should be made.