Judgments nº T-472/07 of The General Court, February 03, 2010

• Resolution Date: February 03, 2010
• Issuing Organization: The General Court
• Decision Number: T-472/07

In Case T‑472/07,

Enercon GmbH, established in Aurich (Germany), represented by R. Böhm and V. Henke, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), intervener before the Court, being

Hasbro, Inc., established in Pawtucket, Rhode Island (United States), represented by M. Edenborough, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 25 October 2007 (Case R 959/2006‑4), relating to opposition proceedings between Hasbro, Inc. and Enercon GmbH,

THE GENERAL COURT (Sixth Chamber),

composed of A.W.H. Meij (Rapporteur) President, V. Vadapalas and L. Truchot, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court on 21 December 2007,

having regard to the response of OHIM for Harmonisation in the Internal Market (Trade Marks and Designs) lodged at the Registry of the Court on 6 June 2008,

having regard to the response of the intervener lodged at the Registry of the Court on 6 June 2008,

further to the hearing on 14 October 2009,

gives the following

Judgment

Background to the dispute

1 On 25 August 2003, the applicant, Enercon GmbH, submitted an application for a Community trade mark to OHIM for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The trade mark for which registration is sought is the word sign ENERCON.

3 The goods for which registration is sought are in, inter alia, Classes 16, 18, 24, 25, 28 and 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and are described as follows:

– Class 16: ‘Paper, cardboard and goods made from these materials (included in Class 16); printed matter, in particular brochures, catalogues, prospectuses; office requisites, stickers, labels; stationery, in particular pencil lead holders, pencils; packaging material and packing films, included in Class 16’;

– Class 18: ‘Umbrellas, travelling bags and travelling sets; bags, in particular rucksacks, pouches, shoulder bags’;

– Class 24: ‘Textile goods, in particular bath linen, bed blankets, bed linen, household linen, covers for cushions, coverlets; furniture coverings and fabrics; banners and flags’;

– Class 25: ‘Clothing, in particular scarves, ties, cuffs, shirts, jackets, headbands, sweatshirts, T-shirts; headgear, in particular baseball caps and hats’;

– Class 28: ‘Games and playthings, in particular puzzles, board games, cups for dice, card games, electronic games, dolls, teddy bears, toy balls ; sporting articles, in particular golf accessories’;

– Class 32: ‘Beers, mineral and table waters; fruit juices and drinks; vegetable juices; non-alcoholic drinks’.

4 The application was published in Community Trade Marks Bulletin No 35/2004 of 30 August 2004.

5 On 30 November 2004 the intervener, Hasbro, Inc., filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the trade mark applied for.

6 The opposition was based on the following earlier trade marks:

– Community word mark TRANSFORMERS ENERGON, registered under number 3 152 121 for goods in Classes 16, 18, 24, 25, 28, 30 and 32;

– unregistered trade marks TRANSFORMERS ENERGON and ENERGON, used in the United Kingdom for toys and games.

7 The opposition covered all the goods for which the earlier marks had been registered and used, and was directed against all the goods set out in the application for registration.

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and 8(4) and (5) of Regulation No 40/94 (now Article 8(1)(b) and 8(4) and (5) of Regulation No 207/2009).

9 By decision of 26 May 2006, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94. Consequently, it did not examine the opposition in so far as it was based on Article 8(4) and (5) of...