Judgments nº T-63/07 of The General Court, March 17, 2010

• Resolution Date: March 17, 2010
• Issuing Organization: The General Court
• Decision Number: T-63/07

In Case T‑63/07,

Mäurer + Wirtz GmbH & Co. KG, established in Stolberg (Germany), represented by D. Eickemeier, lawyer,

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 the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) being

Exportaciones Aceiteras Fedeoliva, AIE, established in Jaén (Spain),

ACTION brought against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 18 December 2006 (Case R 761/2006-2), concerning opposition proceedings between Mülhens GmbH & Co. KG and Exportaciones Aceiteras Fedeoliva, AIE,

THE GENERAL COURT (Sixth Chamber, Extended Composition),

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

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court on 1 March 2007,

having regard to the response lodged at the Court Registry on 20 June 2007,

having regard to the order of 30 March 2009 authorising the replacement of Mülhens GmbH & Co. KG by Mäurer + Wirtz GmbH & Co. KG,

having regard to the designation of I. Labucka as judge to complete the Chamber as Judge T. Tchipev was prevented from attending,

further to the hearing on 11 June 2009,

gives the following

Judgment

Background to the dispute

1 On 29 October 2003, Exportaciones Aceiteras Fedeoliva, AIE submitted an application for a Community trade mark to the Office 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 application was for registration of the following figurative mark:

3 The goods and services for which registration was sought are in Classes 16, 29, 35 and 39 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 correspond, for each of those classes, to the following description:

– Class 16: ‘Paper, cardboard and goods made from these materials, not in other classes; printing materials; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ material; paint brushes; typewriters and office requisites (except furniture); instruction and teaching material (except apparatus); plastic materials for packing (not included in other classes); printing types; printing blocks’;

– Class 29: ‘Edible oils, in particular olive oil’;

– Class 35: ‘Advertising, business management, business administration, import and export, business management assistance in relation to franchising; retailing and retailing via global computer networks, promotion and representation services for goods’;

– Class 39: ‘Transportation; packaging and storage of goods; arranging travel’.

4 The application for the trade mark was published in Community Trade Marks Bulletin No 41/2004 of 11 October 2004.

5 On 7 January 2005, Mülhens GmbH & Co. KG filed a notice of opposition to the registration of that trade mark, on the basis of Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).

6 In support of its opposition, Mülhens referred to the registration of the following earlier trade marks:

– Community word mark No 90 852 TOSCA, registered on 16 February 2001, for ‘perfumeries, essential oils, cosmetics, dentifrices, toilet soaps’;

– German word mark No 102 194 TOSCA, registered on 26 October 1907, for ‘household and toilette soaps in solid and powder form, perfumeries, eau de cologne, lanolin, cosmetic pomades, make-up products, powders, hair oils, hair lotions, scalp lotions, utensils for the care of teeth and mouth, for the care of skin and beard, hair colouring preparations, perfumed sachets, brushes for teeth and finger nails, bath salts’;

– German word mark No 258 495 TOSCA, registered on 10 January 1921, for ‘cosmetic preparations, especially scented preparations’;

– German word mark No 301 590 TOSCA, registered on 7 May 1923, for ‘household and toilette soaps in solid and powder form, perfumeries, eau de cologne, lanolin, cosmetic pomades, make-up products, powders, hair oils, hair lotions, scalp lotions, utensils for the care of teeth and mouth, for the care of skin and beard, hair colouring preparations, perfumed sachets, brushes for teeth and finger nails, bath salts’;

– German word mark No 1 048 297 TOSCA, registered on 13 May 1983, for ‘perfumery, essential oils, non-medicated toilet preparations and cosmetics, soaps, dentifrices, hair lotions, chemical preparations for health care, disinfectants’;

– the well-known trade mark TOSCA, used in Germany for ‘perfume, eau de toilette, eau de cologne, body lotion, toilette soaps, shower gel, deodorants, talcum powder’.

7 The opposition was based in particular on ‘perfume, eau de toilette, eau de cologne, body lotion, toilette soaps, shower gel, deodorants and talcum powder’, goods in respect of which, according to Mülhens, the earlier trade marks...