Action brought on 13 February 2009 - Swarovski v OHIM - Swarovski (Daniel Swarovski Privat)

(Case T-55/09)

Language in which the application was lodged: German

Parties

Applicant: Daniel Swarovski (Volders, Austria) (represented by: R. Küppers, lawyer)

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

Other party to the proceedings before the Board of Appeal of OHIM: Swarovski AG (Triesen, Liechtenstein)

Form of order sought

Annul the decision of the First Board of Appeal of 9 November 2008 in Case R 0348/2008-1;

dismiss the appeal;

order the intervener to pay the costs of the proceedings, including the costs of the appeal proceedings.

Pleas in law and main arguments

Applicant for a Community trade mark: Daniel Swarovski

Community trade mark concerned: Word mark 'Daniel Swarovski Privat' for goods and services in classes 3, 4, 8, 9, 15, 16, 18, 20, 21, 26, 28, 29, 30, 31, 32, 33, 39 and 44 (application No 3 981 099)

Proprietor of the mark or sign cited in the opposition proceedings: Swarovski AG

Mark or sign cited in opposition: Word mark 'DANIEL SWAROVSKI' for goods and services in classes 16, 18, 21, 25 and 41 (Community trade mark No 3 895 133); word mark 'Swarovski' for goods and services in classes 2, 3, 6, 8, 9, 11, 16, 18, 19, 20, 21, 24, 25, 28, 34, 35 and 41 (Community trade mark No 3 895 091); word mark 'Swarovski' for services in class 36 (Austrian word mark No 218 795); word mark 'Swarovski' for goods in classes 11, 16, 21 and 34 (Austrian word mark No 96 389); and word mark 'Swarovski' for goods in classes 8, 9, 11, 14, 18, 21, 25 and 26 (international registration in respect of Italy No 528 189)

Decision of the Opposition Division: Opposition allowed in part

Decision of the Board of Appeal: Appeal dismissed in part

Pleas in law: Infringement of Article 8(1)(b) and (5) of Regulation (EC) No 40/94 ¹ since there is no likelihood of confusion between the marks at issue or the requisite detriment to the earlier marks and, moreover, since the scope of protection of the earlier marks has been determined incorrectly.

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¹ - Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).