Action brought on 1 September 2009 - Winzer Pharma v OHIM - Alcon (BAÑOFTAL)

(Case T-346/09)

Language in which the application was lodged: English

Parties

Applicants: Dr. Robert Winzer Pharma GmbH (Berlin, Germany) (represented by: S. Schneller, lawyer)

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

Other party to the proceedings before the Board of Appeal: Alcon, Inc. (Hünenberg, Switzerland)

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 28 May 2009 in case R 795/2008-1;

Order the defendant, in any event the other party to the proceedings before the Board of Appeal, to pay the costs; and

In the auxiliary, defer the matter to OHIM.

Pleas in law and main arguments

Applicant for the Community trade mark: The other party to the proceedings before the Board of Appeal

Community trade mark concerned: The word mark "BAÑOFTAL", for goods in class 5

Proprietor of the mark or sign cited in the opposition proceedings: The applicant

Mark or sign cited: German trade mark registration of the mark "PAN-OPHTAL" registered for goods in class 5; German trade mark registration of the mark "KAN-OPHTAL" registered for goods class 5

Decision of the Opposition Division: Rejected the opposition

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regulation 207/2009 as the Board of Appeal wrongly assessed the visual, phonetic and conceptual similarities between the trade marks concerned, wrongly held that the Community trade mark concerned would not fall under the series of "Ophtal" trade marks of the other party to the proceedings before the Board of Appeal and wrongly denied an enhanced distinctiveness of the trade marks cited in the opposition proceedings based on use, thereby wrongly decided that there was no likelihood of confusion between the trade marks concerned; infringement of Article 8(5) of Council Regulation 207/2009 as the Board of Appeal omitted to make any statements on this ground of opposition; infringement of Articles 75 and 76(1) of Council Regulation 207/2009 as the Board of Appeal wrongly omitted to provide reasons, in any event comprehensive reasons, allowing an understanding of the decision.

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