Action brought on 30 November 2011 - Beifa Group v OHIM - Schwan-Stabilo Schwanhäußer (Instruments for writing)

(Case T-608/11)

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.

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