Action brought on 14 October 2009 - New Yorker SHK Jeans v OHIM - Vallis K - Vallis A (FISHBONE)

(Case T-415/09)

Language in which the application was lodged: English

Parties

Applicant: New Yorker SHK Jeans GmbH (Braunschweig, Germany) (represented by: A. Gaul, T. Golda, S. Kirschstein-Freund and V. Spitz lawyers)

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

Other party to the proceedings before the Board of Appeal: Vallis K - Vallis A & Co. OE (Athens, Greece)

Form of order sought

Amend the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 30 July 2009 in case R 1051/2008-1 and rule that the appeal is justified and the opposition is rejected for goods in class 25;

Alternatively, annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 30 July 2009 in case R 1051/2008-1 in so far as the appeal is dismissed and the rejection of the application for goods in class 25 is confirmed;

Order the defendant to pay the costs, including those incurred by the applicant before the Board of Appeal.

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: The word mark "FISHBONE" for goods in classes 18 and 25

Proprietor of the mark or sign cited in the opposition proceedings: The other party to the proceedings before the Board of Appeal

Mark or sign cited: Greek trade mark registration of the mark "FISHBONE BEACHWEAR" for goods in class 25; earlier sign "Fishbone" (word and device) used in the course of trade in Greece for "garments in general, footwear, and headgear"

Decision of the Opposition Division: Upheld the opposition

Decision of the Board of Appeal: Allowed the appeal in part and dismissed the appeal for the reminder

Pleas in law: Infringement of Articles 43(2) and 74(2) of Council Regulation No 40/94 (which became Articles 42(2) and 76(2) of Council Regulation No 207/2009), as well as of Rule 22(2) of Commission Regulation No 2868/95¹ as the Board of Appeal wrongly concluded that it was entitled to take into account the catalogues submitted on 15 January 2007; infringement of Article 73 of Council Regulation No 40/94 (which became Article 75 of Council Regulation No 207/2009) as the Board of Appeal did not state the reasons for taking into account the catalogues submitted on 15 January 2007; infringement of Articles 43(2) and (5), as well as 15(1) and (2)(a) of Council Regulation No 40/94 (which became Articles 42(2), (5) and 15(1), first and second subparagraph, point a of Council Regulation No 207/2009) as the Board of Appeal wrongly stated that the genuine use of the opposition mark was shown; infringement of Article 8(1)(b) of Council Regulation No 40/94 (which became Article 8(1)(b) of Council Regulation No 207/2009) as the Board of Appeal wrongly assumed that there was a likelihood of confusion between the trade marks concerned.

____________

¹ - Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).