Action brought on 10 July 2009 - Kavaklidere-Europe v OHIM - Yakult Honsha (Yakut)

(Case T-276/09)

Language in which the application was lodged: English

Parties

Applicants: Kavaklidere-Europe N.V. (Antwerp, Belgium) (represented by: I.D. Tygat and J.A. Vercraeye, lawyers)

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

Other party to the proceedings before the Board of Appeal: Kabushiki Kaisha Yakult Honsha (Tokyo, Japan)

Form of order sought

Annul the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 8 May 2009 in case R 1396/2008-4;

Declare that the trade mark "Yakut" should be allowed for registration as a Community trade mark; and

Order the defendant to pay the costs, including those incurred in the proceedings 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 "Yakut", for goods in class 33

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: Community trade mark registration of the figurative mark "Yakult" for goods in classes 29 and 32; the earlier mark "YAKULT" claimed to be well-known in all the Member States of the European Union for goods in classes 29 and 32; the earlier non-registered trade mark "YAKULT" claimed to be protected in all the Member States of the European Union for goods in classes 29 and 32.

Decision of the Opposition Division: Upheld the opposition

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Articles 8(1)(b) and 8(4) of Council Regulation 40/94 (which became Articles 8(1)(b) and 8(4) of Council Regulation 207/2009) as the Board of Appeal erred in its findings that the goods applied for had to be considered similar and that there is a high degree of visual and phonetic similarity between the trade marks concerned; infringement of Article 8(5) of Council Regulation 40/94 (which became Article 8(5) of Council Regulation 207/2009) as the Board of Appeal wrongly considered that the Community trade mark concerned takes unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark cited in the opposition proceedings.

____________