Action brought on 15 December 2010 - Ertmer v OHIM - Caterpillar (erkat)

(Case T-566/10)

Language in which the application was lodged: German

Parties

Applicant: Jutta Ertmer (Tatsungen, Germany) (represented by: A. von Mühlendahl and C. Eckhartt)

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

Other party to the proceedings before the Board of Appeal of OHIM: Caterpilla, Inc. (Illinois, USA)

Form of order sought

The applicant claims that the Court should:

annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 7 September 2010 in Case R 270/2010-1;

dismiss the appeal lodged by Caterpillar Inc. on 17 February 2010 against the decision of the cancellation Division of OHIM of 8 January 2010 in Cancellation proceedings No 2504 C;

order the defendant and Caterpillar Inc., if it decides to participate in the proceedings, to pay the costs.

Pleas in law and main arguments

Registered Community trade mark in respect of which a declaration of invalidity has been sought: word mark 'erkat' for goods in Classes 7 and 42.

Proprietor of the Community trade mark: the applicant.

Applicant for the declaration of invalidity: Caterpillar Inc.

Grounds for the application for a declaration of invalidity: pursuant to Article 53(1)(a) the application was based on the national and Community word mark 'CAT', the national figurative marks and the Community figurative mark containing the word 'CAT', for goods and services in Classes 7 and 42.

Decision of the Cancellation Division: the application for a declaration of invalidity was dismissed.

Decision of the Board of Appeal: the appeal was upheld and the registered mark was declared invalid.

Pleas in law: Infringement of Article 8 in conjunction with Article 75 of Regulation (EC) No 207/2009, ¹ since the contested decision does not show on which earlier mark or marks the Board of Appeal based its decision to grant the application of the other party and a key part of the grounds was copied from another decision; infringement of Article 8(1)(b) of Regulation (EC) No 207/2009, since there was no likelihood of confusion between the opposing marks; and infringement of Article 8(5) in conjunction with Article 75 of Regulation (EC) No 207/2009, since the earlier figurative marks do not have a reputation and there would be no detriment to, or unfair advantage taken of, the distinctive character or repute of those marks.

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¹ - Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).