Action brought on 3 May 2010 - Lancôme parfums et beauté & Cie v OHMI - Focus Magazin Verlag GmbH (COLOR FOCUS)

(Case T-204/10)

Language in which the application was lodged: English

Parties

Applicant: Lancôme parfums et beauté & Cie (Paris, France) (represented by: A. von Mühlendahl and S. Abel, lawyers)

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

Other party to the proceedings before the Board of Appeal: Focus Magazin Verlag GmbH (Munich, Germany)

Form of order sought

Annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 11 February 2010 in case R 238/2009-2;

Annul the decision of the Cancellation Division of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 16 December 2008 in case 990 C;

Dismiss the request introduced by the other party to the proceedings before the Board of Appeal for a declaration of invalidity of the applicant's CTM No 1327410 COLOR FOCUS to the extent the request is based on the Community trade mark FOCUS No 453720;

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

Order the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings, including those incurred by the applicant before the Board of Appeal, should it become an intervening party in this case.

Pleas in law and main arguments

Registered Community trade mark subject of the application for a declaration of invalidity: The word mark "COLOR FOCUS" for goods in class 3 - Community trade mark registration No 1327410

Proprietor of the Community trade mark: The applicant

Party requesting the declaration of invalidity of the Community trade mark: The other party to the proceedings before the Board of Appeal

Trade mark right of the party requesting the declaration of invalidity: Community trade mark registration No 453720 of the word mark "FOCUS" for goods and services in classes 3, 6, 7, 9, 14, 16, 21, 25, 28, 29, 32, 33, 35, 38, 39, 41, 42; German mark registration No 39407564 of the word mark "FOCUS", for a wide variety of goods and services in a total of 24 classes

Decision of the Cancellation Division: Declaration of invalidity of the Community trade mark

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law:

The applicant advances two pleas in law in support of its application.

On the basis of its first plea, the applicant claims that the contested decision violates Article 53(1)(a) in conjunction with Article 8(1)(b) of Council Regulation (EC) No 207/2009 (hereinafter "the CTMR") in finding a likelihood of confusion between "COLOR FOCUS" and "FOCUS". According to the applicant, the Board of Appeal failed by not providing a specific assessment of such a finding, which requires an analysis of the degree of distinctiveness and of the degree of similarity, in a way that the contested decision is lacking an essential element in its reasoning.

By its second plea, the applicant considers that the contested decision failed to take into account a general principle of law that no person is entitled to rely on a formal legal position when it constitutes an abuse of right.

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