Action brought on 30 June 2009 - Caixa Geral de Depósitos v OHIM - Caixa d'Estalvis i Pensions de Barcelona ('la Caixa')

(Case T -255/09)

Language in which the application was lodged: Spanish

Parties

Applicant: Caixa Geral de Depósitos (Lisbon, Portugal) (represented by: F. de la Rosa and M. Lobato García-Miján, lawyers)

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

Other party to the proceedings before the Board of Appeal of OHIM: Caixa d'Estalvis i Pensions de Barcelona

Form of order sought

annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market of 24 March 2009 based on Article 8(1)(b) of the Regulation on the Community trade mark;

alternatively, annul the earlier decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market of 24 March 2009 based on Article 7(1)(b) of the Regulation on the Community trade mark;

order OHIM and, if appropriate, the intervener, to pay the costs incurred in these proceedings.

Pleas in law and main arguments

Applicant for a Community trade mark: CAIXA D'ESTALVIS I PENSIONS DE BARCELONA

Community trade mark concerned: Figurative mark which contents the verbal element 'la Caixa' (Application No 4.685.145) for goods and services in classes 9, 16, 36, 38 and 45.

Proprietor of the mark or sign cited in the opposition proceedings: CAIXA GERAL DE DEPOSITOS S.A.

Mark or sign cited in opposition: Various Portuguese word marks which contain the prefix 'caixa' (Nos 357.311, 261.198, 268.466, 302.708, 303.290, 325.155, 325.156, 325.224, 330.542 and 342.311) for goods and services in classes 9, 16 and 36, and Portuguese figurative mark (No 357.310) which contains the word 'caixa' for goods and services in classes 9, 16 and 36.

Decision of the Opposition Division: Opposition upheld in part.

Decision of the Board of Appeal: Appeal allowed and contested decision annulled.

Pleas in law: Infringement of Article 8(1)(b) of Regulation (EC) No 207/2009 on the Community trade mark and, alternatively, Article 7(1)(b) thereof.

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