Action brought on 2 October 2009 - NEC Display Solutions Europe v OHIM - Nokia (NaViKey)

(Case T-393/09)

Language in which the application was lodged: English

Parties

Applicant: NEC Display Solutions Europe GmbH (Munich, Germany) (represented by: P. Munzinger, lawyer)

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

Other party to the proceedings before the Board of Appeal: Nokia Corp. (Helsinki, Finland)

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 16 June 2009 in case R 1143/2008-2;

Dismiss the opposition filed by the other party to the proceedings before the Board of Appeal against the registration of the Community trade mark concerned;

Order OHIM to pay the costs, 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, including those incurred by the applicant before the Board of Appeal, should it become an intervener in this case.

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: The word mark "NaViKey" for goods in class 9

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 word mark "NAVI" for goods and services in classes 9 and 38; Finish trade mark registration of the word mark "NAVI" for goods in class 9

Decision of the Opposition Division: Upheld the opposition in its entirety

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regulation No 207/2009 as the Board of Appeal: (i) erred when determining the relevant public whose perception must be taken into account; (ii) erred when assessing the similarity between the trade marks concerned and the goods covered; and (iii) failed to take into account that the other party to the proceedings before the Board of Appeal is not entitled to prohibit the use of later trade marks containing the element "NAVI", as a result of the lack of distinctiveness of such or of low degree of distinctiveness, and therefore not entitled to rely on Article 8(1)(b) of Council Regulation 207/2009 to obtain the rejection of the application for the Community trade mark concerned; infringement of Article 75 of Council Regulation No 207/2009 as the Board of Appeal failed to state reasons for its finding that there was a likelihood of confusion between the trade marks concerned.

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