Action brought on 3 January 2013 - MasterCard International/OHIM - Nehra (surfpin)

(Case T-13/13)

Language in which the application was lodged: English

Parties

Applicant: MasterCard International, Inc. (New York, United States) (represented by: N. Bolter and C. Sawdy, solicitors)

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

Other party to the proceedings before the Board of Appeal: Sheetal Nehra (London, United Kingdom)

Form of order sought

The applicant claims that the Court should:

Annul the decision under Articles 8(1)(b), 8(4) and 8(5) CTMR;

Uphold the applicant's opposition filed against the respondent's mark in its entirety;

In the alternative, uphold the applicant's opposition in respect of such services for which it is found that a likelihood of confusion exists and/or for such services where it is determined there exists a risk of the application mark taking unfair advantage of, or being detrimental to, the distinctive character or repute of the applicant's mark; and

Order the respondent to pay the cost of the applicant.

Pleas in law and main arguments

Applicant for a Community trade mark: The other party to the proceedings before the Board of Appeal

Community trade mark concerned: The figurative mark in blue, black and white containing the word element "surfpin" and a device of three overlapping circles for services in classes 36 - Community trade mark application No 8 368 862

Proprietor of the mark or sign cited in the opposition proceedings: The applicant

Mark or sign cited in opposition: Figurative marks in different colours containing a device of overlapping circles and some of them the word elements "MasterCard Worldwide" or "MasterCard"- Community trade mark registration No 5 198 585, Community trade mark registration No 5 198 494, UK trade mark registration No 2 425 471, UK trade mark registration No 2 429 669, Community trade mark registration No 5 646 261, Community trade mark registration No 761 221, Community trade mark registration No 5 646 492 and Community trade mark registration No 5 646 609 for goods and services in classes 3, 5, 6, 9, 12, 14, 16, 18, 20, 21, 24, 25, 27, 28, 35, 36, 38, 39, 41, 42, 43, 44 and 45

Decision of the Opposition Division: Rejected the opposition

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Articles 8(1)(b) and (4) and (5) of Council Regulation No 207/2009.

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