Action brought on 12 August 2010 - Yoshida Metal Industry/OHMI - Pi-Design (surface covered with black circles)

(Case T-331/10)

Language in which the application was lodged: English

Parties

Applicant: Yoshida Metal Industry Co., Ltd (Niigata, Japan) (represented by: S. Verea, K. Muraro and M. Balestriero, lawyers)

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

Other party to the proceedings before the Board of Appeal: Pi-Design AG, (Triengen, Switzerland)

Form of order sought

Annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 20 May 2010 in case R 1235/2008-1;

Confirm the decision of the Cancellation Division of 21 July 2008 regarding Community trade mark application No 1371244;

Confirm the validity of Community trade mark registration No 1371244;

Order the defendant and the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings.

Pleas in law and main arguments

Registered Community trade mark subject of the application for a declaration of invalidity: The figurative mark representing a surface covered with black circles for goods in classes 8 and 21 - Community trade mark registration No 1371244

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: The party requesting the declaration of invalidity grounded its request on absolute grounds for refusal pursuant to Article 7 of Council Regulation (EC) No 207/2009

Decision of the Cancellation Division: Rejected the application for declaration of invalidity of the Community trade mark

Decision of the Board of Appeal: Annulled the contested decision and declared the Community trade mark registration invalid

Pleas in law: Infringement of Articles 7(1)(b) and 7(1)(e)(ii) of Council Regulation (EC) No 207/2009, as the Board of Appeal erred in concluding that the provisions of these Articles are applicable to the contested Community trade mark.

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