Action brought on 19 November 2012 - Ferring v OHIM - Tillotts Pharma (OCTASA)

(Case T-502/12)

Language in which the application was lodged: English

Parties

Applicant: Ferring BV (Haarlem, Netherlands) (represented by: I. Fowler, Solicitor, A. Renck and J. Fuhrmann, lawyers)

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

Other party to the proceedings before the Board of Appeal: Tillotts Pharma AG (Ziefen, Switzerland)

Form of order sought

The applicant claims that the Court should:

Annul the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 6 September 2012 in case R 1216/2011-4; and.

Order that the costs of the proceedings be borne by the Defendant, or - in the event that the other party to the proceedings before the Board of Appeal intervenes on the side of the Defendant - that they be borne jointly by the Defendant and the Intervener.

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 word mark "OCTASA", for goods in class 5 - Community trade mark application No 8169881

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

Mark or sign cited in opposition: Benelux trade mark registration No 377513 for the word mark "PENTASA", for among others goods in class 5; German trade mark registration No 1181393 for the word mark "PENTASA", for goods in class 5; Portuguese trade mark registration No 218845 for the word mark "PENTASA", for goods in class 5; Danish trade mark registration No VR 02.430 1980 for the word mark "PENTASA", for goods in class 5; Finnish trade mark registration No 94367 for the word mark "PENTASA", for goods in class 5; UK trade mark registration No 1131049 for the word mark "PENTASA", for goods in class 5; Spanish trade mark registration No 1766091 for the word mark "PENTASA", for goods in class 5; International trade mark registration No 605880 for the word mark "PENTASA", for goods in class 5; Benelux trade mark registration No 430245 for the word mark "OCTOSTIM", for goods in class 5; German trade mark registration No 2024737 for the word mark "OCTOSTIM", for goods in class 5; Finnish trade mark registration No 95782 for the word mark "OCTOSTIM", for goods in class 5; French trade mark registration No 1537576 for the word mark "OCTOSTIM", for goods in class 5; UK trade mark registration No 1262052 for the word mark "OCTOSTIM", for goods in class 5; Greek trade mark registration No 129507-A for the word mark "OCTOSTIM", for goods in class 5; Irish trade mark registration No 175341 for the word mark "OCTOSTIM", for goods in class 5; Portuguese trade mark registration No 246194 for the word mark "OCTOSTIM", for goods in class 5; Danish trade mark registration No VR 198601124 for the word mark "OCTOSTIM", for goods in class 5; Swedish trade mark registration No 2000103 for the word mark "OCTOSTIM", for goods in class 5

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

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law:

-    Infringement of Articles 8(1)(b) and 8(5) of Council Regulation No 207/2009

-    Infringement of Rule 80(2) of Commission Regulation (EC) No 2868/95.

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