Action brought on 29 December 2008 - Perusahaan Otomobil Nasional v OHIM - Proton Motor Fuel Cell (PM PROTON MOTOR)

(Case T-581/08)

Language in which the application was lodged: English

Parties

Applicant: Perusahaan Otomobil Nasional Sdn. BHD (Shah Alam, Malaysia) (represented by: J. Blind, C. Kleiner and S. Ziegler, lawyers)

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

Other party to the proceedings before the Board of Appeal: Proton Motor Fuel Cell GmbH (Starnberg, Germany)

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 9 October 2008 in case R 1675/2007-1, uphold the opposition No 501 306 for all goods and services and reject the application for the Community trade mark No 2 296 408; and

Order the defendant and, if the case might be, the other party to the proceedings before the Board of Appeal to pay the costs of proceedings and the costs of appeal incurred before the defendant.

Pleas in law and main arguments

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

Community trade mark concerned: The figurative mark "PM PROTON MOTOR", for goods and services in classes 7, 9 and 42 - application No 2 296 408

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

Mark or sign cited: Community trade mark registration No 198 564 of the word mark "PROTON" for goods and services in classes 12 and 37; Community trade mark registration No 1 593 201 of the figurative mark "PROTON" for goods and services in classes 12 and 37; United Kingdom trade mark registration No 1 322 343 of the series of marks "PROTON" for services in class 37; United Kingdom trade mark registration No 2 227 660 of the figurative mark "PROTON" for goods and services in classes 12 and 37; United Kingdom trade mark registration No 2 182 057 of the word mark "PROTON DIRECT" for goods in class 12; Registration of the word mark "PROTON" in Benelux, Denmark, Finland, Germany, Greece, Ireland, Portugal and Spain

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

Decision of the Board of Appeal: Annulled the contested decision and dismissed the opposition

Pleas in law: Infringement of Article 8(1)(b) of Council Regulation 40/94 as the Board of Appeal wrongly assessed that there was no likelihood of confusion between the trade marks concerned; Infringement of Article 8(5) of Council Regulation 40/94 as the Board of Appeal failed to find that the trade mark cited in the opposition proceedings has reputation in the United Kingdom.

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