Action brought on 8 May 2007 - SC Gerovital Cosmetics v OHIM - SC Farmec (GEROVITAL H3 Prof. Dr. A. Aslan)

(Case T-163/07)

Language in which the application was lodged: English

Parties

Applicant: SC Gerovital Cosmetics S.A. (Bucharest, Romania) (represented by: D. Boştinşă, lawyer)

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

Other party to the proceedings before the Board of Appeal: Farmec S.A. (Cluj-Napoca, Romania)

Form of order sought

The invalidation of Decision of 27 February 2007 of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trademarks and Designs) in Case R 271/2006-2 - GEROVITAL H3; and subsequently

the invalidation of Cancellation Division decision of 23 December 2005 in the proceedings for a declaration of invalidity of OHIM reference number 872C 0000986 034, CTM 986034 GEROVITAL H3;

order that the costs of the proceedings be paid by the defendant.

Pleas in law and main arguments

Registered Community trade mark subject of the application for a declaration of invalidity: The Community figurative mark containing word elements "GEROVITAL H3 Prof. Dr. A. Aslan" for goods and services in Class 3 and 42 - application No 986 034

Proprietor of the Community trade mark: The applicant

Party requesting the declaration of invalidity of the Community trade mark: Farmec S.A.

Trade mark right of the party requesting the declaration of invalidity: The figurative national trade mark "Gerovital H3 PROF. DR. ANA ASLAN" for certain goods in Class 3

Decision of the Cancellation Division: Declared the trade mark invalid in its entirety

Decision of the Board of Appeal: Dismissed the appeal.

Pleas in law: Infringement of Articles 52 and 53(2) of Council Regulation No 40/94.

The applicant considers that the Romanian figurative mark it was partially assigned - with respect to specific products provided in the assignment contract - by the holder of the international and national trade mark registrations is an earlier well known mark enjoying such reputation in more than one Member State. Hence, it claims to be entitled to priority and exclusivity for registration purposes.

Also, contrary to the rights of the other party to the cancellation and appeal proceedings (hereinafter, "Farmec"), the applicant claims to have broader rights over the trade mark, both with regards to the range of cosmetic products it is entitled to produce as to their composition. Based on the assumption that the two companies enjoy equal and distinctive rights over the trademark GEROVITAL H3 Prof. Dr. A. Aslan related to the intensity of protection, the anteriority/precedence aspect referred to by Farmec should have no bearing according to the applicant.

Finally, the applicant submits that its ownership rights would be seriously affected if faced to the impossibility to acquire international recognition and protection of the rights deriving from the assignment contract, even if it claims to enjoy full rights and protection in Romania.

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