Action brought on 8 April 2009 - ISDIN v OHIM - Pfizer (ISDIN)

(Case T-153/09)

Language in which the application was lodged: English

Parties

Applicant: ISDIN, SA (Barcelona, Spain) (represented by: M. Esteve Sanz, lawyer)

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

Other party to the proceedings before the Board of Appeal: Pfizer Ltd (Sandwich, United Kingdom)

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 22 January 2009 in case R 390/2008-1;

Alternatively, annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 22 January 2009 in case R 390/2008-1, insofar as it invalidates the registered Community trade mark subject of the application for a declaration of invalidity for certain goods in class 5; and

Order the defendant and, as the case may be, the other party to the proceedings before the Board of Appeal, to pay the costs of the proceedings, including those incurred before the Board of Appeal.

Pleas in law and main arguments

Registered Community trade mark subject of the application for a declaration of invalidity: The word mark "ISDIN" for goods in classes 3 and 5

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

Decision of the Cancellation Division: Declared the Community trade mark concerned partially invalid

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Article 73 of Council Regulation 40/94¹ (which became Article 75 of Council Regulation 207/2009) and of Rule 50(2)(h) of Commission Regulation No 2868/95² as the Board of Appeal failed to comply with the duty to state reasons on the risk of confusion between the trade marks concerned ; Infringement of Article 51(1)(a) (which became Article 52(1)(a) of Council Regulation 207/2009), in relation with Article 8(1)(b) (which became Article 8(1)(b) of Council Regulation 207/2009) and Article 74 of Council Regulation 40/94 (which became Article 76 of Council Regulation 207/2009) insofar as the Board of Appeal refused to take into account the limitation made by the applicant in its statement of grounds, and thus considered in a general way that the goods in conflict were identical; Alternatively, infringement of Article 51(1)(a), in relation with Article 8(1)(b) of Council Regulation 40/94, insofar as the contested decision refers to certain goods in class 5; Infringement of Article 51(1)(a), in relation with Article 8(1)(b) of Council Regulation 40/94, insofar as the Board of Appeal upheld the validity of the decision of the Cancellation Division for all products initially covered by the contested trade mark.

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¹ - Replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, OJ L 78, p. 1.

² - Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).