Action brought on 8 November 2011 - McNeil v OHIM - Alkalon (NICORONO)

(Case T-580/11)

Language in which the application was lodged: English

Parties

Applicant: McNeil AB (Helsingborg, Sweden) (represented by: I. Starr, Solicitor)

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

Other party to the proceedings before the Board of Appeal: Alkalon ApS (Copenhagen V, Denmark)

Form of order sought

Annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 3 August 2011 in case R 1582/2010-2;

Order the defendant to pay to the applicant its costs of and occasioned by this appeal.

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 "NICORONO", for goods in classes 5, 10 and 30 - Community trade mark application No 6654529

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

Mark or sign cited in opposition: Community trade mark registration No 2190239 of the word mark "NICORETTE", for goods in classes 5, 10 and 30

Decision of the Opposition Division: Upheld the opposition

Decision of the Board of Appeal: Annulled the contested decision

Pleas in law: Infringement of Articles 75, 8(1)(b) and 8(5) of Council Regulation No 207/2009, as the Board of Appeal has failed to give sufficient weight in the overall assessment to: (i) the identity of the goods concerned and the fact that this offsets a lesser degree of similarity between the marks to be compared; (ii) the fact that consumers normally perceive word marks as a whole and pay particular attention to the beginning of a mark; and (iii) the fact that the applicant's mark "NICORETTE" has enhanced distinctiveness and an extensive reputation through significant use.

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