Action brought on 17 December 2010 - Environmental Manufacturing v OHIM - Wolf (Representation of the head of a wolf)

(Case T-570/10)

Language in which the application was lodged: English

Parties

Applicant: Environmental Manufacturing LLP (Stowmarket, United Kingdom) (represented by: S. Malynicz, barrister, and M. Atkins, solicitor)

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

Other party to the proceedings before the Board of Appeal: Société Elmar Wolf, SAS (Wissembourg, France)

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 6 October 2010 in case R 425/2010-2; and

Order the defendant and the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings.

Pleas in law and main arguments

Applicant for a Community trade mark: The applicant

Community trade mark concerned: The figurative mark representing the head of a wolf, for goods in class 7 - Community trade mark application No 4971511

Proprietor of the mark or sign cited in the opposition proceedings: The other party to the proceedings before the Board of Appeal

Mark or sign cited in opposition: French trade mark registration No 99786007 of the figurative mark "WOLF Jardin" for goods in classes 1, 5, 7, 8, 12 and 31; French trade mark registration No 1480873 of the figurative mark "Outils WOLF" for goods in classes 7 and 8; International trade mark registration No 154431 of the figurative mark "Outils WOLF" for goods in classes 7 and 8; International trade mark registration No 352868 of the figurative mark "Outils WOLF" for goods in classes 7, 8, 12 and 21

Decision of the Opposition Division: Rejected the opposition

Decision of the Board of Appeal: Annulled the decision of the Opposition Division

Pleas in law: The applicant contends that the contested decision infringes Articles 42(2) and 42(3) of Council Regulation (EC) No 207/2009, as the Board of Appeal failed to identify within the class of products for which the earlier marks were registered a coherent sub-category capable of being viewed independently of the wider class, and therefore failed to conclude that there had only been proof that the mark has been put to genuine use in relation to part of the goods for which the marks were protected.

In addition, the applicant contends that the contested decision infringes Article 8(5) of Council Regulation (EC) No 207/2009, as the Board of Appeal misidentified the relevant consumer, wrongly concluded that there would be a relevant link and failed to apply the criterion of an effect on the economic behaviour of the relevant consumer and the criterion that in order to be considered unfair, the mark must transfer some image or confer some marketing boost to the junior users' goods, which was not the case. Further the Board of Appeal failed to realise that the proprietor of the earlier mark had not even correctly alleged the relevant harm under Article 8(5), still less proved that it was likely, and had therefore failed to discharge the burden upon it.

____________