Action brought on 26 August 2010 - Tecnimed v OHIM - Ecobrands (ZAPPER-CLICK)

(Case T-360/10)

Language in which the application was lodged: English

Parties

Applicant: Tecnimed Srl (Vedano Olona, Italy) (represented by: M. Franzosi and V. Piccarreta, lawyers)

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

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

Form of order sought

Annul the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 14 June 2010 in case R 1795/2008-4;

Confirm the decision of the Cancellation Division of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 28 October 2010; and

Order the defendant to pay the costs of the proceedings.

Pleas in law and main arguments

Registered Community trade mark in respect of which a declaration of invalidity has been sought: The word mark "ZAPPER-CLICK" for goods in classes 5, 9 and 10 - Community trade mark registration No 3870284

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

Applicant for the declaration of invalidity of the Community trade mark: The applicant

Grounds for the application for a declaration of invalidity: Italian trade mark registration No 747249 of the word mark "CLICK", for goods in class 10; Italian trade mark registration No 927574 of the word mark "MOUSTI CLICK", for goods in class 10; Italian trade mark registration No 801404 of the word mark "ECO-CLICK", for goods in class 10; Italian trade mark registration No 801405 of the word mark "ZANZA CLICK", for goods in class 10; International trade mark registration No 825425 of the word mark "MOUSTI CLICK", for goods in class 10; Non-registered trade mark of the word mark "CLICK", protected in the United Kingdom; Non-registered trade mark of the word mark "ZANZA CLICK", protected in the United Kingdom.

Decision of the Cancellation Division: Declaration of partial invalidity of the Community trade mark

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

Pleas in law: Infringement and misinterpretation of Article 52(1)(b) of Council Regulation (EC) No 207/2009, as the Board of Appeal wrongfully excluded "bad faith". Infringement and misinterpretation of Rules 38(2), 39(2), 39(3) and 96(2) of Commission Regulation (EC) No 2868/95, as the Board of Appeal wrongfully related inadmissibility of the ground of action to the alleged omitted translation of the documents, and as it did not consider that the translation had been provided by the applicant. Misapplication of Articles 53(1)(a) and 8(1)(b) of Council Regulation (EC) No 207/2009, as the Board of Appeal misused its power. Violation and misinterpretation of Articles 53(1)(b) and 8(3) of Council Regulation (EC) No 207/2009, as the Board of Appeal wrongfully hold that misappropriation had to be excluded since the trademarks at issue were not identical. Violation of Articles 53(1)(c) and 8(4) of Council Regulation (EC) No 207/2009, as the Board of Appeal wrongly excluded passing off and wrongly stated that the file does not provide evidence about the way the product was presented on the market.

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