Action brought on 16 February 2011 - Shang v OHIM (Justing)

(Case T-103/11)

Language in which the application was lodged: Italian

Parties

Applicant: Tiantian Shang (Rome, Italy) (represented by A. Salerni, lawyer)

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

Form of order sought

Annul the contested provision.

Alter the decision taken by OHIM and recognise the right of seniority enjoyed by national mark RM 2006C002075 in relation to Community trade mark 008391202, including the name and symbol, with all the effects thus entailed as provided for in Regulation No 40/94 on the Community trade mark, as replaced by Regulation No 207/2009.

In the alternative, given that both the national and the Community mark share at the very least a common name element, consisting in the word 'Justing', recognise that the name element of the mark, or the name 'Justing', has a right of seniority, extending to it the retroactive effects of Community registration, with the possible exclusion solely of the graphic illustration surrounding the name.

Pleas in law and main arguments

Community trade mark concerned: Figurative mark containing the word element 'Justing' (registration application No 8 391 203) for goods and services in Classes 18 and 25, in respect of which it is claimed that the national figurative mark (Italian registration No 1 217 203), which also contains the word element 'Justing', has a right of seniority

Decision of the Examiner: Rejected the application claiming seniority of the national figurative mark on the ground that the Italian mark and the Community mark are not the same.

Decision of the Board of Appeal: Dismissed the appeal.

Pleas in law: Misapplication of Article 34 of Regulation No 207/2009 and infringement of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.

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