Action brought on 18 February 2011 - ASA v OHIM - Merck (FEMIFERAL)

(Case T -110/11)

Language in which the application was lodged: Polish

Parties

Applicant: ASA Sp. z o.o. (Głubczyce, Poland) (represented by: M. Chimiak, lawyer)

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

Other party to the proceedings before the Board of Appeal of OHIM: Merck Sp. z o.o. (Warsaw, Poland)

Form of order sought

set aside in its entirety the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 19 November 2010 in Case No R 0182/2010-1;

order the defendant 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 word mark 'FEMIFERAL' for goods in Class 5 - Application No 5320701

Proprietor of the mark or sign cited in the opposition proceedings: Merck Sp. z o.o.

Mark or sign cited in opposition: the national word mark 'Feminatal' and the national figurative mark containing the word element 'feminatal' for goods in Class 5.

Decision of the Opposition Division: dismissal of the opposition.

Decision of the Board of Appeal: invalidation of the decision of the Opposition Division and dismissal of the application for the trade mark in its entirety.

Pleas in law: Breach of Article 8(1)(b) of Regulation No 207/2009 ¹ by reason of the erroneous finding that the trade marks 'Feminatal' and 'FEMIFERAL' are similar to one another in a manner which is likely to mislead Polish consumers as to the origin of the goods, by reason of the misappraisal of the distinctive character of the prefix 'femi' and lack of regard for characteristics specific to Polish consumers and also the principles of the Polish language, as also by reason of the defective assessment of the similarity of the marks in all three aspects: visual, phonetic and conceptual.

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