Judgment of the Court of First Instance (First Chamber) of 12 November 2008 – Scil proteins v OHIM – Indena (affilene)

(Case T-87/07)

Community trade mark – Opposition proceedings – Application for Community figurative mark affilene – Earlier Community word mark AFFILIN – Relative ground for refusal – Likelihood of confusion – Similarity between products – Article 8(1)(b) of Regulation (EC) No 40/94

Community trade mark – Definition and acquisition of the Community trade mark – Relative ground for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark (Council Regulation No 40/94, Art. 8(1)(b)) (see paras 40-42, 45-52)

Re:

ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 January 2007 (Case R 10/2006-2) relating to opposition proceedings between Scil proteins GmbH and Indena SpA.

Information relating to the case

Applicant for the Community trade mark:	Indena SpA
Community trade mark sought:	Figurative mark affilene for goods in Class 1 – Application No 2751931
Proprietor of the mark or sign cited in the opposition proceedings:	Scil proteins GmbH
Mark or sign cited in opposition:	Community word mark AFFILIN for goods in Classes 1 and 5 – Registration No 2583391
Decision of the Opposition Division:	Opposition upheld
Decision of the Board of Appeal:	Opposition partially upheld

Operative part

The Court:

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 23 January 2007 (Case R 10/2006-2) in so far as it dismisses the opposition with respect to the following goods: ‘extracts of medicinal plants for use in the pharmaceutical, cosmetic and food industries, not for diagnostic purposes’;

2. Orders OHIM to pay the costs.