Action brought on 23 May 2011 - Pangyrus v OHIM - RSVP Design (COLOURBLIND)

(Case T-257/11)

Language in which the application was lodged: English

Parties

Applicant: Pangyrus Ltd (York, United Kingdom) (represented by: S. Clubb, Solicitor)

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

Other party to the proceedings before the Board of Appeal: RSVP Design Ltd (Renfrewshire, 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 23 March 2011 in case R 751/2009-4;

Restore the decision of the Cancellation Division of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 12 May 2009; and

Award the costs in favour of the applicant.

Pleas in law and main arguments

Registered Community trade mark in respect of which a declaration of invalidity has been sought: The word mark "COLOURBLIND", for goods and services in classes 9, 16, 28, 35 and 41 - Community trade mark registration No 3337979

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: The party requesting the declaration of invalidity based its request on two grounds, namely Article 53(1)(c) in conjunction with Article 8(4) of Council Regulation (EC) No 207/2009, by invoking an earlier unregistered right protected under the law of passing-off in the United Kingdom, as well as on the existence of bad faith in accordance with Article 52(1)(b) of Council Regulation (EC) No 207/2009.

Decision of the Cancellation Division: Declared the Community trade mark registration invalid in its entirety

Decision of the Board of Appeal: Annulled the decision of the Cancellation Division and rejected the request for declaration of invalidity

Pleas in law: The applicant considers that the Board of Appeal erred in law in finding that: (i) the Community trade mark proprietor did not act in bad faith when it applied for the Community trade mark; and (ii) the applicant had failed to prove that it had used an earlier sign in the course of trade before the date in which the contested Community trade mark was applied for.

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