Action brought on 30 November 2009 - Fercal Consultadoria e Serviços v OHIM

(Case T-474/09)

Language in which the application was lodged: Portuguese

Parties

Applicant: Fercal - Consultadoria e Serviços, Ltda (Lisbon, Portugal) (represented by: A. Rodrigues, 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: Jacson of Scandinavia AB (Vollsjö, Sweden)

Form of order sought

Annulment of the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (O.H.I.M.) of 18 August 2009 in Case R 1253/2008-2 and, in consequence, maintenance in the register of Community trade mark No 1 077 858 'JACKSON SHOES'

Pleas in law and main arguments

Registered Community trade mark in respect of which a declaration of invalidity has been sought: JACKSON SHOES

Proprietor of the Community trade mark: applicant

Applicant for the declaration of invalidity: other party to the proceedings before the Board of Appeal

Trade mark right of applicant for the declaration: Swedish name mark 'JACSON OF SCANDINAVIA AB'

Decision of the Cancellation Division: application for declaration of invalidity granted

Decision of the Board of Appeal: appeal dismissed

Pleas in law: Infringement of Articles 8(4) and 53(1)(c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, because there is no likelihood of confusion between the trade mark 'JACKSON SHOES' and the trade mark 'JACSON OF SCANDINAVIA AB'.

Although there are graphic and phonetic similarities between the names JACKSON and JACSON, the signs must be compared by taking them in their entirety: 'JACKSON SHOES' / 'JACSON OF SCANDINAVIA AB'.

It is impossible to recognise (merely on the basis of a Swedish business name) an exclusive right in all the Member States of the European Union to use a name commonly used in many other countries of the Union by thousands of people and by other undertakings, thus constituting a sign of little distinctive character. In consequence, third parties cannot be prevented from again using that sign or another sign resembling it in combination with other elements.

In addition, an average consumer will easily realise that these are different kinds of distinctive signs: one consists of a name mark and the other of a business name, in this case with the addition of the letters AB.

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