Action brought on 12 November 2010 - Google v OHIM - Giersch Ventures (GMail)

(Case T-527/10)

Language in which the application was lodged: English

Parties

Applicant: Google, Inc. (Wilmington, United States) (represented by: M. Kinkeldey and A. Bognár, lawyers)

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

Other party to the proceedings before the Board of Appeal: Giersch Ventures LLC (Los Angeles, United States)

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 8 September 2010 in case R 342/2010-4; and

Order the defendant to pay the costs of the proceedings.

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: The figurative mark "GMail", for goods and services in classes 9, 38 and 42 - Community trade mark application No 5685136

Proprietor of the mark or sign cited in the opposition proceedings: The other party to the proceedings before the Board of Appeal

Mark or sign cited: German trade mark registration No 30666860 of the word mark "G-mail", registered for, among others, goods and services in classes 9, 38 and 42; German trade mark registration No 30025697 of the figurative mark "G-mail... und die Post geht richtig ab", for services in classes 38, 39 and 42.

Decision of the Opposition Division: Upheld the opposition

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: The applicant considers that the contested decision infringes Article 8(1)(b) of Council Regulation (EC) No 207/2009, as the Board of Appeal erred (i) in its visual comparison between the contested trade mark and the earlier opposed trade mark, (ii) in not taking into account the perception of the concerned consumer circles, (iii) in its assumption that the word elements of composite marks are always more coining than the visual elements, and disregarded case law in that respect, (iv) in its finding that the earlier word mark as a whole was not to be considered intrinsically weak, and (v) in its finding that the applicant's arguments as regards the significance of the visual comparison over the phonetic comparison of the marks were inconclusive.

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