Action brought on 16 May 2007 - Professional Tennis Registry v OHIM - Registro Profesional de Tenis (PTR PROFESSIONAL TENNIS REGISTRY)

(Case T-168/07)

Language in which the application was lodged: English

Parties

Applicant: Professional Tennis Registry, Inc. (Hilton Head Island, United States) (represented by: M. Vanhegan, Barrister)

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

Other party to the proceedings before the Board of Appeal: Registro Profesional de Tenis, SL (Madrid, Spain)

Form of order sought

Annulment of paragraph (1) of the First Board of Appeal's decision of 28 February 2007 (Case R 1050/2005-1), in which the applicant's Community trade mark application No 2 826 709 for the class 16 and 41 products and services was rejected;

order that the opposition to the applicant's Community trade mark application No 2 826 709 be rejected in its entirety;

order that the applicant's Community trade mark application No 2 826 709 proceed to grant in respect of all of the goods and services in classes 16, 25 and 41; and

order that the defendant pays the applicant its costs incurred before the Board of Appeal and the Court of First Instance.

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: The figurative mark 'PTR PROFESSIONAL TENNIS REGISTRY' for goods and services in classes 16, 25 and 41 - application No 2 826 709

Proprietor of the mark or sign cited in the opposition proceedings: Registro Profesional de Tenis, SL

Mark or sign cited: The national figurative marks 'RPT Registro Profesional de Tenis, S.L' and 'RPT European Registry of Professional Tennis' for services in class 41

Decision of the Opposition Division: Rejection of the opposition in its entirety

Decision of the Board of Appeal: Partial annulment of the Opposition Division's decision and rejection of the trade mark application for the products and services in classes 16 and 41

Pleas in law: Infringement of Article 8(1)(b) of Council Regulation No 40/94 as the Board of Appeal concluded that there was confusing similarity between the applicant's Community trade mark application and Registro Profesional de Tenis' earlier trade marks. The Board of Appeal failed to give proper consideration to the principles to be applied where the trade marks in issue are complex marks.

____________