Action brought on 26 April 2011 - Glaxo Group v OHIM - Farmodiética (ADVANCE)

(Case T-243/11)

Language in which the application was lodged: English

Parties

Applicant: Glaxo Group Ltd (Greenford, United Kingdom) (represented by: O. Benito, Solicitor)

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

Other party to the proceedings before the Board of Appeal: Farmodiética - Cosmética, Dietética e Produtos Farmacêuticos, Lda (Estarda de S.Marcos, Portugal)

Form of order sought

Stay the proceedings until an invalidity action in Portugal is decided since this invalidity action is challenging the only basis upon which the CTM No 6472971 was rejected, and if this invalidity action is not successful;

Annul the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 25 February 2011 in case R 665/2010-4; and

Order the defendant and /or the other party to the proceedings before the Board of Appeal to bear the costs.

Pleas in law and main arguments

Applicant for a Community trade mark: The applicant

Community trade mark concerned: The word mark "ADVANCE", for goods in class 5 - Community trade mark application No 6472971

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 in opposition: Portuguese trade mark registration No 417744 for the figurative mark "ADVANCIS CAPS MORE BIOAVAILABLE . MORE EFFECTIVE", for goods in classes 3 and 5

Decision of the Opposition Division: Upheld the opposition

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Articles 8(1)(b) and 65(2) of Council Regulation No 207/2009, as the Board of Appeal: (i) deemed that the applicant did not challenge the opposition division's decision of 25 February 2010 as regards the similarity of the goods concerned, (ii) deemed that there was no reason to depart from the opposition division's decision of 25 February 2010 as regards the similarity of the goods concerned, (iii) did not analyse whether the goods concerned in class 3 are similar or dissimilar to the goods concerned in class 5, (iv) did not explain why it was relevant to take into account how the signs are pronounced in English when the relevant territory is Portugal, (v) deemed that the conflicting marks are similar from an aural point of view in English, (vi) applied the incorrect tests as regards comparison of the signs, thus wrongly finding the level of similarity to be average, and (vii) applied incorrect and incomplete tests in assessing global likelihood of confusion.

____________