Action brought on 26 September 2011 - Peek & Cloppenburg v OHIM - Peek & Cloppenburg (Peek & Cloppenburg)

(Case T-507/11)

Language in which the application was lodged: German

Parties

Applicant: Peek & Cloppenburg KG (Düsseldorf, Germany) (represented by: S. Abrar, lawyer)

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

Other party to the proceedings before the Board of Appeal: Peek & Cloppenburg (Hamburg, Germany)

Form of order sought

The applicant claims that the Court should:

Annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 28 February 2011 in Case R 262/2005-1;

Order OHIM to pay the costs.

Pleas in law and main arguments

Applicant for a Community trade mark: the applicant

Community trade mark concerned: the word mark 'Peek & Cloppenburg' for services in Class 35

Proprietor of the mark or sign cited in the opposition proceedings: Peek & Cloppenburg

Mark or sign cited in opposition: another earlier sign, namely the company name 'Peek & Cloppenburg', which is valid in Germany    

Decision of the Opposition Division: the opposition was upheld

Decision of the Board of Appeal: the appeal was dismissed

Pleas in law: Infringement of Article 8(4) of Regulation No 207/2009 as the use of the subsequent mark 'Peek & Cloppenburg' may not be prohibited and there is no right to prohibit use throughout Germany under Paragraph 12 of the Markengesetz (Law on Trade Marks), and infringement of the first part of the first sentence of Article 76(1) of Regulation No 207/2009 as the Board of Appeal should have waited for a decision of the German Federal Court of Justice and the res judicata of a judgment in the German proceedings to have the trade mark removed from the register.

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