Action brought on 16 October 2009 - Poslovni Sistem Mercator v OHIM - Mercator Multihull (MERCATOR STUDIOS)

(Case T-417/09)

Language in which the application was lodged: English

Parties

Applicants: Poslovni Sistem Mercator, d.d. (Ljubljana, Slovenia) (represented by: M. Curell Aguila and J. Güell Serra, lawyers)

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

Other party to the proceedings before the Board of Appeal: Mercator Multihull, Inc. (Vancouver, Canada)

Form of order sought

Annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 16 July 2009 in case R 1031/2008-1;

Order the defendant to pay the costs.

Pleas in law and main arguments

Applicant for the Community trade mark: The other party to the proceedings before the Board of Appeal

Community trade mark concerned: The word mark "MERCATOR STUDIOS", for goods in class 42

Proprietor of the mark or sign cited in the opposition proceedings: The applicant

Mark or sign cited: Slovenian trade mark registrations of the figurative mark "Mercator" registered for services in classes 35, 36, 39, 41 and 42, and for goods in classes 1-6, 8-11, 13-34; Slovenian trade mark registration of the figurative marks "Mercator Slovenska Košarica" registered for goods and services in classes 1-6, 8-11, 13-34, 39, 41, 43 and 44; International registrations of the mark "Mercator", for goods in classes 1-6, 8-11, 13, 14, 16-18, 20-33, and for services in classes 36, 41 and 42

Decision of the Opposition Division: Rejected the opposition

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Articles 8(1)(b) and 8(5) of Council Regulation No 40/94 (which became Articles 8(1)(b) and 8(5) of Council Regulation No 207/2009) as the Board of Appeal failed to make a global analysis of the relevant factors and instead rejected the opposition on the basis that the services are different, and incorrectly assessed the ground of opposition based on the latter legal provision.

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