Action brought on 26 January 2009 - Advance Magazine Publishers v OHIM - Selecciones Americanas (VOGUE CAFÉ)

(Case T-40/09)

Language in which the application was lodged: English

Parties

Applicant: Advance Magazine Publishers, Inc. (New York, United States) (represented by: T. Alkin, Barrister)

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

Other party to the proceedings before the Board of Appeal: Selecciones Americanas, SA (Sitges (Barcelona), Spain)

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 19 November 2008 in case R 280/2008-4 insofar as it relates to the opposition based on Spanish trade marks registration No 255 186 and 2 529 728;

Alter the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 19 November 2008 in case R 280/2008-4 such that consideration of the opposition is suspended pending the outcome of the opposition for Community trade mark application No 3 064 219; and

Order the other party to the proceedings before the Board of Appeal to pay the costs.

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: The word mark "VOGUE CAFÉ", for goods and services in classes 21, 25 and 43

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: Spanish trade mark registration No 255 186 of the figurative mark "Vogue Juan Fort, S.A. - Badalona" for goods in class 25; Spanish trade mark registration No 2 529 728 of the figurative mark "VOGUE studio" for goods in class 25; Community trade mark application No 3 064 219 of the figurative mark "VOGUE" for goods and services in classes 25, 35 and 39.

Decision of the Opposition Division: Allowed the opposition for the goods applied for in class 25

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Article 43(2) of Council Regulation 40/94 and/or of Rule 22(3) of Commission Regulation No 2868/95¹ as the Board of Appeal erred in its finding the evidence submitted by the other party to the proceedings before the Board of Appeal was capable of proving use of Spanish trade mark registration No 255 186; Infringement of Article 8(1)(b) of Council Regulation 40/94 as the Board of Appeal wrongly assessed that there was a likelihood of confusion between the Community trade mark concerned and Spanish trade mark registration No 2 529 728; Infringement of Rules 20(7) of Commission Regulation No 2868/95 as the Board of Appeal stated inapplicable grounds for refusing to grant a suspension of proceedings pending determination of the opposition to Community trade mark application No 3 064 219.

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¹ - Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).