Action brought on 21 December 2010 - macros consult GmbH v OHIM (makro)

(Case T-579/10)

Language in which the application was lodged: German

Parties

Applicant: macros consult GmbH - Unternehmensberatung für Wirtschafts- und Finanztechnologie (Ottobrunn, Germany) (represented by: T. Raible, lawyer)

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

Other party to the proceedings before the Board of Appeal of OHIM: MIP Metro Group Intellectual Property GmbH & Co. KG (Düsseldorf, Germany)

Form of order sought

The applicant claims that the General Court should

Alter the decision of the Fourth Board of Appeal of OHIM given on 18 October 2010 in Case R 339/2009-4 so that the appeal brought by the applicant before the Board of Appeal is well-founded and therefore the application for a declaration of invalidity is granted;

Order OHIM and MIP Metro Group to pay the costs incurred in the invalidity proceedings, appeal proceedings and the present proceedings.

Pleas in law and main arguments

Registered Community trade mark in respect of which a declaration of invalidity has been sought: Figurative mark containing the word element 'makro' and registered in respect of goods and services in classes 1 to 42.

Proprietor of the Community trade mark: MIP Metro Group Intellectual Property GmbH & Co. KG.

Applicant for the declaration of invalidity: The applicant.

Trade mark right of applicant for the declaration: Application for a declaration of invalidity under Article 53(1)(c) and Article 53(2) of Regulation (EC) No 207/2009¹ brought against the registered goods and services in classes 9, 35, 36 and 41.

Decision of the Cancellation Division: Rejection of the application.

Decision of the Board of Appeal: Rejection of the appeal.

Pleas in law: Breach of Article 53(1)(c) and Article 53(2) and Article 8(4) of Regulation (EC) No 207/2009, as the applicant used the designation 'macros Consult' as its name and business name / trade name already prior to the date of filing the application for the contested trade mark and therefore has a prior right under the first sentence of Paragraph 5(2) of the Law on trade marks (Markengesetz).

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¹ - Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p.1).