Action brought on 21 October 2009 - Bayerische Asphalt-Mischwerke v OHIM - Koninklijke BAM Groep (bam)

(Case T-426/09)

Language in which the application was lodged: English

Parties

Applicant: Bayerische Asphaltmischwerke GmbH & Co. KG für Straβenbaustoffe (Hofolding, Germany) (represented by: R. Kunze, lawyer and Solicitor, and G. Würtenberger, lawyer)

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

Other party to the proceedings before the Board of Appeal: Koninklijke BAM Groep NV (Bunnik, The Netherlands)

Form of order sought

Annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 11 August 2009 in case R 1005/2008-2, in so far as the opposition was rejected with respect to "non-metallic rigid piping for building; transportable structures; monuments, not of metal; building construction; repairs; repair and maintenance";

Grant the opposition against the Community trade mark concerned also for "non-metallic rigid piping for building; transportable structures; monuments, not of metal; building construction; repairs; repair and maintenance";

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 figurative mark "bam", for goods and services in classes 6, 19, 37 and 42

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

Mark or sign cited: German trade mark registration of the figurative mark "bam", for goods in classes 7 and 19

Decision of the Opposition Division: Allowed the opposition partially

Decision of the Board of Appeal: Annulled partially the decision of the Opposition Division

Pleas in law: Infringement of Articles 8(1)(b) Council Regulation No 207/2009 as the Board of Appeal failed to conclude that there was similarity between the goods and services covered by the Community trade mark concerned, on one hand, and the goods covered by the trade mark cited in the opposition proceedings, on the other hand; misuse of power as the Board of Appeal acted ultra vires; infringement of Article 75 of Council Regulation No 207/2009 as the Board of Appeal failed to deal, in a comprehensive manner, with the applicant's arguments set forth in the appeal substantiation; infringement of Article 63(1) of Council Regulation No 207/2009 as the Board of Appeal erred in limiting the scope of protection of the Community trade mark concerned and, thus, wrongly failed to take into account all relevant factors.

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