Action brought on 10 September 2008 - Advance Magazine Publishers v OHIM - Capela & Irmãos (VOGUE)
(Case T-382/08)
Language in which the application was lodged: English
Parties
Applicant: Advance Magazine Publishers, Inc. (New York, United States) (represented by: M. Esteve Sanz, lawyer)
Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)
Other party to the proceedings before the Board of Appeal: J. Capela & Irmãos, Lda. (Porto, Portugal)
Form of order sought
Alter the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 30 June 2008 in case R 328/2003-2 so as to hold that the appeal brought by the applicant before the Board of Appeal is well founded and, consequently, that the opposition is rejected and the Community trade mark concerned is admitted;
In the alternative, annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 30 June 2008 in case R 328/2003-2; and
Order the defendant and, as the case may be, the other party to the proceedings before the Board of Appeal, to pay the costs, including the costs of appeal incurred before OHIM.
Pleas in law and main arguments
Applicant for the Community trade mark: The applicant
Community trade mark concerned: The word mark "VOGUE" for goods and services in classes 9, 14, 16, 25 and 41
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: Portuguese trade mark registration No 143 183 of the word mark "VOGUE Portugal" for goods in class 25; Portuguese business name No 32 046 "VOGUE-SAPATARIA"
Decision of the Opposition Division: Upheld the opposition in its entirety
Decision of the Board of Appeal: Dismissal of the appeal
Pleas in law: (i) Infringement of Article 43(2) and (3) of Council Regulation No 40/94 and Rule 22 of Commission Regulation No 2868/95 as the Board of Appeal wrongly considered that the evidence submitted by the other party to the proceedings before the Board of Appeal did constitute proof of genuine use of the earlier trade mark; (ii) Infringement of Article 8(1)(b) of Council Regulation No 40/94 as the Board of Appeal wrongly found that the goods in question are similar; (iii) Infringement of Articles 61(1) and 62(2) of Council Regulation No 40/94 insofar as the Board of Appeal wrongly based its ruling on the fact that the applicant failed to challenge the findings of the Opposition Division as to the proof of use or as to the similarity of the goods and services in question, as well as on the fact that before the Opposition Division the applicant implicitly considered that the proof of use was sufficient.
____________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).