Action brought on 27 March 2009 - I Marchi Italiani and B Antonio Basile 1952 v OHIM - Osra (B Antonio Basile 1952)

(Case T-133/09)

Language in which the application was lodged: Italian

Parties

Applicants: I Marchi Italiani (Naples, Italy) and B Antonio Basile 1952 (Giugliano, Italy) (represented by: G. Militerni, lawyer)

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

Other party/parties to the proceedings before the Board of Appeal of OHIM: Osra SA (Rovereta, Italy)

Form of order sought

Annul the decision of the Second Board of Appeal dated 09.01.2009, notified to the applicants in the present case on 30.01.2009 in proceedings R 502/2008, between I Marchi Italiani Srl and Osra S.A., which upheld the decision of the Cancellation Division, which allowed the application for revocation and declaration of invalidity of the mark 'B Antonio Basile 1952', following the action brought by Osra S.A.;

Declare the registration of the mark 'B Antonio Basile 1952' to be valid and effective as from the date of filing of the application and/or registration of that mark;

Order OHIM to pay the costs.

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 wording 'B Antonio Basile 1952' (Community trade mark No 5.274.121 (divisional registration resulting from the division of registration No 1.462.555 following partial assignment of same), for goods in Classes 14, 18 and 25.

Proprietor of the Community trade mark: the applicants.

Applicant for the declaration of invalidity: Osra S.A.

Trade mark right of applicant for the declaration: Figurative mark 'BASILE' (Italian registration No 738.901 and international registration No R 413.396 B) for goods in Class 25.

Decision of the Cancellation Division: Allowed the application for annulment and declared the Community trade mark in its entirety to be invalid.

Decision of the Board of Appeal: Dismissed the appeal.

Pleas in law: Incorrect application of Article 52(1)(a) and Article 53(2) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (now Article 53(1)(a) and Article 54(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) and lack of risk of confusion.

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