Notice for the OJ
Action brought on 29 January 2004 by Lichtwer Pharma AG against the Office for Harmonisation in the Internal Market (Trade Marks and Designs)
(Case T-32/04)
Language of the case
to be determined pursuant to Article 131(2) of the Rules of Procedure
- language in which the application was submitted: German
An action against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) was brought before the Court of First Instance of the European Communities on 29 January 2004 by Lichtwer Pharma AG, represented by H.P. Kunz-Hallstein and R. Kunz-Hallstein, lawyers.
Laboratoire L. Lafon S.A., Maisons-Alfort (France), was also a party to the proceedings before the Board of Appeal.
The applicant claims that the Court should:
annul paragraph 2 of the operative part of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 13 November 2003, that is to say, annul the decision insofar as the applicant was ordered to pay the fees and costs of both the opposition and the appeal proceedings;
order the Office to pay the costs.
Pleas in law and main arguments:
The applicant filed an application for registration of the word mark "Lyco-A" in respect of goods in Classes 5, 29 and 30 (Application No 1 217 355). Laboratoire L. Lafon S.A., the proprietor of the French word mark "LYOC" for goods in Class 5, filed notice of opposition to that registration. Laboratoire L. Lafon S.A. also filed two further notices of opposition based on the marks "LYCO PROTECT" and "LYCO Q10".
By decision of 30 October 2002, the Opposition Division rejected the opposition based on the mark "LYOC" on the ground that there was no likelihood of confusion. On the same day, the opposition based on the mark "LYCO Q10" was allowed.
In December 2002, Laboratoire L. Lafon S.A. informed the defendant that it intended to lodge an appeal against the decision given in the opposition proceedings concerning the mark "LYOC". No appeal was lodged against the decision concerning the mark "LYCO Q10".
In the contested decision, the Board of Appeal found that the appeal proceedings had become devoid of purpose as a result of the definitive refusal to register the mark sought. Moreover, the applicant was ordered to pay the fees and costs of both the preceding opposition proceedings and the appeal proceedings.
In support of its action, the applicant submits that a statement that the lodging of an appeal is envisaged is merely an expression of intention. Moreover, the Board of Appeal ought to have dismissed the appeal as inadmissible under Rule 49(1) of Regulation (EC) No 2868/95
1 and ordered the appellant to pay the costs.
The applicant submits further that the granting of the opposition cannot lead to rejection of the mark
ex tunc but only
ex nunc and that the reasons given for the decision show that the Board of Appeal applied the wrong criteria for the purposes of Article 81(1) of Regulation (EC) No 40/94.
2 The decision therefore infringes substantive law. Moreover, in accordance with Rules 21 and 51 of Regulation (EC) No 2868/95, the defendant ought to have reimbursed the opponent for half of the opposition costs and all of the appeal costs.