Action brought on 23 January 2012 - Pips v OHIM - s.Oliver Bernd Freier (ISABELLA OLIVER)

(Case T-38/12)

Language in which the application was lodged: English

Parties

Applicant: Pips BV (Amsterdam, Netherlands) (represented by: J.A.K. van den Berg, lawyer)

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

Other party to the proceedings before the Board of Appeal: s.Oliver Bernd Freier GmbH & Co. KG (Rottendorf, Germany)

Form of order sought

Annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 20 October 2011 in case R 2420/2010-1;

Allow the Community trade mark application No 7024961 for the word mark "ISABELLA OLIVER", for all the goods and services subject to the proceedings before the First Board of Appeal; and

Order the defendant to pay the costs.

Pleas in law and main arguments

Applicant for a Community trade mark: The applicant

Community trade mark concerned: The word mark "ISABELLA OLIVER", for goods and services in classes 3, 4, 12, 14, 16, 18, 20, 21, 24 and 25 - Community trade mark application No 7024961

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 in opposition: Community trade mark application No 6819908 of the word mark "S.Oliver", for goods in classes 4, 16, 20, 21 and 24; Community trade mark registration No 4504569 of the figurative mark "s.Oliver", for goods and services in classes 3, 6, 9, 14, 18, 20, 25, 28 and 35; German trade mark registration No 30734710.9 of the word mark "S.Oliver", for goods in classes 10, 12 and 21; Community trade mark registration No 181875 of the word mark "S.Oliver", for goods in classes 3, 6, 9, 14, 18, 20, 25 and 26; International trade mark registration No 959255 of the word mark "S.Oliver", for goods in classes 10, 12 and 21

Decision of the Opposition Division: Partially rejected the CTM application

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Article 76 of Council Regulation No 207/2009, as the Board of Appeal; (i) made an assessment of the similarity of the marks on the basis of facts/circumstances not provided by the parties, as a consequence of which the conclusion with regard to the similarity of signs is erroneous; and (ii) incorrectly applied the principles formulated by the ECJ in relation to overall assessment of likelihood of confusion.

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