Notice for the OJ
SEQ CHAPTER \h \r 1
Action brought on 19 January 2004 by Metso Paper Automation Oy against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Case T-19/04)
Language of the case: English
An action against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) was brought before the Court of First Instance of the European Communities on 19 January 2004 by Metso Paper Automation Oy, Tampere, Finland, represented by J. Tanhuanpää, lawyer.
The applicant claims that the Court should:
annul the contested decision1 partially as concerns refusal to register the trade mark PAPERLAB on the grounds of Article 7(1)(c) CTMR (item 1. of the order). The subject appeal does not apply to item 2. of the order in which the Board of Appeal remits the case to the examiner for further prosecution on the grounds of Article 7(3) CTMR;
order the Office to pay the costs of the applicant.
Pleas in law and main arguments:
The trade mark concerned: The word mark "PAPERLAB" application No. 2 575 009
Goods or service concerned: Goods in Class 9 (Computer equipment and measuring installations for surveying and testing of paper)
Decision contested before the
Board of Appeal: Refusal of registration by the examiner
Decision of the Board of Appeal: The contested decision was upheld insofar as it rejected the application on the grounds of Article 7(1)(c) of Regulation (EC) No. 40/94. The case was remitted to the examiner for further prosecution on the grounds of Article 7(3) of Regulation (EC) No. 40/94.
Grounds of claim: - The mark "PAPERLAB" is registrable in Class 9 because it does not directly describe the goods in any manner;
- The trade mark "PAPERLAB" can serve as a mark in trade to distinguish goods of the applicant from goods of other traders;
- The Office for Harmonisation in the Internal Market has accepted several similar trademarks.
____________1 - Decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 7 November 2003 (Case R 842/2002-).