Action brought on 18 May 2007 - Reno Schuhcentrum v OHIM - Payless ShoeSource Worldwide (Payless ShoeSource)

(Case T-173/07)

Language in which the application was lodged: English

Parties

Applicant: Reno Schuhcentrum GmbH (Thaleischweiler-Fröschen, Germany) (represented by: S. Schäffner, lawyer)

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

Other party to the proceedings before the Board of Appeal: Payless ShoeSource Worldwide, Inc. (Topeka, United States)

Form of order sought

The applicant claims the Court to:

annul the decision of the First Board of Appeal of the OHIM of 28 February 2007 (Case R 1209/2005-1), dismissing the appeal relating to revocation proceedings No 731C 0000 186 163/1 (Community trade mark No 186 163 - Payless ShoeSource);

order the OHIM to pay the costs.

Pleas in law and main arguments

Registered Community trade mark subject of the application for revocation: The figurative Community trade mark "Payless ShoeSource" for goods and services in Classes 25, 35 and 42 - application No 186 163

Proprietor of the Community trade mark: Payless ShoeSource Worldwide, Inc.

Party requesting the revocation of the Community trade mark: Reno Schuhcentrum GmbH

Decision of the Cancellation Division: Rejected the revocation request partially, maintaining registration for goods and services in Class 25 in force.

Decision of the Board of Appeal: Dismissed the appeal directed against the remaining goods and services in Class 25.

Pleas in law: The applicant claims that the contested decision is vitiated by an essential procedural requirement in respect of Article 74 CTMR and the burden of proof. According to the applicant, in revocation proceedings, the burden of proof in respect of genuine use lies with the proprietor of the trade mark. Moreover, the applicant submits that the Office cannot examine the facts on its own motion but its examination should be confined to the assessment of the facts, evidence and arguments provided by the parties and the relief sought. Thus, the applicant claims that the Board's communication of 18 October 2006 on the basis of which the trade mark proprietor was invited to submit the originals of specific statutory declarations should be declared inadmissible, in particular since the Board had previously found the initial evidence submitted by the trade mark proprietor to be insufficient to establish genuine use.

Furthermore, the applicant claims that the said originals were not submitted within the required deadline, in accordance to Article 74(2) CTMR and therefore should not be admitted.

In addition, the applicant submits that the Board erred in its interpretation of the concept of genuine use infringing thereby Article 15 CTMR.

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