Action brought on 13 April 2006 - Oakley v OHIM

(Case T-116/06)

Language in which the application was lodged: English

Parties

Applicant: Oakley, Inc. (Foothill Ranch, USA) (represented by: Michaela Huth-Dierig, lawyer)

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

Other party to the proceedings before the Board of Appeal: Venticinque Ltd (Hailsham, United Kingdom)

Form of order sought

The decision of the First Board of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) of January 17, 2006 in appeal R 682/2004-1 to be annulled.

The defendant to be ordered to pay the costs.

Pleas in law and main arguments

Registered Community trade mark subject of the application for a declaration of invalidity: The word mark "O STORE" for services in class 35 - Community trade mark No 2 074 599

Proprietor of the Community trade mark: The applicant

Party requesting the declaration of invalidity of the Community trade mark: Venticinque Limited

Trade mark right of the party requesting the declaration of invalidity: The earlier national word mark "THE O STORE" for goods and services in classes 18 and 25

Decision of the Cancellation Division: Partial declaration of invalidity of the Community trade mark

Decision of the Board of Appeal: Dismissal of both the applicant's and Venticinque Ltd's appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regulation No 40/94 as the goods and services are absolutely dissimilar and there is no likelihood of confusion between the conflicting trade marks since the distinctive character of the earlier mark "THE O STORE" is very limited. Furthermore, proof has not been provided that "THE O STORE" is in any way known or well established in the French market.

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