Action brought on 27 May 2009 - Alder Capital v OHIM - Halder Holdings (ALDER CAPITAL)

(Case T-209/09)

Language in which the application was lodged: English

Parties

Applicant: Alder Capital Ltd (Dublin, Ireland) (represented by: H. Hartwig and A. von Mühlendahl, lawyers)

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

Other party to the proceedings before the Board of Appeal: Halder Holdings BV (The Hague, The Netherlands)

Form of order sought

Annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 20 February 2009 in case R 486/2008-2;

Order the defendant to pay the costs, including those incurred by the applicant before the Board of Appeal; and

Order the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings, including those incurred by the applicant before the Board of Appeal, should Halder Holdings become an intervening party in this case.

Pleas in law and main arguments

Registered Community trade mark subject of the application for a declaration of invalidity: The word mark "ALDER CAPITAL" for services in class 36

Proprietor of the Community trade mark: The applicant

Party requesting the declaration of invalidity of the Community trade mark: The other party to the proceedings before the Board of Appeal

Trade mark right of the party requesting the declaration of invalidity: Benelux trade mark registrations of the word mark "Halder" and "Halder Investments" for services in classes 35 and 36; International registration of the word mark "Halder" for services in classes 35 and 36; Unregistered trade and company names "Halder", "Halder Holdings", "Halder Investments" and "Halder Interest" used in the course of trade

Decision of the Cancellation Division: Declared the Community trade mark concerned invalid

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law:

Infringement of Articles 57 and 58 of Council Regulation 40/94 (which became Articles 58 and 59, respectively, of Council Regulation 207/2009), as well as Article 8(3) of Commission Regulation 216/96¹ as the Board of Appeal wrongly accepted the request by the other party to the proceedings before it to re-examine the genuine use issue;

Infringement of Article 52(1)(a) of Council Regulation 40/94 (which became Article 53(1)(a) of Council Regulation 207/2009) and of Article 55(1)(b) of Council Regulation 40/94 (which became Article 56(1)(b) of Council Regulation 207/2009) in conjunction with Articles 42(1) of Council Regulation 40/94 (which became Article 41(1) of Council Regulation 207/2009) and 8(2) of Council Regulation 40/94 (which became Article 8(2) of Council Regulation 207/2009), as the Board of Appeal failed to dismiss outright the application for a declaration of invalidity lodged by the other party to the proceedings before it, as far as it was based on earlier rights which have been transferred to a third party;

Infringement of Articles 56(2) and (3) of Council Regulation 40/94 (which became Articles 57(2) and (3) of Council Regulation 207/2009) in conjunction with Article 15 of Council Regulation 40/94 (which became Article 15 of Council Regulation 207/2009) and of Article 10 of Council Directive 89/104/EEC² and Rule 40(6) in conjunction with Rule 22(3) and (4) of Commission Regulation No 2868/95³ as the Board of Appeal wrongly considered that the other party to the proceedings before it has proved genuine use of any of its earlier trade marks anywhere;

Alternatively, infringement of Article 8(1)(b) of Council Regulation 40/94 (which became Article 8(1)(b) of Council Regulation 207/2009) as the Board of Appeal wrongly found that there was a likelihood of confusion between the trade marks concerned.

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¹ - Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade marks and Designs) (OJ 1996 L 28, p. 11)

² - First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1)

³ - Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1).