Action brought on 5 February 2008 - British Sky Broadcasting Group v OHIM - Vortex (SKY)

(Case T-66/08)

Language in which the application was lodged: English

Parties

Applicant: British Sky Broadcasting Group plc (Isleworth, United Kingdom) (represented by: J. Barry, Solicitor)

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

Other party to the proceedings before the Board of Appeal: Vortex SA (Paris, France)

Form of order sought

Order, on the basis that the First Board of Appeal has infringed Council Regulation (EC) No 40/94 and/or rules of law relating to its application, that:

in the decision of the First Board of Appeal, while the ultimate conclusion of the First Board of Appeal to reject the opposition should not be disturbed, that part of the contested decision (in particular paragraphs 18 and 19 thereof) which reject the applicant's arguments relating to the Agreement, should be annulled;

the contested decision be altered to hold that the Agreement; applies to trade marks other than the particular registrations identified in the Agreement and extends to future marks; precludes the opponent from opposing or objecting in any manner whatsoever to any use or registration by BSkyB of trade marks containing 'SKY' other than 'SKYROCK' and 'SKYZIN' both of which were as determined by the French courts; and is a final and binding settlement agreement between BSkyB and the opponent as determined by the French courts (including to the highest level in France);

the contested decision be altered and revisited so as to deal with and address all of the grounds raised by BSkyB in its response to the opposition;

OHIM pay the costs and fees of BSkyB.

Pleas in law and main arguments

Applicant for the Community trade mark: The applicant

Community trade mark concerned: The figurative mark 'SKY' for goods and services in classes 9, 16, 18, 25, 28, 35, 38, 41 and 42 - application No 3 166 378

Proprietor of the mark or sign cited in the opposition proceedings: Vortex SA

Mark or sign cited: The Community and national word marks 'SKYROCK' for goods and services classes 9, 16, 18, 25, 28, 35, 38, 41 and 42

Decision of the Opposition Division: Opposition upheld for all the goods and services in classes 9, 38 and 41, as well as for 'advertising' in class 35

Decision of the Board of Appeal: Annulment of the Opposition Division's decision and rejection of the opposition in its entirety

Pleas in law: Without contesting the operative part of the contested decision, the applicant contends that the reasoning of the Board of Appeal infringes Council Regulation No 40/94 and the rules of law relating to its application.

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