Action brought on 21 November 2006 - Total v OHIM - Peterson (Beverly Hills Formula TOTAL PROTECTION)

(Case T-326/06)

Language in which the application was lodged: English

Parties

Applicant: Total SA (Courbevoie, France) (represented by: S. Aldred, Solicitor)

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

Other party to the proceedings before the Board of Appeal: Eric Peterson (London, United Kingdom)

Form of order sought

The decision of the Fourth Board of Appeal dated 5 September 2006 shall be annulled.

The Court either directs the Board or the Office to refuse Mr Peterson's Community trade mark application No 2 988 228, or at its discretion remit the opposition to the Board for reconsideration.

The applicant receives an award of costs in respect of the opposition, a reversal of the award of costs made in the Board's Decision, and an award of costs in respect of this Application.

Pleas in law and main arguments

Applicant for the Community trade mark: Eric Peterson

Community trade mark concerned: The figurative mark 'Beverly Hills Formula TOTAL PROTECTION' for goods in class 3 - application No 2 988 228

Proprietor of the mark or sign cited in the opposition proceedings: The applicant

Mark or sign cited: The national word mark 'TOTAL' for goods in classes 3, 10 and 21

Decision of the Opposition Division: Rejection of the opposition in its entirety

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regulation No 40/94 in that the Board of Appeal found a lack of similarity between the two marks concerned and of Article 63(2) of the regulation as the Board of Appeal didn't notify any of the observations submitted by Eric Peterson to the applicant.

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