13.2.2010

EN

Official Journal of the European Union

C 37/47

(Case T -504/09)

2010/C 37/68

Language in which the application was lodged: German

Parties

Applicant: Völkl GmbH & Co. KG (Erding, Germany) (represented by: C. Raßmann, lawyer)

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

Other party to the proceedings before the Board of Appeal of OHIM: Marker Völkl International GmbH (Baar, Switzerland)

Form of order sought

—Annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 30 September 2009 in Case R 1387/2008-1;

—Annul the decision of the Opposition Division of the Office for Harmonisation in the Internal Market of 31 July 2008 on the opposition proceedings No B 1 003 153, in so far as the opposition was upheld;

—Refusal of the opposition;

—Order the defendant to pay the costs.

Pleas in law and main arguments

Applicant for a Community trade mark: Völkl GmbH & Co. KG

Community trade mark concerned: the word mark ‘VÖLKL’ for goods in classes 3, 9, 18 and 25 (Application No 4 403 705)

Proprietor of the mark or sign cited in the opposition proceedings: Marker Völkl International GmbH

Mark or sign cited in opposition: the word mark ‘VÖLKL’ (international trade mark No 571 440) for goods in classes 18, 25 and 28

Decision of the Opposition Division: Opposition upheld in part

Decision of the Board of Appeal: Annulment of the decision given by the Opposition Division concerning the determination of a likelihood of confusion of the signs which are compared and the referral back to the Opposition Division for further action; Dismissal of the appeal in relation to the decision on proof of use preserving the rights held

Pleas in law:

—Infringement of the principle that the parties delimit the subject-matter of the proceedings (Article 74(1) of Regulation (EC) No 40/94), on the ground that the Board of Appeal should not have referred the proceedings back to the Opposition Division concerning goods in relation to which the opposition was not raised;

—Infringement of the prohibition of reformatio in pejus, on the ground that the Board of Appeal should not have referred the proceedings back to the Opposition Division concerning goods the registration of which the Opposition Division had already permitted;

—Infringement of the right to be granted a fair hearing (Article 38(3) and Article 73(2) of Regulation No 40/94);

—Infringement of Article 15(2)(a) and Article 43(2) and (3) of Regulation No 40/94 and Rule 22(2) of Regulation (EC) No 2868/95, on the ground that the Board of Appeal erred in finding that the applicant has sufficiently proved that the opposition mark has been used in a manner which preserves its rights.

Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1)

Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1)