25.9.2010

Official Journal of the European Union

C 260/24

(Case T-320/10)

()

2010/C 260/33

Language in which the application was lodged: English

Parties

Applicant: Fürstlich Castell’sches Domänenamt, Albrecht Fürst zu Castell-Castell (Castell, Germany) (represented by: R. Kunze, Solicitor, G. Würtenberger and T. Wittmann, lawyers)

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

Other party to the proceedings before the Board of Appeal: Castel Frères SA (Blanquefort, France)

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 4 May 2010 in case R 962/2009-2;

—Order the defendant to bear the costs of the proceedings.

Pleas in law and main arguments

Registered Community trade mark subject of the application for a declaration of invalidity: The word mark ‘CASTEL’ for goods in class 33 — Community trade mark registration No 2678167

Proprietor of the Community trade mark: The other party to the proceedings before the Board of Appeal

Party requesting the declaration of invalidity of the Community trade mark: The applicant

Trade mark right of the party requesting the declaration of invalidity: The party requesting the declaration of invalidity grounded its request on absolute grounds for refusal pursuant to Article 7 of Council Regulation (EC) No 207/2009

Decision of the Cancellation Division: Rejected the request for invalidity

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Article 7 of Council Regulation No 207/2009, as the Board of Appeal: (i) on the one hand correctly acknowledged that ‘Castell’ was a recognised indication of origin in relation to wine, yet, on the other erred in considering that the contested trade mark ‘CASTEL’ was conspicuously different from ‘Castell’ and hence concluded that the contested trade mark could be registered, (ii) by saying that ‘CASTEL’ was a word commonly used for ‘castle’ in the wine industry, failed to draw the conclusion that ‘CASTEL’ could not be registered; Infringement of Articles 63, 64, 75 and 76 of Council Regulation No 207/2009, as the Board of Appeal did not properly take into account the facts and arguments submitted; Infringement of Article 65 of Council Regulation No 207/2009, as the Board of Appeal acted ultra vires in justifying its decision by a ‘peaceful coexistence’, although this doctrine is not apparent for consideration for the registration of a trade mark.