T-292/01
Phillips-Van Heusen Corporation S.L. v. The Office for Harmonization in the Internal Market (Trade Marks & Designs)
An action against Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) was brought before the Court of First Instance of the European Communities on 28 November 2001 by Phillips-Van Heusen Corporation of New York (United States of America), represented by Fabrizio Jacobacci. The other party in the proceedings before the Commission was: Pash Textilvertrieb und Einzelhandel GmbH of Munich (Germany)
The applicant claims that the Court should:
- annul Decision R 0740/2000-3 of the Third Board of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) of 12 September 2001 notified on 28 September 2001 to the applicant;
- definitively reject the opposition brought by the defendant against registration of Community trade mark No 161331 BASS, on behalf of Phillips-Van Heusen Corporation, in respect of the whole of Class 25;
- order the Office for Harmonization in the Internal Market (Trade Marks and Designs) to register Community trade mark No 161331 BASS;
- order the defendant and the OHIM to pay, jointly or severally, to the applicant the costs, expenses and fees incurred in both the present proceedings and the opposition and appeal proceedings before the Office for Harmonization in the Internal Market.
Pleas in law and main arguments
| The pleas in law are listed in the first column. Read across each row to find the main arguement for that plea. | |
| Applicant for the Community trade mark | The applicant |
|---|---|
| The Community trade mark concerned: | Word mark ‘BASS’ - application No 161331, registration sought in respect of goods in Class 25 (footwear and clothing) |
| Proprietor of the right to the trade mark or sign asserted by way of opposition in the opposition proceedings: | Pash Textilvertrieb Einzelhadel GmbH |
| Trade Mark or sign asserted by way of opposition in the opposition proceedings: | German mark registered under the name ‘PASH’, registered in order to distinguish various articles in international classes 18 and 25 |
| Decision of the Opposition Division: | Opposition dismissed |
| Decision of the Opposition Division: | Opposition dismissed |
| Decision of the Board of Appeal: | Annulment of the decision of the Opposition Division |
| Grounds of claim: | - Inconsistency between the form of order sought and the order made, since the opposition was not brought against the ‘shoes’ mentioned in Class 25 - Coexistence of the marks ‘BASS’ and ‘PASH’ on the German market - Misapplication of Article 8(1)(b) of Regulation (EC) No 40/94 (likelihood of confusion). |
OJ 2002/C 44/38