C-192/03P

Alcon Inc v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM)

An appeal against the judgment delivered on 5 March 2003 by the Second Chamber of the Court of First Instance of the European Communities in case T-237/01 between Alcon Inc., formerly Alcon Universal Ltd and the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), was brought before the Court of Justice of the European Communities on 12 May 2003 by Alcon Inc, formerly Alcon Universal Ltd, established in Hünenberg (Switzerland), represented by S. Clark, Solicitor, and C. Morcom QC, with an address for service in Luxembourg.

The Appellant claims that the Court should:

• set aside the judgment of the Court of First Instance delivered on 5 March 2003, and that the contested decisions of the Cancellation Division dated 15 December 1999 and of the First Board of Appeal dated 13 July 2001 be annulled;
• make an order for the payment of its costs

Pleas in law and main arguments:

The appellant submits that the decision of the Court of First Instance of 5 March 2003 was wrong in law in a number of respects. In particular the Court

(i) failed to consider adequately or at all the specific requirements of Article 7(1)(d) of the Community Trade Mark Regulation as to customary use, in the current language or in the bona fide and established practices of the trade;

(ii) wrongly proceeded upon the assumption that mere entries in directories or other reference sources by themselves satisfied the requirements of Article 7(1)(d);

(iii) wrongly took into consideration material not published or not shown to have been published within the European Union prior to 1 April 1996 and in doing so failed to address the distinction between the requirements of Articles 7(1)(d) and 50(1)(b) of the Regulation, the former alone being material for the purposes of the application for a declaration of invalidity;

(iv) failed to take into account the evidence of Alcon's substantial policing of the trade mark BBS over a very considerable period of time;

(v) alternatively wrongly rejected the case put forward on behalf of Alcon, that the mark BSS had in fact acquired distinctive character as a result of use, thus meeting the requirements of Article 51(2) of the Regulation.