8.11.2008   

EN

Official Journal of the European Union

C 285/28

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Set aside the judgment of the Court of First Instance of 25 June 2008 in case T-36/07 in its entirety

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Remit the application to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to allow it to preceed

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Order that the Respondent shall pay the Appellant's costs of this Appeal and of the Appeal before the Court of First Instance

1)

Improper extension of the factual and legal context of the review of the legality of the decision under appeal. It is submitted that the Court of First Instance in its judgment changed the subject matter of the proceedings before the Board of Appeal of the OHIM and took into account facts and matters which extended the factual and legal context of the dispute before the OHIM.

2)

Breach of Art 8(1)(b) of Regulation 40/94 (1). The Court of First Instance stated in effect that the relevant public must be considered to be solely Spanish speaking ‘even if it is accepted that in certain regions of Spain, such as the Canary Islands, English is commonly spoken or that some Spanish consumers have knowledge of English’. This amounts to an error in law because it is in effect a ruling that in assessing the linguistic capacity and understanding of the average consumer in any particular case, the only question is one of determining the main or primary language of the Member State in which the earlier right subsists, without regard to other facts which are relevant to determining the nature of the relevant consumer.

3)

Further breach of Art 8(1)(b) of Regulation 40/94. Having identified three categories of similarity between the goods and services of the application and those of the alleged prior right, namely ‘in part identical’, ‘in part very similar’, and ‘in part not materially different’ the Court erred in law by failing to consider the effect of these three different categories in assessing whether there was a likelihood of confusion.