Action brought on 25 November 2011 — Eni v OHIM — EMI (IP) (ENI)

(Case T-599/11)

2012/C 32/61

Language in which the application was lodged: English

Parties

Applicant: Eni SpA (Roma, Italy) (represented by: D. De Simone and G. Orsoni, lawyers)

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

Other party to the proceedings before the Board of Appeal: EMI (IP) Ltd (London, United Kingdom)

Form of order sought

Pleas in law and main arguments

Applicant for a Community trade mark: The applicant

Community trade mark concerned: The word mark ‘ENI’, for goods and services in classes 1-4, 6-7, 9, 11, 14, 16-19, 22, 25 and 35 to 45 — Community trade mark application No 6488076

Proprietor of the mark or sign cited in the opposition proceedings: The other party to the proceedings before the Board of Appeal

Mark or sign cited in opposition: Community trade mark registration No 4197315 of the word mark ‘EMI’, for goods and services in classes 9, 16, 35, 38, 41 and 42; Community trade mark registration No 6167357 of the figurative mark ‘EMI’, for goods and services in classes 9, 16, 28, 35, 38, 41 and 42

Decision of the Opposition Division: Partially upheld the opposition

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: The applicant challenges the mentioned decision of the First Board of Appeal on the following three grounds: (i) erroneous and non-motivated finding of similarity of goods and services, based on the misunderstanding and misapplication of previous case-law on the point; (ii) erroneous interpretation and application of the Praktiker case, denoting a misunderstanding of its anti-monopolistic inspiring principles and in particular of the ratio that inspired the introduction of registrability of retail services; and (iii) erroneous finding of similarity of signs, and erroneous finding of likelihood of confusion.