# C_2006212EN.01000901.xml

| 2.9.2006 | EN | Official Journal of the European Union | C 212/9 |
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2.9.2006

EN

Official Journal of the European Union

C 212/9

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Appeal brought on 29 May 2006 by Develey Holding GmbH & Co. Beteiligungs KG against the judgment delivered by the Court of First Instance (Second Chamber) on 15 March 2006 in Case T-129/04 Develey Holding GmbH & Co. Beteiligungs KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Case C-238/06 P)

(2006/C 212/15)

Language of the case: German

Parties

Appellant: Develey Holding GmbH & Co. Beteiligungs KG (represented by: H. Kunz-Hallstein)

Appellant:

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Other party to the proceedings:

Form of order sought

| — | Annul the judgment of the Court of First Instance of 15 March 2006 in Case T-129/04 (1); |
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Annul the judgment of the Court of First Instance of 15 March 2006 in Case T-129/04 (1);

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| — | Annul the decision of the Second Board of Appeal of OHIM of 20 January 2004 (Case R367/2003-2); |
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Annul the decision of the Second Board of Appeal of OHIM of 20 January 2004 (Case R367/2003-2);

| — | In the alternative, refer the case back to the Court of First Instance; |
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In the alternative, refer the case back to the Court of First Instance;

| — | Order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to pay the costs for the first-instance proceedings and the appeal. |
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Order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to pay the costs for the first-instance proceedings and the appeal.

Pleas in law and main arguments

The appellant substantiates its appeal against the abovementioned judgment of the Court of First Instance as follows:

| 1. | In accordance with the theory relating to standards which is now generally recognised and also acknowledged with regard to proceedings before the Court, it corresponds to the basic rules concerning burden of proof that a party which is relying on a standard has to prove the factual premises thereof. That applies in particular to reliance on exceptions, which always have to be interpreted strictly according to the case-law of the Court. As OHIM relied on an exception in refusing protection it was thus obliged to prove the existence of the facts constituting the exception. |
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1.

In accordance with the theory relating to standards which is now generally recognised and also acknowledged with regard to proceedings before the Court, it corresponds to the basic rules concerning burden of proof that a party which is relying on a standard has to prove the factual premises thereof. That applies in particular to reliance on exceptions, which always have to be interpreted strictly according to the case-law of the Court. As OHIM relied on an exception in refusing protection it was thus obliged to prove the existence of the facts constituting the exception.

| 2. | In the present case there is not just an earlier national registration, but also an earlier national registration by a Member State of both the EU and the Paris Convention for the Protection of Industrial Property (PC) within the meaning of Article 6 quinquies (A) PC which can only be denied protection under the rules relating to exceptions in Article 6 quinquies (B) PC. The special right in Article 6 quinquies (A)(1) prevents the defendant from declaring that the application is not capable of being protected at least as regards the territory of the Member State in which the identical union trade mark enjoys protection. The defendant, however, based its decision on a lack of distinctive character in the Community and thus also in the territory of the Federal Republic of Germany: to that extent the defendant is declaring a registration made by a State signatory to the Paris Convention to be invalid. In this case it is not sufficient for OHIM to rely completely on the independence of 'national', namely German, legislation as the proprietor of a mark of a State signatory to the Paris Convention may demand more than treatment under domestic law. Rather, that assessment must take place in the light of Article 6 quinquies (A) PC. |
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2.

In the present case there is not just an earlier national registration, but also an earlier national registration by a Member State of both the EU and the Paris Convention for the Protection of Industrial Property (PC) within the meaning of Article 6 quinquies (A) PC which can only be denied protection under the rules relating to exceptions in Article 6 quinquies (B) PC. The special right in Article 6 quinquies (A)(1) prevents the defendant from declaring that the application is not capable of being protected at least as regards the territory of the Member State in which the identical union trade mark enjoys protection. The defendant, however, based its decision on a lack of distinctive character in the Community and thus also in the territory of the Federal Republic of Germany: to that extent the defendant is declaring a registration made by a State signatory to the Paris Convention to be invalid. In this case it is not sufficient for OHIM to rely completely on the independence of 'national', namely German, legislation as the proprietor of a mark of a State signatory to the Paris Convention may demand more than treatment under domestic law. Rather, that assessment must take place in the light of Article 6 quinquies (A) PC.

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| 3. | As regards proof of lack of distinctive character, the Court of First Instance stated that OHIM complied with its obligation at least in so far as it correctly referred to general experience of life. The argument relating to general experience of life cannot, however, serve as a way of avoiding the fact that there has been failure to prove the facts. The Court of First Instance also wrongfully examined the issue of lack of distinctive character solely on the basis of Article 7(1)(b) of Regulation No 40/94 and completely disregarded Article 6 quinquies (B) PC. |
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3.

As regards proof of lack of distinctive character, the Court of First Instance stated that OHIM complied with its obligation at least in so far as it correctly referred to general experience of life. The argument relating to general experience of life cannot, however, serve as a way of avoiding the fact that there has been failure to prove the facts. The Court of First Instance also wrongfully examined the issue of lack of distinctive character solely on the basis of Article 7(1)(b) of Regulation No 40/94 and completely disregarded Article 6 quinquies (B) PC.

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| 4. | The Court of First Instance neither examined the distinctive character on the basis of the goods in respect of which registration of the mark was actually sought nor accurately determined the overall impression of the marks. It also drew no distinction between individual goods. The Court of First Instance overlooked the fact that the use of design as an indicator of origin also serves the needs of consumers: the shape of the packaging provides them with their only possibility of pre-selecting it in supermarkets where numerous bottles with the same contents are lined up on a shelf. |
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4.

The Court of First Instance neither examined the distinctive character on the basis of the goods in respect of which registration of the mark was actually sought nor accurately determined the overall impression of the marks. It also drew no distinction between individual goods. The Court of First Instance overlooked the fact that the use of design as an indicator of origin also serves the needs of consumers: the shape of the packaging provides them with their only possibility of pre-selecting it in supermarkets where numerous bottles with the same contents are lined up on a shelf.

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(1)  OJ C 108, p. 20

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