# C_2012098EN.01001302.xml

| 31.3.2012 | EN | Official Journal of the European Union | C 98/13 |
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31.3.2012

EN

Official Journal of the European Union

C 98/13

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Appeal brought on 16 January 2012 by Abbott Laboratories against the judgment of the General Court (Sixth Chamber) delivered on 15 November 2011 in Case T-363/10 Abbott Laboratories v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Abbott Laboratories v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-21/12 P)

2012/C 98/21

Language of the case: German

Parties

Parties

Appellant: Abbott Laboratories (represented by: R. Niebel and C. Steuer, Rechtsanwälte)

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

Form of order sought

| — | Set aside the judgment of the General Court of the European Union of 15 November 2011 in Case T-363/10; |
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Set aside the judgment of the General Court of the European Union of 15 November 2011 in Case T-363/10;

| — | annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 9 June 2010 (Case R 1560/2009-1) relating to application for Community trade mark No 008 448 251 RESTORE; |
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annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 9 June 2010 (Case R 1560/2009-1) relating to application for Community trade mark No 008 448 251 RESTORE;

| — | order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to pay the costs of the proceedings. |
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order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to pay the costs of the proceedings.

Pleas in law and main arguments

Pleas in law and main arguments

The grounds of the appeal against the decision of the General Court at issue are, in essence, as follows:

| 1. | First, the appellant complains of the General Court’s distortion of the facts or of the evidence. The General Court erroneously proceeded on the assumption that it is common knowledge that the word ‘restore’ has a direct medical meaning. What was undisputed in the proceedings was merely the fact that ‘restore’ is translated [into German] as ‘wiederherstellen’. A medical connection cannot, however, be detected in that. The fact that the General Court’s view is based on the dictionary excerpts produced represents a distortion of the evidence. Those excerpts show that ‘restore’ does not have any medical meaning per se, but that it is a multifaceted concept that can be understood in a variety of ways, depending on the context. That meaning cannot therefore be regarded as a matter of common knowledge and thus as a fact that, exceptionally, does not need to be proved. |
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1.

First, the appellant complains of the General Court’s distortion of the facts or of the evidence. The General Court erroneously proceeded on the assumption that it is common knowledge that the word ‘restore’ has a direct medical meaning. What was undisputed in the proceedings was merely the fact that ‘restore’ is translated [into German] as ‘wiederherstellen’. A medical connection cannot, however, be detected in that. The fact that the General Court’s view is based on the dictionary excerpts produced represents a distortion of the evidence. Those excerpts show that ‘restore’ does not have any medical meaning per se, but that it is a multifaceted concept that can be understood in a variety of ways, depending on the context. That meaning cannot therefore be regarded as a matter of common knowledge and thus as a fact that, exceptionally, does not need to be proved.

wiederherstellen

per se

| 2. | Second, the appellant alleges infringement of Article 7(1)(c) of Regulation No 207/2009. The General Court erred in law in classifying the trade mark RESTORE as a purely descriptive indication. In order for Article 7(1)(c) of Regulation No 207/2009 to be applied, the sign applied for must be able to serve, in trade, ‘to designate’ the kind etc. of goods. According to the case-law of the Court of Justice, the descriptive statement must be obvious from the sign applied for and the word itself must be descriptive. That is the case in this instance.
  The verb ‘restore’ does not in itself provide any indication of the kind, quality or intended purpose of the goods in respect of which registration is sought. The verb ‘restore’ acquires a descriptive function only in constructions that include one or more nouns (for example, ‘restore one’s health’). In so far as the assumption is made that a medical connection arises from the circumstances, that is insufficient, according to the case-law of the Court of Justice, as that would require a transfer on the part of the public, in the sense of an effort of interpretation. A meaning associated with medicine can arise only if words such as ‘health’ are added, which are precisely what are missing in this case. Instead of examining the trade mark applied for (RESTORE) both the Board of Appeal and the General Court examined a trade mark RESTORE SOMEONE’S HEALTH. |
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2.

Second, the appellant alleges infringement of Article 7(1)(c) of Regulation No 207/2009. The General Court erred in law in classifying the trade mark RESTORE as a purely descriptive indication. In order for Article 7(1)(c) of Regulation No 207/2009 to be applied, the sign applied for must be able to serve, in trade, ‘to designate’ the kind etc. of goods. According to the case-law of the Court of Justice, the descriptive statement must be obvious from the sign applied for and the word itself must be descriptive. That is the case in this instance.

The verb ‘restore’ does not in itself provide any indication of the kind, quality or intended purpose of the goods in respect of which registration is sought. The verb ‘restore’ acquires a descriptive function only in constructions that include one or more nouns (for example, ‘restore one’s health’). In so far as the assumption is made that a medical connection arises from the circumstances, that is insufficient, according to the case-law of the Court of Justice, as that would require a transfer on the part of the public, in the sense of an effort of interpretation. A meaning associated with medicine can arise only if words such as ‘health’ are added, which are precisely what are missing in this case. Instead of examining the trade mark applied for (RESTORE) both the Board of Appeal and the General Court examined a trade mark RESTORE SOMEONE’S HEALTH.

| 3. | Third, the appellant alleges infringement of Article 7(1)(b) of Regulation No 207/2009. The Board of Appeal classified the trade mark RESTORE as a sign devoid of any distinctive character, in disregard of the appropriate legal criterion, and thus erred in law by refusing to register the trade mark. According to the appellant, the Board of Appeal and the General Court also took the view that the RESTORE trade mark applied for was devoid of any distinctive character on the grounds of its allegedly descriptive nature. This has already been countered in the submissions made in relation to the second ground of appeal.
  Nor can the judgment be justified on the alternative grounds that concern the lack of any distinctive character (paragraphs 52 to 54 of the judgment). The considerations are a tautological reiteration of the argument that a descriptive trade mark is always devoid of distinctive character. The fact that the public does not expect to find a functional description — even in the form of a single word — on a medical product also suggests the absence of any descriptive character. |
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3.

Third, the appellant alleges infringement of Article 7(1)(b) of Regulation No 207/2009. The Board of Appeal classified the trade mark RESTORE as a sign devoid of any distinctive character, in disregard of the appropriate legal criterion, and thus erred in law by refusing to register the trade mark. According to the appellant, the Board of Appeal and the General Court also took the view that the RESTORE trade mark applied for was devoid of any distinctive character on the grounds of its allegedly descriptive nature. This has already been countered in the submissions made in relation to the second ground of appeal.

Nor can the judgment be justified on the alternative grounds that concern the lack of any distinctive character (paragraphs 52 to 54 of the judgment). The considerations are a tautological reiteration of the argument that a descriptive trade mark is always devoid of distinctive character. The fact that the public does not expect to find a functional description — even in the form of a single word — on a medical product also suggests the absence of any descriptive character.

| 4. | Fourth, the appellant alleges infringement of the second sentence of Article 75 of Regulation No 207/2009. The Board of Appeal’s decision was based, in essence, on dictionary excerpts to which the appellant did not have access and in respect of which the appellant consequently could not be heard. That represents an infringement of the right to a fair hearing, since, according to the case-law of the Court of Justice, a decision may be based only on matters on which the parties have had an opportunity to present their comments. However, according to the case-law of the Court of Justice, the Board of Appeal is under an obligation to communicate, for the purposes of the presentation of comments, those facts which it has assembled of its own motion and which it intends to use as a basis for its decision. In that regard the Board of Appeal failed in one essential respect as far as the proceedings were concerned to produce the dictionary excerpts it had obtained, and thus infringed the right to a fair hearing. |
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4.

Fourth, the appellant alleges infringement of the second sentence of Article 75 of Regulation No 207/2009. The Board of Appeal’s decision was based, in essence, on dictionary excerpts to which the appellant did not have access and in respect of which the appellant consequently could not be heard. That represents an infringement of the right to a fair hearing, since, according to the case-law of the Court of Justice, a decision may be based only on matters on which the parties have had an opportunity to present their comments. However, according to the case-law of the Court of Justice, the Board of Appeal is under an obligation to communicate, for the purposes of the presentation of comments, those facts which it has assembled of its own motion and which it intends to use as a basis for its decision. In that regard the Board of Appeal failed in one essential respect as far as the proceedings were concerned to produce the dictionary excerpts it had obtained, and thus infringed the right to a fair hearing.

| 5. | Fifth, the appellant alleges breach of the principle of equal treatment. The Board of Appeal disregarded the case-law of the Court of Justice in failing to take into account the existence of earlier registrations and thus its own practice in relation to registration. The appellant does not deny in that regard that that principle is subject to the principle of legality. The mere reference to that principle is not, however, sufficient to override the principle of equal treatment. Instead, it should have been specifically explained why it should be assumed that those earlier registrations were unlawful per se. |
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5.

Fifth, the appellant alleges breach of the principle of equal treatment. The Board of Appeal disregarded the case-law of the Court of Justice in failing to take into account the existence of earlier registrations and thus its own practice in relation to registration. The appellant does not deny in that regard that that principle is subject to the principle of legality. The mere reference to that principle is not, however, sufficient to override the principle of equal treatment. Instead, it should have been specifically explained why it should be assumed that those earlier registrations were unlawful per se.

per se

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