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Appeal brought on 26 January 2005 (fax: 24 January 2005) by August Storck KG against the judgment delivered on 10 November 2004 by the Court of First Instance of the European Communities (Fourth Chamber) in Case T-396/02 August Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-24/05 P)

(2005/C 69/20)

Language of the case: German

An appeal against the judgment delivered on 10 November 2004 by the Court of First Instance of the European Communities (Fourth Chamber) in Case T-396/02 August Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) was brought before the Court of Justice of the European Communities on 26 January 2005 (fax: 24 January 2005) by August Storck KG, represented by Ilse Rohr, Heidi Wrage-Molkenthin and Tim Reher, Rechtsanwälte, CMS Hasche Sigle, Stadthausbrücke 1-3, D-20355 Hamburg.

The appellant claims that the Court should:

Pleas on appeal and main arguments:

1.   Breach of Article 7(1)(b) of Regulation No 40/94

The Court of First Instance erred in law by requiring that the mark applied for must differ substantially from other comparable marks in the relevant product market. The distinctive character of the mark should instead be examined on its own merits, without reference to any similar marks on the market.

The mark applied for possesses inherent distinctiveness. The fact that consumers recognise the mark as a sweet does not prevent it from simultaneously having the function of an indication of trade origin. The colour three-dimensional mark serves as a signal and a recognition factor, especially in cases where the consumer is confronted with a very large choice, as in the confectionery market.

2.   Breach of the first sentence of Article 74(1) of Regulation No 40/94

Contrary to the view of the Court of First Instance, the Office should have examined and explained which similar or identical marks exist on the market – as it claims – if it seeks thereby to justify its refusal to register the mark. The Office may not base its decision on facts which have not been proved and which it merely presumes. If the Office considers it necessary – which the appellant does not – to measure the distinctiveness of the mark against other sweet designs available on the market, it must examine that market situation.

Likewise, the Court of First Instance may not itself rule on facts which have not been examined.

3.   Breach of Article 73 of Regulation No 40/94

In order to justify its finding that the mark applied for is devoid of distinctiveness, the Office relies on similar sweet designs which it claims exist on the market. The appellant has had no opportunity to express a view on those sweet designs allegedly existing on the market, since they have not been produced by the Office.

The appellant's right to a fair hearing has thereby been infringed.

4.   Breach of Article 7(3) of Regulation No 40/94

The objection of the Court of First Instance that the proof of use adduced does not demonstrate the exact use of the mark applied for, since that mark is accompanied by other marks, should be dismissed. By its nature, the three-dimensional mark appears along with other marks. The mark cannot be held to be devoid of distinctive character on the basis of that fact alone.

The dual function of a colour three-dimensional mark consisting of the shape of the product itself does not mean that it is not used as a mark even if, at the same time, it provides information about the design of the product.

In the context of proof of use, account is to be taken of all contact that the consumer has with the mark. The extent to which the consumer encounters the mark before or at the time of making his decision to purchase is not the sole determinant of proof of use. When the mark is noticed at a later point, in particular at the time when the product is consumed, this also contributes to its recognition.

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(1)OJ C 19, 22.1.2005.

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