# C_2004106EN.01002101.xml

| 30.4.2004 | EN | Official Journal of the European Union | C 106/21 |
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30.4.2004

EN

Official Journal of the European Union

C 106/21

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Appeal brought on 20 February 2004 (fax: 18 February 2004) by Audi AG against the judgment delivered on 3 December 2003 by the Second Chamber of the Court of First Instance of the European Communities in Case T-16/02 between Audi AG and the Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-82/04 P)

(2004/C 106/38)

An appeal against the judgment delivered on 3 December 2003 by the Second Chamber of the Court of First Instance of the European Communities in Case T-16/02 between Audi AG and the Office for Harmonisation in the Internal Market (Trade Marks and Designs) was brought before the Court of Justice of the European Communities on 20 February 2004 (fax: 18 February 2004) by Audi AG, represented by Rechtsanwälte Preu Bohlig & Partner, Leopoldstr. 11a, D-80802 Munich.

The appellant claims that the Court should:

| 1. | annul the judgment of the Court of First Instance of 3 December 2003 in Case T-16/02 (1) insofar as the action was dismissed and the appellant ordered to pay the costs; |
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1.

annul the judgment of the Court of First Instance of 3 December 2003 in Case T-16/02 (1) insofar as the action was dismissed and the appellant ordered to pay the costs;

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| 2. | annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 8 November 2001 in Case R 652/2001-1; |
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2.

annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 8 November 2001 in Case R 652/2001-1;

| 3. | order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to pay the costs of the proceedings at both instances. |
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3.

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

Pleas in law and main arguments:

Infringement of Community law in the application of the provisions of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (2) and Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark: (3)

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| — | The judgment under appeal is based on a misapplication of Article 7(1)(c) of Regulation No 40/94. It is founded on the finding made at the previous instances that the combination of letters ‘TDI’ stands for ‘Turbo Diesel Injection’ or ‘Turbo Direct Injection’. That finding is inconsistent with the substantive provisions of Article 7(1)(c) and was made in breach of the relevant procedural principles. Neither at the previous instances nor in the judgment under appeal were any statements made or reasons given as to where and how ‘TDI’ is used in normal language. The findings as to what terms the relevant public imagines the combination of letters ‘TDI’ to stand for and thus associate with the sign ‘TDI’ remain pure speculation. In the present case, no specific association in the minds of the relevant public between the sign ‘TDI’ and the goods/services in question can be identified. Therefore, the conclusion that registration of the sign ‘TDI’ is precluded by the ground for refusal in Article 7(1)(c) of Regulation No 40/94 constitutes an error in law. |
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The judgment under appeal is based on a misapplication of Article 7(1)(c) of Regulation No 40/94. It is founded on the finding made at the previous instances that the combination of letters ‘TDI’ stands for ‘Turbo Diesel Injection’ or ‘Turbo Direct Injection’. That finding is inconsistent with the substantive provisions of Article 7(1)(c) and was made in breach of the relevant procedural principles. Neither at the previous instances nor in the judgment under appeal were any statements made or reasons given as to where and how ‘TDI’ is used in normal language. The findings as to what terms the relevant public imagines the combination of letters ‘TDI’ to stand for and thus associate with the sign ‘TDI’ remain pure speculation. In the present case, no specific association in the minds of the relevant public between the sign ‘TDI’ and the goods/services in question can be identified. Therefore, the conclusion that registration of the sign ‘TDI’ is precluded by the ground for refusal in Article 7(1)(c) of Regulation No 40/94 constitutes an error in law.

| — | The reasons given by the Court of First Instance in the judgment under appeal with respect to the appellant's complaint that the refusal to register the mark TDI infringes Article 7(3) of Regulation No 40/94 likewise constitute errors in law. No reasons are given with respect to the assessment of the degree of market acceptance. There is also a lack of reasoning in the judgment under appeal insofar as it is claimed in general terms that the facts found are insufficient to prove that the mark sought has become distinctive as a result of use in the Member States other than Germany. At no point in the judgment is that claim substantiated. |
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The reasons given by the Court of First Instance in the judgment under appeal with respect to the appellant's complaint that the refusal to register the mark TDI infringes Article 7(3) of Regulation No 40/94 likewise constitute errors in law. No reasons are given with respect to the assessment of the degree of market acceptance. There is also a lack of reasoning in the judgment under appeal insofar as it is claimed in general terms that the facts found are insufficient to prove that the mark sought has become distinctive as a result of use in the Member States other than Germany. At no point in the judgment is that claim substantiated.

| — | The judgment under appeal and the decisions of OHIM on which it is based infringe the principle of ex proprio motu investigation and the principle derived therefrom that the question whether there are grounds for refusing an application for registration is to be determined on the basis of an examination of the specific circumstances of the individual case. The applicable principle of ex proprio motu investigation entails an obligation of the authority to determine how a word mark will be understood by the relevant public and to substantiate its finding by reference to the specific circumstances of the case. In the present case, that principle has been infringed to the detriment of the appellant. |
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The judgment under appeal and the decisions of OHIM on which it is based infringe the principle of ex proprio motu investigation and the principle derived therefrom that the question whether there are grounds for refusing an application for registration is to be determined on the basis of an examination of the specific circumstances of the individual case. The applicable principle of ex proprio motu investigation entails an obligation of the authority to determine how a word mark will be understood by the relevant public and to substantiate its finding by reference to the specific circumstances of the case. In the present case, that principle has been infringed to the detriment of the appellant.

ex proprio motu

ex proprio motu

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(1)  Not yet published in the European Court Reports.

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(2)  OJ 1994 L 11, p. 1.

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(3)  OJ 1995 L 303, p. 1.

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