# C_2005143EN.01001602.xml

| 11.6.2005 | EN | Official Journal of the European Union | C 143/16 |
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11.6.2005

EN

Official Journal of the European Union

C 143/16

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Appeal brought on 15 March 2005 (fax: 11 March 2005) by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) against the judgment delivered on 12 January 2005 by the Court of First Instance (Third Chamber) in Case T-334/03 between Deutsche Post Euro Express GmbH and the Office for Harmonisation in the Internal Market.

(Case C-121/05 P)

(2005/C 143/24)

Language of the case: German

An appeal against the judgment delivered on 12 January 2005 by the Court of First Instance of the European Communities (Third Chamber) in Case T-334/03 between Deutsche Post Euro Express GmbH and the Office for Harmonisation in the Internal Market was brought before the Court of Justice of the European Communities on 15 March 2005 (fax: 11 March 2005) by the Office for Harmonisation in the Internal Market, represented by A. von Mühlendahl, Vice-President of the Office, and G. Schneider, member of the litigation department in the field of intellectual property.

The appellant claims that the Court should:

| 1. | set aside the judgment of the Court of First Instance (Third Chamber) of 12 January 2005 in Case T-334/03 (1) and dismiss the application; |
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1.

set aside the judgment of the Court of First Instance (Third Chamber) of 12 January 2005 in Case T-334/03 (1) and dismiss the application;

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| 2. | refer the case back to the Court of First Instance. |
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2.

refer the case back to the Court of First Instance.

Pleas in law and main arguments

The Office for Harmonisation in the Internal Market (Trade Marks and Designs) submits the following grounds of appeal against the above-mentioned judgment:

| | As a result of the considerations set out in paragraphs 35 and 36 of the judgment under appeal, the Court of First Instance infringed Article 7(1)(c) of Regulation No 40/94, in so far as it deemed the designation ‘EURO’ to be an indication of the geographical origin of the goods or services, but at the same time ruled that it could only be excluded from registration as a Community trade mark if the geographical origin which is designated by the mark is an ‘essential’ characteristic for the relevant public. This contradicts the clear wording of that article, which excludes from registration indications designating geographical origin without any further qualification. It also follows from Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR II-0000 that all signs or indications which describe the characteristics of goods or services applied for are to be excluded from registration, irrespective of whether those characteristics are ‘essential’. |
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As a result of the considerations set out in paragraphs 35 and 36 of the judgment under appeal, the Court of First Instance infringed Article 7(1)(c) of Regulation No 40/94, in so far as it deemed the designation ‘EURO’ to be an indication of the geographical origin of the goods or services, but at the same time ruled that it could only be excluded from registration as a Community trade mark if the geographical origin which is designated by the mark is an ‘essential’ characteristic for the relevant public. This contradicts the clear wording of that article, which excludes from registration indications designating geographical origin without any further qualification. It also follows from Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR II-0000 that all signs or indications which describe the characteristics of goods or services applied for are to be excluded from registration, irrespective of whether those characteristics are ‘essential’.

Koninklijke KPN Nederland NV

Benelux-Merkenbureau

| | As a result of the considerations set out in paragraphs 36 to 43 of the judgment under appeal, the Court of First Instance infringed Article 7(1)(c) of Regulation No 40/94, in so far as it deemed the designation ‘PREMIUM’ to be an indication of quality, but at the same time refused to apply that provision to that designation. Article 7(1)(c) of Regulation No 40/94 excludes from registration indications of value without any further qualification, since every competitor of the applicant should be entitled to use indications of value without being adversely affected by trademark rights of third parties to such indications. The Court of First Instance's argument (paragraph 39) that designations such as ‘PREMIUM’ fall to be assessed (only) under Article 7(1)(b) of Regulation No 40/94 is mistaken in this case. Since the designation ‘PREMIUM’ already falls within Article 7(1)(c) of Regulation No 40/94 as an indication of quality, there is no need to have further recourse to Article 7(1)(b) of the Regulation. |
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As a result of the considerations set out in paragraphs 36 to 43 of the judgment under appeal, the Court of First Instance infringed Article 7(1)(c) of Regulation No 40/94, in so far as it deemed the designation ‘PREMIUM’ to be an indication of quality, but at the same time refused to apply that provision to that designation. Article 7(1)(c) of Regulation No 40/94 excludes from registration indications of value without any further qualification, since every competitor of the applicant should be entitled to use indications of value without being adversely affected by trademark rights of third parties to such indications. The Court of First Instance's argument (paragraph 39) that designations such as ‘PREMIUM’ fall to be assessed (only) under Article 7(1)(b) of Regulation No 40/94 is mistaken in this case. Since the designation ‘PREMIUM’ already falls within Article 7(1)(c) of Regulation No 40/94 as an indication of quality, there is no need to have further recourse to Article 7(1)(b) of the Regulation.

| | According to the principles laid down in judgments of the Court of Justice, which are referred to in paragraph 44 of the judgment under appeal, descriptive elements of a compound trade mark are also descriptive when considered as a whole, unless it is established that the overall designation, when considered as a whole, has a meaning other than that of its individual components. It is obvious in this case that the designation ‘EUROPREMIUM’ — a combination of the two elements ‘EURO’ and ‘PREMIUM’ which is formed according to the rules of common language usage — does not indicate anything in this connection other than that the goods and services applied for are of European origin and of particular quality. |
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According to the principles laid down in judgments of the Court of Justice, which are referred to in paragraph 44 of the judgment under appeal, descriptive elements of a compound trade mark are also descriptive when considered as a whole, unless it is established that the overall designation, when considered as a whole, has a meaning other than that of its individual components. It is obvious in this case that the designation ‘EUROPREMIUM’ — a combination of the two elements ‘EURO’ and ‘PREMIUM’ which is formed according to the rules of common language usage — does not indicate anything in this connection other than that the goods and services applied for are of European origin and of particular quality.

| | For the reasons set out above, the contested decision is thus based on an infringement of Article 7(1)(c) of Regulation No 40/94 and must therefore be set aside. |
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For the reasons set out above, the contested decision is thus based on an infringement of Article 7(1)(c) of Regulation No 40/94 and must therefore be set aside.

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(1)  OJ C 69, 19.03.2005, p. 14.

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