Judgment — ECLI:EU:T:2003:267
Date: 2003-10-15
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Registration procedure;Marks devoid of any distinctive character;Other questions of substantive law
Procedure: Action for annulment - unfounded
Origin: Germany

summary, that, since the word OLDENBURGER is not in an abstract sense a generic term designating the goods claimed in the trade mark application, it does not fall within the scope of Article 7(1)(c) of the Regulation. First of all, in this context the fact that the word claimed is not the generic term designating the goods is irrelevant if it is established that it may indicate their origin and, secondly, as OHIM correctly countered, the mark claimed cannot be examined in the abstract; it must be examined by reference to the designated goods. 47. With regard, finally, to the earlier decisions, suffice it to state that it is well-settled first of all that the Community trade mark regime is an autonomous system and secondly, that the legality of decisions of the Boards of Appeal must be assessed solely on the basis of the Regulation, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice of those Boards (Case T-32/00 München v OHIM (electronica) [2000] ECR II-3829, paragraphs 45 to 47, and Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 66). 48. In addition, as the Office argued, the reference to cases relating to geographical names in respect of which it has not been established that they are well-known in the context of the goods concerned cannot be accepted as apposite. 49. Therefore, the applicant's submissions based solely on the existence of registrations made by OHIM or the German Patent Office are not relevant. 50. Furthermore, it must be pointed out that in order to be accepted it is sufficient that one of the grounds for refusal set out in Article 7(1) of the Regulation obtain in part of the Community, which in this case is Germany (see, by analogy, Case T-91/99 Ford Motor v OHIM (OPTIONS) [2000] ECR II-1925, paragraphs 25 to 27). 51. In the light of all the foregoing, the first plea must be rejected. Second plea: infringement of Article 12(b) of the Regulation Arguments of the parties 52. The applicant submits that in cases where there is a risk that registration of the trade mark filed will impede use of the adjective oldenburger, the unambiguous wording of Article 12(b) of the Regulation precludes any such impediment. 53. OHIM considers that the limit on the exclusive right of the proprietor of a registered trade mark set out in Article 12(b) of the Regulation cannot have the effect of rendering trade marks that are otherwise excluded from protection under Article 7(1)(c) of the Regulation registrable after all. 54. Furthermore, OHIM acknowledges that in its judgment in Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, the Court of Justice established a link between Article 7(1) and Article 12 of the Regulation but considers that that link does not mean it can be said that signs which are not capable of protection should be registered. Furthermore the conditions in that case are plainly not satisfied since Oldenburger is not an unusual juxtaposition of words but a commercial designation commonly used to designate goods from Oldenburg. Findings of the Court 55. It must be observed that the purpose of Article 12(b) of the Regulation, in the context of its relationship with Article 7(1)(c), in particular for trade marks which do not fall within the scope of that provision because they are not exclusively descriptive, is to ensure, inter alia, that use of an indication relating to geographical origin, which also forms part of a complex trade mark, does not fall within a prohibition that the proprietor of such a mark is entitled to enforce under Article 9 of the Regulation, where that indication is used in accordance with honest practices in industrial and commercial matters (see, by analogy, Windsurfing Chiemsee, cited above, paragraph 28, and Case T-359/99 DKV v OHIM (EuroHealth) [2001] ECR II-1645, paragraph 28). 56. If it is to apply, therefore, there must be a prior finding that a trade mark has been validly registered and that the proprietor thereof is enforcing his rights. The alleged infringer may then rely on Article 12 of the Regulation as a defence to resist a claim of infringement of the proprietor's rights. 57. Consequently, application of that provision may not be taken into account during the registration procedure. Therefore, given that the trade mark is not registrable, the second plea must also be rejected. Third plea: infringement of Article 38(2) of the Regulation Arguments of the parties 58. The applicant argues that its application could lead to registration if it were accompanied by a disclaimer under Article 38(2) of the Regulation and Rule 11(2) of the Implementing Regulation, stating in material part as follows: The applicant for registration of Community trade mark No 607 895 OLDENBURGER hereby declares, in accordance with Article 38(2) of the Regulation and Rule 11(2) of the Implementing Regulation, that it disclaims any exclusive right in the phonetically identical adjective oldenburger. 59. It takes the view that such a disclaimer would limit the protection afforded to the word OLDENBURGER in capital letters and taken alone. It also points out that it itself uses its OLDENBURGER trade mark alongside the geographical and descriptive indication Oldenburger Butter (or OLDENBURGER BUTTER). 60. The applicant submits that under Article 38(2) of the Regulation, Rule 11(2) of the Implementing Regulation and point 8.13 of the Examination Guidelines of 26 March 1996 (Official Journal of the Office 1996, p. 1347), OHIM should have requested it to supply such a disclaimer. 61. In relation to that plea, OHIM does not see which provision has been infringed. The applicant does not state clearly whether it is relying on an infringement of the right to a hearing or an infringement of Article 38(2) of the Regulation in conjunction with Rule 11 of the Implementing Regulation. Findings of the Court 62. It must be observed that Article 38(2) of the Regulation provides that OHIM may request a statement where the trade mark contains an element that is devoid of distinctive character. 63. In this case, the trade mark application in question comprises one single component. 64. It is therefore sufficient to observe, first of all, that the provisions on disclaimer under Article 38 of the Regulation do not imply that OHIM is bound to request a disclaimer, and, secondly, that such a disclaimer cannot be required if there is no element to which it could relate. The one element of which the trade mark is composed is not in itself eligible for protection, and there are no other components which the applicant could have disclaimed. 65. Consequently, the third plea must be rejected. 66. It follows that the action must be dismissed in its entirety. Costs 67. Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been asked for in the successful party's pleadings. Since the applicant has been unsuccessful, it must be ordered to pay its own costs as well as those incurred by OHIM, in accordance with the form of order sought by OHIM. On those grounds, THE COURT OF FIRST INSTANCE (Fourth Chamber) hereby: 1. Dismisses the application; 2. Orders the applicant to pay the costs. Tiili Mengozzi Vilaras Delivered in open court in Luxembourg on 15 October 2003. H. Jung V. Tiili Registrar President 1: Language of the case: German.