EN Official Journal of the European Union C 69/19

Appeal brought on 16 December 2008 by Powerserv Personalservice GmbH, formerly Manpower Personalservice GmbH, against the judgment of the Court of First Instance (Fifth Chamber) delivered on 15 October 2008 in Case T-405/05 Powerserv Personalservice GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-553/08 P)

(2009/C 69/35)

Language of the case: German

Parties

Appellant: Powerserv Personalservice GmbH, formerly Manpower Personalservice GmbH (represented by: B. Kuchar, Rechtsanwältin)

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Form of order sought

— Set aside the judgment under appeal of the Court of First Instance of 15 October 2008 in Case T-405/05 and declare Community trade mark No 76059 invalid in respect of all goods and services;

— set aside the judgment under appeal of the Court of First Instance of 15 October 2008 in Case T-405/05 inasmuch as it relates to the failure to prove the acquired distinctive character of Community trade mark No 76059, and refer the case back to the Court of First Instance;

— in any event, order OHIM and the proprietor of the Community trade mark to bear their own costs and to pay the appellant's costs as regards the proceedings before the Board of Appeal of OHIM, the Court of First Instance and the Court of Justice.

Pleas in law and main arguments

This appeal is brought against the judgment of the Court of First Instance dismissing the appellant's action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (‘OHIM’) of 22 July 2005 relating to a declaration of invalidity of the Community trade mark ‘MANPOWER’. The Court of First Instance decided that the Community trade mark ‘MANPOWER’ is descriptive of the designated goods and services only in the United Kingdom, Ireland, Germany and Austria and supports the decision of the Board of Appeal that the mark in question has acquired distinctive character through use in those Member States in which it is descriptive.

The grounds of appeal relied upon are the infringement of Article 51(1)(a) and Article 51(2) in conjunction with Article 7(1)(c) and Article 7(3) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark.

Contrary to the view taken by the Court of First Instance, the ‘MANPOWER’ sign is, as the Board of Appeal of OHIM correctly determined, descriptive also in the Netherlands, Sweden, Denmark and Finland, as well as in all other Member States belonging to the Community before 1 May 2004. If the Court had acknowledged the fact that, according to European Commission figures, 47 % of relevant persons in the Community speak English, it would have had to conclude that the word mark ‘MANPOWER’ is descriptive not only in Germany and Austria but also in other EU States, in particular in the Netherlands, Sweden, Finland and Denmark. In respect of the other States belonging to the Community before 1 May 2004 also, the Court failed to recognise that, as a result of compulsory education in each of those Member States, the relevant section of the population has sufficient knowledge of English to be able to comprehend the meaning of basic vocabulary, such as the words ‘MAN’ and ‘POWER’, and thus also to recognise that the word ‘MANPOWER’ is descriptive of the goods and services of the trade mark proprietor. However, not only does the Court fail to give any reasons for declining to attribute even a basic knowledge of the English language to people outside the United Kingdom and Ireland, but it even contradicts its own case-law to date, according to which the population outside the United Kingdom and Ireland is acknowledged to have a certain basic knowledge of the English language in connection with the perception of a mark.

In connection with proof of distinctive character acquired through use, the Court erred in law in so far as it extended the relevant public by comparison with the decision of the Board of Appeal without reassessing the evidence submitted in respect of distinctive character acquired. Even if the Court is deemed to have decided correctly that proof of reputation was required to be submitted only in relation to the United Kingdom, Ireland, Germany and Austria, it should, in view of the extended public, have annulled the decision of the Board of Appeal in that respect and referred the case back to the Board of Appeal. The Court also erred in law in confirming the Board of Appeal's view regarding a spillover effect from the United Kingdom to Ireland so far as concerns any reputation of the mark at issue, even though no assumption can be made as to the spillover of the reputation of a mark from one Member State to another or from one product or service to another.