EN Official Journal of the European Union C 90/19

Appeal brought on 23 February 2009 by Volker Mergel, Klaus Kampfenkel, Burkart Bill and Andreas Herden against the judgment of the Court of First Instance (Second Chamber) delivered on 16 December 2008 in Case T-335/07 Volker Merkel and Others v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-80/09 P)

2009/C 90/29

Language of the case: German

Parties

Appellants: Volker Mergel, Klaus Kampfenkel, Burkart Bill and Andreas Herden (represented by: G.P. Friderichs, Rechtsanwalt)

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

Form of order sought

— set aside the judgment of the Court of First Instance (Second Chamber) of 16 December 2008 in Case T-335/07, which was served upon the appellants by fax on 18 December 2008;

— annul the decision of the Fourth Board of Appeal of OHIM of 25 June 2007 (Case R0299/2007-4);

— order the respondent to pay the costs.

Pleas in law and main arguments

The subject-matter of the proceedings is the question whether the term ‘Patentconsult’ for services in Classes 35, 41 and 42 can benefit from protection as a trade mark. The Court of First Instance considered that the term ‘Patentconsult’ was an indication serving to designate the service at issue in a direct and concrete manner.

The appeal is based on the wrong interpretation and application of Article 7(1)(b) and (c) of Regulation No 40/94.

By its first plea, the appellants claim that the Court committed an error of law in classifying the trade mark at issue as a neologism that was not noticeably different from the sum of its descriptive elements. According to the appellant, the Court found that the mark at issue was not noticeably different on the ground that the mark ‘Patentconsult’ followed the structure commonly used for similar designations such as ‘patent consulting’ or ‘patent consultancy’. However, that classification was wrong, precisely because ‘Patentconsult’ did not follow the common — namely grammatically correct — structure, but diverged from it and accordingly represented a striking neologism that was noticeably different from the mere sum of the elements ‘patent’ and ‘consult’.

By its second plea, the appellant claims that the Court wrongly assessed the exclusively descriptive character of the mark ‘Patentconsult’. The Court considered that, in respect of that descriptive character, it was immaterial whether other terms could be used for the protected services. However, the appellants take the view that it is precisely in order to be able to claim that there is a ‘need to leave free’ (‘Freihaltebedürfnis’), that a term other than ‘Patentconsult’ must be used. It is precisely the grammatically incorrect term ‘Patentconsult’ which is not suitable.

Finally, by its third plea, the appellant claims that the Court was wrong to consider that the respondent’s earlier decision concerning the mark ‘Netmeeting’ and the judgment of the Court of Justice in Case C-383/99 P concerning the mark ‘Baby-dry’ were not relevant. According to the judgment in Case C-383/99 P, a perceptible difference to the terms used in the common parlance of the relevant class of consumers is apt to confer distinctive character. That case-law has to be followed, in order to guarantee consistency and the reliability of decisions of the Community courts.