Case C-326/01 P: Appeal brought on 29 August 2001 (by fax on 27 August 2001) by Telefon & Buch Verlagsgesellschaft mbH, against the judgment delivered on 14 June 2001 by the Fourth Chamber of the Court of First Instance of the European Communities in Joined Cases T-357/99 and T-358/99 between Telefon & Buch VerlagsgmbH and the Office for Harmonisation in the Internat Market (Trade Marks and Designs) (OHIM)
Date: 2001-11-10
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), action for annulment (EU), services company, trade-mark law

C 317/12

EN

Official Journal of the European Communities

10.11.2001

meaning of Article 1(1) of that directive, including the
exercise of the powers referred to in Article 2(1)(c)
thereof, is precluded from dismissing an application by a
tenderer that is indirectly aimed at obtaining damages,
where the contract award procedure is already tainted by
a material legal infringement attributable to a decision
taken by the contracting authority, other than the decision
being contested by that tenderer, on the ground that if
the contested decision had not been taken the tenderer
would none the less have been harmed for other reasons?

If Question 1 is answered in the negative: Is Council
Directive 93/36/EEC (2) of 14 June 1993 coordinating
procedures for the award of public supply contracts, in
particular Articles 15 to 26 thereof, to be interpreted as
prohibiting a public contracting authority conducting
contract award procedures from taking account of refer-
ences relating to the products offered by tenderers not as
proof of the tenderers’ suitability but to satisfy an award
criterion, such that the fact that those references are given
a negative evaluation would not exclude the tenderer
from the contract award procedure but would merely
result in the tender receiving a lower evaluation, for
example under a points system in which a poor evaluation
of references might be offset by a lower price?

If Questions 1 and 3 are answered in the negative: Is it
compatible with the relevant provisions of Community
law, including Article 26 of Directive 93/36/EEC, the
principle of equal treatment and the obligations of the
Communities under international
law for an award
criterion to provide that product references are to be
evaluated on the basis of the number of references alone,
there being no substantive examination as to whether
contracting authorities’ experiences of the product have
been good or bad, and, moreover, that only references
from the geographical area comprising the part of the
Alps within the European Union are to be taken into
account?

Is it compatible — with Community law, in particular
the principle of equal treatment, for an award criterion to
permit opportunities to inspect examples of the subject
of the invitation to tender to receive a positive evaluation
only if available within a 300 kilometre radius of the
authority issuing the invitation to tender?

If Question 3 is answered in the affirmative, or Question 4
or 5 answered in the negative:
Is Article 2(1)(c) of
Directive 89/665/EEC, if necessary considered in conjunc-
tion with other principles of Community law, to be
interpreted as meaning that if the contracting authority’s
infringement consists in imposing an unlawful award
criterion, the tenderer will be entitled to damages only if
he can actually prove that, but for the unlawful award
criterion, he would have submitted the best tender?

3.

4.

5.

6.

(1) OJ 1989 L 395, p. 33.
(2) OJ 1993 L 199, p. 1.

Action brought on 24 August 2001 by Commission of the
European Communities against Italian Republic

(Case C-323/01)

(2001/C 317/20)

An action against the Italian Republic was brought before the
Court of Justice of the European Communities on 24 August
2001 by the Commission of the European Communities,
represented by Richard Wainwright and Roberto Amorosi,
acting as Agents.

The applicant claims that the Court should:

1. Declare that, by failing to adopt and bring into force
within the prescribed period the laws, regulations or
administrative provisions necessary to comply with Com-
mission Directive 98/101/EC (1) of 22 December 1998
to technical progress Council Directive
adapting
91/157/EEC (2) on batteries and accumulators containing
certain dangerous substances, the Italian Republic has
failed to fulfil its obligations under that directive;

2. Order the Italian Republic to pay the costs.

Pleas in law and main arguments

The mandatory nature of the provisions of the third paragraph
of Article 249 and the first paragraph of Article 10 of the EC
Treaty requires Member States to adopt the measures necessary
to transpose directives addressed to them into their domestic
law before the expiry of the period prescribed for doing so.
That period expired on 1 January 2000 without Italy having
brought into force the necessary provisions.

(1) OJ 1999 L 1, p. 1.
(2) OJ 1991 L 78, p. 38.

Appeal brought on 29 August 2001 (by fax on 27 August
2001) by Telefon & Buch Verlagsgesellschaft mbH, against
the judgment delivered on 14 June 2001 by the Fourth
Chamber of the Court of First Instance of the European
Communities in Joined Cases T-357/99 and T-358/99
between Telefon & Buch VerlagsgmbH and the Office for
Harmonisation in the Internat Market (Trade Marks and
Designs) (OHIM)

(Case C-326/01 P)

(2001/C 317/21)

An appeal against the judgment delivered on 14 June 2001 by
the Fourth Chamber of the Court of First Instance of the

10.11.2001

EN

Official Journal of the European Communities

C 317/13

European Communities
in Joined Cases T-357/99 and
T-358/99 between Telefon & Buch VerlagsgmbH and the
Office for Harmonisation in the Internat Market (Trade Marks
and Designs) (OHIM) was brought before the Court of Justice
of the European Communities on 29 August 2001 (by fax on
27 August 2001) by Telefon & Buch VerlagsgmbH, represented
by Dr Hans Georg Zeiner, Zeiner & Zeiner Chambers, Schil-
linggasse 6, A-1010 Vienna.

The appellant claims that the Court should:

1.

2.

3.

set aside the judgment of the Court of First Instance of
14 June 2001 in Joined Cases T-357/99 and T-358/99
Telefon & Buch VerlagsgmbH v Office for Harmonisation
in the Internat Market;

declare that the words UNIVERSALTELEFONBUCH and
UNIVERSALKOMMUNIKATIONSVERZEICHNIS
are
capable of comprising European Community trade marks,
satisfy the requirements of Article 4 of Regulation
No 40/94 and are not merely descriptive within the
meaning of Article 7(1)(c) of that regulation;

refer the case back to the Office for Harmonisation in the
Internat Market for further consideration and decision,
requiring it to follow the view as to the law of the Court
of Justice of the European Communities;

Action brought on 31 August 2001 by the Commission
of the European Communities against Ireland

(Case C-327/01)

(2001/C 317/22)

An action against Ireland was brought before the Court of
Justice of the European Communities on 31 August 2001 by
the Commission of the European Communities, represented
by Mikko Huttunen, acting as agent, with an address for
service in Luxembourg.

The Applicant claims that the Court should:

(1) declare that by. failing to adopt the laws, regulations
or administrative provisions necessary to comply with
Council Directive 98/20/EC (1) of 30 March 1998
amending Directive 92/14/EEC (2) on the limitation of the
operation of aeroplanes covered by Part II, Chapter 2,
Volume 1 of Annex 16 to the Convention on Inter-
national Civil Aviation, second edition (1988) or, in any
event, by failing to inform the Commission of those
measures, Ireland has failed to fulfil its obligations under
that Directive;

(2) order Ireland to pay the costs.

4.

order the Office for Harmonisation in the Internat Market
to pay the costs of these proceedings.

Pleas in law and main arguments

Pleas in law and main arguments

The pleas in law and main arguments are analogous to those
in Case C-323/01 (3); the time-limit for transposition expired
on 1 March 1999.

to a requirement of availability.

Article 7(1)(c) of Council Regulation (EC) No 40/94 of
20 December 1993 on the Community trade mark (1) has been
infringed because it was interpreted too broadly and therefore
incorrectly: the neologisms at issue here, acknowledged by the
Court of First Instance as such, cannot be signs which are
subject
It would be an
interference with the creativity of economic operators to
reserve for commercial dealings words which have not yet
been used, or have not yet been used for certain goods or
services, and therefore clearly are also not needed for such
dealings; that appears untenable on the basis of Regulation
No 40/94. If the ground for excluding protection, contained
in Article 7(1)(c) of Regulation No 40/94, were interpreted as
broadly as the Court of First Instance has interpreted it in the
contested judgment, Article 12(b) of that regulation would be
superfluous.

(1) OJ L 11, 14.1.1994, p. 1.

(1) OJ L 107, 7.4.1998, p. 4.
(2) OJ L 76, 23.3.1992, p. 21.
(3) See page 12 of this Official Journal.

Action brought on 31 August 2001 by the Commission
of the European Communities against Ireland

(Case C-328/01)

(2001/C 317/23)

An action against Ireland was brought before the Court of
Justice of the European Communities on 31 August 2001 by
the Commission of the European Communities, represented
by Mikko Huttunen, acting as agent, with an address for
service in Luxembourg.