Case T-224/01: Action brought on 24 September 2001 by Houghton Durferrit GmbH against the Office for Harmonisation in the Internal Market
Date: 2002-01-05
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), brand name, chemical industry, industrial property

5.1.2002

EN

Official Journal of the European Communities

C 3/33

Pleas in law and main arguments

Action brought on 24 September 2001 by Houghton
Durferrit GmbH against the Office for Harmonisation in
the Internal Market

The Applicants are the owner and the licensee of the trade
mark ‘MILD SEVEN’, used as a cigarette brand worldwide and
protected as intellectual property. The Applicants fear that the
prohibition, against using descriptors indicating that a tobacco
product is less harmful than others, contained in Article 7 of
Directive 2001/37, will deprive the Applicants of the possi-
bility of marketing their brand ‘MILD SEVEN’ in the European
Union.

In support of their application, the Applicants claim that there
is no sufficient legal basis for the adaptation of Article 7 of the
Directive. The Directive in question is based on Articles 95
and 133 of the EC Treaty. Neither of them provides, according
to the Applicants, a sufficient basis for Article 7 of this
Directive. Article 133 does not apply since the common
commercial policy has no relevance to Article 7. Article 95 EC
Treaty does not provide a legal basis either since there is no
need to harmonise legislation on this point for the establish-
ment of the internal market. According to the Applicants,
there is no barrier to trade that needs to be removed. Further,
the Applicants claim that Article 7 of the Directive violates
Article 152(4)(c) EC Treaty. According to the Applicants,
Article 95 EC Treaty is being used as a legal basis for the
circumvention of the prohibition contained in Article 152(4)(c)
EC Treaty to harmonise legislation designed to protect and
improve human health.

The Applicants also claim that Article 7 of the Directive
violates their right to property and the principle of pro-
portionality since it would deprive the Applicants of the use
of their trade mark in the European market. According to the
Applicants, Article 7 is not an appropriate means by which to
attain the objective of this Article, which is to promote health
and consumer protection. The Applicants claim that the use
of descriptors provides the consumer with information that
allows him to choose to smoke cigarettes with a lower tar and
nicotine content. Article 7 is in any event not the least
restrictive method, since provision could have been made for
the protection of existing trade marks.

The Applicants claim further that Article 7 of the Directive
violates the principle of equal treatment. The Applicants make
clear that they are the only tobacco producers in the European
Union who would be deprived of the use of a brand as a
consequence of Article 7 of the Directive.

Finally, the Applicants submit that the grounds upon which
Article 7 of the Directive is based are insufficient.

(Case T-224/01)

(2002/C 3/58)

(Language of the case: English)

An action against the Office for Harmonisation in the Internal
Market was brought before the Court of First Instance of the
European Communities on 24 September 2001 by Houghton
Durferrit GmbH, represented by Ms Patricia Koch Moreno of
Madrid (Spain). Kolone Corporation was also a party to the
proceedings before the Board of Appeal

The applicant claims that the Court should:

— declare invalid the Decision no. 949/1999 dated 15 Octo-
ber 1999 of the Opposition Division of the Office for
Harmonisation in the Internal Market
in opposition
procedure B4905, and the decision of the First Board of
Appeal dated 6 July 2001 that dismissed the remedy
of Appeal filed by the applicant against the previous
resolution

— declare incompatible the Community trade mark filed by
Kolene Corporation, no. 40.568 NU-TRIDE, in classes 1
and 40, on the grounds of its incompatibility with the
earlier
applicant,
belonging
no. 764.560, in classes 1, 7 and 11

trade mark

to the

— refuse the registration of Community trade mark

no. 40.568 NU-TRIDE in classes 1 and 40

— order payment of the costs of these proceedings by
the holder of the foregoing Community trade mark
application, Kolene Corporation.

Pleas in law and main arguments

Applicant for the Com-
munity trade mark:

Kolone Corporation

Verbal mark
‘NU-TRIDE’ —
Application no. 40.568, relating
to goods in classes 1 and 40
(chemicals for use in the treatment
of metals and metal treatment)

The Applicant

The Community trade
mark concerned:

Proprietor of the right to
the trade mark or sign
asserted by way of oppo-
sition in the opposition
proceedings:

C 3/34

EN

Official Journal of the European Communities

5.1.2002

Registered German trade mark
‘TUFFTRIDE’ in classes 1, 7 and 11

by the authorities in the USA had ended inter alia with the
imposition of a fine on the applicant.

Trade mark or
sign
asserted by way of oppo-
sition in the opposition
proceedings:

Decision of the Oppo-
sition Division:

rejection of the Opposition

Decision of the Board of
Appeal:

rejection of the Appeal by the
applicant

Grounds of claim:

Articles 8(1)(b) and 7(1)(f) of
Regulation (EC) no. 40/94 (1)

(1) Council Regulation (EC) No 40/94 of 20 December 1993 on the

Community trade mark (OJ L 11, p. 1).

Action brought on 2 October 2001 by SGL Carbon AG
against the Commission of the European Communities

(Case T-239/01)

(2002/C 3/59)

(Language of the case: German)

An action against the Commission of the European Communi-
ties was brought before the Court of First Instance of the
European Communities on 2 October 2001 by SGL Carbon
AG, Wiesbaden (Germany), represented by M. Klusmann,
F. Wiemer and C. Canenbley, lawyers.

The applicant claims that the Court should:

— annul decision C(2001) 1986 final of 18 July 2001;

— in the alternative, reduce appropriately the amount of the
fine imposed on the applicant in the contested decision;

— order the defendant to pay the costs of the proceedings.

In response to the statement of objections the applicant stated
to the defendant that it expressly did not contest the facts set
out by the defendant. At the same time it submitted that the
fine imposed in the USA should be credited when the
defendant calculated the fines or at least be appropriately taken
into account.

the
In the contested decision the defendant alleged that
applicant had participated in a cartel and, when it calculated
the fine, assumed that there was a world market in graphite
electrodes. A fine of Euro 80,2 million was imposed on the
applicant.

The applicant contests the decision has a whole in law. It
submits that the defendant did not take into account the
fact that the applicant had already been penalised in other
jurisdictions for the same act. In particular, it gave no credit at
all for the fines already imposed in other States and did not
take account of the applicability of the rule against double
punishment (‘ne bis im idem’). As a separate matter, the
infringed Article 253 EC and Article 15(2) of
defendant
Regulation No 17/62 because it wrongly calculated the fine in
the light of the application of the guidelines on the method of
setting fines (1) and the notice on the non-imposition or
infringed central
reduction of
principles of equal treatment and proportionality and commit-
ted errors of law and of assessment to the detriment of the
applicant at each stage of calculating the fine. Moreover, the
defendant misassessed inter alia the extent of the applicant’s
cooperation.

fines in cartel cases (2).

It

(1) OJ C 9 of 14.1.1998,p. 3.
(2) OJ C 207 of 18.7.1996, p. 4.

Action brought on 3 October 2001 by Rica Foods (Free
Zone) N.V. against the Commission of the European
Communities

(Case T-242/01)

(2002/C 3/60)

Pleas in law and main arguments

(Language of the case: Dutch)

The applicant manufactures various carbon and graphite
products, including graphite electrodes. In the course of a
procedure seeking information under Article 11 of Regulation
No 17/62 concerning suspected anti-competitive agreements
between undertakings on the market for graphite electrodes,
the applicant stated to the defendant that it was willing to
cooperate in the investigation of the case. A similar procedure

An action against the Commission of the European Communi-
ties was brought before the Court of First Instance of the
European Communities on 3 October 2001 by Rica Foods
(Free Zone) N.V., established in Oranjestad (Aruba), represent-
ed by G. van der Wal, with an address for service in
Luxembourg.