Case C-500/01: Action brought on 21 December 2001 by the Commission of the European Communities against the Kingdom of Spain
Date: 2002-03-02
Institutions: Court of Justice
Subjects: European Commission, Spain, action for failure to fulfil an obligation, competition law, liberalisation of the market, telecommunications

2.3.2002

EN

Official Journal of the European Communities

C 56/9

Pleas in law and main arguments

— Infringement of Article 7(1)(c) of Council Regulation No
40/94 in respect of goods classed as ‘dolls to play with’:
the contested judgment does not take sufficient account
of the difference between indications of origin (valid
marks) and those of a purely informative nature (indi-
cations falling within Article 7(1)(c)). The Court of
First Instance erred in law by reducing the scope of
Article 7(1)(c) to the descriptive indication of the product
itself (‘that the sign in question is descriptive of the dolls
themselves’) and by excluding from the scope of that
provision the description of the dolls’ characteristics
(‘descriptive of
In
addition, the Court of First Instance erred in law in
finding that ‘the persons targeted, when making their
purchasing decision, [must] conflate the toy and what it
represents’; this requires a certain causality between the
descriptive indication and the purchasing decision which
has nothing to do with Article 7(1)(c). The Court of First
Instance disregarded the fact that numerous descriptive
indications describe not the kind of product but what it
represents or its content; that is the general position as
regards toys, but it also applies in respect of books and
magazines, video games, etc.

that which the dolls represent’).

— Infringement of Article 7(1)(c) of Council Regulation No
40/94, in so far as concerns ‘accessories for dolls in the
form of playthings’: the Court of First Instance misapplied
the principle of trade-mark law — in itself correct — that
the protectability of a mark is to be considered by
reference to the goods in respect of which the application
is made,
inasmuch as it wrongly analysed the goods
‘accessories for dolls in the form of playthings’ separately
from the rest of the classification. The indication ‘access-
ories for dolls in the form of playthings’ is so manifestly
related to the principal goods — ‘dolls to play with’ —
that it must inevitably share the same fate, in terms of
trade-mark law, as that meted out to those principal
goods.

— Infringement of Article 12 of Council Regulation No
40/94 and of the judgment in BMW v Deenik (2), in so
far as concerns ‘accessories for dolls in the form of
playthings’.

— Infringement of Article 7(1)(b) of Council Regulation No
40/94: since, in the present case, the refusal pursuant to
Article 7(1)(b) on the ground of insufficient distinctive
character was based on the same arguments as those
applying in respect of Article 7(1)(c), it is logical that the
outcome of the present case can only be uniform, i.e. the
opposite of that contained in the contested judgment.

(1) Not yet published in the European Court Reports.
(2) Judgment of the Court of Justice of 23 February 1999 in Case

C-63/1997, [1999] ECR I-925.

Action brought on 21 December 2001 by the Commission
of the European Communities against the Kingdom of
Spain

(Case C-500/01)

(2002/C 56/17)

An action against the Kingdom of Spain was brought before the
Court of Justice of the European Communities on 21 December
2001 by the Commission of the European Communities,
represented by Stefan Rating, of its Legal Service, with an
address for service in Luxembourg at the office of Luis Escobar
Guerrero, of its Legal Service, Wagner Centre, Kirchberg.

The applicant claims that the Court should:

(1) declare that, by failing to comply with the provisions of
Article 4c of Directive 90/388/EEC (1), as amended by
Directive 96/19/EC (2), the Kingdom of Spain has failed
to fulfil its obligations under Article 249 EC;

(2) order the Kingdom of Spain to pay the costs.

Pleas in law and main arguments

The Commission considers that it will not be possible, at least
as regards Telefo´ nica, for subscription charges to be aligned
with costs prior to the beginning of 2003. This results from
the practical limitations imposed by the Spanish system of
maximum price limits, which prevent Telefo´ nica from making
more rapid changes to the amount of the subscription charge.
The Commission further maintains that it can hardly be argued
that a re-balancing spread over a period of some seven years
meets the criterion of maximum possible rapidity laid down
by the directive, and that the re-balancing has proceeded in
parallel with the opening-up to competition of the Spanish
telecommunications market.

(1) Commission Directive 90/388/EEC of 28 June 1990 on compe-
tition in the markets for telecommunications services (OJ L 192
of 24.7.1990, p. 10).

(2) Commission Directive 96/19/EC of 13 March 1996 amending
Directive 90/388/EEC with regard to the implementation of
full competition in telecommunications markets (OJ L 74 of
13.3.1996, p. 13).