Case C-456/01 P: Appeal brought on 28 November 2001 by Henkel KGaA against the judgment delivered on 19 September 2001 by the Second Chamber of the Court of First Instance of the European Communities in Case T-335/99, between Henkel KGaA and the Office for Harmonization in the Internal Market (Trade Marks and Designs)
Date: 2002-04-06
Institutions: Court of Justice
Subjects: EU law, European Union Intellectual Property Office, General Court (EU), action for annulment (EU), polishing and scouring preparations, trade mark

C 84/40

EN

Official Journal of the European Communities

6.4.2002

such legislation has been found to be non-compliant. It is
untenable to think that service order No 57/2000 of 4 August
2000 issued by the authority governing harbourmasters is
capable of amending Decree No 347/94 containing the
contested provisions.

In the Commission’s view, the Italian authorities are well aware
of the above considerations, as is clear from the undertaking
given several times — but so far not fulfilled — to make the
necessary amendments to Presidential Decree No 347/94 in
order to bring Italian legislation into line with Community
law.

Appeal brought on 28 November 2001 by Henkel KGaA
against the judgment delivered on 19 September 2001 by
the Second Chamber of the Court of First Instance of
the European Communities in Case T-335/99, between
Henkel KGaA and the Office for Harmonization in the
Internal Market (Trade Marks and Designs)

Pleas in law and main arguments

Infringement of Article 7(1)(b) of Council Regulation No 40/94
on the Community trade mark (2). Contrary to the view of the
Court of First Instance, the mark applied for lacks distinctive
character. At the time of the application, neither the tablet
shape nor the colour combination, and especially the combi-
nation of the two, were typical for a washing powder and they
were certainly not technically necessary.

Contrary to the view taken by the Court of First Instance, there
is no reason why consumers should in principle be regarded
as less attentive when purchasing goods for everyday use;
rather, the opposite is true.

In the alternative: even if the time of registration were decisive,
the possibility cannot be ruled out that the contested trade
mark application could serve to designate the origin of the
goods, since it is prohibited, when considering the list of
goods, to rule out distinctiveness on the grounds that there
may be similarities between the goods. That approach conflates
to an unacceptable degree the issue of registrability with that
of scope of protection, or likelihood of confusion. Even where
a mark is confusingly similar, it is for the proprietor of the
mark having priority to obtain refusal of the earlier mark
under Article 8 of Regulation 40/94.

(Case C-456/01 P)

(2002/C 84/69)

(1) Not yet published in the court reports.
(2) OJ L 11, p. 1.

An appeal against the judgment delivered on 19 September
2001 by the Second Chamber of the Court of First Instance of
the European Communities in Case T-335/99, between Henkel
KGaA and the Office for Harmonization in the Internal Market
(Trade Marks and Designs) (1), was brought before the Court of
the European Communities on 28 November
Justice of
2001 by Henkel KGaA, represented by Rechtsanwälte Holger
Friedrich Wissel and Dr. Christian Osterrieth, Düsseldorf, with
an address for service in Luxembourg.

The applicant claims that the Court should:

— partially annul the judgment of the Court of First Instance
of the European Communities of 19 September 2001 in
Case T-335/999, served on 1 October 2001;

annul the decision of the Third Board of Appeal of the
Office for Harmonisation in the Internal Market of
21 September 1999 in Case R 71/1999-3 relating to
Community trade mark application number 703 231;

— order the Office for Harmonisation in the Internal Market

to pay the costs of the proceedings.

Appeal brought on 28 November 2001 by Henkel KGaA
against the judgment delivered on 19 September 2001 by
the Second Chamber of the Court of First Instance of
the European Communities in Case T-336/99, between
Henkel KGaA and the Office for Harmonization in the
Internal Market (Trade Marks and Designs)

(Case C-457/01 P)

(2002/C 84/70)

An appeal against the judgment delivered on 19 September
2001 by the Second Chamber of the Court of First Instance of
the European Communities in Case T-335/99, between Henkel
KGaA and the Office for Harmonization in the Internal Market
(Trade Marks and Designs) (1), was brought before the Court of
Justice of
the European Communities on 28 November
2001 by Henkel KGaA, represented by Rechtsanwälte Holger
Friedrich Wissel and Dr. Christian Osterrieth, Düsseldorf, with
an address for service in Luxembourg.