Case C-107/03 P: Appeal brought on 27 February 2003 by fax, confirmed by the original lodged on 7 March 2003, by The Procter & Gamble Company against the judgment delivered on 12 December 2002 by the Fourth Chamber of the Court of First Instance of the European Communities in Case T-63/01 between The Procter & Gamble Company and the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
Date: 2003-06-21
Institutions: Court of Justice
Subjects: European Union Intellectual Property Office, action for annulment (EU), trade mark, trade-mark law

21.6.2003

EN

Official Journal of the European Union

C 146/17

The appellant claims that the Court should:

— set aside the judgment of the Court of First Instance of
12 December 2002 in Case T-110/01 and accordingly

— acting pursuant to Article 54 of the Statute of the
Court of Justice, give final judgment in the matter,
granting the forms of order sought by the applicant
before the Court of First Instance;

— in the alternative: refer the case back to the Court of

First Instance for judgment;

In addition, the Court of First Instance did not apply the
interdependence rule clearly. The Court of First Instance
did not raise the point that the claimed low degree of
similarity between the marks was not offset by the high
degree of similarity between the goods and the strongly
distinctive character of the applicant’s trade mark.

Finally, the Court of First Instance infringed the concept
of ‘likelihood of confusion’ by limiting the public con-
cerned to the ‘targeted public’, the latter comprising only
consumers likely to acquire the marked goods, whereas
the public concerned consists of all persons likely to be
confronted with the mark, which is very different.

— in any case: order OHIM to pay the costs.

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

Community trade mark (OJ L 11, 14.1.1994, p. 1).

Pleas in law and main arguments

— Plea alleging breach of the ‘principle of party disposition’

The ‘principle of party disposition’ is a general principle
of law under which the parties exercise, in principle, sole
control over legal proceedings. It is they who delimit the
subject-matter of the dispute. The Court of First Instance
the ‘principle of party
certainly acted in breach of
disposition’ by holding, contrary to the agreement of the
parties on this point, that there was no similarity between
the conflicting trade marks.

— Plea alleging breach of the right to a fair hearing

The Court of First Instance also acted in breach of the
right to a fair hearing since it undermined the applicant’s
legitimate expectation as to the delimitation of
the
dispute.

— Plea alleging infringements of the concept of ‘likelihood
of confusion’ and the concept of ‘public’ within the
meaning of Article 8(1)(b) of Regulation No 40/94 (1)

the likelihood of
The contested judgment rules out
confusion on the ground that the public ‘will not
attribute the same commercial origin to the goods in
question’. However, a likelihood of confusion also exists
where the public may believe that the goods come from
connected only economi-
undertakings which are
cally. Moreover, the Court of First Instance rejected any
likelihood of confusion on the ground that ‘even though
there is identity and similarity between the goods covered
by the conflicting marks, the visual, aural and conceptual
differences between the signs’ mean that there is no
likelihood of confusion, whereas the question is not
whether there are differences between the conflicting
marks, but whether there is identity or similarity between
them and whether, considered as a whole with the
identity or similarity of the goods, the degrees of those
similarities are such that there is a likelihood of confusion.

Appeal brought on 27 February 2003 by fax, confirmed
by the original lodged on 7 March 2003, by The Procter
& Gamble Company against the judgment delivered on
12 December 2002 by the Fourth Chamber of the Court
of First Instance of the European Communities in Case
T-63/01 between The Procter & Gamble Company and
the Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)

(Case C-107/03 P)

(2003/C 146/29)

An appeal against the judgment delivered on 12 December
2002 by the Fourth Chamber of the Court of First Instance of
the European Communities in Case T-63/01 between The
Procter & Gamble Company and the Office for Harmonisation
in the Internal Market (Trade Marks and Designs) (OHIM)
was brought before the Court of Justice of the European
Communities on 27 February 2003 by fax, confirmed by the
original lodged on 7 March 2003, by The Procter & Gamble
Company.

The appellant claims that the Court should:

— set aside the judgment of the Court of First Instance of
12 December 2002 in Case T-63/01 and, in consequence
thereof,

— primarily: apply Article 54 of the Statute of the
Court of Justice and give final judgment in the
matter, upholding the form of order sought by the
appellant before the Court of First Instance;

C 146/18

EN

Official Journal of the European Union

21.6.2003

— in the alternative: refer the case back to the Court of

First Instance for judgment;

— in any event: order OHIM to pay the costs.

Reference for a preliminary ruling by the College van
Beroep voor het bedrijfsleven by judgment of that Court
of 8 January 2003 in the case of KPN Telecom B.V. against
Onafhankelijke Post en Telecommunicatie Autoriteit;
Interested parties: Denda Multimedia B.V. and Denda
Directory Services B.V.

Pleas in law and main arguments

— Plea alleging breach of the presumption that documents
may be relied on or inconsistency in the grounds of the
judgment:

Contrary to what the Court of First Instance states, the
sign reproduced does not present any of the 24 rectangles
or any of the six parallelograms of which a rectangular
parallelepiped consists.

— Plea alleging misconstruction of the concept of distinctive

character:

it

When it is necessary to determine whether a sign is
capable of fulfilling its function as an individual mark
for specific goods or services, when the merits of an
application for registration as an individual mark for
those goods and services are being examined,
is
necessary to reason in terms of the presumed perception
of the use which might be made of the sign and not in
terms of the actual perception of any actual use already
made of the sign. The Court of First Instance maintains
that the distinctive character of the sign must be assessed
in relation ‘to the perception of the relevant public’. In
that regard, the relevant public consists of all persons
likely to find themselves in the presence of the sign and
cannot therefore be reduced to the much more restricted
circle of consumers likely to acquire the goods or services
which the sign is supposed to designate.

Furthermore, the Court of First Instance indirectly but
definitely misconstrued the concept of distinctive charac-
ter when it failed to rule on whether or not the sign was
incapable of distinguishing one bar of soap from another
as coming from a specific undertaking, but rather whether
the imperfect picture of that sign had such capacity.

Instance misunderstood the
Last, the Court of First
concept of distinctive character by completely disre-
garding the multifunctionality of signs. It is not because
it might be presumed that, in the presence of the sign in
issue, the public will perceive above all or primarily a sign
that fulfils a technical or ornamental function that the
performance of its function as an individual trade mark
would be precluded or even reduced.

(Case C-109/03)

(2003/C 146/30)

Reference has been made to the Court of
Justice of the
European Communities by order of the College van Beroep
voor het bedrijfsleven (Administrative Court for Trade and
Industry) of 8 January 2003, received at the Court Registry on
10 March 2003, for a preliminary ruling in the case of KPN
Telecom B.V. against Onafhankelijke Post en Telecommunica-
tie Autoriteit; Interested parties: Denda Multimedia B.V. and
Denda Directory Services B.V. on the following questions:

1.

Is ‘relevant information’ in Article 6(3) of Directive 98/
10/EC (1) to be interpreted as meaning only the numbers
together with the name, address, town/city and postcode
of the person to whom the number has been issued and
any entry as to whether the number is used (exclusively)
as a fax line published by the organisations concerned or
does ‘relevant information’ also cover other data at the
disposal of
the organisations such as an additional
entry relating to a profession, another name, another
municipality or mobile telephone numbers?

2.

Is ‘meet (...) reasonable requests (...) on terms which
are fair, cost oriented and non-discriminatory’
in the
provision referred in Question 1 to be interpreted as
meaning that:

a)

b)

numbers together with the name, address, town/city
and postcode of the person to whom the number
has been issued must be made available for a
remuneration of only the marginal costs involved in
actually making them available, and

data other than those referred to in paragraph (a)
must be made available for a remuneration intended
to cover the costs of what the provider of these data
shows he has incurred in obtaining or providing
these data?

(1) OJ L 101 [1998], p. 24.