Case T-257/03: Action brought on 15 July 2003 by Internet Photonics, Inc against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
Date: 2003-10-04
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), computer equipment, software, trade-mark law

4.10.2003

EN

Official Journal of the European Union

C 239/21

Some of these documents became the object of a disagreement
between the applicants and the Commission. According to the
the seizure and handling of these documents
applicants,
violate the general principle of legal professional privilege as
recognized under European Community Law.

In Commission Decision C(2003)1533 regarding a claim of
legal privilege in the context of an investigation pursuant to
Article 14(3) of Council Regulation No 17 in Case No COMP/
E-1/38.589 the Commission firstly rejected the applicants’
request to return or destroy all copies of the documents in
dispute and secondly,
indicated it will proceed to join all
documents in dispute to the Commission’s file.

With the present application, the applicants seek the review of
the legality and the annulment of this Decision. The applicants
submit that the Commission has committed an infringement
of the Treaty and of general principles of Community law and
has violated Regulation 17/62 as interpreted by the Courts of
Justice of the European Communities.

The applicants contend that the Commission has violated the
legal professional privilege by violating the
principle of
procedures relating to the application of this principle as set
out by case law, by its unjustified denial of legal professional
privilege and by violating the applicants’ fundamental rights
(such as the right to privacy) which form the basis of the
aforementioned principle.

( 1) The applicants have lodged an application for the annulment of
Commission Decision C(2003) 559/4 in as far as it has been
interpreted as legitimating the Commission’s action of seizing,
reviewing and reading of documents allegedly covered by legal
professional privilege (Case T-125/03, OJ [2003] C 146 of
21.6.2003, p. 42).

The applicant claims that the Court should:

— decide that the mark ‘INTERNET PHOTONICS’ is eligible
for registration as a community trade mark since it does
comply with Article 7(1)(b) of Regulation (EC) No 40/
94 (1);

— annul the decision dated the 13th May 2003 by the
Second Board of Appeal of the Office for Harmonisation
in the Internal Market (Trade Marks and Designs) concern-
ing case Number R 765/2002-2;

— allow the application for the mark to be remitted to the
Examination Division of the Office for further consider-
ation of eligibility for registration under Article 7(1)(c)
of Regulation (EC) No 40/94 (1) having regard to the
distinctive character of the mark as a whole, or alterna-
tively to remit the application for the mark for a decision
by a Board of Appeal of the Office as to whether the
mark is eligible for registration as a community trade
mark under Article 7(1)(c) of Regulation (EC) No 40/
94 (1) on the original appeal from the examiner.

— order the Office for Harmonisation in the Internal Market

to pay the costs.

Pleas in law and main arguments

The trade mark con-
cerned:

The word mark ‘INTERNET PHO-
TONICS’
application
—
No 002275600

Goods or service con-
cerned:

Goods and services in Classes 9,
37, 42 (computer software and
hardware etc.)

Decision
before
Appeal:

contested
the Board of

Refusal of
examiner

registration by the

Action brought on 15 July 2003 by Internet Photonics,
Inc against the Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM)

Decision of the Board of
Appeal:

Dismissal of the appeal

(Case T-257/03)

(2003/C 239/40)

(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 15 July 2003 by Internet Photonics,
Inc., New Jersey, USA, represented by M. Chapple, Barrister.

Grounds of claim:

— misapplication

of
Article 7(1)(b) of Regulation
(EC) No 40/94 (1)

— misapplication

of
Article 7(1)(c) of Regulation
(EC) No 40/94 (1)

(1) Council Regulation (EC) No 40/94 of 20.12.1993 on the Com-

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