Case C-416/04 P: Appeal brought on 29 September 2004 by The Sunrider Corporation against the judgment delivered on 8 July 2004 by the Second Chamber of the Court of First Instance of the European Communities in case T-203/02 between The Sunrider Corporation and Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), the other party to the proceedings before the Board of Appeal of OHIM being Juan Espadafor Caba
Date: 2004-12-04
Institutions: Court of Justice
Subjects: EU trade mark, General Court (EU), action for annulment (EU), aerated drink, beer, infringement of EU law, interpretation of the law, non-alcoholic beverage, trade-mark law

4.12.2004

EN

Official Journal of the European Union

C 300/29

The Commission notes that those rules governing the competi-
tive procedure for the award of
the concession give the
promoter two advantages over all other potential competitors.
First, from the procedural point of view, the promoter is auto-
matically invited to participate in the negotiated procedure for
the award of the concession, without any comparison being
made between his offer and that of other participants in the
earlier tendering procedure. Therefore, even if in that tendering
procedure there were more than two offers better than that
submitted by the original promoter, the negotiated procedure
will nevertheless proceed only as between the two best offers
and the promoter. Second, from the substantive point of view,
the provision enabling the promoter to amend his offer in the
course of the negotiated procedure so as to match that found
to be the most suitable by the awarding authority amounts in
substance to the promoter being accorded a right of pre-
emption for the award of the concession.

The Appellant claims that the Court should:

1. set aside in whole the decision of the Court of First Instance
dated 8 July 2004 in case T-203/02 (‘the contested deci-
sion’);

2. order the Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (‘OHIM’) to pay the costs of the
proceedings before the Court of Justice;

3. annul the decision of the First Board of Appeal of the Office
for Harmonisation in the Internal Market dated 8 April
2002 in case R 1046/2000-1;

4. order the Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (‘OHIM’) to pay the costs of the
proceedings before the Court of First Instance and OHIM.

The Commission submits that the grant of those advantages to
to other potential concessionaires
the promoter and not
infringes the principle of equal treatment.

Pleas in law and main arguments:

The Appellant submits that the judgment of the Court of First
Instance should be annulled on the following grounds:

(1) OJ L 199 of 9. 8.1993, p. 54.
(2) OJ L 199 of 9. 8.1993, p. 1.
(3) OJ L 209 of 24. 7.1992, p. 1.
(4) OJ L 199 of 9. 8.1993, p. 84.

Appeal brought on 29 September 2004 by The Sunrider
Corporation against the judgment delivered on 8 July
2004 by the Second Chamber of
the Court of First
Instance of the European Communities in case T-203/02 (1)
between The Sunrider Corporation and Office for Harmo-
nisation in the Internal Market (Trade Marks and Designs)
(OHIM), the other party to the proceedings before the
Board of Appeal of OHIM being Juan Espadafor Caba

(Case C-416/04 P)

(2004/C 300/55)

An appeal against the judgment delivered on 8 July 2004 by
the Second Chamber of the Court of First Instance of the Euro-
pean Communities in case T-203/02 between The Sunrider
Corporation and Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM), the other party to
the proceedings before the Board of Appeal of OHIM being
Juan Espadafor Caba, was brought before the Court of Justice
of the European Communities on 29 September 2004 by The
Sunrider Corporation,
established in Torrance, California
(United States), represented by A. Kockläuner, lawyer.

Infringement of Article 43 Sections 2, 3 CTMR in Conjunction
with Article 15 Section 3 CTMR (Unwarranted Use)

The Court of First Instance misinterpreted Article 43 Sections
2, 3 CTMR in conjunction with Article 15 Section 3 CTMR
inasmuch as it wrongly took into account the use of the trade-
mark made by a third party.

In this respect, the Court of First Instance misinterpreted the
apportionment of the burden of proof given in Article 15
Sections 1, 3 CTMR. Further, the Court of First Instance took
into account non conclusive (implicit) statements and evidence
produced by the opponent. Moreover,
the Court of First
Instance relied on presumptions instead of solid evidence.
Finally, the Court of First Instance would have had to examine
whether or not, in the light of all the relevant matters of fact
and in law, a new decision with the same operative part as the
decision under appeal could lawfully be adopted at the time of
the decision of the Court of First Instance.

Infringement of Article 43 Section 2 CTMR: Non-Satisfactory
Proof of Opposing Trademark

Further, the Court of First Instance infringed Article 43 Section
2 CTMR inasmuch as it misinterpreted the notion of genuine
use within the meaning of Article 43 Section 2 CTMR.

In particular,
reasonably that:

the Court of First

Instance did not consider

— the opponent submitted only three invoices for the year
than

representing a total value of no more

1996,
3,476.00 EUR;

C 300/30

EN

Official Journal of the European Union

4.12.2004

— the opponent submitted for 1997 only two invoices, repre-

senting a total value of no more than 1,306.00 EUR;

— the goods at issue were low-cost goods and thus, goods of

mass production and mass consumption;

Siciliana, represented by the Avvocatura dello Stato, against the
order made on 8 July 2004 by the Court of First Instance of
the European Communities (Third Chamber) in Case T-341/02
Regione Siciliana v Commission of the European Communities.

— these goods were relatively easy to sell;

The appellant claims that the Court should:

— the goods at issue were sold at best to one single customer;

and that therefore the opposing Trademark ES 372 221 ‘VITA-
FRUT’ had not been put to genuine use within the meaning of
Article 43 Section 2, 3 CTMR, because its use was sporadic,
occasional, minimal and not present in a substantial part of the
territory where it was protected.

— set aside the order of 8 July 2004 of the Court of First

Instance of the European Communities.

Pleas in law and main arguments:

Infringement of Article 8 Section 1 Subsection b) CTMR

The appellant submits that the order under appeal is defective
on the following grounds:

Further, the trademarks to be compared are not confusingly
similar with regard to the goods ‘herbal and vitamin beverages’
for which the applied for Trademark No. 156 422 ‘VITAFRUIT’
seeks protection. In particular, the goods ‘herbal and vitamin
beverages’ on the one hand and ‘fruit juice concentrate’ on the
other hand are only remotely similar because they possess only
few points of contact.

This is based on the fact that the goods to be compared differ
with regard to their product qualities, their raw materials, and
the circumstances of their production, namely the machinery,
the know-how and the production facilities which are necessary
for the manufacturing of the goods in question. Further, the
goods to be compared differ in respect of the way in which
they are used, their functional qualities and the way in which
they are distributed. Therefore, the possible common character-
istics of the goods in question are outweighed by their differ-
ences.

(1) OJ C 233, 28.09.2002, p. 26.

Appeal brought on 29 September 2004 by Regione
Siciliana against the order made on 8 July 2004 by the
Court of First Instance of the European Communities
in Case T-341/02 Regione Siciliana v
(Third Chamber)

Commission of the European Communities

any

there

absolute bar

— paragraphs 47, 48 and 49 of the order state clearly that its
legal basis is provided by Article 113 of the Rules of Proce-
dure of the Court of First Instance, which provides that ‘the
Court of First Instance may at any time, of its own motion,
consider whether
to
exists
proceeding with an action …’ No ‘absolute bar’ is evident
from the material in the case in hand such as to justify the
Court of First Instance declaring of its own motion that the
action was inadmissible. Furthermore, the Court of First
Instance made no effort whatever to explain what might
constitute this ‘absolute bar’ capable of bringing into opera-
tion the procedure set out in Article 113 of the Rules of
Procedure. The complete lack of reasons in this regard
constitutes a very serious infringement of the fundamental
rights of defence and of the audi alteram partem principle;

— breach and improper application of Article 230 EC with
regard to the entitlement of Regione Siciliana to bring a
challenge and, consequently, breach of
the fundamental
rights of defence;

— breach and improper application of the first subparagraph
of Article 4(1) of Council Regulation (EEC) No 2052/88 of
24 June 1988, (1) as subsequently amended;

— breach of Article 9(1) of Regulation (EEC) No 4253/88 of

18 December 1988; (2)

— defective statement of reasons by virtue of inconsistency

and arbitrariness;

— defective statement of reasons by virtue of inherent contra-

diction, lack of logic and absence of grounds.

(Case C-417/04 P)

(2004/C 300/56)

(1) OJ L 185 of 15.07.1988, p. 9.
(2) OJ L 374 of 31.12.1988, p. 1.

An appeal was brought before the Court of Justice of the Euro-
pean Communities on 29 September 2004 by Regione