Case C-24/05 P: Appeal brought on 26 January 2005 (fax: 24 January 2005) by August Storck KG against the judgment delivered on 10 November 2004 by the Court of First Instance of the European Communities (Fourth Chamber) in Case T-396/02 August Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs)
Date: 2005-03-19
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), action for annulment (EU), confectionery product, trade-mark law

19.3.2005

EN

Official Journal of the European Union

C 69/9

1) Where the use by an employer of the criterion of length of
service as a determinant of pay has a disparate impact as
between relevant male and female employees, does Article
141 EC require the employer to provide special justification
for recourse to that criterion? If the answer depends on the
circumstances, what are those circumstances?

2) Would the answer to the preceding question be different if
the employer applies the criterion of length of service on an
individual basis to employees so that an assessment is made
as to the extent to which greater length of service justifies a
greater level of pay?

3) Is there any relevant distinction to be drawn between the
use of the criterion of length of service in the case of part-
time workers and the use of that criterion in the case of
full-time workers?

2. order the Italian Republic to pay the costs.

Pleas in law and main arguments

The time-limit for the transposition of the directive expired on
1 December 2003.

(1) OJ L 302, 1.12.2000, p. 57.

Action brought on 25 January 2005 by the Commission of
the European Communities against the Italian Republic

Appeal brought on 26 January 2005 (fax: 24 January 2005)
by August Storck KG against the judgment delivered on
10 November 2004 by the Court of First Instance of the
European Communities (Fourth Chamber) in Case T-396/
02 August Storck KG v Office for Harmonisation in the
Internal Market (Trade Marks and Designs)

(Case C-21/05)

(2005/C 69/19)

(Language of the case: Italian)

(Case C-24/05 P)

(2005/C 69/20)

(Language of the case: German)

An action against the Italian Republic was brought before the
Court of Justice of the European Communities on 25 January
2005 by the Commission of the European Communities, repre-
sented by N. Yerrell and A. Aresu, acting as Agents.

The Commission claims that the Court should:

1. declare that, by not adopting the laws, regulations and
administrative provisions necessary to comply with Council
Directive 2000/79/EC of 27 November 2000 concerning
the European Agreement on the Organisation of Working
Time of Mobile Workers in Civil Aviation concluded by the
Association of European Airlines
the European
Transport Workers' Federation (ETF), the European Cockpit
Association (ECA), the European Regions Airline Associa-
tion (ERA) and the International Air Carrier Association
(IACA) (1), or in any event by not communicating the same
to the Commission, the Italian Republic has failed to fulfil
its obligations under Article 3 of that directive;

(AEA),

An appeal against the judgment delivered on 10 November
2004 by the Court of First Instance of the European Commu-
nities (Fourth Chamber) in Case T-396/02 August Storck KG v
Office for Harmonisation in the Internal Market (Trade Marks and
Designs) was brought before the Court of Justice of the Euro-
pean Communities on 26 January 2005 (fax: 24 January 2005)
by August Storck KG, represented by Ilse Rohr, Heidi Wrage-
Molkenthin and Tim Reher, Rechtsanwälte, CMS Hasche Sigle,
Stadthausbrücke 1-3, D-20355 Hamburg.

The appellant claims that the Court should:

1. set aside the judgment of the Court of First Instance (Fourth

Chamber) of 10 November 2004 in Case T-396/02; (1)

2. grant the forms of order sought at first instance and give
final judgment on the dispute or, in the alternative, remit
the case to the Court of First Instance;

3. order OHIM to pay the costs of the proceedings.

C 69/10

EN

Official Journal of the European Union

19.3.2005

Pleas on appeal and main arguments:

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

should be dismissed. By its nature, the three-dimensional mark
appears along with other marks. The mark cannot be held to
be devoid of distinctive character on the basis of that fact
alone.

The Court of First Instance erred in law by requiring that the
mark applied for must differ substantially from other compar-
able marks in the relevant product market. The distinctive char-
acter of the mark should instead be examined on its own
merits, without reference to any similar marks on the market.

The mark applied for possesses inherent distinctiveness. The
fact that consumers recognise the mark as a sweet does not
prevent it from simultaneously having the function of an indi-
trade origin. The colour three-dimensional mark
cation of
serves as a signal and a recognition factor, especially in cases
where the consumer is confronted with a very large choice, as
in the confectionery market.

function of

three-dimensional mark
The dual
consisting of the shape of the product itself does not mean that
it is not used as a mark even if, at the same time, it provides
information about the design of the product.

colour

a

In the context of proof of use, account is to be taken of all
contact that the consumer has with the mark. The extent to
which the consumer encounters the mark before or at the time
of making his decision to purchase is not the sole determinant
of proof of use. When the mark is noticed at a later point, in
particular at the time when the product is consumed, this also
contributes to its recognition.

2. Breach of the first sentence of Article 74(1) of Regulation No

40/94

(1) OJ C 19, 22.1.2005.

Contrary to the view of the Court of First Instance, the Office
should have examined and explained which similar or identical
marks exist on the market – as it claims – if it seeks thereby to
justify its refusal to register the mark. The Office may not base
its decision on facts which have not been proved and which it
merely presumes. If the Office considers it necessary – which
the appellant does not – to measure the distinctiveness of the
mark against other sweet designs available on the market, it
must examine that market situation.

Likewise, the Court of First Instance may not itself rule on facts
which have not been examined.

3. Breach of Article 73 of Regulation No 40/94

In order to justify its finding that the mark applied for is
devoid of distinctiveness, the Office relies on similar sweet
designs which it claims exist on the market. The appellant has
had no opportunity to express a view on those sweet designs
allegedly existing on the market, since they have not been
produced by the Office.

The appellant's right
infringed.

to a fair hearing has thereby been

4. Breach of Article 7(3) of Regulation No 40/94

The objection of the Court of First Instance that the proof of
use adduced does not demonstrate the exact use of the mark
applied for, since that mark is accompanied by other marks,

Appeal brought on 26 January 2005 (fax: 24 January 2005)
by August Storck KG against the judgment delivered on
10 November 2004 by the Court of First Instance of the
European Communities (Fourth Chamber) in Case T-402/
02 August Storck KG v Office for Harmonisation in the
Internal Market (Trade Marks and Designs)

(Case C-25/05 P)

(2005/C 69/21)

(Language of the case: German)

An appeal against the judgment delivered on 10 November
2004 by the Court of First Instance of the European Commu-
nities (Fourth Chamber) in Case T-402/02 August Storck KG v
Office for Harmonisation in the Internal Market (Trade Marks and
Designs) was brought before the Court of Justice of the Euro-
pean Communities on 26 January 2005 (fax: 24 January 2005)
by August Storck KG, represented by Ilse Rohr, Heidi Wrage-
Molkenthin and Tim Reher, Rechtsanwälte, CMS Hasche Sigle,
Stadthausbrücke 1-3, D-20355 Hamburg.