Case C-25/05 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-402/02 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

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.

19.3.2005

EN

Official Journal of the European Union

C 69/11

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-402/02; (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;

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 sweet wrappers available on the market, it must
examine that market situation.

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

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

Pleas on appeal and main arguments:

1. Breach of Article 7(1)(b) 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
wrappers which it claims exist on the market. The appellant
has had no opportunity to express a view on those sweet wrap-
pers allegedly existing on the market, since they have not been
produced by the Office.

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.

In any event, the public interest or a need to preserve the avail-
ability [of a mark] are not to be taken into consideration
within the context of Article 7(1)(b) of Regulation No 40/94.
The monopolisation of marks as such is intended by trade
mark law. There is no evidence of an unjustified monopolisa-
tion.

The Office has not relied on other grounds of refusal in the
context of which the public interest could be taken into consid-
eration, in particular the grounds of refusal provided for under
Article 7(1) (d) to (j) of Regulation No 40/94.

The mark applied for possesses inherent distinctiveness. The
fact that consumers recognise the mark as a sweet wrapper
does not prevent it from simultaneously having the function of
an indication of trade origin. The colour three-dimensional
mark 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.

The appellant's right
infringed.

to a fair hearing has thereby been

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

The mark applied for has at
least acquired distinctiveness
through its extensive use in the EC. The evidence relating to
sales volumes and advertising expenditure for goods designated
by that mark should have been taken into account even in the
absence of comparative figures concerning the sweet market as
a whole which the Office required.

Contrary to the view expressed by the Office and the Court of
First Instance,
it is not necessary to adduce evidence for all
Member States of the EC that the mark has become distinctive
in consequence of the use that has been made of it. In the light
of the objective of establishing a single market in all Member
States of the EC, it is appropriate to analyse the dissemination
and recognition of the mark applied for within the territory of
the EC, without regard to national borders. Consequently, the
evidence of use adduced by the appellant is sufficient to form
the basis for a finding that the mark has distinctive character in
the EC.

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