Case C-106/05: Reference for a preliminary ruling from the Bundesfinanzhof by order of that court of 25 November 2004 in L. u. P. GmbH v Finanzamt Bochum-Mitte
Date: 2005-05-14
Institutions: Court of Justice
Subjects: VAT, interpretation of the law, medical diagnosis, tax exemption, tax harmonisation, tax system

14.5.2005

EN

Official Journal of the European Union

C 115/11

The appellant claims that the Court should:

not absolute requirements in dealing with the scope of protec-
tion of two opposing marks.

1. set aside the judgment of the Court of First Instance of 13
December 2004 notified to the appellant on 20 December
2004 in Case T-8/03 dismissing the action brought by the
appellant and ordering it to pay the costs;

2. uphold the action brought before the Court of First Instance

seeking to establish:

(a) annulment of the decision of 3 October 2002 of the
Fourth Board of Appeal of OHIM (Joined Cases
700/2000-4 and 746/2000-4) in so far as it allows the
appellant's appeal
in part, dismisses the respondent's
appeal and allows Community mark 203570 to be
granted in respect of goods in Classes 18 and 24;

(b) refusal of

these materials and not

registration of Community trade mark
in respect of all the goods in
203570 ‘Emilio Pucci’
Class 18: ‘Leather and imitations of leather, and goods
made of
included in other
classes; animal skins, hides; trunks and travelling bags;
umbrellas, parasols and walking sticks; whips, harness
and saddlery’ and of Class 24: ‘Textiles and textile goods,
not included in other classes; bed and table covers’; the
only classes in respect of which registration was allowed
by OHIM;

The judgment appealed against centres the comparison on
deductive and abstract criteria of a mechanistic nature without
assessing the common denominator of the concept of fashion
in its manifold aspects.

The consuming public (average consumer) is the first and last
reference point to be taken into consideration in conflicts of
marks for the purposes of Article 8(1)(b) of Regulation No
40/94.

Since similarity of signs and products gives rise to a likelihood
of confusion the prohibition under Article 8(1)(b) of Regulation
No 40/94 should be applied.

The evidence adduced by the applicant attests the fact that the
mark ‘Emidio Tucci’ is well known, thus rendering Article 8(5)
of Regulation No 40/94 applicable.

The judgment of the Court of First Instance does not adequately
assess the reputation of the mark from 1994 or prior to 1996.

(c) Liability on the part of the respondent and the inter-
vener to pay the costs in regard both to the present
proceedings and to the proceedings at first instance.

In the final analysis, a part of the Emidio Tucci clientele could
be misled by the mark ‘Emilio Pucci’, bringing about an unwar-
ranted advantage in favour of the latter mark to the detriment
of the former mark and its exclusive sphere of distinctiveness.

Pleas and main arguments

Infringement of Article 8(1)(b) of Regulation No 40/94 given
the similarity in this case between the products of the earlier
marks and the products designated in the application;

Reference for a preliminary ruling from the Bundes-
finanzhof by order of that court of 25 November 2004 in
L. u. P. GmbH v Finanzamt Bochum-Mitte

The judgment under appeal refers to general and abstract
criteria on the absence of similarity between the products,
whereas the present case constitutes an exception;

The complementarity between the products in Classes 18 and
25 affirmed by the intervener itself in its pleading was not
taken into consideration by the judgment, whereas
that
complementarity confirms the judicial criterion according to
which the classes in the nomenclature are merely administra-
tive criteria.

The criterion of the consuming public is a matter for considera-
tion at the time when the application is dealt with. To that end
the ‘relevant factors’ relied on in the judgment under appeal
which generally characterise similarity between products are

(Case C-106/05)

(2005/C 115/21)

(Language of the case: German)

Reference has been made to the Court of Justice of the Euro-
pean Communities by order of the Bundesfinanzhof (Federal
Finance Court) (Germany) of 25 November 2004, received at
the Court Registry on 3 March 2005, for a preliminary ruling
in the proceedings between L. u. P. GmbH (formerly B. Schar-
mann GmbH) and Finanzamt Bochum-Mitte on the following
question:

C 115/12

EN

Official Journal of the European Union

14.5.2005

Do Article 13A(1)(b) and (2) of the Sixth Council Directive
77/388/EEC of 17 May 1977 on the harmonisation of the laws
of the Member States relating to turnover taxes allow for the
tax exemption for medical laboratory tests ordered by general
practitioners to be made subject to the conditions specified in
those provisions, even where medical care by such practitioners
is exempt from taxation in any event?

Reference for a preliminary ruling from the Gerechtshof
te 's-Gravenhage by order of that court of 27 January
2005 in Bovemij Verzekeringen N.V. v Benelux-Merken-
bureau

(Case C-108/05)

(2005/C 115/22)

(Language of the case: Dutch)

Reference has been made to the Court of Justice of the Euro-
pean Communities by order of the Gerechtshof te 's-Grave-
nhage (Netherlands) of 27 January 2005, received at the Court
Registry on 4 March 2005, for a preliminary ruling in the
proceedings between Bovemij Verzekeringen N.V. and Benelux-
Merkenbureau on the following questions:

(1) [Omissis: question submitted to the Benelux Court of

Justice]

(2 Must Article 3(3) of

the Directive (1) be interpreted as
meaning that in order to acquire distinctive character (in
the present case through a Benelux trade mark) as a result
of use, as referred to in that provision, it is necessary that
the sign be regarded as a trade mark, before the date of
application, by the relevant public throughout the Benelux
territory and,
in Belgium, Netherlands and
Luxembourg?

therefore,

If the answer to question 2 is in the negative:

(3) Is the condition for registration laid down in Article 3(3) of
the Directive satisfied, for the purposes of that provision, if
the sign, as result of the use made of it, is regarded as a
trade mark by the relevant section of
the public in a
substantial part of
the Benelux territory and can this
substantial part be, for example, the Netherlands alone?

sign — consisting of one or more words of an official
language in the territory of a Member State (or, as in the
case in point, the Benelux territory) — is it necessary to
take into account the language regions within that terri-
tory?

For registration as a mark, should the other requirements
for registration be satisfied, is it sufficient if/required that
the sign be regarded as a trade mark by the relevant section
of the public in a substantial part of the language region of
the Member State (or, as in the case in point, of
the
Benelux territory)
language is an official
in which that
language?

(1) Council Directive 89/104/EEC of 21.12.1988 (OJ 1989, L 40, p. 1).

Action brought on 4 March 2005 by the Commission of
the European Communities against the Italian Republic

(Case C-110/05)

(2005/C 115/23)

(Language of the case: Italian)

An action against the Italian Republic was brought before the
Court of Justice of the European Communities on 4 March
2005 by the Commission of the European Communities, repre-
sented by D. Recchia and F. Amato, acting as Agents, with an
address for service in Luxembourg.

The applicant claims that the Court should:

1. declare that by prohibiting the towing of trailers by motor
vehicles the Italian Republic has failed to fulfil its obligations
under Article 28 EC;

2. order the Italian Republic to pay the costs incurred by the

Commission of the European Communities.

Pleas in law and main arguments

(4) When assessing distinctive character acquired through use,
within the meaning of Article 3(3) of the Directive, of a

Under Article 56 of the Codice della strada (Italian highway
code) the towing of trailers by any motor vehicle other than a
tractor unit is prohibited in Italy.