Case C-104/05 P: Appeal brought on 2 March 2005 (faxed on 28 February 2005) by El Corte Inglés against the judgment delivered on 13 December 2004 by the Second Chamber of the Court of First Instance of the European Communities in Case T-8/03 between El Corte Inglés SA and the Office for Harmonisation in the Internal Market (trade marks and designs) (OHIM)
Date: 2005-05-14
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), action for annulment (EU), clothing industry, leather, trade-mark law

C 115/10

EN

Official Journal of the European Union

14.5.2005

None of the arguments on which the Court of First Instance
based its decision is sufficient to allow an exception in respect
of documents from the Member States to be made to the
fundamental principle that it is the institution which holds a
document which is responsible for assessing whether it should
be disclosed. The decision of the Court of First Instance thus
infringed Community law.

and good governance, and announces support in particular for
the moratorium on the import, export and production of light
weapons in West Africa. Thus the impugned CFSP decision is
in infringement of Article 47 TEU, since it affects Community
powers in the field of development aid.

(1) OJ C 202, 24.08.2002, p. 30.

Action brought on 21 February 2005 by the European
Commission against the Council of the European Union

(Case C-91/05)

(2005/C 115/19)

(Language of the case: English)

An action against the Council of the European Union was
brought before the Court of Justice of the European Commu-
nities on 21 February 2005 by the European Commission,
represented by Pieter Jan Kuijper and Johan Enegren acting as
Agents, with an address for service in Luxembourg.

The applicant claims that the Court should:

1. annul Council Decision 2004/833/CFSP (1)

2. declare illegal and hence inapplicable Council Joint Action

2002/589/CFSP (2), in particular Title II thereof.

Pleas in law and main arguments:

The Commission is seeking the annulment for lack of compe-
tence under Article 230, second paragraph, of the EC Treaty of
Council Decision 2004/833/CFSP of 2 December 2004 imple-
menting Joint Action 2002/589/CFSP with a view to a Euro-
pean Union contribution to ECOWAS in the framework of the
Moratorium on Small Arms and Light Weapons. The Council
took this Decision under Title V of the Treaty on European
Union, whereas Article 11(3) of the Cotonou agreement covers
actions inter alia against the spread of small arms and light
weapons. Moreover, the Commission had concluded pursuant
to Article 10(2) of Annex 1V of the Cotonou agreement a
Indicative Programme for West Africa with the
Regional
Economic Community of West African States (ECOWAS) and
the West African Economic and Monetary Union (WAEMU),
which gives support to a regional policy of conflict prevention

In addition, the Commission is seeking a declaration of illeg-
ality under Article 241 EC Treaty of Council
Joint Action
2002/589/CFSP of 12 July 2002, and in particular Title II
thereof, on the same basis and for the same reasons. Joint
Action 2002/589/CFSP is an act of a general legislative nature
on which the CFSP Decision is based, of which the annulment
for lack of competence is sought. Hence that Joint Action, and
more specifically Title II thereof should be declared inapplicable
in the present case.

(1) Council Decision 2004/833/CFSP of 2 December 2004 imple-
menting Joint Action 2002/589/CFSP with a view to a European
Union contribution to ECOWAS in the framework of the Mora-
torium on Small Arms and Light Weapons, OJ L 359, 04.12.2004,
p. 65.

(2) Council Joint Action 2002/589/CFSP of 12 July 2002 on the Euro-
pean Union's contribution to combating the destabilising accumula-
tion and spread of small arms and light weapons and repealing Joint
Action 1999/34/CFSP, OJ L 191, 19.07.2002, p. 1.

Appeal brought on 2 March 2005 (faxed on 28 February
2005) by El Corte Inglés against the judgment delivered
on 13 December 2004 by the Second Chamber of the
Court of First Instance of the European Communities in
Case T-8/03 between El Corte Inglés SA and the Office for
Harmonisation in the Internal Market (trade marks and
designs) (OHIM)

(Case C-104/05 P)

(2005/C 115/20)

(Language of the case: Italian)

On 2 March 2005 El Corte Inglés SA, represented by J. L. Rivas
Zurdo, lawyer, brought before the Court of Justice of the Euro-
pean Communities an appeal against the judgment delivered on
13 December 2004 by the Second Chamber of the Court of
First Instance of the European Communities in Case T-8/03 El
Corte Inglés SA and the Office for Harmonisation in the
Internal Market (trade marks and designs) (OHIM)

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: