Case C-324/05 P: Appeal brought on  28 July 2005  (received by fax on  27 July 2005 ) by Plus Warenhandelsgesellschaft mbH against the judgment of the Court of First Instance (Fourth Chamber) of  22 June 2005  in Case T-34/04  Plus Warenhandelsgesellschaft mbH  v  Office for Harmonisation in the Internal Market (Trade Marks and Designs)
Date: 2005-11-26
Institutions: Court of Justice
Subjects: European Union Intellectual Property Office, General Court (EU), appeal, tobacco industry, trade-mark law

C 296/12

EN

Official Journal of the European Union

26.11.2005

Appeal brought on 10 August 2005 by Creative Tech-
nology Ltd against the judgment delivered on 25 May
2005 by the Fourth Chamber of the Court of First Instance
of the European Communities in Case T-352/02 between
Creative Technology Ltd and the Office for Harmonisation
in the Internal Market (Trade Marks and Designs) (OHIM),
the other party to the proceedings before the Board of
Appeal of the Office for Harmonisation in the Internal
Market (Trade Marks and Designs) being José Vila Ortiz

(Case C-314/05 P)

(2005/C 296/23)

(Language of the case: English)

An appeal against the judgment delivered on 25 May 2005 by
the Fourth Chamber of the Court of First Instance of the Euro-
pean Communities in case T-352/02 (1) between Creative Tech-
nology Ltd and the Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM), the other party to
the proceedings before the Board of Appeal of the Office for
Harmonisation in the Internal Market
(Trade Marks and
Designs) being José Vila Ortiz, was brought before the Court of
Justice of the European Communities on 10 August 2005 by
Creative Technology Ltd, established in Singapore (Singapore),
represented by Stephen Jones and Paul Rawlinson, Solicitors.

The Appellant claims that the Court should:

i) Set aside the judgment

ii) Set aside the Decision of the Board of Appeal

iii) Annul decision of the Opposition Division No 145/2001

be annulled

iv) Allow the Applicant's Trade Mark to proceed to registration

v) Order that the Opponent pays to the Applicant/Appellant
the costs incurred by the Applicant/Appellant in connection
with this appeal and the appeal before the CFI, the Board of
Appeal and the opposition before the Opposition Division.

nise that the goods in question are not casual purchases but
bought by consumers after careful consideration and in particu-
lar that they failed to appreciate the proper characteristics of
the reasonably well-informed and observant and circumspect
member of the relevant public in that such a member of the
relevant public in this case would not buy those goods without
close examination.

Accordingly,
it was wrong of the Court of First Instance to
uphold the decisions of the Opposition Division and the Fourth
Board of Appeal and reject the application in its entirety.

Hence, it is submitted that this appeal against the decision of
the Opposition Division, the Fourth Board of Appeal and the
Court of First Instance ought to be allowed, and the decisions
of the Opposition Division, the Fourth Board of Appeal and
the Court of First
to be annulled in their
entirety. The Applicant/Appellant also seeks costs in these
appeal proceedings and the proceedings before the Opposition
Division, the Fourth Board of Appeal and the Court of First
Instance.

Instance ought

(1) OJ C182, 23.07.05, p. 35

Appeal brought on 28 July 2005 (received by fax on 27
July 2005) by Plus Warenhandelsgesellschaft mbH against
the judgment of
Instance (Fourth
the Court of First
Chamber) of 22 June 2005 in Case T-34/04 Plus Warenhan-
delsgesellschaft mbH v Office for Harmonisation in the
Internal Market (Trade Marks and Designs)

(Case C-324/05 P)

(2005/C 296/24)

Pleas in law and main arguments:

(Language of the case: German)

The Appellant submits that the Community Trade Mark Appli-
cation for the word PC WORKS is not confusingly similar to
the earlier Spanish trade mark for the figurative mark that
includes the words W WORK PRO. It is submitted that the
Opposition Division, the Fourth Board of Appeal and the Court
of First Instance erred in their respective analysis of the global
appreciation of the marks in question and in particular the
undue weight given to the WORK element present in both
marks.

It is further submitted that the Opposition Division, the Fourth
Board of Appeal and the Court of First Instance failed to recog-

On 28 July 2005 (received by fax on 27 July 2005), Plus Ware-
nhandelsgesellschaft mbH, represented by P.H. Kort, M.W.
Husemann and B. Piepenbrink, of Kort Rechtsanwälte (GBR),
Ellerstraße 123/125, D-40227 Düsseldorf, Germany, brought
an appeal before the Court of Justice of the European Commu-
nities against the judgment of the Court of First Instance of the
European Communities (Fourth Chamber) of 22 June 2005 in
Case T-34/04 Plus Warenhandelsgesellschaft mbH v Office for
Harmonisation in the Internal Market (Trade Marks and Designs)
(OHIM).

26.11.2005

EN

Official Journal of the European Union

C 296/13

The appellant claims that the Court should:

— set aside the judgment of the Court of First Instance (Fourth

Chamber) of 22 June 2005 in Case T-34/04 (1);

— give final judgment on the case and find in favour of the
in the alternative,

application made at first instance, or,
refer the case back to the Court of First Instance;

— order the Office for Harmonisation in the Internal Market

to pay the costs of the proceedings.

applied for are dominated by the visual element is therefore
unfounded.

4. The Court of First Instance erroneously assumed that the
relevant public is particularly attentive: it is not established
that consumers are more attentive when buying cigarettes
than when buying groceries or other consumer goods. Even
if particular attentiveness could none the less be assumed, it
cannot be ruled out that the word mark ‘POWER’ will make
customers think of the earlier mark and that the trade mark
applied for would immediately be brought into connection
with the appellant's company, that is to say, as a sub-brand
of a Turkish mix of ‘POWER’ tobacco.

Grounds of appeal and main arguments (Case C-324/05 P)

(1) OJ 2005 C 205, p. 21.

By its appeal the appellant is seeking to prevent the use of the
word mark ‘POWER’ in the trade mark applied for (‘TURKISH
POWER’) from leading to a taking over of the rights associated
with the earlier mark. It substantiates its appeal against the
abovementioned judgment by alleging legal error in the appli-
cation of current Community law on Community trade marks
and that, by the judgment under appeal, the Court of First
Instance changed its decision-making practice and infringed the
principle of equal treatment:

1. The Court of First Instance failed to recognise that the rights
of the earlier mark are infringed by the incorporation of the
separate formative word mark ‘POWER’ in the trade mark
applied for. The extent of the protection granted by the
German authorities for the word ‘POWER’ is unlimited and
consequently, the goods in question have the exclusive trade
mark rights. It must remain possible and without restriction
for the earlier trade mark to be combined with free-standing
verbal or graphic elements, if this is required for it to be
marketed. However, the judgment under appeal restricts the
appellant's creative freedom.

2. The Court of First Instance failed to recognise that the trade
mark applied for reuses the word contained in the earlier
trade mark in a formative way and has taken it over as a
trade mark. The dominance of the word ‘POWER’ in the
trade mark applied for is not offset by the word ‘TURKISH’,
since this,
the tobacco
in a manner characteristic of
industry, alludes to the tobacco designation ‘Turkish blend’
frequently used in that industry. It can thus be considered as
a reference to the Turkish origin of the tobacco mixture
which is put together with the word ‘POWER’ to form the
name of a trade mark. Therefore, the Court of First Instance
erred in taking the view that
the word combination
‘TURKISH POWER’ has a suggestive effect independent of
the word ‘POWER’.

3. The Court of First Instance erroneously concluded that there
were sufficient aural differences between the two conflicting
marks, since the danger of aural confusion between the two
is sufficient in itself to prevent registration of the trade mark
applied for. As regards the visual similarities of the two
marks, the Court of First Instance failed to consider that,
from a visual perspective also, trade marks are predomi-
nantly characterised by the words of which they are
composed, because consumers are more familiar with words
than with images and can remember them more easily. The
conclusion that the words which make up the trade mark

Appeal brought on 15 September 2005 (fax 9 September
2005) by the Office for Harmonisation in the Internal
Market (Trade Marks and Designs) against the judgment
delivered on 15 June 2005 by the Third Chamber of the
Court of First Instance of the European Communities in
Case T-7/04 between Shaker di L. Laudato & C. Sas and
the Office for Harmonisation in the Internal Market, the
other party to the proceedings being Limiñana y Botella,
SL

(Case C-334/05 P)

(2005/C 296/25)

(Language of the case: Italian)

An appeal against the judgment of the Third Chamber of the
Court of First Instance of the European Communities of 15
June 2005 in Case T-7/04 between Shaker di L. Laudato & C.
Sas and the Office for Harmonisation in the Internal Market
was brought before the Court of
the European
Communities on 15 September 2005 by the Office for Harmo-
nisation in the Internal Market, represented by O. Montalto and
the other party to the
M. Capostagno, acting as Agents,
proceedings being Limiñana y Botella, SL.

Justice of

The applicant claims that the Court should:

1. set aside the judgment under appeal;

2. order the Shaker to pay the costs.

Pleas in law and main arguments

The applicant considers that the judgment of the Court of First
Instance under appeal in this case is vitiated by misinterpreta-
tion and misapplication of Article 8(1)(b) of Council Regulation
(EC) No 40/94 of 20 December 1993 on the Community trade
mark.