Case C-334/05 P: 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
Date: 2005-11-26
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, General Court (EU), appeal, fruit product, trade-mark law

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.

C 296/14

EN

Official Journal of the European Union

26.11.2005

It is settled principle that the assessment of likelihood of confu-
sion between trade marks under Article 8(1)(b) of the regu-
lation on the Community trade mark is based on two distinct
first, an analytical comparison between both the
elements:
signs and the goods, and then a concise evaluation of the
results obtained in order to determine whether the average
consumer of the goods in question might believe that those
goods come from the same undertaking or from economically-
linked undertakings. In particular, as regards the comparison
between the signs, the analysis directed at establishing whether
the signs are similar must take into consideration the visual,
phonetic and conceptual aspects to arrive at a global assess-
impression given by the marks
ment based on the general
themselves, taking particular account of their distinctive and
dominant components.

The applicant claims that the Court of First Instance failed to
give effect to the principle cited above and,
it
dismissed the possibility of confusion, basing its assessment
exclusively on the visual perception of the contested mark,
without taking any account of the further elements which may
not be ignored in the overall assessment the likelihood of
confusion.

in particular,

The applicant also submits that the judgment under appeal is
vitiated by manifest inconsistency and illogicality.

Reference for a preliminary ruling from the Tribunal
Départemental des Pensions Militaires du Morbihan by
that court of 7 September 2005 in Ameur
order of

Echouikh v Secrétaire d'État aux Anciens Combatants

(Case C-0336/05)

(2005/C 296/26)

(Language of the case: French)

Reference has been made to the Court of Justice of the Euro-
pean Communities by order of the Tribunal Départemental Des
Pensions Militaires de Morbihan (Armed Services Pensions
Tribunal
for the Department of Morbihan) of 7 September
2005, received at the Court Registry on 15 September 2005,
for a preliminary ruling in the proceedings between Ameur
Echouikh and the Secrétaire D' Etat aux Anciens Combatants
on the following questions:

1. Do Articles 64 and 65 of the Euro-Mediterranean Agree-
ment establishing an association between the European
Communities and their Member States, of the one part, and
the Kingdom of Morocco, of the other part, signed in Brus-
sels on 26 February 1996, have direct effect ?

2. If, for whatever reason, the Euro-Mediterranean Agreement
is not found to be applicable in the present case, are Articles
40 to 42 of the Cooperation Agreement between the Euro-
pean Economic Community and the Kingdom of Morocco,
signed in Rabat on 27 April 1976, which the Euro-Mediter-
ranean Agreement is intended to replace, to be regarded as
having direct effect ?

3. Does a Moroccan national who has served in a Member
State's armed forces,
including service beyond that State's
territorial boundaries, fall within the category of ‘workers’
within the meaning of Articles 64 and 65 of the above-
mentioned 1996 Euro-Mediterranean Agreement and within
the meaning of Articles 40 to 42 of the above-mentioned
1976 Cooperation Agreement?

the provisions of
the above-
4. Irrespective of whether
signed with the Kingdom of
mentioned Agreements
Morocco in 1976 and 1996 are directly effective, can a
Moroccan national, provided that he falls within the cate-
gory of ‘workers’ within the meaning of these provisions in
the Community legal order, invoke the direct applicability
the general principle of non-discrimination based on
of
nationality enshrined in Article 12 of the EC Treaty and
Article 14 of the European Convention for the protection of
human rights and fundamental freedoms?

5. Does an armed services invalidity pension claimed by a
Moroccan national who has served in the armed forces of a
Member State in respect of the sequelae of an accident or
illness occurring in the course of such military service fall
within the category of remuneration for work covered by
Article 64 of the above-mentioned 1996 Euro-Mediterra-
nean Agreement or within the category of social security
benefits covered by Article 65 of that Agreement ?

6. Do Articles 64 and 65 of the Euro-Mediterranean Agree-
ment establishing an association between the European
Communities and their Member States, of the one part, and
the Kingdom of Morocco, of the other part, signed in Brus-
sels on 26 February 1996 and, prior to the entry into force
of that Agreement, Articles 40 to 42 of the Cooperation
Agreement between the European Economic Community
and Kingdom of Morocco, signed in Rabat on 27 April
1976, or, failing that, Article 12 (formerly Article 6) of the
EC Treaty and Article 14 of the European Convention for
the protection of human rights and fundamental freedoms,
preclude a Member State from relying on restrictive provi-
sions in its national legislation connected to the nationality
of a Moroccan national in order to:

— refuse to grant him an armed services invalidity pension
that it would have granted, without that restriction, to
its own nationals who, like him, are permanently resi-
dent in its territory, and who find themselves in the
same position as him, having served in the armed forces
of that Member State in the same circumstances as him?