Case C-248/06: Action brought on  2 June 2006  — Commission of the European Communities v Kingdom of Spain
Date: 2006-07-29
Institutions: Court of Justice
Subjects: European Commission, Spain, action for failure to fulfil an obligation, corporation tax, freedom to provide services, research and development, right of establishment, tax relief

C 178/26

EN

Official Journal of the European Union

29.7.2006

Appeal brought on 1 June 2006 by Saiwa s.p.a. against the
judgement of the Court of First Instance (First Chamber)
delivered on 5 April 2006 in Case T-344/03 Saiwa s.p.a. v
Office for Harmonisation in the Internal Market (OHIM)
and Barilla Alimentare s.p.a.

The applicant submits moreover that the distinctive character
of the word ‘ORO’ is reinforced and/or acquired through use,
with regard to both the trade mark ‘ORO’ and the trade mark
‘ORO SAIWA’.

(Case C-245/06 P)

(2006/C 178/41)

The applicant finally submits that the trade marks ‘ORO’ and
‘ORO SAIWA’ on the one hand, and ‘Selezione ORO BARILLA’
on the other hand, are likely to be confused and that in any
case there is a likelihood of association between them.

Language of the case: Italian

(1) OJ L 22, p. 50.

Parties

Appellant: Saiwa s.p.a. (represented by: G. Sena, P. Tarchini, J.-P.
Karsenty, M. Karsenty-Ricard, lawyers)

Other parties to the proceedings: Office for Harmonisation in the
Internal Market (Trade Marks and Designs) and Barilla Alimen-
tare

Form of order sought

— Set aside the judgement under appeal.

— Grant the form of order sought at first instance, and there-
fore annul, for infringement of Article 8(1)(b) of Regulation
(EC) No 40/94 (1), the decision of the Fourth Board of
Appeal of the OHIM of 18 July 2003 in Case R 480/2002-
4 and the rejection of the application for registration of
Barilla Alimentare s.p.a. No 289.405.

Action brought on 2 June 2006 — Commission of the
European Communities v Kingdom of Spain

(Case C-248/06)

(2006/C 178/42)

Language of the case: Spanish

Parties

Applicant: Commission of the European Communities (repre-
sented by: R. Lyal and L. Escobar Guerrero, acting as Agents)

— Order the OHIM and Barilla Alimentare s.p.a. to pay the

costs of all of the proceedings

Defendant: Kingdom of Spain

Pleas in law and main arguments

Form of order sought

The applicant puts forward a single ground for annulment
based on infringement of Article 8(1)(b) of Regulation (EC) No
40/94 on the Community trade mark. The applicant claims
that the expression ‘ORO’ (of which the trade mark which is
the subject of the dispute consists, or which in any case forms
part thereof) has inherent distinctive character; that with refer-
ence to the international mark (which is also the subject of the
present dispute) part of the relevant public is unaware of the
meaning of the word ‘ORO’ and that this is common knowl-
edge and does not have to be proved by the parties; that
having regard to the principle of interdependence, given the
identity of the goods covered and signs in question, it is suffi-
cient that the earlier sign has only weak distinctiveness.

— declare that, by maintaining in force rules for the deduction
of costs in respect of research and development and techno-
logical
innovation carried out abroad which is more
onerous than the rules applicable to costs incurred in
Spain, as amended by Article 35 of the Law on corporation
tax, approved by Royal Legislative Decree 4/2004 of 5
March, the Kingdom of Spain has failed to fulfil its obliga-
tions under Articles 43 and 49 of
the EC Treaty on
freedom of establishment and freedom to provide services,
and the corresponding articles in the Agreement on the
European Economic Area;

— order the Kingdom of Spain to pay the costs.

29.7.2006

EN

Official Journal of the European Union

C 178/27

Pleas in law and main arguments

Pleas in law and main arguments

the territorial

Infringement of freedom of establishment (Articles 43 and 48
EC and Article 31 EEA):
restriction, which
consists of the fact that only expenses incurred in respect of
R& D and IT activities actually carried out in Spain may benefit
from the deduction of the corporation tax allowance, is a factor
which restricts the freedom of establishment of Spanish compa-
nies which invest in R&D and IT outside Spain, benefiting
companies making the same investment in Spain, in particular,
undertakings which have their main office in another Member
State and which operate in Spain via a secondary establish-
ment.

Infringement of the freedom to provide services (Articles 49 EC
and 36 EEA): the costs of R&D and IT activities subcontracted
outside Spain are not eligible for the deduction of the corpora-
tion tax allowance. That limitation constitutes an obstacle to
the freedom to provide services, provided for in the EC Treaty.

The agreements are incompatible with Community law since
they do not permit the application of Community measures
based in Articles 57(2) EC, 59 EC and 60 EC. Further, Sweden
has not taken steps to rectify the situation. Thus Sweden has
failed to fulfil its obligations under the second paragraph of
Article 307 EC to take all appropriate steps to eliminate all
incompatibilities between the Treaty and the investment agree-
ments.

Action brought on 6 June 2006 — Commission of the
European Communities v Federal Republic of Germany

(Case C-252/06)

(2006/C 178/44)

Language of the case: German

Action brought on 2 June 2006 — Commission of the
European Communities v Kingdom of Sweden

Parties

(Case C-249/06)

(2006/C 178/43)

Language of the case: Swedish

Parties

Applicant: Commission of the European Communities (repre-
sented by: C. Tufvesson, B. Martenczuk and H. Stølvbæk, acting
as Agents)

Defendant: Kingdom of Sweden

Applicant: Commission of the European Communities (repre-
sented by: G. Braun and N. Yerrell)

Defendant: Federal Republic of Germany

Form of order sought

The applicant claims that the Court should:

— declare that, by failing to adopt the laws, regulations and
administrative provisions necessary to implement Directive
2002/92/EC (1) of
the
Council of 9 December 2002 on insurance mediation, or,
in any event, by not communicating these provisions to the
Commission, the Federal Republic of Germany has failed to
fulfil its obligations under that directive;

the European Parliament and of

— Order the Federal Republic of Germany to pay the costs.

Form of order sought

Pleas in law and main arguments

— Declare that, by failing to take appropriate steps to elimi-
nate the incompatibilities between Sweden's bilateral invest-
ment agreement with the Socialist Republic of Vietnam,
together with 16 further bilateral
investment agreements,
and the EC Treaty, the Kingdom of Sweden has failed to
fulfil its obligations under the second paragraph of Article
307 EC;

— order the Kingdom of Sweden to pay the costs.

The period for implementing the Directive expired on 15
January 2005.

(1) OJ L 9, 2003, p. 3.