Case C-243/07 P: Appeal brought on 22 May 2007 by Carsten Brinkmann against the judgment of the Court of First Instance (Fifth Chamber) delivered on 22 March 2007 in Case T-322/05 Carsten Brinkmann v Office for Harmonisation in the Internal Market (Trade Marks and Designs)
Date: 2007-08-25
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, appeal, financial institution, trade-mark law

25.8.2007

EN

Official Journal of the European Union

C 199/17

As regards the introduction, in general legal provisions, of an
obligation to negotiate access contracts in good faith, the effect
of that solution is to impose the obligation to negotiate without
first establishing a lack of effective competition on the market
the national
concerned,
regulatory
authority to examine the impact of
the obligation to grant
access on long term competition on that market and, conse-
quently,
to suppress that obligation if competition on the
market intensifies.

and does not

enable

As regards the national regulatory authority's power to adopt a
decision which will replace the parties' contract, it is important
to note that the first subparagraph of Article 5(1) of the Access
Directive cannot be implemented by a general legal provision
because it requires that a national regulatory authority be
empowered to act only in certain circumstances. The power
conferred on national regulatory authorities by virtue of the
above-mentioned provision of the directive is clearly limited,
first, by the reference to the ‘objectives set out in Article 8 of
Directive 2002/21/EC (2) (Framework Directive)’ and, second, by
the requirement laid down in Article 5(3) of the Access Direc-
tive. Those limits on the national regulatory authority's power
ensure that it will act only in certain well defined circumstances.
In addition, the regulatory obligations may be imposed only on
undertakings having significant power on the market or, irres-
pective of
in the
circumstances mentioned in Article 8(3) of the Access Directive.
It follows that if the national regulatory authority decides to
intervene, such intervention must have the directive's provisions
as
regulatory
authority decides to impose regulatory obligations.

the undertaking's power on the market,

including when the national

legal basis,

its

(1) OJ 2002, L 108, p. 7.
(2) Directive 2002/21/EC of

the European Parliament and of

the
Council of 7 March 2002 on a common regulatory framework for
(Framework Directive)
electronic
(OJ 2002, L 108, p. 33, and OJ, Polish Special Edition, Chapter 13,
Vol. 29, p. 349).

communications and services

Appeal brought on 22 May 2007 by Carsten Brinkmann
against the judgment of the Court of First Instance (Fifth
Chamber) delivered on 22 March 2007 in Case T-322/05
Carsten Brinkmann v Office for Harmonisation in the
Internal Market (Trade Marks and Designs)

(Case C-243/07 P)

(2007/C 199/27)

Language of the case: German

Parties

Appellant: Carsten Brinkmann (represented by: K. van Bebber,
lawyer)

Other parties to the proceedings:

1. Office for Harmonisation in the Internal Market

(Trade

Marks and Designs)

2. Terra Networks, S.A.

Form of order sought

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

Chamber) of 22 March 2007 in Case T-322/05;

— annul Decision No 3646/2004 of the Office for Harmonisa-
tion in the Internal Market (OHIM) of 29 October 2004;

— order OHIM to pay the costs of the proceedings before
OHIM and also of the proceedings before the Court of First
Instance and the Court of Justice.

Pleas in law and main arguments

The appellant's appeal against the judgment of the Court of First
Instance referred to above is based on an infringement of the
provisions of Regulation (EC) No 40/94 of 20 December 1993
on the Community trade mark since, on a correct assessment,
there is no likelihood of confusion within the meaning of
Article 8(1)(b) of the Regulation between the conflicting marks.

First, it is not the case that the goods and services covered by
the trade mark applied for and those covered by the opposing
mark are completely identical.

Second, the members of the public concerned are professionals,
namely banking experts, property owners etc, rather than the
average German consumer.

Third, the ‘terra’ element of the opponent's mark is not very
distinctive. The Court of First Instance failed to take any account
at all of that crucial aspect. It failed to consider the distinctive-
ness of the opposing mark. That is important, however, because
if the earlier mark is not very distinctive, there is no likelihood
of confusion in circumstances where, as a rule, such a likelihood
would otherwise exist. The less distinctive a sign, the lesser the
scope of protection of the mark. Where trade marks are not
very distinctive, a likelihood of confusion in legal terms cannot
be based on even an actual (and extreme) likelihood of confu-
sion.

C 199/18

EN

Official Journal of the European Union

25.8.2007

Fourth, the similarity of the signs depends on the similarity in
figurative, aural and conceptual
terms, with reliance being
placed on the overall
impression in each case, although the
distinctive and dominant elements must be taken into account.
The opposing mark is a figurative mark, consisting of the word
‘terra’ and a figurative element that is approximately the same
size as the word element ‘terra’. The mere fact that the contested
trade mark has no figurative element means that clear differ-
ences can be seen on an overall comparison of the marks.
However, even if the word element ‘terra’ is assumed to domi-
nate the opposing mark, there is no relevant similarity for the
purposes of trade mark law. It must be emphasised that the
term ‘terra’, which is well-known, conceptually, to the public, is
indeed incorporated in its entirety into the fanciful word
‘Terranus’. However, the ‘terra’ sign has no independent, distinc-
tive position in the ‘Terranus’ mark. Furthermore, the public is
accustomed to the fact that terms which are derived from a
certain root can acquire an entirely different meaning as a result
of a variation, thereby losing any conceptual connection with
the original term.

Reference for a preliminary ruling from the Rechtbank van
lodged on 1 June
Koophandel te Antwerpen (Belgium)

2007 — VTB-VAB NV v Total Belgium NV

(Case C-261/07)

(2007/C 199/28)

Language of the case: Dutch

Referring court

Rechtbank van Koophandel te Antwerpen

Parties to the main proceedings

Applicant: VTB-VAB NV

Defendant: Total Belgium NV

Question referred

Does Directive 2005/29 (1) of the European Parliament and of
the Council concerning unfair commercial practices preclude a
national provision such as Article 54 of the Belgian Law of
14 July 1991 on commercial practices, consumer information
and consumer protection, which, subject to the exhaustive list
of exceptions contained within that Law, prohibits any collateral
including an offer in which
offer by a seller to a consumer,

goods which the consumer has to buy are tied to a free service,
the acquisition of which is linked to the purchase of the goods,
notwithstanding the circumstances of individual cases, in par-
ticular notwithstanding the possible influence of the actual offer
on the average consumer, or whether,
in the actual circum-
stances, that offer may be regarded as contravening the profes-
sional duty of care and genuine commercial custom?

(1) Directive 2005/29/EC of

the European Parliament and of

the
Council of 11 May 2005 concerning unfair business-to-consumer
commercial practices in the internal market and amending Council
Directive
and
2002/65/EC of the European Parliament and of the Council and
Regulation (EC) No 2006/2004 of the European Parliament and of
the Council (OJ 2005 L 149, p. 22).

84/450/EEC, Directives

98/27/EC

97/7/EC,

Reference for a preliminary ruling from the Tribunale
Civile di Roma (Italy) lodged on 4 June 2007 — Caffaro Srl
v Azienda Unità Sanitaria Locale RM/C

(Case C-265/07)

(2007/C 199/29)

Language of the case: Italian

Referring court

Tribunale Civile di Roma

Parties to the main proceedings

Applicant: Caffaro Srl

Defendant: Azienda Unità Sanitaria Locale RM/C

Question referred

In so far as it provides that, in the case of enforcement against
public authorities, creditors may not act to effect such enforce-
ment until a period of 120 days has elapsed following service of
the recovery order, does Article 14 of Decree Law No 669/1996,
as amended by Article 147 of Law No 388/2000, conflict with
Directive 2000/35/EC (1), in particular with Article 5 thereof?

(1) OJ L 200, 8.8.2000, p. 35.