Case C-20/08 P: Appeal brought on 22 January 2008 by Enercon GmbH against the judgment of the Court of First Instance (Fifth Chamber) delivered on 15 November 2007 in Case T-71/06 Enercon GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs)
Date: 2008-01-22
Institutions: Court of Justice
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), appeal, trade-mark law

29.3.2008

EN

Official Journal of the European Union

C 79/19

That erroneous interpretation resulted in an erroneous outcome
— rejection of the application for registration of the Com-
munity word mark ‘manufacturing score card’. In particular, not
only did the Court of First Instance make a wrong assessment
of the content; it also seriously misinterpreted the requirements
of distinctive character and the need to keep terms free as
formulated by the European Court of Justice in relation to appli-
cations for a Community trade mark and the relevant classes of
persons.

It was not permissible for the Court of First Instance to divide
the verbal composition submitted in the application into its
constituent parts and to find, on that basis, that the mark was
not eligible for protection. Dividing it up in this way does not
correspond to how the ‘normal’ class of persons assesses and
interprets the mark when it sees it as a whole. Moreover, the
Court of First Instance was wrong to base its finding that the
mark lacked distinctive character and that there was a need to
keep the term free on the observation that the verbal composi-
trade, were
tion consisted of parts which,
normally used to explain the purpose and function of
the
services covered. The relevant trade circles would not, however,
recognise any immediately obvious meaning in the application
for a Community trade mark ‘manufacturing score card’,
consisting of a combination of three English words. Conse-
quently, the mark applied for has the minimum distinctive char-
acter required by Article 7(1)(b) of the Community Trade Mark
Regulation and also does not designate characteristics of goods
or services in accordance with Article 7(1)(c) of the Community
Trade Mark Regulation.

in the course of

Reference for a preliminary ruling from the Tribunal
d'Instance de Bordeaux (France)
lodged on 21 January
2008 — Foselev Sud-Ouest SARL v Administration des
douanes et des droits indirects

(Case C-18/08)

(2008/C 79/32)

Language of the case: French

Referring court

Tribunal d'Instance de Bordeaux

Question referred

the European
Article 6(2)(b) of Directive 1999/62/EC of
Parliament and of the Council on the charging of heavy goods
vehicles for the use of certain infrastructures (1) provides for the
possibility for a Member State to exempt certain categories of
vehicle. In this context, is the authorisation given to France by
the Commission
in Decision
2005/449/EC, to exempt certain categories of vehicles directly
applicable to individuals or, as it concerns an authorisation deci-
sion addressed to France,
into
national law necessary?

is a measure transposing it

2005 (2),

June

20

on

(1) OJ 1999 L 187, p. 42.
(2) 2005/449/EC: Commission Decision of 20 June 2005 concerning a
request for exemption from the vehicle tax rules submitted by France
pursuant to Article 6(2)(b) of Directive 1999/62/EC of the European
Parliament and of the Council on the charging of heavy goods vehi-
cles for the use of certain infrastructures (OJ 2005 L 158, p. 23).

the judgment of

Appeal brought on 22 January 2008 by Enercon GmbH
against
Instance
(Fifth Chamber) delivered on 15 November 2007 in Case
T-71/06 Enercon GmbH v Office for Harmonisation in the
Internal Market (Trade Marks and Designs)

the Court of First

(Case C-20/08 P)

(2008/C 79/33)

Language of the case: German

Parties

Appellant: Enercon GmbH (represented by: R. Böhm and U.
Sander, Rechtsanwälte)

Other party to the proceedings: Office for Harmonisation in the
Internal Market (Trade Marks and Designs) (OHIM)

Form of order sought

— Set aside the judgment of the Fifth Chamber of the Court of

First Instance of 15 November 2007 (Case T-71/06);

Parties to the main proceedings

— uphold the forms of order sought at first instance;

Applicant: Foselev Sud-Ouest SARL

— in the alternative, refer the case back to the Court of First

Instance;

Defendant: Administration des douanes et des droits indirects

— order OHIM to pay the costs of both instances.

C 79/20

EN

Official Journal of the European Union

29.3.2008

Grounds of appeal and main arguments

— order the Republic of Portugal to pay the costs.

By its first ground of appeal the appellant claims that there has
the duty to give reasons under
been an infringement of
Article 73 of the Community Trade Mark Regulation. Neither in
the decision of the Board of Appeal nor in the judgment under
appeal of the Court of First Instance were any findings set out
or explanations given regarding the shapes which OHIM or the
Court of First Instance recognised as being common on the
market and in what ways the shape applied for would have to
differ from common shapes on the market to be found to be
distinctive. In the absence of such findings or explanations it is
not conceivable how OHIM or the Court of First Instance could
have come to the conclusion that the shape applied for was not
distinctive.

the appellant alleges that
By its second ground of appeal
Article 7(1)(b) of the Community Trade Mark Regulation has
been infringed by an assessment of distinctiveness which, in the
absence of a statement of the factual basis for its decision, could
only have come about as a result of a distortion by the Court of
First Instance of the facts presented to it, a matter open to
review by the Court of Justice. Contrary to the view of the
Court of First Instance in the judgment under appeal, the appel-
lant claims that the shape applied for is distinctive since it is
significantly different from the normal shapes found on the
market and is not merely a variant of such shapes. Among the
relevant public the shape applied for can be recognised and
indeed is recognisable as an indication of origin irrespective of
its use and without further enquiries or thought.

Pleas in law and main arguments

The period prescribed for transposing the Directive into national
law expired on 29 April 2004.

(1) OJ 2004 L 157, p. 45.

Appeal brought on 24 January 2008 by Giuseppe Gargani
against
Instance
(Third Chamber) of 21 November 2007 in Case T-94/06
Giuseppe Gargani v European Parliament

the Court of

the order of

First

(Case C-25/08 P)

(2008/C 79/35)

Language of the case: German

Parties

Appellant: Giuseppe Gargani
Rechtsanwalt)

(represented by: W. Rothley,

Other party to the proceedings: European Parliament

Action brought on 22 January 2008 — Commission of the
European Communities v Republic of Portugal

Form of order sought

(Case C-24/08)

(2008/C 79/34)

— Set aside the order of the Court of First Instance (Third

Chamber) of 21 November 2007 in its entirety;

— refer the case back to the Court of First Instance for a fresh

Language of the case: Portuguese

decision;

— order the respondent to pay the costs of the appeal.

Parties

Pleas in law and main arguments

Applicant: Commission of the European Communities (repre-
sented by: M. Afonso and H. Kraemer, acting as Agents)

Defendant: Republic of Portugal

Form of order sought

— Declare that, by failing to adopt the laws, regulations and
administrative provisions necessary to comply with Directive
2004/48/EC (1) of
the
Council of 29 April 2004 on the enforcement of intellectual
property rights, or in any event by not communicating such
measures to the Commission, the Republic of Portugal has
failed to fulfil its obligations under that directive;

the European Parliament and of

The Court of First Instance failed to give the appellant a fair
hearing by failing to address the appellant's submissions and,
instead, changing the parties and then declaring the action to be
inadmissible.

the
The action, which was brought by the Chairman of
European Parliament's Committee on Legal Affairs, not
(as
stated in the order under appeal) by an individual as such, is
expressly directed against the then President of the European
Parliament, and not against the European Parliament itself or
against a ‘natural person’. The Court of First Instance regards the
appellant as any Italian applicant seeking a declaration that the
conduct of the European Parliament is unlawful, and the Presi-
dent of the European Parliament at the time as any Spanish
defendant being accused in respect of the unlawful conduct of
the President of the European Parliament.