Case T-167/08: Action brought on 9 May 2008 — Microsoft v Commission
Date: 2008-05-09
Institutions: Court of First Instance
Subjects: European Commission, action for annulment (EU), fine, information technology industry, intellectual property, patent, systems interconnection

5.7.2008

EN

Official Journal of the European Union

C 171/41

Form of order sought

Form of order sought

— Annul the decision of the Second Board of Appeal of the
Office for Harmonisation in the Internal Market (Trade Marks
and Designs) of 14 February 2008 in case R 1527/2006-2;

— reject

the
No 3 663 234; and

application

for Community

trade mark

— order the other party to the proceedings before the Board of

Appeal to pay the costs.

Pleas in law and main arguments

Applicant for the Community trade mark: The other party to the
proceedings before the Board of Appeal

Community trade mark concerned: The figurative mark ‘GREEN by
missako’ for goods and services in classes 3, 25, 35 — applica-
tion No 3 663 234

Proprietor of the mark or sign cited in the opposition proceedings: The
applicant

Mark or sign cited: The Community figurative trade mark ‘MI SA
KO’ for goods in classes 18 and 25; the national figurative trade
mark ‘MI SA KO’ for services in class 35

Decision of the Opposition Division: Dismissal of the opposition

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regu-
lation No 40/94 as a mere global
likelihood of confusion
among consumers is required in order to deny a Community
trade mark application.

— Annul the decision of the First Board of Appeal of the
Office for Harmonisation in the Internal Market (Trade Marks
and Designs) of 31 January 2008 (Case R 761/2007-1);

— Order the defendant to pay the costs of the proceedings.

Pleas in law and main arguments

Community trade mark concerned: Word mark ‘Golden Toast’ for
goods and services in Classes 5, 8, 9, 11, 14, 16, 21, 24, 25,
28-32, 39 and 41-44 (Application No 4 811 171).

Decision of the Examiner: Application refused in part, in respect
of the goods in Classes 11 and 30.

Decision of the Board of Appeal: Dismissal of appeal.

Pleas in law: Breach of the obligation under the first sentence of
Article 73 of Regulation (EC) No 40/94 (1) to state reasons, in
that the appealed decision was based on lack of distinctive char-
acter within the meaning of Article 7(1)(b) of that regulation,
although that was not examined. In addition, infringement of
Article 7(1)(c) of Regulation No 40/94, in that the conditions
for the finding of descriptiveness of the trade mark applied for
were misconstrued.

(1) Council Regulation (EC) No 40/94 of 20 December 1993 on the

Community trade mark (OJ 1994 L 11, p. 1).

Action brought on 9 May 2008 — Microsoft v
Commission

(Case T-167/08)

(2008/C 171/80)

Language of the case: English

Action brought on 29 April 2008 — Arbeitsgemeinschaft
Golden Toast v OHIM (Golden Toast)

Parties

(Case T-163/08)

(2008/C 171/79)

Language of the case: German

Applicant: Microsoft Corp. (represented by: J.-F. Bellis, lawyer, I.
Forrester, QC

Defendant: Commission of the European Communities

Form of order sought

Parties

Applicant: Arbeitsgemeinschaft Golden Toast e.V.
(Düsseldorf,
Germany) (represented by: A. Späth and G. Hasselblatt, lawyers)

Defendant: Office for Harmonisation in the Internal Market
(Trade Marks and Designs)

— annul

of

the

the Decision

European Commission
C(2008) 764 final of 27 February 2008 fixing the defi-
nitive amount of the periodic penalty payment imposed on
Microsoft
Decision
by
C(2005) 4420 final;

Commission

Corporation

— in the alternative, annul or reduce the amount of the peri-

odic penalty payment imposed;

— order the defendant to bear the costs.

C 171/42

EN

Official Journal of the European Union

5.7.2008

Pleas in law and main arguments

By a decision of 10 November 2005 adopted pursuant
to
Article 24(1) of Regulation 1/2003 (1) the Commission imposed
a periodic penalty payment on the applicant
for failure to
comply with the obligation to make the technical documenta-
tion embodying the Interoperability Information available to
interested undertakings on reasonable and non-discriminatory
terms pursuant
to Article 5(a) of Commission Decision
2007/53/EC of 24 March 2004 (2). The contested decision fixed
the definitive amount of the periodic penalty payment for the
period between 21 June 2006 and 21 October 2007 inclusive
at EUR 899 million. The applicant seeks the annulment of the
contested decision on the following grounds:

1. The Commission erred by subjecting Microsoft to periodic
penalty payments to force it to apply ‘reasonable’ price terms
without
in the
first specifying what price terms would,
Commission's view, be ‘reasonable’ so as to allow Microsoft
to know what to do to avoid the imposition of such penalty
payment.

2. The Commission committed a manifest error of assessment
and violated Article 253 EC by concluding that published
rates adopted by Microsoft were unreasonable and contrary
to the 2004 decision without taking account of the facts that
(i) these published rates were expressly intended to facilitate
negotiations between Microsoft and prospective licensees
and (ii) Microsoft had, in consultation with the Commission,
created a mechanism whereby the trustee would review the
rates proposed by Microsoft if any prospective licensee failed
to the
to reach agreement which was virtually identical
in NDC
mechanism created by the Commission itself
Health/IMS Health: Interim Measures (‘IMS Health’) (3). The
Commission also committed a manifest error of assessment
by (i)
these
published rates were set by Microsoft at a figure lower than
the rates that a third party expert determined to be reason-
able (ii) failing to give due weight to the fact that no prospec-
tive licensee failed to reach agreement with Microsoft and
(iii)
the ‘no
failing to consider the fact that licensees of
patent’ licence also obtain rights to use Microsoft's patents.

failing to give due weight

to the fact

that

Microsoft
commenting on all relevant aspects of the case.

there by preventing Microsoft

is fined,

from

6. The amount of the periodic penalty payment is excessive and
disproportionate. Among other reasons,
the Commission
failed to take due account of the fact that the contested deci-
sion only concludes that the royalties allegedly established by
Microsoft under one particular
licence (the ‘no patent’
licence) were unreasonable, and therefore doesn't challenge
(i) the royalties allegedly established by Microsoft for all of its
intellectual property rights incorporated in the entirety of the
Interoperability Information that Microsoft
is required to
disclose under Article 5 of the 2004 decision or (ii) the
completeness and accuracy of the Interoperability Informa-
tion.

(1) Council Regulation (EC) No 1/2003 of 16 December 2002 on the
implementation of the rules on competition laid down in Articles 81
and 82 of the Treaty (Text with EEA relevance) (OJ 2003 L 1, p. 1).
(2) Commission Decision of 24 May 2004 relating to a proceeding
pursuant to Article 82 of the EC Treaty and Article 54 of the EEA
Agreement against Microsoft Corporation (Case COMP/C-3/37.792
(notified under document number C(2004) 900)
— Microsoft)
(OJ 2007 L 32, p. 23).

(3) Commission Decision 2002/165/EC of 3 July 2001 relating to a
proceeding pursuant
the EC Treaty (Case
to Article 82 of
COMP D3/38.044 — NDC Health/IMS Health: Interim measures)
(notified under document number C(2001) 1695) (OJ 2002 L 59,
p. 18).

(4) Case T-201/04, Microsoft v. Commission, not yet published in the

ECR.

Action brought on 13 May 2008 — Commission v I.D. FOS
Research

(Case T-170/08)

(2008/C 171/81)

Language of the case: Dutch

3. The Commission committed a manifest error of assessment
by requiring Microsoft to establish that its trade secrets were
innovative under a heightened patentability test in order to
justify the imposition of royalties for a licence to such trade
secrets. The Commission also violated Article 253 EC by
failing to take account of numerous arguments raised by
Microsoft on the basis of reports prepared by patent experts
which criticised the Commission's approach.

Parties

Applicant: Commission of the European Communities (repre-
sented by: R. Lyal and W. Roels, Agents)

Defendant: I.D. FOS Research EEIG (Mol, Belgium)

4. The Commission violated Article 233 EC by failing to take
the necessary measures to comply with the judgment in Case
T-201/04 (4) in so far as the Commission based its assess-
ment reports prepared by the trustee on the basis of docu-
ments obtained through powers of
investigation that the
Court of First Instance held to be unlawful.

5. The Commission denied Microsoft's right to be heard by
failing to give Microsoft an opportunity to make known its
the reference period for which
views after

the end of

Form of order sought

— order the defendant to pay to the Commission the sum of
EUR 21 599,26 together with default interest in the sum of
EUR 6 375,94;

— order the defendant to pay default interest of EUR 3,99 per
day from 8 January 2007 until the date of full repayment of
the debt;

— order the defendant to pay the costs.