CELEX: C2003/239/40
Language: en
Date: 2003-10-04 00:00:00
Title: Case T-257/03: Action brought on 15 July 2003 by Internet Photonics, Inc against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

4.10.2003                EN                         Official Journal of the European Union                                            C 239/21
Some of these documents became the object of a disagreement                 The applicant claims that the Court should:
between the applicants and the Commission. According to the
applicants, the seizure and handling of these documents
                                                                            —     decide that the mark ‘INTERNET PHOTONICS’ is eligible
violate the general principle of legal professional privilege as
                                                                                  for registration as a community trade mark since it does
recognized under European Community Law.
                                                                                  comply with Article 7(1)(b) of Regulation (EC) No 40/
                                                                                  94 ( 1);
In Commission Decision C(2003)1533 regarding a claim of
legal privilege in the context of an investigation pursuant to              —     annul the decision dated the 13th May 2003 by the
Article 14(3) of Council Regulation No 17 in Case No COMP/                        Second Board of Appeal of the Office for Harmonisation
E-1/38.589 the Commission firstly rejected the applicants’                        in the Internal Market (Trade Marks and Designs) concern-
request to return or destroy all copies of the documents in                       ing case Number R 765/2002-2;
dispute and secondly, indicated it will proceed to join all
documents in dispute to the Commission’s file.
                                                                            —     allow the application for the mark to be remitted to the
                                                                                  Examination Division of the Office for further consider-
                                                                                  ation of eligibility for registration under Article 7(1)(c)
With the present application, the applicants seek the review of                   of Regulation (EC) No 40/94 ( 1) having regard to the
the legality and the annulment of this Decision. The applicants                   distinctive character of the mark as a whole, or alterna-
submit that the Commission has committed an infringement                          tively to remit the application for the mark for a decision
of the Treaty and of general principles of Community law and                      by a Board of Appeal of the Office as to whether the
has violated Regulation 17/62 as interpreted by the Courts of                     mark is eligible for registration as a community trade
Justice of the European Communities.                                              mark under Article 7(1)(c) of Regulation (EC) No 40/
                                                                                  94 ( 1) on the original appeal from the examiner.
The applicants contend that the Commission has violated the
principle of legal professional privilege by violating the                  —     order the Office for Harmonisation in the Internal Market
procedures relating to the application of this principle as set                   to pay the costs.
out by case law, by its unjustified denial of legal professional
privilege and by violating the applicants’ fundamental rights
(such as the right to privacy) which form the basis of the
aforementioned principle.
                                                                            Pleas in law and main arguments
( 1) The applicants have lodged an application for the annulment of
     Commission Decision C(2003) 559/4 in as far as it has been             The trade mark con-            The word mark ‘INTERNET PHO-
     interpreted as legitimating the Commission’s action of seizing,        cerned:                        TONICS’          —        application
     reviewing and reading of documents allegedly covered by legal                                         No 002275600
     professional privilege (Case T-125/03, OJ [2003] C 146 of
     21.6.2003, p. 42).
                                                                            Goods or service con-          Goods and services in Classes 9,
                                                                            cerned:                        37, 42 (computer software and
                                                                                                           hardware etc.)
                                                                            Decision          contested    Refusal of registration by the
                                                                            before the Board of            examiner
                                                                            Appeal:
Action brought on 15 July 2003 by Internet Photonics,
Inc against the Office for Harmonisation in the Internal                    Decision of the Board of       Dismissal of the appeal
           Market (Trade Marks and Designs) (OHIM)                          Appeal:
                                                                            Grounds of claim:              —      misapplication              of
                           (Case T-257/03)                                                                        Article 7(1)(b) of Regulation
                                                                                                                  (EC) No 40/94 (1)
                           (2003/C 239/40)
                                                                                                           —      misapplication              of
                                                                                                                  Article 7(1)(c) of Regulation
                    (Language of the case: English)                                                               (EC) No 40/94 (1)
                                                                            (1 ) Council Regulation (EC) No 40/94 of 20.12.1993 on the Com-
An action against the Office for Harmonisation in the Internal                   munity trade mark (OJ L 11, p. 1).
Market was brought before the Court of First Instance of the
European Communities on 15 July 2003 by Internet Photonics,
Inc., New Jersey, USA, represented by M. Chapple, Barrister.