CELEX: C2002/084/69
Language: en
Date: 2002-04-06 00:00:00
Title: Case C-456/01 P: Appeal brought on 28 November 2001 by Henkel KGaA against the judgment delivered on 19 September 2001 by the Second Chamber of the Court of First Instance of the European Communities in Case T-335/99, between Henkel KGaA and the Office for Harmonization in the Internal Market (Trade Marks and Designs)

C 84/40                EN                  Official Journal of the European Communities                                        6.4.2002
such legislation has been found to be non-compliant. It is            Pleas in law and main arguments
untenable to think that service order No 57/2000 of 4 August
2000 issued by the authority governing harbourmasters is
capable of amending Decree No 347/94 containing the                   Infringement of Article 7(1)(b) of Council Regulation No 40/94
contested provisions.                                                 on the Community trade mark (2). Contrary to the view of the
                                                                      Court of First Instance, the mark applied for lacks distinctive
                                                                      character. At the time of the application, neither the tablet
                                                                      shape nor the colour combination, and especially the combi-
In the Commission’s view, the Italian authorities are well aware
                                                                      nation of the two, were typical for a washing powder and they
of the above considerations, as is clear from the undertaking
                                                                      were certainly not technically necessary.
given several times — but so far not fulfilled — to make the
necessary amendments to Presidential Decree No 347/94 in
order to bring Italian legislation into line with Community
law.                                                                  Contrary to the view taken by the Court of First Instance, there
                                                                      is no reason why consumers should in principle be regarded
                                                                      as less attentive when purchasing goods for everyday use;
                                                                      rather, the opposite is true.
                                                                      In the alternative: even if the time of registration were decisive,
                                                                      the possibility cannot be ruled out that the contested trade
                                                                      mark application could serve to designate the origin of the
                                                                      goods, since it is prohibited, when considering the list of
                                                                      goods, to rule out distinctiveness on the grounds that there
Appeal brought on 28 November 2001 by Henkel KGaA                     may be similarities between the goods. That approach conflates
against the judgment delivered on 19 September 2001 by                to an unacceptable degree the issue of registrability with that
the Second Chamber of the Court of First Instance of                  of scope of protection, or likelihood of confusion. Even where
the European Communities in Case T-335/99, between                    a mark is confusingly similar, it is for the proprietor of the
Henkel KGaA and the Office for Harmonization in the                   mark having priority to obtain refusal of the earlier mark
         Internal Market (Trade Marks and Designs)                    under Article 8 of Regulation 40/94.
                        (Case C-456/01 P)
                                                                      (1) Not yet published in the court reports.
                                                                      (2) OJ L 11, p. 1.
                          (2002/C 84/69)
An appeal against the judgment delivered on 19 September
2001 by the Second Chamber of the Court of First Instance of
the European Communities in Case T-335/99, between Henkel
                                                                      Appeal brought on 28 November 2001 by Henkel KGaA
KGaA and the Office for Harmonization in the Internal Market
                                                                      against the judgment delivered on 19 September 2001 by
(Trade Marks and Designs) (1), was brought before the Court of
                                                                      the Second Chamber of the Court of First Instance of
Justice of the European Communities on 28 November
                                                                      the European Communities in Case T-336/99, between
2001 by Henkel KGaA, represented by Rechtsanwälte Holger
                                                                      Henkel KGaA and the Office for Harmonization in the
Friedrich Wissel and Dr. Christian Osterrieth, Düsseldorf, with
                                                                               Internal Market (Trade Marks and Designs)
an address for service in Luxembourg.
                                                                                              (Case C-457/01 P)
The applicant claims that the Court should:
                                                                                                (2002/C 84/70)
—     partially annul the judgment of the Court of First Instance
      of the European Communities of 19 September 2001 in
      Case T-335/999, served on 1 October 2001;
                                                                      An appeal against the judgment delivered on 19 September
      annul the decision of the Third Board of Appeal of the          2001 by the Second Chamber of the Court of First Instance of
      Office for Harmonisation in the Internal Market of              the European Communities in Case T-335/99, between Henkel
      21 September 1999 in Case R 71/1999-3 relating to               KGaA and the Office for Harmonization in the Internal Market
      Community trade mark application number 703 231;                (Trade Marks and Designs) (1), was brought before the Court of
                                                                      Justice of the European Communities on 28 November
                                                                      2001 by Henkel KGaA, represented by Rechtsanwälte Holger
—     order the Office for Harmonisation in the Internal Market       Friedrich Wissel and Dr. Christian Osterrieth, Düsseldorf, with
      to pay the costs of the proceedings.                            an address for service in Luxembourg.