CELEX: C2002/003/58
Language: en
Date: 2002-01-05 00:00:00
Title: Case T-224/01: Action brought on 24 September 2001 by Houghton Durferrit GmbH against the Office for Harmonisation in the Internal Market

5.1.2002               EN                     Official Journal of the European Communities                                           C 3/33
Pleas in law and main arguments                                          Action brought on 24 September 2001 by Houghton
                                                                         Durferrit GmbH against the Office for Harmonisation in
                                                                                                the Internal Market
The Applicants are the owner and the licensee of the trade
                                                                                                  (Case T-224/01)
mark ‘MILD SEVEN’, used as a cigarette brand worldwide and
protected as intellectual property. The Applicants fear that the
prohibition, against using descriptors indicating that a tobacco                                   (2002/C 3/58)
product is less harmful than others, contained in Article 7 of
Directive 2001/37, will deprive the Applicants of the possi-
bility of marketing their brand ‘MILD SEVEN’ in the European                               (Language of the case: English)
Union.
                                                                         An action against the Office for Harmonisation in the Internal
In support of their application, the Applicants claim that there         Market was brought before the Court of First Instance of the
is no sufficient legal basis for the adaptation of Article 7 of the      European Communities on 24 September 2001 by Houghton
Directive. The Directive in question is based on Articles 95             Durferrit GmbH, represented by Ms Patricia Koch Moreno of
and 133 of the EC Treaty. Neither of them provides, according            Madrid (Spain). Kolone Corporation was also a party to the
to the Applicants, a sufficient basis for Article 7 of this              proceedings before the Board of Appeal
Directive. Article 133 does not apply since the common
commercial policy has no relevance to Article 7. Article 95 EC
Treaty does not provide a legal basis either since there is no           The applicant claims that the Court should:
need to harmonise legislation on this point for the establish-
ment of the internal market. According to the Applicants,                —     declare invalid the Decision no. 949/1999 dated 15 Octo-
there is no barrier to trade that needs to be removed. Further,                ber 1999 of the Opposition Division of the Office for
the Applicants claim that Article 7 of the Directive violates                  Harmonisation in the Internal Market in opposition
Article 152(4)(c) EC Treaty. According to the Applicants,                      procedure B4905, and the decision of the First Board of
Article 95 EC Treaty is being used as a legal basis for the                    Appeal dated 6 July 2001 that dismissed the remedy
circumvention of the prohibition contained in Article 152(4)(c)                of Appeal filed by the applicant against the previous
EC Treaty to harmonise legislation designed to protect and                     resolution
improve human health.
                                                                         —     declare incompatible the Community trade mark filed by
                                                                               Kolene Corporation, no. 40.568 NU-TRIDE, in classes 1
                                                                               and 40, on the grounds of its incompatibility with the
The Applicants also claim that Article 7 of the Directive                      earlier trade mark belonging to the applicant,
violates their right to property and the principle of pro-                     no. 764.560, in classes 1, 7 and 11
portionality since it would deprive the Applicants of the use
of their trade mark in the European market. According to the             —     refuse the registration of Community trade mark
Applicants, Article 7 is not an appropriate means by which to                  no. 40.568 NU-TRIDE in classes 1 and 40
attain the objective of this Article, which is to promote health
and consumer protection. The Applicants claim that the use               —     order payment of the costs of these proceedings by
of descriptors provides the consumer with information that                     the holder of the foregoing Community trade mark
allows him to choose to smoke cigarettes with a lower tar and                  application, Kolene Corporation.
nicotine content. Article 7 is in any event not the least
restrictive method, since provision could have been made for
the protection of existing trade marks.
                                                                         Pleas in law and main arguments
The Applicants claim further that Article 7 of the Directive             Applicant for the Com-         Kolone Corporation
violates the principle of equal treatment. The Applicants make           munity trade mark:
clear that they are the only tobacco producers in the European
Union who would be deprived of the use of a brand as a                   The Community trade            Verbal mark ‘NU-TRIDE’ —
consequence of Article 7 of the Directive.                               mark concerned:                Application no. 40.568, relating
                                                                                                        to goods in classes 1 and 40
                                                                                                        (chemicals for use in the treatment
                                                                                                        of metals and metal treatment)
Finally, the Applicants submit that the grounds upon which
Article 7 of the Directive is based are insufficient.                    Proprietor of the right to     The Applicant
                                                                         the trade mark or sign
                                                                         asserted by way of oppo-
                                                                         sition in the opposition
                                                                         proceedings:
 ---pagebreak--- C 3/34                 EN                     Official Journal of the European Communities                                        5.1.2002
Trade mark or sign             Registered German trade mark              by the authorities in the USA had ended inter alia with the
asserted by way of oppo-       ‘TUFFTRIDE’ in classes 1, 7 and 11        imposition of a fine on the applicant.
sition in the opposition
proceedings:
                                                                         In response to the statement of objections the applicant stated
Decision of the Oppo-          rejection of the Opposition               to the defendant that it expressly did not contest the facts set
sition Division:                                                         out by the defendant. At the same time it submitted that the
                                                                         fine imposed in the USA should be credited when the
Decision of the Board of       rejection of the Appeal by the            defendant calculated the fines or at least be appropriately taken
Appeal:                        applicant                                 into account.
Grounds of claim:              Articles 8(1)(b) and 7(1)(f) of
                                                                         In the contested decision the defendant alleged that the
                               Regulation (EC) no. 40/94 (1)
                                                                         applicant had participated in a cartel and, when it calculated
                                                                         the fine, assumed that there was a world market in graphite
(1) Council Regulation (EC) No 40/94 of 20 December 1993 on the          electrodes. A fine of Euro 80,2 million was imposed on the
    Community trade mark (OJ L 11, p. 1).                                applicant.
                                                                         The applicant contests the decision has a whole in law. It
                                                                         submits that the defendant did not take into account the
                                                                         fact that the applicant had already been penalised in other
                                                                         jurisdictions for the same act. In particular, it gave no credit at
                                                                         all for the fines already imposed in other States and did not
Action brought on 2 October 2001 by SGL Carbon AG                        take account of the applicability of the rule against double
  against the Commission of the European Communities                     punishment (‘ne bis im idem’). As a separate matter, the
                                                                         defendant infringed Article 253 EC and Article 15(2) of
                                                                         Regulation No 17/62 because it wrongly calculated the fine in
                         (Case T-239/01)                                 the light of the application of the guidelines on the method of
                                                                         setting fines (1) and the notice on the non-imposition or
                           (2002/C 3/59)                                 reduction of fines in cartel cases (2). It infringed central
                                                                         principles of equal treatment and proportionality and commit-
                                                                         ted errors of law and of assessment to the detriment of the
                   (Language of the case: German)                        applicant at each stage of calculating the fine. Moreover, the
                                                                         defendant misassessed inter alia the extent of the applicant’s
                                                                         cooperation.
An action against the Commission of the European Communi-
ties was brought before the Court of First Instance of the               (1) OJ C 9 of 14.1.1998,p. 3.
European Communities on 2 October 2001 by SGL Carbon                     (2) OJ C 207 of 18.7.1996, p. 4.
AG, Wiesbaden (Germany), represented by M. Klusmann,
F. Wiemer and C. Canenbley, lawyers.
The applicant claims that the Court should:
—     annul decision C(2001) 1986 final of 18 July 2001;                 Action brought on 3 October 2001 by Rica Foods (Free
                                                                         Zone) N.V. against the Commission of the European
—     in the alternative, reduce appropriately the amount of the                                   Communities
      fine imposed on the applicant in the contested decision;
                                                                                                 (Case T-242/01)
—     order the defendant to pay the costs of the proceedings.
                                                                                                   (2002/C 3/60)
Pleas in law and main arguments                                                             (Language of the case: Dutch)
The applicant manufactures various carbon and graphite
products, including graphite electrodes. In the course of a              An action against the Commission of the European Communi-
procedure seeking information under Article 11 of Regulation             ties was brought before the Court of First Instance of the
No 17/62 concerning suspected anti-competitive agreements                European Communities on 3 October 2001 by Rica Foods
between undertakings on the market for graphite electrodes,              (Free Zone) N.V., established in Oranjestad (Aruba), represent-
the applicant stated to the defendant that it was willing to             ed by G. van der Wal, with an address for service in
cooperate in the investigation of the case. A similar procedure          Luxembourg.