CELEX: C2002/056/17
Language: en
Date: 2002-03-02 00:00:00
Title: Case C-500/01: Action brought on 21 December 2001 by the Commission of the European Communities against the Kingdom of Spain

2.3.2002                 EN                    Official Journal of the European Communities                                           C 56/9
Pleas in law and main arguments                                           Action brought on 21 December 2001 by the Commission
                                                                          of the European Communities against the Kingdom of
                                                                                                           Spain
—     Infringement of Article 7(1)(c) of Council Regulation No
      40/94 in respect of goods classed as ‘dolls to play with’:
      the contested judgment does not take sufficient account                                         (Case C-500/01)
      of the difference between indications of origin (valid
      marks) and those of a purely informative nature (indi-
      cations falling within Article 7(1)(c)). The Court of                                            (2002/C 56/17)
      First Instance erred in law by reducing the scope of
      Article 7(1)(c) to the descriptive indication of the product
      itself (‘that the sign in question is descriptive of the dolls
      themselves’) and by excluding from the scope of that
      provision the description of the dolls’ characteristics             An action against the Kingdom of Spain was brought before the
      (‘descriptive of that which the dolls represent’). In               Court of Justice of the European Communities on 21 December
      addition, the Court of First Instance erred in law in               2001 by the Commission of the European Communities,
      finding that ‘the persons targeted, when making their               represented by Stefan Rating, of its Legal Service, with an
      purchasing decision, [must] conflate the toy and what it            address for service in Luxembourg at the office of Luis Escobar
      represents’; this requires a certain causality between the          Guerrero, of its Legal Service, Wagner Centre, Kirchberg.
      descriptive indication and the purchasing decision which
      has nothing to do with Article 7(1)(c). The Court of First
      Instance disregarded the fact that numerous descriptive
      indications describe not the kind of product but what it            The applicant claims that the Court should:
      represents or its content; that is the general position as
      regards toys, but it also applies in respect of books and
      magazines, video games, etc.                                        (1) declare that, by failing to comply with the provisions of
                                                                                 Article 4c of Directive 90/388/EEC (1), as amended by
                                                                                 Directive 96/19/EC (2), the Kingdom of Spain has failed
—     Infringement of Article 7(1)(c) of Council Regulation No                   to fulfil its obligations under Article 249 EC;
      40/94, in so far as concerns ‘accessories for dolls in the
      form of playthings’: the Court of First Instance misapplied
      the principle of trade-mark law — in itself correct — that          (2) order the Kingdom of Spain to pay the costs.
      the protectability of a mark is to be considered by
      reference to the goods in respect of which the application
      is made, inasmuch as it wrongly analysed the goods
      ‘accessories for dolls in the form of playthings’ separately
      from the rest of the classification. The indication ‘access-        Pleas in law and main arguments
      ories for dolls in the form of playthings’ is so manifestly
      related to the principal goods — ‘dolls to play with’ —
      that it must inevitably share the same fate, in terms of
      trade-mark law, as that meted out to those principal                The Commission considers that it will not be possible, at least
      goods.                                                              as regards Telefónica, for subscription charges to be aligned
                                                                          with costs prior to the beginning of 2003. This results from
                                                                          the practical limitations imposed by the Spanish system of
—     Infringement of Article 12 of Council Regulation No                 maximum price limits, which prevent Telefónica from making
      40/94 and of the judgment in BMW v Deenik (2), in so                more rapid changes to the amount of the subscription charge.
      far as concerns ‘accessories for dolls in the form of               The Commission further maintains that it can hardly be argued
      playthings’.                                                        that a re-balancing spread over a period of some seven years
                                                                          meets the criterion of maximum possible rapidity laid down
—     Infringement of Article 7(1)(b) of Council Regulation No            by the directive, and that the re-balancing has proceeded in
      40/94: since, in the present case, the refusal pursuant to          parallel with the opening-up to competition of the Spanish
      Article 7(1)(b) on the ground of insufficient distinctive           telecommunications market.
      character was based on the same arguments as those
      applying in respect of Article 7(1)(c), it is logical that the
      outcome of the present case can only be uniform, i.e. the
      opposite of that contained in the contested judgment.               (1) Commission Directive 90/388/EEC of 28 June 1990 on compe-
                                                                              tition in the markets for telecommunications services (OJ L 192
                                                                              of 24.7.1990, p. 10).
                                                                          (2) Commission Directive 96/19/EC of 13 March 1996 amending
(1) Not yet published in the European Court Reports.                          Directive 90/388/EEC with regard to the implementation of
(2) Judgment of the Court of Justice of 23 February 1999 in Case              full competition in telecommunications markets (OJ L 74 of
    C-63/1997, [1999] ECR I-925.                                              13.3.1996, p. 13).