Notice for the OJ
Appeal brought on 24 December 2001 (fax: 20.12.2001) by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) against the judgment delivered on 3 October 2001 by the Fourth Chamber of the Court of First Instance of the European Communities in Case T-140/00 between Zapf Creation AG and the Office for Harmonisation in the Internal Market (Trade Marks and Designs)
(Case C-498/01 P)
An appeal against the judgment delivered on 3 October 2001 by the Fourth Chamber of the Court of First Instance of the European Communities in Case T-140/00 between Zapf Creation AG and the Office for Harmonisation in the Internal Market (Trade Marks and Designs) was brought before the Court of Justice of the European Communities on 24 December 2001 (fax: 20.12.2001) by the Office for Harmonisation in the Internal Market (Trade Marks and Designs), represented by Detlev Schennen, Head of Unit in the Legal Department, and Carina Røhl Søberg, administrator in the Legal Department of the Office for Harmonisation in the Internal Market (Trade Marks and Designs).
The appellant claims that the Court should:
(1)dismiss the application of Zapf Creation AG;
(2)order Zapf Creation AG (as applicant in the proceedings before the Court of First Instance) to pay the costs of the proceedings before the Court of First Instance;
(3)set aside the judgment of the Court of First Instance of 3 October 2001 in Case T-140/00 "New Born Baby"
1;
(4)order Zapf Creation AG to pay the costs of the proceedings before the Court of Justice.
Pleas in law and main arguments:
(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 of the difference between indications of origin (valid marks) and those of a purely informative nature (indications falling within Article 7(1)(c)). The Court of 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 ("descriptive of that which the dolls represent"). In addition, the Court of First Instance erred in law in finding that "the persons targeted, when making their purchasing decision, [must] conflate the toy and what it represents"; this requires a certain causality between the 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 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.
(Infringement of Article 7(1)(c) of Council Regulation No 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 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 "accessories 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 goods.
(Infringement of Article 12 of Council Regulation No 40/94 and of the judgment in
BMW v
Deenik2, in so far as concerns "accessories for dolls in the form of playthings".
(Infringement of Article 7(1)(b) of Council Regulation No 40/94: since, in the present case, the refusal pursuant to Article 7(1)(b) on the ground of insufficient distinctive 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 - Not yet published in the European Court Reports.2 - Judgment of the Court of Justice of 23 February 1999 in Case C-63/1997, [1999] ECR I-925.