Appeal brought on 13 July 2006 by Eurohypo AG against the judgment delivered on 3 May 2006 in Case T-439/04 Eurohypo AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-304/06 P)

(2006/C 224/43)

Language of the case: German

Parties

Appellant: Eurohypo AG (represented by C. Rohnke and M. Kloth, Rechtsanwälte)

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Form of order sought

Pleas in law and main arguments

The appellant argues as follows in support of its appeal against the above judgment of the Court of First Instance:

The Court of First Instance misinterpreted the requirements of the Office's duty to examine of its own motion under the first sentence of Article 74(1) of Regulation No 40/94. According to the case-law, the examination by the competent authority for trade marks must be stringent and full, in order to prevent, for reasons of legal certainty and good administration, both unjustified registrations of marks and unjustified objections to marks eligible for registration. The Office's examination must be thorough enough for the Office to be able to ascertain with certainty, on the basis of that examination, whether there are grounds for refusing registration under Article 7 of Regulation No 40/94. However, neither the judgment nor the preceding decisions of the respondent contained findings of fact as to the allegedly descriptive character of ‘EUROHYPO’. Instead, the findings were confined to possible descriptive meanings of the individual components ‘EURO’ and ‘HYPO’. No other findings of fact were made on the descriptive character of the designation ‘EUROHYPO’ as a whole.

The Court of First Instance misinterpreted the requirement of distinctive character under Article 7(1)(b) of Regulation No 40/94 and wrongly refused to register the mark applied for. In the case of a mark composed of words, possible distinctive character can indeed be examined partially for each concept or component separately, but must in every case depend on an examination of the totality they form. Even if it is the case that none of the components has distinctive character on its own, that does not exclude the possibility that the combination of them may have distinctive character. In the present case, however, the respondent confined itself, in the contested appeal decision, to finding that the components ‘EURO’ and ‘HYPO’ were descriptive and the overall concept did not convey an overall impression that went beyond the sum of its parts, without explaining why the compound word EUROHYPO as a whole could not distinguish the services of the appellant from those of other undertakings.

The judgment of the Court of First Instance was also based on the use of a criterion according to which a mark made up of descriptive components may be capable of registration if the compound word has entered general linguistic use and has acquired a meaning of its own, it then being necessary to examine whether that word is not itself descriptive. That criterion is relevant in the context of Article 7(1)(c) of Regulation No 40/94 for the question of a possible need to leave the mark free, but it is not the criterion that applies to the interpretation of Article 7(1)(b) on ascertaining distinctive character. By the use of that criterion, relevant in the context of Article 7(1)(c) of Regulation No 40/94, as a basis of its decision to dismiss the action, the Court of First Instance erred in law in its interpretation of Article 7(1)(b) of Regulation No 40/94.