Appeal brought on 9 September 2011 by Audi AG and Volkswagen AG against the judgment of the General Court (Third Chamber) delivered on 6 July 2011 in Case T-318/09 Audi AG, Volkswagen AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Case C-467/11 P)

2011/C 347/18

Language of the case: German

Parties

Appellants: Audi AG, Volkswagen AG (represented by: P. Kather, Rechtsanwalt)

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 judgment under appeal infringes Article 7(1)(c) of the Regulation on the Community trade mark (‘Regulation No 207/2009’) (1) as substantive Community law was applied incorrectly. The sign TDI is not descriptive. The General Court incorrectly proceeded on the basis that the public concerned would immediately and without further thought assume that the sign TDI is an abbreviation of a technical characteristic. That is incorrect as TDI is, on the one hand, not an abbreviation and there is, on the other hand, a multitude of expansions for such an abbreviation. Therefore the requirement of understanding ‘immediately and without further thought’ is not fulfilled. Furthermore, the appellants take the view that there is infringement of the principle in the first part of the first sentence of Article 76(1) of Regulation No 207/2009, which provides that OHIM is to examine the facts of its own motion, as OHIM neglected to prove that an absolute ground for refusal exists.

In addition, there is infringement of the principle of equal treatment as there is a direct and specific relationship between the sign TDI and the registered signs CDI and HDI which demands that they be treated equally. No such equal treatment exists here as TDI is not registered.

The judgment under appeal also infringes Article 7(3) of Regulation No 207/2009 because, on the one hand, evidence that the mark has been accepted throughout the Community is not required and, on the other hand, the General Court erred in law in its assessment of the underlying facts. Evidence is not required because the case-law of the Court in Pago  (2) in respect of Article 9 of Regulation No 207/2009 is applicable to Article 7 of that regulation. Over and above that, relevant evidence of the acceptance of the mark was adduced, in the assessment of which the General Court erred in law. In particular, the General Court failed to appreciate the evidential value of national registrations. In addition, the General Court did not take into account the large market shares and high sales figures in respect of TDI vehicles and it therefore overlooked the associated advertising effect in its legal assessment.

Lastly, the General Court erred in law by stating that the sign TDI is not used as a mark. That is incorrect and infringes Community law as the sign TDI is used as a mark in every form of use.

(1)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

(2)  Judgment of the Court of 6 October 2009 in Case C-301/07 PAGO International [2009] ECR I-9429.