Appeal brought on 26 January 2005 (fax: 24 January 2005) by August Storck KG against the judgment delivered on 10 November 2004 by the Court of First Instance of the European Communities (Fourth Chamber) in Case T-402/02 August Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-25/05 P)

(2005/C 69/21)

Language of the case: German

An appeal against the judgment delivered on 10 November 2004 by the Court of First Instance of the European Communities (Fourth Chamber) in Case T-402/02 August Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) was brought before the Court of Justice of the European Communities on 26 January 2005 (fax: 24 January 2005) by August Storck KG, represented by Ilse Rohr, Heidi Wrage-Molkenthin and Tim Reher, Rechtsanwälte, CMS Hasche Sigle, Stadthausbrücke 1-3, D-20355 Hamburg.

The appellant claims that the Court should:

Pleas on appeal and main arguments:

1.   Breach of Article 7(1)(b) of Regulation No 40/94

The Court of First Instance erred in law by requiring that the mark applied for must differ substantially from other comparable marks in the relevant product market. The distinctive character of the mark should instead be examined on its own merits, without reference to any similar marks on the market.

In any event, the public interest or a need to preserve the availability [of a mark] are not to be taken into consideration within the context of Article 7(1)(b) of Regulation No 40/94. The monopolisation of marks as such is intended by trade mark law. There is no evidence of an unjustified monopolisation.

The Office has not relied on other grounds of refusal in the context of which the public interest could be taken into consideration, in particular the grounds of refusal provided for under Article 7(1) (d) to (j) of Regulation No 40/94.

The mark applied for possesses inherent distinctiveness. The fact that consumers recognise the mark as a sweet wrapper does not prevent it from simultaneously having the function of an indication of trade origin. The colour three-dimensional mark serves as a signal and a recognition factor, especially in cases where the consumer is confronted with a very large choice, as in the confectionery market.

2.   Breach of the first sentence of Article 74(1) of Regulation No 40/94

Contrary to the view of the Court of First Instance, the Office should have examined and explained which similar or identical marks exist on the market – as it claims – if it seeks thereby to justify its refusal to register the mark. The Office may not base its decision on facts which have not been proved and which it merely presumes. If the Office considers it necessary – which the appellant does not – to measure the distinctiveness of the mark against sweet wrappers available on the market, it must examine that market situation.

3.   Breach of Article 73 of Regulation No 40/94

In order to justify its finding that the mark applied for is devoid of distinctiveness, the Office relies on similar sweet wrappers which it claims exist on the market. The appellant has had no opportunity to express a view on those sweet wrappers allegedly existing on the market, since they have not been produced by the Office.

The appellant's right to a fair hearing has thereby been infringed.

4.   Breach of Article 7(3) of Regulation No 40/94

The mark applied for has at least acquired distinctiveness through its extensive use in the EC. The evidence relating to sales volumes and advertising expenditure for goods designated by that mark should have been taken into account even in the absence of comparative figures concerning the sweet market as a whole which the Office required.

Contrary to the view expressed by the Office and the Court of First Instance, it is not necessary to adduce evidence for all Member States of the EC that the mark has become distinctive in consequence of the use that has been made of it. In the light of the objective of establishing a single market in all Member States of the EC, it is appropriate to analyse the dissemination and recognition of the mark applied for within the territory of the EC, without regard to national borders. Consequently, the evidence of use adduced by the appellant is sufficient to form the basis for a finding that the mark has distinctive character in the EC.

(1)  OJ C 19, 22.1.2005.