29.3.2008

Official Journal of the European Union

C 79/18

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(Case C-17/08 P)

(2008/C 79/31)

Language of the case: German

Parties

Appellant: MPDV Mikrolab GmbH, Mikroprozessordatenverarbeitung und Mikroprozessorlabor (represented by: W. Göpfert, Rechtsanwalt)

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

Form of order sought

—set aside the judgment under appeal insofar as the Court of First Instance dismissed the heads of claim submitted before it,

—annul the decision of the Second Board of Appeal of 19 October 2005 in the appeal proceedings R 1059/2004-2, and

—order the respondent to pay the costs of the appeal.

Pleas in law and main arguments

The appeal is based on errors in law in the interpretation in the judgment under appeal of Article 7(1)(b) and (c) of the Community Trade Mark Regulation.

That erroneous interpretation resulted in an erroneous outcome — rejection of the application for registration of the Community word mark ‘manufacturing score card’. In particular, not only did the Court of First Instance make a wrong assessment of the content; it also seriously misinterpreted the requirements of distinctive character and the need to keep terms free as formulated by the European Court of Justice in relation to applications for a Community trade mark and the relevant classes of persons.

It was not permissible for the Court of First Instance to divide the verbal composition submitted in the application into its constituent parts and to find, on that basis, that the mark was not eligible for protection. Dividing it up in this way does not correspond to how the ‘normal’ class of persons assesses and interprets the mark when it sees it as a whole. Moreover, the Court of First Instance was wrong to base its finding that the mark lacked distinctive character and that there was a need to keep the term free on the observation that the verbal composition consisted of parts which, in the course of trade, were normally used to explain the purpose and function of the services covered. The relevant trade circles would not, however, recognise any immediately obvious meaning in the application for a Community trade mark ‘manufacturing score card’, consisting of a combination of three English words. Consequently, the mark applied for has the minimum distinctive character required by Article 7(1)(b) of the Community Trade Mark Regulation and also does not designate characteristics of goods or services in accordance with Article 7(1)(c) of the Community Trade Mark Regulation.

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