10.1.2009

Official Journal of the European Union

C 6/9

(Case C-408/08 P)

(2009/C 6/16)

Language of the case: French

Parties

Appellant: Lancôme parfums et beauté & Cie SNC (represented by: A. von Mühlendahl, Rechtsanwalt)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs), CMS Hasche Sigle

Form of order sought

The appellant claims that the Court should:

—set aside the judgment of the Court of First Instance of 8 July 2008 in Case T-160/07;

—dismiss, as unfounded, the appeal against the decision of the Office's Cancellation Division of 21 December 2006 in Case 892 C concerning the registration of the Community trade mark 2965804 COLOR EDITION, on grounds of the applicant having no right to bring an action or, alternatively, on account of there being no grounds for absolute refusal;

—order the Office to pay the costs incurred in the proceedings before the Court of First Instance and before the Court of Justice;

—order CMS Hasche Sigle to pay the costs incurred in the proceedings before the Office's Board of Appeal.

Pleas in law and main arguments

The appellant advances two grounds of appeal in support of its appeal.

By its first ground, which has two branches, it submits that the Court of First Instance erred in law in its interpretation of Article 55(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (1).

The error consists in the confirmation of the capacity to bring proceedings granted to the law firm CMS Hasche Sigle in the proceedings brought before the Office for Harmonisation in the Internal Market (Trade Marks and Designs), then before the Court of First Instance. That party had not in fact demonstrated that it had an actual or potential economic interest which, in itself, might warrant a law firm, acting on its own behalf, having the capacity to bring legal proceedings for a declaration of the invalidity of a trade mark for cosmetics. Community law does not recognise actions brought in the absence of a private individual or economic interest (actio popularis).

According to the appellant, to concede that a lawyer, acting on its own behalf, may bring an application for removal from the register of a trade mark is, on any view, incompatible with the professional profile of a lawyer, as a member of the legal profession.

By its second plea, the appellant challenges the finding of the Court of First Instance that the trade mark COLOR EDITION is perceived as descriptive and consequently falls under Article 7(1)(c) of Regulation No 40/94. That interpretation conflicts with the Court's case-law relating to the constituent elements of the concept of a descriptive mark. Being able to infer from a trade mark the protected goods and their characteristics is not an adequate test. It is necessary to ascertain whether the chosen terms, taken individually as well as jointly, are known and usually employed in the everyday language of the relevant public.

(1) OJ 1994 L 11, p. 1.