29.1.2011

Official Journal of the European Union

C 30/24

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(Case C-536/10 P)

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2011/C 30/40

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 appealed against, insofar as it dismissed the action in accordance with the forms of order sought before the General Court;

—Annul the decision of the Fourth Board of Appeal of 15 April 2008 (No R 1525/2006-4); and

—Order the defendant to pay the costs of the appeal and of the action.

Pleas in law and main arguments

1.By its appeal, the appellant applies for the judgment of the General Court to be set aside, in so far as it dismissed the action because it decided that the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) did not infringe Article 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (‘Community trade mark regulation’) or Article 7(1)(c) of the Community trade mark regulation when it rejected the registration of the word mark ‘ROI ANALYZER’ for goods in Class 9 (Computer software) and for services in Classes 35 and 42 (Management consultancy and development etc of data-processing programmes).

2.The Court thereby assumed on an incorrect factual basis that what was at issue were specifically goods and services intended exclusively for experts with knowledge and interests in the field of management science. In so doing, the fact that the goods ‘computer software’ in Class 9 were to be used only ‘in particular’ to obtain and process business data was disregarded. Software with other uses could therefore also be the subject of the mark applied for. In addition, engineers and other persons who had no knowledge of specialist management science-related terminology also worked with the applicant’s software. The Court’s assessment was therefore based on incorrect factual assumptions.

Furthermore, the Court was of the opinion, again proceeding on an incorrect factual basis, that, while the element ‘ROI’ admittedly had different meanings in different languages, consumers would in connection with the word ‘ANALYZER’, always interpret the element ‘ROI’ to mean ‘Return on Investment’. The Court was wrong to find that the consumers targeted would then without further consideration understand the mark applied for as describing ‘an instrument for analysing the rate of return on investments’.

The Court also misinterpreted the underlying goods and services when assuming the existence of obstacles to the protection of computer hardware. Following division of the application, the sign was already registered with final legal effect with regard to those goods and services belonging to Classes 35 and 42.

Finally, the argument based on earlier registrations in the EU, namely as Community trade marks, was rejected on the basis that national marks could not be taken into account. In that instance also an incorrect factual basis was used.

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