Judgments nº T-139/08 of Court of First Instance of the European Communities, September 29, 2009

Resolution Date:September 29, 2009
Issuing Organization:Court of First Instance of the European Communities
Decision Number:T-139/08
SUMMARY

Community trade mark - International registration designating the European Community - Figurative mark representing half a smiley smile - Absolute ground for refusal - Lack of distinctive character - Article 146(1) and Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 151(1) and Article 7(1)(b) of Regulation (EC) No 207/2009

 
FREE EXCERPT

In Case T-139/08,

The Smiley Company SPRL, established in Brussels (Belgium), represented by A. Deutsch, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 7 February 2008 (R 958/2007-4) concerning the international registration, designating the European Community, of the figurative mark representing half a smiley smile,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),

composed of V. Tiili, President, F. Dehousse and I. Wiszniewska-Bia-ecka (Rapporteur), Judges,

Registrar: K. Poche-, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 11 April 2008,

having regard to the response lodged at the Registry of the Court of First Instance on 31 July 2008,

having regard to the Court-s written question to the parties,

having regard to the observations lodged by the parties at the Registry of the Court of First Instance on 8, 15 and 30 April 2009,

having regard to the order of 4 June 2009 authorising the replacement of a party to the proceedings,

further to the hearing on 10 June 2009,

gives the following

Judgment

Background to the dispute

1 On 14 April 2006 Mr Franklin Loufrani obtained an international registration, designating the European Community, for the figurative mark reproduced below (-the mark at issue-):

2 The Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received notification of the international registration of the mark at issue on 14 September 2006.

3 The goods in respect of which the protection of that mark is claimed in the Community are in Classes 14, 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 14: -Precious metals and alloys thereof other than for dental use, jewellery, precious stones, timepieces and chronometric instruments, silverware (dishes), works of art of precious metal, boxes, cases and chests of precious metal, bracelets (jewellery), brooches (jewellery), sun dials, ashtrays (of precious metal) for smokers, chains (jewellery), hat ornaments (of precious metal), chronographs (watches), chronometers, fancy key rings, necklaces (jewellery), tie pins, household and kitchen containers, kitchen and household utensils of precious metal, pins (jewellery), clocks, badges of precious metal, cuff links, medals, purses of precious metal, watches, watchbands, silverware (with the exception of cutlery, table forks and spoons), ornaments (jewellery), wall clocks (timepieces), napkin holders of precious metal, alarm clocks, services (tableware) of precious metal, urns of precious metal, sacred vessels of precious metal-;

- Class 18: -Trunks and suitcases, umbrellas, parasols and walking sticks, whips and saddlery, animal collars and leashes, boxes of leather or leather board, purses, walking-stick seats, satchels, card cases (wallets), hat boxes of leather, key cases (leatherware), vanity cases, document holders, school bags, net bags for shopping, clothing for animals, attaché cases, change purses (not of precious metal), sunshades, wallets, sling bags for carrying infants, backpacks, handbags, beach bags, travelling bags, bags (envelopes, pouches) for packaging (of leather), garment bags (for travel), briefcases (leatherware), travelling sets (leatherware)-;

- Class 25: -Clothing, footwear (except orthopaedic footwear), bathing suits, bath robes, bibs not of paper, berets, hosiery, boots, suspenders, boxer shorts, caps, belts (clothing), hats, sports shoes, masquerade costumes, diaper pants, ear muffs (clothing), neckties, sashes for wear, scarves, gloves (clothing), layettes, slippers, soles, underwear, aprons (clothing), sportswear-.

4 On 1 February 2007, OHIM notified an ex officio provisional refusal of protection in the Community of the mark at issue, pursuant to Article 5 of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22) and to Rule 113 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, for all the goods covered by the international registration designating the Community. The ground put forward was that the mark at issue lacked distinctive character in terms of Article 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

5 Since there was no reply to that notification within the time-limit, the examiner, by decision of 23 April 2007, refused protection of the mark at issue in the Community for all the goods covered by the international registration designating the Community, on the ground that the mark at issue was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

6 On 22 June 2007, Mr Loufrani filed a notice of appeal with OHIM against that decision, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).

7 By decision of 7 February 2008 (-the contested decision-), the Fourth Board of Appeal of OHIM dismissed the appeal. The Board of Appeal found that the goods in respect of which protection was claimed were common consumer goods, that the relevant public was the general public of the Community, and that, considering that what were involved were -items of jewellery, leatherware, clothing and the like-, that public would pay a relatively high degree of attention when choosing those goods. Regarding the mark at issue, first, the Board of Appeal upheld...

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