Judgments nº T-234/06 of Court of First Instance of the European Communities, November 19, 2009

• Resolution Date: November 19, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-234/06

In Case T‑234/06,

Giampietro Torresan, residing in Rothenburg (Switzerland), represented by G. Recher, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and O. Montalto, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Klosterbrauerei Weissenohe GmbH & Co. KG, established in Weissenohe (Germany), represented by A. Masetti Zannini de Concina, M. Bucarelli and R. Cartella, lawyers,

intervener,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 29 June 2006 (Case R 517/2005-2), relating to invalidity proceedings between Klosterbrauerei Weissenohe GmbH & Co. KG and Giampietro Torresan,

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

composed of I. Pelikánová, K. Jürimäe and S. Soldevila Fragoso (Rapporteur), Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 4 September 2006,

having regard to the response of OHIM lodged at the Registry on 27 November 2006,

having regard to the pleading of the intervener lodged at the Registry on 26 January 2007,

having regard to the change in the composition of the Chambers of the Court of First Instance,

further to the hearing on 5 May 2009,

gives the following

Judgment

Background to the dispute

1 On 12 February 1999, the applicant, Mr Giampietro Torresan, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p.1)).

2 Registration as a trade mark was sought for the word sign CANNABIS.

3 The goods in respect of which registration of the mark was sought are in Classes 32, 33 and 42 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:

– ‘Beers’ (Class 32);

– ‘Wine, spirits, liqueurs, sparkling beverages, sparkling wine, champagne’ (Class 33);

– ‘Providing of food and drink, restaurants, self-service restaurants, public houses, ice cream parlours, pizzerias’ (Class 42).

4 On 16 April 2003, the Community trade mark CANNABIS was registered under number 1073949.

5 On 27 June 2003, the intervener, Klosterbrauerei Weissenohe GmbH & Co. KG, filed an application pursuant to Articles 51(1)(a) and 7(1)(c), (f) and (g) of Regulation No 40/94 (now Articles 52(1)(a) and 7(1)(c), (f) and (g) of Regulation No 207/2009) for a declaration that the trade mark CANNABIS was invalid as regards the goods in Classes 32 and 33.

6 By decision of 9 March 2005, the Cancellation Division of OHIM declared the registration of the Community trade mark to be invalid as regards the goods in Classes 32 and 33 of the Nice Agreement as it found that the mark CANNABIS was descriptive in terms of Article 7(1)(c) of Regulation No 40/94.

7 On 29 April 2005, the applicant lodged an appeal seeking the annulment of that decision. By decision of 29 June 2006 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It found, in particular, first, that the word ‘cannabis’ designated, in everyday language, either a textile plant or a narcotic substance and, secondly, that it was, for the average consumer, a clear and direct indication of the characteristics of goods in Classes 32 and 33.

Forms of order sought

8 The applicant claims that the Court should:

– annul the contested decision;

– confirm the registration of the Community trade mark CANNABIS for Classes 32 and 33;

– order OHIM to pay the costs.

9 OHIM and the intervener contend that the Court should:

– dismiss the action as unfounded;

– order the applicant to pay the costs.

10 At the hearing, the applicant declared that he was withdrawing its second head of claim, formal note of which was taken in the minutes of the hearing.

Law

11 In support of his action, the applicant relies on a single plea in law alleging infringement of Articles 51(1)(a) and 7(1)(c) of Regulation No 40/94. The intervener relies on two pleas in law alleging, first, infringement of Articles 51(1)(a) and 7(1)(g) of Regulation No 40/94 and, secondly, infringement of Articles 51(1)(a) and 7(1)(f) of that regulation.

Arguments of the parties

12 The applicant maintains that the trade mark CANNABIS has distinctive character, given that it is both a common name and a purely fanciful mark and has no connection, even indirect, with beer and beverages in general. As a common name, the word ‘cannabis’ constitutes the scientific name of a flowering plant from which certain drugs are extracted and from which certain therapeutic substances may be obtained. The sign CANNABIS has been present on the Italian market since 1996 and, since 1999, as a Community trade mark for goods in Classes 32 and 33 of the Nice Agreement. It has acquired a high degree of renown in the Community context.

13 The applicant submits that the word ‘cannabis’ does not constitute the normal way of designating beers or alcoholic beverages in Class 33. First, in view of Directive 2000/13/EC of the European Parliament and of the Council of 20 March 2000 on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs (OJ 2000 L 109, p. 29) and Council Directive 88/388/EEC of 22 June 1988 on the approximation of the laws of the Member...