Judgments nº T-298/06 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-298/06

In Case T‑298/06,

Agencja Wydawnicza Technopol sp. z o.o., established in Częstochowa (Poland), represented by V. von Bomhard, A Renck and T. Dolde, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 7 August 2006 (Case R 447/2006-4), relating to the application for registration of the word mark 1000 as a Community trade mark,

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

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

Registrar: K. Pocheć, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 18 October 2006,

having regard to the response lodged at the Court Registry on 17 January 2007,

further to the hearing on 26 November 2008,

gives the following

Judgment

Background to the dispute

1 On 4 April 2005, the applicant, Agencja Wydawnicza Technopol sp. z o.o., filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The mark for which registration was sought is the word sign 1000.

3 The goods and services in respect of which registration was sought are in Classes 16, 28 and 41 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 to the following description for each of those classes:

– Class 16: ‘posters, placards, brochures, periodicals, including periodicals containing crossword puzzles and rebus puzzles, printed matter, newspapers’;

– Class 28: ‘brain teasers, riddles, puzzles’;

– Class 41: ‘organising contests, publishing texts’.

4 By letter of 27 September 2005, the examiner informed the applicant that the sign 1000 was not eligible for registration for any of the goods covered by the application, pursuant to Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009). In its reply of 14 November 2005, the applicant restricted the list of the goods covered by the application to those in Class 16 and excluded posters, placards and printed matter.

5 On 31 January 2006 the examiner refused the application for registration for the goods in Class 16, pursuant to Article 7(1)(b) and (c) of Regulation No 40/94, on the grounds that the sign 1000 was an indication describing the contents or other characteristics of the goods covered by the trade mark application, that the sign in question did not have any distinctive character, but was an advertising statement, and that it had not become distinctive through use within the meaning of Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009).

6 On 31 March 2006, the applicant filed an appeal against the examiner’s decision. By decision of 7 August 2006 (‘the contested decision’) the Fourth Board of Appeal dismissed the appeal, confirming the examiner’s analysis.

7 In essence, the Board of Appeal held, first, that the figure 1000 could be used to designate the contents of brochures, magazines and periodicals (paragraphs 16 to 21 of the contested decision), that Article 12 of Regulation No 40/94 (now Article 12 of Regulation No 207/2009) did not enable the conditions for registration of Community trade marks to be relaxed (paragraph 22 of the contested decision), and that the registrations of Community trade marks cited by the applicant were not comparable with the facts of the present case (paragraph 23 of the contested decision). Next, the Board of Appeal held that the mark applied for was not distinctive since it would be perceived by the public as praising the publication’s success in the market and not as an indication of the origin of a given company (paragraphs 25 to 28 of the contested decision). Lastly, the Board of Appeal held that the applicant had failed to prove that the mark applied for had become distinctive through use in a substantial part of the European Community (paragraphs 29 to 31 of the contested decision).

Forms of order sought

8 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

9 OHIM contends that the Court should:

– dismiss the action as unfounded;

– order the applicant to pay the costs.

10 At the hearing, the applicant confirmed that the subject-matter of the dispute was...