Orders nº T-194/05 of Court of First Instance of the European Communities, May 11, 2006

• Resolution Date: May 11, 2006
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-194/05

(Community trade mark – Opposition proceedings – Extent of the examination required – Conversion of a Community trade mark application to a national trade mark application – Article 58 of Regulation (EC) No 40/94) In Case T‑194/05,

TeleTech Holdings, Inc., established in Denver, Colorado (United States), represented by A. Gould and by M. Blair, Solicitors,

applicant,

v

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

defendant,

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

Teletech International SA, established in Paris (France), represented by J.‑F. Adelle and F. Zimeray, lawyers,

intervener,

ACTION brought against the decision of the First Board of Appeal of OHIM of 3 March 2005 (R 497/2004-1), relating to opposition proceedings between TeleTech Holdings, Inc. and Teletech International SA,

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

composed of J. Pirrung, President, A.W.H. Meij and I. Pelikánová, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 9 May 2005,

having regard to the response of OHIM lodged at the Court Registry on 10 October 2005,

having regard to the response of the intervener lodged at the Court Registry on 7 October 2005,

makes the following

Order

Background to the dispute

1 On 14 May 2001 the intervener applied to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration of the word sign TELETECH INTERNATIONAL as a Community trade mark in respect of services falling within Classes 35, 38 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.

2 On 24 June 2002 the applicant filed a notice of opposition, in accordance with Article 42 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, against the registration of that Community trade mark. The opposition concerned all the services referred to in the preceding paragraph and was founded, inter alia, on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, between the trade mark sought and the following earlier trade marks:

– the Community word mark TELETECH GLOBAL VENTURES;

– the United Kingdom national word mark TELETECH.

3 By decision of 23 April 2004, the Opposition Division upheld the opposition, considering that there was a likelihood of confusion between the trade mark sought and the earlier United Kingdom trade mark. It did not consider it necessary to examine the other grounds for refusal of registration at issue, stating that the existence of a likelihood of confusion with the earlier United Kingdom trade mark was enough to prevent the registration sought.

4 On 23 June 2004 the applicant brought an appeal before OHIM, pursuant to Articles 57 to 59 of Regulation No 40/94, against the decision of the Opposition Division. The applicant stated that the appeal was not directed against the rejection of the application for a Community trade mark as such, but against the refusal to examine the other grounds cited for refusal of registration.

5 By decision of 3 March 2005, R 497/2004-1 (the ‘contested decision’), the First Board of Appeal of OHIM dismissed the appeal as inadmissible. It held that, as the registration of the Community trade mark sought had been refused in its entirety, the applicant had not in any way been adversely affected by the Opposition Division’s decision.

Forms of order sought

6 The applicant claims that the Court of First Instance should:

– annul the contested decision;

– remit the matter to the Opposition Division, so that it also rules on the ground for refusal of registration founded on the earlier Community trade mark;

– order OHIM to pay the costs incurred in the proceedings before the Court of First Instance and the Board of Appeal.

7 OHIM claims that the Court of First Instance should:

– dismiss the action;

– order the applicant to pay the costs.

8 The intervener claims that the Court of First Instance should dismiss the action.

Law

9 As set out in Article 111 of the Rules of Procedure of the Court of First Instance, where the action is manifestly lacking any foundation in law, the Court of First Instance may, without taking further steps in the proceedings, give a decision on the action by reasoned order.

10 In this instance, the Court of First Instance considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give judgment without taking further steps in the proceedings.

Arguments of the parties

11 In support of its action, the applicant essentially puts forward a single plea, alleging an infringement of Article 58 of Regulation No 40/94. There are two branches to that plea. By the first branch, the applicant challenges the reasoning followed by the Court of First Instance in Case T‑342/02 Metro-Goldwyn-Mayer Lion v OHIM – Moser Grupo Media (Moser Grupo Media) [2004] ECR II‑0000. By the second branch, it submits that the facts of this dispute can be distinguished from those which gave rise to that case.

12 In the first branch of the plea, the applicant points out that the Court of First Instance relied, in paragraph 44 of Moser Grupo Media, on the reasoning set out in paragraph 33 of the judgment in Case T‑138/89 NBV and NVB v Commission [1992] ECR II‑2181. The applicant is of the opinion that the legal position of the applicants in NBV and NVB v Commission can be distinguished from its own in the present case inasmuch as its own legal...