Judgments nº T-247/01 of Court of First Instance of the European Communities, December 12, 2002

• Resolution Date: December 12, 2002
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-247/01

JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)

12 December 2002 (1) (Community trade mark - ECOPY - Misuse of powers - Distinctiveness acquired through use after the date of filing - Article 7(3) of Regulation (EC) No 40/94) In Case T-247/01,

eCopy Inc, established in Nashua, New Hampshire (United States), represented by B. Reid, Barrister,

applicant,

v

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

defendant,

ACTION brought against the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 13 July 2001 (Case R 47/2001-1) relating to registration of the word ECOPY as a Community trade mark,

THE COURT OF FIRST INSTANCE

OF THE EUROPEAN COMMUNITIES (Fourth Chamber),

composed of: M. Vilaras, President, V. Tiili and P. Mengozzi, Judges,

Registrar: J. Plingers, Administrator,

having regard to the written procedure and further to the hearing on 11 September 2002,

gives the following

Judgment

Legal background

1.

Articles 7, 8, 9, 26 and 27 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, provide as follows:

‘Article 7

Absolute grounds for refusal

1. The following shall not be registered:

   ...

   (b) trade marks which are devoid of any distinctive character;

   (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

   ...

3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

   Article 8

   Relative grounds for refusal

1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

   (a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

   (b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; ...

2. For the purposes of paragraph 1, “Earlier trade marks” means:

   (a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

   (i) Community trade marks;

   ...

   (b) applications for the trade marks referred to in subparagraph (a), subject to their registration;

   ...

5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

   ...

   Article 9

   Rights conferred by a Community trade mark

   ...

3. The rights conferred by a Community trade mark shall prevail against third parties from the date of publication of registration of the trade mark. Reasonable compensation may, however, be claimed in respect of matters arising after the date of publication of a Community trade mark application, which matters would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. The court seized of the case may not decide upon the merits of the case until the registration has been published.

   ...

   Article 26

   Conditions with which applications must comply

1. An application for a Community trade mark shall contain:

   (a) a request for the registration of a Community trade mark;

   (b) information identifying the applicant;

   (c) a list of the goods or services in respect of which the registration is requested;

   (d) a representation of the trade mark.

   ...

   Article 27

   Date of filing

   The date of filing of a Community trade mark application shall be the date on which documents containing the information specified in Article 26(1) are filed with the Office by the applicant ..., subject to payment of the application fee within a period of one month of filing the abovementioned documents.’

   Background to the dispute

   2.
   On 21 June 2000 the applicant, acting under its previous name, Simplify Development Corporation, filed an application for a Community trade mark (application No 1718667) at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Regulation No 40/94.
   3.
   The trade mark in respect of which registration was sought was the word ECOPY.
   4.
   The goods in respect of which registration of the trade mark was sought are in Class 9 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:

   ‘Software discs and associated apparatus for enabling the scanning and electronic distribution of documents over computer networks’.

   5.
   By decision of 10 November 2000, the examiner refused the application under Article 38 of Regulation No 40/94 on the ground that the trade mark for which registration was sought was descriptive of the goods in question and devoid of any distinctive character within the meaning of Article 7(1)(c) and (b) of Regulation No 40/94.
   6.
   On 8 January 2001, the applicant appealed against the examiner's decision to OHIM under Article 59 of Regulation No 40/94. In the appeal, the applicant requested, for the first time, that Article 7(3) of Regulation be held to apply, and submitted supporting evidence to that end.
   7.
   By a decision of 13 July 2001, which was served on the applicant on 18 July 2001, the First Board of Appeal dismissed the appeal (hereinafterthe contested decision). The Board of Appeal essentially held that the termECOPY meantelectronic copy and that it therefore referred to the nature and intended purpose of the goods covered by the application. It accordingly found that the mark applied for was caught by Article 7(1)(c) of Regulation No 40/94. It also found that the mark sought was devoid of any inherent distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. Finally, the Board considered that the mark claimed could not be registered pursuant to Article 7(3) of the regulation. In that connection it found, firstly, that part of the evidence submitted by the applicant was not sufficient to prove that the mark had acquired distinctive character through use...