JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber, Extended Composition)
20 March 2002 (1) (Community trade mark - TELE AID - Absolute grounds for refusal - Article 7(1)(b) and (c) of Regulation (EC) No 40/94) In Case T-355/00,
DaimlerChrysler AG, established in Stuttgart (Germany), represented by S. Völker, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. von Mühlendahl and D. Schennen, acting as Agents,
defendant,
ACTION brought against the decision of the Third Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 12 September 2000 (Case R 142/2000-3) relating to registration of TELE AID as a Community trade mark,
THE COURT OF FIRST INSTANCE
OF THE EUROPEAN COMMUNITIES (Second Chamber, Extended Composition),
composed of: R.M. Moura Ramos, President, V. Tiili, J. Pirrung, P. Mengozzi and A.W.H. Meij, Judges,
Registrar: H. Jung,
having regard to the application lodged at the Registry of the Court of First Instance on 24 November 2000,
having regard to the response lodged at the Registry of the Court of First Instance on 23 February 2001,
further to the hearing on 21 November 2001,
gives the following
Judgment
Background to the dispute
1.
On 18 February 1997 Mercedes-Benz AG filed an application for a Community word mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (hereinafter the Office) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2.
The trade mark in respect of which registration was sought was the term TELE AID.
3.
The goods and services in respect of which registration of the trade mark was sought were in Classes 9, 12, 37, 38, 39 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 in each case to the following descriptions:
Class 9: Electrical and electronic devices for transferring speech and data; stationary and mobile transmission, relay and audio receivers and devices; data processing equipment and parts therefor; navigation devices; car emergency telephone systems.
Class 12: Automobiles and parts therefor.
Class 37: Repair services for automobiles; vehicle repair.
Class 38: Operation of a communications network; mobilising and coordination of accident and rescue services.
Class 39: Towing and rescue services.
Class 42: Computing services for determining vehicle location; collection, storage, processing and output of information.
4.
In January 1999, the transfer of the application to the applicant was recorded in the application file pursuant to Articles 17 and 24 of Regulation No 40/94 and Rule 31(8) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1).
5.
By decision of 9 December 1999 the examiner refused the application under Article 38 of Regulation No 40/94 on the ground that the word TELE AID was devoid of any distinctive character and descriptive of the goods and services in question within the meaning of Article 7(1)(b) and (c) of Regulation No 40/94.
6.
On 2 February 2000 the applicant filed an appeal against the examiner's decision at the Office under Article 59 of Regulation No 40/94.
7.
By decision of 12 September 2000 (hereinafter the contested decision), the Third Board of Appeal annulled the examiner's decision in so far as it refused the application in respect of the goods in Class 12 and dismissed the appeal in respect of the other classes mentioned in the application on the ground that the term in question fell within Article 7(1)(b) and (c) of Regulation No 40/94.
Forms of order sought
8.
The applicant claims that the Court should:
- annul the contested decision;
- order the Office to pay the costs.
9.
The Office contends that the Court should:
- dismiss the action;
- order the applicant to pay the costs.
Law
10.
The applicant relies on two pleas in law, alleging infringement of Article 7(1)(c) and of Article 7(1)(b) of Regulation No 40/94.
Infringement of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
11.
The applicant argues that, for the purposes of the absolute grounds for refusal, a mark must be assessed as a whole and in the form applied for. In this case, however, even broken down into its two constituent parts, the term TELE AID does not, in the applicant's view, constitute a descriptive indication of the goods and services concerned.
12.
As regards the component tele, the applicant argues that it is neither a word on its own nor an abbreviation but two syllables used in common parlance as part of many different words. Tele does not, in the applicant's submission, have the same meaning in all the combinations in which it is used, or even approximately the same meaning. In that connection the applicant cites words where tele is used to denote the concept of distance, as in telephone or telescope, those where it denotes purpose or goal (telos in Greek), such as teleology, and those where it denotes neither, such as the name of a composer (Telemann) or an area of Norway (Telemark).
13.
Furthermore, the applicant claims, tele is frequently used in the most diverse combinations as part of a trade mark, and the public is therefore accustomed to trade marks containing it. In that connection the applicant cites, inter alia, the trade marks TELE-ATLAS, TELE-PAGE and TELE-CARD. It therefore claims that tele is not directly descriptive of the goods or services concerned.
14.
As regards the component aid, the applicant states that this is frequently used in the most diverse combinations as part of a trade mark, and that the public is therefore accustomed to trade marks containing this word. In that regard the applicant refers to the German trade marks AID and BIKEAID and the Community trade marks MICROAID and FIRST AID.
15.
Similarly, it argues that the word aid is not specifically and immediately descriptive of the goods or services concerned in that it at most suggests merely the vague, uncertain and ambiguous notion of something or someone helping, assisting or supporting, or being helped or assisted.
16.
As regards the term TELE AID taken as a whole, the applicant claims that it is a neologism not found in current dictionaries of any Community language, including English, nor is it used as such in either common or technical parlance.
17.
Furthermore, the applicant claims thatTELE AID does not have a clear, specific meaning but...
