Appeal brought on 17 November 2008 by Prana Haus GmbH against the judgment of the Court of First Instance (Eighth Chamber) delivered on 17 September 2008 in Case T-226/07 Prana Haus GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-494/08 P)

(2009/C 32/26)

Language of the case: German

Parties

Appellant: Prana Haus GmbH (represented by: N. Hebeis, Rechtsanwalt)

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Form of order sought

Pleas in law and main arguments

The subject-matter of the dispute is the question whether the term ‘PRANAHAUS’ may be registered as a trade mark for the goods ‘recorded image and sound recording carriers of all kind; printed matter’ and for ‘retail services … for essential commodities …’. The Court of First Instance held that ‘PRANAHAUS’ was an indication directly and specifically describing the goods and services in question.

In its appeal, the appellant claims infringement of the absolute grounds for refusal of protection of a descriptive indication under Article 7(1)(c)of the Community Trade Mark Regulation.

According to the appellant, the Court of First Instance interpreted too broadly the legal term ‘to designate’ in Article 7(1)(c), contrary to the actual wording of the provision and the case-law of the Court of Justice. Furthermore, it erred in the assessment as to whether the designation ‘PRANAHAUS’ showed a sufficiently direct and specific relationship to the goods and services in question that the relevant public could ‘without further thought or analysis’ see in the term a ‘designation’ of the goods and services within the meaning of Article 7(1)(c). In doing so, the Court of First Instance failed to take into account the fact that several complex logical steps are required in order to identify even a hidden meaning in the term ‘PRANAHAUS’. In that context the Court of First Instance also failed to consider facts which would have had a bearing on the resolution of the case and as a result distorted the factual basis. Furthermore, the Court of First Instance failed to provide the required statement of reasons as regards the extent to which the term ‘PRANAHAUS’ could be considered to be descriptive of the specific goods and services. In addition, failing to have regard for the case-law of the Court of Justice, the Court of First Instance assumed that there was a need for the designation ‘PRANAHAUS’ to be kept free for competitors.