Judgment_paragraph 11 · European Union Intellectual Property Office v Erpo Möbelwerk GmbH (C-64/02 P)

11In paragraphs 43 to 46 of the contested judgment, the Court of First Instance held that the first plea was also well founded, on the basis of the following considerations:43. Furthermore, the Board of Appeal again noted, in paragraph 30 of the contested decision, that DAS PRINZIP DER BEQUEMLICHKEIT was characterised by the lack of any additional element of imagination. In addition, the Office submitted in its response that, in order to be able to serve as marks, slogans must possess an additional element ... of originality and that the term at issue had no such originality.44. In that regard, it is clear from the case-law of the Court of First Instance that lack of distinctiveness cannot be found because of lack of imagination or of an additional element of originality (Case T-135/99 Taurus-Film v OHIM (Cine Action) [2001] ECR II-379, paragraph 31; Case T-136/99 Taurus-Film v OHIM (Cine Comedy) [2001] ECR II-397, paragraph 31; and Case T-87/00 Bank för Arbeit und Wirtschaft v OHIM (EASYBANK) [2001] ECR II-1259, paragraphs 39 and 40). Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign.45. To the extent that the Board of Appeal, in paragraph 31 of the contested decision, again points out the lack of any conceptual tension which would create surprise and so make a striking impression, it must be stated that that point is really only a paraphrase of the Board of Appeal's finding of no additional element of imagination.46. The dismissal, on the basis of Article 7(l)(b) of Regulation No 40/94, of the appeal brought before the Board of Appeal would have been justified only if it had been demonstrated that the combination of the words das Prinzip der ... (the principle of...) alone with a term designating a characteristic of the goods or services concerned is commonly used in business communications and, in particular, in advertising. The contested decision does not contain any finding to that effect and neither in its written pleadings nor at the hearing has the Office asserted that such a usage exists.’