29.9.2012

Official Journal of the European Union

C 295/20

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(Case C-340/12 P)

2012/C 295/36

Language of the case: English

Parties

Appellant: Office for Harmonisation in the Internal Market (Trade Marks and Designs), (represented by: A. Folliard-Monguiral, Agent)

Other parties to the proceedings: Yoshida Metal Industry Co. Ltd and Pi-Design AG, Bodum France, Bodum Logistics A/S

Form of order sought

The appellant claims that the Court should:

—uphold the Appeal in its entirety

—annul the Contested Judgment

—order Yoshida Metal Industry Co. Ltd to pay the costs incurred by the Office.

Pleas in law and main arguments

The appellant submits that the General Court failed to state the reasons in support of the Contested Judgment to the extent that it did not address the Office’s argument referred to at paragraph 18 of the Contested Judgment.

The appellant also submits that the General Court breached Article 7(1)(e)(ii) CTMR. It should have observed that a two-dimensional sign may be, not only applied to, but also incorporated in a three-dimensional object. Applying Article 7(1)(e)(ii) CTMR thus requires to take account of all possible manners in which it can be envisaged, on the date of filing, that the sign in question could be embodied in a three-dimensional object. The General Court distorted the evidence by ruling that the Board of Appeal had based its examination exclusively on the goods actually marketed. In fact, the Board of Appeal made it clear that its findings are primarily based on the patents submitted by Pi-Design. In any event, reference to additional material, including patents and the goods actually marketed, should not be prohibited where such material corroborate the conclusion that the features of the contested sign, as filed, are liable to achieve a technical result once incorporated in a three dimensional object. This is the only appropriate approach for preserving the legal security and the public interest underlying Article 7(1)(e)(ii) CTMR.

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