8.5.2017

Official Journal of the European Union

C 144/16

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(Case C-675/16 P)

(2017/C 144/21)

Language of the case: English

Parties

Appellant: Guccio Gucci SpA (represented by: V. Volpi, P. Roncaglia, F. Rossi, N. Parrotta, avvocati)

Other parties to the proceedings: European Union Intellectual Property Office; Guess? IP Holder LP

Form of order sought

The appellant claims that the Court should:

—set aside the judgment under appeal;

—order EUIPO to pay the costs incurred by the Appellant during these proceedings;

—order Guess to pay the costs incurred by the Appellant during these proceedings.

Pleas in law and main arguments

1.By means of the present action Guccio Gucci S.p.A. (hereafter referred to as ‘Gucci’ or the ‘Appellant’) requests that the Court of Justice set aside the judgment of the General Court of the European Union (Third Chamber), in Case T-461/15 (‘the judgment under appeal’), whereby the General Court dismissed Gucci’s application against the decision of the Fourth Board of Appeal of May 27, 2015, in Case R 2049/2014-44, which had upheld the decision of the Cancellation Division of July 31, 2014, which had dismissed its application for a declaration of invalidity against EUTM Registration No. 5538012, in classes 3, 9, 14, 16. 18, 25 and 35 (the ‘contested mark’) in the name of Guess? IP Holder L.P. (hereafter referred to as ‘Guess’).

2.The present application is aimed at showing that the General Court erred in concluding that the grounds of invalidity set forth in Articles 8(1)(b) and 8(5) of Council Regulation (EC) No. 207/2009 (1) of February 26, 2009 before amendment (hereafter referred to as the ‘CTM Regulation’) do not apply to the contested mark. In particular, the General Court clearly distorted the facts and evidence before it in the assessment of the similarity among the conflicting signs and, as a consequence, wrongly applied both Articles 8(1)(b) and 8(5) CTM Regulation; and failed to state reasons in the judgment under appeal.

3.The General Court ruled out the similarity among the conflicting marks based on the assumption that the relevant public … will not perceive in [the contested] mark the capital letter ‘G’, represented by the earlier marks, but rather an abstract ornamental motif. Moreover, having regard to the stylisation of the sign and to the fact that its elements are interlocking or joined together, it could be perceived both as reproducing stylised letters, such as the capital letter ‘X’ or the letter ‘e’ and as a combination of figures and letters, such as the figure ‘3’ and the letter ‘e’ (see, to that effect, paragraph 30 of the judgment under appeal). This assumption is the crucial point of the judgment under appeal, having led the General Court to rule out any similarity among the conflicting marks and, consequently, the applicability of Articles 8(1)(b) and 8(5) CTM Regulation to the case at issue.

4.However, the above assumption is manifestly wrong. This appears obvious from the documents filed in the case which clearly show that the relevant public does perceive the capital letters ‘G’ in the contested mark, as per the results of a survey pool on the public perception of the contested mark submitted by Gucci. This obvious distortion of the facts and evidence affected the General Court’s assessment of Gucci’s application: had the General Court acknowledged that the relevant public — or at least a portion of said public — would perceive the contested mark as a combination of capital letters ‘G’, it could have not ruled out the similarity among the conflicting marks and therefore the applicability of both Article 8(1)(b) and Article 8(5) CTM Regulation.

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Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) OJ 2009, L 78, p. 1

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