Official Journal of the European Union

C 63/10

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(Case C-584/12 P)

2013/C 63/17

Language of the case: Spanish

Parties

Appellant: El Corte Inglès, S.A. (represented by: J.L. Rivas Zurdo y E. Seijo Veiguela, lawyers)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs) and Emilio Pucci International BV

Form of order sought

The appellant claims that the Court should:

—set aside the judgment of the General Court in Case T-357/09 of 27 September 2012 in its entirety

—order OHIM to pay the costs of El Corte Inglés, S.A.

—order Emilio Pucci International BV to pay the costs of El Corte Inglés, S.A.

Pleas in law and main arguments

The opposing party has not proved use for glasses, as established by the Board of Appeal of OHIM. In addition, that criterion in particular, i.e. non-consideration of genuine use in relation to the mere appearance of the trademark on or next to photographs, was specifically considered by the General Court in the judgment in Case T-39/10, (1) in paragraph 31. Accordingly, the judgment should not have considered proved the use for glasses of class 9 of previously mentioned trademark 274991.

Concerning the risk of confusion, Article 8(1) of Regulation No 40/94 (2) and the relevant case-law require it to be assessed globally taking into account all factors relevant to the circumstances of the case. The Second Board of Appeal of OHIM found that those factors differed in their nature, in their purpose and in their method of use, adequately substantiating that argument (paragraph 102 of the contested decision). Whilst cosmetics or jewellery may retain a link with the broad and at the same time heterogeneous fashion sector, it does not mean they have a link with or should be considered similar to the goods contained in classes 18, 24 and 25.

The extension of the effects of Article 8(5) of Regulation No 207/2009 (3) to other goods of class 9 (glasses) and 14 (jewellery, imitation jewellery and watches) and to toilet paper (class 16) is inadequately reasoned and is based on presumptions which have not been proved by the applicant in Case T-357/09. (4) Especially in such cases, as noted by that very judgment at paragraphs 70 and 71, mere hypotheses cannot be admitted and nor can marks of great repute benefit from that extension per se, as the existence of future risks needs to be proved, which the applicant has not done.

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(1) Judgment of the General Court in Case T-39/10 El Corte Inglès v OHIM of 27 September 2012, not yet published

(2) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 011 p. 1)

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

(4) Judgment of the General Court in Case T-357/09 Pucci International v OHIM/El Corte Inglès (Emidio Tucci) of 27 September 2012, not yet published

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