21.9.2015

Official Journal of the European Union

C 311/16

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(Case C-251/15 P)

(2015/C 311/21)

Language of the case: Italian

Parties

Appellant: Emsibeth SpA (represented by: A. Arpaia, avvocato)

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

Form of order sought

The appellant claims that the Court should:

—set aside the judgment under appeal (judgment of the General Court of the European Union of 26 March 2015 in Case T-596/13);

—decide the case on its merits;

—order OHIM to pay the costs, including those incurred at first instance.

Grounds of appeal and main arguments

The applicant alleges infringement or misapplication of Article 8(1)(b) of Regulation (EC) No 207/2009 (1). In particular, there is a lack of coherence in that judgment in relation to the criteria under which the General Court assessed the concepts of (i) the relevant public, identity or similarity of the (ii) products and of the (iii) trademarks and also (iv) the existence of a likelihood of confusion between the two marks.

(i)

The judgment under appeal is vitiated by inconsistency given that, even though the average consumer — identified as the relevant public — is characterised as being a ‘well-informed and cautious observer’, however, when the General Court proceeds to assess in substance the actual ability of that consumer to discern between two clearly different marks, it regards that consumer as being wholly superficial and unable to carry out, on his own, evaluations of marginal difficulty.

(ii)

The judgment under appeal appears to be at odds with the EU case-law which states that, in assessing the similarity of the goods, account should be taken of all relevant features relating to those goods including their nature, purpose, method of use, whether they are in competition or are complementary, as well as the distribution channels of the products. The General Court failed in fact to consider any of those factors, limiting its assessment to the mere finding that the products to colour and decolour hair were ‘included’ in cosmetics and that therefore those products should be considered to be identical.

(iii)

The judgment under appeal is vitiated by an error in so far as the comparison between a word mark and a composite mark gave too little weight to the figurative elements of the second mark, which were not present in the first mark and capable of distinguishing the two signs, limiting its assessment to the comparison between the verbal parts alone.

The General Court also erred, in the judgment under appeal by excluding from the comparison the first element of the earlier mark (Mc) and did not consider that such a prefix, where placed in front of a name and in view of its widespread use, is commonly understood as a surname of Scottish origin and accordingly pronounced in English by all the relevant public and not just by the Anglo-Saxon part of the relevant public.

(iv)

The judgment under appeal is vitiated by an error in so far as, despite the many differences between the two marks being compared, the General Court considered that there was a likelihood of confusion.

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

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