31.3.2012

Official Journal of the European Union

C 98/17

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(Case C-42/12 P)

2012/C 98/29

Language of the case: English

Parties

Appellant: Václav Hrbek (represented by: M. Sabatier, Advocate)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs), Outdoor Group Ltd (The)

Form of order sought

The appellant claims that the Court should:

—Uphold the appeal and, accordingly, set aside the Judgment of the General Court, in case T-434/10, in its entirety, in accordance with Article 61 of the Statute of the Court of Justice and Article 113 or the Rules of Procedure;

—Give final judgment — if the state of the proceedings so permits — by annulling the Decision of the OHIM Opposition Division, rendered on 29.09.2009, ruling on Opposition No B 1 276 692, and the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of July 8, 2010, in case R 1441/2009-2, and order the defendants to bear the costs of the proceedings before the General Court and the Court of Justice, as well as those of the OHIM opposition proceedings, according to article 122 of the Rules of Procedure;

—Alternatively, if the state of the proceedings does not so permit, refer the case back to the General Court for judgment in accordance with the binding criteria established by the Court of Justice.

Pleas in law and main arguments

In support of his appeal, the Appellant considers that the judgement under appeal is vitiated by misinterpretation and misapplication of Article 8(1)(b) of Council Regulation (EC) No 40/94 of December 20, 1993 on the Community trade mark (hereinafter ‘CTMR’)(1), as amended (replaced by Council Regulation (EC) No 207/2009 of February 26, 2009(2), which entered into force on April 13, 2009).

The Appellant complains that the General Court did not examine the marks at issue on the basis of the criteria of ‘global assessment’ or ‘overall impression’.

The General Court failed to give effect the above-mentioned principle, basing its assessment exclusively on the fact that they share the common element ‘ALPINE’. It limited itself to holding that the two marks under comparison are similar, sharing the word component ‘ALPINE’, without examining the signs as whole, and without explaining why the other word and figurative elements, as a whole, are not sufficient to exclude a risk of confusion.

The Appellant complains that, in the judgment under appeal, the General Court failed to consider some extremely important and pertinent factors, on the one hand, and did not properly apply some very important criteria, on the other hand, in particular the lack of distinctiveness and the descriptive character of the word element ‘ALPINE’.

The General Court did not conclude on the meaning of the term ‘alpine’ for all the languages of the European Union. Moreover, the General Court did not draw the legal conclusions from its owns findings concerning the clear meaning of the term ‘alpine’ and did not clearly conclude on the lack of distinctiveness and the descriptive characters of the word ‘alpine’, considering that the alleged weak distinctive character, or descriptive character, of the element ‘alpine’ cannot preclude a likelihood of confusion. The General Court held that ‘ALPINE’ would be the dominant element in both signs, without taking into consideration the lack, or at least, the very low level of, distinctiveness of the earlier mark ALPINE. The reasoning of the Judgement under appeal is vitiated by a contradiction which led the General Court wrongly to decide that the marks at issue were conceptually similar without taking into consideration the lack, or at least, the low level of, distinctiveness of the earlier mark ALPINE. A conceptual comparison of the word element ‘ALPINE’ is irrelevant, because of the lack of distinctiveness.

The Appellants complains, that the judgment under appeal, the General Court failed to draw the correct legal conclusions from its owns findings concerning the degree of attention of the relevant public.

The General Court could not, without contradicting itself, maintain, in respect of skiwear, ski footwear, headgear, as well as backpacks and rucksacks, that part of the relevant public is composed of well-informed and particularly attentive consumers and confirm that the marks and goods were similar.

The Appellant complains that the judgment under appeal is vitiated by a distortion of the facts, and by a violation of the duty to provide reasons, concerning the comparison of the goods.

The General Court maintained that the appellant did not put forward specific arguments capable of challenging the conclusions of the Board of Appeal. As regards the assessment of the degree of similarity of the goods and services in question, what does not follow from evidence or is not well known cannot be taken into account. The onus for proving that the goods and services are similar rests on the Appellant for opposition, and not on the owner of the CTM applied for. The General Court must give legal basis for its decision, and must provide reasons for it. The General Court did not establish that the relevant goods are identical, similar or complementary, in the marketplace, but proceeded by assertion, without giving any reasons or examples for its presumption.

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(1) OJ L 11, p. 1

(2) OJ L 78, p. 1

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