Official Journal of the European Union

C 59/2

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(Case C-586/15 P)

(2016/C 059/02)

Language of the case: German

Parties

Appellant: Lotte Co. Ltd (represented by: M. Knitter, Rechtsanwältin)

Other parties to the proceedings: Nestlé Unternehmungen Deutschland GmbH and 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 of the General Court (Second Chamber) of 15 September 2015 (T-483/12) and dismiss the action brought against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market of 3 September 2012 in Case R 2103/2010-4;

—in the alternative, set aside the judgment under appeal of the General Court and refer the case back to that court;

—order Nestlé Unternehmungen Deutschland GmbH to pay the costs of the proceedings.

Grounds of appeal and main arguments

The appellant claims that Article 15(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark has been infringed. In particular, three errors of law are relied on:

1.The appellant claims that incorrect assessment criteria were used in determining whether there was a permissible difference in actual use of the trade mark cited in opposition under Article 15(1)(a) of Regulation No 207/2009. In that regard, the appellant states that the General Court erred in law in determining the distinctive elements of the trade mark cited in opposition on the basis of the criteria for finding a likelihood of confusion. The character or domination of certain elements within the trade mark, which plays a conclusive role in determining whether there is a likelihood of confusion, cannot be given equal weight in assessing the permissibility of a different use of the trade mark. In that connection, the issue is not whether there is a likelihood of confusion. It is rather whether the form of the use of the registered trade mark differs only in such minor detail that both signs could be regarded, on the whole, as equivalent.

2.In addition, the General Court failed to take account of all relevant circumstances for determining the distinctive elements of the trade mark cited in opposition. The General Court erred in law in adopting the criteria applied by the Board of Appeal without itself addressing the individual and numerous elements of the complex trade mark cited in opposition.

3.In the view of the appellant, there are contradictions and failings in logic in the grounds of the General Court for determining the form of the use of the trade mark. The General Court stated that the sign used may differ only in ‘minor elements’ from the form in which it is registered and that the sign used and the trade mark as registered must be regarded, ‘on the whole, as equivalent’ for a finding of use such as to preserve the rights of the trade mark proprietor. In applying those assessment criteria, the General Court contradicted itself and erred in logic. In addition, the General Court used a rigid assessment for whether the three elements that it considered distinctive were present in the form of the trade mark used. With reference to those criteria, the General Court proceeded on the premiss of use such as to preserve the rights of the trade mark proprietor and failed to take into account that numerous new elements had been added to the form of its use, as a result of which the sign used and the trade mark as registered could no longer be regarded, ‘on the whole, as equivalent’.

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