Official Journal of the European Union

C 151/17

(Case C-75/17 P)

(2017/C 151/23)

Language of the case: Spanish

Parties

Appellant: Fiesta Hotels & Resorts, S.L. (represented by: J.-B. Devaureix and J.C. Erdozain López, abogados)

Other parties to the proceedings: European Union Intellectual Property Office (EUIPO) and Residencia Palladium S.L.

Form of order sought

The appellant claims that the Court should:

—set aside, in full, the judgment of the General Court of 30 November 2016 in Case T-217/15;

—uphold, in full, the claims put forward at first instance;

—order the respondent and intervener to pay the costs.

Grounds of appeal and main arguments

1.The first ground of appeal is to the effect that the judgment under appeal is vitiated by an error of law in so far as it was held that, for the purposes of Article 8(4) of Council Regulation No 207/2009 (1) of 26 February 2009 on the European Union trade mark (‘the Regulation’), the requirement of ‘more than mere local’ significance is satisfied irrespective of the geographical scale on which the proprietor of the mark relied on conducts its business. That interpretation ignores the literal meaning of the word ‘local’ and the purpose underlying Article 8(4) of the Regulation. The judgment under appeal contains the error of law alleged in so far as, when determining whether the alleged unregistered trade name had merely local, or other, significance, it took into account documents which had effect outside Spanish territory.

Moreover, the fact that the services provided by the establishment for whose designation the mark or trade name is used are provided to an international public does not lead to the inference that the use of the sign is more than local.

The conclusion reached in the judgment under appeal concerning the ‘more than mere local’ requirement, therefore, disregards the purpose of Article 8(4) of the Regulation. Accordingly, that judgment acknowledges that that requirement applied to the trade name relied on in opposition to the application for an EU trade mark does not depend on the local significance of the establishment that uses it but on the ‘geographical dispersion of its clientele or the renown which it enjoys with the public at national, or even international, level’. By taking that view, the judgment under appeal goes beyond the restrictive purpose of Article 8(4) of the Regulation, since it allows simple proof of the break with the purely local by means of the mere use of the unregistered sign on the Internet or, in the circumstances of the present case, by the international character of the guests who stay at the establishment concerned.

2.By the second ground of appeal it is contended that the General Court erred in its judgment in holding that, for the purposes of Article 8(4) of the Regulation, in conjunction with Article 9(1)(d) of Ley 17/2001 de 7 de diciembre de Marcas (Law 17/2001 of 7 December 2001 on trade marks), in force in Spain, it is not necessary that the unregistered sign relied on should be well known, whereas the predominant view in the Spanish case-law on that point is to the contrary, that is to say, it requires not only use of the sign referred to but also that that use be well known in a substantial part of the territory of Spain.

3.The basis for the third ground of appeal is that the judgment under appeal is vitiated by an error in law in that the General Court found that Article 8(4)(b) of the EU trade mark Regulation is satisfied on the basis of the Laguiole judgment (paragraph 37), even though that judgment does not apply to the present case because the latter interprets Spanish, not French, law, as was the case in the Laguiole judgment, and the appellant drew the attention of the General Court to judgments of the Spanish Tribunal Supremo (Supreme Court) which clearly preclude an unregistered trade name from preventing the use of a more recent trade mark, without the defendant having relied on the Spanish law on unfair competition, which supposedly allows that possibility, a contention which the appellant disputed in a sufficiently reasoned way.

4.Lastly, in the fourth ground of appeal, the appellant argues that the judgment under appeal contains an error of law in the interpretation of the concept of ‘intermediate marks’, coined in accordance with the Spanish Ley de Marcas (Law on trade marks) and, in particular, that the judgment under appeal contains an error of law relating to Article 65 of the Regulation.

The appellant contends that the judgment under appeal is vitiated by an error of law in that the abovementioned Article 65 of the Regulation does not prevent stricto sensu the examination of the legal issue which arises in the light of the legal argument put forward by the parties. Contrary to what is stated in the judgment under appeal, the appellant does not seek to alter the factual basis that the Board of Appeal took into consideration when making its decision but merely advances a legal basis which reveals the error of law made in the decision of EUIPO, which is the subject of the application.

The appellant relies on the principle of iura novit curia, by which the Courts, when taking a decision, must apply the legal rules which they consider appropriate and alter the legal basis of the application, on condition that the decision is in line with the issues of fact and law raised by the parties and the cause of action put forward is not altered or the issue for resolution otherwise changed. In this regard, the General Court should have assessed the appellant’s submissions because not to do so would restrict the appellant’s rights of defence and deprive it of its rights resulting from registration.

(1) OJ 2009 L 78, p. 1.