Appeal brought on 23 February 2012 by Louis Vuitton Malletier against the judgment of the General Court (Third Chamber) delivered on 14 December 2011 in Case T-237/10: Louis Vuitton Malletier v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Friis Group International ApS

(Case C-97/12 P)

2012/C 126/16

Language of the case: English

Parties

Appellant: Louis Vuitton Malletier (represented by: P. Roncaglia, G. Lazzeretti, M. Boletto, E. Gavuzzi, avvocati)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs), Friis Group International ApS

Form of order sought

The appellant claims that the Court should:

Pleas in law and main arguments

The present appeal is aimed at showing that the General Court infringed Article 7(l)(b) CTM Regulation (1) by holding that the absolute ground for refusal set forth in this provision is applicable to Community trademark registration No. 3693116 (figurative) (the so called ‘FERMOIR S’) with respect to all the goods it covers in classes 9, 14 and 18, save for ‘jewellery, including rings, key rings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, ties pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks; nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith’ in class 14 and ‘leather and imitations of leather’ and ‘umbrellas’ in class 18.

Firstly, the Appellant submits that the General Court erred in applying the case-law on three-dimensional shape marks to the present case (at least with respect to the majority of the goods covered by the contested mark) and thus in requiring as a legal standard for distinctiveness that the ‘FERMOIR S’‘departs significantly from the norm or customs of the sector’, which is a threshold higher than the general one (i.e., the ‘minimum degree of distinctiveness’).

In fact, the case-law clearly shows that, to apply the ‘departing significantly’ threshold, originally tailored for three-dimensional shape marks only, the relevant sign should be unequivocally related to the concerned goods, meaning that such sign must consist of, and be perceived by consumers as, a faithful representation either of the whole product or of one of its main parts, immediately recognizable as such.

Contrastingly, the General Court took the view that any sign representing the shape of a part of a product is subject to the principles set forth in connection with three-dimensional shape marks unless it is absolutely impossible to conceptually view such sign as a part of the products it designates. As a result, instead of asking whether the contested mark could be perceived by the public as an essential part of the goods it designates, the General Court limited itself to establishing whether this mark could theoretically be used as a closing mechanism for goods in classes 9, 14, and 18.

Secondly, the Appellant submits that the General Court erred when it came to assessing the validity of the contested mark with respect to those goods that it had found capable of including a closing mechanism, by infringing the rules concerning the burden of proof and distorting the clear sense of evidence.

In particular, the General Court failed to give sufficient deference to the presumption of validity afforded to CTM registrations by requiring that the Appellant ‘provide specific and substantiated information to show that the trade mark applied for has inherent inherent distinctive character’ and thus shifting from Friis the burden of proving the invalidity of the contested mark.

For all the reasons above, the Appellant requests that the Court set aside the judgment under appeal, in so far as it partially upheld the decision of the First Board of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) of February 24, 2010, in Case R 1590/2008-1 that had declared the contested mark invalid for the goods it covers in classes 9, 14 and 18.

(1)  OJ L 11, p. 1