21.5.2011   

EN

Official Journal of the European Union

C 152/12

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Set aside the contested judgment which is appealed on points of law;

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Uphold the claims submitted at first instance and give a final ruling on the dispute; in the alternative, refer the matter back to the General Court;

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Order OHIM to pay the costs.

1.

The General Court has failed to take account of the concept of distinctive character and thus has incorrectly applied Article 7(1)(b) of [Regulation No 40/94] and wrongly denied the mark applied for original distinctive character.

2.

The General Court has erred in law by assessing the mark applied for in the light of the case-law on three-dimensional marks without graphical elements or word elements, despite the fact that the mark applied for has a graphical element in the form of bas-relief. The mark should have been correctly assessed on the basis of the principles applicable to figurative marks.

3.

The General Court has incorrectly assessed the fact that the shape of a product can also pursue objectives other than that of identification, such as, for example, aesthetics, without that detracting from the original distinctive character of the three-dimensional mark.

4.

The General Court has interpreted ‘usually not’ as meaning ‘not habitual’ and thus removed the possibility of the consumer of confectionery already being used to three-dimensional marks similar to that of the one at issue here and thus being able to regard it as distinctive. In so doing, the General Court has not correctly understood the significance of the shape of a product to the identity of goods in the relevant confectionery market and has therefore failed to have regard to the criterion in law for evidence of the distinctive character of three-dimensional marks in the confectionery sector, inasmuch as such three-dimensional marks are based on animals and/or other living beings or a combination of elements from different living beings respectively.

5.

The General Court has erred in law in making a distinction between ‘decorative structure’, on the one hand, and ‘analytical view’ on the other and thus also failed to take account of the fact that marks should be assessed on their overall impression.

6.

The combination of these errors in law have led to the result that the General Court has denied the mark applied for its distinctive character, despite the fact that it should have been found, on a correct application of Article 7(1)(b) of [Regulation No 40/94], that it had distinctive character.

7.

By failing to take account of large parts of the appellant’s submissions in its decision, the General Court has infringed the appellant’s right to be heard.

8.

The General Court has based its judgment on the assumption that the pronounced individuality of the subject-matter of the shape comprising the mark was not proven, despite the fact that, under the principle of ex proprio motu investigation, it was for OHIM, by presentation of comparable shapes known on the market, to rebut the assumption of individuality of the shape. Clearly, the General Court did not wish to engage with the appellant’s argument and thus infringed its duty to state reasons.

9.

In so far as the General Court failed to take account, in its decision, of parts of the appellant’s submissions, but did not justify or, to a great extent, refer to this in its decision, it has failed to fulfil its duty to state full reasons for its decision.