21.9.2015   

EN

Official Journal of the European Union

C 311/16

—

set aside the judgment under appeal (judgment of the General Court of the European Union of 26 March 2015 in Case T-596/13);

—

decide the case on its merits;

—

order OHIM to pay the costs, including those incurred at first instance.

(i)

The judgment under appeal is vitiated by inconsistency given that, even though the average consumer — identified as the relevant public — is characterised as being a ‘well-informed and cautious observer’, however, when the General Court proceeds to assess in substance the actual ability of that consumer to discern between two clearly different marks, it regards that consumer as being wholly superficial and unable to carry out, on his own, evaluations of marginal difficulty.

(ii)

The judgment under appeal appears to be at odds with the EU case-law which states that, in assessing the similarity of the goods, account should be taken of all relevant features relating to those goods including their nature, purpose, method of use, whether they are in competition or are complementary, as well as the distribution channels of the products. The General Court failed in fact to consider any of those factors, limiting its assessment to the mere finding that the products to colour and decolour hair were ‘included’ in cosmetics and that therefore those products should be considered to be identical.

(iii)

The judgment under appeal is vitiated by an error in so far as the comparison between a word mark and a composite mark gave too little weight to the figurative elements of the second mark, which were not present in the first mark and capable of distinguishing the two signs, limiting its assessment to the comparison between the verbal parts alone.

The General Court also erred, in the judgment under appeal by excluding from the comparison the first element of the earlier mark (Mc) and did not consider that such a prefix, where placed in front of a name and in view of its widespread use, is commonly understood as a surname of Scottish origin and accordingly pronounced in English by all the relevant public and not just by the Anglo-Saxon part of the relevant public.

(iv)

The judgment under appeal is vitiated by an error in so far as, despite the many differences between the two marks being compared, the General Court considered that there was a likelihood of confusion.