Appeal brought on 30 May 2013 by El Corte Inglés, S.A. against the judgment of the General Court (Fourth Chamber) delivered on 20 March 2013 in Case T-571/11 El Corte Inglés v OHIM — Chez Gerard (CLUB GOURMET)

(Case C-301/13 P)

2013/C 207/57

Language of the case: Spanish

Parties

Appellant: El Corte Inglés, S.A. (represented by: J.L. Rivas Zurdo and E. Seijo Veiguela, abogados)

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

Form of order sought

Pleas in law and main arguments

1.   Breach of the principle of legal certainty and legitimate expectations

The principle of legal certainty requires ‘an unequivocal wording which gives the persons concerned a clear and precise understanding of their rights and obligations’. This principle is related to the principle of legitimate expectations, emphasising the need for administrative decisions to set out the reasons on which they are based when they diverge from earlier decisions that may give rise to legitimate expectations on the part of their addressees.

The way in which Spanish ‘slogan marks’ (registered during the period of validity of the 1997 Guidelines) have been applied by Spanish courts is in clear conflict with the Community administrative measures in opposition proceedings B 877 714 and with the judgment of the General Court of 20 March 2013 in Case T-571/11: as the Opposition Division had doubts about the wording relating to the earlier mark, it should have remedied this by asking the Spanish Patent and Trade Mark Office for clarification on this point or indeed required the appellant to provide submissions in its defence.

2.   Manifest error of assessment of the background to the dispute

The appellant claims that the judgment regards it as being established that the opposing mark is registered in respect of Class 35, protecting services of an advertising sentence used as a slogan for the marketing, use or exploitation of products in Classes 29, 30, 31, 32, 33 and 42; and that OHIM was aware of its own decision of 17 July 2006, in which it took into account the Guidelines for examination of slogan marks of the Spanish Patent and Trade Mark Office of 11 November 1997 (Annex 4), and the judgments of the Spanish Supreme Court of 25 February 2004 and 30 May 2008.

The appellant claims that requiring a party to plead and prove that the protection of its earlier mark extended to the same goods as those covered by the application constitutes a manifest error of assessment since it amounts to requiring identity in application. As a result, the incorrect assessment of the evidence and facts has left the main question unresolved: Article 8(1)(b) of Regulation 207/2009. (1)

3.   Failure to state reasons in the judgment under appeal

Having recognised (paragraph 3[9]) the importance of the judgment in Case T-318/03 Atomic Austria v OHIM — Fábricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ), (2) the judgment under appeal states (paragraph 41) that that judgment is applicable where OHIM already has information relating to national law, which, in the appellant’s submission, is a contradiction because it would then not be applicable of OHIM’s own motion.

It is stated in paragraph 45 that arguments raised in other proceedings before OHIM cannot be argued before OHIM; the appellant submits that no reasoning is given as to why this should be the case.

The failure to carry out any comparative analysis of the marks, the true cause of action (paragraph 55 of the judgment), is unfair as it deprives the appellant of the possibility of defending itself.

4.   Likelihood of confusion

The General Court infringed the appellant’s rights of defence by failing to rule on the likelihood of confusion as provided for in Article 8(1)(b) of Regulation (EC) No 207/2009. Amongst the pleas set out in the application, paragraphs 19 to 22, the main plea is the incorrect assessment of the likelihood of confusion. By virtue of the case-law, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances.

(1)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trade Mark (OJ 2009 L 78, p. 1).

(2)  [2005] ECR II-1319.