Appeal brought on 25 February 2011 by Fidelio KG against the judgment of the General Court (Third Chamber) delivered on 16 December 2010 in Case T-286/08 Fidelio KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-87/11 P)

2011/C 152/19

Language of the case: German

Parties

Appellant: Fidelio KG (represented by: M. Gail, Rechtsanwalt)

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

Form of order sought

Pleas in law and main arguments

The General Court incorrectly accepted that the registration of the sign ‘Hallux’ for ‘orthopaedic article’ and ‘footwear’ falls within the scope of the absolute ground for refusal under Article 7(1)(c) of Regulation No 40/94. It is impossible to ascertain why the General Court, contrary to the submissions of the applicant, followed the arguments of OHIM and took the view that ‘hallux’, the Latin word for the big toe, is the usual abbreviation of ‘hallux valgus’, a disease of the big toe. That method of proceeding by the General Court fails to take account of the significance of the principle of ex proprio motu investigation and, further, infringes the duty to state reasons.

Further, the General Court incorrectly defined the goods and categories of goods. Since the expression ‘orthopaedic article’ is very broad and it is sufficient for the absolute ground for refusal to apply to part of the goods, it was possible for OHIM, had it so wished, to consider many types of goods in order to refuse a specific type of goods. That was not taken into account by the General Court.

So far as footwear is concerned, the General Court incorrectly assumed that a category of goods of ‘comfortable shoes’ exists. In reality, there is no difference between general footwear and so-called comfortable shoes.

In addition, in its definition of the relevant public in respect of ‘orthopaedic article’ and ‘footwear’, the General Court allowed itself to be guided by inappropriate considerations. In the submission of the applicant, the characteristics of the average consumer must be determined. However, an average consumer neither has knowledge of the Latin language nor is familiar with the foot disease hallux valgus. The mark ‘Hallux’ cannot therefore be understood as descriptive.

Finally, the General Court has also infringed Article 7(1)(b) of Regulation No 40/94, since it failed to examine the mark ‘Hallux’ in the light of that provision.