Appeal brought on 22 September 2015 by Office for Harmonisation in the Internal Market (Trade Marks and Designs) against the judgment of the General Court (First Chamber) delivered on 15 July 2015 in Case T-24/13: Cactus S.A. v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-501/15 P)

(2015/C 414/22)

Language of the case: English

Parties

Appellant: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (represented by: A. Folliard-Monguiral, agent)

Other party to the proceedings: Cactus S.A.

Form of order sought

The appellant claims that the Court should:

Pleas in law and main arguments

According to the ‘IP Translator’ Judgment, the designation of a class heading may cover all the goods or services included in the alphabetical list of this class. However such a designation cannot amount to a claim to the totality of all goods and services of a particular class. The General Court misapplied the ‘IP Translator’ Judgment and violated Article 28 CTMR (1) and Rule 2 CTMIR in equating the coverage of the class heading in class 35 with all the services belonging to this class. Since neither the retail services as such nor the services of ‘retailing of natural plants and flowers, grains; fresh fruits and vegetables’ are included in the alphabetical list of class 35, the earlier Community trademarks are not protected in respect of such services. The requirement to specify the goods or types of goods to which the retail services relate, which applies to all trademarks including to those filed before the ‘Praktiker’ Judgment, is a further bar to the General Court’s conclusion that the abstract designation of the class heading in class 35 extends to retail services in respect of all possible goods.

The finding that use only of the stylised cactus does not alter the distinctive character of the earlier figurative mark, within the meaning of Article 15(1)(a) CTMR, is vitiated by four errors in law. In basing its conclusion only on the semantic concordance between the logo and the word element, the General Court failed to examine to which extent the word element ‘Cactus’ was distinctive and important in the earlier composite mark. The General Court failed to have regard to the visual and (possible) phonetic differences between the logo and the composite mark, it wrongly based its finding on the prior knowledge that the public in Luxembourg has of the earlier composite mark and it failed to consider the perception of the European public as a whole.

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