13.4.2015   

EN

Official Journal of the European Union

C 118/12

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Set aside the decision annulling the decision of the Bord of Appeal;

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Remit the case to the General Court for further consideration with a direction that the marks in issue are similar;

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Order the Respondent to pay the costs both of the proceedings before the General Court and those before the Court of Justice.

1.

The Appellant relies on two pleas in law, namely infringement of Articles 8(1)(b) and 8(5) CTMR (1). In summary the appellant submits that the General Court failed to apply settled case law in its analysis of the marks in issue with the result that it wrongly concluded that the marks are entirely dissimilar.

2.

First, having found the marks phonetically similar by virtue of the common element ‘so’, the General Court should have concluded that they were similar overall, at least to that extent. Its conclusion that they were dissimilar, despite the common phonetic element, was the result of a failure to apply settled case law on the nature and degree of similarity required for the application of Article 8(1)(b)/8(5).

3.

Secondly, having held the marks to be phonetically similar, the General Court should have concluded that they were also visually similar, for essentially similar reasons (and therefore a fortiori similar within the meaning of Article 8(1)(b)/8(5)). Its conclusion that they were visually dissimilar, despite the common visual element ‘so’, was the result of a failure to apply settled case law when analyzing the visual impact of the ‘so’ element within the marks.