6.6.2017   

EN

Official Journal of the European Union

C 178/5

Appeal brought on 15 February 2017 by Mondelez UK Holdings & Services Ltd, formerly Cadbury Holdings Ltd against the judgment of the General Court (Fifth Chamber) delivered on 15 December 2016 in Case T-112/13: Mondelez UK Holdings & Services Ltd v European Union Intellectual Property Office, Société des produits Nestlé SA

(Case C-85/17 P)

(2017/C 178/05)

Language of the case: English

Parties

Appellant: Mondelez UK Holdings & Services Ltd, formerly Cadbury Holdings Ltd (represented by: T. Mitcheson QC, Barrister, P. Walsh, J. Blum and S. Dunstan, Solicitors)

Other parties to the proceedings: European Union Intellectual Property Office, Société des produits Nestlé SA

Form of order sought

The appellant claims that the Court should:

—

annul the following parts of the General Court’s decision in Case T-112/13:

1)

The reasoning regarding the second part of the first plea in law set out in paragraphs 37-44;

2)

The reasoning regarding the first part of the first plea in law set out in paragraphs 58-64;

3)

The reasoning regarding the third part of the first plea in law at paragraphs 78-111; and

4)

The reasoning regarding the fourth part at paragraphs 144-169 and the portion of paragraph 177 that reads ‘Although it had been established that the contested trade mark had acquired distinctive character through use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the United Kingdom’.

Pleas in law and main arguments

1)

The Court erred in law in relation to its reasoning regarding the second part of the first plea in law set out in paragraphs 37-44. The second part relates to the use of the Mark in respect of all of the goods for which it was registered. The General Court fell into error when it found that use in trade in respect of a chocolate bar consisting of four trapezoid shaped fingers could be classified as a sweet or biscuit.

2)

The Court erred in law in relation to its reasoning regarding the first part of the first plea in law set out in paragraphs 58-64. The first part relates to use of the Mark in the form in which it was registered. Mondelez contends the Mark has not been used at all in the form in which it is registered. The General Court applied the wrong legal tests in: (i) not putting sufficient weight on its finding that the bar was a shape which naturally comes into the mind for the goods in question; and (ii) relying on a ‘spontaneous and immediate association’ made between the shape with the word KIT KAT contrary to the guidance in Case C-215/14 Société des Produits Nestlé, EU:C:2015:604 (‘Case C-215/14’).

3)

The Court erred in law in relation to its reasoning regarding the third part of the first plea in law set out in paragraphs 78-111. The third part relates to lack of use of the Mark as an indicator of origin and the evidence provided in that regard. The General Court applied the wrong legal test in relying on the findings of recognition or association. The correct approach is to ask whether the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company in accordance with the CJEU’s reasoning in Case C-215/14.

4)

The Court erred in law in relation to its reasoning regarding the fourth part of the first plea in law set out in paragraphs 144-169 and in the portion of paragraph 177 that reads ‘Although it had been established that the contested trade mark had acquired distinctive character through use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the United Kingdom’. The fourth part relates to the lack of proof of distinctive character acquired through use of the Mark throughout the European Union. The General Court was correct to find that Nestlé had not demonstrated that the Mark had acquired distinctive character throughout the whole of the EU and Mondelez does not wish to disturb that decision. However, Mondelez does not accept that Nestlé has at any time established acquired distinctiveness for the Goods in 10 Member States of the EU or at all. The General Court has erred in applying the wrong legal test in respect of each Member State in question as neither recognition, attribution nor association equate to perception by the relevant consumers of the Mark as denoting origin, as required by the test laid down by the CJEU in Case C-215/14.