# C_2011152EN.01001201.xml

| 21.5.2011 | EN | Official Journal of the European Union | C 152/12 |
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21.5.2011

EN

Official Journal of the European Union

C 152/12

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Appeal brought on 1 March 2011 by August Storck KG against the judgment of the General Court (First Chamber) delivered on 17 December 2010 in Case T-13/09 August Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

ugust Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-96/11 P)

2011/C 152/21

Language of the case: German

Parties

Parties

Appellant: August Storck KG (represented by: T. Reher, P. Goldenbaum, I. Rohr and T. Melchert, Rechtsanwälte)

Appellant:

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

Other party to the proceedings:

Form of order sought

Form of order sought

| — | Set aside the contested judgment which is appealed on points of law; |
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Set aside the contested judgment which is appealed on points of law;

| — | Uphold the claims submitted at first instance and give a final ruling on the dispute; in the alternative, refer the matter back to the General Court; |
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Uphold the claims submitted at first instance and give a final ruling on the dispute; in the alternative, refer the matter back to the General Court;

| — | Order OHIM to pay the costs. |
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Order OHIM to pay the costs.

Pleas in law and main arguments

Pleas in law and main arguments

The present appeal is against the judgment of the General Court, by which it dismissed the appellant’s claim for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) of 12 November 2008 concerning the rejection of its application for registration of a three-dimensional mark consisting of the shape of a chocolate mouse.

The appellant relies on the following three grounds of appeal:

I.   Infringement of Article 7(1)(b) of [Regulation No 40/94]
   (1)

Infringement of Article 7(1)(b) of [Regulation No 40/94]

1

| 1. | The General Court has failed to take account of the concept of distinctive character and thus has incorrectly applied Article 7(1)(b) of [Regulation No 40/94] and wrongly denied the mark applied for original distinctive character. |
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1.

The General Court has failed to take account of the concept of distinctive character and thus has incorrectly applied Article 7(1)(b) of [Regulation No 40/94] and wrongly denied the mark applied for original distinctive character.

| 2. | The General Court has erred in law by assessing the mark applied for in the light of the case-law on three-dimensional marks without graphical elements or word elements, despite the fact that the mark applied for has a graphical element in the form of bas-relief. The mark should have been correctly assessed on the basis of the principles applicable to figurative marks. |
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2.

The General Court has erred in law by assessing the mark applied for in the light of the case-law on three-dimensional marks without graphical elements or word elements, despite the fact that the mark applied for has a graphical element in the form of bas-relief. The mark should have been correctly assessed on the basis of the principles applicable to figurative marks.

| 3. | The General Court has incorrectly assessed the fact that the shape of a product can also pursue objectives other than that of identification, such as, for example, aesthetics, without that detracting from the original distinctive character of the three-dimensional mark. |
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3.

The General Court has incorrectly assessed the fact that the shape of a product can also pursue objectives other than that of identification, such as, for example, aesthetics, without that detracting from the original distinctive character of the three-dimensional mark.

| 4. | The General Court has interpreted ‘usually not’ as meaning ‘not habitual’ and thus removed the possibility of the consumer of confectionery already being used to three-dimensional marks similar to that of the one at issue here and thus being able to regard it as distinctive. In so doing, the General Court has not correctly understood the significance of the shape of a product to the identity of goods in the relevant confectionery market and has therefore failed to have regard to the criterion in law for evidence of the distinctive character of three-dimensional marks in the confectionery sector, inasmuch as such three-dimensional marks are based on animals and/or other living beings or a combination of elements from different living beings respectively. |
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4.

The General Court has interpreted ‘usually not’ as meaning ‘not habitual’ and thus removed the possibility of the consumer of confectionery already being used to three-dimensional marks similar to that of the one at issue here and thus being able to regard it as distinctive. In so doing, the General Court has not correctly understood the significance of the shape of a product to the identity of goods in the relevant confectionery market and has therefore failed to have regard to the criterion in law for evidence of the distinctive character of three-dimensional marks in the confectionery sector, inasmuch as such three-dimensional marks are based on animals and/or other living beings or a combination of elements from different living beings respectively.

| 5. | The General Court has erred in law in making a distinction between ‘decorative structure’, on the one hand, and ‘analytical view’ on the other and thus also failed to take account of the fact that marks should be assessed on their overall impression. |
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5.

The General Court has erred in law in making a distinction between ‘decorative structure’, on the one hand, and ‘analytical view’ on the other and thus also failed to take account of the fact that marks should be assessed on their overall impression.

| 6. | The combination of these errors in law have led to the result that the General Court has denied the mark applied for its distinctive character, despite the fact that it should have been found, on a correct application of Article 7(1)(b) of [Regulation No 40/94], that it had distinctive character. |
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6.

The combination of these errors in law have led to the result that the General Court has denied the mark applied for its distinctive character, despite the fact that it should have been found, on a correct application of Article 7(1)(b) of [Regulation No 40/94], that it had distinctive character.

II.   Failure to grant the right to be heard

Failure to grant the right to be heard

| 7. | By failing to take account of large parts of the appellant’s submissions in its decision, the General Court has infringed the appellant’s right to be heard. |
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7.

By failing to take account of large parts of the appellant’s submissions in its decision, the General Court has infringed the appellant’s right to be heard.

III.   Infringement of the first sentence of Article 73 of [Regulation No 40/94] (duty to state reasons)

Infringement of the first sentence of Article 73 of [Regulation No 40/94] (duty to state reasons)

| 8. | The General Court has based its judgment on the assumption that the pronounced individuality of the subject-matter of the shape comprising the mark was not proven, despite the fact that, under the principle of ex proprio motu investigation, it was for OHIM, by presentation of comparable shapes known on the market, to rebut the assumption of individuality of the shape. Clearly, the General Court did not wish to engage with the appellant’s argument and thus infringed its duty to state reasons. |
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8.

The General Court has based its judgment on the assumption that the pronounced individuality of the subject-matter of the shape comprising the mark was not proven, despite the fact that, under the principle of ex proprio motu investigation, it was for OHIM, by presentation of comparable shapes known on the market, to rebut the assumption of individuality of the shape. Clearly, the General Court did not wish to engage with the appellant’s argument and thus infringed its duty to state reasons.

ex proprio motu

| 9. | In so far as the General Court failed to take account, in its decision, of parts of the appellant’s submissions, but did not justify or, to a great extent, refer to this in its decision, it has failed to fulfil its duty to state full reasons for its decision. |
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9.

In so far as the General Court failed to take account, in its decision, of parts of the appellant’s submissions, but did not justify or, to a great extent, refer to this in its decision, it has failed to fulfil its duty to state full reasons for its decision.

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(1)  Council Regulation (EC) No 40/94 of 21 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1)

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