# C_2015073EN.01001003.xml

| 2.3.2015 | EN | Official Journal of the European Union | C 73/10 |
| --- | --- | --- | --- |

2.3.2015

EN

Official Journal of the European Union

C 73/10

---

Appeal brought on 28 November 2014 by Arnoldo Mondadori Editore SpA against the judgment of the General Court (Fifth Chamber) delivered on 26 September 2014 in Case T-490/12: Arnoldo Mondadori Editore SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-548/14 P)

(2015/C 073/16)

Language of the case: English

Parties

Appellant: Arnoldo Mondadori Editore SpA (represented by: G. Dragotti, R. Valenti, S. Balice, E. Varese, avvocati)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs), Grazia Equity GmbH

Form of order sought

The appellant claims that the Court should:

| — | set aside points 25 to 33 and 68 to 83 of the appealed judgment on all the grounds set out in the appeal; |
| --- | --- |

—

set aside points 25 to 33 and 68 to 83 of the appealed judgment on all the grounds set out in the appeal;

| — | uphold applicant’s action against the Board of Appeal decision or, alternatively, refer the case back to the General Court for reconsideration, and; |
| --- | --- |

—

uphold applicant’s action against the Board of Appeal decision or, alternatively, refer the case back to the General Court for reconsideration, and;

| — | order OHIM to pay the costs of the Applicant, both at first instance and on appeal. |
| --- | --- |

—

order OHIM to pay the costs of the Applicant, both at first instance and on appeal.

Pleas in law and main arguments

The Applicant maintains that the Appealed Judgment should be partially set aside on the following grounds:

| A. | the General Court (‘GC’) erred in law in ruling out the application of Article 8(1)(b) of Council Regulation (EC) No 207/2009 (‘CTMR’) (1) without considering the case-law of this Court on the complementarity of goods and services and the principle of interdependence; the GC also disregarded or distorted the facts and evidence submitted to it by AME regarding the similarity of the goods and services concerned, at least in connection with the notion of complementarity. |
| --- | --- |

A.

the General Court (‘GC’) erred in law in ruling out the application of Article 8(1)(b) of Council Regulation (EC) No 207/2009 (‘CTMR’) (1) without considering the case-law of this Court on the complementarity of goods and services and the principle of interdependence; the GC also disregarded or distorted the facts and evidence submitted to it by AME regarding the similarity of the goods and services concerned, at least in connection with the notion of complementarity.

| B. | the GC infringed Article 8(5) CTMR on the following grounds:






  i. | the GC erred in law in allotting a specific degree of reputation of AME's trademark, which is not required for the purpose of the implementation of the enhanced protection conferred by Article 8 (5) CTMR; furthermore, the GC did not comply with the criteria set out in the case-law of the Court of Justice for assessing the degree of reputation of a trademark. |
| --- | --- | --- |

B.

the GC infringed Article 8(5) CTMR on the following grounds:

i.

the GC erred in law in allotting a specific degree of reputation of AME's trademark, which is not required for the purpose of the implementation of the enhanced protection conferred by Article 8 (5) CTMR; furthermore, the GC did not comply with the criteria set out in the case-law of the Court of Justice for assessing the degree of reputation of a trademark.

| ii. | the GC erred in law in ruling out the existence of a link between the marks on the basis of an assessment of the relevant factors (i.e. the nature of the goods or services concerned, the relevant section of the public, the strength of the earlier mark's reputation, the degree of the earlier mark's distinctive character) which is not compliant with the criteria set out by the case-law of the Court of Justice in the application of Article 8 (5) CTMR; the GC also erred in considering the existence of a likelihood of confusion between the marks at issue, which is not required for the application of Article 8 (5) CTMR. |
| --- | --- |

ii.

the GC erred in law in ruling out the existence of a link between the marks on the basis of an assessment of the relevant factors (i.e. the nature of the goods or services concerned, the relevant section of the public, the strength of the earlier mark's reputation, the degree of the earlier mark's distinctive character) which is not compliant with the criteria set out by the case-law of the Court of Justice in the application of Article 8 (5) CTMR; the GC also erred in considering the existence of a likelihood of confusion between the marks at issue, which is not required for the application of Article 8 (5) CTMR.

| iii. | the GC erred in law in denying the application of Article 8(5) CTMR without having assessed whether the applied for sign could take unfair advantage of or be detrimental to the earlier and reputed mark. |
| --- | --- |

iii.

the GC erred in law in denying the application of Article 8(5) CTMR without having assessed whether the applied for sign could take unfair advantage of or be detrimental to the earlier and reputed mark.

---

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

---