# C_2015138EN.01003301.xml

| 27.4.2015 | EN | Official Journal of the European Union | C 138/33 |
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27.4.2015

EN

Official Journal of the European Union

C 138/33

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Appeal brought on 6 February 2015 by Kurt Hesse against the judgment of the General Court (First Chamber) delivered on 27 November 2014 in Case T-173/11 Kurt Hesse and Lutter & Partner GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-50/15 P)

(2015/C 138/45)

Language of the case: German

Parties

Parties

Appellant: Kurt Hesse (represented by: M. Krogmann, Rechtsanwalt)

Appellant:

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs), Lutter & Partner GmbH, Dr. Ing. h. c. F. Porsche AG

Other parties to the proceedings:

Form of order sought

Form of order sought

The appellant claims that the Court should:

| — | set aside the judgment of the General Court of the European Union of 27 November 2014 (Case T-173/11); |
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set aside the judgment of the General Court of the European Union of 27 November 2014 (Case T-173/11);

| — | annul the decision of the Fourth Board of Appeal of 11 January 2011 (Case R 0306/2010-4) and reject the opposition against Community trade mark application No 5723 432 of 16 February 2007.
  in the alternative |
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annul the decision of the Fourth Board of Appeal of 11 January 2011 (Case R 0306/2010-4) and reject the opposition against Community trade mark application No 5723 432 of 16 February 2007.

in the alternative

| — | refer the case back to the General Court of the European Union for judgment. |
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refer the case back to the General Court of the European Union for judgment.

The appellant also claims that the Court should:

| — | order the defendant to pay the costs. |
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order the defendant to pay the costs.

Pleas in law and main arguments

Pleas in law and main arguments

In support of his appeal, the appellant relies on the following pleas in law:

| 1. | Defective non-consideration of factors for the similarity of the goods pursuant to Article 8(1)(b) of the Community Trade Mark Regulation (CTMR) (1)

  The appellant contests the finding of the General Court that the Board of Appeal rightly considered that ‘mobile navigation apparatus, in particular satellite-based mobile navigation apparatus’ and the goods covered by the marks cited in opposition are similar. In assessing the similarity, the General Court failed to take account of key factors such as the category of the goods concerned, their manufacturing, marketing, distribution channels and retail premises. If all relevant factors had been fully taken into account and given proper weighting, the conclusion would have been that there was no similarity of the goods. |
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1.

Defective non-consideration of factors for the similarity of the goods pursuant to Article 8(1)(b) of the Community Trade Mark Regulation (CTMR) (1)

1

The appellant contests the finding of the General Court that the Board of Appeal rightly considered that ‘mobile navigation apparatus, in particular satellite-based mobile navigation apparatus’ and the goods covered by the marks cited in opposition are similar. In assessing the similarity, the General Court failed to take account of key factors such as the category of the goods concerned, their manufacturing, marketing, distribution channels and retail premises. If all relevant factors had been fully taken into account and given proper weighting, the conclusion would have been that there was no similarity of the goods.

| 2. | Distortion of the facts and defective application of the protection based on reputation pursuant to Article 8(5) of the CTMR
  The General Court made an error of law by failing to object to the Board of Appeal’s finding that the ‘Carrera’ mark is known by a significant part of the public. The Board of Appeal based its finding in particular on individual aspects of an expert opinion. The Board of Appeal and the General Court wrongly described key findings of the expert opinion as ‘worthless’ and completely ignored other key findings. In this way, a considerable distortion of the facts and evidence forms the basis of the decision of the General Court. |
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2.

Distortion of the facts and defective application of the protection based on reputation pursuant to Article 8(5) of the CTMR

The General Court made an error of law by failing to object to the Board of Appeal’s finding that the ‘Carrera’ mark is known by a significant part of the public. The Board of Appeal based its finding in particular on individual aspects of an expert opinion. The Board of Appeal and the General Court wrongly described key findings of the expert opinion as ‘worthless’ and completely ignored other key findings. In this way, a considerable distortion of the facts and evidence forms the basis of the decision of the General Court.

| 3. | Defective acceptance of an ‘image transfer’ pursuant to Article 8(5) of the CTMR
  The General Court was wrong not to object to the Board of Appeal’s finding that a risk of ‘image transfer’ exists in favour of the appellant’s ‘Carrera’ mark applied for. The Board of Appeal took the view that all of the goods covered by the mark applied for could ‘be fitted to motor vehicles and used in them’. A ‘social usage’ results from this, on the basis of which the use of the declared goods and motor vehicles ‘coincide’. As a matter of fact, the mere fact that the declared goods can be fitted to motor vehicles and used in them does not at all constitute a ‘social usage’ and also cannot result in an image transfer. In this respect, the Board of Appeal and the General Court failed to state full reasons for their decision. |
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3.

Defective acceptance of an ‘image transfer’ pursuant to Article 8(5) of the CTMR

The General Court was wrong not to object to the Board of Appeal’s finding that a risk of ‘image transfer’ exists in favour of the appellant’s ‘Carrera’ mark applied for. The Board of Appeal took the view that all of the goods covered by the mark applied for could ‘be fitted to motor vehicles and used in them’. A ‘social usage’ results from this, on the basis of which the use of the declared goods and motor vehicles ‘coincide’. As a matter of fact, the mere fact that the declared goods can be fitted to motor vehicles and used in them does not at all constitute a ‘social usage’ and also cannot result in an image transfer. In this respect, the Board of Appeal and the General Court failed to state full reasons for their decision.

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

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