# C_2019082EN.01000801.xml

| 4.3.2019 | EN | Official Journal of the European Union | C 82/8 |
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4.3.2019

EN

Official Journal of the European Union

C 82/8

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Appeal brought on 14 November 2018 by ACTC GmbH against the judgment of the General Court (Ninth Chamber) delivered on 13 September 2018 in Case T-94/17: ACTC v EUIPO

(Case C-714/18 P)

(2019/C 82/07)

Language of the case: English

Parties

Appellant: ACTC GmbH (represented by: V. Hoene, Rechtsanwältin, D. Eickemeier, Rechtsanwalt, S. Gantenbrink, Rechtsanwältin)

Other parties to the proceedings: European Union Intellectual Property Office, Taiga AB

Form of order sought

The appellant claims that the Court should:

| — | set aside the decision of the General Court of September 13, 2018 in case T-94/17 and annul the decision of the Defendant in case R 693/2015-4. |
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set aside the decision of the General Court of September 13, 2018 in case T-94/17 and annul the decision of the Defendant in case R 693/2015-4.

alternatively

| — | set aside the judgment referred to in paragraph 1 and refer the case back to the General Court, |
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set aside the judgment referred to in paragraph 1 and refer the case back to the General Court,

and

| — | impose the costs of the proceedings to the Defendant. |
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impose the costs of the proceedings to the Defendant.

Pleas in law and main arguments

The General Court has infringed Art. 8(1)(b) and Art. 42(2) EUTMR in several aspects by affirming similarity of signs, and — as a consequence of the incorrect assessment of the evidence of proof of use — similarity of goods. There is no likelihood of confusion between the marks at issue.

| 1. | The General Court incorrectly found that the lntervener had fulfilled the use requirements concerning all goods of class 25 the earlier mark is registered for. The requirements are only fulfilled related to the goods ‘clothing; outerclothing, underwear, headgear for wear and headwear, gloves; belts and socks; all aforementioned goods to be used as special weather protective outdoor clothing for the purpose of protection against cold, windy and/or rainy weather conditions only; working overalls’. Contrary to the findings of the General Court, this is an independent subcategory of goods in class 25 so that proof of use had been submitted only for these goods of class 25. |
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1.

The General Court incorrectly found that the lntervener had fulfilled the use requirements concerning all goods of class 25 the earlier mark is registered for. The requirements are only fulfilled related to the goods ‘clothing; outerclothing, underwear, headgear for wear and headwear, gloves; belts and socks; all aforementioned goods to be used as special weather protective outdoor clothing for the purpose of protection against cold, windy and/or rainy weather conditions only; working overalls’. Contrary to the findings of the General Court, this is an independent subcategory of goods in class 25 so that proof of use had been submitted only for these goods of class 25.

| 2. | As a consequence of the incorrect assessment of the use requirements, the General Court came incorrectly to the conclusion that the goods ‘Clothing’ and ‘headgear’ appearing in the lists of both trademarks were identical. |
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2.

As a consequence of the incorrect assessment of the use requirements, the General Court came incorrectly to the conclusion that the goods ‘Clothing’ and ‘headgear’ appearing in the lists of both trademarks were identical.

| 3. | The General Court erroneously decided that the BoA had been correct to find that the signs at issue were visually similar as the signs at issue were of the same length and had four letters in common. The unusual composition of the contested mark (asymmetric consonants and unusual spelling ‘igh’) and the consequences for visual similarity as argued by the Appellant was not discussed by the General Court. Of course, the average consumer perceives a mark as a whole. However, the unusual composition of the contested mark has a considerable influence on its overall impression which was not taken into account by the General Court. |
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3.

The General Court erroneously decided that the BoA had been correct to find that the signs at issue were visually similar as the signs at issue were of the same length and had four letters in common. The unusual composition of the contested mark (asymmetric consonants and unusual spelling ‘igh’) and the consequences for visual similarity as argued by the Appellant was not discussed by the General Court. Of course, the average consumer perceives a mark as a whole. However, the unusual composition of the contested mark has a considerable influence on its overall impression which was not taken into account by the General Court.

| 4. | The General Court also failed in deciding that the marks at issue were phonetically identical because the Appellant had not adduced evidence to suggest that the sound of the first syllables ‘ti’ and ‘TAl’ were not identical for the English-speaking public and that there was nothing to separate the pronunciation of the signs at issue. It is — on the contrary — the case that the General Court has assumed without any evidence and incorrectly that the sequence of letters ‘ti’ was always pronounced ‘tai’. There is no evidence for this assessment. A word ‘ti’ does not exist in the English language. The sequence of letters is therefore always pronounced only in accordance with the linguistic rules applicable to the word in question. We may take it for granted that innumerable words exist in which the letter sequence ‘ti’ is not pronounced like ‘tai’, such as ‘trick’, ‘ticket’, ‘till’, ‘timbal’, ‘timberland’, ‘tin’, ‘tincture’, ‘tinder’, ‘tip’, ‘trigger’ and many more as well as the contested trademark ‘tigha’. The famous English children's book Winnie-the-Pooh contains as one of the main characters an animal named ‘Tigger’, pronounced [tɪɡə]. Thus, whenever the vowel after ‘ti’ is pronounced short, there is no pronunciation like ‘tai’. This is what the Appellant had said from the outset. Neither the Defendant nor the lntervener have submitted evidence to the contrary. It was therefore not for the Appellant to adduce proof of the obvious. |
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4.

The General Court also failed in deciding that the marks at issue were phonetically identical because the Appellant had not adduced evidence to suggest that the sound of the first syllables ‘ti’ and ‘TAl’ were not identical for the English-speaking public and that there was nothing to separate the pronunciation of the signs at issue. It is — on the contrary — the case that the General Court has assumed without any evidence and incorrectly that the sequence of letters ‘ti’ was always pronounced ‘tai’. There is no evidence for this assessment. A word ‘ti’ does not exist in the English language. The sequence of letters is therefore always pronounced only in accordance with the linguistic rules applicable to the word in question. We may take it for granted that innumerable words exist in which the letter sequence ‘ti’ is not pronounced like ‘tai’, such as ‘trick’, ‘ticket’, ‘till’, ‘timbal’, ‘timberland’, ‘tin’, ‘tincture’, ‘tinder’, ‘tip’, ‘trigger’ and many more as well as the contested trademark ‘tigha’. The famous English children's book Winnie-the-Pooh contains as one of the main characters an animal named ‘Tigger’, pronounced [tɪɡə]. Thus, whenever the vowel after ‘ti’ is pronounced short, there is no pronunciation like ‘tai’. This is what the Appellant had said from the outset. Neither the Defendant nor the lntervener have submitted evidence to the contrary. It was therefore not for the Appellant to adduce proof of the obvious.

| 5. | The General Court incorrectly stated that the Appellant had failed to demonstrate that TAIGA has a clear and specific meaning for the relevant public (EU-consumers) in a whole. This is not correct. The Appellant stated undisputed that TAIGA is a lexically noted word of the French language. It should be undisputed and known to the courts that France lies in Southern Europe. Due to the undisputed size of TAIGA as a landscape and its significance for the world as a whole, TAIGA (especially together with the term TUNDRA) belongs to general education throughout Europe and beyond. |
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5.

The General Court incorrectly stated that the Appellant had failed to demonstrate that TAIGA has a clear and specific meaning for the relevant public (EU-consumers) in a whole. This is not correct. The Appellant stated undisputed that TAIGA is a lexically noted word of the French language. It should be undisputed and known to the courts that France lies in Southern Europe. Due to the undisputed size of TAIGA as a landscape and its significance for the world as a whole, TAIGA (especially together with the term TUNDRA) belongs to general education throughout Europe and beyond.

| 6. | Apart from that, according to the case-law of the General Court, it is sufficient, that a term is understood in a part of the European Union, such as the ltalian-speaking public. Here, the General Court acknowledged conceptual dissimilarity between ‘Granini’ and ‘Panini’ because of the missing meaning of ‘Granini’ whereas ‘Panini’ had the meaning of an ltalian sandwich. |
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6.

Apart from that, according to the case-law of the General Court, it is sufficient, that a term is understood in a part of the European Union, such as the ltalian-speaking public. Here, the General Court acknowledged conceptual dissimilarity between ‘Granini’ and ‘Panini’ because of the missing meaning of ‘Granini’ whereas ‘Panini’ had the meaning of an ltalian sandwich.

| 7. | The judgement of 14 October 2003, T-292/01, paragraph 54 — BASS cited by the General Court contains no single indication that the word in question must be understood throughout the whole European Union. It must therefore pointed out that the assessment of the General Court is not supported by the case law to BASS. It is correct when the General Court acknowledged that a large part of the relevant public within Europe knows and understands the term TAIGA. |
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7.

The judgement of 14 October 2003, T-292/01, paragraph 54 — BASS cited by the General Court contains no single indication that the word in question must be understood throughout the whole European Union. It must therefore pointed out that the assessment of the General Court is not supported by the case law to BASS. It is correct when the General Court acknowledged that a large part of the relevant public within Europe knows and understands the term TAIGA.

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