# C_2019082EN.01000601.xml

| 4.3.2019 | EN | Official Journal of the European Union | C 82/6 |
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4.3.2019

EN

Official Journal of the European Union

C 82/6

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Appeal brought on 9 November 2018 by Przedsiębiorstwo Produkcyjno-Handlowe ‘Primart’ Marek Łukasiewicz against the judgment of the General Court (Third Chamber) delivered on 12 September 2018 in Case T-584/17: Primart v EUIPO

(Case C-702/18 P)

(2019/C 82/06)

Language of the case: English

Parties

Appellant: Przedsiębiorstwo Produkcyjno-Handlowe ‘Primart’ Marek Łukasiewicz (represented by: J. Skołuda, radca prawny)

Other parties to the proceedings: European Union Intellectual Property Office, Bolton Cile España, SA

Form of order sought

The appellant claims that the Court should:

| — | set aside, in whole, the judgement of the General Court under appeal; |
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set aside, in whole, the judgement of the General Court under appeal;

| — | annul the decision of the Fourth Board of Appeal of 22 June 2017 (R 1933/2016-4); |
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annul the decision of the Fourth Board of Appeal of 22 June 2017 (R 1933/2016-4);

| — | order EUIPO and Bolton Cile España, S.A. to pay the costs of the proceedings before the General Court and before the Board of Appeal, as well as order EUIPO to pay the costs of the proceedings before the Court of Justice. |
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order EUIPO and Bolton Cile España, S.A. to pay the costs of the proceedings before the General Court and before the Board of Appeal, as well as order EUIPO to pay the costs of the proceedings before the Court of Justice.

Pleas in law and main arguments

| 1) | In the judgement under appeal the General Court erred in applying Article 76(1) of Regulation No 207/2009 (1) (now Article 95(1) of Regulation 2017/1001 (2)) and Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), by declaring the Appellant’s arguments concerning the weak distinctive character of the earlier mark in the opposition proceedings inadmissible, as they have been put forward for the first time before the Court (paragraphs 87-90 of the judgement under appeal).






  a. | The General Court must assess facts and arguments, even though they were presented for the first time before it, if the EUIPO Board of Appeal should have taken them into account of its own motion. |
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1)

In the judgement under appeal the General Court erred in applying Article 76(1) of Regulation No 207/2009 (1) (now Article 95(1) of Regulation 2017/1001 (2)) and Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), by declaring the Appellant’s arguments concerning the weak distinctive character of the earlier mark in the opposition proceedings inadmissible, as they have been put forward for the first time before the Court (paragraphs 87-90 of the judgement under appeal).

a.

The General Court must assess facts and arguments, even though they were presented for the first time before it, if the EUIPO Board of Appeal should have taken them into account of its own motion.

| b. | Meaning of a part of a trade mark in an EU language is a well-known fact and as such it should be analysed by the Office of its own motion. As a result, arguments relating to it shall be thoroughly analysed by the General Court, also by assessing the arguments presented for the first time before it. |
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b.

Meaning of a part of a trade mark in an EU language is a well-known fact and as such it should be analysed by the Office of its own motion. As a result, arguments relating to it shall be thoroughly analysed by the General Court, also by assessing the arguments presented for the first time before it.

| c. | The applicant in the proceedings before the General Court has a right to question assessment of well-known facts made by the EUIPO Board of Appeal, also by presenting new arguments before the General Court and evidence supporting these arguments |
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c.

The applicant in the proceedings before the General Court has a right to question assessment of well-known facts made by the EUIPO Board of Appeal, also by presenting new arguments before the General Court and evidence supporting these arguments

| d. | By failing to assess facts and arguments the Office should have taken into account of its own motion (including well-known facts relating to the meaning of the trade marks being subject to the opposition proceedings) the General Court infringed the general rules of procedure and came to erroneous assessment of matters relevant in the case before the Board of Appeal. |
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d.

By failing to assess facts and arguments the Office should have taken into account of its own motion (including well-known facts relating to the meaning of the trade marks being subject to the opposition proceedings) the General Court infringed the general rules of procedure and came to erroneous assessment of matters relevant in the case before the Board of Appeal.

| 2) | If the Court has taken into account the well-known fact that the word ‘PRIMA’ has a laudatory meaning (as stated by the Opposition Division and the Appellant), meaning ‘first, foremost/best, chief, principal’ it should have come to a different conclusion relating to likelihood of confusion between the trade marks ES-2578815 ‘PRIMA’ and EUTMA-013682299 ‘PRIMART MAREK ŁUKASIEWICZ’, namely it should consider that no likelihood of confusing between these trade marks exists.






  a. | The marks under study coincide in an element that is of low distinctiveness, and do not have an independent role in the opposed trade mark. This, together with medium degree of visual similarity, lack of conceptual similarity and low degree of phonetic similarity (or even lack of it) excludes the likelihood of confusion between those marks. |
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2)

If the Court has taken into account the well-known fact that the word ‘PRIMA’ has a laudatory meaning (as stated by the Opposition Division and the Appellant), meaning ‘first, foremost/best, chief, principal’ it should have come to a different conclusion relating to likelihood of confusion between the trade marks ES-2578815 ‘PRIMA’ and EUTMA-013682299 ‘PRIMART MAREK ŁUKASIEWICZ’, namely it should consider that no likelihood of confusing between these trade marks exists.

a.

The marks under study coincide in an element that is of low distinctiveness, and do not have an independent role in the opposed trade mark. This, together with medium degree of visual similarity, lack of conceptual similarity and low degree of phonetic similarity (or even lack of it) excludes the likelihood of confusion between those marks.

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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).

(2)  Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017, L 154, p. 1).

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