Case C-158/18 P: Appeal brought on 22 February 2018 by Tulliallan Burlington Ltd against the judgment of the General Court (Third Chamber) delivered on 6 December 2017 in Case T-123/16: Tulliallan Burlington Ltd v European Union Intellectual Property Office

Appeal brought on 22 February 2018 by Tulliallan Burlington Ltd against the judgment of the General Court (Third Chamber) delivered on 6 December 2017 in Case T-123/16: Tulliallan Burlington Ltd v European Union Intellectual Property Office

(Case C-158/18 P)

Parties

Appellant: Tulliallan Burlington Ltd (represented by: A. Norris, Barrister)

Other parties to the proceedings: European Union Intellectual Property Office, Burlington Fashion GmbH

Form of order sought

The appellant(s) claim(s) that the Court should:

— set aside the judgment of the General Court dismissing Tulliallan Burlington Ltd’s (TBL) appeal from the Board of Appeal;

— set aside the decision of the Board of Appeal [or alternatively refer the case back to the General Court to be decided in accordance with the Court of Justice’s decision];

— order the European Union Intellectual Property Office (EUIPO) and Burlington Fashion GmbH (BFG) to pay the costs incurred by TBL in connection with this appeal.

Pleas in law and main arguments

The appellant (‘TBL’) appeals from the General Court's judgment on the basis that the General Court made the following errors of law:

1) Pleas in law alleging infringement of Article 8(5)EUTMR ( 1 ) a) The General Court erred in failing to make any findings in relation to ‘link’. b) Further, the General Court erred in holding that TBL had not provided the proof necessary to establish detriment to distinctive character or unfair advantage. c) In concluding as it did that the necessary proof had not been provided, the General Court erred by (i) setting the legal bar too high, and (ii) failing to take into account the relevant evidence. d) In fact, the only conclusion available to the General Court was that there was detriment to distinctive character or further or alternatively unfair advantage. e) The General Court wrongly rejected TBL's submissions that the Board of Appeal's decision was vitiated by its evident failure to take into account the submissions made to it.

2) Pleas in law alleging infringement of Article 8(4) EUTMR a) The General Court declined to find that the Board of Appeal should have requested additional submissions on Article 8(4) in circumstances where the only way to ensure procedural justice would have been for the Board of Appeal to invite those submissions or decide the issue on Article 8(5) only and remit the issue of Article 8(4) back to the Opposition Division. The Board of Appeal's decision should have been set aside by the General Court. b) The General Court was wrong to uphold the Board of Appeal's conclusion that TBL had not demonstrated the prerequisites for making out Article 8(4). The General Court ought to have found that the Board of Appeal was in error, set aside the Board of Appeal's findings on Article 8(4) and substituted its own finding that Article 8(4) had been infringed.

Pleas in law alleging infringement of Article 8(1) EUTMR

a) The General Court erred in applying Praktiker because in the light of the decision of the Court of Justice in EUIPO v Cactus (C-501/15 P; EU:C:2017:750), Praktiker does not apply to the Earlier Marks here.

b) Further or alternatively, the General Court erred in applying Praktiker because that judgment does not apply to shopping arcade services.

c) Even if TBL's Earlier Marks fell within the scope of ‘retail services’ and therefore fell within the ambit of Praktiker, the General Court was wrong to interpret Praktiker as necessarily precluding a finding of confusing similarity.

d) Because it erred in its findings on the application of Praktiker, the General Court failed to either (i) conduct an assessment of the likelihood of confusion or (ii) refer that exercise to the Board of Appeal. In the circumstances, it was obliged to take one of these steps.

( 1 ) 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).