EN Official Journal of the European Union C 301/13

Appeal brought on 2 September 2010 by X Technology Swiss GmbH against the judgment of the General Court (SecondChamber) delivered on 15 June 2010 in Case T-547/08 X Technology Swiss GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-429/10 P)

()

2010/C 301/20

Language of the case: German

Parties

Appellant: X Technology Swiss GmbH (represented by: A. Herbertz and R. Jung, Rechtsanwälte)

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Form of order sought

— Set aside the judgment of the General Court of [15] June 2010 in Case T-547/08 and annul the decision of the Fourth Board of Appeal of OHIM of 6 October 2008 — R 846/2008-4;

— Order the respondent to pay the costs.

Pleas in law and main arguments

The present case seeks the setting aside of the judgment of the General Court by which the appellant’s claim seeking annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market of 6 October 2008 concerning the rejection of its application for registration of a position mark consisting of the orange colouration of the toe area of a sock.

The appellant submits that the General Court has wrongly and inappropriately interpreted the absolute ground for refusal of registration of trade marks in Article 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark. In the contested decision unlawfully raised conditions are placed on the requirement for distinctiveness.

On an assessment of distinctiveness, it is not merely a question of the individual features of the mark, but also materially one of the overall impression of the mark in relation to the goods which it covers. That means that the distinctiveness of the trade mark applied for must be examined first as regards its different components, such as shape, position or colour, and second — which the General Court failed to do — as regards its overall impression in the light of the required distinctiveness. Within the framework of such an examination, regard must also fundamentally be had to the fact that a certain amount of distinctiveness is sufficient to enable a trade mark to be registered.

The General Court unlawfully exaggerated the requirements for distinctiveness of the trade mark applied for, citing case-law on three-dimensional trade marks, which consist of the appearance of the goods themselves, and figurative marks, which consist of a two-dimensional presentation of the goods. That case-law is not applicable to the trade mark applied for, since the appellant’s trade mark is not a three-dimensional mark and there is no basis for comparison on which the case-law relating to the other marks can be applied to the mark applied for. Unlike the marks to which the cited case-law refers, the appellant’s trade mark concerns only a small part of the goods to be covered. A sign precisely delimited and clearly defined as to colour, which is small in relation to the goods to be covered, is not comparable to a mark which consists of the entire appearance of the goods themselves.

Even if it is assumed that the case-law on three-dimensional trade marks is applicable to the trade mark applied for, the decision of the General Court remains erroneous in law. The appellant’s trade mark meets the conditions laid down in the case-law on three-dimensional marks. It departs significantly from the norm and from the customs of the sector and fulfils the essential function of indicating origin. The findings of the General Court on the degree of attention of the relevant public are not comprehensible: in the case of items which cannot be tried on before purchase, the consumer is particularly attentive and possesses particular brand awareness. Further, the General Court did not in any way sufficiently address the arguments advanced by the appellant regarding the use of a precisely defined hue. In so far as the General Court considers the identification of sports socks as widespread, it is not clear on what ground a colouration, which is always found in the same position and in the same hue with signal effect, is not an identification which is capable of registration.