EN Official Journal of the European Union C 171/18

Appeal brought on 28 March 2013 by Fercal — Consultadoria e Serviços, Lda against the judgment of the General Court (Fifth Chamber) delivered on 24 January 2013 in Case T-474/09 Fercal v OHIM — Jacson of Scandinavia (Jackson Shoes)

(Case C-159/13 P)

2013/C 171/36

Language of the case: Portuguese

Parties

Appellant: Fercal — Consultadoria e Serviços, Lda (represented by: A.J. Rodrigues, advogado)

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

Form of order sought

The appellant claims that the Court of Justice should:

— set aside the judgment of 24 January 2013 of the Fifth Chamber of the General Court in Case T-479/09 and, consequently, annul the decision of the Second Board of Appeal of the Office For Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 18 August 2009 in Case R 1253/2008-2 in annulment proceedings No 2004 C (trade mark application No 1 077 858, JACKSON SHOES), notified to the appellant on 30 September 2009, in accordance with the applicable provisions of Community law;

— accordingly, declare that the appellant’s mark remains valid and in force;

— order the respondent to pay the costs of the proceedings.

Grounds of appeal and main arguments

Although there are graphic and phonetic similarities between the names JACKSON and JACSON, the comparison of the conflicting signs should be made taking the signs as a whole: JACKSON SHOES/JACSON OF SCANDINAVIA AB.

It results from Article 4(1)(b) of Council Directive 89/104/EEC (1) of 21 December 1988 that the average consumer’s perception of the marks is decisive in the global assessment of the likelihood of confusion.

An average consumer who makes a global assessment of the conflicting signs will clearly perceive that the two signs are distinctive and of a different type: a trade mark and a trade name — in this instance, as a result of the insertion of the initials ‘AB’, which contribute to dismissing any likelihood of confusion on the part of the average consumer as a result of the mark ‘JACKSON SHOES’.

In the appellant’s view, that aspect is relevant, since Article 4(1)(b) of Directive 89/104/EEC establishes that the perception of the marks by the average consumer is decisive in the global assessment of the likelihood of confusion.

They are signs with very definite and distinct functions: the mark is a sign which is sufficient to distinguish the products or services of one undertaking from those of another (Article 4 in fine of the Trade Mark Regulation), while the trade name identifies an undertaking and distinguishes it from other undertakings.

On the other hand, the use of similar names — which are commonly used in various countries — is not likely to lead to a likelihood of confusion when those names are combined with other elements which do not give rise to confusion on the part of the average consumer and, therefore, do not give rise to unfair competition by leading to confusion between the appellant’s goods and those of the respondent.

An exclusive right to use (in all the Member States of the European Union!) cannot be granted (on the basis of a mere trade name in Sweden) to a name which is commonly used in many countries in the European Union by thousands of people, and also by other undertakings.

The respondent can also not be granted the right to prevent the appellant from registering the mark JACKSON SHOES in Class 25, when other Community trade marks have already been registered in Class 25 with that very name.

Moreover, the respondent acknowledges that the various marks listed and described by the appellant exist on the market, and it has never called any of them into question, never claimed that any of them were likely to lead to confusion on the part of the average consumer, nor claimed that they were in conflict.

Anyone who opts for a distinctive sign made up of an element with weak distinctive character, which is also present in many other distinctive signs of third parties, cannot prevent that same sign (or a similar one) from being reused by third parties, in combination with other elements.

There is nothing precluding the coexistence — which is, in fact, already the case — of distinctive signs with similar names, provided that the marks are distinctive on the whole.

Contrary to what the respondent claims, the appellant has submitted sufficient evidence of its existence and that it is operative commercially not only within the Community but also in countries in North America and North Africa, though not — like the respondent — in the form of catalogues, which are printed only in its mother tongue — thus limiting the geographical scope — but in a multilingual fashion in the form of presentations at the world’s most important shoe fairs.

The Community trade mark JACKSON SHOES cannot be confused with the trade name JACSON OF SCANDINAVIA AB all the more since they have coexisted for quite some time and neither party has complained of damage resulting from their coexistence, nor called the competition between the products into question. That is because consumers also realise, when faced with the conflicting signs, that they are faced with a trade mark and trade name which, unquestionably, are two distinct signs of a different type.

Moreover, as recognised in the judgment under appeal and accepted by the parties, there is no confusion between the signs on the part of the average consumer and, therefore, they are not likely to be confused with one another, and ‘… the assessment of the similarity of marks must take account of the overall impression created by them (see Case T-438/07 Spa Monopole v OHIM — De Francesco Import (SpagO) ECR II-4115, paragraph 23 and case-law cited).’

Furthermore, for a correct decision to be made in this case, it is highly important to take note of the fact that OHIM has authorised the registration of various marks containing the expression ‘JAKSON’ in relation to shoes, and cannot ignore that reality entirely when deciding on an application to register a new Community trade mark with the same (ordinary) name, ‘JAKSON’.

In ignoring that reality, OHIM acted arbitrarily and thereby infringed the principle of equality.

The judgment under appeal infringes Articles 8(4) and 53(1)(c) of Council Regulation (EC) No 207/2009 (2) of 26 February 2009 on the Community trade mark.

(1) First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1).

(2) OJ 2009 L 78, p. 1.