EN Official Journal of the European Union C 161/9

Appeal brought on 22 February 2017 by European Union Intellectual Property Office against the judgment of the General Court (Fifth Chamber) delivered on 15 December 2016 in Case T-112/13: Mondelez UK Holdings & Services Ltd v European Union Intellectual Property Office

(Case C-95/17 P)

(2017/C 161/12)

Language of the case: English

Parties

Appellant: European Union Intellectual Property Office (represented by: A. Folliard-Monguiral, Agent)

Other parties to the proceedings: Mondelez UK Holdings & Services Ltd, formerly Cadbury Holdings Ltd; Société des produits Nestlé SA

Form of order sought

The appellant claims that the Court should:

— annul the Contested Judgment,

— order Mondelez UK Holdings & Services Ltd to bear the costs incurred by the Office.

Pleas in law and main arguments

Violation of Article 36, first sentence, of the Statute of the Court of Justice

The General Court based its Judgment on contradictory reasoning while accepting, on the one hand, that ‘proof may be adduced globally for all the Member States concerned’ and requiring, on the other hand, that the acquisition of distinctive character be established in each and every Member State, individually (see paragraph 139 of the Contested Judgment).

Violation of Articles 7(3) and 52(2) of Regulation No 207/2009 (1)

The General Court misapplied the Court of Justice’s guidance as set out in its Judgment of 24 May 2012, Case C-98/11P, Chocoladefabriken Lindt & Sprüngli AG/OHIM, (Shape of a chocolate rabbit with a red ribbon), ECLI:EU:C:2012:307, at paragraphs 62 and 63 (hereafter the ‘Chocoladefabriken Lindt & Sprüngli Judgment’) in requiring proof of the acquisition of distinctive character be established in each and every Member

State, individually.

The General Court should have examined whether the evidence submitted by the EU trade mark proprietor establishes acquisition of distinctive character in the European Union as a whole, irrespective of national borders.

By focusing exclusively on national markets, the General Court wrongly ignored that the territorial extent of the recognition of the mark is only one of the relevant factors when determining whether this mark has acquired distinctive character through use in the European Union. The General Court thus failed to have regard to criteria which are relevant in the context of a ‘single market’, in particular (i) the proportion of the public which has been shown to be familiarised with the mark compared to the European consumers as a whole; (ii) the geographical importance and repartition of the areas in which acquired distinctive character was established; and (iii) the economic importance of the areas in which acquired distinctive character was established for the European market of the goods and services at issue.

The Contested Judgment’s approach cannot be justified by the public interest underlying the absolute ground for cancellation at issue. There are safeguarding measures which balance the possibility for the proprietor of an EU trade mark to enforce the exclusive rights even in Member States in which the EU trade mark has not acquired the same level of distinctive character as in other Member States.

(1) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark

OJ 2009, L 78, p. 1