EN Official Journal of the European Union C 269/26

Appeal brought on 20 June 2011 by Deichmann SE against the judgment of the General Court (Seventh Chamber) delivered on 13 April 2011 in Case T-202/09 Deichmann SE v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-307/11 P)

2011/C 269/49

Language of the case: German

Parties

Appellant: Deichmann SE (represented by: O. Rauscher, Rechtsanwalt)

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 should:

— Set aside the judgment of the General Court of the European Union of 13 April 2011 in Case T-202/09;

— Annul the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 3 April 2009 in Case R 224/2007-4;

— Order OHIM to pay the costs.

Pleas in law and main arguments

The present appeal is against the judgment of the General Court by which that court dismissed the appellant’s action for annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market of 3 April 2009 concerning the rejection of its application for registration of a figurative mark which represents an angle edged with dotted lines. The protection of the mark was sought in respect of Classes 10 (‘Orthopaedic footwear’) and 25 (‘Footwear’) of the Nice Agreement.

The contested decision infringes Article 7(1)(b) and the first sentence of Article [76(1)] of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (‘Regulation No 207/2009’).

It is based on the incorrect assumption that the mere possibility or likelihood of non-distinctive use of the sign in question is sufficient to reject the mark’s having any distinctive character altogether. In fact the not remote possibility of use which is distinctive is per se sufficient to overcome the ground for refusal of lack of distinctive character. That follows from a comparison of Article 7(1)(b) of Regulation No 207/2009 with the wording of Article 7(1)(c) of Regulation No 207/2009 and constitutes a principle which has in the meantime become well-established in the case-law of the German Bundesgerichtshof (Federal Court of Justice) and Bundespatentgericht (Federal Patents Court).

In the case of (orthopaedic) footwear a sign is inter alia perceived as an indication of origin if it — as is normal in characterising footwear — is affixed to the rear of the middle part of the insole sock, to a label or to a shoebox. Against the background of those obvious possibilities for use, the General Court’s assumption that the mark for which protection is sought consists of the representation of a component of the product itself cannot be accepted.

Furthermore, the General Court failed in the present case to examine the obvious practice of characterisation in the sport and leisure shoes sector, which the appellant explained, although it was obliged to do so on the basis of the principle, laid down in the first sentence of Article [76(1)] of Regulation No 207/2009, that OHIM is obliged to examine the facts of its own motion.

Lastly, the General Court was not entitled to find that the mark in question had no distinctive character on the ground that it was for the appellant to provide specific and substantiated information to establish that the mark applied for has distinctive character.