Appeal brought on 20 February 2019 by Der Grüne Punkt — Duales System Deutschland GmbH against the judgment of the General Court (Fourth Chamber) delivered on 12 December 2018 in Case T-253/17 Der Grüne Punkt — Duales System Deutschland GmbH v European Union Intellectual Property Office

(Case C-143/19 P)

(2019/C 220/23)

Language of the case: German

Parties

Appellant: Der Grüne Punkt — Duales System Deutschland GmbH (represented by: P. Goldenbaum, Rechtsanwältin)

Other party to the proceedings: European Union Intellectual Property Office (EUIPO)

Form of order sought

The appellant claims that the Court should:

— set aside the judgment under appeal of the General Court (Fourth Chamber) of 12 December 2018 in Case T-253/17;

— grant the form of order sought at first instance and give a final ruling on the dispute or, in the alternative, refer the case back to the General Court of the European Union;

— order EUIPO to pay the costs of the proceedings.

Grounds of appeal and main arguments

The appeal is based on an infringement of EU law, namely Articles 15(1), 51(1)(a) and 66(1) of Regulation No 207/2009. (1) The General Court wrongly found use preserving rights for the EU collective mark only in respect of packaging but not, however, in respect of goods in Classes 1 to 34, the product packaging of which is labelled with that mark. While it did correctly find that the public understood the use of the mark, it nevertheless erred in its assessment that this did not constitute use of the goods themselves.

The appellant relies on incorrect legal analysis. It argues that the General Court erred in its legal analysis in so far as it found that the goods were not covered by the use of the collective mark and accepted use of the EU trade mark capable of preserving rights to that mark only in respect of packaging.

For the goods to be covered, it is relevant that the sign indicates that the manufacturer of the goods is a member of the association, rather than indicating that the manufacturer of the packaging is a member of the association. The goods and their packaging are marketed as a sales unit.

The indicative function of the sign is to allow disposal and recovery on the basis of the product manufacturer’s membership of the appellant’s licensing system by means of its particular dual system.

The goods are covered by that use despite the fact that the marks of various undertakings are also simultaneously used on the relevant product packaging, as it is typical that collective marks are used alongside other marks.

The function of a collective mark does not require that it always indicate specific qualities of goods. Rather, it is sufficient that the collective mark indicates membership of an association.

The decision of the General Court failed sufficiently to take into account the differentiation between the various users of the sign set out in the appellant’s regulations governing use of the mark.

The mark was also used for the purpose of creating an outlet and specifically — in accordance with the nature of a collective mark — in an effort to maintain and/or improve the market position of the collective as compared with other competing collectives, in particular competing dual systems, and/or the segment of undertakings not belonging to the association.

(1) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (OJ 2009 L 78, p. 1).