EN Official Journal of the European Union C 267/45

Appeal brought on 2 September 2009 by Perfetti Van Melle SpA against the judgment of the Court of First Instance (Eighth Chamber) delivered on 1 July 2009 in Case T-16/08: Perfetti Van Melle SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Cloetta Fazer AB

(Case C-353/09 P)

2009/C 267/78

Language of the case: English

Parties

Appellant: Perfetti Van Melle SpA (represented by: P. Perani and P. Pozzi, avvocati)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Cloetta Fazer AB

Form of order sought

The appellant claims that the Court should:

— Uphold the appeal and, accordingly, set aside the judgment of the Court of First Instance, in Case T-16/08, in its entirety, in accordance with Article 61 of the Statute of the Court of Justice and Article 113 of the Rules of Procedure;

— Give final judgment — if the state of the proceedings so permits — by annulling the Decision of the OHIM Cancellation Division, rendered on 24 November 2005, ruling on Cancellation Action No. 941 C 973065 and order the defendants to bear the costs of the proceedings before the Court of First Instance and the Court of Justice, as well as those of the OHIM invalidity proceedings.

Pleas in law and main arguments

1. Legal Grounds

By the present appeal, Perfetti Van Melle S.p.A. challenges the judgment of the Court of First Instance in case T-16108 delivered on 1 July 2009 and notified on 2 July 2009.

In support of the appeal, the applicant considers that the judgment of the Court of First Instance under appeal in this case is vitiated by misinterpretation and misapplication of Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (CTMR) (1), in conjunction with article 53(1)(a) of that regulation.

1.1 First complaint: the applicant complains that the Court of First Instance did not examine the marks at issue on the basis of the criteria of ‘global assessment’ or ‘overall impression’.

It is settled principle that the global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The applicant claims that the Court of First Instance failed to give effect to the principle cited above and, in particular, it found a likelihood of confusion, basing its assessment exclusively on the fact that they share the common element ‘CENTER’.

The judgment appealed failed to examine the marks using a ‘global assessment’ and the ‘overall impression’ made by them. Instead, the judgment appealed used an analytical approach and made an examination between the mark ‘CENTER’ from one hand and the first verbal component ‘CENTER’ of the contested mark, on the other, denying any importance to the second verbal portion ‘SHOCK’. It is true that the judgment appealed did mention the criterion of the global assessment and overall impression, but it is also true that it is not sufficient to mention and repeat a judicial criterion: in order to act correctly it is important to follow it and apply it correctly to the case. That was not done in the judgment appealed. The judgment appealed limited itself to hold that the two marks under comparison are similar sharing the verbal component ‘CENTER’, without explaining why the verbal components ‘SHOCK’ is not sufficient to exclude a risk of confusion.

For the above reasons, the applicant also submits that the judgment under appeal is vitiated by a distortion of the fact and by a violation of the duty to provide reasons.

1.2. Second complaint: the applicant complains that, in the judgment under appeal, the Court of First Instance failed to consider some extremely important and pertinent factors.

The judgment appealed also infringed Article 8(1)(b), because it did not assess factors which were extremely relevant in order to determine the likelihood of confusion between the marks. In particular, the Court of First Instance did not take into consideration the long coexistence of the marks under comparison and the absence of actual confusion, as widely explained in the application before the Court of First Instance.

In addition, the Court of First Instance did not correctly assess another important factor, which is the degree of attention of the relevant public. In fact, it was illogical for the Court of First Instance to hold that a reasonably well-informed and reasonably observant and circumspect consumer would fail to observe the presence of the word ‘SHOCK’ and to recognize that the marks under exam, not only have a visual and phonetic differences, but also a different meaning, being the mark ‘CENTER’, a word evoking ‘the middle point of something’ and the mark ‘CENTER SHOCK’, due to the presence of the most distinctive portion ‘SHOCK’, an expression evoking the idea of a strong sensation (shock) that the consumer will feel when chewing the centre of the gum.

2. Form of order sought:

— uphold the appeal and, accordingly, set aside the judgment of the Court of First Instance, in its entirety, in accordance with Article 61 of the Statute of the Court of Justice and Article 113 of the Rules of Procedure;

— give final judgment if the state of the proceedings so permits by annulling the Decision of the OHIM Cancellation Division, rendered on November 24, 2005, ruling on Cancellation Action No. 941 C 973065 and order the defendants to bear the costs of the proceedings before the Court of First Instance and the Court of Justice, as well as those of the OHIM invalidity, according to article 122 of the Rules of Procedure;

— alternatively, if the state of the proceedings does not so permit, refer the case back to the Court of First Instance for judgment in accordance with the binding criteria established by the Court of Justice.

(1) OJ L 11, p. 1