EN Official Journal of the European Union C 287/28

Appeal brought on 27 July 2012 by Harald Wohlfahrt against the judgment of the General Court (Fifth Chamber) delivered on 16 May 2012 in Case T-580/10 Harald Wohlfahrt v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-357/12 P)

2012/C 287/55

Language of the case: German

Parties

Appellant: Harald Wohlfahrt (represented by: M. Loschelder and V. Schoene, Rechtsanwälte)

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

Form of order sought

The appellant claims that the Court should:

— set aside the judgment of the General Court (Fifth Chamber) of 16 May 2012 in Case T-580/10 and deliver judgment in line with the form of order sought by the appellant before the General Court, which is reproduced on page 4 of the judgment;

— order OHIM to pay the necessary costs incurred by the appellant.

Pleas in law and main arguments

OHIM and the General Court refused the registration by the appellant (applicant before the General Court) of the mark ‘Kindertraum’ for goods in Classes 16 and 28, since the intervener in support of the defendant, proprietor of the earlier Italian word mark ‘kinder’, inter alia, for goods in those classes, filed an opposition against such registration.

The appellant raises three grounds of appeal.

First ground of appeal: infringement of Article 42(2) of Regulation No 207/2009 (1)

The General Court took the view that it was not decisive whether the opposing trade mark which had already been registered for eight years was in use or not at the time of the opposition decision. Under Article 42(3) in conjunction with Article 42(2) of Regulation No 207/2009, use of the opposing trade mark must be proven only if it was registered during the period of five years preceding the date of publication of the Community trade mark application. The appellant sees in that approach a contradiction with the purpose of compulsory usage, which aims to ensure that, after the five-year grace period has expired, no rights can be based on an unused earlier mark. Contrary to the view of the General Court, the loophole in Article 42 of Regulation No 207/2009 must be closed by a teleological interpretation, taking account of German or Italian national trade mark law. Moreover, in relation to Article 42 of Regulation No 207/2009, the situation in relation to use at the time of closure of the opposition proceedings is decisive.

Second ground of appeal: infringement of Article 75(1) of Regulation No 207/2009, misuse of trade mark law by the opposing trade mark

The Board of Appeal did not address the appellant’s complaint that the registration of the Italian trade mark relied on in opposition constitutes a misuse of law. The appellant accuses the General Court of wrongly having failed to allow that complaint. That complaint is part of Community law and thus also part of Community trade mark law. The appellant submits that, in the present case, the conduct of the opponent as regards registration is aimed at using unused marks, and in defence of no economic interests worthy of protection, to bring about a comprehensive blockage of use of the word ‘kinder’.

Third ground of appeal: misapplication of Article 8(1)(b) of Regulation No 207/2009

The General Court was wrong to conclude that there was a likelihood of confusion between the intervener’s opposing trade mark and the mark applied for. First of all, the General Court wrongly assessed the appellant’s submission and wrongly assumed that the appellant had not disputed the Board of Appeal’s finding that the conflicting marks were similar. In reality, he did dispute that finding. The marks are not similar, since the component ‘kinder’ in the opposing trade mark is less distinctive, at the most.

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