EN Official Journal of the European Union C 227/13

Appeal brought on 29 May 2012 by Volkswagen AG against the judgment of the General Court (Second Chamber) delivered on 21 March 2012 in Case T-63/09 Volkswagen AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-260/12 P)

2012/C 227/19

Language of the case: German

Parties

Appellant: Volkswagen AG (represented by: H.-P. Schrammek, C. Drzymalla, S. Risthaus, Rechsanwälte)

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Form of order sought

The appellant claims that the Court of Justice should:

— set aside in its entirety the judgment of the General Court (Second Chamber) of 21 March 2012 in Case T-63/09.

Grounds of appeal and main arguments

The appeal has been brought against the judgment of the General Court of the European Union of 21 March 2012 in Case T-63/09, by which that court dismissed the action brought by Volkswagen AG against the decision of the Second Board of Appeal of OHIM of 9 December 2008 (Case R 749/2007-2) in opposition proceedings between Volkswagen AG and Suzuki Motor Corporation.

The appellant raises the following grounds of appeal:

— procedural errors in that it was denied the right to a fair hearing and the substance of the case was distorted,

— infringement of European Union law by a wrongful application of Article 8(1)(b) and (2)(a) of the Community trade mark regulation (Regulation No 207/2009). (1)

The General Court infringed the appellant’s right to a fair hearing and distorted the substance of the case by failing to have regard to the facts put forward by the appellant. Contrary to the General Court’s findings, the appellant gave ample information in relation to the descriptive meaning of the designation SWIFT in the English language. The General Court also paid little attention to the information provided by the appellant in its appeal on the differences in commercial usage of the designation ‘GTI’ in individual countries.

Moreover, the General Court wrongly rejected the appellant’s submission of examples of descriptive meaning in the form of three-letter signs containing the letter ‘I’ which have been registered as having distinctive character. Furthermore, the General Court infringed the principles of a fair procedure by according different probative value to the fact of trade mark registration. The appellant’s right to a fair hearing was infringed in that the General Court paid no regard to its claims regarding the unique position of the designation ‘GTI’.

Finally, the General Court distorted the facts of the case by wrongly accusing the appellant of having failed to provide sufficient information on the legal enforcement of the mark ‘GTI’. The appellant’s submission in relation to the strength of the evidence, from which the Office for Harmonisation inferred the alleged commercial usage in Sweden, was also ignored by the General Court.

The General Court misapplied Article 8(1) and (2) of Regulation No 207/2009, thereby infringing European Union law. An application for a Community trade mark is to be rejected if an earlier mark exists in one of the Member States which is likely to be confused with the mark applied for. However, the General Court examined ‘the EU as a whole’ and thus incorporated aspects from countries in which such trade mark protection does not exist. This goes against the case-law of the Court of Justice in Matratzen Concord. (2)

The General Court infringed European Union law by classing the designation ‘GTI’ as a descriptive indication of a technical nature, even though that designation is registered as a mark in a number of Member States. It is purely the task of the national authorities to decide on the descriptive meaning of a mark in their respective territories. Only if an application has been made to remove a mark from the register can a body of the European Union take account of the invalidity of a national mark in determining whether there is a likelihood of confusion.

Moreover, the General Court unjustifiably specified new criteria to examine the individual position of a component within the contested mark. Furthermore, it infringed European Union law by taking the view that the mark itself was not sufficient for consumers to determine the commercial origin of the goods, and consumers would seek information unrelated to the registered mark, in particular indications as to who manufactures the goods. Finally, the General Court failed to have regard for the conditions for a likelihood of confusion in the context of a series of marks, since it rejected the addition of the mark ‘SWIFT GTI’ to the appellant’s series of signs ‘Golf GTI’ and ‘Lupo GTI’.

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

(2) Order in Case C-3/03 P Matratzen Concord [2004] ECR I-3657.