Parties

Operative part



Parties

In Case T‑559/13,

Giovanni Cosmetics, Inc., established in Rancho Dominguez, California, (United States), represented by J. van den Berg and M. Meddens-Bakker, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Rajh, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Vasconcelos & Gonçalves, SA, established in Lisbon (Portugal),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 August 2013 (Case R 1189/2012-2) concerning opposition proceedings between Giovanni Cosmetics, Inc. and Vasconcelos & Gonçalves, SA,

THE GENERAL COURT (Fifth Chamber),

composed of A. Dittrich (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 25 October 2013,

having regard to the response lodged at the Court Registry on 26 February 2014,

further to the hearing on 12 November 2014,

gives the following

Judgment (1)

…

Forms of order sought

13. The applicant claims that the Court should:

– annul the contested decision;

– refuse the application for registration of the mark applied for in respect of all the goods against which the opposition is directed;

– order OHIM to pay the costs.

14. OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

…

Comparison of the signs

…

The degree of distinctiveness and the relative weight of the elements of the mark applied for

…

– The word elements of the mark applied for

…

44. The Board of Appeal also stated that, according to case-law, surnames were held, as a general rule, to be more distinctive than first names.

45. However, it must be found that, to date, the case-law has not established such a principle for the whole of the European Union.

46. So far as the two judgments cited by the Board of Appeal in paragraph 33 of the contested decision are concerned, it should be observed that the judgment of 1 March 2005 in Fusco v OHIM — Fusco International (ENZO FUSCO) (T‑185/03, ECR, EU:T:2005:73) concerned only the Italian public’s perception (see paragraph 54 of that judgment), and that the judgment of 13 July 2005 in Murúa Entrena v OHIM — Bodegas Murúa (Julián Murúa Entrena) (T‑40/03, ECR, EU:T:2005:285) concerned only the Spanish public’s perception (see paragraphs 40, 64, 65 and 69 of that judgment).

47. So far as the case-law cited by OHIM in its response is concerned, the following points should be noted. In its judgment of 20 February 2013 in Caventa v OHIM — Anson’s Herrenhaus (B BERG) (T‑631/11, EU:T:2013:85, paragraph 48), the General Court observed that ‘the perception of signs composed of a real or fictional person’s name and surname [could] vary from country to country within the European Union’ and that ‘it could not be excluded that, in certain Member States, consumers [would remember] the surname better than the first name when they [perceived] marks consisting of a combination of a first name and a surname’. The General Court thus established a principle which was valid in ‘certain’ Member States, not for the whole of the European Union.

48. In addition, in its judgment of 28 June 2012 in Basile and I Marchi Italiani v OHIM — Osra (B. Antonio Basile 1952) (T‑134/09, EU:T:2012:328, paragraph 44), the General Court merely found that ‘Italian consumers [generally attributed] greater distinctiveness to the surname than to the first name in the marks at issue’. In the order of 6 June 2013 in I Marchi Italiani v OHIM (C‑381/12 P, EU:C:2013:371, paragraphs 70 to 73) relied on by OHIM in its response, the Court of Justice merely found that the appellant’s ground of appeal alleging infringement of Article 8(1)(b) of Regulation No 207/2009 concerned questions of fact which, as a general rule, were not subject to review by the Court of Justice on appeal.

49. Concerning the order of 16 May 2013 in Arav v H.Eich and OHIM (C‑379/12 P, EU:C:2013:317), the Court of Justice simply held, in paragraph 44 of that order, that, ‘although it [was] possible that, in a part of the European Union, surnames [had], as a general rule, a more distinctive character than first names, it [was] none the less appropriate to take account of factors specific to the case and, in particular, the fact that the surname concerned [was] unusual or, on the contrary, very common, which [was] likely to have an effect on that distinctive character’. It thus established a principle which was valid in only ‘a part of the European Union’.

50. Other judgments, such as the judgments of 14 April 2011 in TTNB v OHIM — March Juan (Tila March) (T‑433/09, EU:T:2011:184, paragraphs 7, 12 and 30), 27 September 2012 in El Corte Inglés v OHIM — Pucci International (PUCCI) (T‑39/10, EU:T:2012:502, paragraphs 53 and 54), and 8 March 2013 in Mayer Naman v OHIM — Daniel e Mayer (David Mayer) (T‑498/10, EU:T:2013:117, paragraphs 7 and 111), concern only the Spanish or Italian public’s perception.

51. The Board of Appeal was therefore wrong to find in paragraph 33 of the contested decision that, ‘according to case-law’, surnames were more distinctive than first names. It must also be held that neither the Board of Appeal nor OHIM, in its response and in its answers to the questions put to it by the General Court in that regard at the hearing, has adduced specific evidence concerning the perception of the public in all the Member States permitting wider application of the rule — which, in the case-law of both the Court of Justice and the General Court, has been accepted for only a part of the European Union — that surnames are, in principle, more distinctive than first names.

52. In the absence of any specific evidence provided by OHIM relating to the perception of the public throughout the European Union, it is not appropriate to extend the case-law pursuant to which, in certain Member States, surnames have, as a general rule, a more distinctive character than first names so that it applies to the whole of the European Union.

53. In view of the fact that, for at least a part of the European Union, it is not established that surnames have, in principle, a more distinctive character than first names, and in view of the fact that the majority of the public located outside Italy will not perceive either of the names Giovanni and Galli as common or rare, there are no grounds for ascribing greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’ from the point of view of the whole of the relevant public. The Board of Appeal was therefore wrong to ascribe greater distinctiveness to the element ‘galli’ than to the element ‘giovanni’ for the whole of the relevant public.

54. It is true that a part of the relevant public — namely, the part of that public which knows that the element ‘giovanni’ is a common Italian first name and that the element ‘galli’ of that mark is a rare Italian surname or which generally ascribes greater distinctiveness to surnames than to first names — will ascribe greater distinctiveness to the element ‘galli’ of the mark applied for than to the element ‘giovanni’. However, it should be held that, for the other part of the relevant public, the inherent distinctiveness of the elements ‘giovanni’ and ‘galli’ is identical, and corresponds to an average distinctiveness.

…

(1) .

(1) Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.

Operative part

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1. Dismisses the action;

2. Orders Giovanni Cosmetics, Inc. to pay the costs.