EN Official Journal of the European Union C 151/15

Appeal brought on 23 January 2017 by Apcoa Parking Holdings GmbH against the order of the General Court (Seventh Chamber) made on 8 November 2016 in Joined Cases T-268/15 and T-272/15, Apcoa Parking Holdings GmbH v European Union Intellectual Property Office (EUIPO)

(Case C-32/17 P)

(2017/C 151/21)

Language of the case: German

Parties

Appellant: Apcoa Parking Holdings GmbH (represented by: A. Lohmann, Rechtsanwalt)

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

Form of order sought

The appellant claims that the Court of Justice should:

1. Set aside the order of the General Court of the European Union (Seventh Chamber) of 8 November 2016 in Joined Cases T-268/15 and T-272/15;

2. Annul the decisions of the Fourth Board of Appeal of EUIPO (formerly OHIM) of 25 March 2015 in the appeal proceedings in Cases R 2062/2014-4 and R 2063/2014-4;

3. Order EUIPO to pay the costs.

Grounds of appeal and main arguments

According to the appellant, the order is based on a procedural error (first ground of appeal). Furthermore, it infringes EU law. The General Court failed to take account of essential factual circumstances (second ground of appeal). The General Court distorted certain facts (third ground of appeal). The order infringes the principle of the unitary character of the EU trade mark (fourth ground of appeal).

First ground of appeal: The General Court ruled on the actions without conducting a hearing. The appellant had, however, expressly requested that such a hearing be held.

A hearing was necessary because the action was neither manifestly inadmissible nor manifestly lacking any legal basis. The order is therefore based on a procedural error.

Second ground of appeal: The General Court’s order infringes EU law. Contrary to the General Court’s decision, there was no absolute ground for refusal within the meaning of Article 7(1)(c) of Regulation No 207/2009 (1) precluding registration of the marks at issue. The marks at issue do not concern descriptive indications.

The General Court failed to take account of relevant factual circumstances. It assumed that, for the relevant public in the United Kingdom, the English term ‘parkway’ means a parking area at a railway station. In doing so, the General Court overlooked the fact that that question had already been addressed by the United Kingdom Trademark Office, and indeed in a hearing, and, following a thorough assessment, that Office had rejected the existence of a descriptive indication. When the term is used in isolation, as it is in the mark at issue, it does not have the meaning that the General Court attributed to it. Identical trade marks comprising the word ‘Parkway’ have been registered following an extension of international registration in a number of Member States (including Ireland) and, as national applications, have been considered to merit protection and to be eligible for registration in the United Kingdom.

The General Court did not take any of this into account and merely indicated that, generally speaking, it is not bound by national decisions. In that regard, it overlooked the fact that, even though it is not bound, the General Court is not thereby released from its obligation to at least take account of and assess all relevant factual circumstances. National registrations of identical trade marks in Member States in the language area from which the designation at issue comes from are, in any event, relevant factual circumstances. A complete failure to take them into account constitutes an error in law.

Third ground of appeal: The meaning of the term ‘Parkway’ on which the General Court based its decision was taken from two dictionary sources. However, it cited them in an incomplete and distorted way. The General Court did not take account of the fact that a general meaning of the term ‘Parkway’, taken in isolation — such as that on which the General Court based its decision — could not be inferred from those sources. That was also clear in detail from the decision of the United Kingdom Trademark Office concerning the registrability of the mark in that territory. The same sources were also discussed by the United Kingdom Trademark Office. The latter concluded that the meaning listed in the dictionary did not preclude protection of that term as a trade mark. If the General Court had also assessed those sources correctly, it would have arrived at the same conclusion. Distortion of facts also constitutes an error of law.

Fourth ground of appeal: The order also infringes the principle of the unitary character of the EU trade mark. Even though there are no absolute grounds for refusal in any Member State, the General Court prevented the appellant from obtaining unitary protection for its marks in the European Union.

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