Case C-655/15 P: Appeal brought on 7 December 2015 by Panrico, S.A. against the judgment of the General Court (Fourth Chamber) delivered on 7 October 2015 in Case T-534/13 Panrico v OHIM
Date: 2015-12-07
Institutions: Court of Justice
Subjects: EU trade mark, confectionery product, registered trade mark, trade-mark law








C_2016118EN.01000301.xml










4.4.2016   


EN


Official Journal of the European Union


C 118/3





Appeal brought on 7 December 2015 by Panrico, S.A. against the judgment of the General Court (Fourth Chamber) delivered on 7 October 2015 in Case T-534/13 Panrico v OHIM
(Case C-655/15 P)
(2016/C 118/04)
Language of the case: Spanish

Parties


Appellant: Panrico, S.A. (represented by: D. Pellisé Urquiza, abogado)

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs) and HDN Development Corp.

Form of order sought

The appellant claims that the Court should:






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set aside, in full, the judgment of the General Court (Fourth Chamber) of 7 October 2015, in Case T-534/14;










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uphold the claim made before the General Court for the revocation or annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) of 25 July 2013, in Case R623/2011-4;










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order the respondent to pay the costs.





Grounds of appeal and main arguments

In support of its appeal, the applicant relies on the following grounds alleging the infringement of Articles 8(1)(b) and 8(5) of Regulation 40/94 on the Community trade mark, and the case-law interpreting those provisions:

First ground of appeal alleging an error of law in identifying the dominant element of the signs at issue, and comparing those signs, without taking into account the relevant market context and the perspective of the relevant public on the degree of distinctiveness of those signs and/or of the elements of which those signs are composed

In order to analyse properly — that is to say, in accordance with logic and law — the similarity of the signs compared, it is indispensable to first contextualise that analysis by placing it in the relevant market, so as to adopt the perspective of the average consumer in the specific relevant territory. According to the appeal, the judgment under appeal, far from adopting a contextualised perspective, failed to take into account: (i) The acknowledged maximal degree of distinctiveness of the element DONUT (or DOUGHNUTS in its phonetic form) in the relevant territory, and (ii) the dominant character which the average consumer in the relevant territory will inevitably assign to the element DOUGHNUTS (or DONUTS) when it appears integrated in any composite mark, such as the mark ‘Krispy Kreme DOUGHNUTS’.

Second ground of appeal, linked to the first, alleging that the General Court did not properly consider the well-known (and reputed) character of the earlier marks of PANRICO, S.A.

The judgment under appeal did not taken into account, in all respects, the importance of the well-known and reputed character of the earlier marks in evaluating the likelihood of confusion. That is particularly relevant since it is settled case-law that the more distinctive the earlier mark, the greater the likelihood of confusion, particularly as regards marks with a reputation.

Third ground of appeal, alleging an error of law in that the judgment under appeal disregarded the criteria developed by the case-law on the evaluation of the likelihood of confusion, including that of association

In particular:






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the erroneous assessment of the similarity of the signs at issue, by (i) failing to attribute to the element DOUGHNUTS the dominant character which it enjoys in conjunction with the mark ‘Krispy Kreme DOUGHNUTS’, and (ii) failing to assess correctly the similarity between the element ‘DOUGHNUTS’ and the earlier marks DONUT and/or DONUTS;










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the erroneous assessment of the similarity of the goods and services covered by the marks at issue.





Fourth ground of appeal alleging an error of law in that the General Court failed to find undue use of the distinctive character of the earlier marks DONUT and DONUTS, and a clear prejudice to those marks.