L & D SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2008-07-17
40. First of all, it is clear from Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice that an appeal lies on points of law only and that the appraisal of the facts thus does not constitute, save where they have been distorted, a point subject to review by the Court (see Case C‑214/05 P Rossi  v OHIM [2006] ECR I-7057, paragraph 26, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé  v OHIM , not published in the ECR, paragraph 53).
43. It is evident from the Court’s case-law that, provided that the appellant challenges the interpretation or application of Community law by the Court of First Instance, as L & D does in its appeal, the points of law examined at first instance may be discussed again in the course of an appeal (see, inter alia, Case C-496/99 P Commission  v CAS Succhi di Frutta [2004] ECR I-3801, paragraph 50).
49. As the Court of First Instance recalled in paragraph 73 of the judgment under appeal, the Court of Justice has already held that the acquisition of the distinctive character of a mark may also be as a result of its use as part of another registered trade mark. It is sufficient that, in consequence of such use, the relevant class of persons actually perceives the product or service, designated by the mark, as originating from a given undertaking (see, to that effect, Nestlé , paragraphs 30 and 32).
50. Although the facts in Nestlé  differed from those in the present case, that does not necessarily mean, contrary to what L & D submits, that that finding of general application does not apply also to a factual and procedural context such as that at issue in the present case.
51. In particular, the fact that Nestlé  concerned the acquisition of distinctive character by a mark which it was sought to register, whereas the present case concerns establishing whether an earlier mark has a particularly distinctive character in order to ascertain whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, does not, as the Advocate General pointed out in point 51 of her Opinion, justify any difference of approach.
52. The Court of First Instance was, consequently, justified in observing in paragraph 75 of the judgment under appeal that, if mark No 91 991 could be regarded as part of the ARBRE MAGIQUE mark, it was possible to establish the particularly distinctive character of the former on the basis of evidence relating to the use and well-known nature of the latter.
55. Furthermore, inasmuch as L & D further submits that the assessment of the Court of First Instance, according to which the silhouette of a fir tree plays a predominant role in the ARBRE MAGIQUE mark, diverges from the case-law of the Court of Justice, it need only be stated that, contrary to what the appellant asserts, that case-law does not in any way show that, in the case of mixed trade marks comprising both graphic and word elements, the word elements must systematically be regarded as dominant.
58. First, the Court of First Instance did not err in law in holding that the guidelines of the United Kingdom Patent Office which, according to the appellant, confirm the descriptive character of the silhouette of the fir tree for the goods in question, were of no relevance. As the Court of First Instance rightly observes, the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation No 40/94, as it is interpreted by the Community Courts (see, to that effect, Case C-238/06 P Develey  v OHIM  [2007] ECR I‑9375, paragraphs 65 and 66).
65. However, an earlier mark can have a particularly distinctive character not only per se , but also because of the reputation it enjoys with the public (see C-251/95 SABEL [1997] ECR I-6191, paragraph 24).
71. In fact, as the Court of First Instance correctly recalled in paragraph 81 of the judgment under appeal, the case-law of the Court of Justice shows that account may be taken of evidence which, although subsequent to the date of filing the application, enables the drawing of conclusions on the situation as it was on that date (see order in Case C-192/03 P Alcon  v OHIM [2004] ECR I-8993, paragraph 41).
79. Finally, in so far as L & D further disputes the evidential value of the data relating to sales and advertising on the grounds that they relate to the ‘ARBRE MAGIQUE’ name and the present case concerns low-cost goods in everyday use, it need only be pointed out that the assessment by the Court of First Instance of the evidence produced before it does not constitute, unless that evidence has been distorted, an issue of law subject to review by the Court (see judgment of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland  v OHIM , not published in the ECR, paragraph 30).
82. By this second branch, L & D challenges the analysis made by the Court of First Instance in paragraphs 91 to 96 of the judgment under appeal of the similarities between mark No 91 991 and the Aire Limpio mark. The appellant submits, inter alia, that the Court was wrong in holding that the graphic element of the Aire Limpio mark has a clearly dominant character in the overall impression, which noticeably prevails over the word element.
83. However, the fact remains that the Court of First Instance made in that context an assessment of the facts which, unless the appellant claims those facts were distorted, cannot be reviewed by the Court of Justice on appeal.