IP case law Court of Justice

Order of 30 Apr 2015, C-622/13 (Castel Frères SAS)



ORDER OF THE COURT (Sixth Chamber)

30 April 2015 (*)

(Appeal — Community trade mark — Regulation (EC) No 40/94 — Article 7(1)(c) and (j) — Word mark CASTEL — Indication of geographical origin — Application for a declaration of invalidity brought by the proprietor of the indication of geographical origin ‘Castell’ — Article 181 of the Rules of Procedure of the Court of Justice — Appeal manifestly inadmissible in part and manifestly unfounded in part)

In Case C-622/13 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 25 November 2013,

Castel Frères SAS, established in Blanquefort (France), represented by A. von Mühlendahl and H. Hartwig, Rechtsanwälte,

appellant,

the other parties to the proceedings being:

Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell, established in Castell (Germany), represented by R. Kunze, Solicitor,

applicant at first instance,

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

defendant at first instance,


THE COURT (Sixth Chamber),

composed of S. Rodin, President of the Chamber, M. Berger and F. Biltgen (Rapporteur), Judges,

Advocate General: P. Mengozzi,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

Order

1        By its appeal, Castel Frères SAS (‘Castel Frères’) asks the Court of Justice to set aside the judgment of the General Court of the European Union in Fürstlich Castell’sches Domänenamt v OHIM — Castel Frères (CASTEL) (T-320/10, EU:T:2013:424; ‘the judgment under appeal’), by which the General Court upheld the action brought by Fürstlich Castell’sches Domänenamt Albrecht Fürst zu Castell-Castell (‘Fürstlich Castell’) and annulled the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 May 2010, concerning invalidity proceedings between Fürstlich Castell and Castel Frères (Case R 962/2009-2; ‘the contested decision’).

 Legal context

2        Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC) No 3288/94 of 22 December 1994 (OJ 1994 L 70, p. 83) (‘Regulation No 40/94’), was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. Nevertheless, given the date on which the application for registration of the Community trade mark at issue was submitted, the provisions of Regulation No 40/94 remain applicable.

3        Article 7(1)(c) and (j) of Regulation No 40/94 were worded as follows:

‘The following shall not be registered:

...

(c)      trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;

...

(j)      trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin;

...’

4        Those provisions have not, moreover, been amended following the entry into force of Regulation No 207/2009.

 Background to the dispute

5        On 29 April 2002 Castel Frères filed an application for registration of a Community trade mark at OHIM pursuant to Regulation No 40/94.

6        The mark for which registration was sought is the word sign ‘castel’.

7        The goods in respect of which registration was sought are in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘alcoholic beverages (except beers)’.

8        On 1 June 2004 the word mark CASTEL was registered as a Community trade mark (‘the disputed mark’).

9        On 30 October 2007 Fürstlich Castell submitted an application for a declaration of invalidity of the disputed mark under Articles 51 and 7(1) of Regulation No 40/94 based on the indication of geographical origin ‘Castell’, protected for wines in Germany, France, Greece, Italy and Spain (‘the earlier geographical indication’).

10      On 19 June 2009 the Cancellation Division of OHIM rejected the application for a declaration of invalidity.

11      On 18 August 2009 Fürstlich Castell lodged an appeal at OHIM against the Cancellation Division’s decision.

12      By the contested decision, the Second Board of Appeal of OHIM dismissed the appeal. After finding that ‘Castell’ was an indication of geographical origin relating to wines produced in Germany and was perceived as such by the relevant public, the Board of Appeal stated that the spelling difference between the two terms, namely, that the disputed mark is written with one letter ‘l’ while the earlier geographical indication is written with two letters ‘l’, was however likely to create, first, some distance, and, secondly, a conceptual difference between those terms. Accordingly, the Board of Appeal held that the disputed mark was not descriptive of the geographical origin of the products concerned, and consequently that the application for a declaration of invalidity was unfounded.

 The procedure before the General Court and the judgment under appeal

13      By application lodged at the Registry of the General Court on 2 August 2010, Fürstlich Castell brought an action for the annulment of the contested decision. In support of its action, it relied on six pleas in law, alleging infringement of the following provisions of Regulation No 207/2009 respectively: Articles 7(1)(c) and 52(1)(a) (first plea); Articles 7(1)(g) and 52(1)(a) (second plea); Articles 7(1)(j) and 52(1)(a) (third plea); Articles 63, 64 and 76 (fourth plea); Article 65 (fifth plea) and Article 75 (sixth plea).

14      The General Court rejected the objection raised by Castel Frères on the inadmissibility of the action for annulment based on its claim that the fact that Fürstlich Castell filed an application for registration of the word sign ‘castel’ with the German Patent and Trade Mark Office while the procedure relating to the application for a declaration of the invalidity of the disputed mark was pending before OHIM constituted an abuse of rights.

15      In that regard, the General Court held that the argument alleging an abuse of rights, even if it could be raised for the first time before the General Court, played no part as concerns the admissibility of an action against a decision of a Board of Appeal of OHIM.

16      As regards the substance, after setting out, in paragraphs 39 to 50 of the judgment under appeal, the case-law of the Court of Justice and the General Court relating to Article 7(1)(c) of Regulation No 207/2009, and more specifically the case-law concerning the registration of indications of geographical origin, the General Court, first, determined, in paragraphs 51 and 52 of that judgment, that the relevant public comprises the average consumer of alcoholic beverages intended for the general public of the Member State where the place designated by that indication is situated. The General Court then, in paragraphs 56 to 63 of that judgment, undertook an analysis of the perception of the disputed mark by that public, and concluded that the term ‘castell’ was perceived, by that public as defined, as an indication of geographical origin for wines, since it refers to a place sufficiently known to that public for the wines produced in that place, and consequently that it is currently associated, for that public, with the category of goods concerned.

17      Last, the General Court rejected, in paragraphs 70 to 76 of the judgment under appeal, the Board of Appeal’s finding that the spelling difference referred to in paragraph 12 of this order would be sufficient, from the relevant public’s point of view, to outweigh the resemblance of the disputed mark to the earlier geographical indication, designating the wine-producing municipality of Castell in Germany, that is to say, the geographical origin of the goods at issue.

18      The General Court held, in paragraph 77 of the judgment under appeal, that the relevant public, which is aware of the earlier geographical indication and, therefore, of the existence of the wine-producing municipality of Castell in Germany will, when confronted with goods bearing the disputed mark, namely, CASTEL, think immediately, without further thought, that what they have in front of them is a wine which comes from that wine-producing municipality.

19      Since the disputed mark is descriptive of the abovementioned goods, the General Court upheld the plea in law alleging infringement of Articles 7(1)(c) and 52(1)(a) of Regulation No 207/2009 and annulled the contested decision.

 Forms of order sought by the parties

20      Castel Frères asks the Court of Justice to set aside the judgment under appeal, to dismiss the application for annulment brought by Fürstlich Castell and to order the latter, together with OHIM, to pay the costs of the proceedings at first instance and on appeal.

21      OHIM claims that the Court of Justice should uphold the appeal and order Fürstlich Castell to pay the costs.

22      Fürstlich Castell contends that the Court of Justice should dismiss the appeal brought by Castel Frères and order the latter to pay the costs.

 The appeal

23      Under Article 181 of the Rules of Procedure of the Court of Justice, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court of Justice may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

24      That provision is to be applied in the present case.

 The admissibility of the appeal

25      At the outset, Fürstlich Castell pleads that the appeal is inadmissible in that it was lodged out of time at the Registry of the Court of Justice. Since the period of ten days’ extension on account of distance is provided for by a provision of secondary legislation, namely, the Rules of Procedure of the Court of Justice, only the two-month period provided for in the Statute of the Court of Justice of the European Union should apply.

26      As is clear from the first paragraph of Article 56 of the Statute of the Court of Justice, the period for bringing an appeal is two months from the notification of the decision appealed against.

27      Under Article 51 of the Rules of Procedure, that time-limit is to be extended on account of distance by a single period of 10 days.

28      In that regard, it should be pointed out that that single period of extension on account of distance is not to be considered to be distinct from the period for bringing an appeal referred to in Article 56 of the Statute of the Court of Justice, but rather as an integral part of that period which it extends by a fixed period of time. Thus, it follows from Article 56 of the Statute of the Court of Justice, read in conjunction with Article 51 of the Rules of Procedure, that the period within which an appeal must be brought, failing which it will be deemed to be inadmissible, is two months and ten days after notification of the decision appealed against.

29      It follows that the period for bringing an appeal against the judgment under appeal expired on 25 November 2013. This appeal, which was received at the Registry of the Court of Justice, by fax, on 25 November 2013 and the original of which was received by the same Registry on 27 November 2013, was brought within the period laid down, in accordance with Article 57(7) of the Rules of Procedure.

30      Accordingly, the appeal is admissible.

 The substance

 The first ground of appeal

–       Arguments of the parties

31      By its first ground of appeal, Castel Frères claims that the General Court erred in law in holding that the action brought by Fürstlich Castell could not constitute an abuse of rights.

32      By the first part of the first ground of appeal, Castel Frères states that Fürstlich Castell itself submitted, on 9 March 2010, two applications for registration, in Germany, of the word mark ‘castel’, identical to the disputed mark. Those two marks were registered by Fürstlich Castell on 30 March 2010 with the German Patent and Trade Mark Office and published on 30 April 2010, that is to say, four days before the adoption of the contested decision. Consequently, the findings of fact made by the General Court in paragraph 17 of the judgment under appeal, according to which the acts constituting abuse of rights had been known almost two months before the adoption of the contested decision, are obviously not correct and therefore constitute a distortion of the sense of the evidence.

33      In the second part of the first ground, Castel Frères claims that there was a failure to state reasons in the judgment under appeal, in so far as the General Court considers, in paragraph 18 of this judgment, that ‘in an action brought against a decision of one of OHIM’s Boards of Appeal, an argument alleging an abuse of rights cannot play any part as regards the admissibility of that action’, while failing otherwise to justify, in law, that finding.

34      By the third part of the first ground of appeal, Castel Frères claims that the General Court erred in its interpretation of the concept of abuse of rights in proceedings before the EU institutions. According to Castel Frères, the finding of an abuse rights defeats any action which is otherwise legitimate and justifiable. To the extent that Fürstlich Castell intends to protect the disputed mark for its own benefit, the action seeking a declaration of the invalidity of that same mark cannot, in any event, succeed, in accordance with the principle that no one can dispute what he has previously accepted (nemo potest venire contra factum proprium).

35      OHIM puts forward arguments comparable to those of Castel Frères in support of the third part of its first ground of appeal.

36      Fürstlich Castell, for its part, contends that Castel Frères’s claim that it could have become aware of the German trade mark CASTEL only on 30 April 2010 is inaccurate and irrelevant.

37      Fürstlich Castell adds that the argument alleging an abuse of rights is, in any event, unfounded. OHIM is required to assess whether the mark under examination is descriptive and/or devoid of distinctive character, and the motives and earlier conduct of the applicant for a declaration of invalidity cannot affect the task entrusted to OHIM of ascertaining whether the rights of the proprietor of the mark were validly obtained in the light of the rules governing the registrability of that mark.

–       Findings of the Court

38      In the first part of the first ground of appeal, Castel Frères invokes a distortion of the sense of the evidence by the General Court in that it held, in paragraph 17 of the judgment under appeal, that the facts on which the application for registration was based were known almost two months before the Board of Appeal of OHIM adopted the contested decision.

39      It should be noted that the General Court did not draw any inference, in fact or in law, from that finding, since, in paragraph 18 of the judgment under appeal, it held that even if the factual circumstances put forward by Castel Frères were established, the argument alleging an abuse of rights cannot play any part as regards the admissibility of an action brought against a decision of the Board of Appeal of OHIM.

40      Since the argument relating to the alleged distortion of the sense of the evidence by the General Court therefore does not make it possible to reach a decision other than that adopted by the General Court in paragraph 18 of the judgment under appeal, the argument must be rejected as being ineffective.

41      As regards the second and third parts of the first ground of appeal, alleging a supposed absence of a statement of reasons in the judgment under appeal and an allegedly incorrect interpretation by the General Court of the concept of abuse of rights within the meaning of EU law, it should be noted, first, that it is clear from Article 55(1)(a) of Regulation No 40/94 that an application for a declaration of invalidity based on an absolute ground for invalidity does not require the applicant to show an interest in bringing proceedings, since the aim of the absolute grounds for refusal of registration is to protect the public interest underlying them.

42      Second, the purpose of the administrative procedure laid down in Article 55(1)(a) of Regulation No 40/94, in conjunction with Article 51(1)(a) of that regulation, is, inter alia, to enable OHIM to review the validity of the registration of a mark and to adopt, where necessary, a position which it should have adopted of its own motion under Article 38(1) of Regulation No 40/94 (order in Donaldson Filtration Deutschland v ultra air, C-450/13 P, EU:C:2014:2016, paragraph 40).

43      Accordingly, because it is necessary to protect the public interest underlying Article 7(1)(b) and (c) and Article 55(1)(a) of Regulation No 40/94, OHIM’s task is to assess whether the mark under examination is descriptive and/or devoid of distinctive character in the light of the rules governing the registrability of that mark, and the motives and earlier conduct of the applicant for a declaration of invalidity cannot affect the scope of that task (order in Donaldson Filtration Deutschland v ultra air, C-450/13 P, EU:C:2014:2016, paragraph 41).

44      Because OHIM’s assessment must be made exclusively in the light of the public interest underlying Article 7(1)(b) and (c) and Article 55(1)(a) of Regulation No 40/94, the potential or actual economic interest pursued by the applicant for a declaration of invalidity is not relevant and, consequently, there can be no question of an abuse of rights on the part of the applicant for a declaration of invalidity (order in Donaldson Filtration Deutschland v ultra air, C-450/13 P, EU:C:2014:2016, paragraph 42).

45      Accordingly, the fact that the applicant for a declaration of invalidity may file an application with a view to subsequently affixing itself the sign in question to its own products cannot amount to an abuse of rights in any circumstances. The public interest safeguarded by Article 7(1)(c) of Regulation No 40/94 is precisely that of keeping that sign freely available (order Donaldson Filtration Deutschland v ultra air, C-450/13 P, EU:C:2014:2016, paragraph 43).

46      In addition, it should be stated that the intention of the applicant for a declaration of invalidity to use the mark in question after the declaration of invalidity is not prohibited by Regulation No 40/94. Article 51(1) of that regulation provides that a Community trade mark may also be declared invalid where there are absolute grounds for refusal on the basis of a counterclaim in infringement proceedings, which presupposes that the defendant in that action may obtain a declaration of invalidity even if he has used the mark in question and intends to continue to do so (order Donaldson Filtration Deutschland v ultra air, C-450/13 P, EU:C:2014:2016, paragraph 44).

47      However, the rejection of an application for a declaration of invalidity on the ground of an abuse of rights would preclude the effective attainment of the objectives pursued by Article 7(1)(b) and (c) of Regulation No 40/94. Such rejection would not permit an assessment of the mark in the light of the rules governing its registrability or of the existence of an absolute ground for refusal of registration (order Donaldson Filtration Deutschland v ultra air, C-450/13 P, EU:C:2014:2016, paragraph 45).

48      It follows from the above that the General Court did not err in law when it held, in paragraph 18 of the judgment under appeal, that the argument of abuse of rights plays no part as regards the admissibility of an action brought as part of invalidity proceedings against a decision of the Board of Appeal of OHIM. 

49      Accordingly, the second and third parts of the first ground of appeal must be rejected as being manifestly unfounded.

50      It follows that the first ground of appeal must be rejected as being ineffective in part and as manifestly unfounded in part.

 The second ground of appeal

–       Arguments of the parties

51      By the second ground put forward in support of its appeal Castel Frères claims that the General Court infringed Article 7(1)(c) of Regulation No 207/2009 in so far as it applied erroneous legal criteria in order to find that the disputed mark had to be regarded as descriptive and was not as such capable of being registered.

52      Referring to the judgment in Agencja Wydawnicza Technopol v OHIM (C-51/10 P, EU:C:2011:139), Castel Frères claims that the judgment under appeal does not respect the principles that should be taken into account when a mark is being examined pursuant to Article 7(1)(c) of Regulation No 207/2009.

53      According to the appellants, given that the term ‘castel’ neither designates the geographical origin of a product nor constitutes a descriptive indication of another characteristic of the goods for which registration has been sought, Article 7(1)(c) of Regulation No 207/2009 should not be applied. It is the geographical indication ‘Castell’ which is called on to meet the public interest objective underpinning that article and cannot, therefore, be registrable as a Community trade mark.

54      In that regard, the bilateral treaties referred to by the General Court, in paragraphs 58 and 59 of the judgment under appeal, are, according to Castel Frères, irrelevant, since they are manifestly inapplicable ratione temporis and since the name ‘castell’ is not protected as a designation of origin or geographical indication under EU law in that area.

55      In so far as the settled case-law of the Court of Justice concerning signs which are not sufficiently far removed from a descriptive indication has been developed with respect to marks composed of several elements, Castel Frères considers that the General Court cannot rely on the similarity between the terms ‘castel’ and ‘castell’, since the latter indicates the geographical origin of a product. It is, according to the appellants, clear that the case-law of the Court of Justice on the application of Article 7(1)(c) of Regulation No 207/2009 to word combinations is not applicable to words which are merely similar to a name indicating the geographical origin of wines.

56      Furthermore, the appellants state that there is a specific provision, namely, Article 7(1)(j) of Regulation No 207/2009, prohibiting the registration of marks for wine consisting of geographical indications where the wines concerned do not have that origin. It would be incoherent for that specific provision, which limits the exclusion to marks which contain or consist of a geographical indication, to be extended to similar marks under Article 7(1)(c) of Regulation No 207/2009.

57      OHIM supports Castel Frères’s analysis that the General Court erred in its interpretation of Article 7(1)(c) of Regulation No 207/2009 by relying on irrelevant criteria when assessing whether the mark at issue is composed exclusively of a sign which may serve to designate the geographical origin of the category of goods concerned.

58      Like Castel Frères, OHIM claims that the descriptiveness of the geographical indication ‘Castell’ cannot transform the name ‘castel’ into a descriptive indication, unless it can be shown that the public perceives the sign in question as a description of the geographical origin of the goods and not as the evocation of a protected geographical indication.

59      OHIM claims that, according to the Court’s settled case-law, any perceptible difference between the formulation of the term submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate an essential characteristic of the goods is apt to confer distinctiveness on the term, enabling it to be registered as a trade mark. Even though, in that regard, the General Court explicitly referred to the judgment in Procter & Gamble v OHIM (C-383/99 P, EU:C:2001:461), it did not however analyse whether there was such a perceptible difference in the present case, but merely stated, in paragraph 70 of the judgment under appeal, that that difference was insufficient to outweigh the resemblance which exists between the earlier geographical indication and the disputed mark. In addition, even if that statement relates to the perception of such a difference by the public concerned, the correct test for the examination in question should not merely be whether the geographical term is sufficiently far removed, which would, in actual fact, imply the very existence of a perceptible difference between the signs.

60      According to OHIM, the use of the incorrect examination criterion by the General Court is further confirmed in paragraph 73 of the judgment under appeal, in that the General Court failed to analyse whether the consumer perceives the sign as a geographical term or whether, on the contrary, the consumer is at all times aware that the sign in question is not a geographical term.

61      The error is, according to OHIM, repeated in paragraph 74 of the judgment under appeal, in that the General Court did not rule on how consumers actually interpret the sign at issue.

62      OHIM supports Castel Frères’s position that the specific provisions of Article 7(1)(j) of Regulation No 207/2009 should be taken into consideration.

63      Fürstlich Castell, for its part, contends that the General Court correctly applied Article 7(1)(c) of Regulation No 207/2009.

–       Findings of the Court

64      At the outset, it is appropriate to state that the ground of appeal to the effect that the General Court erred in assessing the distinctiveness of the mark at issue is a question of law falling within the Court of Justice’s jurisdiction in the context of an appeal.

65      Since the General Court held that the term ‘castel’ is descriptive of the goods covered by the application for registration filed by Castel Frères, the Court must determine whether that assessment is based on a misapplication of Article 7(1)(c) of Regulation No 40/94.

66      In that regard, it must be pointed out that the General Court provided an overview of the settled case-law, in paragraphs 39 to 49 of the judgment under appeal.

67      Specifically as regards word marks, the General Court stated, in paragraph 47 of the judgment under appeal, that any perceptible difference between the formulation of the term submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the term enabling it to be registered as a trade mark (judgment in Procter & Gamble v OHIM, C-383/99 P, EU:C:2001:461, paragraph 40).

68      It is in the light of that case-law that the General Court defined, in paragraphs 51 and 52 of the judgment under appeal, the relevant public and assessed, in paragraphs 53 to 78 of that judgment, the perception of the disputed mark by that public.

69      It is appropriate to consider, first, Castel Frères’s argument that the case-law relied on by the General Court in that regard relates only to cases where marks consist of a combination of elements and does not therefore apply in this case.

70      In the context of marks consisting of a word produced by a combination of elements, it is the Court’s settled case-law that for such a mark to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 40/94, it is not sufficient that each of its components may be found to be descriptive. The word itself must be found to be descriptive (see, to that effect, judgments in Koninklijke KPN Nederland, C-363/99, EU:C:2004:86, paragraph 96; Campina Melkunie, C-265/00, EU:C:2004:87, paragraph 37, and OHIM v Celltech, C-273/05 P, EU:C:2007:224, paragraph 76).

71      Although the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains, as a general rule, descriptive of those characteristics for the purposes of Article 7(1)(c) of Regulation 40/94, the Court of Justice added, however, that such a combination may not be descriptive, within the meaning of that provision, provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements (see judgments in Koninklijke KPN Nederland, C-363/99, EU:C:2004:86, paragraph 99; Campina Melkunie, C-265/00, EU:C:2004:87, paragraph 40, and OHIM v Celltech, C-273/05 P, EU:C:2007:224, paragraph 78).

72      However, Castel Frères has failed to demonstrate, in law, that the relevant criteria when assessing descriptiveness, established by the case-law in the context of marks resulting from a combination of elements, do not apply when the mark for which registration is sought is composed of a single word.

73      As regards OHIM, although it does not question the relevance of the case-law cited by the General Court in paragraph 47 of the judgment under appeal, recalled in paragraph 64 of this order, it criticises the General Court, in general, for failing to examine to the requisite legal standard the relevant consumer’s perception of the sign in question.

74      It is therefore necessary to examine, second, whether the General Court carried out a sufficient analysis of the relevant consumer’s perception of the sign in question.

75      In that regard, it follows from the findings in the judgment under appeal relating to the perception of the disputed mark by the relevant public that the General Court explicitly found, in particular in paragraphs 74 and 76 of that judgment, that ‘the relevant public may also perceive the disputed mark as being a reference to the wine-producing municipality of Castell’ and that the term ‘castel’ of the disputed mark will be perceived ‘as a reference to the wine-producing municipality in Franconia and to the protected geographical indication familiar to the German public, and thus as a reference to the geographical place in which those wines are produced’.

76      The General Court concludes from this, in paragraph 77 of the judgment under appeal, that ‘the relevant public, which ... is aware of the earlier geographical indication, and therefore of the existence of the wine-producing municipality of Castell in Germany, will, when confronted with goods bearing the [disputed mark, namely, CASTEL] think immediately, without further thought, that what they have in front of them is a wine which comes from that wine-producing municipality’.

77      It follows from the foregoing that the General Court properly examined the perception, by the relevant consumer, of the sign in question and ruled explicitly on the way that consumer actually interprets that sign, and consequently the second ground of appeal, in so far as it based on OHIM’s complaints in that regard, including those directed specifically against paragraphs 73 and 74 of the judgment under appeal, must be rejected as being manifestly unfounded.

78      Furthermore, as regards OHIM’s complaint directed against paragraph 70 of the judgment under appeal, it should be noted that the General Court stated the following in that paragraph:

‘[I]t is a minimal difference in spelling, which does not constitute a perceptible difference from the point of view of the relevant public between the disputed mark and the term used to designate the wine-producing municipality of Castell, and thus the geographical origin of the goods in question. Consequently, … the difference which has been found to exist does not create an impression sufficiently far removed from that produced by the geographical name referred to by the earlier geographical indication.’

79      It is clear from the foregoing that OHIM’s reading of that paragraph is clearly incomplete in so far as it argues that the General Court merely found that the perceptible difference was insufficient to outweigh the resemblance between the earlier geographical indication and the disputed mark.

80      Consequently, that complaint by OHIM cannot be accepted.

81      Third, as regards the argument concerning the inapplicability of the bilateral treaties referred to by the General Court in paragraph 58 of the judgment under appeal, it must be pointed out that Castel Frères merely reproduces an argument that has already been submitted during the proceedings at first instance and does not otherwise criticise paragraph 59 of the judgment under appeal, where the General Court decided that the inapplicability of those treaties might be relevant for the purpose of establishing the scope of the legal protection relating to the earlier geographical indication, but is not relevant when, as is the case here, what is at issue is establishing that the relevant public is familiar with the wine-producing municipality of Castell and the degree of that familiarity.

82      The second ground of appeal, in so far as it is based on that argument, is manifestly inadmissible. It follows from Article 256 TFEU and the first paragraph of Article 58 of the Statute of the Court and also from Articles 168(1)(d) and 169(2) of the Rules of Procedure that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, inter alia, the judgments in Bergadem and Goupil v Commission, C-352/98 P, EU:C:2000:361, paragraph 34 and Poland v Commission, C-335/09 P, EU:C:2012:385, paragraph 25, and the order in Greinwald v Wessang, C-608/12 P, EU:C:2014:394, paragraph 31). Where an appeal merely repeats or reproduces verbatim the pleas in law and arguments submitted to the General Court, including those based on facts expressly rejected by the General Court, it fails to satisfy the requirement to state reasons under those provisions (see, inter alia, Interporc v Commission, C-41/00 P, EU:C:2003:125, paragraph 16). Such an appeal amounts in reality to no more than a request for re-examination of the application submitted to the General Court, which the Court of Justice does not have jurisdiction to undertake (see, inter alia, judgments in Bergaderm and Goupil v Commission, C-352/98 P, EU:C:2000:361, paragraph 35, and Reynolds Tobacco and Others v Commission, C-131/03 P, EU:C:2006:541, paragraph 50).

83      Finally, the argument based on the relationship of Article 7(1)(c) of Regulation No 40/94 to the specific provisions of Article 7(1)(j) of that regulation must be examined.

84      In that regard, it must be observed that the aim of Article 7(1)(j) of Regulation No 40/94 is to prevent the registration of trade marks for wines which contain or consist of a geographical indication identifying wines when the wines do not have that origin.

85      Since it is undisputed that the term ‘castel’, by itself, does not designate the origin or geographical indication of a wine, the General Court cannot be criticised for failing to apply the specific provisions of Article 7(1)(j) of Regulation No 40/94. That argument cannot therefore be accepted.

86      It follows from the foregoing that the second ground of appeal must be rejected as being in part manifestly inadmissible and in part manifestly unfounded.

87      This appeal must therefore be dismissed in its entirety.

 Costs

88      Under Article 138(1) of the Rules of Procedure, which applies to appeal proceedings pursuant to Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As Fürstlich Castell applied for costs against Castel Frères, and the latter has been unsuccessful, Castel Frères must be ordered to pay the costs.

On those grounds, the Court (Sixth Chamber) hereby orders:

1.      The appeal is dismissed.

2.      Castel Frères SAS shall pay the costs.

[Signatures]

* Language of the case: English.



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