Appeal brought on 22 August 2012 by Fruit of the Loom, Inc. against the judgment of the General Court (Fifth Chamber) delivered on 21 June 2012 in Case T-514/10: Fruit of the Loom, Inc. v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-392/12 P)

2012/C 355/14

Language of the case: English

Parties

Appellant: Fruit of the Loom, Inc. (represented by: S. Malynicz, Barrister, V. Marsland, Solicitor)

Other party to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Form of order sought

The appellant seeks the following Order:

Pleas in law and main arguments

The General Court failed to appreciate that under Article 15(l)(a) CTMR (1) there were in effect three stages to the inquiry. First, it is necessary to consider the distinctive character of the mark as registered. Secondly it is necessary to consider the distinctive character of the marks as used. Thirdly it is necessary to consider whether the distinctive character of the mark as registered is altered. Had the General Court properly applied this approach to the evidence it would have realised that the evidence of use satisfied Article 15(1)(a) CTMR.

The General Court imposed an erroneous rule of interpretation of Community trade marks whereby if consumers within a Member State do not understand a word element of a trade mark (either because it is an obscure word in another Community Language or because it is not similar to a word in their own language) that element is nonetheless to be regarded as being of equal distinctiveness to a word element that they do understand and which is itself distinctive.

The General Court failed to consider or apply by analogy the Court's case law concerning use in the context of acquired distinctive character under Article 7 CTMR which is to the effect that the distinctive character of a mark may be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade nark in accordance with Case C-353/03 Société des Produits Nestlé S.A. v Mars UK Limited [2005] ECR I-06135.

The General Court distorted the facts concerning the appellant's use of the word FRUIT in its informal dealings with customers. Contrary to the General Court's finding, such use was not purely internal and did amount to genuine use of the mark.

The General Court distorted the facts concerning the appellant's use of the mark FRUIT as part of its website at www.fruit.com. Contrary to the General Court's finding, such use was in order to promote goods and was genuine.

(1)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark

OJ L 78, p. 1