CELEX: 62013TJ0547
Community trade mark
Application for a three-dimensional Community trade mark
Shape of a games box
Absolute ground for refusal
No distinctive character
Article 7(1)(b) of Regulation (EC) No 207/2009
Obligation to state reasons
Right to be heard
Article 75 of Regulation No 207/2009

Background to the proceedings
On 11 September 2012 the applicant, Rosian Express SRL, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (
OJ 2009 L 78, p. 1
).
The trade mark for which registration was sought is the following three- dimensional sign:
The goods in respect of which registration was applied for are in Classes 28 and 35 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:
—
Class 28: ‘Games, toys; gymnastic and sporting articles not found in other classes; decorations for Christmas trees’;
—
Class 35: ‘Advertising; business management; business administration; clerical services’.
On 1 February 2013 the examiner rejected the application for registration for ‘games and toys’ in Class 28 on the basis of Article 7(1)(b) and (2) of Regulation No 207/2009.
On 28 March 2013 the applicant lodged an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.
By decision of 11 July 2013 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal on the basis that, in relation to the products at issue, the three dimensional sign, the registration of which had been requested as a Community trade mark, was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
Forms of order sought by the parties
The applicant claims that the Court should:
—
annul the contested decision and order the registration of the mark applied for in respect of all the goods and services applied for;
—
order OHIM to pay the costs.
OHIM contends that the Court should:
—
dismiss the action;
—
order the applicant to pay the costs.
Law
The applicant puts forward two pleas in law, the first alleging infringement of Article 7(1)(b) of Regulation No 207/2009 and the second, raised at the time of the reply, alleging infringement of the obligation to give reasons and the right to be heard in terms of Article 75 of that regulation.
The Court considers it appropriate to deal first with the second plea in law alleging infringement of Article 75 of Regulation No 207/2009.
The second plea in law, alleging infringement of Article 75 of Regulation No 207/2009
In the first place, the applicant claims that the Board of Appeal infringed its obligation to give reasons. It relies in that respect on two arguments. First, the contested decision contains no explanation in relation to which shapes the contested mark was compared in order to determine that that mark has no distinctive character. Secondly, that decision also does not clarify the relevant public in relation to which the distinctive character of the mark applied for was assessed.
In the second place, the applicant alleges in essence that the Board of Appeal infringed its right to be heard. It argues that the Board of Appeal based its decision on information found on websites although that content had changed, or could have changed, since the examination by the examiner or by the Board of Appeal.
It should be noted at the outset that the plea in law alleging infringement of Article 75 of Regulation No 207/2009 was raised by the applicant only at the reply stage in the pleadings. However, it should be noted that in accordance with the case-law the absence of reasons or the inadequacy of the reasons is a matter of public policy which must be raised by the EU judicature of its own motion (judgments of2 April 1998 in
Commission
v
Sytraval and Brink’s France
, C‑367/95 P, ECR,
EU:C:1998:154
, paragraph 67, and of 12 March 2014 in
Tubes Radiatori
v
OHIM
—
Antrax It (Radiateur)
, T‑315/12,
EU:T:2014:115
, paragraph 96). Consideration of such a plea may therefore take place at any stage in the proceedings (judgment of 20 February 1997 in
Commission
v
Daffix
, C‑166/95 P, ECR,
EU:C:1997:73
, paragraph 25).
According to Article 75 of Regulation No 207/2009, OHIM decisions must state the reasons on which they are based and may be based only on reasons on which the parties concerned have had an opportunity to present their comments.
The duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (judgments of 19 May 2010 in
Zeta Europe
v
OHIM
(
Superleggera
), T‑464/08,
EU:T:2010:212
, paragraph 47, and of 21 May 2014 in
Eni
v
OHIM
—
Emi (IP) (ENI)
, T‑599/11,
EU:T:2014:269
, paragraph 29).
It is apparent from paragraph 12 of the contested decision that the Board of Appeal relied in particular on the norms or customs of the sector concerned, in this case that of board games and toys, in order to determine if the mark applied for was distinctive within the meaning of Article 7(1)(b) of Regulation No 207/2009. It is also evident from that paragraph that the presentation of the game and its packaging in wood are common shapes and materials in that sector.
At paragraph 13 of the contested decision, the Board of Appeal notes that it may rely on well-known facts to determine the distinctive character of a trade mark that is applied for.
At paragraph 14 of the contested decision, in using the expression ‘in any event’, the Board of Appeal refers indirectly to the websites selling identical goods stating that ‘ the applicant itself admits that research on the internet reveals two products with an identical shape to that in respect of which the application has been lodged’.
It must, therefore, be held that it is apparent from the contested decision that the Board of Appeal took the view, relying on well-known facts, that the wooden packaging and the form of the mark applied for were commonplace in the sector concerned and, accordingly, that the mark applied for was not distinctive. Consequently, the decision is reasoned in such a way that the applicant is aware of the reasons for it and the Court may exercise its power of review in that respect.
Concerning the alleged absence of definition of the relevant public and its level of attention, it should be observed that, in accordance with settled case-law, the obligation to state reasons is an essential procedural requirement and distinct from the question of whether the reasons given are correct. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (judgments of 17 May 2011 in
Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia
’ v
OHIM (υγεία)
, T‑7/10,
EU:T:2011:221
, paragraph 59, and of 12 September 2012 in
Duscholux Ibérica
v
OHIM — Duschprodukter i Skandinavien (duschy)
, T‑295/11,
EU:T:2012:420
, paragraph 41).
It is clear that the relevant public and its level of attention was indeed defined at paragraph 11 of the contested decision (see paragraph 42 of this judgment) and that the applicant itself acknowledged during the hearing that it challenged the validity of that definition.
It follows that, without prejudice to the examination of its validity which will be carried out under the plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009, the contested decision is sufficiently reasoned in relation to the relevant public and its level of attention.
In the light of the above it should be held, contrary to what the applicant claims, that Article 75 of Regulation No 207/2009, pursuant to which the decisions of OHIM must state the reasons on which they are based, has not been infringed.
The second sentence of Article 75 of Regulation No 207/2009 enshrines, in the context of the law on Community trade marks, the general principle of protection of the rights of the defence, which includes the right to be heard. According to that general principle of EU law, persons whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make their point of view known (judgment of 7 February 2007 in
Kustom Musical Amplification
v
OHIM
(
Shape of a guitar
), T‑317/05, ECR,
EU:T:2007:39
, paragraph 26).
In accordance with that provision, a Board of Appeal of OHIM may base its decision only on matters of fact or of law on which the parties have been able to set out their views. Consequently, in the case in which the Board of Appeal assembles of its own motion facts intended to serve as a basis for its decision, it is under an obligation to notify the parties of those facts in order that the parties may submit their views thereon (judgment of 21 October 2004 in
KWS Saat
v
OHIM
, C‑447/02 P, ECR,
EU:C:2004:649
, paragraphs 42 and 43).
In that regard it is clear, as is apparent from paragraphs 16 to 19 above, that the contested decision is not based on the content of the websites in question but on well-known facts. Therefore, the allegation based on breach of the right to be heard should be rejected.
Furthermore, it is apparent from the decision of the examiner that pictures of goods considered to be identical to the mark applied for, from the websites in question, were included in that decision. It should therefore be held that, even if the contested decision was based on a comparison between the contested mark and goods found on the internet sites in question and that the content of those sites had changed in the meantime, the applicant had the opportunity to present observations on the images concerned in so far as they were reproduced in the decision of the examiner. The Board of Appeal, moreover, was right to point out at paragraph 13 of the contested decision that the applicant itself acknowledged the existence of identical products on the market. It is apparent from the documents before the Court and the applicant’s submissions before the Court that it made observations as to the content found on the internet sites in question, maintaining that those sites were known for selling counterfeit goods. The applicant was, therefore, perfectly able to present its observations on the content of those sites which, moreover, it did.
In the light of the foregoing it should be held, contrary to what is claimed by the applicant, that Article 75 of Regulation No 207/2009 has not been infringed.
The infringement of Article 7(1)(b) of Regulation No 207/2009
The applicant complains that the Board of Appeal did not take into account the fact that parlour games, such as the game of rummy, are not everyday consumer goods but durable goods for long-term use and that, at the time of purchase of those products, the relevant public must be considered to have a high level of attention.
Concerning the distinctive character of the mark applied for, the applicant disputes the reasoning of the Board of Appeal that average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element. It maintains that it in no way follows from Regulation No 207/2009 that three-dimensional marks must be treated differently from other types of marks and that if that approach were followed it would be necessary to refuse all registration of three-dimensional marks.
To support the argument that the mark applied for bears a distinctive character the applicant relies on previous decisions of OHIM which, according to it, show that three-dimensional marks similar to the mark applied for have been registered for goods in Class 28 and that the Board of Appeal should have taken those decisions into account. It also maintains, contrary to what the Board of Appeal held at paragraph 12 of the contested decision, namely that the mark applied for was a simple variation of a type of presentation and packaging which is perfectly normal for the goods at issue, that the mark applied for differs significantly from the norms and customs of the games sector. It alleges in that respect that the Board of Appeal failed to explain what it understood by ‘basic shapes’ and that in any event ‘basic shapes’ do not exist for games of rummy but that instead there are a large number of ways of presenting and assembling that type of game. Consequently, it submits that the Board of Appeal should have paid particular attention to the way in which the different elements of the game of rummy are, in the present case, made and assembled.
The applicant also complains that the Board of Appeal did not support the finding at paragraph 12 of the contested decision, according to which ‘it is normal practice that parlour games and toys (for example the toy-version of the game of rummy for children) are packaged and sold in packaging made of different types of material including wooden boxes’ and according to which ‘packaging and presentation of that type are common for the games claimed and will not be confused by the relevant public with anything other than a game and its packaging’, with evidence. The Board of Appeal did not, therefore, take into consideration all the relevant factors in the present case and, in particular, the situation on the market which shows that the shape of the mark applied for differs significantly from other shapes on the market.
According to the applicant the goods at issue, in particular the game of rummy, do not require a particular form of packaging. The Board of Appeal, therefore, erred in concluding that the shape of the mark applied for was due to the nature of the product at issue.
Lastly, the Board of Appeal is criticised for having compared the mark applied for with identical goods marketed on the internet in order to conclude that there were similar shapes on the market although the latter were counterfeit. To support those allegations the applicant presented, for the first time before the Court, as an annex to the reply, articles from well-known specialised publications which draw attention to counterfeits on the websites to which the examiner and the Board of Appeal made reference.
It should first be recalled that under Article 7(1)(b) of Regulation No 207/2009 ‘trade marks which are devoid of any distinctive character’ are not to be registered.
The distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation No 207/2009, means that that mark must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 9 December 2010 in
Wilo
v
OHIM (Faceted casing of an electric motor and representation of green facets)
, T‑253/09, and T‑254/09,
EU:T:2010:507
, paragraph 17 and the case-law cited).
That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect (see judgment in
Faceted casing of an electric motor and representation of green facets
, cited in paragraph 36 above,
EU:T:2010:507
, paragraph 18 and the case-law cited).
In accordance with settled case-law, the criteria for assessing the distinctive character of marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see judgment in
Faceted casing of an electric motor and representation of green facets
, cited in paragraph 36 above,
EU:T:2010:507
, paragraph 19 and the case-law cited).
However, when those criteria are applied, the perception of the relevant public is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the goods themselves as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the goods which it designates. Average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape, or the shape of their packaging, in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see judgment in
Faceted casing of an electric motor and representation of green facets
, cited in paragraph 36 above,
EU:T:2010:507
, paragraph 20 and the case-law cited).
Furthermore, in accordance with the case-law, the more closely the shape in respect of which registration as a trade mark is applied for resembles the shape most likely to be taken by the goods in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. In those circumstances only a mark which departs significantly from the norm or customs of the sector, and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 (see judgment in
Faceted casing of an electric motor and representation of green facets
, cited in paragraph 36 above,
EU:T:2010:507
, paragraph 21 and the case-law cited).
It is in the light of those principles that the contested decision must be examined.
In relation to the relevant public, the Board of Appeal was right to find that the relevant public consisted of average, reasonably well-informed and reasonably observant and circumspect consumers and that, having regard to the nature and the price of the goods at issue, the degree of knowledge of the relevant public could vary from average to high (paragraph 11 of the contested decision). The goods at issue, having regard to their description, fall within the category of games and toys. They are intended for general consumption and not only for professionals or enthusiasts since anyone is likely, at some time or another, to acquire such goods either regularly or occasionally. (see, to that effect, judgment of 24 March 2011 in
Cybergun
v
OHIM — Umarex Sportwaffen (AK 47)
, T‑419/09,
EU:T:2011:121
, paragraph 37 and the case-law cited). The applicant’s arguments that the Board of Appeal should have held that the relevant public had only a high level of attention were, therefore, incorrect.
Moreover, the argument maintaining that the Board of Appeal erred, in so far as it did not provide any evidence showing what was the relevant public and its level of attention, must also be rejected. OHIM cannot be required to carry out an economic analysis of the market, let alone a consumer survey, to establish to what extent consumers pay attention to the get-up of a particular category of products. (judgment of 5 March 2003 in
Unilever
v
OHIM (Ovoid tablet)
, T‑194/01, ECR,
EU:T:2003:53
, paragraph 48).
Concerning the distinctive character of the mark applied for it is first necessary to go back to the applicant’s description, in accordance with which the mark applied for is a rectangular wooden box made with a system of sliding racks for storing the pieces and a closing mechanism for those racks at both ends of the box. Accordingly, the mark applied for has a sliding mechanism which allows the four game racks to be incorporated within the box and also the game pieces, and the supports for the racks are included between the four racks which form the supporting walls of the box which has two small plates, attached by screws, acting as a closing mechanism without there being a need for further packaging. Each lateral wall has, on the inside, two carved slots which allow the two pairs of racks to slide. The small plates for closing the box are rectangular in shape with rounded ends and bevelled edges, fixed to the frame by a screw.
Having regard to that description, the Board of Appeal was fully entitled to find, at paragraph 12 of the contested decision, that the mark applied for ‘does not depart significantly from the norms or customs of the sector’ and that ‘it is common for parlour games and toys (for example the toy version of the game rummy for children) to be packaged and sold in packaging made from different types of material including wooden boxes’.
It is common knowledge that the goods at issue are often presented in a rectangular wooden box. Similarly, the way of unfolding and assembling the box the shape of which constitutes the mark in question, namely by a system of sliding racks allowing the game to be put away or to be assembled, does not depart significantly from the norms or customs of the sector. It is well-known that similar sliding systems exist to enable the goods at issue to be put away and to be assembled. Seen as a whole the different characteristics of the mark applied for, as described at paragraph 44 above, likewise do not enable the mark applied for to be considered as differing significantly from the norms and customs of the sector. Consequently, it must be held that the mark applied for is not distinctive allowing the relevant public to identify the goods at issue as originating from a specific undertaking and, therefore, to distinguish those goods from those coming from other undertakings.
As regards the claim that the Board of Appeal, when assessing the distinctiveness of the mark applied for, failed to define the expression ‘basic shapes’ and to substantiate its conclusions in that regard with evidence, it should be recalled that, in accordance with Article 76(1) of Regulation No 207/2009, OHIM is required to examine of its own motion the relevant facts which may lead it to apply an absolute ground of refusal pursuant to Article 7(1) of that regulation. It follows that OHIM may be led to base its decisions on facts which have not been raised by the applicant for the mark (see, to that effect, judgments of 19 April 2007 in
OHIM
v
Celltech
C‑273/05 P, ECR,
EU:C:2007:224
, paragraph 38 and the case-law cited, and of 14 July 2014 in
BSH
v
OHIM (Wash & Coffee)
, T‑5/12,
EU:T:2014:647
, paragraph 46).
If, in principle, it is for OHIM to establish in its decisions the accuracy of such facts, that is not the case in relation to well-known facts (see judgments in
OHIM
v
Celltech
, cited in paragraph 47 above,
EU:C:2007:224
, paragraph 39 and the case-law cited, and
Wash & Coffee
, cited in paragraph 47 above,
EU:T:2014:647
, paragraph 47). Therefore, nothing prevents OHIM from taking well-known facts into consideration in its assessment (see judgment of 25 March 2014 in
Deutsche Bank
v
OHIM
(
Passion to Perform
), T‑291/12,
EU:T:2014:155
, paragraph 51 and the case-law cited). It follows that in the present case the Board of Appeal could lawfully find that the mark applied for had no distinctive character relying on well-known facts arising from practical experience generally acquired from the marketing of general consumer goods without it being necessary to provide specific examples (see, to that effect, judgment of 10 November 2004 in
Storck
v
OHIM (Shape of a sweet wrapper)
, T‑402/02, ECR,
EU:T:2004:330
, paragraph 58). Moreover, it should be noted that it is clear from paragraph 12 of the contested decision that the Board of Appeal did not base the assessment of the mark applied for on a comparison between it and ‘basic shapes’ but with regard to the norms and customs of the sector, relying on the case-law that it cited at paragraph 9 of the contested decision. It is true that the Board of Appeal mentioned, at paragraph 10 of the contested decision, ‘the basic shapes of the goods at issue’. However, that mention was simply part of a reference to the principles identified in the case-law to be taken into account in assessing the distinctiveness of three-dimensional marks. The Board of Appeal did not refer to them in the assessment of the distinctive character of the mark applied for.
In relation to the evidence supplied by the applicant with the purpose of showing that similar shapes to the mark applied for do not exist, it must be recalled that the lack of distinctive character of a mark is not affected by how many similar shapes are already on the market (judgments of 29 April 2004 in
Henkel
v
OHIM
, C‑456/01 P and C‑457/01 P, ECR,
EU:C:2004:258
, paragraph 62, and of 23 May 2007 in
Procter & Gamble
v
OHIM
(
Square white tablet with coloured floral design
), T‑241/05, T‑262/05 to T‑264/05, T‑346/05, T‑347/05 and T‑29/06 to T‑31/06, ECR,
EU:T:2007:151
, paragraph 81), nor by the absence on the market of shapes identical to those in respect of which registration is requested (see, to that effect, judgment of 31 May 2006 in
De Waele
v
OHIM (Shape of a sausage)
, T‑15/05, ECR,
EU:T:2006:142
, point 40).
In that regard it should be noted that the average consumer, who does not make a study of the market, will not know in advance that only one undertaking markets a given product in a certain type of packaging whilst its competitors use other types of packaging for that product (judgment of 12 January 2006 in
Deutsche SiSi-Werke
v
OHIM
, C‑173/04 P, ECR,
EU:C:2006:20
, paragraph 34).
It also follows that, without it being necessary to give a ruling on the admissibility of the evidence presented in that respect, the claims of the applicant that the Board of Appeal erred in making reference to other goods on the market, although the latter were counterfeit, is irrelevant.
As to the argument that OHIM had allowed the registration of three-dimensional marks similar to the mark applied for in respect of goods in Class 28, it must be noted that OHIM is under a duty to exercise its powers in accordance with the general principles of EU law. In the light of the principles of equal treatment and of sound administration, OHIM must take into consideration the decisions taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. The way in which those principles are applied must, however, be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act that was to the advantage of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must therefore be undertaken in each individual case. The registration of a sign as a trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 14 January 2015 in
Melt Water
v
OHIM
(
Shape of a transparent cylindrical bottle
), T‑70/14,
EU:T:2015:9
, paragraph 39 and the case-law cited).
In the present case the Board of Appeal held, on the basis of a comprehensive examination and taking into account the perception of the relevant public, that the mark applied for was devoid of distinctive character. As is apparent from paragraphs 42 to 51 above, that finding is in itself sufficient for it to be held that the registration of the three-dimensional sign at issue as a Community trade mark, in relation to the goods concerned, would be incompatible with the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009.
Consequently, since the legality of the contested decision regarding the non-registrability of the mark applied for as a Community trade mark in respect of the goods concerned can be established directly on the basis of Article 7(1)(b) of Regulation No 207/2009, it is apparent from the case-law cited in paragraph 52 above that the contested decision cannot be called into question merely because the Board of Appeal did not, in the present case, follow OHIM’s decision-making practice.
Consequently, the Board of Appeal was correct to hold that the mark applied for was devoid of distinctive character for all of the goods concerned, within the meaning of Article 7(1)(b) of Regulation No 207/2009.
Therefore, the first plea in law must be rejected and, without it being necessary to rule on the head of claim in which the applicant requests the Court to order the registration of the mark for all the goods and services applied for, the application in its entirety must be dismissed.
Costs
Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:

1.
Dismisses the action;

2.
Orders Rosian Express SRL to pay the costs.

Gratsias
Kancheva
Wetter
Delivered in open court in Luxembourg on 8 October 2015.
[Signatures]
(
*1
)	Language of the case: Romanian.