# C_2013344EN.01004001.xml

| 23.11.2013 | EN | Official Journal of the European Union | C 344/40 |
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23.11.2013

EN

Official Journal of the European Union

C 344/40

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Appeal brought on 6 August 2013 by Voss of Norway ASA against the judgment of the General Court (First Chamber) delivered on 28 May 2013 in Case T-178/11: Voss of Norway ASA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Case C-445/13 P)

2013/C 344/70

Language of the case: English

Parties

Parties

Appellant: Voss of Norway ASA (represented by: F. Jacobacci, B La Tella, avvocati)

Appellant:

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

Other party to the proceedings:

Form of order sought

Form of order sought

The appellant claims that the Court should:

| — | annul the judgment of the General Court of 28 May 2013 (T-178/11); |
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annul the judgment of the General Court of 28 May 2013 (T-178/11);

| — | order OHIM to pay the costs. |
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order OHIM to pay the costs.

Pleas in law and main arguments

Pleas in law and main arguments

By its appeal, Voss of Norway ASA (‘Voss’) seeks annulment of the judgment of the General Court of the European Union (‘GC’) of 28 May 2013 in Case T-178/11 (‘ judgment under appeal’), by which the GC dismissed Voss’ application seeking the annulment of the decision of the First board of Appeal (‘BOA’) of the Office for Harmonisation in the Internal market (Trade Marks and Designs) (OHIM) of 12 January 2011 in Case R 785/2010-1 (‘the contested decision’) upholding the request for a declaration of invalidity lodged by Nordic Spirit in respect of the Community trade mark (‘CTM shape mark’), registered by Voss on 3 December 2004.

The appeal is based on the following grounds:

| | First Plea: the judgment under appeal failed to take into account Voss’s second plea to the GC, namely that the burden of proof was reversed before the Board of Appeal


  The GC failed to consider whether the BOA had made an error of law regarding the procedural question of the burden of proof. This plea in law has an independent significance overall for CTM law. This reversed Burden of Proof standard — which contravenes general principles of law — could become part of the body of relevant case-law. For that reason only, the BOA decision should have been annulled and the judgment under appeal set aside. |
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First Plea: the judgment under appeal failed to take into account Voss’s second plea to the GC, namely that the burden of proof was reversed before the Board of Appeal

First Plea: the judgment under appeal failed to take into account Voss’s second plea to the GC, namely that the burden of proof was reversed before the Board of Appeal

The GC failed to consider whether the BOA had made an error of law regarding the procedural question of the burden of proof. This plea in law has an independent significance overall for CTM law. This reversed Burden of Proof standard — which contravenes general principles of law — could become part of the body of relevant case-law. For that reason only, the BOA decision should have been annulled and the judgment under appeal set aside.

| | Second Plea: the GC also erroneously shifted the burden of proof


  The GC also shifted the burden of proof, which rested exclusively on Nordic Spirit AB as the cancellation party contesting the validity of a registered CTM, on to Voss to submit concrete evidence that the Voss shape mark is distinctive. To that effect, the GC quoted case-law regarding trademark applications — and non-registered trademarks — that did not enjoy a presumption of validity, as Voss’s CTM shape mark does. This constitutes a clear violation of the rules ensuring a fair trial, Article 99 CTMR (1) and Rule 37 (b) (iv) CTMIR (2) which, by itself, is sufficient to annul the contested decision. |
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Second Plea: the GC also erroneously shifted the burden of proof

Second Plea: the GC also erroneously shifted the burden of proof

The GC also shifted the burden of proof, which rested exclusively on Nordic Spirit AB as the cancellation party contesting the validity of a registered CTM, on to Voss to submit concrete evidence that the Voss shape mark is distinctive. To that effect, the GC quoted case-law regarding trademark applications — and non-registered trademarks — that did not enjoy a presumption of validity, as Voss’s CTM shape mark does. This constitutes a clear violation of the rules ensuring a fair trial, Article 99 CTMR (1) and Rule 37 (b) (iv) CTMIR (2) which, by itself, is sufficient to annul the contested decision.

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| | Third Plea: the erroneous definition of the norms and customs of the sector which constitutes an infringement of Article 7(1) (b) CTMR


  The GC correctly stated, at para. 45, that it is necessary to ascertain whether the contested CTM departs significantly from the norms and customs of the relevant sector. Thus the analysis of whether a 3D shape mark is distinctive requires first and foremost an examination of the ‘norms of the sector’ in order to then determine whether a particular 3D mark can be distinguished by the consumer from other undertakings.
  However, the identification by the GC of the latter falls far short of a well-grounded definition of the ‘norms’ of the sector for beverages. The indications identified by the GC relating to the norms of the sector are first factually wrong (the reference to an inexistent ‘cylindrical section’) and so vague and general that — if applied — no beverage bottle would ever pass the test for distinctiveness (not even the famous Coca-Cola bottle, if it were the object of a cancellation action). By contrast, the Cancellation Division properly defined the norms of the sector.
  Further, the Board of Appeal in decision R 2465/2011-2 dated 1 February 2012 (Freixenet v. OHIM), held at para. 36 that ‘previously, nor the examiner, nor the Board, presented documents which contained references to the reality of the market existing at the day of application, and
  did not identify nor indicate concrete examples of identical or similar bottles commonly used in the sector before said date. This omission is a sufficient ground to uphold the appeal
  .’ Thus, the General Court, by omitting to indicate concrete examples of the norms of the sector, clearly infringed Article 7 (1) (b) of the CTMR. |
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Third Plea: the erroneous definition of the norms and customs of the sector which constitutes an infringement of Article 7(1) (b) CTMR

Third Plea: the erroneous definition of the norms and customs of the sector which constitutes an infringement of Article 7(1) (b) CTMR

The GC correctly stated, at para. 45, that it is necessary to ascertain whether the contested CTM departs significantly from the norms and customs of the relevant sector. Thus the analysis of whether a 3D shape mark is distinctive requires first and foremost an examination of the ‘norms of the sector’ in order to then determine whether a particular 3D mark can be distinguished by the consumer from other undertakings.

However, the identification by the GC of the latter falls far short of a well-grounded definition of the ‘norms’ of the sector for beverages. The indications identified by the GC relating to the norms of the sector are first factually wrong (the reference to an inexistent ‘cylindrical section’) and so vague and general that — if applied — no beverage bottle would ever pass the test for distinctiveness (not even the famous Coca-Cola bottle, if it were the object of a cancellation action). By contrast, the Cancellation Division properly defined the norms of the sector.

Further, the Board of Appeal in decision R 2465/2011-2 dated 1 February 2012 (Freixenet v. OHIM), held at para. 36 that ‘previously, nor the examiner, nor the Board, presented documents which contained references to the reality of the market existing at the day of application, and
  did not identify nor indicate concrete examples of identical or similar bottles commonly used in the sector before said date. This omission is a sufficient ground to uphold the appeal
  .’ Thus, the General Court, by omitting to indicate concrete examples of the norms of the sector, clearly infringed Article 7 (1) (b) of the CTMR.

did not identify nor indicate concrete examples of identical or similar bottles commonly used in the sector before said date. This omission is a sufficient ground to uphold the appeal

| | Fourth Plea: Error in law regarding the assessment of the distinctive character of the Voss bottle shape trade mark — Infringement of Article 7(1) (b) CTMR


  It emerges from the applicable case law regarding the distinctive character that a trade mark must be considered and assessed as a whole and that the assessment of each of the component pieces merely helps the overall assessment but cannot serve as a substitute for the same. In the judgment under appeal, the GC only evaluated each component individually and did not assess the trade mark as a whole.
  The GC thus erred in law in assessing whether the mark has distinctive character, as it did not consider, as it was required to do, the overall impression given by the mark, but adopted the wrong approach by separating the mark into its component parts, each being found somewhat original. |
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Fourth Plea: Error in law regarding the assessment of the distinctive character of the Voss bottle shape trade mark — Infringement of Article 7(1) (b) CTMR

Fourth Plea: Error in law regarding the assessment of the distinctive character of the Voss bottle shape trade mark — Infringement of Article 7(1) (b) CTMR

It emerges from the applicable case law regarding the distinctive character that a trade mark must be considered and assessed as a whole and that the assessment of each of the component pieces merely helps the overall assessment but cannot serve as a substitute for the same. In the judgment under appeal, the GC only evaluated each component individually and did not assess the trade mark as a whole.

The GC thus erred in law in assessing whether the mark has distinctive character, as it did not consider, as it was required to do, the overall impression given by the mark, but adopted the wrong approach by separating the mark into its component parts, each being found somewhat original.

| | Fifth Plea: Serious distortion of evidence in comparing 3D shape with a two-dimensional section and in identifying the norms and customs of the sector


  Both statements: ‘The vast majority of bottles that can be found on the market have a cylindrical section’ and “bottles come in all sorts of shapes and sizes” were grossly inaccurate and have been nevertheless expressly or impliedly reiterated by the GC in order to dismiss the application for annulment of the BOA decision, thus amounting to a serious distortion of facts or evidence, which constitutes an error of law. |
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Fifth Plea: Serious distortion of evidence in comparing 3D shape with a two-dimensional section and in identifying the norms and customs of the sector

Fifth Plea: Serious distortion of evidence in comparing 3D shape with a two-dimensional section and in identifying the norms and customs of the sector

Both statements: ‘The vast majority of bottles that can be found on the market have a cylindrical section’ and “bottles come in all sorts of shapes and sizes” were grossly inaccurate and have been nevertheless expressly or impliedly reiterated by the GC in order to dismiss the application for annulment of the BOA decision, thus amounting to a serious distortion of facts or evidence, which constitutes an error of law.

| | Sixth Plea: the decision of the General Court essentially impedes registration of 3D CTM’S violation which constitutes a violation of Article 7(1) (b) CTMR in conjunction with Article 4 CTMR


  The result of the reasoning set out by the General Court is that it is essentially impossible for a product package to be distinctive both as a whole and as a combination of separate components at the same time. On a practical level, the result is that no product packaging can ever pass the test of distinctiveness as established by judgment under appeal and defeats the purpose of the CTMR. |
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Sixth Plea: the decision of the General Court essentially impedes registration of 3D CTM’S violation which constitutes a violation of Article 7(1) (b) CTMR in conjunction with Article 4 CTMR

Sixth Plea: the decision of the General Court essentially impedes registration of 3D CTM’S violation which constitutes a violation of Article 7(1) (b) CTMR in conjunction with Article 4 CTMR

The result of the reasoning set out by the General Court is that it is essentially impossible for a product package to be distinctive both as a whole and as a combination of separate components at the same time. On a practical level, the result is that no product packaging can ever pass the test of distinctiveness as established by judgment under appeal and defeats the purpose of the CTMR.

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(1)  Community Trade Mark Regulation — Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark OJ L 11, p. 1, replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark

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OJ L 78, p. 1

(2)  Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation 40/94 on the Community trade mark

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OJ L 303, p. 1

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