Judgment — ECLI:EU:T:2015:215
Date: 2015-04-21
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: France

Summary — Judgment of the General Court (Second Chamber), 21 April 2015 1. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Three-dimensional trade marks consisting of the shape of the product itself — Distinctive character — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b)) 2. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Figurative mark consisting of the two-dimensional representation of a product — Distinctive character — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b)) 3. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(d) of Regulation No 207/2009 — Exception — Distinctive character acquired through use — Figurative mark representing a brown and beige chequerboard pattern (Council Regulation No 207/2009, Arts 7(1)(d), and 52) 4. Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — OHIM’s previous decision-making practice — Principle of legality 5. Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Invalidity proceedings concerning absolute grounds for refusal — Examination restricted to the submissions of the parties (Council Regulation No 207/2009, Arts 7(1), 52, 55, 57(1), and 76(1)) 6. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) to (d) of Regulation No 207/2009 — Exception — Distinctive character acquired through use — Conditions (Council Regulation No 207/2009, Arts 7(1)(b) to (d), and (3), 52(2), and 165(1) and (4)) 7. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Distinctive character acquired through use — Trade mark devoid of distinctive character throughout the European Union (Council Regulation No 207/2009, Arts 1(1), and 7(3)) 1. The criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. However, when those criteria are applied, account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. 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 when there is no graphic or word element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark. Furthermore, 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 product 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 that regulation. (see paras 20-23) 2. The case-law on the criteria for assessing the distinctiveness of three-dimensional trade marks consisting of the appearance of the product itself also applies where the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers. That is also the case for a figurative mark consisting of a part of the shape of the product that it represents, inasmuch as the relevant public will immediately and without further thought perceive it as a representation of a particularly interesting or attractive detail of the product in question, rather than as an indication of its commercial origin. (see paras 24, 25) 3. See the text of the decision. (see paras 35-45, 104, 120) 4. See the text of the decision. (see paras 47-51) 5. See the text of the decision. (see paras 58-62) 6. Article 7(3) of Regulation No 207/2009 provides that the absolute ground for refusal set out in Article 7(1)(b) of that regulation does not preclude the registration of a trade mark if it has become distinctive in relation to the goods for which registration has been requested in consequence of the use which has been made of it. Similarly, Article 52(2) of Regulation No 207/2009 provides, inter alia, that, where the Community trade mark has been registered in breach of Article 7(1)(b), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. Under Article 165(1) and (4) of Regulation No 207/2009, evidence of distinctive character acquired through use must be produced only for the States that were members of the European Union at the time of filing the application for registration of the contested mark. A sign devoid of inherent distinctive character which, in consequence of the use made of it prior to the filing of the application for its registration as a Community trade mark, has acquired distinctive character for the goods or services referred to in the application for registration is accepted for registration under Article 7(3) of Regulation No 207/2009, given that it is not a mark ‘registered contrary to the provisions of Article 7’. Article 52(2) of Regulation No 207/2009 is therefore wholly irrelevant to that situation. The latter provision covers, rather, marks whose registration was contrary to the grounds for refusal in Article 7(1)(b) to (d) of Regulation No 207/2009 and which, in the absence of such a provision, would have had to be declared invalid pursuant to Article 52(1) of Regulation No 207/2009. The precise purpose of Article 52(2) of Regulation No 207/2009 is to maintain the registration of such of those marks which, because of the use that has been made of them, have in the meantime — that is to say, after their registration — acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7 of Regulation No 207/2009. (see paras 79-82) 7. In accordance with Article 1(2) of Regulation No 207/2009, the Community trade mark has ‘a unitary character’, which implies that ‘[i]t shall have equal effect throughout the Community’. It follows from the unitary character of the Community trade mark that, in order to be accepted for registration, a sign must have distinctive character throughout the European Union. Thus, under Article 7(2) of Regulation No 207/2009, a mark is not to be registered if it lacks distinctive character in a part of the Union. Article 7(3) of Regulation No 207/2009, which permits registration of signs that have acquired distinctive character through use, must be read in the light of those requirements. Consequently, it is necessary to establish the acquisition of distinctive character through use in all the territory in which the mark did not, ab initio, have such character. It necessarily follows from the foregoing that, when a contested mark is devoid of any distinctive character in the European Union as a whole, the acquisition of distinctive character by that mark must be established in relation to each of the Member States. Admittedly, the Court has held that even though it is the case that the acquisition by a mark of distinctive character through use must be established for the part of the European Union in which that mark did not, ab initio, have such character, it would be unreasonable to require proof of such acquisition for each individual Member State. Nevertheless, it must be stated that, by referring to the case-law holding that a mark could be registered only if it was established that it had acquired, through the use which had been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character, which had to be the European Union as a whole, the Court did not depart from its case-law. (see paras 84, 85, 91-93)