Judgment — ECLI:EU:T:2016:675
Date: 2016-11-24
Language of the case: English
Court formation: Eighth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Germany

JUDGMENT OF THE GENERAL COURT (Eighth Chamber) 24 November 2016 (*) (EU trade mark — International registration designating the European Union — Figurative mark representing black lines and bricks — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009) In Case T‑614/15, Azur Space Solar Power GmbH, established in Heilbronn (Germany), represented by J. Nicodemus and S. Stöcker, lawyers, applicant, v European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent, defendant, ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 2 September 2015 (Case R 3233/2014-4), concerning the international registration designating the European Union of a figurative mark representing black lines and bricks, THE GENERAL COURT (Eighth Chamber), composed of D. Gratsias, President, A.M. Collins and N. Półtorak (Rapporteur), Judges, Registrar: I. Dragan, Administrator, having regard to the application lodged at the Court Registry on 29 October 2015, having regard to the response lodged at the Court Registry on 11 January 2016, further to the hearing on 19 July 2016, gives the following Judgment Background to the dispute 1 On 11 March 2014, the applicant, Azur Space Solar Power GmbH, designated the European Union in respect of its international registration No 1 201 652, which is reproduced below: 2 The goods in respect of which protection in the European Union was sought are in Class 9 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: ‘Semiconductors, semiconductor devices, semiconductor devices for solar cells and solar modules, solar cells, solar cells made of III-V material, solar cells having a plurality of band gaps; solar cell modules, solar cell modules with an array of solar cells’. 3 On 2 June 2014, the examiner informed the applicant that an absolute ground for refusal of the international registration at issue pursuant to Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) existed in respect of the goods concerned. The applicant replied to those objections. 4 By decision of 8 December 2014, the examiner refused protection of the international registration in the European Union in respect of all the goods covered by the application, pursuant to Article 7(1)(b) of Regulation No 207/2009. 5 On 18 December 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision. 6 By decision of 2 September 2015 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal and confirmed the examiner’s decision. It found, in essence, that the mark applied for would be perceived by the relevant specialist public as a very simple schematic representation of the structure or of an array of solar panels. In the Board of Appeal’s view, the fact that that representation is one mere variant of a wider variety of structural possibilities is irrelevant since it will be perceived as no more than an extremely simplified representation of the structure of the solar panel array itself. The Board of Appeal thus found that the mark applied for was devoid of any distinctive character. Forms of order sought 7 The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. 8 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law 9 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, inasmuch as the Board of Appeal erred in finding that the international registration at issue lacks distinctive character within the meaning of that provision. 10 Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered. 11 For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods in respect of which registration has been applied for as coming from a particular undertaking, and thus to distinguish those goods from those which come from other undertakings (judgments of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 29; of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 34; and of 11 April 2014, Olive Line International v OHIM (OLIVE LINE), T‑209/13, not published, EU:T:2014:216, paragraph 18). 12 The distinctive character of a mark must be assessed, first, by reference to the goods in respect of which registration has been sought and, secondly, by reference to the relevant public’s perception of that mark (judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 25; of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 35; and of 11 April 2014, OLIVE LINE, T‑209/13, not published, EU:T:2014:216, paragraph 19). 13 According to settled case-law, the case-law relating to three-dimensional trade marks consisting of the appearance of the goods themselves also applies where, as in the present case, the mark applied for is a figurative mark, since that mark consists of the two-dimensional representation of those goods. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the goods it covers (judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 29; of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 38; and of 11 April 2014, OLIVE LINE, T‑209/13, not published, EU:T:2014:216, paragraph 23). 14 In that regard, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the goods themselves are no different from those applicable to other categories of trade mark (judgments of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 30, and of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 26). 15 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 or figurative 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 it designates. As average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape in the absence of any graphic or word element, it could prove more difficult to establish distinctiveness in relation to a three-dimensional or figurative mark consisting of the appearance of the goods themselves (see, to that effect, judgments of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 30, and of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 36). 16 In those circumstances, the more closely the shape for which registration is sought 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 (judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 31). 17 Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of identifying origin is not devoid of any distinctive character for the purposes of that provision (judgments of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 31, and of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 28). 18 Therefore, where a three-dimensional mark consists of the shape of the product in respect of which registration is sought, the mere fact that that shape is a variant of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (judgments of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 32, and of 11 April 2014, OLIVE LINE, T‑209/13, not published, EU:T:2014:216, paragraph 22). 19 Furthermore, in the light of the continuity in terms of function which exists between the departments of EUIPO ruling at first instance and the Boards of Appeal, it is necessary, in the present case, to take into consideration the statement of reasons contained in the examiner’s decision, as that decision forms part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to carry out in full its review of legality as regards the merits of the assessment of whether the mark applied for has distinctive character with regard to the goods at issue (see, to that effect, judgments of 21 November 2007, Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, not published, EU:T:2007:352, paragraph 64, and of 25 March 2009, allsafe Jungfalk v OHIM (ALLSAFE), T‑343/07, not published, EU:T:2009:84, paragraph 32). 20 In the present case, the goods in respect of which protection in the European Union was sought are solar modules, which, as the applicant states, are also called solar panels, solar cells, which are components of solar modules, and also the goods comprising the solar cells themselves, which fall within Class 9. The Board of Appeal was therefore right in finding, in paragraph 14 of the contested decision, that the goods concerned in Class 9 were all for solar cells and modules and goods closely related to those goods. The applicant does not dispute the Board of Appeal’s assessment. 21 It must be pointed out, as the Board of Appeal observed in paragraph 10 of the contested decision, that the relevant public consists of professionals in the European Union. The applicant does not, moreover, dispute that definition of the relevant public. 22 The mark applied for consists of six sloping black lines, which are all connected to each other, and of three rectangular black bricks. As the Board of Appeal correctly observed in paragraph 14 of the contested decision, the two pairs of sloping black lines in the centre of the sign appear to depict roofs and each roof ends with a black brick. On each side of the outer two bricks there is a tapering and upward tilting black line, the one on the left pointing left and the one on the right pointing right. Those black lines and bricks are represented on a white background. 23 In paragraph 15 of the contested decision, the Board of Appeal found that the combination of those black lines and bricks would be immediately perceived by the relevant public, consisting of specialists, as a very simple schematic representation of an array of solar panels. 24 The applicant does not dispute that the relevant public might perceive the sign at issue as a very simple schematic representation of an array of solar panels. However, it submits, in essence, that the Board of Appeal erred in finding that a representation of a ‘possible arrangement’ of the goods concerned was sufficient to justify the finding that the mark applied for has no distinctive character, particularly because, as a whole, the sign at issue does not appear as a flat planar shape representing the outward appearance of those goods. It must, however, be pointed out that, even if the outward appearance of solar panels could appear as a flat planar shape, as the applicant suggests, the Board of Appeal’s assessment set out in paragraph 23 above would not be called into question. On account, in particular, of the way in which they are combined and slope, it must be held that the relevant public, which consists of specialists, is likely to perceive the lines at issue as a very simple schematic representation of solar panels and thus perceive the sign at issue as a whole as an array of solar panels. Contrary to what the applicant submits, that is sufficient to hold that the mark applied for has no distinctive character. 25 In that regard, it must be stated, as the Board of Appeal observed in paragraph 16 of the contested decision, that arrays of solar panels traditionally slope at a certain angle and are fixed in such a way as to best catch the sun’s rays as it moves in the sky in the course of the day. Furthermore, as the Board of Appeal correctly observed, arrays of solar panels are often fixed to roofs. 26 Furthermore, it is apparent from the file submitted by EUIPO, and in particular from the research carried out by the examiner on 2 June 2014, that solar panels may for some people have a shape which is similar to that represented by the mark applied for. 27 The Board of Appeal was right in finding, in accordance with the case-law set out in paragraph 18 above, that the fact that the sign at issue represented merely one variant of a wider variety of structural possibilities was irrelevant, since it would be perceived as no more than an extremely simplified representation of a solar panel array. 28 The Board of Appeal was also right in finding that the fact that the two lines on each side of the outer two bricks are tapered does not depart significantly from the normal way of representing solar panels on a sketch by way of a single straight line. In spite of that slight difference, the relevant public, having regard to the sign at issue as a whole, will perceive those tapering lines, in the same way as it will perceive the other lines of which that sign consists, as a very simple schematic representation of solar panels. 29 In that regard, contrary to what the applicant submits, the Board of Appeal correctly assessed the significance which those tapering lines could have. It must be held that the tapering lines in question do not include elements capable of distinguishing them from other representations of lines (see, to that effect, judgment of 13 April 2011, Air France v OHIM (Shape of a parallelogram), T‑159/10, not published, EU:T:2011:176, paragraph 24). That very minimal difference is therefore incapable of attracting the relevant public’s attention. 30 The foregoing findings of the Board of Appeal cannot be altered by the fact relied on by the applicant that the goods are aimed at a specialist public, the level of attention of which is higher than that of the average consumer. That fact cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the level of attention of the relevant specialist public is, by definition, higher than that of the general public, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 48). In any event, in the present case, although the relevant specialist public is more observant than the general public, it is also more circumspect. Consequently, as EUIPO correctly states, the mark applied for is all the more likely to be perceived as a schematic representation of the goods concerned because the relevant public is used to working with those goods and is familiar with that representation. It must be pointed out, as was observed by the examiner, that, in the solar energy sector, to which the goods concerned relate, schematic representations are often used to show the shape, arrangement or structure of a product. 31 Furthermore, as has previously been stated in paragraph 20 above, the goods in Class 9 covered by the mark applied for are all for solar cells and modules and goods closely related to those goods, a finding which the applicant did not dispute. The goods concerned are therefore intended to be components of solar modules. In the present case, the relationship between the solar modules and the mark applied for is sufficient for the lack of distinctive character of that mark to be extended to the goods concerned which are closely related to solar panels (see, by analogy, judgment of 29 November 2012, Hopf v OHIM (Clampflex), T‑171/11, not published, EU:T:2012:636, paragraph 48 and the case-law cited). 32 It follows that the Board of Appeal was right to find that the mark applied for was, for the relevant public, devoid of any distinctive character with regard to all of the goods concerned, in accordance with Article 7(1)(b) of Regulation No 207/2009. 33 The applicant does not put forward any other arguments which are capable of calling into question that finding of the Board of Appeal. 34 In the first place, the applicant’s argument that the mark applied for has been registered in other legal systems such as those of Germany, China, the United States, Japan or Russia must be rejected as out of time since that argument was put forward for the first time at the hearing and was not referred to in either the proceedings before the Board of Appeal or the application before the Court (judgment of 23 April 2013, Apollo Tyres v OHIM — Endurance Technologies (ENDURACE), T‑109/11, not published, EU:T:2013:211, paragraph 42). In any event, it must be borne in mind that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (judgment of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraph 47). Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or in a third country, that the sign in question is registrable as a national mark (judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47, and of 24 June 2014, 1872 Holdings v OHIM — Havana Club International (THE SPIRIT OF CUBA), T‑207/13, not published, EU:T:2014:570, paragraph 32). 35 In the second place, the applicant’s arguments that the ‘appearance of a possible installation of the goods’ is not relevant for the evaluation of distinctiveness and that the decisions cited by the Board of Appeal refer to marks with shapes resembling the goods but do not refer to the ‘shape of a possible installation of the goods’ do not call into question the Board of Appeal’s assessments. 36 Although the decisions in question do not refer to the ‘shape of a possible installation of the goods’, it must be held that, for the reasons set out in paragraphs 22 to 32 above, the mark applied for cannot be dissociated from a schematic representation of an array of solar panels and is therefore indistinguishable from the appearance of the goods. The Board of Appeal was therefore right in applying the case-law relating to two-dimensional trade marks consisting of the appearance of the goods and, consequently, found that the mark applied for was devoid of any distinctive character. 37 It must be borne in mind that, in the context of examination of the existence of absolute grounds for refusal under Article 7(1) of Regulation No 207/2009, the role of EUIPO is to decide, after having assessed, objectively and impartially, the circumstances of the case in question in the light of the applicable rules of that regulation and the interpretation thereof given by the Courts of the European Union, whilst allowing the trade mark applicant to submit its observations and to know the reasons for the decision adopted, whether the application for the trade mark falls under an absolute ground of refusal. That decision follows from a legal assessment which, by its very nature, cannot be subject to an obligation of proof, the merits of that assessment being, moreover, capable of being contested if an action is brought before the Court (judgments of 15 March 2006, Develey v OHIM (Shape of a plastic bottle), T‑129/04, EU:T:2006:84, paragraph 15, and of 29 June 2015, Grupo Bimbo v OHIM (Shape of a Mexican tortilla), T‑618/14, not published, EU:T:2015:440, paragraph 29). 38 It must also be borne in mind that, if an applicant claims that a trade mark applied for is distinctive, despite EUIPO’s analysis, it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has either intrinsic distinctive character or distinctive character acquired through use (judgments of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraphs 49 and 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 62). 39 In the present case, given the technical nature of the goods at issue, the applicant is, in view of its knowledge of the solar energy sector, best placed to provide information relating to that sector and to the goods concerned. However, the fact remains that the applicant did not, before the adjudicating bodies of EUIPO, submit any information capable of establishing that the mark applied for departed from the representations used in the sector concerned and enabled the relevant public to distinguish the goods concerned from those of other undertakings. Furthermore, before the Court, it merely states that ‘the overall impression [of the mark applied for] may be described as a mixture of a zigzag line with rectangular shaped horizontal middle sections, differing from a pure zigzag line or a pure wavelike line’. 40 In the third place, it is necessary to reject the applicant’s argument that the tapered lines and the bricks of which the mark applied for consists are the main characteristics of that mark, with the result that they distinguish it from any representation of triangular-shaped roofs. It must be pointed out that the applicant merely states, without further explanation, that those tapered lines are, with those bricks, the main characteristics of the mark applied for. 41 In the present case, as is apparent from paragraph 29 above, the tapered lines are not, in themselves, capable of attracting the relevant public’s attention. Similarly, the bricks at issue are basic geometrical figures which are very simple and are not, as such, capable of conveying a message which consumers may remember (see, to that effect, judgment of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22). 42 In the fourth place, contrary to what the applicant suggests, the fact that the Board of Appeal accepted a number of meanings or different ideas in respect of the mark applied for is not in the present case a characteristic which is capable of endowing that mark with distinctive character. 43 The fact remains that the Board of Appeal did not regard any of the possible ‘meanings’ or ideas of the mark applied for as distinctive with regard to the goods at issue. It must also be pointed out that the applicant in no way stated which ‘meaning’ would be distinctive in the present case and what the reasons for that distinctiveness would be. In support of that argument, the applicant merely relies on the judgment of 21 January 2010, Audi v OHIM (C‑398/08 P, EU:C:2010:29, paragraph 47). That decision and, in particular, the paragraph relied on concerned the polysemy of a combination of words in a word mark consisting of an advertising slogan and also the fact that that combination could constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered. However, that reasoning is not applicable to the figurative mark in the present case. 44 The applicant relies, in support of that same argument, on a decision of the Bundesgerichtshof (Federal Court of Justice, Germany), regarding the influence of the polysemy of a word mark on its distinctive character, which is not relevant in the case of the figurative mark at issue. It must, in any event, be borne in mind, that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Accordingly, EUIPO and, as the case may be, the Courts of the European Union are not bound by decisions given in the Member States, which are only a factor which may be taken into account solely for the purposes of registering an EU trade mark and are not decisive (judgments of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraph 35, and of 16 July 2014, Langguth Erben v OHIM (Shape of an alcoholic beverage bottle), T‑66/13, not published, EU:T:2014:681, paragraph 63). 45 Moreover, as the Board of Appeal stated in paragraph 13 of the contested decision, and in accordance with the case-law set out in paragraph 14 above, the criteria for assessing the distinctive character of figurative trade marks consisting of the two-dimensional representation of the goods themselves are no different from those applicable to other categories of trade mark. It must therefore be ascertained whether, having regard to its characteristics, the mark applied for permits the average consumer of the goods at issue to distinguish the goods concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (judgment of 11 April 2014, OLIVE LINE, T‑209/13, not published, EU:T:2014:216, paragraph 41). 46 It must be held that the mark applied for, which simply consists of six sloping black lines and three rectangular black bricks, does not have any element which is memorable or capable of endowing it with distinctive character. On account of the overall simplicity of the mark applied for, which overall simplicity the applicant itself, moreover, points out in its application, that mark will not, associated with the goods concerned, make it possible to identify those goods as coming from a particular undertaking and thus to distinguish them from those which come from other undertakings. 47 It is apparent from the information in the case file that the mark applied for is not significantly different from the representations which are likely to be used in respect of the goods covered by the application in the sector concerned, but constitutes a mere variant of those representations. The applicant did not, in that regard, as has been pointed out in paragraph 39 above, submit any information capable of establishing that the mark applied for departed from the norm or customs of the sector. In the present case, it is not apparent that that mark departs significantly from the norm or customs of the sector and thereby fulfils its essential function of identifying origin (judgment of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 31). 48 It follows from all of the foregoing that the action is unfounded and must be dismissed. Costs 49 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 EUIPO. On those grounds, THE GENERAL COURT (Eighth Chamber) hereby: 1. Dismisses the action; 2. Orders Azur Space Solar Power GmbH to pay the costs. Gratsias Collins Półtorak Delivered in open court in Luxembourg on 24 November 2016. E. Coulon D. Gratsias Registrar President * Language of the case: English.