Judgment — ECLI:EU:T:2016:284
Date: 2016-05-10
Language of the case: English
Court formation: First Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Germany

JUDGMENT OF THE GENERAL COURT (First Chamber) 10 May 2016 (*) (EU trade mark — International registration designating the European Union — Figurative mark representing white and blue square-shaped packaging — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009) In Case T‑806/14, August Storck KG, established in Berlin (Germany), represented by P. Goldenbaum, I. Rohr, T. Melchert and A.-C. Richter, lawyers, applicant, v European Union Intellectual Property Office (EUIPO), represented by V. Melgar and H. Kunz, acting as Agents, defendant, ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 8 September 2014 (Case R 644/2014-5), concerning the international registration designating the European Union of a figurative mark representing white and blue square-shaped packaging, THE GENERAL COURT (First Chamber), composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges, Registrar: E. Coulon, having regard to the application lodged at the Court Registry on 3 December 2014, having regard to the response of EUIPO lodged at the Court Registry on 25 February 2015, having regard to the reply lodged at the Court Registry on 8 May 2015, having regard to the fact that no application for a hearing was submitted by the parties within the period of one month of notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991, to give a ruling without an oral procedure, gives the following Judgment Background to the case 1 On 1 August 2013 the applicant, August Storck KG, filed an application for international registration designating the European Union with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). 2 Registration as a trade mark was sought for the following figurative sign: 3 The goods in respect of which registration was sought are in Class 30 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: ‘Confectionery, chocolate, chocolate products, pastries, ice-creams, preparations for making the aforementioned products, included in this class’. 4 On 14 August 2013 the examiner issued the applicant with an ex officio provisional total refusal of protection of the mark applied for in the European Union. 5 The ground given for that refusal was the absence of a distinctive character of the mark applied for in relation to the goods concerned within the meaning of Article 7(1)(b) of Regulation No 207/2009. 6 By decision of 13 January 2014, after the applicant had responded to the objections set out in the notification of provisional refusal, the Examination Division upheld, on the same ground as that previously given, the total refusal of protection of the mark applied for in the European Union. 7 On 3 March 2014 the applicant filed a notice of appeal with EUIPO against that decision pursuant to Articles 58 to 60 of Regulation No 207/2009. 8 By decision of 8 September 2014 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal on the ground that the mark applied for was devoid of any distinctive character in relation to the goods concerned within the meaning of Article 7(1)(b) of Regulation No 207/2009. First, the Board of Appeal upheld the Examination Decision’s finding that, on the one hand, the relevant public was the average EU consumer with a low level of attentiveness, and, on the other hand, the mark applied for consisted merely of a combination of presentational features that are typical of the packaging of the goods concerned. Furthermore, the applicant did not demonstrate that the colours or other decorative patterns included in the mark applied for would indicate the origin of the goods concerned. Second, the Board of Appeal observed that the applicant’s reference to the importance of colour-codes used by other manufacturers was irrelevant. Third, the Board of Appeal took the view that the results presented by the applicant, concerning a public survey carried out by Ipsos GmbH in Germany in April 2014 on the level of distinctiveness of the mark applied for, did not make it possible to establish such distinctiveness across the entire European Union. Fourth, the Board of Appeal found that the Examination Division was correct in noting that, as regards three-dimensional marks, the more closely the shape for which registration is sought 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 that regard, the Board of Appeal concluded that the mark applied for was insufficiently distinguishable from other shapes present on the market for it to be regarded, in the absence of other fanciful elements, as having the minimum distinctive character required. Forms of order sought 9 The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. 10 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law Admissibility of the document produced for the first time before the Court 11 EUIPO submits that Annex 7 to the application, relating to a public survey carried out by Ipsos in Austria, was not produced during the proceedings before the Board of Appeal of EUIPO and is therefore inadmissible. Furthermore, the survey was carried out more than two months after the contested decision was adopted. 12 The applicant does not put forward any arguments on this point. 13 In that regard, it must be noted, as EUIPO correctly states, that the survey in Annex 7 to the application was not part of the administrative file submitted by the applicant before the Board of Appeal. 14 It must be recalled that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 and it is therefore not the Court’s function to review the facts in the light of documents produced for the first time before it. 15 It is therefore appropriate to exclude Annex 7 without it being necessary to assess its probative value (see, to that effect, judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited). Substance 16 In support of its action, the applicant raises a single plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009. 17 In the first place, the applicant complains that the Board of Appeal erred in its assessment of the level of distinctiveness required for the mark applied for to be registered. In that regard, the applicant submits that the Board of Appeal (i) wrongly applied the criteria relating to three-dimensional marks to the mark applied for and (ii) wrongly assumed that the mark applied for was a three-dimensional mark and not a figurative mark. 18 In the second place, the applicant complains that the Board of Appeal concluded that the mark applied for was devoid of any distinctive character. The applicant argues that, when assessing the distinctive character of the mark applied for, the Board of Appeal did not take into account the overall impression given by the mark. The Board of Appeal merely examined the features of the mark applied for separately. Moreover, the Board of Appeal failed to give due recognition to the contribution of the features of the mark applied for towards its distinctiveness. First, the shape of the packaging of the mark applied for contributed to conferring distinctiveness to the mark, given that it is unconnected to its function and that it could have been designed in a different way. Second, the colours of the mark applied for also contributed to its distinctiveness. The applicant submits, in that regard, that, in the confectionery sector, the colours are generally of great importance in indicating the origin of a mark. Consumers focus on a specific packaging’s colour when looking for a product amongst similar products. Third, the image featuring on the mark applied for, representing snow-covered hills against a blue sky, as well as the grey edges of the packaging, also contributed to its distinctiveness. That image is unusual and stands out from other designs on the market. 19 In the third place, the applicant complains that the Board of Appeal did not take into consideration, in its assessment of the distinctiveness of the mark applied for, the public survey carried out by Ipsos in Germany in April 2014. That survey constituted an additional clear indication of the inherent distinctiveness of the mark applied for. The findings of that survey were, moreover, supported by a further survey carried out by Ipsos in Austria in October 2014, a copy of which is included in Annex 7 to the application. Furthermore, those market surveys fulfilled all the requirements of the EUIPO Guidelines and were representative not only of the population as a whole but also of the relevant purchasers or consumers of light crisp chocolate bars and filled wafers. 20 In the fourth place, the applicant argues that the distinctiveness of the mark applied for is supported by the fact that the consumer’s level of attention is high in the present case. The applicant submits that the higher the degree of attention is, the more likely it is that the specific design of the packaging will be noticed and understood to be a reference to the manufacturer. Furthermore, the applicant considers that the Board of Appeal erred in its premiss that the average consumer’s level of attention in respect of the goods concerned is not high. 21 In the fifth place, the applicant argues that the distinctiveness of the mark applied for is also supported by the fact that it was registered by the national trade mark offices of 17 Member States. The applicant submits in that regard that while EUIPO is not bound by the decisions of national trade mark offices, this is nonetheless a strong indication that the mark applied for has a distinctive character. 22 In the sixth place, the applicant submits that EUIPO recently registered marks similar to the mark applied for, which did not have a higher level of distinctiveness. Although EUIPO is not bound by previous decisions, those examples nonetheless demonstrated that in the present case EUIPO applied a different standard in relation to the level of distinctiveness required. 23 EUIPO disputes the applicant’s arguments. 24 Article 151(1) of Regulation No 207/2009 provides that an international registration designating the EU is to have, from the date of its registration pursuant to Article 3(4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 14 April 1891, as revised and amended, the same effect as an application for an EU trade mark. 25 Article 154(1) of Regulation No 207/2009 provides that international registrations designating the EU are to be subject to examination as to absolute grounds for refusal in the same way as applications for EU trade marks. 26 Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered. 27 For a trade mark to possess a distinctive character for the purposes of that provision, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking and thus distinguish those goods from those of other undertakings (see judgment of 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 42 and the case-law cited). 28 The criteria for assessing the distinctiveness of three-dimensional marks consisting of the appearance of the goods themselves are no different from those applicable to other categories of marks (see judgment of 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 45 and the case-law cited). 29 However, it should be borne in mind that, for the purpose of applying those criteria, the average consumer’s perception 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 which consists of a sign unrelated to the appearance of the goods it denotes. 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 the distinctiveness of such a three-dimensional mark than a word or figurative mark (see judgment of 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 46 and the case-law cited). 30 In those circumstances, only a mark which departs significantly from the standard 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 of 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 47 and the case-law cited). 31 That 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 consisting of a 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 denotes (see, to that effect, judgment of 22 June 2006 in Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 29). 32 Accordingly, contrary to what the applicant claims, the Board of Appeal rightly referred, when examining the distinctive character of the mark applied for, to the case-law applicable to three-dimensional marks. 33 The distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see judgment of 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43 and the case-law cited). 34 In the present case, it should be noted that the protection sought by the applicant for the mark applied for was refused in respect of all the goods concerned, namely confectionery, chocolate, chocolate products, pastries, ice-creams, preparations for making the aforementioned products, included in Class 30. 35 In addition, it should be noted that the applicant does not dispute the Board of Appeal’s finding, which must be upheld, that the relevant public consists of the average EU consumer. 36 The average consumer’s level of attention is likely to vary according to the category of goods or services in question (see, to that effect, judgment 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, EU:T:2007:151, paragraph 49 and the case-law cited). 37 In that regard, the applicant argues that the average consumer in question has a high level of attention, given that the goods concerned are (i) goods purchased and consumed for pleasure and (ii) likely to have an impact on their health. 38 However, contrary to what the applicant submits, the fact that the average consumer purchases confectionery goods for pleasure, or that they are likely to have an impact on their well-being, is not such as to furnish the average consumer with a high level of attention. First, the goods concerned are inexpensive, everyday consumer goods, generally sold in supermarkets, the purchase of which is not preceded by a lengthy period of reflection (see, to that effect, judgments of 17 December 2010 in Chocoladefabriken Lindt & Sprüngli v OHIM (Shape of a chocolate rabbit), T‑395/08, not published, EU:T:2010:550, paragraph 20, and in Storck v OHIM (Shape of a chocolate mouse), T‑13/09, not published, EU:T:2010:552, paragraph 15). Second, those goods are everyday consumer goods of which the health risks are not established. 39 Therefore, the Board of Appeal was right to conclude that the relevant public had a low level of attention. 40 It is also necessary to examine whether, in light of the overall impression conveyed by the combination of its shape, its colours and its graphic element, the mark applied for could be perceived by the relevant consumer as an indication of its commercial origin. 41 That assessment is not incompatible with an examination of each of the individual elements of the mark applied for in turn. Indeed, it may be useful, in the course of the global assessment, to examine each of the components of which the mark is composed (see judgment of 4 October 2007 in Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 30 and the case-law cited). 42 In the present case, contrary to what the applicant submits, it is apparent that the Board of Appeal correctly identified and applied the criteria established by the case-law to the present case. The non-distinctive character of the mark’s features, taken separately and overall, was explained in detail in the contested decision. 43 Thus, after having examined in turn the shape of the packaging, the colour combination used, the curved diagonal line which runs across the image, allegedly representing a snow-covered hill against a blue sky, and the grey edges of the package, the Board of Appeal found that the mark applied for lacked distinctiveness. The Board of Appeal pointed out that the mark applied for consists merely of a combination of presentational features typical of the packaging of the goods concerned. The mark applied for was not sufficiently distinguishable from the other shapes present on the market for it to be regarded, in the absence of other fanciful elements, as possessing the required minimum level of distinctiveness. First of all, the square shape of the packaging is commonplace and widely used. Furthermore, the colours used are ordinary and common – light blue, white and grey – which do not enhance any other special feature of the sign. Finally, the curved diagonal line which runs across the image, allegedly representing a snow-covered hill against a blue sky, and the grey edges of the package, are unable to render the mark distinctive and would, in all likelihood, be seen by consumers as simple decorative patterns, and not as an indication of origin. 44 It follows from that examination carried out by the Board of Appeal, which must be upheld, that, given that the mark applied for does not differ significantly from the usual shape of the goods concerned, it cannot fulfil its essential function, namely to identify the origin of the goods. 45 Consequently, the Board of Appeal correctly found that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. 46 The applicant puts forward no argument capable of calling that assessment into question. 47 In the first place, the applicant’s argument that the Board of Appeal failed to give due recognition to the contribution of the features of the mark applied for towards its distinctiveness must be rejected. 48 In that regard, as regards, first, the shape of the mark applied for, it must be observed, as is apparent from the examples of packaging provided by the applicant, that square shapes are commonly used for the goods concerned and that the shape of the mark applied for does not display any easily perceptible differences when compared to common shapes. Furthermore, basic geometrical forms, such as squares or rectangles, are obvious for a packet of chocolate or of a similar candy bar. The Board of Appeal was therefore entitled to take the view, without committing an error of assessment, that the shape of the mark applied for was evidently essential for the goods concerned. 49 As regards, second, the three distinct colours on the packaging of the mark applied for — light blue, white and grey — first of all, it must be noted that the relevant public is used to seeing colourful elements on the goods concerned. Furthermore, it should be recalled that, according to settled case-law, although colours are capable of conveying certain associations of ideas and of arousing feelings, they possess, by contrast, little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (judgment of 6 May 2003 in Libertel, C‑104/01, EU:C:2003:244, paragraph 40). Finally, it must be noted that the colours used seem rather commonplace. They are not, in themselves, sufficiently exceptional that they would be perceived, by the relevant consumer, as particularly striking and memorable in relation to the goods concerned. They would therefore only be perceived by the relevant public as being aesthetic or presentational elements. Thus it must be held that the Board of Appeal did not commit an error of assessment in taking the view that the colour combination used in the mark applied for was incapable of distinguishing immediately and with certainty the applicant’s goods from those of other undertakings. 50 As regards, third, the image, allegedly representing a snow-covered hill against a blue sky, it must be noted, as EUIPO points out, that, in the specification for the mark, as it was presented in the application for registration, only the colours are mentioned, without specific identification, and it is not specified that the white element represents a snow-covered hill and the blue element represents the sky. According to the scheme of Regulation No 207/2009, registration can take effect solely on the basis of, and within the limits of, the application for registration filed with EUIPO by the applicant. It follows that, when examining the distinctive character of the mark applied for, EUIPO must refer to the reproduction of that mark attached to the application for registration and to the description, where applicable, included in that application. Therefore, EUIPO may not take into account any characteristics of the mark applied for that are not set out in the application for registration and the accompanying documents (see, to that effect and by analogy, judgment of 22 March 2013 in Bottega Veneta International v OHIM (Shape of a bag), T‑410/10, not published, EU:T:2013:149, paragraph 38 and the case-law cited). 51 In addition, as EUIPO stated, the applicant’s interpretation that the graphic representation on the packaging of the mark applied for represents a snow-covered hill and a blue sky cannot be accepted, in so far as that interpretation is not obvious to the relevant consumer. Moreover, it is well known that snow-covered hills appear on the packaging of a number of renowned chocolates. Blue sky is also an element which frequently features on packaging. The white part could also bring to mind milk, an ingredient commonly used in chocolates and ice-creams, which is often represented on the packaging of chocolates. It must be noted that the addition of an image naturally comes to mind, given that the consumer is used to the fact that coloured elements are present on the packaging of the goods concerned. That point is confirmed, moreover, by the examples submitted by the applicant of the packaging of the goods concerned. Thus the Board of Appeal was correct to hold that the image affixed to the mark applied for and the grey edges of the packaging were not such as to confer a distinctive character on the mark applied for and that those elements were likely to be seen by the relevant consumers as simple decorative patterns and not as an indication of origin. 52 In the second place, it is necessary to reject the applicant’s argument that the Board of Appeal should have taken into account the public survey carried out by Ipsos in Germany when assessing the inherent distinctiveness of the mark applied for. In order to assess whether a mark is or is not devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, EUIPO or, on appeal, the Court, must have regard to all the relevant facts and circumstances. In that regard, even if that assessment must be carried out in relation to the presumed perceptions of an average consumer of the goods or services in respect of which registration is sought, who is reasonably well informed and reasonably observant and circumspect, the possibility remains that evidence based on the actual perception of the mark by consumers may, in certain cases, provide guidance to EUIPO (see, to that effect, judgment of 7 October 2004 in Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraphs 48 and 49 and the case-law cited). However, in order to contribute to establishing the distinctiveness of a mark for the purposes of Article 7(1)(b) of Regulation No 207/2009, that evidence must show that consumers did not need to become accustomed to the mark through the use made of it and that it immediately enabled them to distinguish the goods or services bearing the mark from the goods or services of competing undertakings. Article 7(3) of Regulation No 207/2009, which allows a mark that does not have, ab initio, a distinctive character within the meaning of Article 7(1)(b) of that same regulation to acquire such a character through its use, would be redundant if a mark had to be registered in accordance with Article 7(1)(b) by reason of its having become distinctive as a consequence of the use made of it (see, to that effect, judgment of 7 October 2004 in Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 50). 53 However, in the present case, it is clear from the responses to the first question of the study submitted by the applicant that the majority of the participants were familiar with the mark applied for before being surveyed, which implies that that study was not appropriate to establish, ab initio, the distinctive character of the mark applied for within the meaning of Article 7(1)(b) of Regulation No 207/2009. 54 In any event, as the Board of Appeal rightly held at paragraph 17 of the contested decision, neither the scope nor the extent of the survey is appropriate to establish the mark’s distinctiveness in respect of the European Union. The survey was restricted solely to Germany, the country in which, furthermore, the applicant is established and which corresponds to its domestic market. The relevant consumer to be taken into consideration in the course of an assessment of the distinctive character of the mark applied for is that of the entire European Union (see, to that effect, judgment of 25 September 2014 in Peri v OHIM (Turnbuckle shape), T‑171/12, EU:T:2014:817, paragraph 45). 55 In the third place, it is necessary to reject the applicant’s argument that the Board of Appeal should have taken into account the national registrations in its assessment of the distinctive character of the mark applied for. The EU trade mark regime is an autonomous system with its own set of rules and with objectives peculiar to it and applies independently of any national systems (see, to that effect, judgment of 25 October 2007 in Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraphs 65 and 66). Registrations already made in the Member States are only one factor which may be taken into consideration, without being given decisive weight, for the purposes of registering an EU trade mark (judgment in Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 72). EUIPO is under no obligation to follow the assessment of the competent trade mark authorities in the Member States or to lay down the same requirements, or to register the mark applied for on the basis of registrations in the Member States (see, to that effect, judgment of 17 December 2010 in Shape of a chocolate rabbit, T‑395/08, not published, EU:T:2010:550, paragraph 44 and the case-law cited). The registrability of a sign as an EU trade mark must be assessed only by reference to the relevant EU rules. 56 In the fourth place, it is necessary to reject the applicant’s argument that the Board of Appeal recently registered similar marks to the mark applied for of which the distinctiveness was not higher. The legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of any previous decision-making practice of EUIPO (see, to that effect, judgment of 19 November 2009 in Agencja Wydawnicza Technopol v OHIM (100 and 300), T‑425/07 and T‑426/07, EU:T:2009:454, paragraph 30 and the case-law cited). 57 It follows from all the foregoing that the Board of Appeal was fully entitled to uphold the decision of the Examination Division and refuse registration of the mark applied for on the basis of Article 7(1)(b) of Regulation No 207/2009. 58 Accordingly, the single plea in law raised by the applicant must be dismissed as being unfounded. 59 The action must therefore be dismissed. Costs 60 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 (First Chamber) hereby: 1. Dismisses the action; 2. Orders August Storck KG to pay the costs. Kanninen Pelikánová Buttigieg Delivered in open court in Luxembourg on 10 May 2016. [Signatures] * Language of the case: English.