Judgment — ECLI:EU:T:2016:618
Date: 2016-10-18
Language of the case: German
Court formation: First Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Germany

summary of its arguments, set out in paragraph 7 of the decision appealed against. In those circumstances, the reasons given by the Board of Appeal in paragraphs 26 to 28 of the decision appealed against as regards the category ‘magazines’ is applicable, implicitly but necessarily, to information services, books and seminars, especially because paragraph 27 of the decision appealed against refers not only to the goods but also to the services covered. 130 It is true that the applicant substantiated the claim of acquisition of distinctive character in respect of information services, books and seminars through additional evidence, consisting in the affidavit from M. S. (‘the affidavit’) concerning inter alia the publication of books and the operation of internet sites dedicated to the field of brewing, and also a promotional prospectus for a seminar on the same field organised by it (‘the prospectus’). 131 That being so, the affidavit and the prospectus are relied on as evidence adduced by the applicant in paragraph 6 of the decision appealed against, which implies that they were taken into account by the Board of Appeal in its assessment. In those circumstances, the conclusion is that the reasons given by the Board of Appeal in paragraphs 26 to 28 of the decision appealed against also apply to the evidence intended to establish acquisition of distinctive character through use for information services, books and seminars. 132 Consequently, the complaint alleging breach of the obligation to state reasons must be rejected. Proof of acquisition of distinctive character through use 133 Article 7(3) of Regulation No 207/2009 provides that the absolute grounds for refusal referred to in Article 7(1)(b) to (d) thereof do not preclude the registration of a trade mark if it has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. 134 It is apparent from the case-law that the acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the goods or services concerned as originating from a particular undertaking because of the mark (see judgment of 29 April 2004, Eurocermex v OHIM (Shape of a bottle of beer), T‑399/02, EU:T:2004:120, paragraph 42 and the case-law cited). 135 In the present case, in order to substantiate the claim of acquisition of distinctive character through use, the applicant submitted the following evidence to the Board of Appeal: – a corporate-led survey conducted on 200 professionals in the German and Austrian brewery sectors (‘the survey’); – the affidavit; – an article about the magazine Brauwelt, taken from the online encyclopedia ‘Wikipedia’; – a copy of the magazine Brauwelt; – extracts from publications about the ‘drinktec’ exhibition; – photos of an exhibition stand; – the final report of the ‘drinktec’ exhibition and an extract from the internet site of the ‘BrauBeviale’ exhibition; – a promotional prospectus for a seminar on brewing; – beer bottle labels. 136 In paragraphs 26 to 29 of the decision appealed against, the Board of Appeal found that that evidence was insufficient to prove that the mark sought had acquired distinctive character through use in respect of goods and services for which such distinctive character had been claimed. 137 In the first place, in order to dispute that assessment, the applicant claims acquisition of distinctive character through use of the mark sought for the magazine Brauwelt, as established by the survey, the affidavit, the article taken from the online encyclopedia ‘Wikipedia’ and the copy of that magazine. 138 It was held in paragraph 111 above that the Board of Appeal was correct in finding that distinctive character acquired through use had to be proven for the category ‘magazines’. In so far as that category of goods is directed at both professionals and the general public, the relevant public in relation to whom proof of acquisition of distinctive character had to be provided includes both those groups of consumers, as found by the Board of Appeal in paragraph 27 of the decision appealed against. 139 Moreover, as correctly observed by the Board of Appeal, in so far as the magazine Brauwelt published by the applicant is a specialised magazine, the evidence adduced by the applicant demonstrates only use and perception of the mark sought by a professional public — a point, moreover, not disputed by the applicant. 140 In the second place, in so far as the applicant claims acquisition of distinctive character for information services, seminars and books on the basis of use of the mark sought for specialised magazines, the reasons given by the Board of Appeal in paragraphs 26 to 28 of the decision appealed against and referred to in paragraphs 138 and 139 above, to the effect that that use has been established only with respect to part of the relevant public, are also applicable. Like the magazines, the three aforementioned categories of goods and services are capable of being directed at a specialised public and the general public. 141 The same consideration holds true for the other evidence adduced by the applicant relating to the three relevant categories of goods and services. First of all, even if the statements about the operation of internet sites in the affidavit concern the category of information services, they do not establish that the sites in question are visited or known to a significant proportion of the general public. Next, it is apparent from the information in the promotional prospectus that the seminar organised by the applicant was intended for a specialised public, including operators of small and medium-sized breweries. Lastly, as evidenced by the affidavit, the books published by the applicant under the mark sought are specialised books and, therefore, not intended for the general public. 142 In the third place, regarding the exhibition catalogues and organisation of trade fairs and exhibitions, the applicant disputes the Board of Appeal’s refusal to take account of the affidavit, which states that it publishes the catalogue of the ‘BrauBeviale’ and ‘drinktec’ exhibitions, the extracts of two publications about the ‘drinktec’ exhibition and the photos of an exhibition stand in order to recognise acquisition of distinctive character through use of the mark sought. 143 In that regard, first of all it should be noted that the affidavit originates from a person who is linked professionally to the applicant, with the result that, on its own, it is not sufficient proof of acquisition through use of distinctive character of the mark sought (see, by analogy, judgment of 15 December 2005, BIC v OHIM (Shape of a lighter), T‑262/04, EU:T:2005:463, paragraph 79). Moreover, since the other evidence adduced by the applicant is unrelated to the ‘BrauBeviale’ exhibition, the applicant’s alleged publication of catalogues for that exhibition cannot be taken into consideration. 144 Next, regarding the publications about the ‘drinktec’ exhibition, the applicant criticises the Board of Appeal’s finding that the reference to ‘in cooperation’, on their flyleaf, does not identify the link between it and the organiser of that exhibition. Moreover, contrary to the applicant’s assertions, there are no grounds for finding that the relevant public will interpret that reference as meaning that the applicant has been associated with the organisation of the exhibition in question and the publication of its catalogue, given that the extracts presented do not contain any statement to that effect. On the contrary, the publication’s legal notices about the ‘drinktec 2013’ exhibition clearly show that it is a special supplement to the magazine Brauwelt, published by the applicant on the occasion of that exhibition. Thus, the publications about the ‘drinktec’ exhibition do not show that the applicant is in charge of the organisation of the exhibition or that it published and distributed a catalogue, independent of that magazine, on that occasion. 145 Lastly, contrary to the applicant’s assertions, the Board of Appeal was correct in finding that the photos of an exhibition stand produced by the applicant do not prove use of the mark sought for the exhibition catalogues and organisation of trade fairs and exhibitions, but, at the most, for specialised magazines and specialised publishing services. The stand in question does not show anything establishing that it belongs to the organiser of the exhibition or that it serves to distribute the organiser’s catalogues. The exhibitor is, however, clearly identified as a ‘specialised publisher’ and the stand includes space dedicated to ‘subscription services’. 146 In the fourth place, as regards beer, the applicant disputes the Board of Appeal’s finding that the beer bottle labels produced by it suggest that they were promotional gifts and that, in any event, the sales figures achieved through beer sales were not proven. The applicant takes the view that the labels in question prove that it has been present on the market for 150 years, with the result that it is quite well known. It adds that beer sales are not necessary to prove distinctive character acquired through use for that good. 147 It is apparent from the affidavit provided by the applicant itself that the beer in question was brewed on two occasions, in a total quantity of 1 350 bottles, so that it could be offered to clients on the occasion of the 150th anniversary of the magazine Brauwelt. Yet, as found by the Board of Appeal, such use of the mark sought comes within promotion activities for that magazine rather than use as part of beer marketing and is, in any event, insufficient to prove that the mark sought has acquired distinctive character for that good among a significant proportion of the relevant public. 148 Given the foregoing, the Board of Appeal was correct in finding that the applicant had not proven acquisition of distinctive character by the mark sought for the purposes of Article 7(3) of Regulation No 207/2009. 149 Consequently, the third plea must be rejected and the action must be dismissed in its entirety. Costs 150 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. As 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 Raimund Schmitt Verpachtungsgesellschaft mbH & Co. KG to pay the costs. Kanninen Pelikánová Buttigieg Delivered in open court in Luxembourg on 18 October 2016. [Signatures] Table of contents Background to the dispute Forms of order sought Law 1. Admissibility of the second and third heads of claim 2. The evidence adduced for the first time before the Court 3. Substance The first plea: infringement of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 75 of that regulation Infringement of the obligation to state reasons The descriptive character of the mark sought in the light of the goods and services covered – The significance of the mark sought – The link between the mark sought and the goods and services covered – Consideration of earlier registrations and decisions Infringement of the applicant’s right to be heard The second plea: infringement of Article 7(1)(b) of Regulation No 207/2009 The third plea: infringement of Article 7(3) of Regulation No 207/2009, read in conjunction with Article 75 of that regulation The subject matter of the dispute Infringement of the applicant’s right to be heard Infringement of the obligation to state reasons Proof of acquisition of distinctive character through use Costs * Language of the case: German.