Judgment — ECLI:EU:T:2014:813
Date: 2014-09-25
Language of the case: English
Court formation: Seventh Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Italy

Summary — Judgment of the General Court (Seventh Chamber), 25 September 2014 1. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Assessment of distinctive character — Criteria — Perception of the trade mark by the relevant public — Attention level of the public (Council Regulation No 207/2009, Art. 7(1)(b)) 2. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Three-dimensional trade mark constituted by the shape of the packaging of the product — Shape of two packaged goblets (Council Regulation No 207/2009, Arts 7(1)(b) and 52(1)(a)) 3. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Three-dimensional trade mark constituted by the shape of the packaging of the product — Distinctive character — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b)) 4. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Trade mark made up of several elements — Possible for the competent authority to examine each of the elements making up the trade mark — Need to take account of the overall perception of the combination by the relevant public (Council Regulation No 207/2009, Art. 7(1)(b)) 5. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7 — Identification of the trade mark in question — Image of the trade mark in the application for registration (Council Regulation No 207/2009, Arts 7 and 52(1)(a)) 6. Community trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Exception — Distinctive character acquired through use — Three-dimensional mark — Criteria for assessment (Council Regulation No 207/2009, Art. 7(3)) 1. In order for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings. The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, second, by reference to the relevant public’s perception of the mark, the relevant public consisting of average consumers of those goods or services, who are reasonably well informed and reasonably observant and circumspect. In this connection, concerning everyday consumer food products aimed at all consumers, the fact that the average consumer chooses an ice cream on the basis of his tastes and preferences is not such as to confer on him a high level of attention. Ice creams are inexpensive, everyday consumer goods, generally sold in supermarkets, the purchase of which is not preceded by a lengthy period of reflection, and in respect of which there are no grounds for taking the view that the consumer will display a high level of attention at the time of purchase. (see paras 12, 13, 16, 17) 2. See the text of the decision. (see paras 18, 23, 29, 30, 34, 38, 40, 47) 3. The criteria for assessing the distinctive character of a three-dimensional trade mark 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, the perception of the relevant public 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 which it designates. 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 in the absence of any 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. In those circumstances, only a mark which departs significantly from the norm or customs of the sector, and is thereby liable to fulfil 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. With regard, in particular, to three-dimensional trade marks consisting of the packaging of goods, which are packaged in trade for reasons linked to the very nature of the product, the Court of Justice has held that they must enable average consumers of the goods in question, who are reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention. (see paras 19-21) 4. See the text of the decision. (see para. 22) 5. Where the description of the mark set out in the contested OHIM decision corresponds to the image of that mark as set out in the application for registration, the fact that the applicant has his own description of the contested mark, which does not appear in either the application for registration or in the certificate of registration, is not sufficient for it to be held that the Board of Appeal was in error. (see para. 36) 6. Admittedly, according to the case-law, a three-dimensional mark may acquire distinctive character through use even if it is used in conjunction with a word mark or a figurative mark. Such is the case where the mark consists of the shape of the product or its packaging and where the product and its packaging systematically bear a word mark under which they are marketed. Such distinctive character may be acquired, inter alia, after the normal process of familiarising the public concerned has taken place. However, the identification by the relevant class of persons of the product as originating from a particular undertaking must be made as a result of the use of the mark as a trade mark. The expression ‘use of the mark as a trade mark’ must be understood as referring to use of the mark for the purposes of the identification by the relevant class of persons of the product or service as originating from a particular undertaking. Therefore, not every use of the mark amounts necessarily to use as a trade mark. It would only be if the applicant had specifically substantiated the assertion that the shape of the packaging of the goods in question was particularly retained by the relevant consumers in their memory as an indication of its commercial origin, that it might, perhaps, be possible to see initial support for the proposition that the particular appearance of the three-dimensional shape of the packaging of the goods in question constituting the contested mark made it possible to differentiate it from those of other manufacturers. (see paras 55-57)