Judgment — ECLI:EU:T:2016:650
Date: 2016-11-09
Language of the case: German
Court formation: Fifth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - successful
Origin: Germany

Summary — Judgment of the General Court (Fifth Chamber), 9 November 2016 1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Figurative mark composed of a repetitive sequence of elements — Use of such a mark as a surface pattern on goods or their packaging — Distinctive character — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b)) 2. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Figurative mark representing a pattern of wavy, crisscrossing lines (Council Regulation No 207/2009, Art. 7(1)(b)) 3. EU trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Registration of a new trade mark — Absolute grounds for refusal — Burden of proof (Council Regulation No 207/2009, Arts 7(1), and 76(1)) 1. The criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. Nonetheless, for the purpose of applying those criteria, the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of 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 in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. Only a three-dimensional mark, consisting in the appearance of the product itself, only a mark which departs significantly from the standards or usual practices 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 on the EU trade mark. Those criteria, developed on the subject of trade marks which may be confused with the appearance of goods, are also applicable in the case of a sign composed of a design applied to the surface of goods. In that regard, a sign that is made up of a series of regularly repetitive elements lends itself particularly well to being used as a surface pattern. There is therefore, in principle, a probability, inherent in that sign, that it will be used as a surface pattern, irrespective of its designation by the trade mark applicant as a figurative mark, a three-dimensional mark, a surface pattern or other type of mark. In those circumstances, it is only when the use of a surface pattern is unlikely in the light of the nature of the products at issue that such a sign cannot be considered a surface pattern in respect of the products at issue. Otherwise, the sign at issue, bearing the typical characteristics of a surface pattern owing to the repetitive sequence of its elements, may in fact be held to constitute a surface pattern. That is an objective criterion that is not contingent on the commercial intentions of the undertaking concerned. The criteria laid down by the case-law concerning assessment of the distinctiveness of trade marks which may be confused with the appearance of goods apply to surface patterns used on the packaging of products that are usually sold in packaging, and are only brought out of their packaging just prior to being consumed. However, there are no grounds to apply that case-law in the case of a surface pattern used on what is merely transport packaging. A surface pattern used on mere transport packaging cannot be equated with the appearance of the product. (see paras 23, 24, 26, 54, 55, 57, 66, 67) 2. See the text of the decision. (see paras 129-133, 145, 152, 153) 3. See the text of the decision. (see para. 136)