Information;Judgment — ECLI:EU:T:2022:11
Date: 2022-01-19
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Italy

summary of the pleas in law relied on. That summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information. The application must, accordingly, specify the nature of the grounds on which the action is based, with the result that a mere abstract statement of the grounds does not satisfy the requirements of the Rules of Procedure. Similar requirements are called for where a claim is made in support of a plea in law (see judgment of 5 March 2019, Pethke v EUIPO, T‑169/17, not published, EU:T:2019:135, paragraph 112 and the case-law cited). Consequently, those claims must be rejected as inadmissible. 74 In the light of all of the foregoing considerations, the fourth plea must be rejected. The fifth plea, alleging infringement of Article 7(1)(b) and Article 7(3) of Regulation No 207/2009 75 In essence, the applicant submits that the Board of Appeal infringed Article 7(1)(b) and Article 7(3) of Regulation No 207/2009 by incorrectly finding that the contested mark had no distinctive character, although that mark had both inherent distinctiveness and acquired distinctiveness. That plea is divided into two parts, relating to the inherent distinctiveness and the acquired distinctiveness of the contested mark respectively. Since the second part is inadmissible, as has been held in paragraph 35 above, it is only the first part, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, which must be examined. 76 In the first place, the applicant disputes the definition of the relevant public and its level of attention. It submits that, since part of the relevant public is composed of consumers who regularly ski and hike and who are concerned with the technical qualities of the goods, the Board of Appeal should have found that the level of attention of the public was high and not average. 77 In the second place, as regards the lack of distinctive character of the mark at issue, the applicant claims that the Board of Appeal did not sufficiently take into account the evidence which it had submitted and, in particular, Annex App 3, although that evidence proved that there were, at the time of registration, no other models which included all the distinctive features displayed by the contested mark. 78 In the third place, the applicant submits that the Board of Appeal erred in basing the finding regarding the lack of distinctive character on the fact that the applicant had failed to act against all the infringements that had taken place on the market. 79 In the fourth place, the applicant claims that the evidence submitted by the intervener did not prove that consumers had become used to the shape in question, with the result that it was devoid of any distinctive character. In particular, it submits that the intervener has not succeeded in proving that the circulation of models displaying all of the features displayed by the contested mark was significant. 80 EUIPO and the intervener dispute those arguments. 81 Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered. According to settled case-law, signs which are devoid of any distinctive character are those which are deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 20, and of 21 January 2011, BSH v OHIM (executive edition), T‑310/08, not published, EU:T:2011:16, paragraph 23). 82 It is apparent from settled case-law that the distinctive character of a trade mark, within the meaning of that provision, means that the mark in question makes it possible to identify the goods in respect of which registration is applied for as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings (judgments of 29 April 2004, Procter & Gamble v OHIM, C‑473/01 P and C‑474/01 P, EU:C:2004:260, paragraph 32, and of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 79). 83 It is not necessary, for that purpose, for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the goods or services that it designates from those which have a different commercial origin and to conclude that all the goods or services that it designates have been manufactured, marketed or supplied under the control of the proprietor of the mark and that the proprietor is responsible for their quality (see judgment of 25 April 2018, Romantik Hotels & Restaurants v EUIPO – Hotel Preidlhof (ROMANTIK), T‑213/17, not published, EU:T:2018:225, paragraph 17 and the case-law cited). 84 It is apparent from well-established case-law that the distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the relevant public’s perception of the mark (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 34 and the case-law cited). 85 According to equally settled case‑law, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade marks (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). 86 However, account must be taken, for the purpose of applying those criteria, of the fact that the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the goods it denotes (see judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 27 and the case-law cited, and of 19 September 2012, Fraas v OHIM (Tartan pattern in dark grey, light grey, black, beige, dark red and light red), T‑50/11, not published, EU:T:2012:442, paragraph 40 and the case-law cited). 87 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 prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark (see judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 27 and the case-law cited, and of 19 September 2012, Tartan pattern in dark grey, light grey, black, beige, dark red and light red, T‑50/11, not published, EU:T:2012:442, paragraph 40 and the case-law cited). 88 It is apparent from those considerations that only a three-dimensional mark, consisting of the appearance of the product itself, which departs significantly from the norm 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 (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). 89 It is in the light of those considerations that the applicant’s claims alleging an error of assessment with regard to the distinctive character of the mark at issue must be examined. The goods at issue and the relevant public 90 In the present case, the goods covered by the contested mark which is the subject of the contested decision, as referred to in paragraph 13 of that decision, are ‘footwear; footwear soles; insoles; heelpieces for footwear; footwear uppers’. 91 Contrary to what the applicant submits, the goods at issue are not therefore solely ski boots, but more generally winter footwear or winter boots. The goods at issue covered by the mark are ‘footwear; footwear soles; insoles; heelpieces for footwear; footwear uppers’. 92 As the Board of Appeal pointed out in paragraph 44 of the contested decision, footwear, including winter boots and after-ski footwear, are common goods the life of which is limited and the price of which is not exorbitant. Consequently, the Board of Appeal correctly found that the relevant public was the general public in all the Member States, which had an average level of attention. 93 That finding is not called into question by the judgment of 15 November 2011, Hrbek v OHIM – Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT) (T‑434/10, not published, EU:T:2011:663), on which the applicant relies. That judgment, which related to a mark registered in respect of the goods ‘ski footwear and headgear’ and therefore in respect of technical and very specific goods, is not relevant in the present case. The assessment of the contested mark in relation to the norms and customs of the sector 94 It must be stated, in the first place, that the applicant does not dispute that the contested mark, which represents the shape of a boot, corresponds to the shape of one of the goods at issue. Consequently, in the light of the case-law set out in paragraphs 84 to 88 above, the Board of Appeal was right in examining whether the mark at issue departed significantly from the customs or norms of the footwear sector and, in particular, of the after-ski footwear sector. 95 In that regard, it is important to point out that, contrary to what the applicant claims, in order to ascertain whether the three-dimensional mark departs significantly from the customs or norms of the sector, it is not necessary to show that there are other goods on the market which reproduce all the features of the contested mark. As the Board of Appeal correctly pointed out, in order to conclude that there is no distinctive character, it is not necessary for the contested mark to be identical to existing shapes but for the overall impression conveyed by that mark not to depart significantly from the norms or customs of the sector. In other words, the fact that a mark has an overall shape which is similar to variants of the product which are usually available on the market does not permit the finding that the mark, as a whole, departs significantly from the customary shapes in the sector (see, to that effect, judgment of 26 October 2017, Erdinger Weißbräu Werner Brombach v EUIPO (Shape of a large glass), T‑857/16, not published, EU:T:2017:754, paragraphs 37 and 38). 96 Likewise, contrary to what the applicant submits, it is not apparent from the case-law that, for the purposes of concluding that a three-dimensional mark consisting of the shape of the product has no distinctive character, it is necessary for the Board of Appeal to demonstrate ‘strongly and unequivocally … that consumers have been exposed to widespread use of … signs that include all the element[s]’ or that they have become ‘accustomed’ to such signs. First, it is apparent from the preceding paragraph that it is not necessary to establish that the contested mark is identical to the shape of goods which are present on the market, but merely that it departs significantly from the customary shapes in the sector. Secondly, the judgments of 13 April 2011, Sociedad Agricola Requingua v OHIM – Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA) (T‑358/09, not published, EU:T:2011:174), and of 8 March 2013, Mayer Naman v OHIM – Daniel e Mayer (David Mayer) (T‑498/10, not published, EU:T:2013:117), on which the applicant relied in support of its line of argument, are not relevant since they relate to word or figurative marks and not to three-dimensional marks consisting of the shape of the product. As is apparent from paragraphs 86 to 88 above, the application of the criteria for assessing distinctive character is not the same in those two situations. 97 In the second place, as regards the assessment itself of the distinctive character of the contested mark, it must be pointed out, first, that the Board of Appeal found, in paragraphs 54 to 56 and paragraph 64 of the contested decision, on the basis of internet links provided by the applicant and some of the evidence and examples provided by the intervener in the context of the administrative proceedings, in particular exhibits A 13, A 14 and A 15, that a number of products which were similar, and even identical, to the contested sign and which had a different commercial origin existed on the market. In particular, in paragraphs 54 and 55 of the contested decision, the Board of Appeal reproduced 15 or so boots the general shape of which (in particular the thickness of the shaft, the external lacing system or the thickness of the sole) is similar to that of the contested mark. Apart from the findings relating to the pictogram, which is reproduced in paragraph 56 of the contested decision, the applicant does not, as such, dispute the evidence which was taken into account in paragraphs 54 to 56 and 64 of the contested decision or the fact that the examples referred to in those paragraphs have a different commercial origin from that of the contested mark. 98 Secondly, as is apparent from paragraphs 65 and 72 to 74 of the contested decision, it is a matter of common knowledge that, overall, the shape of the contested mark corresponds to the common shape of after-ski boots, which generally consist of a high shaft, often in a light synthetic material, with soles and laces. As has been pointed out in paragraph 65 above, it was permissible for the Board of Appeal to take well-known facts into consideration for the purposes of the assessment of the arguments which had been submitted in the context of the invalidity proceedings. 99 Thirdly, as the Board of Appeal found, the various features identified by the applicant (see paragraph 3 above) constituted decorative or technical details which had no bearing on the overall appearance of the product and were simply variants of the appearance of an after-ski boot. 100 In particular, the Board of Appeal correctly pointed out, in paragraph 73 of the contested decision, that the shape and thickness of the soles did not constitute a distinctive feature of the contested mark which indicated the commercial origin of the product, but were only an indication of the attributes of the product and, in particular, of its capacities for adherence (judgment of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 123). Likewise, the Board of Appeal was right in finding, in paragraph 74 of the contested decision, that the position of the laces and of the parallel stripes on the shaft of the boot and also the height of the shaft of the boot were not uncommon and were only a variant of the shapes which were commonly used in the after-ski boots sector. 101 It is therefore apparent from the foregoing that the Board of Appeal was right in finding that the constituent elements of the contested mark, taken individually, and the shape of boot taken as a whole, will be perceived by the relevant public as possible, or even common, variants of the presentation and decoration of winter boots and after-ski boots, which are part of the goods at issue since they are incorporated into the ‘footwear’ and which can also include ‘footwear soles; insoles; heelpieces for footwear; footwear uppers’. 102 None of the applicant’s other arguments is capable of calling that finding into question. 103 First, in so far as the applicant submits that the Board of Appeal did not correctly examine Annex App 3, it must be pointed out, on the one hand, that it is apparent from paragraphs 54 to 56 of the contested decision that the Board of Appeal did examine the website links provided by the applicant. On the other hand, the fact that Annex App 3 showed that there were no models simultaneously including all the features of the contested mark is not relevant (see paragraph 96 above), with the result that the Board of Appeal could indeed confine itself to finding, on the basis of some of the links provided by the applicant, that models similar to the contested mark existed. 104 Secondly, the applicant criticises the Board of Appeal for having found that the pictogram which is reproduced in paragraph 56 of the contested decision and represents a fictional product proved that the shape of the contested mark was commonplace. That pictogram is as follows: 105 In that regard, it is important to point out, on the one hand, that there is nothing to preclude the image of a fictional product from being taken into account in order to examine the public’s perception of the customs or norms of a specific sector. On the contrary, such a document is capable of reflecting the collective imagination as regards the representation of a particular product. On the other hand, and in any event, the Board of Appeal did not base its assessments on that document alone, but on a consistent body of evidence and of well-known facts, with the result that the applicant’s arguments relating to that specific item of evidence are not capable of calling the Board of Appeal’s findings into question. 106 Thirdly, in so far as the applicant submits that the Board of Appeal could not conclude that the contested mark had no distinctive character when it had pointed out that the evidence submitted by the intervener was irrelevant, undated and not conclusive, it is important to point out that, although the Board of Appeal did in fact find that some of the evidence provided by the intervener was not relevant, it did not reject all of the evidence provided by the intervener. On the contrary, the Board of Appeal did take into account exhibits A 13, A 14 and A 15, which the intervener had provided in the context of its application for a declaration of invalidity. Furthermore, as has been stated in paragraphs 97 to 100 above, the Board of Appeal correctly found, on the basis of the evidence provided by the intervener, taken together with the evidence placed on the file by the applicant and the well-known facts set out in the contested decision, that the contested mark did not depart significantly from the norms and customs of the footwear sector. 107 Fourthly, in so far as the applicant complains that the Board of Appeal based its assessments on a few models without any clear indication of the date or extent of circulation on the market of the examples of after-ski boots having been provided, it is sufficient to point out, first, that the Board of Appeal identified, in paragraphs 54 and 55 of the contested decision, 15 or so models which were similar to the contested mark, and that those examples constitute only some of the evidence which was taken into account by the Board of Appeal, among which was the existence of well-known facts. Secondly, the goods reproduced in paragraphs 54 and 55 of the contested decision were identified on the basis of links which had initially been provided by the applicant during the registration procedure in respect of the contested mark and therefore reflect the market at the time when the application was filed. 108 Fifthly, it is necessary to reject the applicant’s arguments seeking to dispute the assessments contained in paragraphs 66 to 68 of the contested decision, which relate to the issue of the imitations of the contested mark. 109 First, contrary to what the applicant submits, the Board of Appeal did not base its findings relating to the lack of inherent distinctive character on the fact that the applicant had failed to act against all the infringements taking place on the market. The sole purpose of the considerations set out in paragraphs 66 to 69 of the contested decision is to respond to the applicant’s arguments that it had brought actions for infringement in consequence of its competitors’ attempts to imitate its product and they are not intended to demonstrate that the contested mark has no inherent distinctive character. Furthermore, the applicant’s argument that the Board of Appeal erred in pointing out that, according to the judgment of 21 May 2014, Bateaux mouches v OHIM (BATEAUX-MOUCHES) (T‑553/12, not published, EU:T:2014:264), widespread copying of the mark at issue argues against distinctiveness, must be rejected as ineffective. The Board of Appeal did not base its assessment of the distinctiveness of the mark at issue on that case-law, particularly because it did not examine any distinctive character which might have been acquired through use but only the inherent distinctive character of the contested mark. 110 Secondly, and in any event, it must be pointed out that the presence on the market of shapes which are potential counterfeit copies is irrelevant to the assessment of the inherent distinctiveness of the contested mark with regard to its perception by the relevant public (see judgment of 28 June 2019, Shape of a guitar body, T‑340/18, not published, EU:T:2019:455, paragraph 40 and the case-law cited). 111 In the light of all of the foregoing considerations, the fifth plea must be rejected and the action must therefore be dismissed in its entirety. Costs 112 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 113 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Second Chamber) hereby: 1. Dismisses the action; 2. Orders Tecnica Group SpA to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Zeitneu GmbH. Tomljenović Schalin Nõmm Delivered in open court in Luxembourg on 19 January 2022. E. Coulon M. van der Woude Registrar President * Language of the case: English.