ORDER OF THE GENERAL COURT (Seventh Chamber)
24 June 2015 (*)
(Community trade mark — Application for Community figurative mark representing a sphere — Absolute grounds for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Action manifestly lacking any foundation in law)
In Case T‑625/14,
Wm. Wrigley Jr. Company, established in Wilmington, Delaware (United States), represented by M. Kinkeldey, S. Brandstätter and C. Schmitt, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carillo, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 17 June 2014 (Case R 168/2014-5) relating to an application for registration of a figurative sign representing a sphere as a Community trade mark,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court of First Instance on 18 August 2014,
having regard to the response lodged at the Court Registry on 31 October 2014,
makes the following
Order
Background to the dispute
1        On 15 April 2013, the applicant, Wm. Wrigley Jr. Company, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The mark in respect of which registration was sought is the figurative sign reproduced below:
3        The goods in respect of which registration was sought are in Classes 3, 21 and 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, for each of those classes, to the following description:
–        Class 3: ‘Toothpaste; dentifrices; confectionery for cosmetic purposes, namely chewing gum, bubble gum, candy, mints, drops and lozenges for cleaning or whitening teeth’;
–        Class 21: ‘Household and kitchen utensils and containers; combs and sponges; brushes (except paint brushes); toothbrushes; brush-making materials; articles for cleaning purposes; glassware; porcelain and earthenware not included in other classes’;
–        Class 30: ‘Coffee, tea, cocoa and artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar; honey; treacle; yeast, baking-powder; sauces (condiments); spices; ice; confectionery, chewing gum, bubble gum, candy, mints, drops and lozenges’.
4        By decision of 11 November 2013, the examiner rejected the application for registration in respect of the following goods (‘the goods at issue’):
–        Class 3: ‘Confectionery for cosmetic purposes, namely chewing gum, bubble gum, candy, mints, drops and lozenges for cleaning or whitening teeth’;
–        Class 30: ‘Confectionery, chewing gum, bubble gum, candy, mints, drops and lozenges’.
5        On 10 January 2014, the applicant filed an appeal at OHIM under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.
6        By decision of 17 June 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal on the basis of Article 7(1)(b) of Regulation No 207/2009. It took the view that the mark applied for lacked distinctive character for all the goods at issue.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
8        OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        Under Article 111 of the General Court’s Rules of Procedure, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, by reasoned order, without taking further steps in the proceedings, give a decision on the action, even if a party has requested that a hearing be held (orders of 13 September 2011 in ara v OHIM — Allrounder (A), T‑397/10, EU:T:2011:464, paragraph 18, and of 21 October 2013 in Lyder Enterprises v OCVV — Liner Plants (1993) (SOUTHERN SPLENDOUR), T‑367/11, EU:T:2013:585, paragraph 17).
10      In this instance, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give a decision without taking further steps in the proceedings.
11      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.
12      Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.
13      According to settled case-law, the distinctive character of a trade mark for the purposes of Article 7(1)(b) of Regulation No 207/2009 means that the mark must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 12 July 2012 in Smart Technologies v OHIM, C‑311/11 P, ECR, EU:C:2012:460, paragraph 23 and the case-law cited).
14      The distinctiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the mark is applied for and, second, in relation to the perception of the relevant public, which is composed of the average consumers of those goods or services (see judgment in Smart Technologies v OHIM, paragraph 13 above, EU:C:2012:460, paragraph 24 and the case-law cited).
15      The perception of the relevant public is liable to be influenced by the nature of the sign in respect of which registration is sought. Therefore, to the extent to which average consumers are not in the habit of making assumptions as to the commercial origin of goods on the basis of signs which are indistinguishable from the appearance of the goods themselves, such signs will be distinctive, within the meaning of Article 7(1)(b) of Regulation No 207/2009, only if they depart significantly from the norm or customs of the sector (see judgment of 16 January 2014 in Steiff v OHIM (Metal button in the middle section of the ear of a soft toy), T‑433/12, EU:T:2014:8, paragraph 20 and the case-law cited).
16      Moreover, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 7 October 2004 in Mag Instrument v OHIM, C‑136/02 P, ECR, EU:C:2004:592, paragraph 20).
17      In the present case, it is common ground that the goods at issue, which are in classes 3 and 30, are inexpensive everyday consumer products and that the relevant public is made up of average consumers whose level of attention at the time of purchase of those goods must be considered average.
18      The sign applied for is made up of a sphere or full circle divided into two halves. The left half of the sphere is represented in dark tones, whilst the right half is shown in lighter tones. The various tones used on the right half show circular shapes which give an impression of a three-dimensional image. The contour of the sign is also made up of different tones.
19      It is well known that spheres and full circles are common shapes in the sector for confectionery, notably for chewing gum, bubble gum, candy, mints, drops and lozenges and that that confectionery is often multi-coloured and comes in various designs. The sign sought also has the appearance of the goods at issue because of its three-dimensional aspect produced by the different tones on the right side of the sphere.
20      Therefore, the Board of Appeal, in considering that the average consumer does not proceed to analyse the various details of the sign sought and will perceive it as a sphere divided into two halves of different tones and that such a sign did not depart significantly from the usual shapes of the goods at issue, concluded, correctly, that it lacked distinctive character (paragraphs 13 and 16 of the contested decision).
21      Clearly, the applicant’s arguments put forward to counter that conclusion cannot be upheld.
22      First of all, regarding the argument that the sign sought, as a whole, creates the three-dimensional impression of a shining ball or shining curved shield being held up or a unitary and memorable logo, suffice it to observe that the distinctive character of the mark sought must, in accordance with the case-law referred to in paragraph 14 above, be assessed in relation to the goods at issue, which are confectionery, and that that mark, when affixed to the goods at issue, will be perceived as having the appearance of those goods, not the appearance of a ball, shield or logo.
23      Secondly, regarding the argument that the Board of Appeal failed to take into consideration the overall impression produced by the mark sought, it should be noted that the Board of Appeal, after finding that the shape of that mark was extremely common for the goods at issue (paragraphs 13 to 15 of the contested decision), concluded, in terms of the overall impression produced by the mark sought, that the specific elements as described by the applicant (such as the separation of the mark into two halves by different tones) did not make it sufficiently distinctive with regard to the goods at issue, but rather supported the impression of a three-dimensional image, thereby making the mark an even more realistic impression of the goods at issue (paragraph 16 of the contested decision). It is therefore clear that the Board of Appeal appraised the mark sought as a whole.
24      Thirdly, regarding the argument that the sign sought is an unusual, distinctive and fanciful representation of a drop or lozenge and that it is impossible to manufacture candy containing the different tones of the sign sought, it should be borne in mind that, according to the case-law, for a mark to be registered, it does not suffice that it is original, but it must differ substantially from the basic shapes of the goods in question, commonly used in the trade, and not look like a mere variant of those shapes (judgment of 11 July 2013 in Think Schuhwerk v OHIM (Red shoelace end caps), T‑208/12, EU:T:2013:376, paragraph 47). It should further be noted that a sphere or full circle is a banal shape and that there is no originality in the use of different tones.
25      Fourthly, as regards the existence of earlier decisions of OHIM which allowed registration of figurative marks covering goods which were more similar in appearance than the mark sought, it must be borne in mind that, according to settled case-law, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of those boards (see judgment of 29 September 2009 in The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, ECR, EU:T:2009:364, paragraph 36 and the case-law cited). Moreover, although, in the light of the principles of equal treatment and sound administration OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications, those principles must however be consistent with respect for legality and that, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (order of 11 September 2014 in Think Schuhwerk v OHIM, C‑521/13 P, ECR, EU:C:2014:2222, paragraph 57).
26      In the present case, since the Board of Appeal was correct in concluding that the mark applied for lacked distinctive character (see paragraph 20 above), the applicant could not successfully rely on earlier decisions of OHIM in order to refute that conclusion.
27      Lastly, as regards registration of the mark sought in non-member countries, it must be remembered that, according to settled case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a Community trade mark must be assessed by reference only to the relevant rules of EU law. Accordingly, OHIM and, as the case may be, the judicature of the European Union are not bound by a decision given in a Member State, or indeed a non-member country, to the effect that the sign in question is registrable as a national mark (judgment of 25 March 2014 in Deutsche Bank v OHIM (Leistung aus Leidenschaft), T‑539/11, EU:T:2014:154, paragraph 53).
28      It follows from all of the foregoing that the single plea in law must be rejected as being manifestly unfounded and, therefore, that the action must be rejected as manifestly lacking any foundation in law.
Costs
29      Under Article 87(2) 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
1.      The action is dismissed.
2.      Wm. Wrigley Jr. Company shall pay the costs.
Luxembourg, 24 June 2015.
E. Coulon
M. van der Woude
Registrar
President
* Language of the case: English.