JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
19 June 2018 (*)
(EU trade mark — International registration designating the European Union — Figurative mark 3D — Absolute grounds for refusal — Descriptive character — Absence of any distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 (now Article 7(1)(b) and (c) of Regulation (EU) 2017/1001) — Obligation to state reasons — Article 75(1) of Regulation No 207/2009 (now Article 94(1) of Regulation 2017/1001))
In Case T‑413/17,
Karl Storz GmbH & Co. KG, established in Tuttlingen (Germany), represented by S. Gruber and N. Siebertz, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and D. Walicka, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 11 April 2017 (Case R 1502/2016‑2), relating to the international registration designating the European Union in respect of the figurative mark 3D,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis (Rapporteur), President, S. Papasavvas and O. Spineanu-Matei, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 29 June 2017,
having regard to the response lodged at the Court Registry on 18 September 2017,
further to the hearing on 7 March 2018,
gives the following
Judgment
I.      Background to the dispute
1        On 12 November 2015, the applicant, Karl Storz GmbH & Co. KG, filed an application for extension of the international registration designating the European Union No 1272627 with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The registration in respect of which protection was sought relates to the following figurative sign (‘the sign at issue’):
3        The goods in respect of which protection was sought are in Classes 9, 10 and 16 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, inter alia, to the following description:
–        Class 9: ‘Encoders [data processing]; compact discs [read-only memory]; compact discs [audio-video]; computer; computer programs [recorded]; computer operating programs [recorded]; computer screens; computer peripheral devices; computer programs [downloadable]; computer software [recorded]; data-processing apparatus; digital photo frames; disk drives for computers; DVD players; television receivers; telecameras; filters [photography]; fluorescent screens; cameras [photography]; GPS apparatus; interfaces [interface apparatus or programs for computers]; optical-character readers [data processing]; laptops [computers]; microprocessors; mobile phones; monitors [computer hardware]; monitors [computer programs]; navigation apparatus for vehicles [on-board computers]; navigation instruments; notebooks [computers]; objectives [optics]; instruments containing eye-pieces; eye-pieces; optical goods; optical apparatus and instruments; optical data carriers; optical lenses; optical discs [data processing]; optical glass; prisms [optics]; projection apparatus; projection screens; satellite navigational apparatus; stereoscopes; stereoscopic apparatus; portable media players; filters for ultraviolet rays, for photography; teaching apparatus; audiovisual teaching apparatus; video tapes; video screens; video cameras; video cassettes; video recorders; video game cartridges; intercommunication apparatus; photographic, cinematographic, optical, and teaching apparatus and teaching instruments central processing units [processors]; industrial endoscopes’;
–        Class 10: ‘Apparatus for use in medical analysis; apparatus and installations for the production of X-rays, for medical purposes; surgical apparatus and instruments; electrocardiographs; endoscopes for medical purposes; gastroscopes; magnetic resonance tomography apparatus; medical apparatus and instruments; ophthalmometers; ophthalmoscopes; heart-rate monitors; heart rate monitoring devices; radiological apparatus for medical purposes; X-ray apparatus for medical purposes; X-ray photographs for medical purposes; X-ray tubes for medical purposes; X-ray screens for medical purposes; X-ray generating tubes for medical purposes; spirometers [medical apparatus]; veterinary instruments and apparatus; apparatus for use in orthodontics’;
–        Class 16: ‘Scrap books; pictures; paintings, framed or unframed; printed matter; books; photographs [printed]; graphic representations; graphic reproductions; handbooks; histological sections [teaching material]; instruction and teaching material [excluding apparatus]; paper articles and stationery; printed publications’.
4        By letter of 16 December 2015, the examiner sent the applicant a provisional refusal of protection of the international registration within the European Union in respect of the goods referred to in paragraph 3 above on the ground that that registration was caught by the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), read in conjunction with Article 7(2) of that regulation (now Article 7(2) of Regulation 2017/1001).
5        The applicant replied to that provisional refusal by letter of 31 March 2016.
6        By decision of 15 July 2016, the examiner confirmed the refusal of protection of the international registration at issue in respect of the goods referred to in paragraph 3 above on the same grounds as those previously stated.
7        On 15 August 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the examiner’s decision.
8        By decision of 11 April 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeal.
9        In that regard, firstly, the Board of Appeal found that the relevant public was located in the European Union and consisted, depending on the goods in question, of the general public or professionals who could indeed display a high level of attention with regard to certain goods, without that fact preventing them from perceiving a sign as being descriptive of those goods or being relevant for the purposes of assessing the distinctiveness less strictly.
10      Secondly, it found that the ‘3D’ word element contained in the sign at issue meant ‘three dimensional’ and that that meaning was emphasised by the figurative elements of the sign, which, moreover, were banal, decorative and ancillary.
11      Thirdly, the Board of Appeal recalled, first, that it was open to EUIPO to reject an application for protection by providing the same reasoning for categories or groups of goods, on the condition that those goods had a sufficiently direct and specific link to each other, and, second, that the goods referred to in paragraph 3 above could be categorised into a number of homogeneous groups. For each of those groups, the Board of Appeal explained the reasons why the goods relating to them had a direct and specific relationship with the notion of three-dimensionality, thus substantiating the conclusion that the sign at issue was descriptive of those goods within the meaning of Article 7(1)(c) of Regulation No 207/2009.
12      Fourthly, the Board of Appeal pointed out, inter alia, that a sign which is descriptive of certain goods is also devoid of any distinctive character in relation to those goods, within the meaning of Article 7(1)(b) of Regulation No 207/2009.
II.    Forms of order sought
13      Following clarifications provided at the hearing, the applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
III. Law
15      In support of its action, the applicant relies on two pleas in law alleging, in essence, first, infringement of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 75(1) of that regulation, (now Article 94(1) of Regulation 2017/1001) and, second, infringement of Article 7(1)(b) of that regulation.
16      Before examining the applicant’s pleas in law it is necessary to rule on the plea of inadmissibility raised by EUIPO in respect of Annexes A.9 to A.12 to the application.
A.      Admissibility
17      EUIPO maintains that the annexes referred to in paragraph 16 above, four pieces of evidence relating to the description of specific goods covered by the sign at issue, are inadmissible, since they were not presented during the administrative proceedings.
18      That plea of inadmissibility is well founded, as, according to case-law, the purpose of bringing an action before the Court is the review of the legality of the decisions of the Boards of Appeal for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001) and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. To admit such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, which states that the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal (see judgment of 30 September 2016, Alpex Pharma v EUIPO — Astex Pharmaceuticals (ASTEX), T‑355/15, not published, EU:T:2016:591, paragraph 15 and the case-law cited).
B.      Substance
1.      First plea in law, alleging infringement of Articles 7(1)(c) and 75(1) of Regulation No 207/2009
19      The first plea relied on by the applicant consists, in essence, of three grounds for complaint. In the first place, the applicant claims that, on account of its figurative elements, the sign at issue does not evoke the notion of three-dimensionality, in any event not for the entire relevant public. In the second place, the applicant complains that the Board of Appeal ruled on the descriptiveness of the sign at issue by means of global reasoning in respect of groups of non-homogeneous goods, which is contrary to case-law. In the third place, the applicant submits that the Board of Appeal ought to have explained how the present case differed from a previous case in which a sign containing the element ‘3D’ had been registered for goods in Classes 9 and 10.
(a)    Ground for complaint claiming that, on account of its figurative elements, the sign at issue does not evoke the notion of three-dimensionality.
20      First, the applicant claims that, within the sign at issue, the elements ‘3’ and ‘D’ are not perceived, overall, to mean ‘three dimensional’, since they are not placed side by side. Their layout, it submits, is characterised by a spatial separation which gives rise to a memorable and unusual upper-case ‘t’ shape which does not evoke the notion of three-dimensionality. Moreover, that notion could not be evoked by a sign such as that at issue, which will only be printed on two-dimensional labels and is in black and white, since a larger number of colours would have to be used to create a three-dimensional effect. The applicant concludes that the graphic design of that sign does not, in any way, evoke or reinforce the notion of three-dimensionality.
21      Second, the applicant is of the view that even the part of the relevant public that would discern the sign at issue as the expression ‘3D’ would not necessarily perceive that as being the abbreviation of the term ‘three dimensional’. That part of the relevant public might perceive the sign as the fanciful symbol of a particular company, the merger of three companies whose names begin with the letter ‘D’, or a company formed by three people whose first names or surnames start with that letter. In that regard, the applicant states that the public is accustomed to seeing number and letter combinations in trade marks and company names and cites an example.
22      EUIPO disputes the applicant’s arguments.
23      As a preliminary point, it must be recalled that, under Article 7(1)(c) of Regulation No 207/2009, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, are not to be registered.
24      According to case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (see judgment of 17 December 2015, Olympus Medical Systems v OHIM (3D), T‑79/15, not published, EU:T:2015:999, paragraph 16 and the case-law cited).
25      Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought, are, by virtue of Article 7(1)(c) of Regulation No 207/2009, deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service designated by the mark, thus enabling the consumer who acquires the goods or service to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 17 December 2015, 3D, T‑79/15, not published, EU:T:2015:999, paragraph 17 and the case-law cited).
26      It follows that, in order for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 17 December 2015, 3D, T‑79/15, not published, EU:T:2015:999, paragraph 18 and the case-law cited).
27      It should also be noted that a sign’s descriptiveness can only be assessed, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (see judgment of 17 December 2015, 3D, T‑79/15, not published, EU:T:2015:999, paragraph 19 and the case-law cited).
28      In the present case, it is not contested that, as the Board of Appeal correctly observed in paragraphs 21 and 24 of the contested decision, certain goods address the consumer at large, while others target professionals across the entire European Union.
29      With regard to the applicant’s first argument (see paragraph 20 above), it must be pointed out that, as the Board of Appeal highlighted in paragraphs 28 to 36 of the contested decision, first, even if the expression ‘3D’ is stylised in the sign at issue, it remains nevertheless clearly recognisable, and, second, in addition to the fact that they are not particularly striking, the figurative elements of that sign strengthen the idea of three-dimensionality associated with the expression ‘3D’ and therefore draw the public’s attention even more to that idea (see, to that effect and by analogy, judgment of 18 January 2017, Wieromiejczyk v EUIPO (Tasty Puff), T‑64/16, not published, EU:T:2017:13, paragraphs 25 and 26). Thus, those elements are entirely incapable of conferring on the sign at issue a meaning different from that established by the Board of Appeal, which is the basis for its finding that the sign is descriptive with regard to the target goods (see, to that effect, judgment of 15 May 2014, Katjes Fassin v OHIM (Yoghurt-Gums), T‑366/12, not published, EU:T:2014:256, paragraph 30).
30      With regard to the applicant’s second argument (see paragraph 21 above), it must be noted that it is highly unlikely that a part of the public would fail to recognise the expression ‘3D’ in the sign at issue. In any event, it must be noted that, under Article 7(2) of Regulation No 207/2009, the registration of a trade mark must be refused notwithstanding the fact that the absolute grounds for refusal obtain in only a part of the European Union. Thus, in order for a sign to be subject to the prohibition in Article 7(1)(c) of Regulation No 207/2009, it is sufficient that the ground for refusal provided for therein exists at least for a non-negligible part of the target public (see, to that effect, judgments of 6 October 2017, Karelia v EUIPO (KARELIA), T‑878/16, not published, EU:T:2017:702, paragraph 27, and of 11 October 2017, Osho Lotus Commune v EUIPO — Osho International Foundation (OSHO), T‑670/15, not published, EU:T:2017:716, paragraph 88), which is manifestly the case in this instance.
31      As for the example put forward by the applicant, it must be noted that this does not relate to the combination of a number and a letter that, taken together, form an expression with a specific meaning that even appears in dictionaries, as EUIPO correctly points out.
32      Furthermore, even if it is assumed that a part of the public understands the sign at issue as evoking a concept other than three-dimensionality, it must be noted that, according to settled case-law, when a sign has several meanings, it must be refused registration if at least one of its possible meanings designates a characteristic of the goods concerned (see judgment of 17 December 2015, 3D, T‑79/15, not published, EU:T:2015:999, paragraph 26 and the case-law cited).
33      In the light of the foregoing considerations, the applicant’s present ground for complaint must be rejected.
(b)    Ground for complaint claiming that the Board of Appeal ruled on the descriptiveness of the sign at issue by means of global reasoning in respect of groups of non-homogeneous goods
34      The applicant complains that the Board of Appeal assessed the descriptive character of the sign at issue in relation to the goods covered by categorising them into a number of groups and by providing general reasoning for each of those groups, even though the goods included in each group are not homogeneous.
35      EUIPO disputes the applicant’s arguments.
36      It must be recalled that, in accordance with the first sentence of Article 75(1) of Regulation No 207/2009, decisions of EUIPO must state the reasons on which they are based. According to the case-law, that obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU, and its objective is to allow those concerned to know the reasons for the measure adopted in order to be able to defend their rights and to enable the courts to review the legality of the decision (see judgment of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 14 and the case-law cited).
37      Where the same ground of refusal is given for a category or group of goods or services, the reasoning may be general for all of the goods or services concerned (see judgment of 15 December 2016, START UP INITIATIVE, T‑529/15, EU:T:2016:747, paragraph 16 and the case-law cited; see also, to that effect, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30).
38      However, such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services. The mere fact that the goods or services concerned are within the same class of the Nice Agreement is not sufficient for a finding that such homogeneity exists, as those classes often contain a large variety of goods and services which are not necessarily interlinked in a sufficiently direct and specific way (see judgment of 15 December 2016, START UP INITIATIVE, T‑529/15, EU:T:2016:747, paragraph 17 and the case-law cited; see also, to that effect, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 31).
39      Homogeneity of the goods or services, within the meaning of the case-law cited in paragraph 38 above, is assessed with regard to the actual ground of refusal given in respect of the application for protection in question, and it is possible to use general reasoning for a series of goods or services which have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision in question, first, to explain adequately the reasoning followed for each of the goods and services belonging to that category and, second, to be applied without distinction to each of the goods or services concerned (see, to that effect, judgment of 15 December 2016, START UP INITIATIVE, T‑529/15, EU:T:2016:747, paragraph 18 and the case-law cited).
40      In the present case, when the Board of Appeal refused to grant the protection applied for to the sign at issue on the basis of Article 7(1)(c) of Regulation No 207/2009, it categorised the goods referred to in paragraph 3 above into eight groups, while noting that some goods may simultaneously fall into several groups.
41      First, according to the Board of Appeal, ‘Computer; computer screens; digital photo frames; television receivers; fluorescent screens; GPS apparatus; laptops [computers]; mobile phones; monitors [computer hardware]; monitors [computer programs]; navigation apparatus for vehicles [on-board computers]; navigation instruments; notebooks [computers]; projection screens; satellite navigational apparatus; portable media players; teaching apparatus; audiovisual teaching apparatus; video screens; intercommunication apparatus’ (‘goods in the first group’), which fall within Class 9, all incorporate a screen that can reproduce three-dimensional images.
42      Second, the Board of Appeal found that ‘encoders [data processing]; computer programs [recorded]; computer operating programs [recorded]; computer peripheral devices; computer programs [downloadable]; computer software [recorded]; data-processing apparatus; disk drives for computers; DVD players; telecameras; filters [photography]; cameras [photography]; interfaces [interface apparatus or programs for computers]; optical-character readers [data processing]; microprocessors; objectives [optics]; instruments containing eye-pieces; optical goods; optical apparatus and instruments; optical lenses; optical glass; prisms [optics]; protection apparatus; stereoscopes; stereoscopic apparatus; portable media players; filters for ultraviolet rays, for photography; video cameras; video recorders; photographic, cinematographic, optical, and teaching apparatus and teaching instruments; central processing units [processors]; industrial endoscopes’ (‘goods in the second group’), which fall within Class 9, could be used to reproduce, record or store such three-dimensional images or were products or components directly related to achieving this technological effect on electronic media.
43      Third, the Board of Appeal considered that ‘compact discs [read-only memory]; compact discs [audio-video]; optical data carriers; optical discs [data processing]; video tapes; video cassettes; video games cartridges’ (‘goods in the third group’), which fall within Class 9, could incorporate technology for three-dimensional image reproduction or on which those images could be stored, or that they were products or components used to attain that effect.
44      Fourth, the Board of Appeal noted that ‘optical discs [data processing]; disk drives for computers; DVD players; audiovisual teaching apparatus; video tapes; video screens; video cameras; video cassettes; video recorders; video cartridges; intercommunication apparatus’ (‘goods in the fourth group’), which fall within Class 9, could produce a three-dimensional audio effect.
45      Fifth, according to the Board of Appeal, all the goods referred to in paragraph 3 above that fall within Class 10, namely ‘apparatus for use in medical analysis; apparatus and installations for the production of X-rays, for medical purposes; surgical apparatus and instruments; electrocardiographs; endoscopes for medical purposes; gastroscopes; magnetic resonance tomography apparatus; medical apparatus and instruments; ophthalmometers; ophthalmoscopes; heart-rate monitors; heart rate monitoring devices; radiological apparatus for medical purposes; X-ray apparatus for medical purposes; X-ray photographs for medical purposes; X-ray tubes for medical purposes; X-ray screens for medical purposes; X-ray generating tubes for medical purposes; spirometers [medical apparatus]; veterinary instruments and apparatus; apparatus for use in orthodontics’ (‘goods in the fifth group’) are medical and surgical apparatus and instruments that use, or are somehow related to, three-dimensional technology or make use of technology to obtain three-dimensional images.
46      Sixth, the Board of Appeal found that ‘scrap books; printed matter; books; graphic representations; graphic reproductions; handbooks; histological sections [teaching material]; instruction and teaching material [excluding apparatus]; paper articles; printed publications’ (‘goods in the sixth group’), falling within Class 16, could contain or reproduce a three-dimensional image or effect.
47      Seventh, the Board of Appeal took the view that ‘pictures; paintings, framed or unframed; photographs [printed]’ (‘goods in the seventh group’), which fall within Class 16, can take the form of or reproduce a three-dimensional appearance.
48      Eighth, the Board of Appeal noted that ‘stationery’ (‘goods in the eighth group’), which fall within Class 16, could be designed in a three-dimensional style.
49      It follows that the Board of Appeal provided general reasoning for each of the eight groups of goods that it identified. However, it can only do so if the goods in each group are sufficiently homogenous (see paragraphs 37 and 38 above). Therefore, the question whether that is the case forms part of the assessment as to whether there has been an infringement of the obligation to state reasons, and the Court is required to consider this of its own motion (see, to that effect, judgment of 20 May 2009, CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD), T‑405/07 and T‑406/07, EU:T:2009:164, paragraph 56 and the case-law cited), regardless of the specific examples referred to by the applicant, which has additionally stated that it was challenging the contested decision as a whole and was advancing examples purely for illustrative purposes.
(1)    The goods in the first group
50      With regard to the first group, it must be noted that, as is stated by EUIPO, it is common knowledge that nowadays the majority of devices that have a screen can reproduce images with three-dimensional effect, with the result that the sign at issue, which refers directly to the idea of three-dimensionality, describes a characteristic of those goods.
51      In this respect, it must be noted that, according to case-law, in order for EUIPO to refuse registration on the basis of the ground set out in Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the sign in respect of which protection is sought is actually used at the moment of the application at issue for the purpose of describing goods such as those for which the application is made or the characteristics of those goods. As the actual wording of that provision states, it is sufficient that that sign can be used for those purposes. Furthermore, it is immaterial whether the characteristics of the goods or services being described are commercially essential or secondary. The wording of Article 7(1)(c) of Regulation No 207/2009 does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying that provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how commercially significant the characteristic may be (see, to that effect, judgment of 30 April 2013, ABC-One v OHIM (SLIM BELLY), T‑61/12, not published, EU:T:2013:226, paragraphs 36 and 37 and the case-law cited).
52      Thus, it must be held that the Board of Appeal did provide reasoning that is appropriate to cover the entirety of the goods in the first group, which have the common characteristic of incorporating a screen capable of reproducing three-dimensional images.
53      That finding is not called into question by the applicant’s arguments in respect of certain goods in the first group. In that regard, the applicant notes that, even though ‘GPS apparatus’, ‘navigation instruments’ and ‘satellite navigational apparatus’ all have a screen, they cannot reproduce a three-dimensional effect. Furthermore, according to the applicant, it is not possible to understand how an ‘intercommunication apparatus’ could reproduce a three-dimensional effect to which the public is accustomed.
54      Those arguments must be rejected. It must be noted, as is stated by EUIPO, that ‘GPS apparatus’, ‘navigation instruments’ and ‘satellite navigational apparatus’ are electronic devices with an incorporated screen and specific software that are able to display maps not only in two dimensions, but also in three dimensions, by giving, in the latter case, a realistic representation of the space in which the user is moving.
55      Lastly, with regard to ‘intercommunication apparatus’, it is sufficient to note that apparatus such as intercoms can be equipped with a screen allowing three-dimensional images to be visualised.
56      Consequently, the Board of Appeal was fully entitled to provide general reasoning to justify its dismissal of the application for protection of the sign at issue in respect of the goods in the first group.
(2)    The goods in the second group
57      With regard to the second group, it must be noted that the goods referred to can be used, as the Board of Appeal rightly pointed out, to reproduce, record or store three-dimensional images or can be products or components allowing three-dimensional images to be obtained. Thus, the relevant public need not apply any complex reasoning in order to associate those goods with the concept of three-dimensionality carried by the sign at issue, which would therefore immediately be perceived without any further consideration as describing the goods or one of their characteristics, meaning that the absolute ground for refusal set out in Article 7(1)(c) of Regulation 207/2009 applies (see paragraph 26 above), also taking into account the principles referred to in paragraph 51 above.
58      That finding also applies to ‘disk drives for computers’, ‘DVD players’ and ‘video recorders’, which are specifically referred to in the applicant’s arguments. It is evident that those goods are used to reproduce, record and store images, including those that can be displayed in three dimensions.
59      With regard to ‘filters for ultraviolet rays, for photography’, which are also expressly referred to in the applicant’s arguments, it must be noted that these are accessories of other goods within the second group, ‘photographic apparatus’ in particular, which may be used to obtain three-dimensional images. As those accessories have a close connection to the goods that have a direct and specific relationship with the concept carried by the sign at issue, the Board of Appeal was able to include them in the same group and to provide general reasoning for that group (see, to that effect, judgment of 3 March 2015, Schmidt Spiele v OHIM (Representation of boards for parlour games), T‑492/13 and T‑493/13, not published, EU:T:2015:128, paragraph 41).
60      Thus, the Board of Appeal was entitled to provide general reasoning when it dismissed the application for protection of the sign at issue with regard to the goods in the second group.
(3)    The goods in the third group
61      With regard to the goods in the third group, it is common knowledge that these can be used to store images, including three-dimensional images, as is the case for, inter alia, ‘compact discs’, or that they can contain technology for reproducing three-dimensional images, as is the case for, inter alia, ‘video games cartridges’.
62      It is true that, as the applicant submits, the Board of Appeal did admit, in respect of ‘compact discs’, that they can create a three-dimensional effect only if they are used with electronic apparatus. However, that does not mean that the relevant public is capable of approximating ‘compact discs’ with three-dimensionality only after mental and analytical effort. Thus, contrary to what is submitted by the applicant, even with regard to those goods there is a direct and specific link to the idea of three-dimensionality, and consequently the absolute ground set out in Article 7(1)(c) of Regulation No 207/2009 applies.
63      The Board of Appeal was therefore entitled to rely on general reasoning with regard to the descriptive nature of the goods in the third group.
(4)    The goods in the fourth group
64      With regard to the goods in the fourth group, suffice it to note that these also fall within the first, second and third groups. As the Board of Appeal’s reasoning regarding the latter groups has not been invalidated, it is not necessary to adjudicate again on those goods.
(5)    The goods in the fifth group
65      With regard to the goods in the fifth group, EUIPO was fully entitled to observe that nowadays medical and surgical apparatus and instruments often use technology involving three-dimensional images. Thus, the Board of Appeal’s reasoning that, in essence, it is common knowledge that those goods use three-dimensional technology, are connected to that technology or use it to obtain three-dimensional images, must be upheld.
66      Furthermore, given the fact that several goods within that group correspond to categories that are rather general, it must be noted that, even if the sign at issue is not descriptive of all of the goods falling within those categories, it follows from settled case-law that the finding of the descriptive character of a sign applies not only to the goods for which it is directly descriptive, but also to the broader categories to which those goods belong in the absence of a suitable restriction by the applicant (see, to that effect, judgment of 29 September 2016, Universal Protein Supplements v EUIPO (Representation of a body-builder), T‑335/15, not published, EU:T:2016:579, paragraph 32 and the case-law cited).
67      With regard to the goods in the fifth group that are specifically referred to in the applicant’s arguments, first, it must be noted that ‘ophthalmometers’ are apparatus designed to measure the degree of curvature of the cornea and to diagnose astigmatism, and can produce images with a three-dimensional effect, in particular by using several colours corresponding to the degrees of curvature.
68      Second, in respect of ‘heart-rate monitors’, ‘heart rate monitoring devices’ and ‘spirometers [medical apparatus]’, although it is not common knowledge that they are often used by obtaining three-dimensional images, it must be held that, firstly, they will be able to be used in that manner in the future, secondly, the public may be led to believe that, as they are sold under the mark ‘3D’, they use such images and, thirdly, they belong to the general category of medical or surgical goods that use three-dimensional images increasingly frequently to display the results of the examinations that they are used to carry out.
69      Thus, it was lawful for the Board of Appeal to provide general reasoning when it dismissed the application for protection of the sign at issue with regard to the goods in the fifth group.
(6)    The goods in the sixth and seventh groups
70      With regard to the goods in the sixth and seventh groups, it must be found that the Board of Appeal could consider it common knowledge that they could have a three-dimensional aspect, contain three-dimensional images or reproduce such images. For example, as the Board of Appeal pointed out, in essence, in paragraph 59 of the contested decision, and as EUIPO has also noted, there are books and handbooks containing three-dimensional images, be it because they have three-dimensional pages or because they use graphical effects to give an impression of three-dimensionality.
71      More generally, the use of so-called ‘3D’ printers allows images to be obtained that, despite appearing on paper and therefore having two physical dimensions, appear to the eye to be three-dimensional.
72      Those considerations provide answers to the applicant’s specific arguments relating to ‘printed matter’, ‘paper articles’ and ‘printed publications’, which do not have a sufficiently direct and specific link to the concept of three-dimensionality.
73      Consequently, the Board of Appeal was entitled to rely on general reasoning with regard to the descriptive nature of the goods in the sixth and seventh groups.
(7)    The goods in the eighth group
74      With regard to the goods in the eighth group, namely ‘stationery’, the Board of Appeal limited its consideration of these to paragraph 62 of the contested decision, in which it did no more than note that pencils and pens can be ‘3D’ and that office supplies and stationery sets can be designed in a ‘3D’ style. In the absence of any other details in the contested decision in that regard, it must be held that that decision does not develop sufficiently its reasoning in order to explain how the sign at issue is descriptive in respect of those articles.
75      Thus, it must be concluded that the contested decision does not contain sufficient reasoning in respect of the goods in the eighth group, and therefore that ground for complaint of the applicant is well founded with regard to those goods.
(c)    Ground for complaint regarding the registration of a sign containing the element ‘3D’ for goods in Classes 9 and 10
76      The applicant claims that EUIPO registered mark No 9524562, which consists of a figurative sign made up of a number ‘3’ and an upper-case letter ‘d’, for goods in Classes 9 and 10, which are fully comparable to those at issue in the present case.
77      EUIPO disputes the applicant’s arguments.
78      It must be noted that, according to case-law, the decisions concerning the protection of signs as EU trade marks which the Boards of Appeal take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. The legality of those decisions must therefore be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71).
79      Furthermore, while it is true that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73), it remains nonetheless the case that those principles must be reconciled with compliance with the law. Consequently, a person who opposes the refusal to register a trade mark cannot rely, to his advantage, on a possibly unlawful act committed for the benefit of someone else in order to secure an identical decision (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76).
80      In any event, the precedent relied on by the applicant relates not to a decision of a Board of Appeal, but to that of a lower EUIPO body, which, according to case-law, cannot bind the Board of Appeal (see judgment of 26 November 2015, Nürburgring v OHIM — Biedermann (Nordschleife), T‑181/14, not published, EU:T:2015:889, paragraph 44 and the case-law cited).
81      In those circumstances, the present ground for complaint must be rejected.
(d)    Conclusion on the first plea in law
82      In the light of the findings set out above, it has to be concluded that the first plea in law must be rejected, with the exception of the second ground for complaint in so far as it refers to the goods in the eighth group. Thus, with regard to the other goods, the Board of Appeal properly applied the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009.
83      Given that, in accordance with settled case-law, a single absolute ground for refusal suffices to justify a refusal to register a sign (see, to that effect, judgment of 20 July 2017, Windfinder R&L v EUIPO (Windfinder), T‑395/16, not published, EU:T:2017:530, paragraph 48 and the case-law cited), it is necessary to consider the applicant’s second plea in law only with regard to the goods in the eighth group, that plea being ineffective in respect of the other goods.
2.      Second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
84      The applicant claims that the Board of Appeal was wrong to find that the sign at issue is devoid of distinctive character with respect to the goods concerned. That sign, it argues, does not describe a characteristic of those goods and, in particular on account of its unusual and remarkable figurative elements, is capable of identifying the commercial origin of those goods.
85      EUIPO responds that the Board of Appeal was right to find that the figurative elements of the sign at issue are simple and banal and that they therefore cannot counterbalance the descriptiveness of the sign in order to make it capable of identifying the origin of the goods concerned.
86      It must be held that, in paragraph 70 of the contested decision, the Board of Appeal referred to the settled case law according to which a sign that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is, for that reason, necessarily devoid of distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) of Regulation No 207/2009 (see, to that effect, judgment of 14 June 2007, Europig v OHIM (EUROPIG), T‑207/06, EU:T:2007:179, paragraph 47 and the case-law cited). In paragraph 71 of the same decision, the Board of Appeal noted, in essence, that a mark that would simply be seen as descriptive cannot, as such, perform the essential function of a trade mark, namely that of identifying the origin of the goods or services to which it refers, thereby enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition. In paragraph 72 of the contested decision, the Board of Appeal summarised the viewpoint that it had developed previously, according to which the sign at issue simply informs the public that the goods concerned have a three-dimensional effect or that they can reproduce a three-dimensional effect.
87      It is in the light of that reasoning that the Board of Appeal concluded in paragraph 73 of the contested decision that ‘[t]hus, the sign applied for also lacks any distinctive character and also falls foul of Article 7(1)(b) [of Regulation No 207/2009], not only because a descriptive mark necessarily also lacks distinctiveness [...], but also because, as mentioned above, it is incapable of performing the essential function of a trade mark, namely of identifying the origin of the goods concerned’.
88      In that respect, it must be noted that the wording of paragraph 73 is, admittedly, ambiguous, as it appears to base the lack of distinctive character of the sign at issue on two independent considerations, namely, first, its descriptive character with regard to the goods referred to and, second, its inability to perform the essential function of the mark.
89      However, it must be pointed out that the paragraph in question begins with the word ‘thus’, which indicates that the Board of Appeal is basing its conclusions on the findings which it made in the preceding paragraphs of the contested decision dealing with the application of Article 7(1)(b) of Regulation No 207/2009, which, as follows from paragraph 86 above, refer only to the fact that a mark that is descriptive is, for that very reason, incapable of performing its essential function. Further, it must be noted that the clause in paragraph 73 of the contested decision relating to the inability of the sign at issue to perform the essential function of a trade mark contains the phrase ‘as mentioned above’. That phrase can refer only to the findings of the Board of Appeal summarised in paragraph 86 above.
90      In such circumstances, paragraph 73 of the contested decision must be interpreted as meaning that, in essence, the Board of Appeal did no more than to apply the principle, recognised in settled case-law and just recalled by the Board of Appeal, that descriptive signs are deemed to be incapable of performing the essential function of trade marks (see judgment of 17 January 2012, Hamberger Industriewerke v OHIM (Atrium), T‑513/10, not published, EU:T:2012:8, paragraph 11 and the case-law cited).
91      It follows that, to the extent to which the sign at issue is not descriptive with regard to the goods in the eighth group (see paragraphs 74 and 75 above), the grounds that allowed the Board of Appeal to find that that sign was devoid of distinctive character with regard to those goods are misconceived.
92      In addition, even if it were to be assumed that the last clause of paragraph 73 of the contested decision can be interpreted differently from the manner in which it is interpreted in paragraph 88 above, it must be pointed out that the Board of Appeal has not explained the reasons, other than those relating to descriptive character, why the sign at issue is devoid of distinctive character.
93      Although it is true that, as follows from the examination of the applicant’s first ground for complaint in the context of the first plea in law, the figurative elements of the sign at issue are not striking and do not render the verbal element ‘3D’ indiscernible, but rather strengthen it, all of that reasoning is based on the assumption that that verbal element is descriptive, and therefore is not distinctive, in respect of the goods referred to. As it is established that that is not the case with regard to the goods in the eights group, it must be concluded that the sign at issue, composed of a combination of a number and a letter, that does not describe those goods, and enhanced with figurative elements, does have the minimum distinctive character necessary not to offend the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 in respect of those goods.
Costs
94      Under Article 134(3) of the Rules of Procedure, the parties are to bear their own costs where each party succeeds on some heads and fails on others. In the present case, since the contested decision must be annulled only in part, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 April 2017 (Case R 1502/2016-2) in respect of ‘stationery’ goods which fall within Class 16 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;
2.      Dismisses the action as to the remainder;
3.      Orders each party to bear its own costs.
Berardis
Papasavvas
Spineanu-Matei
Delivered in open court in Luxembourg on 19 June 2018.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.