JUDGMENT OF THE GENERAL COURT (Second Chamber)
19 January 2022 (*)
(EU trade mark – Invalidity proceedings – EU three-dimensional mark – Shape of a boot – Declaration of partial invalidity – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – Decisions of EU trade mark courts ruling on an action for a declaration of non-infringement – Res judicata)
In Case T‑483/20,
Tecnica Group SpA, established in Giavera del Montello (Italy), represented by C. Sala, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Söder and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Zeitneu GmbH, established in Zürich (Switzerland), represented by K. Dumoulin, F. Hagemann, M. Giorcelli and M. Venturello, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 18 May 2020 (Case R 1093/2019‑1), relating to invalidity proceedings between Zeitneu and Tecnica Group,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović (Rapporteur), President, F. Schalin and I. Nõmm, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 31 July 2020,
having regard to the response of EUIPO lodged at the Court Registry on 6 November 2020,
having regard to the response of the intervener lodged at the Court Registry on 28 October 2020,
further to the hearing on 13 September 2021,
gives the following
Judgment
Background to the dispute
1        On 2 August 2011, the applicant, Tecnica Group SpA, filed an application for registration of an EU trade mark 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        Registration as a mark was sought for the following three-dimensional sign:
3        In its application, the applicant described the mark applied for as follows:
‘A three-dimensional trademark consisting of a shoe, the prominent characteristics of which are represented in the overall shape which emerges from the six views thereof attached to the application for registration. The aforesaid overall shape, as a result of these different views, includes the combination of the following distinctive elements: a thin outer sole in an approximately elliptical shape, an intermediate sole of greater thickness than the outer sole, an upper which on its lateral side has two bands which run along its entire length and which are attached externally to the upper and connected to one another approximately at the height of the malleoli, with the band positioned so as to correspond to the heel counter higher than that positioned so as to correspond to the toe cap, a boot shaft reaching a height approximately double that of the upper above the ankle, and having, around half way up its length – thus around two-thirds of the way up the entire boot – a band parallel to the plane of the ground attached to the boot shaft itself and which is in turn characterised by a central band which is wider and two external bands which are narrower, opposite to one another and symmetrical with respect to the aforesaid central band, lacing fastened in ring loops which move up the upper, crossing over at the back of the boot, finishing at the top of the boot shaft. The shoe is symmetrical on a plane perpendicular to the upper, intersecting the aforesaid at the median part of the toe cap and the heel counter. The colours are not claimed.’
4        The goods in respect of which registration of that mark was sought are in Classes 18, 20 and 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose 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 18:      ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; casual bags, handbags, travel baggage, bags for climbers, schoolbags, bags for campers, sport bags, backpacks, suitcases, coin pouches, pouches’;
–        Class 20:      ‘Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; armchairs and divans’;
–        Class 25:      ‘Clothing, footwear, headgear; footwear soles; insoles; heelpieces for footwear; footwear uppers’.
5        The contested mark was registered on 20 March 2012 under the number 10 168 441 in respect of the goods referred to in paragraph 4 above.
6        On 28 July 2014, the intervener, Zeitneu GmbH, brought an action against the applicant before the Tribunale di Venezia (District Court, Venice, Italy) (‘the District Court, Venice’), in its capacity as an EU trade mark court, in order to obtain a declaration of non-infringement, pursuant to Article 96 of Regulation No 207/2009 (now Article 124 of Regulation 2017/1001). By judgment of 22 November 2016, the District Court, Venice, dismissed the action and held that there was a likelihood of confusion between the contested mark and the footwear collections manufactured by the intervener.
7        The judgment of the District Court, Venice, was confirmed by the Corte d’appello di Venezia (Court of Appeal, Venice, Italy) (‘the Court of Appeal, Venice’) by a judgment which it delivered on 7 March 2019 in its capacity as an EU trade mark court of second instance.
8        On 17 May 2017, the intervener filed before EUIPO an application for a declaration that the contested mark was invalid in respect of all of the goods referred to in paragraph 4 above on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b), (c), (d) and (e) of that regulation (now Article 7(1)(b), (c), (d) and (e) of Regulation 2017/1001).
9        By decision of 28 March 2019, the Cancellation Division partially upheld the application for a declaration of invalidity, declaring the contested mark invalid in respect of the goods ‘Footwear; footwear soles; insoles; heelpieces for footwear; footwear uppers’ in Class 25 (‘the Cancellation Division’s decision’).
10      On 15 May 2019, the applicant filed a notice of appeal, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision.
11      By decision of 18 May 2020 (‘the contested decision’), the First Board of Appeal of EUIPO confirmed the Cancellation Division’s decision by dismissing the appeal.
12      The Board of Appeal found that the scope of the dispute was limited to the goods in respect of which the application for a declaration of invalidity had been upheld, namely the goods in Class 25, and that it was therefore necessary to ascertain whether the Cancellation Division had been right in upholding the application for a declaration of invalidity based on Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) of that regulation. Furthermore, the Board of Appeal took the view that the further evidence which the applicant and the intervener had submitted at the stage of the appeal was admissible.
13      The Board of Appeal found, in essence, that, for the relevant public, which was that in all the Member States and which displayed an average level of attention, since footwear were common goods, the three-dimensional sign did not depart very significantly from the mass of after-ski boots and concluded that the contested mark was devoid of any distinctive character. First of all, the Board of Appeal examined the applicant’s argument relating to imitations of its product and endorsed the finding that the widespread copying of the contested mark argued against acquired distinctiveness. Next, it found that the constituent elements of the contested mark, taken individually, and the shape created taken as a whole would be perceived by the relevant consumers as possible, or even common, variants of the presentation and decoration of the goods at issue and that the contested mark was similar to other common shapes which were likely to be used with regard to the goods at issue. Lastly, as regards the decisions taken by the District Court, Venice, and the Court of Appeal, Venice, the Board of Appeal found that it was obliged to consider them but that, first, the EU trade mark regime applied independently of any national system and, secondly, those decisions related exclusively to an action for a declaration of non-infringement and not to the validity of the contested mark.
Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
15      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
16      The applicant relies on five pleas in law, the first three of which allege infringement of Articles 123 and 124 of Regulation 2017/1001 and infringement of the principles of res judicata, of legality, of equal treatment, of sound administration and of the protection of legitimate expectations, the fourth of which alleges infringement of Article 127 of Regulation 2017/1001 and the fifth of which alleges infringement of Article 7(1)(b) of Regulation 2017/1001 and of Article 7(3) of that regulation.
The applicable law
17      It must be pointed out at the outset that, given the date on which the application for registration in question was filed, namely 2 August 2011, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
18      Since the relevant substantive provisions which are applicable in the present case are identical in the versions resulting from Regulation No 207/2009 and Regulation 2017/1001 respectively, the fact that the parties referred to the provisions of the latter regulation has no bearing for the purposes of the present proceedings and their arguments must be interpreted as being based on the relevant substantive provisions of Regulation No 207/2009 (judgment of 5 October 2020, nanoPET Pharma v EUIPO – Miltenyi Biotec (viscover), T‑264/19, not published, EU:T:2020:470, paragraph 23). In particular, it must be held that the fifth plea put forward by the applicant alleges infringement of Article 7(1)(b) and Article 7(3) of Regulation No 207/2009.
19      Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed, according to the dates of the events concerned, by the procedural provisions of Regulation No 207/2009 and Regulation 2017/1001. In particular, Article 63(3) and Articles 123, 124 and 127 of Regulation 2017/1001, which are relied on in the context of the first four pleas, were applicable to the procedure followed before the Board of Appeal. Those provisions are, respectively, substantially identical to Article 56(3) and Articles 95, 96 and 99 of Regulation No 207/2009, which were applicable to the procedure followed in the context of the action for a declaration of non-infringement brought before the District Court, Venice.
The issue of whether the second part of the fifth plea is admissible
20      EUIPO and the intervener dispute the admissibility of the second part of the fifth plea, relating to the distinctiveness acquired through use of the contested mark, on the ground that that issue was not raised before the Cancellation Division or before the Board of Appeal and that it was not therefore the subject matter of the proceedings before the Board of Appeal.
21      First, it must be pointed out that, according to Article 188 of the Rules of Procedure of the General Court, the pleadings lodged by the parties in proceedings before the General Court may not change the subject matter of the proceedings before the Board of Appeal. The parties in proceedings before the Court do not therefore have the power to alter before that Court the terms of the dispute, as delimited in the respective claims and allegations put forward by the parties to the proceedings before the Board of Appeal. Any line of argument that would require the Court to carry out a review of the legality of the decision of the Board of Appeal which goes beyond the factual and legal context of the dispute as it was brought before that Board of Appeal must be rejected as inadmissible (see judgment of 29 May 2018, Sata v EUIPO – Zhejiang Rongpeng Air Tools (4000), T‑303/17, not published, EU:T:2018:308, paragraph 17 and the case-law cited).
22      Secondly, it is apparent from the second sentence of Article 95(1) of Regulation 2017/1001, which consolidates the Court’s previous case-law (judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraph 28), that, in invalidity proceedings pursuant to Article 59 of that regulation, EUIPO is to limit its examination to the grounds and arguments submitted by the parties (see judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 23 and the case-law cited). It is also apparent from Article 95(1) of Regulation 2017/1001 that it is for the parties to provide the facts and evidence in support of the relief sought (judgment of 11 April 2019, Inditex v EUIPO – Ansell (ZARA TANZANIA ADVENTURES), T‑655/17, not published, EU:T:2019:241, paragraph 37).
23      Moreover, according to Article 52(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid on, inter alia, application to EUIPO, where it has been registered contrary to the provisions of Article 7 of that regulation and, inter alia, of Article 7(1)(b), relating to a lack of any distinctive character. However, under Article 7(3) of Regulation No 207/2009, the absolute grounds set out in Article 7(1)(b) to (d) of that regulation do not preclude the registration of a trade mark if that trade mark has become distinctive in relation to the goods for which registration has been requested in consequence of the use which has been made of it. Similarly, under Article 52(2) of Regulation No 207/2009, where an EU trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d) of that regulation, it may not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
24      The application of those provisions presupposes that, in the context of invalidity proceedings, the proprietor of the contested mark is able to claim, as a defence, that distinctive character has been acquired through use (see, to that effect, judgment of 28 June 2019, Gibson Brands v EUIPO – Wilfer (Shape of a guitar body), T‑340/18, not published, EU:T:2019:455, paragraph 78). It is apparent from the scheme of Article 52(2) of Regulation No 207/2009 that it is for the proprietor of the mark in respect of which a declaration of invalidity is sought to claim that the contested mark has distinctive character through use if that mark is devoid of inherent distinctive character and to produce appropriate and sufficient evidence to prove that that mark has acquired distinctive character through use (see, to that effect, judgment of 29 March 2019, All Star v EUIPO – Carrefour Hypermarchés (Shape of a shoe sole), T‑611/17, not published, EU:T:2019:210, paragraph 157 and the case-law cited).
25      In the present case, as the applicant admitted in its answers to the questions put to it at the hearing, it did not expressly claim, before the Board of Appeal, that the mark at issue had, for the purposes of Article 7(3) of Regulation No 207/2009 or Article 52(2) of that regulation, acquired distinctive character through use.
26      It is true that, as it stated in its answers to the questions put to it at the hearing, the applicant claimed several times in its statement of grounds for the appeal before the Board of Appeal that the contested mark enjoyed wide recognition and had a substantial reputation and provided a number of items of evidence to that end, including, principally, the decisions of the District Court, Venice, and the Court of Appeal, Venice, but also several licence agreements and documents referring to the use of the product by celebrities.
27      However, those items of evidence alone, which are intended only to prove that the mark at issue has a reputation, do not allow the inference to be drawn that the applicant validly relied on Article 7(3) of Regulation No 207/2009 or Article 52(2) of that regulation in the context of the proceedings before the Board of Appeal.
28      As the applicant has, moreover, stated in its written pleadings and at the hearing, the examination with regard to reputation, which was carried out by the District Court, Venice, and the Court of Appeal, Venice, comes within the scope of Article 8(5) or Article 9(1)(c) of Regulation No 207/2009 and thus within the scope of the assessment of the relative grounds for refusal and differs from the examination with regard to acquired distinctiveness for the purposes of Article 7(3) and Article 52(2) of that regulation, which comes within the scope of the assessment of the absolute grounds for refusal. In particular, the requirements with regard to proof of reputation and of distinctive character acquired through use are not the same, particularly from a territorial standpoint. As regards reputation, it is sufficient that that reputation is proved in a substantial part of the territory of the European Union (see, to that effect, judgment of 6 October 2009, PAGO International, C‑301/07, EU:C:2009:611, paragraph 27).
29      By contrast, in the light of the unitary character of the EU trade mark, in the absence of inherent distinctive character, distinctive character acquired through use, which means that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking because of the mark, must be proved throughout the territory of the European Union and not only in a substantial part or the majority of the territory of the European Union (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 76 and 78 and the case-law cited). Consequently, although such proof may be produced globally for all the Member States concerned or separately for different Member States or groups of Member States, it is not, however, sufficient for the party on which the burden of proof lies to confine itself to producing evidence of such acquired distinctiveness that does not cover part of the European Union, even a part consisting of only one Member State (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 83 and 87).
30      It is not apparent from the case file that the applicant sought to establish before the Board of Appeal, by means of the production of the decisions of the District Court, Venice, and the Court of Appeal, Venice, or by means of other evidence relied on in support of the reputation of the mark at issue, or, in any other terms, that the shape of the boot was capable of identifying the product concerned as coming from the applicant with regard to the territory in which a lack of inherent distinctiveness was alleged, namely with regard to the whole of the territory of the European Union.
31      Furthermore, it is important to point out, in that context, that the Cancellation Division expressly stated in its decision that the applicant had not claimed that the contested mark had acquired distinctive character through use, a statement which the applicant did not expressly dispute before the Board of Appeal, as was confirmed by the latter at the hearing.
32      What is more, it is apparent from paragraph 14 of the contested decision that the subject matter of the proceedings before the Board of Appeal was confined to the question of whether the application for a declaration of invalidity of the contested mark could be upheld in so far as it was based on Article 7(1)(b) of Regulation No 207/2009 and in so far as it related to the goods ‘footwear, footwear soles; insoles; heelpieces for footwear; footwear uppers’ in Class 25.
33      Accordingly, the Board of Appeal did not, in the contested decision, examine whether the contested mark had, for the purposes of Article 7(3) or Article 52(2) of Regulation No 207/2009, acquired distinctive character through use. The fact that it stated, in paragraph 68 of the contested decision, that ‘widespread copying of the mark … argues against acquired distinctiveness’ does not call that finding into question. That statement is not part of an examination of distinctive character acquired through use but is intended only as a response, in the context of the examination of the inherent distinctiveness of the contested mark, to the applicant’s argument that the fact that the contested mark had been widely imitated did not call into question the unusual nature of that three-dimensional mark.
34      Consequently, since the applicant did not expressly put forward, as a defence, that the contested mark had, for the purposes of Article 7(3) of Regulation No 207/2009 or Article 52(2) of that regulation, acquired distinctive character through use, that issue was not part of the subject matter of the proceedings before the Board of Appeal.
35      In the light of the case-law set out in paragraph 21 above, the second part of the fifth plea must therefore be dismissed as inadmissible.
The first three pleas, alleging infringement of Articles 123 and 124 of Regulation 2017/1001 and infringement of the principles of res judicata, of legality, of equal treatment, of sound administration and of the protection of legitimate expectations
36      By its first three pleas, the applicant claims, in essence, that the Board of Appeal did not take into account the decisions of the District Court, Venice, and the Court of Appeal, Venice, (see paragraphs 6 and 7 above) and therefore found that the contested mark had no distinctive character, in contradiction to the assessment in those decisions that that mark had distinctive character and a substantial reputation.
37      First, the applicant submits that the contested decision was adopted in infringement of Articles 123 and 124 of Regulation 2017/1001 and in infringement of the principle of res judicata with regard to the decisions of the District Court, Venice, and the Court of Appeal, Venice. It argues in this respect that the Board of Appeal erred in finding that those decisions came from entities which do not belong to the EU trade mark legal system. Furthermore, the applicant states that the Board of Appeal erred in finding that the judgment of the Court of Appeal, Venice, was limited to the situation on the Italian market.
38      Secondly, the applicant submits that, by disregarding the finding of the District Court, Venice, and the Court of Appeal, Venice, according to which the contested mark enjoyed wide recognition and had a reputation, the Board of Appeal infringed the principles of legality, of equal treatment and of sound administration and also the obligation to state reasons for its decisions. It argues that the Board of Appeal infringed its obligation to take into account the decisions already adopted in respect of similar applications.
39      Thirdly, the applicant submit that the contested decision was taken in infringement of the principle of the protection of legitimate expectations, since the decisions of the District Court, Venice, and the Court of Appeal, Venice, had provided it with precise assurances as regards the enhanced distinctiveness and the reputation of the earlier mark.
40      EUIPO and the intervener dispute those arguments.
41      In the first place, in so far as the applicant submits that the Board of Appeal disregarded the force of res judicata attaching to the decisions of the District Court, Venice, and the Court of Appeal, Venice, it is important to point out that Article 63(3) of Regulation 2017/1001 provides that an application for revocation or for a declaration of invalidity is to be inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by EUIPO or by an EU trade mark court as referred to in Article 123 of that regulation, and the decision of EUIPO or that court on that application has acquired the authority of a final decision.
42      Furthermore, it is apparent from the case-law that, in order for decisions of a court of a Member State which is acting as an EU trade mark court to be capable of being binding on EUIPO, they need to be res judicata, which requires that parallel proceedings before that Court and EUIPO must concern the same parties and have the same subject matter and the same cause of action (see, to that effect, judgment of 21 July 2016, Apple and Pear Australia and Star Fruits Diffusion v EUIPO, C‑226/15 P, EU:C:2016:582, paragraph 52).
43      In the present case, it is common ground that a counterclaim for a declaration of invalidity seeking to dispute the validity of the contested mark was not brought before the District Court, Venice, and the Court of Appeal, Venice, but only an application for a declaration of non-infringement. Furthermore, it is important to point out that, under Article 99(1) and (2) of Regulation No 207/2009 (now Article 127(1) and (2) of Regulation 2017/1001) and Article 52(1) of Regulation No 207/2009 (now Article 59(1) of Regulation 2017/1001), the validity of an EU trade mark may not be put in issue in an action for a declaration of non-infringement, since that mark enjoys a presumption of validity, unless a counterclaim has been brought. Moreover, the Court of Appeal, Venice, expressly pointed out that the validity of the contested mark could not be examined in the proceedings which had been brought before it.
44      The decisions of the District Court, Venice, and the Court of Appeal, Venice, do not therefore have the same subject matter as the invalidity proceedings before EUIPO and were not binding on the Board of Appeal. Consequently, the Board of Appeal was right in finding that it could examine the contested mark’s distinctive character without being bound by the assessments of the courts of Venice.
45      Furthermore, in so far as the applicant submits that the Board of Appeal erred in finding that the decisions of the District Court, Venice, and the Court of Appeal, Venice, came from entities which do not belong to the EU trade mark legal system, it must be pointed that it does not mention the paragraphs of the contested decision in which the Board of Appeal set out such a finding. On the contrary, the Board of Appeal specifically pointed out, in paragraph 79 of the contested decision, that those cases dealt with a non-infringement claim.
46      In addition, in so far as the applicant claims that the Board of Appeal erred in finding that the assessments of the District Court, Venice, and the Court of Appeal, Venice, relating to the distinctive character of the contested mark were limited to the territory of Italy, it must be stated that that argument must be rejected as ineffective, since the Board of Appeal correctly found that the assessments of those courts were not, in any event, relevant with regard to the examination of the validity of the contested mark.
47      In the second place, as regards the plea alleging infringement of the principles of equal treatment and of sound administration and also of the obligation to state reasons which stems from them, it is important to point out that, in the light of those principles, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. Furthermore, the application of the principles of legal certainty and of sound administration means that the examination of any application must be stringent and full and be undertaken in each individual case (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74, 75 and 77).
48      First, the Board of Appeal was right in finding that it was not bound, in the context of invalidity proceedings, by the findings relating to the reputation and distinctiveness of the contested mark which were contained in the decisions of the District Court, Venice, and the Court of Appeal, Venice, before which, as EU trade mark courts, only an application for a declaration of non-infringement had been brought.
49      On the one hand, the question of whether the contested mark had a reputation was not relevant with regard to the examination of distinctive character, within the meaning of Article 7(1)(b) of Regulation No 207/2009, which relates solely to the intrinsic characteristics of that mark (see, to that effect, judgment of 14 July 2021, Guerlain v EUIPO (Shape of an oblong, tapered and cylindrical lipstick), T‑488/20, EU:T:2021:443, paragraph 39 (not published)). On the other hand, as is apparent from paragraph 25 above, the applicant did not rely, in the context of the invalidity proceedings, on the distinctive character acquired through use of the contested mark. In any event, as has been stated in paragraph 43 above, the Court of Appeal, Venice, expressly pointed out that the validity of the contested mark could not be examined in the proceedings which had been brought before it. Moreover, as the applicant itself pointed out in its application and at the hearing, the assessments of those courts were made in the context of the analysis of the likelihood of confusion between the contested mark and the product which was the subject of the application for a declaration of non-infringement and in the light of Article 9(1)(c) of Regulation No 207/2009. Such assessments are therefore part of an examination which is quite different from that regarding the validity of the contested mark. As is apparent from paragraphs 28 and 29 above, a reputation within the meaning of Article 8 and Article 9(1)(c) of Regulation No 207/2009 must be distinguished from distinctive character acquired through use, for the purposes of Article 7(3) or Article 52(2) of that regulation. Consequently, the claims of alleged infringement of the principles of equal treatment and of sound administration must be rejected.
50      Secondly, it must be stated that, contrary to what the applicant submits, it is clear from paragraphs 78 and 79 of the contested decision that the Board of Appeal did take into account the decisions of the District Court, Venice, and the Court of Appeal, Venice, and explained the reasons why the findings in those decisions were not relevant in the context of the present case. In particular, the Board of Appeal stated, in paragraph 79 of the contested decision, that the decisions of the District Court, Venice, and the Court of Appeal, Venice, dealt exclusively with a non-infringement claim and not with the validity of the contested mark, with the result that there had been no conclusion regarding the validity of that mark. Consequently, the alleged failure to state reasons has no factual basis.
51      In the third place, in so far as the applicant relies on the protection of legitimate expectations, it is important to point out that, according to settled case-law, the right to rely on such protection extends to any individual who is in a situation in which it is clear that the EU authorities, by giving him precise assurances, have caused him to entertain legitimate expectations. Regardless of the form in which it is communicated, precise, unconditional and consistent information which comes from an authorised and reliable source constitutes such assurances (see, to that effect, judgment of 27 March 2019, Biernacka-Hoba v EUIPO – Formata Bogusław Hoba (Formata), T‑265/18, not published, EU:T:2019:197, paragraph 41 and the case-law cited).
52      In the present case, the fact that the District Court, Venice, and the Court of Appeal, Venice, held in the context of proceedings for a declaration of non-infringement, that the contested mark had a reputation and enhanced distinctiveness cannot constitute precise, unconditional and consistent assurances that that mark could not be annulled on the basis of Article 7(1)(b) of Regulation No 207/2009 in the context of invalidity proceedings. As is apparent from paragraph 43 above, a counterclaim for a declaration of invalidity was not brought before the District Court, Venice, and the Court of Appeal, Venice, with the result that they were required to presume that the contested earlier mark was valid and to hold that that mark had inherent distinctiveness.
53      In the light of all of the foregoing assessments, the first three pleas must be rejected.
The fourth plea, alleging infringement of Article 127 of Regulation 2017/1001
54      In essence, the applicant submits that the Board of Appeal infringed Article 127 of Regulation 2017/1001 and the rules regarding the burden of proof, by carrying out, of its own motion, a fresh examination of the inherent distinctive character of the contested mark and by basing its decision on particulars other than the evidence submitted by the intervener and, in particular, on the facts which had been analysed in the context of the examination process. In that context, the applicant claims that the Board of Appeal did not take into account the additional evidence which had been submitted in the invalidity proceedings. Furthermore, the applicant submits that the Board of Appeal misapplied the rules regarding the burden of proof by finding that the contested mark should be annulled, although it had stated that the evidence submitted by the intervener in support of the application for a declaration of invalidity was irrelevant, undated or was not conclusive. Moreover, the applicant claims that the Board of Appeal infringed the principle of equality of arms, the right to a fair hearing and its rights of defence.
55      EUIPO and the intervener dispute those arguments.
56      In the first place, in so far as the applicant invokes infringement of Article 127 of Regulation 2017/1001, it is clear from the wording of that article that it applies solely to proceedings brought before national courts acting as EU trade mark courts. Article 127 of that regulation therefore neither applies in the context of invalidity proceedings which have been brought before EUIPO nor can it be interpreted as meaning that it precludes EUIPO from being able to re-examine the validity of a mark.
57      In the second place, in so far as the applicant claims that EUIPO carried out, of its own motion, a fresh examination of the inherent distinctive character of the contested mark and took into account evidence other than that which the intervener had provided in support of its application for a declaration of invalidity, it is important to bear in mind that, according to settled case-law, it is apparent from the provisions of Articles 52 and 55 of Regulation No 207/2009 that an EU trade mark is regarded as valid until it has been declared invalid following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration (see judgment of 29 November 2018, Khadi and Village Industries Commission v EUIPO – BNP Best Natural Products (Khadi Ayurveda), T‑683/17, not published, EU:T:2018:860, paragraph 12 and the case-law cited).
58      Consequently, in the context of an application for a declaration of invalidity, it is for the person who has filed that application to invoke before EUIPO the specific facts which call the validity of that trade mark into question (judgment of 13 September 2013, CASTEL, T‑320/10, EU:T:2013:424, paragraph 28, and order of 23 November 2015, Actega Terra v OHIM – Heidelberger Druckmaschinen (FoodSafe), T‑766/14, not published, EU:T:2015:913, paragraph 33). Furthermore, the last sentence of Article 95(1) of Regulation 2017/1001 provides that, in such proceedings, EUIPO is to limit its examination to the grounds and arguments submitted by the parties.
59      Moreover, as is apparent from Article 71(1) of Regulation 2017/1001, in an appeal brought against a decision of the Cancellation Division, the Board of Appeal is competent to assess all the evidence which was submitted before the Cancellation Division. In addition, it is apparent from Article 95(2) of Regulation 2017/1001 that the Board of Appeal is able to take into account evidence which has been submitted for the first time before it.
60      In the present case, first, the Board of Appeal expressly took account, in paragraph 53 of the contested decision, of the fact that, in invalidity proceedings, the examination is limited to the grounds and arguments submitted by the parties.
61      Secondly, in its application for a declaration of invalidity and in its observations before the Cancellation Division, the intervener submitted that the contested mark consisted of a shape of boot which did not depart significantly from the norm or customs of the relevant sector and that numerous boots with a similar shape had been marketed, including prior to 2011. In addition to the evidence and the case-law precedents provided in support of its arguments, the intervener submitted that it was well known that the shape protected by the contested mark was substantially the same as that of the after-ski boots available on the market.
62      Contrary to what the applicant claims, the Board of Appeal did analyse the inherent distinctive character of the contested mark, and in particular the features of that mark in relation to the common norms or customs of the sector, in the light of the evidence which the intervener and the applicant had submitted before the Cancellation Division as well as in the light of the evidence which had been submitted for the first time before the Board of Appeal.
63      Although it is apparent from paragraphs 35 and 37 of the contested decision that the Board of Appeal found that some of the evidence which had been submitted by the intervener was not relevant, the fact remains that it did not reject all of the evidence submitted by the intervener and that it did take it into account in its analysis. It must in particular be pointed out that, in paragraph 55 of the contested decision, the Board of Appeal found that the intervener had identified a number of products resembling the contested mark. It referred, in particular, to exhibits A 13, A 14 and A 15 which had been produced by the intervener and, more generally, to its analysis in paragraphs 35 and 37 of the contested decision. Likewise, in paragraphs 64 and 74 of the contested decision, the Board of Appeal referred to some examples, which had been mentioned by the intervener, of goods marketed under various marks which had a different commercial origin from that of the applicant’s goods.
64      Thirdly, if, as the applicant submits, the Board of Appeal actually took into account particulars other than those provided by the intervener, those particulars consist of results of internet searches, which were obtained via links provided by the parties to the invalidity proceedings, of evidence which was provided by the applicant in the context of the invalidity proceedings and of well-known facts.
65      The presumption of validity of registered trade marks does not preclude EUIPO, in particular as regards the matters put forward by the party challenging the validity of the contested mark, from relying, not only on those arguments and any evidence produced by that party in its application for a declaration of invalidity, but also on well-known facts observed by EUIPO in the context of the invalidity proceedings (see judgment of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 46 and the case-law cited).
66      First of all, the facts referred to in paragraph 64 above were examined by the Board of Appeal in order to ascertain whether the contested mark departed significantly from the norm or customs of the sector and were thus analysed in the light of the arguments and evidence put forward by the intervener, as identified in paragraphs 61 and 63 above.
67      Next, as regards the assessments relating to the after-ski footwear sector, which are contained in paragraphs 65 and 72 of the contested decision, it is important to bear in mind that well-known facts are facts which are likely to be known by anyone or which may be learnt from generally accessible sources (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29). Accordingly, since the statements relating to the overall ‘L’ shape of after-ski boots and to the use of light synthetic materials are facts which are likely to be known by anyone, the Board of Appeal cannot be criticised for having taken such assessments into account in order to reinforce the evidence submitted by the intervener.
68      Lastly, as regards the particulars provided by the applicant, it must be stated that they consist of links to websites and the results of internet searches. First, it must be pointed out that, since those links to websites and results of internet searches were submitted in the context of the invalidity proceedings and were part of the case file before EUIPO, the Board of Appeal cannot be criticised for having taken them into account in order to conclude that the contested mark had no distinctive character, irrespective of the fact that it used those documents to draw a conclusion other than that in support of which they had been provided. Secondly and in any event, according to the case-law of the Court, websites can be categorised as generally accessible sources, provided that the items of information in question are not deemed to be highly technical and may thus constitute well-known facts (see, to that effect, judgment of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 52 and the case-law cited). It follows that, in any event, the Board of Appeal could correctly base its assessment on the links to websites referred to in paragraph 54 of the contested decision, which were straightforward searches on a search engine and did not constitute highly technical information.
69      In the light of the foregoing, it must be held that the Board of Appeal did not carry out a reassessment of its own motion and ex novo, but that it found that the intervener’s claims were reinforced in view of the facts available in the file relating to the invalidity proceedings, including the facts provided by the applicant and well-known facts.
70      Fourthly, in so far as the applicant complains that the Board of Appeal compensated for the lack of adequate evidence by basing its decision on the facts which had been analysed during the registration process, it must be pointed out that it does not state which facts were not invoked by the parties in the context of the invalidity proceedings and were thus supposedly examined by the Board of Appeal of its own motion.
71      At the very most, in paragraph 23 of its application, the applicant refers, without any further explanation, to paragraph 68 of the contested decision, in which the Board of Appeal referred to information which had been communicated by the applicant in the context of the examination procedure, namely the fact that 10% of the boots represented in the evidence that was taken into consideration by the examiner were imitations. First, it must be pointed out that the Board of Appeal did not make any finding on the basis of that specific information and, secondly, that the subsequent reasoning contained in paragraph 68 of the contested decision was intended to respond to the argument that the applicant had put forward in the context of the invalidity proceedings, namely that the contested mark had been the subject of imitations. Consequently, the reference to information which came from the registration procedure in respect of the contested mark does not on its own prove that the Board of Appeal found that that mark was invalid on the basis of arguments and evidence other than those which had been provided by the parties to the invalidity proceedings.
72      In view of the observations contained in paragraphs 57 to 71 above, it is necessary to reject the applicant’s arguments that the Board of Appeal examined the validity of the contested mark of its own motion and ex novo.
73      In the third place, in so far as the applicant claims that EUIPO infringed the principle of equality of arms, the right to a fair hearing and its rights of defence, it must be pointed out that the application does not contain any particulars in support of those claims. However, according to Article 76(d) of the Rules of Procedure, the application must contain a 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.