JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
7 October 2015 (*)
(Community trade mark — Application for a three-dimensional Community trade mark — Shape of a smiley with heart-shaped eyes — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)
In Case T‑656/13,
The Smiley Company SPRL, established in Brussels (Belgium), represented by A. Freitag and C. Albrecht, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos and A. Folliard-Monguiral, acting as Agents,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 8 October 2013 (Case R 997/2013-4) concerning an application for registration as a Community trade mark of a three-dimensional sign comprising the shape of a smiley with heart-shaped eyes,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 10 December 2013,
having regard to the response lodged at the Court Registry on 24 February 2013,
further to the hearing on 5 March 2015,
gives the following
Judgment
Background to the dispute
1        On 25 September 2012, the applicant, The Smiley Company SPRL, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the following three-dimensional sign:
3        When filing the application for registration, the applicant described the mark applied for as a three-dimensional mark.
4        The goods in respect of which registration was sought are in Classes 29 and 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 29: ‘Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats’;
–        Class 30: ‘Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice’.
5        On 24 September 2012, the examiner informed the applicant of his objections to the registration of the mark applied for as regards the following products: ‘Preparations made from cereals, bread, pastry and confectionery’.
6        By letter of 25 January 2013, the applicant responded to those objections.
7        By decision of 5 April 2013, the examiner rejected the application for registration in respect of the goods referred to in paragraph 5 above, on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
8        On 30 May 2013, the applicant filed a notice of appeal with OHIM against the examiner’s decision.
9        By decision of 8 October 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed that appeal.
10      In reaching that decision, the Board of Appeal took the view that the goods at issue were basic foodstuffs aimed at the average consumer, who is deemed to be reasonably well informed, observant and circumspect. The representation of the sign applied for shows the shape of the goods themselves, which consists of a circular three-dimensional shape which features two heart-shaped holes arranged next to each other above a curved line with both ends pointing upwards. The shape thus created corresponds, in the view of the Board of Appeal, to a smiley face. The Board of Appeal took the view that the circular shape was a very basic one which was commonly used for the goods at issue. All the rejected goods are commonly offered in basic geometric shapes, including circles, with a wide range of decorative elements used as adornments, such as smiling faces and hearts, which are widely used to transmit positive feelings. Thus, the relevant public will perceive the mark applied for either as a mere decorative element performing an ornamental or aesthetic function or as a laudatory element emphasising the positive characteristics of the products. The sign will not be perceived as an indication of origin. According to the Board of Appeal, the examples of biscuits, confectionaries and breakfast cereal submitted by the applicant are insufficient to establish the distinctiveness of the sign applied for. With regard to the applicant’s argument that similar signs have been registered in the past, the Board of Appeal takes the view, essentially, that previous decisions are not binding on OHIM.
Forms of order sought by the parties
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of the action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.
14      It is of the view that the Board of Appeal wrongly found that the mark applied for did not possess the minimum degree of distinctiveness for the goods ‘Preparations made from cereals, bread, pastry and confectionery’.
15      The Board of Appeal examined ‘circles’, ‘smiling faces’ and ‘hearts’ in a general way, without examining the specific shape at issue. Examining the mark applied for as a whole, however, reveals a round, smiling face with stylised, heart-shaped eyes, which personifies the goods at issue in a cute and funny way and creates a surprising, memorable impression on the public, which enables it to perceive the sign in question as a designation of commercial origin.
16      The applicant adds that the Board of Appeal erred in holding that a smiling face — solely on the ground that it was commonly used — would be perceived as a mere decorative element fulfilling ornamental or aesthetic purposes, or as a purely appreciative element emphasising the positive characteristics of the products, their good taste and their quality. That perception implies that signs composed of a smiling face are generally not distinctive. However, according to OHIM’s practice, emoticons possess sufficient distinctiveness. In support of that argument, the applicant submits a list of 32 signs representing round faces expressing various emotions and which have been registered as figurative marks. As the criteria for assessing the distinctive character of a three-dimensional mark cannot be stricter than those that apply to other categories of mark, there is no reason to subject the sign for which registration is sought in this case to a different assessment.
17      Moreover, several almost identical three-dimensional signs have already been registered for similar goods by OHIM. The sign applied for being even more particular than the previously-registered signs, a different assessment of its distinctiveness would be unjustifiable. At the hearing, the applicant added that the contested decision therefore breached the principle of non-discrimination as well as its legitimate expectations.
18      Last, the shape applied for clearly differs from the other shapes offered on the EU market. Whereas OHIM did not provide any example to the contrary, the applicant submitted a list of examples of common shapes, offered on the market in relation to the goods which were rejected, none of which contain heart-shaped eyes or a smiling face. In particular, the shapes typically used for bread depart significantly form the mark applied for.
19      OHIM disputes the applicant’s arguments.
20      It should be noted that, pursuant to Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are to be refused registration.
21      For a trade mark to possess distinctive character, for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods in respect of which registration has been sought as originating from a particular undertaking, and thus to distinguish those goods from the goods of other undertakings (see judgments of 29 April 2004 in Henkel v OHIM, C‑456/01 P and C‑457/01 P, ECR, EU:C:2004:258, paragraph 34 and the case-law cited, and 11 April 2014 in Olive Line International v OHIM (OLIVE LINE), T‑209/13, EU:T:2014:216, paragraph 18 and the case-law cited).
22      A minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 inapplicable (judgment of 14 March 2014 in Lardini v OHIM (Affixing of a flower to a collar), T‑131/13, EU:T:2014:129, paragraph 16).
23      That distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been sought and, second, by reference to the perception of the relevant public, which consists of average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect (see judgments in Henkel v OHIM, cited in paragraph 21 above, EU:C:2004:258, paragraph 35, and OLIVE LINE, cited in paragraph 21 above, EU:T:2014:216, paragraph 19).
24      According to established case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see judgment in OLIVE LINE, cited in paragraph 21 above, EU:T:2014:216, paragraph 20 and the case-law cited).
25      None the less, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the goods themselves, 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 designates. 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 distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see judgment in OLIVE LINE, cited in paragraph 21 above, EU:T:2014:216, paragraph 21 and the case-law cited).
26      In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. Only a mark 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 that provision. Therefore, where a three-dimensional mark is constituted by the shape of the product for which registration is sought, the mere fact that that shape is a variant of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (see judgment in OLIVE LINE, cited in paragraph 21 above, EU:T:2014:216, paragraph 22 and the case-law cited).
27      As part of that assessment, the overall impression given by the mark must be considered. This does not mean, however, that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgment in OLIVE LINE, cited in paragraph 21 above, EU:T:2014:216, paragraph 30 and the case-law cited).
28      Moreover, in so far as the applicant claims that the trade mark applied for is distinctive, notwithstanding the analysis of the Board of Appeal based on practical experience acquired generally from the marketing of popular consumer goods, the onus is on it to provide specific and substantiated evidence that the trade mark applied for has distinctive character, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 16 January 2014 in Steiff v OHIM (Metal button in the middle section of the ear of a soft toy), T‑433/12, EU:T:2014:8, paragraph 22 and the case-law cited).
29      Similarly, it is important to point out that novelty or originality are not relevant criteria in the assessment of the distinctive character of a mark. Accordingly, for a three-dimensional mark to be registered, it is not enough that it is original, but it must differ substantially from the basic shapes of the goods in question, commonly used in trade, and not look like a mere variant of those shapes. Last, it is not necessary to provide evidence of the usual character of the shape in trade to establish the lack of distinctive character of the mark applied for (see judgment in Metal button in the middle section of the ear of a soft toy, cited in paragraph 28 above, EU:T:2014:8, paragraph 33 and the case-law cited).
30      It is in the light of those considerations that the applicant’s arguments must be examined.
31      In the first place, it must be found that the applicant’s argument that the Board of Appeal did not assess the mark applied for as a whole has no factual basis. Although the Board of Appeal started by examining the individual elements of the mark applied for, it is clearly indicated in the contested decision, particularly paragraphs 14 to 16 thereof, that it then examined the distinctive character of the sign at issue as a whole. Such an approach is entirely consistent with the case-law cited in paragraph 27 above.
32      Accordingly, in paragraph 14 of the contested decision, the Board of Appeal categorised the ‘shape’ created by the elements comprising the mark applied for as a smiley face. In paragraph 15 of the contested decision, it is stated that ‘[t]he sign will be perceived by the relevant public either as a mere decorative element fulfilling ornamental or aesthetic purposes, or as purely laudatory, emphasising the positive characteristics of the products … rather than as an indication of origin’. Similarly, it is apparent from paragraph 16 of that decision that ‘the heart-shape of the smiley’s eyes … does not render the sign distinctive, but will be perceived as purely ornamental’. In reasoning in that manner, it is the mark applied for taken as a whole to which the Board of Appeal referred in its examination, when it used the terms ‘shape’ and ‘sign’, and not its constituent elements.
33      In the second place, with regard to the assessment of whether the mark at issue has distinctive character, it is important to point out, first of all, that the applicant has not disputed the finding, in paragraph 13 of the contested decision, that ‘the goods at issue [were] basic foodstuffs aimed at the average consumer who is deemed to be reasonably well informed, observant and circumspect’.
34      Next, it should be noted that the distinctive character of the mark applied for cannot simply be inferred from the possible distinctiveness of a number of figurative marks registered by the applicant as Community trade marks. Since the mark applied for is a three-dimensional sign which may coincide with the appearance of the goods in question, it needs to be assessed whether it departs significantly from the norm or customs of the sectors of preparations made from cereals and the bakery, pastry and confectionery sectors and thereby fulfils its essential function of indicating origin (see paragraphs 24 to 26 above).
35      In that regard, as is clear, in essence, from paragraphs 15 and 16 of the contested decision, consumers who are used to a very wide variety of goods such as the ones at issue, and the shapes and decorations of such goods, do not perceive those latter elements as an indicator of origin (see, to that effect, judgment in OLIVE LINE, cited in paragraph 21 above, EU:T:2014:216, paragraph 21 and the case-law cited). Neither a round shape decorated, for example, with curve- or heart-shaped features, holes or reliefs nor the shape in question considered as a whole, representing a smiling face with heart-shaped eyes, exhibits any particularity or significantly departs from the customs of the sectors concerned.
36      The constituent elements of the mark applied for taken individually and the shape created taken as a whole will be perceived by the relevant consumers as possible — or even common — variants of the presentation and decoration of the designated goods.
37      The smiley shape of the goods in question could also be intended to convey positive feelings or affection where such goods are offered, or, as the Board of Appeal states, to communicate a positive message about the goods in question or to arouse favourable opinion regarding their properties and qualities.
38      Nevertheless, it cannot be accepted that, beyond their decorative, emotive or laudatory effect, average consumers, who are reasonably well informed, observant and circumspect, will assign the sign in question an identificatory function as to the origin of the goods concerned. Given the abundance of shapes in the sectors in question, the mark applied for is not such as to indicate commercial origin (see, by analogy, judgment of 6 July 2011 in Timehouse v OHIM (Shape of a watch with jagged edges), T‑235/10, EU:T:2011:331, paragraph 31).
39      That finding is supported by the case-law according to which a mark applied for consisting of a chocolate shape, the upper face of which represented an animal, is not separate from all the shapes existing in that sector to such an extent that it specifically draws the consumer’s attention. The consumer will see only a decorative configuration; he will not however accord particular attention to it or go to the trouble of analysing it (judgment of 17 December 2010 in Storck v OHIM (Shape of a chocolate mouse), T‑13/09, EU:T:2010:552, paragraph 32). It follows, moreover, from the judgment of 30 April 2003 in Axions and Belce v OHIM (Brown cigar shape) (T‑324/01 and T‑110/02, ECR, EU:T:2003:123, paragraph 35), that, in relation to confectionery and pastry goods, average consumers do not subject the shape of the products concerned to close analysis, but accord them only fleeting attention. The same is true in the sectors of preparations made from cereals and the bakery sector, products which consumers are also used to seeing with a wide variety of shapes and decorations (see paragraph 35 above), with the result that they will not perceive the sign applied for as an identification of commercial origin.
40      Last, while the applicant argues specifically that bread in the shape of the mark applied for would create a surprising impression and that it would be distinguishable from shapes typically found on the market, it puts forward no evidence to that effect. However, in so far as it disputes the findings of the Board of Appeal based on practical experience acquired generally from the marketing of popular consumer goods, the onus is on it to provide specific and substantiated evidence that the trade mark applied for has an intrinsic distinctive character (see paragraph 28 above). In any event, while it is true that the most common shapes of bread, a food staple, are not decorated, or are less so than preparations made from cereals and pastry and confectionary goods, the fact remains that the existence of numerous types of abundantly decorated bread on the market is common knowledge and consumers are used to it.
41      The Board of Appeal was therefore correct to find that the sign at issue did not have distinctive character in respect of preparations made from cereals, bread, pastry and confectionery.
42      Further, the argument put forward by the applicant at the hearing, that the goods at issue will not necessarily come in the shape of the sign applied for, cannot succeed. It is sufficient that it be possible for the sign applied for to coincide with the shape of the goods at issue (see, to that effect, judgment of 16 September 2009 in Alber v OHIM (Hand grip), T‑391/07, EU:T:2009:336, paragraph 55). In that regard, it is also important to note that, for a mark to be registered, it must differ substantially from the basic shapes of the goods in question, commonly used in trade, and not look like a mere variant of those shapes. It is clear from the above that the sign applied for is sufficiently similar to other common shapes which are thus likely to be used for the goods at issue. After all, it is clear from the application, and in particular from point 16 thereof, that the applicant intends to offer the goods at issue in the shape of the mark applied for.
43      In the third place, with regard to the applicant’s argument alleging that OHIM has already registered similar or almost identical three-dimensional marks, it should be noted that OHIM 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 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 73, and order of 12 December 2013 in Getty Images (US) v OHIM, C‑70/13 P, EU:C:2013:875, paragraph 41).
44      In the light of those two principles, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not (see judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 43 above, EU:C:2011:139, paragraph 74 and the case-law cited, and order in Getty Images (US) v OHIM, cited in paragraph 43 above, EU:C:2013:875, paragraph 42).
45      That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 43 above, EU:C:2011:139, paragraphs 75 and 76 and the case-law cited; order in Getty Images (US) v OHIM, cited in paragraph 43 above, EU:C:2013:875, paragraph 43; and judgment of 16 October 2014 in Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, ECR, EU:T:2014:891, paragraph 36).
46      Moreover, for reasons of legal certainty and, specifically, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 43 above, EU:C:2011:139, paragraph 77, and order in Getty Images (US) v OHIM, cited in paragraph 43 above, EU:C:2013:875, paragraph 44).
47      Furthermore, according to the case-law of the Court of Justice, the considerations set out in paragraphs 43 to 46 above apply even if the sign in respect of which registration is sought as a Community trade mark is composed in a manner identical to that of a mark in respect of which OHIM has already approved registration as a Community trade mark and which relates to goods or services identical or similar to those in respect of which registration of the sign in question is sought (order in Getty Images (US) v OHIM, cited in paragraph 43 above, EU:C:2013:875, paragraph 45).
48      In the present case, it is clear from the examination conducted in paragraphs 33 to 41 above that the Board of Appeal was right to find, on the basis of a full examination and having regard to the perception of the relevant public, that the application for a Community trade mark submitted by the applicant was rendered inadmissible by the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009. Consequently, pursuant to the case-law cited in paragraphs 43 to 47 above, that finding cannot be called into question by virtue of the mere fact that the Board of Appeal did not follow OHIM’s decision-making practice in the present case (see, to that effect, judgment in GRAPHENE, cited in paragraph 45 above, EU:T:2014:891, paragraph 37 and the case-law cited). Accordingly, and for the same reasons, the specific complaint alleging breach of the principle of non-discrimination and of legitimate expectations must also be rejected. The Court points out in particular that, regard being had to the reasons set out in paragraphs 43 to 47 above, OHIM’s earlier decisions cannot give rise to legitimate expectations.
49      Accordingly, the action must be dismissed.
Costs
50      Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders The Smiley Company SPRL to pay the costs.
Dittrich
Schwarcz
Tomljenović
Delivered in open court in Luxembourg on 7 October 2015.
[Signatures]
* Language of the case: English.