JUDGMENT OF THE GENERAL COURT (First Chamber)
28 May 2013 (*)
(Community trade mark – Cancellation proceedings – Three-dimensional Community trade mark depicting the shape of a bottle – Absolute grounds for refusal)
In Case T‑178/11,
Voss of Norway ASA, established in Oslo (Norway), represented by F. Jacobacci and B. La Tella, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral and V. Melgar, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Nordic Spirit AB (publ), established in Stockholm (Sweden),
ACTION brought against the decision of the First Board of Appeal of OHIM of 12 January 2011 (Case R 785/2010-1) relating to cancellation proceedings between Nordic Spirit AB (publ) and Voss of Norway ASA,
THE GENERAL COURT (First Chamber),
composed of J. Azizi, President, S. Frimodt Nielsen (Rapporteur) and E. Buttigieg, Judges,
Registrar: T. Weiler, Administrator,
having regard to the application lodged at the Registry of the General Court on 18 March 2011,
having regard to the response lodged at the Court Registry on 5 July 2011,
having regard to the reply lodged at the Court Registry on 19 October 2011,
further to the hearing on 5 March 2013,
gives the following
Judgment
Background to the dispute
1        On 3 December 2004, the applicant, Voss of Norway ASA, obtained registration under No 3156163 of the three-dimensional Community trade mark reproduced below (‘the contested trade mark’) from the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)):
2        The goods in respect of which the trade mark is registered are in Classes 32 and 33 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 32 – Beers; non-alcoholic drinks, water;
–        Class 33 – Alcoholic beverages (except beers).
3        On 17 July 2008, Nordic Spirit AB (publ) (‘the cancellation applicant’) applied for a declaration of invalidity in respect of the contested trade mark on the basis, first, of Article 51(1)(a), together with Article 7(1)(a), (b), (c), (d) and (e)(i), (ii) and (iii) of Regulation No 40/94 (now respectively Article 52(1)(a) and Article 7(1)(a), (b), (c), (d) and (e)(i), (ii) and (iii) of Regulation No 207/2009), and, second, of Article 51(1)(b) of Regulation No 40/94 (now Article 52(1)(b) of Regulation No 207/2009).
4        By decision of 10 March 2010, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
5        In essence, the Cancellation Division took the view that only marks departing significantly from the norms of the relevant sector were distinctive. It identified the relevant sector as being that of beverages and containers for beverages. It held that cylindrical boxes were used as containers for bottles, not for beverages themselves, that the two examples of glass cylindrical bottles submitted by the cancellation applicant were not accompanied with information as to their market presence, and that the contested trade mark was different from aluminium cans. The Cancellation Division indicated that its three members ‘were not aware of the market presence in the Community of bottles used for selling beverages shaped like [the contested trade mark] in May 2003’ and that they were instead familiar with bottles having a curved shape, either in the middle or the upper part. It concluded that the shape of the contested trade mark was not ‘common’ on the beverages market and that, because of the contrast between the transparent body and the cap, it departed significantly from existing bottles and could, for that reason, function as a trade mark. It rejected the remainder of the complaints put forward by the cancellation applicant.
6        On 6 May 2010, the cancellation applicant brought an appeal before OHIM against the Cancellation Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
7        By decision of 12 January 2011 (Case R 785/2010-1), the First Board of Appeal of OHIM annulled the Cancellation Division’s decision and upheld the application for a declaration of invalidity (‘the contested decision’).
8        The Board of Appeal notes that the contested trade mark was described by the applicant as being a ‘three-dimensional bottle’ and that protection was sought for a bottle, and not just for the picture of a bottle (paragraph 12 of the contested decision). According to the Board of Appeal, that bottle must therefore have a distinctive character in order to qualify for registration (paragraph 15 of the contested decision). However, it also notes that it follows from the case-law that average consumers – in the present case, buyers of alcoholic or non-alcoholic beverages throughout the European Union (paragraph 15 of the contested decision) – do not normally choose a product, or distinguish it from a competitor’s product, merely on the basis of its design or the design of its packaging. On the contrary, they look for verbal or graphic signs – that is, words, names, emblems, devices, images, and so forth – on the product or its packaging that will inform them more reliably about the origin of the product (paragraph 18 of the contested decision). The Board of Appeal is of the view that that case‑law reflects common sense and practical experience as regards consumers’ behaviour in respect of most products, which entails those consumers instinctively looking for a verbal or graphic sign on the product or its container that will tell them about the industrial or commercial origin of the product and then using that sign in order to distinguish that product from identical products made by other undertakings.
9        By contrast, according to the Board of Appeal, consumers will not rely on the outline or shape of a product or its container in order to determine its origin without having been exposed to that outline or shape for a sufficiently long period to have learned to recognise it ‘at a glance’ without even needing to look for a verbal or graphic sign, as in the case of Coca‑Cola bottles (paragraph 19 of the contested decision). The Board of Appeal takes the view that the facts set out above explain why the case-law dealing with the distinctive character of trade marks consisting of the appearance of a product or its container says that ‘it might be more difficult to establish the distinctive character of that typology of marks than for verbal or figurative marks’. It finds that that case-law is ‘based on the well-known fact that very few products are on offer on the market place without any “verbal or graphic signs” [to identify them] and that consumers are not, for that reason, used to [choosing] among unmarked products or packages’ (paragraphs 19 and 20 of the contested decision).
10      According to the Board of Appeal, this applies to the alcoholic and non‑alcoholic beverages market in the European Union, since very few such beverages are in fact on offer at retail in containers which are not marked with any verbal or graphic signs, as the norm of that sector is to place a label on the bottle or to engrave or print a word or figurative mark on its surface. The Board of Appeal is of the view that the sort of branding practices to which the relevant public is being subjected must be taken into consideration when assessing the ability of a sign to function as a trade mark (paragraph 21 of the contested decision).
11      The Board of Appeal states that the fact that beverages such as whisky, mineral water and orange juice ‘are never sold in unmarked bottles but are sold invariably in containers that bear a “verbal or graphic sign” is … a decisive factor in determining whether the unmarked bottle may function, per se, as a trade mark’, which, according to the Board, has been acknowledged in settled case-law (paragraphs 24 to 29 of the contested decision). Thus, according to the Board, in view of the case-law according to which consumers first see bottles in which goods are contained as a means of packaging (judgment in Case T‑129/04 Develey v OHIM (Shape of a plastic bottle) [2006] ECR II‑811), consumers will look at the label on the bottle in order to identify the origin of the product and distinguish it from others (paragraph 22 of the contested decision). Consumers are thus, in its view, able to distinguish between the container of a product and the brand of a product, since manufacturers and retailers have always respected that distinction when offering products on the market (paragraph 23 of the contested decision). The Board is accordingly of the view that, from 2005, the case‑law increasingly clearly recommends that the assessment of the distinctive character of a trade mark which exclusively consists of the design of a product or its packaging should not be carried out in the abstract but with reference to the branding practices prevailing on the relevant market (paragraphs 29 and 30 of the contested decision).
12      The Board of Appeal holds that, in the present case, the applicant’s assertions that the average consumer is, on the contrary, capable of perceiving the shape of the packaging of the goods concerned as an indication of their trade origin, in so far as that shape presents characteristics which are sufficient to hold his attention, are not supported by any evidence. The Board therefore takes the view that those assertions are ‘no longer sufficient … to meet the standards set out by the case‑law [referred to] previously’ inasmuch as they go against practical experience and established branding practices. It also notes that the applicant trade mark does not explain why, if consumers were able to discern trade origin solely on the basis of the shapes of containers, manufacturers would invariably add verbal or figurative signs to those containers. According to the Board of Appeal, they do so because they are in fact unsure whether shapes per se – even when highly original or fanciful – enable consumers to distinguish goods according to their trade origin, and thus function as trade marks (paragraph 31 of the contested decision).
13      Furthermore, the Board of Appeal is of the view that no evidence has been adduced by the applicant to prove that the cancellation applicant was wrong in its contention that bottles of mineral water – or of any other beverage – always bear verbal or figurative signs and that, for that reason, consumers are accustomed to discerning trade origin on the basis of those signs rather than on the basis of the bottle design (paragraph 33 of the contested decision).
14      The Board of Appeal adds that the applicant also did not counter the cancellation applicant’s assertion, supported by evidence, that the former is already marketing mineral water in bottles under the contested trade mark and that those bottles have the name Voss strikingly painted on them. The Board is of the view that, for the average EU consumer, Voss is a distinctive element and will thus be used to distinguishing the applicant’s mineral water from competing products (paragraph 34 of the contested decision).
15      The Board of Appeal also takes the view that, although nothing prevents the applicant from using more than one mark to distinguish its products, it is unlikely that consumers will perceive two separate marks. On the contrary, they will perceive the bottle as a container having a certain design and Voss as the mark of the mineral water. The Board of Appeal accordingly finds that, in the present case, consumers will see only one mark, not two, namely the verbal sign Voss, which is strikingly displayed on the bottle. It further holds that the way in which the applicant is branding its products tends to confirm that it does not rely on the bottle per se as a badge of their origin. It emphasises in this regard that the assertion by the applicant that the average consumer is perfectly capable of perceiving the bottle as the mineral water’s mark ‘would have been more convincing if the bottle bore no Voss mark or if the Voss element was given only marginal importance’ (paragraph 34 of the contested decision).
16      The Board of Appeal concludes that there is no evidence that, on the beverages market, EU consumers are in the habit of inferring trade origin from the shape of the container. On the contrary, the Board is of the view that the available evidence and practical experience suggest that manufacturers of beverages do not expect consumers to infer the trade origin of a product from the appearance of the bottles used but from the two‑dimensional signs (words and/or images) displayed on those bottles (paragraph 35 of the contested decision).
17      Lastly, the Board of Appeal holds that the shape of the bottle in question does not depart significantly from the shape of other containers used for alcoholic or non‑alcoholic beverages within the European Union and is a mere variant thereof (paragraph 36 of the contested decision). It states that the shape in question is a perfect cylinder, that the vast majority of bottles to be found on the market have a cylindrical section, and that consumers naturally expect cylindrical shapes for bottles of alcoholic or non‑alcoholic beverages, even if they are also aware of the existence of non-cylindrical bottles (paragraph 37 of the contested decision). Regarding the lack of a narrow neck, which, according to the applicant, distinguishes its bottle from other commercially available bottles, the Board of Appeal takes the view that this amounts to a variant of the existing shapes and cannot be regarded as a significant divergence. In addition, it holds that it is not even certain from the contested trade mark’s representation that the bottle has no neck, since the cap is not transparent (paragraph 38 of the contested decision). The Board of Appeal also finds that the applicant is wrong to claim that a distinctive feature of its bottle is its non-transparent cylindrical cap – this, the Board of Appeal finds, is hardly distinctive, given that many bottles are sealed with caps which are of a different material and colour from their bodies (paragraph 39 of the contested decision). The Board of Appeal also rejects the applicant’s argument that the bottle’s height/width ratio is distinctive, since it is unlikely, according to the Board, that consumers will perceive the bottle’s proportions as striking (paragraph 40 of the contested decision). Lastly, the Board notes that it has been established that the shape in question has already appeared on the market in the past, although it was abandoned (paragraph 41 of the contested decision).
Procedure and forms of order sought
18      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
19      OHIM contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
Law
20      The applicant puts forward four pleas in law.
21      The first plea alleges infringement of Article 75 of Regulation No 207/2009, in that, in essence, the reasoning adopted by the Board of Appeal, is not part of the grounds of which the applicant was informed and in respect of which the applicant has had the opportunity to present its arguments.
22      The second plea alleges infringement of Article 99 of Regulation (EC) No 207/2009 and of Rule 37(b)(iv) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1, replaced by Regulation No 207/2009) (‘the Implementing Regulation’), in that the Board of Appeal has unduly shifted the burden of proof onto the applicant for the distinctive character of the contested trade mark when it was registered and enjoyed a presumption of validity.
23      The third plea alleges infringement of Article 7(1)(b) of Regulation No 207/2009 and a misinterpretation of the case-law concerning the distinctive character of three-dimensional marks, in that, in the test laid down by the case-law to assess the distinctive character of a three-dimensional trade mark in terms of the packaging of a liquid product where the trade mark is the very appearance of the product, a test which consists in determining whether the mark departs significantly from the norms and customs of the relevant sector, the Board of Appeal substituted another test based on the weight to be given to labels or other branding practices in use in the sector.
24      Lastly, the fourth plea alleges infringement of Article 7(1)(b) of Regulation No 207/2009 and distortion of evidence as regards the significant departure from the norms and customs of the relevant beverages sector, in that the Board of Appeal found incorrectly that the contested trade mark was devoid of distinctive character.
25      At the hearing, however, the applicant indicated that it was withdrawing its first plea.
26      It should be noted, as a preliminary point, that the contested decision is based on two pillars of reasoning which are distinct and independent of one another.
27      In paragraphs 18 to 35 of the contested decision (‘the first pillar’), the Board of Appeal considers, in essence, that it is well known that beverages are almost always sold in bottles, cans or other forms of packaging bearing a label or a verbal or graphic sign, that these are indications which allow consumers to differentiate between the different products on the market and that the applicant has not adduced any evidence in support of its assertions to the contrary.
28      Moreover, in paragraphs 36 to 41 of the contested decision (‘the second pillar’), the Board of Appeal conducts an independent analysis of the distinctive character of the registered trade mark to conclude, in essence, that the applicant’s bottle is not significantly different from the shapes of the other bottles on the market for alcoholic and non-alcoholic beverages and is a mere variant thereof, and that accordingly it does not depart significantly from the norms and customs of the sector. It dismisses the remainder of the arguments put forward by the applicant.
29      When questioned on this point at the hearing, the parties confirmed that the contested decision was based on two distinct and independent pillars of reasoning.
30      Next, it should be noted that the applicant stated at the hearing that its second plea in law was directed solely against the first pillar of the contested decision.
31      Having regard to the circumstances of the present case, it is appropriate to begin with an examination of the third and fourth pleas inasmuch as they are directed against the second pillar of the contested decision.
The third and fourth pleas in law: infringement of Article 7(1)(b) of Regulation No 207/2009 and misinterpretation of the distinctive character of three‑dimensional trade marks, and distortion of the evidence
32      In support of its third plea the applicant submits, in essence, that the Board of Appeal disregarded the case-law and, in so doing, misinterpreted the test applicable to the examination of the distinctive character of three-dimensional signs, which entails an assessment of whether the sign departs significantly from the norms and customs of the sector in terms of the packaging of a liquid product where the sign is the very appearance of the product.
33      By its fourth plea, the applicant disputes, in essence, the Board of Appeal’s finding that the contested trade mark is devoid of distinctive character and considers that its bottle departs significantly from the norms and customs of the sector.
34      OHIM contests the applicant’s arguments.
35      Under Article 4 of Regulation No 207/2009, a Community trade mark may consist of the shape of goods or of their packaging, provided that they are capable of distinguishing the goods of one undertaking from those of other undertakings.
36      Under Article 7(1)(b) of Regulation No 40/94, trade marks which are devoid of any distinctive character are not to be registered.
37      Accordingly, the signs referred to in Article 7(1)(b) of Regulation No 207/2009 are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired the goods to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (Case T‑79/00 Rewe-Zentral v OHIM (LITE) [2002] ECR II‑705, paragraph 26, and Joined Cases T‑79/01 and T‑86/01 Bosch v OHIM (Kit Pro and Kit Super Pro) [2002] ECR II‑4881, paragraph 19).
38      According to settled case‑law, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see, to that effect, Joined Cases C‑344/10 P and C-345/10 P Freixenet v OHIM [2011] ECR I‑0000, paragraph 42 and the case-law cited).
39      That distinctive character must be assessed, first, in relation to the goods or services for which registration of the sign has been applied for and, second, in relation to the perception of the relevant public, which consists of the consumers of those goods or services (see Freixenet v OHIM, paragraph 38 above, paragraph 43 and the case-law cited).
40      In the present case, it is not disputed that the goods covered by the registered trade mark, namely, in essence, alcoholic and non-alcoholic beverages, are everyday consumer goods aimed at end consumers. Nor is it disputed that the relevant public is the average consumer in the European Union who is reasonably well informed and reasonably observant and circumspect (see, to that effect, Joined Cases C‑473/01 P and C‑474/01 P Procter & Gamble v OHIM [2004] ECR I‑5173, paragraph 33, and Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 25).
41      According to equally 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 Freixenet v OHIM, paragraph 38 above, paragraph 45, and the case-law cited).
42      However, when those criteria are applied, account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a verbal or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any verbal or graphic element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a verbal or figurative mark (see Freixenet v OHIM, paragraph 38 above, paragraph 46 and the case-law cited).
43      More specifically, as a liquid product must be in a container in a bottle in order to be marketed, the average consumer will perceive the bottle above all simply as a form of container. A three-dimensional trade mark consisting of such a bottle is not distinctive unless it permits the average consumer of a product of that kind, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product in question from that of other undertakings without any detailed examination or comparison and without being required to pay particular attention (Case C‑218/01 Henkel [2004] ECR I‑1725, paragraph 53, and Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle) [2004] ECR II‑1391, paragraph 24, upheld on appeal in Case C‑286/04 P Eurocermex v OHIM [2005] ECR I‑5797).
44      In those circumstances, 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 Article 7(1)(b) of Regulation No 207/2009 (see Freixenet v OHIM, paragraph 38 above, paragraph 47 and the case-law cited.
45      It is therefore necessary to ascertain whether the mark applied for departs significantly from the norms and customs of the relevant sector.
46      It is apparent from paragraph 12 of the contested decision that the three‑dimensional sign in respect of which the contested trade mark was registered was described by the applicant as a ‘three-dimensional bottle’ and that protection was thus sought for a bottle and not just the picture of a bottle.
47      That three-dimensional sign consists of a cylindrical, transparent container, with a non-transparent cap having the same diameter as the cylinder.
48      Consequently, it is a composite sign, consisting of beverage packaging comprising two components: the cylindrically-shaped base and a non-transparent cap having the same diameter as the cylindrical base.
49      It is therefore necessary, for the purposes of appraising the distinctive character of the three-dimensional sign at issue, to consider it as a whole. That is, however, not incompatible with a separate examination of its different components (Eurocermex v OHIM, paragraph 43 above, paragraphs 22 and 23, and Case T‑194/01 Unilever v OHIM (Ovoid tablet) [2003] ECR II-383, paragraph 54).
50      It should be borne in mind that the Board of Appeal considered, in essence, that the shape of the applicant’s bottle did not depart significantly from the shape of other containers used for beverages in the European Union, but was a mere variant thereof. It observed in that regard that although the shape of the applicant’s bottle was a perfect cylinder, the vast majority of the bottles available on the market had a cylindrical component and that consumers would naturally expect bottles intended to hold beverages to have a cylindrical shape, even if they were aware that there were also non-cylindrical bottles. It also took the view that the lack of narrow neck was a mere variant of the existing shapes and could not be considered to be a significant departure, since it was not even certain that there was no narrow neck, given the representation of the contested trade mark and given that the cap is not transparent. Lastly, the Board of Appeal considered that the cylindrical, non‑transparent cap could hardly be regarded as distinctive, since many bottles are sealed with a cap made of a different material and colour from the body of the bottle (paragraph 36 et seq. of the contested decision).
51      As regards, firstly, the three-dimensional shape of the registered trade mark, it is well known that the vast majority of bottles available on the market have a cylindrical section. Therefore, the average consumer will naturally expect beverage bottles – alcoholic or non-alcoholic – mostly having that shape. Thus, the ‘perfect cylinder’ shape of the applicant’s bottle, although somewhat original, cannot be regarded as departing significantly from the norms and customs of the sector.
52      Next, as regards the non-transparent cap having the same diameter as the bottle itself, that, too, can hardly be considered to depart significantly from the norms and customs of the sector, as it is well known that many bottles are closed with a cap made of a different material and colour from the body of the bottle.
53      Nor can the diameter of the cap, which is the same as the bottle’s and is a mere variant of the existing shapes, be regarded as departing significantly from the norms and customs of the sector, even though it is somewhat original.
54      Consequently, the Board of Appeal’s reasoning in regards to those three assessments is not vitiated by any error.
55      Thus, the contested trade mark is made up of a combination of components, each of which is liable to be in general commercial use for packaging the goods covered by the trade mark application and is therefore devoid of distinctive character in relation to those goods (see, to that effect and by analogy, Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle), paragraph 43 above, paragraph 33)
56      The contested trade mark is thus a mere variant of the basic shape of packaging for those goods, which will not enable the average consumer to distinguish the product in question from those of other undertakings (see, to that effect, Case T‑351/07 Somm v OHIM (Shelter for shade), judgment of 17 December 2008, not published in the ECR, paragraph 27, and Case T-391/07 Alber v OHIM (Hand grip), judgment of 16 September 2009, not published in the ECR, paragraph 60).
57      It is clear, however, from the case-law that the fact that a composite trade mark is made up only of components which are devoid of distinctive character in relation to the goods concerned generally leads to the conclusion that that trade mark, taken as a whole, is devoid of distinctive character. That would not be the case only if concrete evidence, such as, for example, the way in which the various features are combined, were to indicate that the composite trade mark, taken as a whole, is greater than the sum of its parts (see, to that effect, Case T‑305/02 Nestlé Waters France v OHIM (Shape of a bottle) [2003] ECR II‑5207, paragraph 40, and Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle), paragraph 43 above, paragraph 31).
58      There is no indication that such evidence exists in this case. The contested trade mark is characterised by the combination of a three-dimensionally-shaped transparent cylindrical bottle and a non-transparent cap having the same diameter as the bottle itself. However, the manner in which those components are combined in the present case represents nothing more than the sum of the parts which make up the contested trade mark, that is to say, a bottle with a non-transparent cap, as is the case with most bottles intended to serve as containers of alcoholic or non‑alcoholic beverages on the market. That shape is capable of being commonly used, in trade, for the presentation of the products referred to in the application for registration. It follows that nor is the manner in which the components of the composite trade mark at issue here are combined capable of giving it distinctive character (see, to that effect, Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle), paragraph 43 above, paragraph 32).
59      The Board of Appeal therefore made no error in finding that the average consumer in the European Union would perceive the contested trade mark, as a whole, merely as a variant of the shape of the goods for which registration of that trade mark is sought.
60      It follows from all the foregoing that, in paragraph 36 et seq. of the contested decision, the Board of Appeal applied specifically the test established by the case‑law in order to assess the distinctive character of the three-dimensional signs, which involves examining whether the sign departs significantly from the norms and customs of the sector, in terms of the packaging of a liquid product where the sign is the very appearance of the product.
61      It follows that the third plea must be dismissed in so far as it concerns the second pillar of the contested decision.
62      It also follows from the foregoing that the contested trade mark, as perceived by the relevant public, is not capable of individualising the goods covered by that trade mark and distinguishing them from those having another commercial origin. The Board of Appeal was therefore correct in finding that the contested trade mark is devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
63      That conclusion cannot be affected by the other arguments put forward by the applicant.
64      Firstly, the applicant submits that the Board of Appeal distorted the evidence in the file by comparing a cylindrical shape with a cylinder section, since a cylindrical section is, mathematically speaking, an aberration (paragraph 37 of the contested decision).
65      It should also be borne in mind that the Board of Appeal found, in paragraph 37, that ‘[t]he vast majority of bottles that can be found on the market [had] a cylindrical section’.
66      There is, however, nothing to indicate that the Board of Appeal intended, in the contested decision, to construe those words in a mathematical sense to mean a ‘representation of a section of a geometrical shape’. On the contrary, that word should be understood to mean ‘any of the more or less distinct parts into which something is or may be divided or from which it is made up’ as defined in the Oxford Dictionary, in paragraph 37 of the contested decision.
67      The vast majority of bottles have a cylindrical section, even though the bottle, taken as a whole, is not, in particular when the bottle narrows at the top to form the neck. The applicant’s argument must therefore be rejected.
68      Secondly, the applicant submits that the Board of Appeal gave a value to the section of the cylinder, whereas the relevant consumers perceive it only at the end since, before they hold the bottle in their hand, consumers cannot say whether the section is circular, elliptic, square or rectangular. It should be noted, however, that it does not dispute that the shape of the bottle is cylindrical, which is, in reality, the only aspect taken into consideration by the Board of Appeal (see paragraph 65 above) in paragraphs 37 and 38 of the contested decision. The applicant’s argument on this point is accordingly irrelevant.
69      Thirdly, the applicant maintains that the Board of Appeal failed to take account of the fact that the registered trade mark was a transparent cylindrical shape, apart from the cap, which, in its view, creates a contrast with the overall appearance of the bottle. However, it should be noted that, in paragraph 39 of the contested decision, the Board of Appeal observed that ‘[t]he [trade mark] proprietor [argued], furthermore, that a distinctive feature of its bottle [was] that it [ended] with a cylindrical cap which [was] not transparent like the body’, which argument the Board of Appeal went on to reject. It follows that this plea put forward by the applicant lacks a factual basis.
70      Fourthly, the applicant submits that, if the contested trade mark was also common and did not depart significantly from the norms and customs of the sector, the cancellation applicant would have found numerous examples of similar bottles. It did not, however. To support its position that it did not, the applicant produces, in Annex 7 to its application, an extract from an article taken from the Internet in which a design specialist, Mr S., attests to the uniqueness of its bottle.
71      The Board of Appeal was correct, however, in noting that bottles containing alcoholic and non-alcoholic beverages generally had a cylindrical shape and a non-transparent cap – a point not challenged by the applicant – and that the applicant’s bottle was a mere variant of that commonly-used shape.
72      This finding is not affected by the fact that the Board of Appeal did not establish that there were other, similar bottles on the market which were also registered. It should also be noted that, even if the applicant’s bottle is one of a kind, that does not by itself mean that it departs significantly from the norms and customs of the sector and that it therefore has distinctive character.
73      Annex 7 to the application has no bearing on this conclusion and, as correctly pointed out by OHIM, that evidence is in any event inadmissible, since it is an extract from an article from the Internet dated 16 March 2011, i.e., subsequent to the adoption of the contested decision and since documents produced for the first time before the General Court are inadmissible (Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 54).
74      Fifthly, the applicant submits that, in finding that the lack of neck was not a significant departure from other bottles intended to hold beverages (paragraph 38 of the contested decision) and in presuming that the bottle might have a neck under the cap, the Board of Appeal distorted the evidence, since the contested trade mark does not have a neck.
75      It should be noted, first of all, that the applicant argued before the Board of Appeal that its bottle was different from other bottles on the market, which, unlike its bottle, have a diameter which narrows progressively towards the top (paragraph 38 of the contested decision).
76      Next, it should be noted that the Board of Appeal did not assume the existence of a neck, but rather merely found – in the absence of any other description of the bottle, a point not challenged – that since the cap was not transparent, it could not be certain that the bottle had no neck (or even a short one), as maintained by the applicant.
77      Lastly, it found, correctly, that that lack of a neck – as argued by the applicant itself, namely the lack of narrowing towards the top of the bottle and the bottle keeping the same diameter from the base to the top – meant that the bottle was merely a variant of existing shapes of bottles sealed with a cap, which could not be viewed as departing significantly from the norms and customs of the sector.
78      Thus the Board of Appeal did not distort the evidence in its possession and the plea must therefore be rejected.
79      Sixthly, the applicant submits, in essence, that the Board of Appeal was incorrect in examining separately the colour of the cap in relation to the transparency of the bottle and its height/width ratio and dismissing their distinctive character, arguing that the bottles were marketed in a wide variety of shapes and sizes, whereas it ought to have determined whether the shapes of the beverage containers such as the contested trade mark, taken as whole, were the norm in 2003, when the trade mark was registered.
80      The Board of Appeal examined the non-transparent appearance of the cap in paragraph 39 of the contested decision and the height/width ratio of the bottle taken as a whole in paragraph 40.
81      It found, however, in paragraph 40 of the contested decision, that ‘consumers [would in this case] just see a cylinder with a cap’.
82      Consequently, although its reasoning was brief, the Board of Appeal did consider the different components of the trade mark – the cylindrical shape of the bottle and the non-transparent cap of the same diameter – and went on to find that consumers would see only ‘a cylinder with a cap’, that is to say, a bottle in a shape which does not depart significantly from the norms and customs of the sector.
83      The plea must therefore be rejected.
84      Seventhly, the applicant submits that, in paragraph 41 of the contested decision, the Board of Appeal distorted the evidence and misinterpreted the law in referring to the existence of another bottle similar to the contested trade mark. It states that it denied that that bottle had been marketed and that, even if it had been, it had not been established by the cancellation applicant when, where and in what volumes this had taken place. Yet, in its submission, the Board of Appeal took this into account to go on to find that ’variants of the same basic cylindrical bottle [did] appear now and then, in accordance with changing tastes, fashions and trends’. The applicant maintains, firstly, that only one bottle was found and not several; second, that the Board of Appeal failed to take account of the temporal aspect in assessing the norms and customs of the relevant market, whereas the distinctive character must be assessed at the time of the application for registration; and, third, that since that bottle had been taken off the market several years previously, the Board of Appeal ought to have found that the applicant’s bottle departed significantly from the norms and customs of the sector.
85      It is clear, however, that the Board of Appeal’s assessment in paragraph 41 of the contested decision is superfluous to the reasoning set out in paragraphs 36 to 40, from which it concluded that the applicant’s bottle did not depart significantly from the norms and customs of the sector; this is confirmed by use of the word ‘moreover’ at the start of paragraph 41.
86      The Board of Appeal was correct in endorsing the applicant’s argument to the effect that that bottle had been marketed in the past but had been taken off the market several years previously and that that evidence was accordingly inconclusive. Then it merely noted that that fact ‘merely confirms that variants of the same basic cylindrical bottle do appear now and then, in accordance with changing tastes, fashions and trends’.
87      Accordingly, paragraph 41 of the contested decision still has no bearing on the Board of Appeal’s reasoning as to the significant departure from the norms and customs of the market as set out in paragraphs 36 to 40 and the applicant’s line of argument on this point is therefore irrelevant.
88      Lastly and eighthly, the applicant disputes the Board of Appeal’s assessment that since the Voss sign is always displayed on the bottle, it is unlikely that consumers will perceive two marks and not one, since, in its submission, there is nothing preventing a container which always displays a sign from being identified per se as an indicator of commercial origin.
89      It should be noted, however, that this plea is lacking a factual basis, since the Board of Appeal did not base itself on the marking on the bottle and on the display of the sign Voss on the bottle in its assessment of there being no significant departure from the norms and customs of the sector as set out in paragraphs 36 to 41 of the contested decision.
90      The Board of Appeal was therefore correct in finding that the registered trade mark was devoid of distinctive character and that it could not really be distinguished from the forms of packaging frequently used in the beverages sector, but rather was a variant of those shapes (see, to that effect, Case T‑399/02 Eurocermex v OHIM (Shape of a beer bottle), paragraph 43 above, paragraph 33).
91      It follows from all the foregoing that the fourth plea in law must also be rejected.
Second plea: infringement of Article 99 of Regulation No 207/2009 and Rule 37(b)(iv) of the Implementing Regulation and third plea: infringement of Article 7(1)(b) of Regulation No 207/2009 and misinterpretation of the distinctive character of the three-dimensional trade marks
92      As observed in paragraphs 26 to 29 above, it is common ground that the second pillar of the contested decision is distinct and independent from the first pillar.
93      It is, moreover, apparent from the considerations set out in paragraphs 46 to 91 above that the pleas directed against the second pillar of the contested decision have been rejected because the Board of Appeal was correct in finding that the applicant’s bottle was not a significant departure from the norms and customs of the sector and that the registered trade mark was therefore devoid of distinctive character, and that the assessments made in relation to the second pillar of the contested decision are not vitiated by error.
94      According to settled case-law, in so far as certain grounds of a decision in themselves provide a sufficient legal basis for that decision, any errors in other grounds of the decision have no effect in any event on its operative part. Moreover, where the enacting terms of an OHIM decision are based on several pillars of reasoning, each of which would in itself be sufficient to justify those terms, that decision should, in principle, be annulled only if each of those pillars is vitiated by an illegality. In such a case, an error or other illegality which affects only one of the pillars of reasoning cannot be sufficient to justify annulment of the decision at issue because that error could not have had a decisive effect on the operative part adopted by the institution which adopted the decision (see, to that effect, Case T‑162/06 Kronoply v Commission [2009] ECR II‑1, paragraph 62, upheld on appeal by order of the Court of Justice in Case C‑117/09 P Kronoply v Commission, judgment of 24 June 2010, not published in the ECR).
95      In the present case, even if the pleas directed against the first pillar of OHIM’s decision are well founded, that fact has no bearing on the operative part of the contested decision, since the second pillar is not vitiated by illegality. Even if the Board of Appeal was wrong in finding that it is well known that beverages are almost always sold in bottles displaying a label or a verbal or graphic sign, that those are indications enabling consumers to distinguish between the different products on the market and that the applicant did not adduce any evidence in support of its assertions to the contrary, those considerations still have no bearing on the finding that the contested trade mark lacks distinctive character, based on the legal assessments set out in paragraphs 46 to 91 above.
96      Consequently, the pleas directed against the first pillar of the contested decision must be rejected.
97      In conclusion, the application must be dismissed.
Costs
98      Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
99      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action.
2.      Orders Voss of Norway ASA to pay the costs.
Azizi
Frimodt Nielsen
Buttigieg
Delivered in open court in Luxembourg on 28 May 2013.
[Signatures]
* Language of the case: English.