JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
26 July 2023 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark representing the outline of a bear – Absolute ground for invalidity – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EU) 2017/1001))
In Case T‑591/21,
Apart sp. z o.o., established in Suchy Las (Poland), represented by J. Gwiazdowska, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee 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
S. Tous, SL, established in Manresa (Spain), represented by D. Gómez Sánchez, J.L. Gracia Albero and M. Schaaf, lawyers,
THE GENERAL COURT (Fifth Chamber),
composed, at the time of the deliberations, of D. Spielmann, President, U. Öberg and I. Gâlea (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 29 November 2022,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Apart sp. z o.o., seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 July 2021 (Case R 222/2020-5) (‘the contested decision’).
Background to the dispute
2        On 26 February 2009, the intervener, S. Tous, SL, filed an application for registration of an EU trade mark with EUIPO 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 European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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)).
3        The EU trade mark in respect of which registration was sought is the following figurative sign:
4        The goods in respect of which registration was sought are in, inter alia, Class 14 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 to the following description: ‘Jewellery’.
5        The contested mark was registered on 26 January 2010.
6        On 23 May 2017, the applicant filed with EUIPO an application for a declaration of invalidity of the EU trade mark referred to in paragraphs 2 to 5 above in respect of the goods in Class 14 referred to in paragraph 4 above, on the basis of Article 51(1)(a) of Regulation No 40/94 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(a), (b), (d) and (e) of that regulation (now Article 7(1)(a), (b), (d) and (e) of Regulation 2017/1001).
7        On 26 November 2019, the Cancellation Division of EUIPO rejected the application for a declaration of invalidity in its entirety.
8        On 27 January 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
9        By the contested decision, the Board of Appeal dismissed the appeal. First of all, it stated that, in invalidity proceedings, the contested mark is presumed to be valid and that the evidence and arguments submitted by the applicant were contradictory and insufficient for the purpose of showing that, on the date on which the application for registration was filed, the contested mark was devoid of distinctive character. The Board of Appeal found that consumers could not immediately perceive the contested sign as the representation of a bear or that they needed to make a mental effort for that purpose, and that, therefore, that sign had a certain degree of distinctiveness. Next, the Board of Appeal found that the applicant had failed to show that, on the date on which the application for registration of the contested mark was filed, that mark would be perceived as having a common shape or appearance in the relevant market sector of jewellery. Furthermore, the Board of Appeal found that the applicant had also failed to demonstrate that, at the time when the application for registration was filed, the contested sign had become customary in the current language or in the bona fide and established practices of the trade to designate the contested goods. Lastly, the Board of Appeal found that the applicant had not been able to explain in what respect the contested mark gave substantial value to the goods at issue within the meaning of Article 7(1)(e)(iii) of Regulation No 40/94 (now Article 7(1)(e)(iii) of Regulation 2017/1001).
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision and alter it by declaring the contested mark invalid;
–        in the alternative, annul the contested decision and refer the case back to EUIPO;
–        order EUIPO and the intervener to pay the costs of the proceedings before the Board of Appeal and before the Court.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
12      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, including those incurred before the Cancellation Division and the Board of Appeal.
Law
13      Given the date on which the application for registration of the contested mark was filed, namely 26 February 2009, 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 40/94 (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). 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 present dispute is governed by the procedural provisions of Regulation 2017/1001.
Substance
14      The applicant relies, in essence, on six pleas in law. The first plea alleges infringement of Article 7(1)(b) of Regulation No 40/94. The second plea alleges infringement of Article 7(1)(d) of that regulation. The third plea alleges infringement of Article 7(1)(e)(i) of Regulation No 40/94 (now Article 7(1)(e)(i) of Regulation 2017/1001). The fourth plea alleges infringement of Article 7(1)(e)(iii) of that regulation. The fifth plea alleges a failure to state reasons in breach of Article 94(1) and Article 95(1) of Regulation 2017/1001. The sixth plea alleges infringement of Article 20 and Article 41(1) and (2)(a) and (c) of the Charter of Fundamental Rights of the European Union (‘the Charter’), relating to the right to be heard and to the principles of good administration, legal certainty and equal treatment.
Admissibility of the second and third pleas
15      In the summary of the pleas relied on in support of the claim for annulment, the applicant alleges infringement of Article 7(1)(d) and of Article 7(1)(e)(i) of Regulation No 40/94.
16      EUIPO contends that the pleas thus relied on by the applicant should be declared inadmissible.
17      It should be borne in mind that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court by virtue of the first paragraph of Article 53 of that statute, and Article 177(1)(d) of the Rules of Procedure of the General Court, all applications initiating proceedings must contain, inter alia, a summary of the pleas in law on which the application is based. The information given must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action. The same considerations also apply to all claims, which must be accompanied by pleas and arguments enabling both the defendant and the Court to assess their validity. Thus, the essential elements of fact and of law on which the action is based must be indicated, at least in summary form, coherently and intelligibly in the application itself. Similar requirements apply where a claim or an argument is relied on in support of a plea in law (judgments of 13 March 2013, Biodes v OHIM – Manasul Internacional (FARMASUL), T‑553/10, not published, EU:T:2013:126, paragraph 22, and of 11 April 2019, Fomanu v EUIPO – Fujifilm Imaging Germany (Representation of a butterfly), T‑323/18, not published, EU:T:2019:243, paragraph 17).
18      However, it should be observed that the applicant merely relies on Article 7(1)(d) and Article 7(1)(e)(i) of Regulation No 40/94, without indicating the matters of fact and of law capable of explaining the extent to which the contested decision infringes those provisions.
19      It follows that setting out a submission in such a way does not satisfy the requirements of the Rules of Procedure. Accordingly, the pleas alleging infringement of Article 7(1)(d) and of Article 7(1)(e)(i) of Regulation No 40/94 must be rejected as inadmissible.
The fifth plea, alleging a failure to state reasons in breach of Article 94(1) and Article 95(1) of Regulation 2017/1001
20      By its fifth plea, the applicant complains, in essence, that the Board of Appeal failed to state to the requisite legal standard the reasons why it found that the evidence submitted was not capable of showing that the contested mark was devoid of distinctive character.
21      EUIPO and the intervener dispute the applicant’s arguments.
22      In accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
23      Furthermore, the duty to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 20 February 2013, Langguth Erben v OHIM (MEDINET), T‑378/11, EU:T:2013:83, paragraph 15 and the case‑law cited).
24      In the present case, it must be noted that, in paragraphs 32 to 43 of the contested decision, the Board of Appeal took into account the items of evidence submitted by the applicant and that it also stated, in respect of each of them, the reasons why those items of evidence were not capable of proving that the shape of the teddy bear was a motif commonly used in the jewellery sector on the relevant date. As regards the analysis of distinctive character, it should be noted that the Board of Appeal carried out a detailed examination of distinctive character in paragraphs 44 to 63 of the contested decision.
25      Furthermore, first, it should be observed that the applicant was able to defend its rights and understand the explanations provided by the Board of Appeal in the contested decision as regards the analysis of the distinctive character of the contested sign in the light of the goods at issue, as is apparent from the arguments which it put forward in that regard in its application. Secondly, as is apparent from paragraphs 29 to 80 below, the Court has been able to review the merits of the Board of Appeal’s assessment in that regard, in the context of the first plea. Therefore, in the light of the case-law referred to in paragraphs 22 and 23 above, it must be concluded that the contested decision contains an adequate statement of reasons.
26      It follows from the foregoing that the fifth plea must be rejected.
The first plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94
27      The applicant, in essence, criticises the Board of Appeal for having found that the contested mark had distinctive character.
28      EUIPO and the intervener dispute the applicant’s arguments.
29      Under Article 7(1)(b) of Regulation No 40/94, trade marks which are devoid of any distinctive character are not to be registered.
30      For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
31      The distinctive character must be assessed by reference, first, to the goods or services in respect of which registration is sought and, second, to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
32      The concept of general interest underlying Article 7(1)(b) of Regulation No 40/94 is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the product or service covered by the mark to the consumer or end-user by enabling him or her, without any possibility of confusion, to distinguish that product or service from others which have another origin (see, to that effect, judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 48).
33      Furthermore, it is settled case-law that 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 40/94 inapplicable (see, to that effect, judgment of 20 March 2019, Grammer v EUIPO (Representation of a shape), T‑762/17, not published, EU:T:2019:171, paragraph 15 and the case-law cited).
34      In addition, it should be borne in mind that, in invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (judgments of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraph 28, and of 28 September 2016, European Food v EUIPO – Société des produits Nestlé (FITNESS), T‑476/15, EU:T:2016:568, paragraph 48).
35      It must also be noted that the relevant date for the purposes of the examination of an application for a declaration of invalidity based on Article 51(1)(a) of Regulation No 40/94 is the date of the filing of the application for registration (see, to that effect, order of 23 April 2010, OHIM v Frosch Touristik, C‑332/09 P, not published, EU:C:2010:225, paragraph 41). Therefore, the relevant date in the present case is 26 February 2009.
36      It is in the light of those considerations that it must be examined whether the applicant has succeeded in demonstrating to the requisite legal standard that the contested mark is devoid of distinctive character.
37      As a preliminary point, it should be borne in mind that, in order to analyse the distinctive character of the contested mark, the Board of Appeal took the view that that mark was a figurative mark consisting of the two-dimensional representation of the goods at issue, and that it did not consist of a sign unrelated to the appearance of the goods. The Board of Appeal then assessed the distinctive character of that mark in the light of the criterion applicable to three-dimensional marks and found that the arguments and evidence submitted by the applicant were insufficient to demonstrate that the contested mark would be perceived as having a common shape or appearance on the jewellery market.
38      The Board of Appeal also noted, without it being challenged by the applicant, that, in invalidity proceedings, as the EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question. Furthermore, the Board of Appeal took the view that the level of attention of the relevant public was higher than average.
39      The applicant submits, in essence, that the shape of a teddy bear does not differ from the norms of the jewellery market sector and that that shape does not contain any element capable of distinguishing it from that of goods originating from other undertakings on the market.
40      The intervener contends that ‘the contested [mark] is not a shape mark, since it is not a three-dimensional mark’, but consists of the representation of its emblematic bear.
41      It should be noted at the outset that the goods at issue, namely items of jewellery, may take the shape of the contested mark.
42      According to the case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are no different from those applicable to other categories of trade mark. Nonetheless, 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 consisting of the shape of the product itself as it is in the case of a word or figurative mark consisting of a sign which is independent from 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 graphic or word element and it could therefore 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 of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 30 and the case-law cited).
43      In those circumstances, the more closely the shape registered as a mark resembles the shape most likely to be taken by the product in question, the greater the likelihood of the registered shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. 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 (see, to that effect, judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 31 and the case-law cited).
44      Furthermore, the line of authority that evolved in relation to three-dimensional trade marks consisting of the appearance of the goods themselves also applies where the contested mark is a figurative mark consisting of the two-dimensional representation of those goods. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the goods it covers (see, to that effect, judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 29, and of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a brown and beige chequerboard pattern), T‑359/12, EU:T:2015:215, paragraph 24).
45      In the present case, it must be noted that the fact that items of jewellery may take the shape of a teddy bear is not in itself sufficient to establish that the contested mark consists of a two-dimensional representation of the shape of the goods at issue.
46      Such an assessment would be such as to preclude any other use of the sign as a figurative mark, which might not be the case here. The contested mark may be used as such by the intervener on packaging, labels or other advertising material in order to enable consumers to identify the commercial origin of its goods.
47      Therefore, it must be held that the Board of Appeal’s finding that the contested mark is a figurative mark consisting of the two-dimensional representation of the goods at issue, resulting in the application of the case-law relating to three-dimensional marks, is vitiated by an error of assessment.
48      Nonetheless, it is settled case-law that, if, in the particular circumstances of the case, an error could not have had a decisive effect on the outcome, the argument based on such an error relating to the assessment of the facts is nugatory and thus cannot suffice to justify annulling the contested decision (see, to that effect, judgment of 7 July 2021, Ardagh Metal Beverage Holdings v EUIPO (Combination of sounds on opening a can of soft drink), T‑668/19, EU:T:2021:420, paragraph 35 and the case-law cited).
49      Therefore, even though the Board of Appeal erred in taking the view that the contested mark did not consist of a sign unrelated to the appearance of the goods it covered, which resulted in the application of the criterion that the contested mark had to depart significantly from the norms and customs of the sector, it is nevertheless necessary to determine whether that error has any impact on the content of the contested decision.
50      Thus, it is necessary to examine whether the Board of Appeal was entitled to find that the applicant had not succeeded in demonstrating that, on the date on which the application for registration was filed, the contested mark was devoid of distinctive character.
51      In the first place, the applicant complains that the Board of Appeal incorrectly analysed the relevant public’s perception of the contested mark.
52      First, it submits that the contested mark will immediately be perceived by the relevant public as representing the shape of a teddy bear.
53      The Board of Appeal concluded that consumers would not immediately recognise the contested mark as being the representation of a bear, but that this would require a mental effort or ‘some fantasy’. Therefore, according to the Board of Appeal, that ambiguity conferred on the contested mark a certain degree of distinctiveness.
54      It should be observed that, in the present case, the contested mark is represented by the thin outline of a figure recognisable by its specific rounded and prominent shapes, which could be interpreted as representing the outline of a teddy bear, but also as a fantasy figure. It should also be observed, as did the Board of Appeal, that the sign is merely evocative of the silhouette of a teddy bear and that it will not necessarily be perceived as such by all consumers. The subtlety of the outline requires some imagination or fantasy on the part of consumers in order to associate that outline with the figure of a teddy bear. Furthermore, it should be stated that, irrespective of whether the shape at issue will immediately be perceived as a teddy bear, that shape has no connection with the goods at issue, namely items of jewellery.
55      That conclusion cannot be called into question by the applicant’s argument that the intervener intentionally communicates to the relevant public that the contested mark represents a teddy bear. In that regard, it should be borne in mind that the examination as to absolute grounds for refusal cannot be dependent on the commercial intentions, whether carried out or not, and naturally subjective, of the trade mark proprietors (see, to that effect and by analogy, judgment of 17 April 2013, Continental Bulldog Club Deutschland v OHIM (CONTINENTAL), T‑383/10, EU:T:2013:193, paragraph 60).
56      Consequently, the applicant’s argument that the Board of Appeal made an error of assessment in stating that the contested mark would not immediately be perceived as the outline of a teddy bear must be rejected.
57      Secondly, the applicant claims that the Board of Appeal made an error of assessment as regards the perception of the contested mark by the relevant public with regard to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks of 12 June 1973, as amended (‘the Vienna Agreement’). The applicant submits that the contested mark is in Class 21.01.25 of the Vienna Agreement and that, in accordance with that classification, it is incorrect to perceive it otherwise than as a teddy bear.
58      In that regard, it should be borne in mind that it is settled case-law that the classification of a sign under the Vienna Agreement cannot affect the scope of protection of a mark or the Board of Appeal’s assessment of the way in which the relevant public will perceive a mark. The classification under the Vienna Agreement is intended to serve exclusively administrative purposes (see, to that effect, judgment of 5 November 2008, Calzaturificio Frau v OHIM – Camper (Representation of a stylised arch with the surface in solid colour), T‑304/07, not published, EU:T:2008:477, paragraph 39).
59      Consequently, it cannot be held that the Board of Appeal’s finding that the contested mark will not immediately be perceived as representing a teddy bear is vitiated by an error of assessment in the light of the provisions of the Vienna Agreement.
60      In the second place, as regards the relationship between the contested mark and the goods in respect of which that mark was registered, the applicant claims that the shape of a bear is a common and ‘expected’ shape on the jewellery market, which, in its view, is saturated with it. The applicant submits that that shape is nothing extraordinary and that it has been used in the jewellery sector for centuries. In the applicant’s view, the majority of jewellery manufacturers market items in the shape of a bear in their collections and it is therefore difficult for consumers to distinguish their commercial origin.
61      The Board of Appeal found that the applicant had not been able to prove that, on the relevant date, the contested mark was a motif which was commonplace on the jewellery market and that it was therefore devoid of distinctive character.
62      It should be observed that the contested mark is registered for items of jewellery, which generally include goods such as rings, earrings, necklaces or bracelets, and that those goods represent the result of a creative process. Their appearance and stylisation may vary significantly on the market. As stated in paragraph 54 above, irrespective of whether the contested sign will be perceived as a teddy bear or as a fantasy figure, it has no connection with items of jewellery.
63      In any event, even though it is true that items of jewellery may take a variety of shapes, including that of animals, it cannot be established that the relevant public will associate the motif of a bear with items such as those cited above. It must be stated that the shape of a teddy bear relates to a different category of goods, namely toys for children, and that it cannot be associated by consumers with jewellery.
64      In the third place, the applicant argues, in essence, that the Board of Appeal erred in its analysis of the evidence that it had submitted. It claims that it is apparent from that evidence that the bear motif is common and has been used consistently for centuries in the jewellery sector.
65      The Board of Appeal found that the evidence and arguments submitted by the applicant were contradictory and insufficient for the purpose of showing that, on the date on which the application for registration was filed, the contested mark was devoid of distinctive character. In particular, the Board of Appeal noted that some of the items of evidence were not dated or were dated after the relevant date and that, therefore, they could not establish that the contested mark was commonplace or customary in the relevant sector. Furthermore, it stated that those items of evidence referring to the history and meaning of the teddy bear referred to different goods, including soft toys, and not to the goods at issue, namely jewellery. In that regard, the Board of Appeal found that the items of evidence referring to items of jewellery did not show to the requisite legal standard whether and to what extent consumers were actually confronted with a common sign on the jewellery market.
66      In support of its claims, the applicant submitted items of evidence to show that the motif of the teddy bear was a common shape on the jewellery market. Those items of evidence consisted of printouts from webpages containing images of various bear-shaped jewellery, representations of teddy bears in various market sectors, such as clothing and games, goods from other jewellery manufacturers which took the form of a teddy bear, a list of registered bear-shaped designs and various articles concerning the history and the symbolism of the teddy bear.
67      However, it must be found, as the Board of Appeal correctly assessed in paragraphs 34 to 43 of the contested decision, that those items of evidence could not be sufficient in themselves to demonstrate that there was an established practice on the jewellery market with regard to teddy-bear-shaped items of jewellery on the relevant date. The items of evidence in question were not dated or were dated after the relevant date, or they were not relevant for the purpose of demonstrating that the relevant public would perceive the motif of the teddy bear as a common motif used for jewellery, given their low probative value.
68      In the fourth place, the applicant submits that the contested mark is a simple sign which does not differ from other shapes present on the market and associates the shape of the teddy bear with the shape of a heart, relying on EUIPO’s decision of 20 November 2013 (Case R 726/2013-1).
69      The applicant’s argument cannot be accepted.
70      First, it is true that, according to the case-law, a sign which is excessively simple and composed of a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (see, to that effect, judgment of 12 September 2007, Cain Cellars v OHIM (Device of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22 and the case-law cited).
71      In that regard, it must be observed that the contested sign and geometrical shapes cannot be regarded as being comparably simple. Irrespective of whether it will be recognised as a teddy bear or as a fantasy figure, the outline contains sufficient elements – such as rounded shapes – as a result of which it cannot be compared to a simple geometrical shape.
72      Secondly, it should be borne in mind that it is settled case-law that, in its review of legality, the Court is not bound by the decision-making practice of EUIPO (judgment of 7 September 2022, Völkl v EUIPO – Marker Dalbello Völkl (International) (Völkl), T‑155/21, not published, EU:T:2022:518, paragraph 32 and the case-law cited).
73      Thirdly, the heart symbol is commonly used in trade in general, and not only in the jewellery sector. It is also used in a wide variety of fields and is immediately recognised as symbolising love or affection. The extent of the use of the heart symbol cannot be compared to the use of the representation of a teddy bear. Although the teddy bear is capable of conveying positive feelings, it is not used for the same purposes and is not associated, immediately and unequivocally, with feelings of love or affection, but rather, as the applicant also maintains, with childhood or childhood memories.
74      That conclusion cannot be called into question by the applicant’s argument that the relevant public would not be attracted by the shape of the bear in itself, but rather by the symbols conveyed by it, namely love or tenderness, or by the argument relating to the meaning of the teddy bear as a symbol of love. The consumer will perceive and remember the mark as such and it cannot be established that, in the present case, such a consumer will be attracted by that mark solely because of the appeal of the symbols that it represents.
75      In the fifth place, the applicant submits that the contested mark is descriptive.
76      However, the applicant merely relies on that argument without putting forward any matters of law or of fact capable of substantiating such an assertion. That argument must therefore be rejected.
77      In the sixth and last place, the applicant submits that the intervener does not use the contested mark as a trade mark, but rather as a design.
78      However, it should be noted that those claims seek to demonstrate that the contested mark has not been put to genuine use as a trade mark, which does not form part of the subject matter of proceedings for a declaration of invalidity under Article 51(1)(a) of Regulation No 40/94.
79      Consequently, it must be held that the error of assessment made by the Board of Appeal, as noted in paragraph 47 above, is not such as to vitiate the conclusion set out in the contested decision and that the Board of Appeal correctly found that the applicant had not succeeded in demonstrating that, on the date on which the application for registration was filed, the contested mark was devoid of distinctive character.
80      It follows from the foregoing that the first plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94, should be rejected.
The fourth plea, alleging infringement of Article 7(1)(e)(iii) of Regulation No 40/94
81      The applicant claims, in essence, that the contested mark essentially serves an aesthetic function, without indicating the origin of the goods. It submits that the shape of the teddy bear significantly increases the value of the goods and that that shape plays a decisive role in the decision of consumers to purchase jewellery, considering its meaning.
82      EUIPO and the intervener dispute the applicant’s arguments.
83      Under Article 7(1)(e)(iii) of Regulation No 40/94, signs which consist exclusively of the shape or another characteristic of the goods which gives substantial value to the goods are not to be registered.
84      The immediate aim of the prohibition on registering purely functional shapes and the prohibition on registering shapes which give substantial value to the goods is to prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights which the EU legislature has sought to make subject to ‘limited periods’ (see, by analogy, judgments of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 31, and of 6 October 2011, Bang & Olufsen v OHIM (Representation of a loudspeaker), T‑508/08, EU:T:2011:575, paragraph 65).
85      Like the ground for refusal to register that applies to the shapes of goods which are necessary to obtain a technical result, the ground that concerns refusal to register signs consisting exclusively of shapes which give substantial value to the goods is to prevent the granting of a monopoly on those shapes (judgment of 6 October 2011, Representation of a loudspeaker, T‑508/08, EU:T:2011:575, paragraph 66).
86      The concept of a ‘shape which gives substantial value to the goods’ cannot be limited purely to the shape of products having only artistic or ornamental value, as there is otherwise a risk that products which have essential functional characteristics as well as a significant aesthetic element will not be covered. In that case, the right conferred by the trade mark on its proprietor would grant that proprietor a monopoly on the essential characteristics of such products, which would not allow the objective of that ground for refusal to be fully realised (see, by analogy, judgment of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 32).
87      It should also be borne in mind that, in accordance with the case-law cited in paragraph 34 above, in invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question.
88      In the applicant’s view, it is well known that the teddy bear is recognised as a symbol of love – similar to the symbol of the heart – which evokes positive emotions and strengthens the purchasing impulse. The applicant submits that the aesthetic value of the contested mark – an aspect which, in its view, is highlighted by the intervener – determines its attractiveness for consumers and significantly increases the value of the goods.
89      The Board of Appeal stated that the fact that the shape of the contested mark may be pleasing or attractive is not sufficient to exclude it from registration. In that regard, the Board of Appeal stated that the intervener’s statements relating to the meaning of the teddy bear symbol were not sufficient to show that the contested mark came under Article 7(1)(e)(iii) of Regulation No 40/94 and also observed that the applicant had merely recalled the relevant case-law without explaining in what respect the contested sign would determine to a large extent the behaviour of consumers. Lastly, it noted that the applicant relied on several occasions on the alleged simplicity of the bear shape in order to prove that it was devoid of distinctive character, which was in direct contradiction with the criteria required for the application of Article 7(1)(e)(iii) of that regulation.
90      In the present case, it must be stated that the contested mark does not represent a sign which consists exclusively of the shape or another characteristic of the goods. As is apparent from the reasoning set out in paragraphs 37 to 47 above, the goods covered by the contested mark represent items of jewellery which generally take the form of rings, necklaces or earrings and which are likely to bear the sign of which that mark consists, but not to take the shape thereof.
91      Consequently, the contested mark consists of a sign unrelated to the appearance of the goods it covers and not of a sign which consists exclusively of the shape of those goods.
92      Therefore, that assessment of the contested mark precludes that mark from being capable of falling under the prohibition laid down in Article 7(1)(e)(iii) of Regulation No 40/94.
93      Accordingly, the fourth plea must be rejected.
The sixth plea, alleging infringement of Article 20 and Article 41(1) and (2)(a) and (c) of the Charter
94      In the summary of the pleas relied on in support of the action, the applicant alleges infringement of Article 20 and Article 41(1) and (2)(a) and (c) of the Charter, relating to the right to equal treatment, the right to be heard and the principles of legal certainty and good administration.
95      In the first place, as regards the right to be heard, the applicant submits that it was deprived of the possibility of referring to the grounds of the contested decision, of its right to know and understand the reasons and evidence on the basis of which the Board of Appeal intended to issue its decision and, consequently, of the possibility of being able to respond to them.
96      However, it should be observed that the Board of Appeal analysed, in paragraphs 32 to 43 of the contested decision, the evidence submitted by the applicant, which was the subject of a detailed analysis on which the applicant had the opportunity to express a view in the context of the present action.
97      In addition, the applicant submits that it did not have the opportunity to express a view on the reasoning and the evidence on which the contested decision was based. In that regard, it should be observed that the applicant was informed, by letter of 31 March 2020, that the written part of the procedure had been closed and that the Board of Appeal would take its decision in the light of the arguments and of the evidence submitted. It must be noted that at no point in the proceedings did the applicant request a second round of written submissions.
98      Therefore, since the applicant does not indicate specifically the matters of law or of fact which prevented it from expressing a view on the Board of Appeal’s decision, the part of the sixth plea alleging infringement of the right to be heard must be rejected as unfounded.
99      In the second place, as regards the right to equal treatment and the principles of legal certainty and good administration, it must be noted that, in its application, the applicant merely relies on all those rights and principles, without explaining in what respect they were infringed by the Board of Appeal.
100    In that regard, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the General Court by virtue of Article 53 thereof, and Article 177(1)(d) of the Rules of Procedure of the General Court, an application must contain a summary of the pleas in law on which it is based. 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 (see judgment of 22 June 2017, Biogena Naturprodukte v EUIPO (ZUM wohl), T‑236/16, EU:T:2017:416, paragraph 11).
101    Accordingly, the parts of the sixth plea alleging infringement of the right to equal treatment and of the principles of legal certainty and good administration must be rejected as inadmissible.
102    It follows from the foregoing that the sixth plea must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s request that the case be referred back to EUIPO.
Costs
103    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.
104    Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred in the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener.
105    The intervener has also claimed that the applicant should be ordered to pay the costs incurred by the intervener in the proceedings before EUIPO. In that regard, it suffices to note that, since this judgment dismisses the action brought against the contested decision, point 2 of the operative part of that decision, read in the light of paragraph 101 of the grounds thereof, continues to govern the costs incurred in the proceedings before the Cancellation Division and in the appeal proceedings before EUIPO (see, to that effect, judgment of 19 October 2017, Aldi v EUIPO – Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Apart sp. z o.o. to pay the costs.
Spielmann
Öberg
Gâlea
Delivered in open court in Luxembourg on 26 July 2023.
V. Di Bucci
G. De Baere
Registrar
President
*      Language of the case: English.