JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

6 November 2014 ( *1 )

‛Community trade mark — Application for the Community figurative mark representing a wavy line — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — No distinctive character acquired through use — Article 7(3) of Regulation No 207/2009 — Article 76 of Regulation No 207/2009 — Article 75 of Regulation No 207/2009’

In Case T‑53/13,

Vans, Inc., established in Cypress, California (United States), represented by M. Hirsch, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 14 November 2012 (Case R 860/2012-5), concerning the application for registration as a Community trade mark of a figurative sign representing a wavy line,

THE GENERAL COURT (Fifth Chamber),

composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 31 January 2013,

having regard to the response of OHIM lodged at the Court Registry on 7 May 2013,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment ( 1 )

…

Forms of order sought

7 The applicant claims that the Court should: — annul the contested decision in its entirety and remit the case to the Board of Appeal; — order OHIM to pay the costs.

8 OHIM contends that the Court should: — dismiss the action; — order the applicant to pay the costs.

Law

…

The first plea, alleging, in particular, infringement of Article 76(1) of Regulation No 207/2009

…

12 It must be borne in mind that, as is apparent from the case-law, according to Article 76(1) of Regulation No 207/2009, examiners and the Boards of Appeal of OHIM are required to examine the facts of their own motion. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been put forward by the applicant for the mark (judgment of 23 January 2014 in Novartis v OHIM (CARE TO CARE), T‑68/13, EU:T:2014:29, paragraph 22; see also, to that effect, judgment of 22 June 2006 in Storck v OHIM, C‑25/05 P, ECR, EU:C:2006:422, paragraphs 50, 51 and 54). Furthermore, it is apparent from settled case-law that OHIM infringes Article 76 of Regulation No 207/2009 if it refuses to take into consideration arguments or items of evidence which the parties have submitted in due time (see, to that effect, judgments of 9 November 2005 in Focus Magazin Verlag v OHIM — ECI Telecom (Hi-FOCuS), T‑275/03, ECR, EU:T:2005:385, paragraph 43, and 10 July 2006 in La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, ECR, EU:T:2006:197, paragraph 68).

13 In the present case, by its arguments, the applicant puts forward, in essence, two complaints, the first of which alleges that the evidence referred to in paragraph 10 above was not duly examined and the second of which alleges that the statement of reasons is insufficient.

14 As regards the first complaint, alleging that the evidence referred to in paragraph 10 above was not duly examined, it must, first, be pointed out that it is in no way apparent from the contested decision that the Board of Appeal refused to take into consideration any arguments or evidence submitted by the applicant.

15 Secondly, it must be pointed out, as regards the documents submitted by the applicant in Annexes 5 and 6 to the observations of 27 January 2012, that it is apparent from paragraphs 14 to 16 of the contested decision that the Board of Appeal took them into consideration and rejected them. It is apparent, in particular, from paragraph 16 of the contested decision that the Board of Appeal reproduced the criteria set out in the case-law (see paragraph 84 below) and applied them to the Community registrations relied on by the applicant in order to reject them in so far as it was not bound by previous or erroneous decisions taken by OHIM. It was following that analysis that the Board of Appeal erroneously stated, for the sake of completeness, as is indicated by the use of the expression ‘moreover’, that those registrations could have been based on Article 7(3) of Regulation No 207/2009.

16 It is indeed true that, in the course of the analysis of those documents, the Board of Appeal erred in stating, in paragraph 16 of the contested decision, that the Community registrations could have been based on the acquisition of distinctive character through use, for the purposes of Article 7(3) of Regulation No 207/2009. However, that error, which, moreover, concerns an argument which was set out for the sake of completeness and was made in the course of the examination of the documents submitted by the applicant, cannot constitute an infringement of Article 76 of Regulation No 207/2009, but is a substantive error the possible consequences of which will be examined in paragraphs 84 to 88 below.

17 A superficial examination of the evidence, like that which the applicant alleges that the Board of Appeal carried out in the present case, even if it were proved, could not constitute an infringement of the procedural provision in Article 76 of Regulation No 207/2009. An incorrect assessment of the evidence provided by a party may, as the case may be, give rise to an infringement of the substantive provision applicable in the present case.

18 Thirdly, as regards Annex 10 to the appeal brought before the Board of Appeal, it must be pointed out that that document contains, inter alia, particulars relating to the applicant’s sales volumes in the years 2010 and 2011 in certain Member States, namely Benelux, the Czech Republic, Denmark and Sweden inasmuch as they are part of Scandinavia, Germany, Greece, Spain, France, Italy, Poland and the United Kingdom. It also contains a sales forecast for 2012 in respect of those Member States. This document is thus intended to supplement the content of the affidavit of the applicant’s Vice President of Events, Promotions, which was submitted to the examiner and which, as the Board of Appeal stated in paragraph 23 of the contested decision, reproducing the examiner’s findings, contains figures relating to sales volumes which are not broken down by country, do not indicate the overall amount for the European Union and are not confirmed by other documents, such as invoices.

19 It is apparent from the contested decision that, as the applicant has submitted, the Board of Appeal did not rule on that document. The document is not referred to, in paragraph 21 of the contested decision, as one of the additional documents which the applicant provided before the Board of Appeal and the Board of Appeal did not, in addition, refer to that document in assessing the evidence provided by the applicant.

20 It must, however, be pointed out that the fact that the Board of Appeal did not reproduce all of the arguments of one party and the evidence provided by that party, or did not reply to each of those arguments and items of evidence, cannot by itself lead to a finding that the Board of Appeal refused to take them into account (judgment of 9 December 2010 in Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, ECR, EU:T:2010:505, paragraph 46).

21 In the present case, it is by no means apparent from the contested decision that the Board of Appeal refused to take into account the document set out in Annex 10 to the appeal brought before it. The Board of Appeal did not, inter alia, claim that the applicant had not submitted it in due time and did not reject it as inadmissible. It is possible that the fact that Annex 10 to the appeal before it contained particulars relating to the applicant’s sales volumes in certain Member States escaped the Board of Appeal’s notice.

22 However, that fact alone is not capable of constituting an infringement of the procedural provision in Article 76 of Regulation No 207/2009. It constitutes an incorrect assessment of the evidence provided by the applicant which may, as the case may be, give rise to an infringement of a substantive provision. The possible consequences of that incorrect assessment will be examined in the context of the examination of the plea alleging infringement of Article 7(3) of Regulation No 207/2009 (see paragraph 107 below).

23 Fourthly, it must be pointed out, as regards the evidence which is allegedly from independent sources, in Annex 2 to the observations of 27 January 2012, that it is a page from the fashion magazine Elle. That page reproduces a photograph of a model wearing a pair of shoes manufactured by the applicant bearing the sign in respect of which registration was sought.

24 In that regard, it must be held that, contrary to what the applicant claims, even though it is not an advertisement, it constitutes promotional material which relates to the applicant and was published in a fashion magazine which serves to present its goods to the public. As the Board of Appeal examined all the advertising material in paragraphs 26 and 27 of the contested decision, it cannot be alleged that it did not take that document into account. It did not therefore infringe the procedural provision in Article 76 of Regulation No 207/2009.

25 In any event, even if, as the applicant has submitted, that document were to be regarded as evidence from an independent source, it must be pointed out that, as with Annex 10 to the appeal brought before the Board of Appeal, it is by no means apparent from the contested decision that the Board of Appeal refused to take it into account. The Board of Appeal thus did not claim that the applicant had not submitted it in due time and did not reject it as inadmissible. Consequently, even if the Board of Appeal may not have noticed that document, that fact alone, as has been stated in paragraph 22 above, is not capable of constituting an infringement of the procedural provision in Article 76 of Regulation No 207/2009. It may constitute an incorrect assessment of the evidence provided by the applicant, the possible consequences of which will be examined in the context of the examination of the plea alleging infringement of Article 7(3) of Regulation No 207/2009 (see paragraph 107 below).

26 Consequently, it must be held that the applicant cannot complain that the Board of Appeal infringed the procedural provision in Article 76 of Regulation No 207/2009. The applicant’s arguments in that regard must therefore be rejected. …

On those grounds, THE GENERAL COURT (Fifth Chamber) hereby:

1. Dismisses the action;

2. Orders Vans, Inc. to pay the costs.

Dittrich Schwarcz Tomljenović Delivered in open court in Luxembourg on 6 November 2014. [Signatures]

( *1 ) Language of the case: English.

( 1 ) Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.