ORDER OF THE COURT (Eighth Chamber)

11 September 2014 ( *1 )

‛Appeal — Community trade mark — Regulation (EC) No 207/2009 — Article 7(1)(b) — No distinctive character — Red aglets on shoe laces — Article 122 of the Rules of Procedure of the General Court — Appeal in part manifestly inadmissible and in part manifestly unfounded’

In Case C‑521/13 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 27 September 2013,

Think Schuhwerk GmbH, established in Kopfing (Austria), represented by M. Gail, Rechtsanwalt,

appellant,

the other party to the proceedings being:

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

defendant at first instance,

THE COURT (Eighth Chamber),

composed of C.G. Fernlund, President of the Chamber, A. Ó Caoimh and E. Jarašiūnas (Rapporteur), Judges,

Advocate General: M. Szpunar,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

Order

1 By its appeal, Think Schuhwerk GmbH (‘Think Schuhwerk’) seeks to have the judgment of the General Court of the European Union in Think Schuhwerk v OHIM (red shoelace aglets), (T‑208/12, EU:T:2013:376, ‘the judgment under appeal’), by which that Court dismissed its application seeking the annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 23 February 2012 (Case R 1552/2011-1) concerning an application for registration of a sign constituted by red shoe lace aglets as a Community trade mark (‘the decision at issue’).

Legal context

2 Under the heading ‘Absolute grounds for refusal’, Article 7 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) states, at paragraph (1)(b): ‘The following shall not be registered: … (b) Trade marks which are devoid of any distinctive character’.

Background to the dispute

3 On 10 May 2010, Think Schuhwerk filed an application for the registration of a Community trade mark with OHIM.

4 The trade mark for which registration was sought is the following sign:

5 In the application for registration, the mark at issue is described as follows: ‘Protection is requested for shoes with red shoe lace aglets’.

6 The goods in respect of which registration was sought are in Class 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Shoes, in particular laces’.

7 By decision of 22 June 2011, the examiner refused registration of the mark applied for on the ground that it was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

8 On 26 July 2011, Think Schuhwerk filed a notice of appeal with OHIM against the examiner’s decision.

9 By the decision at issue, the First Board of Appeal of OHIM (‘the Board of Appeal’) dismissed the appeal. It took the view that the use of red aglets on shoe laces would not make an impression which differed substantially from the normal configuration of lace-up shoes, that the consumer would see no more than another variation in shoe design and, therefore, he would not perceive the mark for which registration is sought as an indication of the origin of the goods. The Board of Appeal concluded that that mark did not have the minimum degree of distinctive character necessary for the purposes of Article 7(1)(b) of Regulation No 207/2009.

The proceedings before the General Court and the judgment under appeal

10 By application lodged at the Registry of the General Court on 18 May 2012, Think Schuhwerk brought an action for annulment of the decision at issue. In support of that action, it put forward four pleas in law, based, first, on a lack of reasons within the meaning of Article 75 of Regulation No 207/2009, second, infringement of Article 76 thereof, third, incorrect application of Article 7(1)(b) thereof and, fourth, breach of the principle of equal treatment.

11 By the judgment under appeal, the General Court dismissed that action.

Forms of order sought before the Court of Justice

12 Think Schuhwerk claims that the Court should: — set aside the judgment under appeal; — uphold its action at first instance, and — order OHIM to pay the costs.

13 OHIM claims that the Court should dismiss the appeal and order Think Schuhwerk to pay the costs.

The appeal

14 Pursuant to Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

15 It is appropriate to apply that provision to the present case.

16 In support of its appeal, Think Schuhwerk puts forward four grounds of appeal. The first ground of appeal alleges infringement of the right to a fair hearing. By its second ground of appeal, the appellant claims that the General Court committed an error of law by not accepting that the Board of Appeal had failed to provide adequate reasons in the decision at issue. By the third and fourth grounds of appeal, the appellant alleges a breach of the principle that OHIM is to examine the facts of its own motion and an infringement of Article 7(1)(b) of Regulation No 207/2009.

The first ground of appeal: infringement of the right to a fair hearing

Arguments of the parties

17 Think Schuhwerk submits that the General Court breached its right to a fair hearing. In that connection, it observes that, during the proceedings before the General Court, since OHIM had not lodged any submissions on the action within the period prescribed, the General Court imposed a period within which Think Schuhwerk was to submit its observations on the conduct of the proceedings for the purposes of the application of Article 122 of the Rules of Procedure of the General Court. Think Schuhwerk applied to the General Court for judgment by default. However, in the judgment under appeal, the General Court did not give a ruling either on the failure by OHIM to lodge submissions or on Think Schuhwerk’s application for judgment by default. Furthermore, Think Schuhwerk claims that it did not have the opportunity to request a hearing in which to set out its position concerning the distinctive character of the mark for which registration was sought.

18 OHIM argues that that plea in law is manifestly unfounded, in particular, as the General Court is not required to explain the conduct of the proceedings to the parties.

Findings of the Court

19 As a preliminary point, it must be observed that, in paragraph 9 of the judgment under appeal, the General Court stated that, by letter of 2 October 2012, Think Schuhwerk applied to it for judgment in default in accordance with Article 122(1) of the Rules of Procedure of the General Court. By this ground of appeal, Think Schuhwerk criticises the General Court essentially for failing to give judgment by default or to hold a hearing before giving judgment.

20 In that connection it must be recalled that the first subparagraph of Article 122(1) of the Rules of Procedure provides that, if a defendant on whom an application initiating proceedings has been duly served fails to lodge a defence to the application in the proper form within the time prescribed, the applicant may apply to the General Court for judgment by default. According to the second subparagraph of that provision, the application is to be served on the defendant and the General Court may decide to open the oral procedure on the application.

21 Article 122(2) of the Rules of Procedure provides that the General Court is, before giving judgment by default, to consider whether the application initiating proceedings is admissible, whether the appropriate formalities have been complied with, and whether the application appears well founded.

22 It is clear from those provisions that, if the General Court considers that it has sufficient information to give judgment by default, if the admissibility of the application does not give rise to any doubt and if the formalities have been duly complied with, it will verify the substance of applicant’s forms of order and give judgment, without being obliged to grant those forms of order. Moreover, Article 122 of the Rules of Procedure does not allow the party which applied for judgment in default to request a hearing nor does it lay down an obligation for the General Court to hold one.

23 Furthermore, it is common ground that Think Schuhwerk submitted its arguments on the decision at issue and, in particular, the distinctive character of the mark applied for in its action before the General Court and that it is in the light of those arguments that the Court delivered the judgment under appeal.

24 In those circumstances, this ground of appeal must be dismissed as manifestly unfounded.

Second ground of appeal: breach of the duty to state reasons

Arguments of the parties

25 Think Schuhwerk takes the view that the General Court failed to sanction a breach of the duty to state reasons by the Board of Appeal. In the contested decision, the Board of Appeal based its decision on generally known facts resulting from practical experience of marketing goods for general consumption, such as shoes, but did not explain why the mark for which registration is sought lacked distinctive character. Thus, it did not mention the facts deriving from that practical experience nor the consequences for the distinctive character of that mark which results from those facts.

26 OHIM submits that this ground of appeal is manifestly unfounded.

Findings of the Court

27 According to settled case-law, it follows from Article 256 TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union and Article 169(2) of the Court’s Rules of Procedure that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, inter alia, judgment in Knauf Gips v Commission, C‑407/08 P, EU:C:2010:389, paragraph 43 and the case-law cited).

28 That requirement is not satisfied by an appeal which, without even including an argument specifically identifying the error of law allegedly vitiating the contested judgment, confines itself to reproducing the pleas in law and arguments previously submitted to the General Court. Such an appeal is in reality an application for mere reconsideration of the application submitted to the Court of First Instance, which falls outside the jurisdiction of the Court of Justice (see, inter alia, order in Abbott Laboratories v OHIM, C‑21/12 P, EU:C:2013:23, paragraph 85 and the case-law cited).

29 Furthermore, arguments in an appeal which criticise the decision whose annulment was applied for before the General Court, rather than the judgment delivered by the General Court following that application for annulment, are inadmissible (see order in Getty Images v OHIM, C‑70/13 P, EU:C:2013:875, paragraph 38 and the case-law cited).

30 In the present case, since Think Schuhwerk’s arguments alleging a breach of the duty to state reasons were directed against the decision at issue and therefore sought to obtain a re-examination of the application submitted to the General Court, this ground of appeal must be dismissed as being manifestly inadmissible.

The third ground of appeal: breach of the principle that OHIM is to examine the facts of its own motion

Arguments of the parties

31 Think Schuhwerk claims that the General Court disregarded the fact that the Board of Appeal breached the principle that OHIM is required to examine the facts of its own motion. It submits that, as regards the absolute grounds for refusal, pursuant to Article 76 of Regulation No 207/2009, OHIM should have examined the facts of its own motion. However, OHIM took the view that Think Schuhwerk had not produced any evidence establishing that the mark for which registration is sought would be perceived by the relevant public as an indication of the origin of the goods. Think Schuhwerk states in that regard that, during the proceedings before OHIM, it had produced various documents on the basis of which the latter should have shown the reasons why that mark did not have a distinctive character.

32 OHIM submits that the General Court gave a ruling on the plea alleging breach of the principle that OHIM must examine the facts of its own motion. According to settled case-law, in so far as Think Schuhwerk relies on the distinctive character of a sign for which it seeks registration, it must show that that sign has the requisite distinctive character.

Findings of the Court

33 It must be stated that the present ground of appeal is, in reality, directed against the findings which were or were not made by the Board of Appeal in the decision at issue, or more generally by OHIM and which do not appear in the judgment under appeal. Furthermore, Schuhwerk has not made clear how the General Court committed an error in law by dismissing its plea based on a breach of the principle that OHIM must examine the facts of its own motion.

34 Consequently, in accordance with the case-law set out in paragraphs 27 to 29 of the present order, this ground of appeal must be dismissed as manifestly inadmissible.

Fourth ground of appeal: infringement of Article 7(1)(b) of Regulation No 207/2009

Arguments of the parties

35 Think Schuhwerk submits that, by not accepting that OHIM infringed Article 7(1)(b) of Regulation No 207/2009, the General Court has itself infringed that provision.

36 It claims, first of all, that the case-law cited in paragraphs 31 to 33, 37 and 38 of the judgment under appeal on signs which are indistinguishable from the appearance of the goods referred to in the application for registration, and which apply in particular to three-dimensional marks constituted by the appearance of the goods themselves or by the packaging, is not relevant in the present case. Unlike the colouring of the toes of socks, shoelace aglets are not an indissociable element of shoes. Therefore, by basing its decision on that case-law, the General Court has disregarded the fact that the red shoe lace aglets may fulfil the function of indicating the origin of the goods. In that regard, Think Schuhwerk submits that the registration of that sign as a trade mark was also requested for the shoes, and that it does not understand why, in paragraph 36 of the judgment under appeal, the General Court give a ruling only as regards shoe laces.

37 The case-law on position marks is also not applicable, since, in the present case, the ‘appearance of the colour’ of the mark applied for must also be taken into consideration which confirms its independence as compared with the designated goods and, therefore, its distinctive character.

38 Therefore, the General Court, like the Board of Appeal, has wrongly applied stricter criteria for assessing distinctive character than those applicable to word or figurative marks, contrary to the case-law of the Court of Justice.

39 Second, both the Board of Appeal and the General Court wrongly held that the level of attention of the relevant public, as regards fashion items such as shoes, is not high.

40 Third, Think Schuhwerk submits that the General Court disregarded the fact that, in order to determine the distinctive character of the sign for which registration as a trade mark is sought, it matters little that it diverges significantly from the norm or customs of the sector concerned. In that connection, the General Court wrongly regarded Think Schuhwerk’s submissions on the shoe market as irrelevant, even though it held that the Board of Appeal had correctly taken that market into consideration in its analysis. Furthermore, contrary to the finding of the General Court in paragraph 49 of the judgment under appeal, Think Schuhwerk had indeed submitted arguments establishing that the colouring of certain parts of shoe laces is generally perceived by the relevant public as an indication of the commercial origin of the goods.

41 Fourth, Think Schuhwerk claims that the General Court disregarded the fact that OHIM breached the principle of equal treatment by failing to take account of registrations comparable to the mark applied for in the decision at issue. In that connection, the General Court gave no reasons in support of its finding, in paragraph 57 of the judgment under appeal, which states that the Board of Appeal was right to conclude that the registration would be incompatible with Regulation No 207/2009.

42 OHIM contends that the arguments related to the diversity of the design of shoes and laces submitted in relation to the market and the level of attention of the relevant public is part of the assessment of the facts and must, therefore, be dismissed as being manifestly inadmissible. Furthermore, the arguments concerning a disregard of the breach of the principle of equal treatment are inadmissible in so far as they seek a fresh assessment of the facts.

Findings of the Court

43 First, it must be borne in mind that, under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on points of law only. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, judgments in Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 39, and Les Éditions Albert René, C‑16/06 P, EU:C:2008:739, paragraph 68).

44 It must be held that Think Schuhwerk’s arguments on whether shoe lace aglets are an element indissociable from the laces and whether the level of attention of the relevant public is high are part of the assessment of the facts which is a matter reserved to the jurisdiction of the General Court. They must, therefore, be dismissed as being manifestly inadmissible.

45 Second, it must be observed that, by its first and third sets of arguments, Think Schuhwerk challenges, in essence, not only the findings reached by the General Court, to the effect that the mark for which registration is sought lacks distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, but also the relevance of the case-law by which the General Court dismissed its plea in law based on an infringement of that provision.

46 In that connection, first, it must be noted that the analysis of the General Court was based on its preliminary findings in paragraphs 35 and 36 of the judgment under appeal, according to which shoes lace aglets are indissociable from shoes and that the mark at issue would be confused with the appearance of the goods for which registration is sought, are findings of fact which are not subject to review by the Court in appeal proceedings.

47 Furthermore, according to the Court’s settled case-law, distinctive character, within the meaning of Article 7(1)(b) of Regulation No 207/2009 must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the mark (judgment in Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 34 and the case-law cited).

48 However, according to equally consistent case-law, the perception of the average consumer is not necessarily the same for trade marks consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes, since 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 in Henkel v OHIM, C‑144/06, EU:C:2007:577, paragraph 36 and the case-law cited).

49 The Court has also consistently held that, first, 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. Second, that case-law, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where, as in the present case, the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers (see judgment in Henkel v OHIM, C‑144/06, EU:C:2007:577, paragraphs 37 and 38 and the case-law cited).

50 As is clear from paragraphs 32 to 34 and 37 to 39 of the judgment under appeal, it is precisely that case-law that the General Court considered and applied in the present case, thereby validating the decision at issue without committing an error of law, since it had stated in its assessment, which cannot be appealed, as noted in paragraph 46 of the present order, that shoe lace aglets were indissociable from shoes and that the mark at issue would be indistinguishable from the appearance of the product covered by the application for registration.

51 It follows that the arguments according to which, for the purpose of determining the distinctive character of the mark applied for, the General Court incorrectly applied those legal criteria is manifestly unfounded.

52 Second, in so far as Think Schuhwerk challenges the finding of the General Court that that mark is devoid of distinctive character, it is sufficient to note that that finding results from a factual assessment and that Think Schuhwerk does not rely on any distortion of the facts or evidence. Therefore, in accordance with the case-law set out in paragraph 43 of the present order, those arguments are manifestly inadmissible.

53 Third, as to the argument that the General Court did not analyse the distinctive character of that mark in the light of the goods referred to in the application for registration and incorrectly stated that Think Schuhwerk had not submitted any argument establishing that coloured shoe lace aglets are usually perceived by the relevant public as an indication of the commercial origin of the goods, it must be stated that these arguments are based on an incorrect reading of the judgment under appeal.

54 First, it is clear from paragraph 36 thereof that the General Court recalled that shoes were products for which registration was sought and that the term ‘product’ used by the General Court in that paragraph refers to shoes with laces.

55 Second, it is true that, in paragraph 49 of the judgment under appeal, the General Court stated that Think Schuhwerk had not ‘[produced] any information suggesting that the colouring of certain parts of shoe laces is usually perceived by the relevant public as an indication of commercial origin’. However, it is clear from a reading of paragraphs 46 to 49 of the judgment under appeal, of which paragraph 49 constitutes the conclusion, that in so doing, the General Court simply held, at the end of the analysis of Think Schuhwerk’s arguments set out in those paragraphs, that the arguments and evidence submitted by the latter did not establish the distinctive character of the mark for which registration is sought. The General Court did not state that Think Schuhwerk had not put forward any arguments to establish distinctive character.

56 Consequently, Think Schuhwerk’s first and third sets of arguments must be dismissed as being in part manifestly inadmissible and in part manifestly unfounded.

57 Third, as to the alleged breach of the principle of equal treatment and the duty to state reasons, it must be observed that, in paragraphs 55 and 56 of the judgment under appeal, the General Court set out the settled case-law of the Court of Justice according to which, in the light of the principles of equal treatment and sound administration OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications, those principles must however be consistent with respect for legality and that, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (see, to that effect, judgment in Agencja Wydawnicza Technopol v OHIM, C‑51/01 P, EU:C:2011:139, paragraphs 74 to 77).

58 Therefore, since the General Court held that the Board of Appeal had rightly held that the application for registration at issue, having regard to the goods for which registration was sought and the perception of the relevant public, was precluded by the relative ground for refusal laid down in Article 7(1)(b) of Regulation No 207/2009, it could dismiss the plea in law based on the breach of that principle without committing an error of law.

59 Think Schuhwerk’s arguments based on the breach of the principle of equal treatment are therefore manifestly unfounded.

60 Furthermore, given that the General Court examined plea based on the incorrect application of Article 7(1)(b) of that regulation, in paragraphs 29 to 53 of the judgment under appeal, and thereby gave reasons for its dismissal, the alleged breach of the duty to give reasons is also clearly unfounded.

61 Consequently, this ground of appeal must be rejected as being in part manifestly inadmissible and in part manifestly unfounded.

62 It follows from all of the above considerations that the appeal must be dismissed in its entirety as being in part manifestly inadmissible and in part manifestly unfounded.

Costs

63 Under Article 138(1) of the Rules of Procedure of the Court of Justice, which applies to appeal proceedings pursuant to Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As OHIM sought an order for costs against the appellant, and the latter has been unsuccessful, the appellant must be ordered to pay the costs.

On those grounds, the Court (Eighth Chamber) hereby orders:

1. The appeal is dismissed.

2. Think Schuhwerk GmbH is ordered to pay the costs.

[Signatures]

( *1 ) Language of the case: German.