Case T‑359/12

Louis Vuitton Malletier

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Invalidity proceedings — Community figurative mark representing a brown and beige chequerboard pattern — Absolute ground for refusal — No distinctive character — No distinctive character acquired through use — Article 7(1)(b) and Article 7(3) of Regulation (EC) No 207/2009 — Article 52(1) and (2) of Regulation No 207/2009’

Summary — Judgment of the General Court (Second Chamber), 21 April 2015

Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Distinctive character acquired through use — Trade mark devoid of distinctive character throughout the European Union

Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Invalidity proceedings concerning absolute grounds for refusal — Examination restricted to the submissions of the parties

Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Three-dimensional trade marks consisting of the shape of the product itself — Distinctive character — Criteria for assessment

The criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. 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 word 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 when there is no graphic or word 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 word or figurative mark. Furthermore, the more closely the shape in respect of which registration as a trade mark is applied for resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. 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 that regulation. (see paras 20-23)

The case-law on the criteria for assessing the distinctiveness of three-dimensional trade marks consisting of the appearance of the product itself also applies where 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. That is also the case for a figurative mark consisting of a part of the shape of the product that it represents, inasmuch as the relevant public will immediately and without further thought perceive it as a representation of a particularly interesting or attractive detail of the product in question, rather than as an indication of its commercial origin. (see paras 24, 25)

See the text of the decision. (see paras 35-45, 104, 120)

See the text of the decision. (see paras 47-51)

See the text of the decision. (see paras 58-62)

Article 7(3) of Regulation No 207/2009 provides that the absolute ground for refusal set out in Article 7(1)(b) of that regulation does not preclude the registration of a trade mark if it has become distinctive in relation to the goods for which registration has been requested in consequence of the use which has been made of it. Similarly, Article 52(2) of Regulation No 207/2009 provides, inter alia, that, where the Community trade mark has been registered in breach of Article 7(1)(b), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. Under Article 165(1) and (4) of Regulation No 207/2009, evidence of distinctive character acquired through use must be produced only for the States that were members of the European Union at the time of filing the application for registration of the contested mark. A sign devoid of inherent distinctive character which, in consequence of the use made of it prior to the filing of the application for its registration as a Community trade mark, has acquired distinctive character for the goods or services referred to in the application for registration is accepted for registration under Article 7(3) of Regulation No 207/2009, given that it is not a mark ‘registered contrary to the provisions of Article 7’. Article 52(2) of Regulation No 207/2009 is therefore wholly irrelevant to that situation. The latter provision covers, rather, marks whose registration was contrary to the grounds for refusal in Article 7(1)(b) to (d) of Regulation No 207/2009 and which, in the absence of such a provision, would have had to be declared invalid pursuant to Article 52(1) of Regulation No 207/2009. The precise purpose of Article 52(2) of Regulation No 207/2009 is to maintain the registration of such of those marks which, because of the use that has been made of them, have in the meantime — that is to say, after their registration — acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7 of Regulation No 207/2009. (see paras 79-82)