OPINION OF ADVOCATE GENERAL

SZPUNAR

delivered on 6 June 2018 ( 1 )

Case C‑26/17 P

Birkenstock Sales GmbH

v

European Union Intellectual Property Office (EUIPO)

(Appeal — EU trade mark — International registration designating the European Union of the mark consisting of a sign made up of a set of elements which are repeated regularly — Refusal by the examiner to grant protection under the EU trade mark system)

I. Introduction

1. By its appeal, Birkenstock Sales GmbH asks the Court to set aside the judgment of the General Court of the European Union of 9 November 2016, Birkenstock Sales v EUIPO (Representation of a pattern of wavy, crisscrossing lines), ( 2 ) by which the latter partially dismissed its action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 May 2014 (Case R 1952/2013-1) concerning its application for international registration designating the European Union of the figurative mark representing a pattern of wavy, crisscrossing lines (‘the decision at issue’).

2. By its judgment, the General Court partially upheld EUIPO’s decision, by which the latter had refused to grant protection of the international mark in the European Union for goods in Classes 10, 18 and 25 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 (‘the Nice Agreement’). The ground relied on in support of that refusal was that set out in Article 7(1)(b) of Regulation No 207/2009, ( 3 ) namely the lack of distinctive character of that international mark.

3. The appellant raises three grounds in support of its appeal. The first ground, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, is divided into three parts.

4. In accordance with the Court’s request, I shall restrict my analysis in this Opinion to the first part of the first ground of appeal. In that part, the appellant maintains, in essence, that in paragraph 54 et seq. of its judgment the General Court wrongly used the finding of a mere ‘possibility’ that a sign made up of a series of elements which are repeated regularly might be used as a surface pattern as the criterion for the applicability of the case-law relating to signs that are indissociable from the appearance of the goods. According to the appellant, that case-law is applicable only when the use of a sign as a surface pattern is ‘the most likely use’ of that sign for the goods concerned.

5. Thus, the legal question raised by the first part of the first ground of appeal concerns the conditions that must be satisfied in order for the case-law relating to signs that are indissociable from the appearance of the goods to be applied to marks consisting of signs made up of a set of elements which are repeated regularly. More specifically, the present appeal concerns, inter alia, the criteria for the applicability of the demanding requirements of case-law relating to the assessment of the distinctive character of signs that are indissociable from the appearance of the goods concerned. However, in order to ensure terminological consistency with the positions of the parties and especially with the judgments of the Court of Justice and of the General Court which address this issue, I shall instead refer in this Opinion to the criteria for the applicability of the case-law relating to that type of sign.

II. Legal context

6. Article 7 of Regulation No 207/2009, entitled ‘Absolute grounds for refusal’, provides, in paragraph 1(b) thereof: ‘1. The following shall not be registered: … (b) trade marks which are devoid of any distinctive character’.

7. Furthermore, Article 154(1) of that regulation provides that international registrations designating the European Union are to be subject to examination as to absolute grounds for refusal in the same way as applications for EU trade marks.

III. The proceedings before EUIPO

8. The appellant is the successor to a company which on 27 June 2012 obtained, on the basis of a German trade mark, an international registration from the International Bureau of the World Intellectual Property Organisation (WIPO) designating, inter alia, the European Union for the following figurative mark:

9. On 25 October 2012 EUIPO received notification of the international registration of the sign in question. The goods for which extended protection was sought are in Classes 10, 18 and 25 of the Nice Agreement, in particular those which correspond, for each of those classes, to the following description: – Class 10: ‘Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; suture materials for operations’; – Class 18: ‘Leather and imitations of leather, and goods made of these materials and included in this class; animal skins, hides’; – Class 25: ‘Clothing, headgear, footwear’.

10. By decision of 29 August 2013, the Examination Division of EUIPO notified the appellant of the total refusal to grant protection of the international mark in the European Union on the ground that the sign in question lacked distinctive character for the purpose of Article 7(1)(b) of Regulation No 207/2009, read in conjunction with Article 154(1) of that regulation. According to those provisions, extended protection must not be granted to an international registration which is devoid of any distinctive character. On 4 October 2013 the appellant filed a notice of appeal against that decision.

11. By the decision at issue, the First Board of Appeal of EUIPO dismissed that appeal, on the ground that the sign in question was devoid of any distinctive character in respect of all the goods for which extended protection had been sought.

12. According to the Board of Appeal, the sign in question, by reason of its intrinsic characteristics, could extend in all four directions of the square and consequently be used on any two-dimensional or three-dimensional surface. That sign would thus immediately be perceived as representing a surface pattern. The Board of Appeal also observed that it was well known that the surfaces of the goods for which extended protection had been sought, and their packaging, were decorated with patterns for a variety of reasons.

13. It was against that background that the Board of Appeal began by recalling that it is apparent from case-law that average consumers do not usually presume the commercial origin of goods on the basis of signs that are indissociable from the appearance of the goods themselves. Consequently, the sign in question would have a distinctive character only if it departed significantly from the sectoral standards or usual practices.

14. The Board of Appeal went on to consider that that case-law was applicable in the present case on the ground that the sign in question was indissociable from the appearance of the goods in question. Applying the criteria for assessing distinctive character developed in that case-law, the Board of Appeal concluded that the overall impression produced by that sign did not depart significantly from the usual practices of the sectors concerned. As a result, the international mark lacked any distinctive character in respect of all the goods concerned.

IV. The judgment under appeal

15. By application lodged at the Registry of the General Court on 1 August 2014, the appellant brought an action for annulment of the decision at issue, relying on a single plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009.

16. In the judgment under appeal, the General Court annulled the decision at issue in respect of the following goods: ‘artificial limbs, eyes and teeth’, ‘suture materials; suture materials for operations’ (Class 10 of the Nice Agreement), and ‘animal skins, hides’ (Class 18). In addition, the General Court dismissed the action as to the remainder as unfounded.

17. In reaching those findings, the General Court recalled, in paragraphs 23 to 27 of the judgment under appeal, the case-law relating to three-dimensional signs that are indissociable from the appearance of the goods.

18. The General Court went on to raise the question as to which criterion is the relevant one for determining whether a figurative sign that is made up of a series of elements which are repeated regularly may in fact be considered a surface pattern for a given product and must therefore be subject to the criteria for assessing distinctive character developed in relation to three-dimensional marks that are indissociable from the appearance of the goods.

19. In paragraph 54 of the judgment under appeal, the General Court held that a sign that is made up of a series of elements which are repeated regularly lends itself particularly well to being used as a surface pattern. There is therefore, in principle, a probability, inherent in that sign, that it will be used as a surface pattern. Thus, according to the General Court’s views as expressed in paragraph 55 of the judgment under appeal, it is only when the use of a surface pattern is unlikely in the light of the nature of the products at issue that such a sign cannot be considered a surface pattern in respect of the products at issue.

20. It is true that, in paragraph 56 of the judgment under appeal, the General Court referred to the judgment in Deichmann v OHIM (Representation of a curved band with dotted lines), ( 4 ) in which the General Court itself had upheld the Board of Appeal’s decision to base its assessment of the distinctive character of the mark at issue on ‘the most likely’ use of that mark. However, in paragraph 57 of the judgment under appeal, the General Court held that that reasoning could not be transposed to the present case, since the judgment in Deichmann v OHIM (Representation of a curved band with dotted lines) ( 5 ) does not concern the registration of a sign made up of a repetitive sequence of elements.

21. On that basis, the General Court held that the use of the international mark in question as a surface pattern was not ‘unlikely’ in the case of most of the goods for which trade mark protection had been sought by the appellant. Accordingly, the General Court held that the case-law developed in relation to three-dimensional marks that are indissociable from the appearance of the goods was applicable to the application for extended protection of the international mark in respect of the goods in Classes 10, 18 and 25 of the Nice Agreement, with the exception of the following goods: ‘artificial limbs, eyes and teeth’, ‘suture materials; suture materials for operations’ (Class 10 of the Nice Agreement), and ‘animal skins, hides’ (Class 18).

22. The General Court went on to conclude that the international mark was devoid of any distinctive character in so far as the appellant was seeking the protection of that mark for the goods in Classes 10, 18 and 25 of the Nice Agreement, with the exception of the goods mentioned above.

23. In the remainder of the grounds of the judgment under appeal, the General Court partially annulled the decision at issue and dismissed the action as to the remainder.

V. Forms of order sought and procedure before the Court

24. In its appeal, the appellant asks the Court to set aside the judgment under appeal in so far as the international mark is refused registration, to grant the form of order sought by it at first instance before the General Court concerning the goods in respect of which the action was dismissed, and to order EUIPO to pay the costs.

25. By the first part of the first ground of appeal, the appellant challenges the General Court’s finding that the mere ‘possibility’ that a sign constituting a mark might be used as a surface pattern is sufficient in order for the case-law relating to marks that are indissociable from the appearance of the goods covered to be applied to the international mark in question.

26. In support of that part, the appellant relies on paragraph 55 of the order in Deichmann v OHIM, ( 6 ) by which the Court dismissed the appeal filed against the judgment in Deichmann v OHIM (Representation of a curved band with dotted lines) ( 7 ) referred to in paragraph 56 of the judgment under appeal. According to that order, the decisive criterion for applying the case-law relating to signs that are indissociable from the appearance of the goods is not the possible use of the sign at issue as a surface pattern but its ‘most likely use’. Consequently, if the General Court had based its reasoning on the correct criterion of ‘the most likely use’, the international mark should not have been subject to the principles governing three-dimensional marks.

27. EUIPO considers, in the first place, that the first part of the first ground is inadmissible in so far as the appellant challenges the classification of the international mark as a repetitive sequence suitable for use as a surface pattern. In support of that plea of inadmissibility, EUIPO contends that the appeal is in fact intended to resubmit for assessment by the Court points of fact that have already been raised on several occasions.

28. In the second place, EUIPO considers that the first part of the first ground — in so far as it is admissible — is unfounded.

29. According to EUIPO, in reaching the solution adopted in the judgment under appeal the General Court was right to take into consideration the intrinsic characteristic of the international mark, which lends itself particularly well to being used as a surface pattern. Therefore, EUIPO is of the view that the General Court was entitled to consider that the mere possibility that the mark in question might be used as a surface pattern on the product or its packaging was a sufficient ground for applying the case-law relating to marks that are indissociable from the appearance of the goods covered.

30. Moreover, according to EUIPO, the Court has already confirmed that the mere possibility of a mark consisting of part of the shape of the goods for which protection is sought allows the case-law relating to marks that are indissociable from the appearance of the goods to be applied. It is against that background that EUIPO invokes paragraphs 57 and 59 of the judgment in Louis Vuitton Malletier v OHIM. ( 8 )

31. In its response, EUIPO observes that the appellant’s argument deriving from the order in Deichmann v OHIM, ( 9 ) by which the appellant seeks to demonstrate that the mere use of a mark as a surface pattern is not a sufficient ground for applying the case-law relating to marks that are indissociable from the appearance of the goods, has already been examined in the judgment under appeal. As a reminder, the General Court held, in paragraph 57 of the judgment under appeal, that the judgment in Deichmann v OHIM (Representation of a curved band with dotted lines), ( 10 ) upheld by the order of the Court cited by the appellant, could not be transposed to the present case, since it did not concern a sign which, owing to its intrinsic characteristics, lends itself particularly well to being used as a surface pattern.

VI. Analysis

A. Admissibility

32. EUIPO contends that the first part of the first ground is inadmissible in so far as the appellant challenges the classification of the international mark as a surface pattern.

33. It should first of all 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 of the European Union, 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. ( 11 )

34. It is against that background that it should be noted, in the first place, that, in the first part of the first ground of appeal, the appellant does not challenge the findings of the General Court concerning the fact that the international mark is capable of being used as a surface pattern. Nor does the appellant dispute that such use of the international mark is not unlikely.

35. The appellant does, however, challenge the criterion used by the General Court in order to justify applying the case-law relating to signs that are indissociable from the appearance of the goods. Whilst the General Court held that that case-law should be applied in the present case because the use of the international mark as a surface pattern was not an unlikely use, the appellant considers that that case-law is intended to be applied only when that is the most likely use of the mark concerned.

36. In the second place, EUIPO’s plea of inadmissibility seems to me to conflict somewhat with that party’s other considerations concerning the first part of the first ground.

37. In its response, EUIPO states that the Court confirmed, in the judgment in Louis Vuitton Malletier v OHIM, ( 12 ) that the possibility of a mark consisting of a part of the products it covers may represent a criterion for the applicability of the case-law relating to signs that are indissociable from the appearance of the goods. One of the points of contention between the parties in the case that gave rise to that judgment was whether the case-law relating to three-dimensional marks consisting of the appearance of the product itself also applies not only to figurative marks representing the whole product but also to those representing only a part of the product. ( 13 ) It was against that background that, in paragraph 56 of that judgment, the Court held that the General Court had not erred in law in referring to the case-law applicable to three-dimensional marks, and rejected as unfounded the argument relied upon in that connection in support of the part of the single ground of appeal concerned.

38. By that argument, rejected as unfounded, the appellant in that case had challenged, in the abstract, the criteria for the applicability ratione materiae of the case-law relating to three-dimensional marks, which, to my mind, constituted a point of law that could, as such, be invoked in the context of an appeal. The Court of Justice moreover saw things from that point of view also, since the appellant’s argument had not been declared inadmissible but had rather been rejected as unfounded.

39. So far as the present case is concerned, the first part of the first ground raised by the appellant relates to a similar issue. The appellant challenges, in the abstract, the criteria for the applicability ratione materiae of the case-law relating to marks that are indissociable from the appearance of the goods that were applied by the General Court in the judgment under appeal.

40. In the light of the foregoing considerations, I think that the appellant’s arguments in support of the first part of the first ground of appeal relate to a point of law. Consequently, I propose that the Court reject the plea of inadmissibility raised by EUIPO in so far as it relates to that part of the ground.

B. Substance

1. Preliminary observations

41. As a reminder, in the first part of the first ground, the appellant complains that the General Court was wrong to apply the case-law relating to signs that are indissociable from the appearance of the goods to the international mark. According to the General Court, that case-law is, in principle, applicable with regard to all the goods, with the exception of those in respect of which, in view of their nature, the use of such a sign as a surface pattern is unlikely. The appellant considers, however, that it is only when the use of a sign as a surface pattern is its most likely use that that case-law is intended to be applied.

42. It is against that background that I shall analyse, in the first place, the evolution of the scope of the case-law relating to signs that are indissociable from the appearance of the goods. That analysis will be useful in identifying the criteria for the applicability ratione materiae of that case-law. In the second place, I shall address the matter of whether those criteria can be fully transposed to marks consisting of signs made up of elements which are repeated regularly.

2. The evolution of the scope of the case-law relating to marks that are indissociable from the appearance of the goods covered

(a) Review of the case-law

43. The case-law relating to marks that are indissociable from the appearance of the goods covered by them stems from the judgments relating to three-dimensional marks consisting of the appearance of the product itself. ( 14 ) It is apparent from those judgments that 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. In such a case it could therefore prove more difficult to establish distinctiveness in relation to a three-dimensional mark than in relation to a word or figurative mark. This lack of distinctive character means that a sign is not capable of performing the essential function of a trade mark.

44. In any event, the case-law concerned is based on the idea that there is a difference between the relevant public’s perception of three-dimensional marks consisting of the appearance of the product itself, and its perception of word and figurative marks consisting of signs which are unrelated to the appearance of the products they cover. ( 15 ) Therefore, that case-law does not apply to all three-dimensional marks, but exclusively to those consisting of the shape of the goods concerned. Moreover, it is not possible to dismiss outright the possibility of applying that case-law to word and figurative marks, in so far as they are not independent of such goods.

45. Those considerations are borne out by the analysis of the evolution of the scope of the case-law developed in relation to three-dimensional marks consisting of the appearance of the product itself.

46. It is well established that that case-law applies where the mark in respect of which registration is sought is a figurative mark consisting of the two-dimensional representation of the product concerned. It is against that background that the Court has recognised that, in such a case, the mark does not consist of a sign unrelated to the appearance of the products it covers. ( 16 ) For the same reasons, that case-law is also applicable where only a part of the product covered is represented by a two-dimensional mark. ( 17 )

47. Furthermore, the Court recently upheld the reasoning of the General Court to the effect that the classification of the mark concerned was irrelevant where the issue was whether the criteria for assessing its distinctive character, as developed in relation to three-dimensional marks, were applicable in the case concerned. Therefore, the Court indirectly accepted that it is not the classification of a mark which is decisive in that regard but the fact that it is indissociable from the appearance of the product concerned. ( 18 )

48. However, I note that the Court has already held, in the judgment in Louis Vuitton Malletier v OHIM, that the application of the case-law relating to three-dimensional figurative marks consisting, respectively, of the shape of the product concerned or of a representation of that shape presupposes the existence of a link between the mark and that product which will be recognised by the relevant public. ( 19 ) Furthermore, in the judgments forming part of the same line of case-law, the Court upheld the findings of the General Court in respect of the application of the case-law concerned to a mark consisting of a three-dimensional or two-dimensional sign incorporating a figurative element, on the ground that that figurative element did not consist of a sign which was unrelated to the appearance of the products, but constituted, in the mind of the consumer, only a decorative configuration. ( 20 )

49. It follows from this analysis of case-law that the applicability of the case-law relating to marks that are indissociable from the appearance of the goods they cover does not depend on there being no technical possibility of dissociating the sign from the product but on there being a resemblance, ( 21 ) perceptible by the relevant public, between a sign and the products, or some of the products, it covers.

(b) Interim conclusion

50. Thus, by way of an interim conclusion, I note, first, that the applicability of the criteria for assessing distinctive character developed initially by case-law in relation to certain three-dimensional marks is not dependent on the classification given to the mark concerned.

51. Therefore, even though the term ‘pattern mark’ was incorporated into the EU trade mark system upon the entry into force of Implementing Regulation (EU) 2017/1431, ( 22 ) there is no need to answer the question whether the international mark in question should be classified as a pattern mark within the meaning of that regulation. Furthermore, Article 3(3)(e) of Implementing Regulation 2017/1431 covers only the way in which a trade mark must be represented ‘in the case of [it] consisting exclusively of a set of elements which are repeated regularly’. ( 23 ) In any event, in the light of the observations set out in points 47 and 50 of this Opinion, that provision does not contain a definition of a pattern mark capable of having any effect on the assessment of the latter’s distinctive character. Moreover, the application for extension of the protection stemming from the international mark was filed by the appellant before the entry into force of Implementing Regulation 2017/1431.

52. Second, it is the fact that a sign that constitutes a mark is not indissociable from the appearance of the goods covered which determines the applicability of the criteria developed in relation to certain three-dimensional marks. Thus, since that case-law presupposes the existence of a resemblance between a sign and the products it covers, it cannot be applied to a mark solely by reason of its intrinsic characteristics, assessed in the abstract. Therefore, the matter of whether or not that case-law is applicable means that the goods for which trade mark protection is sought must be taken into account.

53. Third, in order to answer the question whether a sign is indissociable from the appearance of the goods for which trade mark protection has been sought, it is necessary to adopt the perspective of the relevant public.

3. Whether the case-law criteria may be transposed to marks consisting of signs made up of a set of elements which are repeated regularly

(a) Delimitation of the issues

54. It is easy to establish the fact that a sign is indissociable from the appearance of the goods covered where an application for registration relates to a sign previously affixed to or otherwise associated with the goods for which trade mark protection is sought.

55. For example, the case that gave rise to the judgment in Freixenet v OHIM ( 24 ) concerned the specific appearance of the surface of the goods in Class 33 of the Nice Agreement, namely ‘sparkling wines’, for which trade mark protection had been sought. The marks in respect of which registration had been sought consisted of signs representing frosted bottles. It was against that background that the Court confirmed that the case-law developed in relation to three-dimensional marks that are indissociable from the appearance of the goods covered also applies where the trade mark in respect of which registration is sought is an ‘other’ mark consisting of the specific appearance of the surface of the necessary packaging of the products it covers. ( 25 )

56. The existence of a resemblance between a sign constituting a mark and the products it covers is less perceptible where the sign at issue consists, as in the present case, of a square graphic representation of a set of elements which are repeated regularly.

57. It is true that the Court has upheld in the past, with an express reference to the case-law developed in relation to three-dimensional marks that are indissociable from the appearance of the goods covered, the findings of the General Court, which had held that an abstract design was a sign that was indissociable from the appearance of the goods for which it was claimed. ( 26 ) However, the design at issue in that case was clearly intended to be applied to the surface of a product.

58. Thus, the Court confirmed in principle that the case-law relating to marks that are indissociable from the appearance of the goods was applicable to marks consisting of patterns. However, in the case-law referred to above, the Court did not expressly adopt a position on the degree of probability to be accepted in order for a figurative mark, such as that at issue in the present case, made up of a series of elements which are repeated regularly, to be considered a surface pattern that is indissociable from the appearance of the goods concerned.

59. Nor, in any event, can any definitive conclusions be drawn from the case-law of the Court to the effect that the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question or its packaging, the greater the likelihood of the shape being devoid of any distinctive character. ( 27 )

60. Indeed, it seems to me that that passage relates, not to the criteria for the applicability of the case-law developed in relation to three-dimensional marks that are indissociable from the appearance of the goods, but to the assessment of the distinctive character of a mark in the light of that case-law.

61. That interpretation is borne out by the analysis of the judgment in Mag Instrument v OHIM. ( 28 ) In paragraph 31 of that judgment, the Court recalled the considerations from case-law concerning the connection between, on the one hand, the distinctive character of a mark consisting of the shape of the products it covers and, on the other hand, the most likely shape of those products. The Court went on to state, in paragraph 32 of that judgment, that where a three-dimensional mark consists of the shape of the product for which registration is sought, the mere fact that that shape is a ‘variant’ of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character. Thus, it seems clear to me that the considerations relating to the connection between the distinctive character of a mark and the most likely shape of the products for which trade mark protection is sought concern, in essence, the assessment of the distinctive character of a mark. Accordingly, the paragraphs of the judgments cited above did not concern criteria for the applicability of the case-law relating to signs that are indissociable from the appearance of the goods concerned.

62. In the same vein, the General Court has also explained in its case-law that the analysis of the shape most likely to be taken by the product covered by a mark constitutes, in essence, the analysis of the standards or usual practices of the sector in question. ( 29 )

63. However, the appellant maintains that, according to the case-law of the Court, it is necessary for the use of the sign at issue as a surface pattern to be ‘the most likely use’ of that sign. In putting forward in that regard a point of view close to the appellant’s, albeit arriving at different conclusions, EUIPO states that it is apparent from the case-law of the Court that the mere possibility of a mark consisting of part of the shape of the goods for which protection is sought is sufficient in order to apply the case-law relating to signs that are indissociable from the appearance of the goods.

64. Thus, the exchange of arguments arising in respect of the first part of the first ground of appeal concerns, inter alia, the question whether the Court’s reasoning in the judgment in Louis Vuitton Malletier v OHIM ( 30 ) or the order in Deichmann v OHIM ( 31 ) can be transposed to the present case. It is against that background that I shall begin by analysing those decisions of the Court. I shall go on to address the solution adopted by analysing the case-law of the General Court, which, to my mind, has resolved this issue in several of its judgments.

(b) Analysis of the case-law of the Court

(1) Relevance of the judgment in Louis Vuitton Malletier v OHIM

65. As a reminder, EUIPO contends that the Court confirmed, in its judgment in Louis Vuitton Malletier v OHIM, ( 32 ) that the possibility of a mark consisting of part of the shape of the goods for which protection is sought may constitute a criterion for the applicability of the case-law relating to signs that are indissociable from the appearance of the goods. According to EUIPO, the same criterion should also apply in the present case.

66. In that context, I note that, in response to the appellant’s argument that the criterion to be used in order for a figurative mark made up of a series of elements which are repeated regularly to be considered a surface pattern follows from the order in Deichmann v OHIM, ( 33 ) EUIPO merely states that that argument has been examined in the judgment under appeal. For the record, in paragraph 57 of the judgment under appeal, the General Court held that its judgment in the case that gave rise to that order could not be transposed to the present case because it did not concern a sign made up of a repetitive sequence of elements.

67. However, the judgment in Louis Vuitton Malletier v OHIM ( 34 ) also did not concern the registration of a sign made up of a repetitive sequence of elements. In fact, that judgment concerned an application for registration of a figurative mark representing a locking device.

68. Thus, EUIPO’s position seems to me to be contradictory in so far as, in support of its response, on the one hand, it relies on the judgment in Louis Vuitton Malletier v OHIM ( 35 ) and, on the other hand, it seems to consider that the General Court was entitled to conclude that the order in Deichmann v OHIM ( 36 ) could not be transposed to the present case.

69. For those reasons, without prejudging the question as to whether the criterion used by the Court in the judgment in Louis Vuitton Malletier v OHIM ( 37 ) was well founded, unlike EUIPO, I am not convinced that definitive conclusions, which can be transposed to the present case, can be drawn from that judgment.

(2) Relevance of the order in Deichmann v OHIM

70. The appellant, for its part, relies, in support of the first part of the first ground of appeal, on paragraph 55 of the order in Deichmann v OHIM. ( 38 ) It considers that it is apparent from the case-law of the Court that it is the most likely use of a sign that is decisive as regards the application of the case-law relating to marks that are indissociable from the appearance of the goods. Consequently, according to the appellant, that criterion should be applied to the international mark in question.

71. I do not share that view.

72. It should be noted that the case that gave rise to the order in Deichmann v OHIM ( 39 ) concerned an application for registration as a Community trade mark of a figurative mark representing a curved band with dotted lines. Thus, the sign constituting the mark at issue was not made up of elements which are repeated regularly.

73. In that regard, I must admit, in the first place, that I am sympathetic to the appellant’s argument that any word or figurative mark could, in theory, be extended or reproduced ad infinitum and be used as a pattern affixed to the surface of products. This is a fortiori the case given that the case-law relating to marks that are indissociable from the appearance of the goods covered applies not only to marks that are indissociable from the appearance of the product, but also to those that are indissociable from a part of the product covered. ( 40 )

74. However, I acknowledge that there is a difference between, on the one hand, a mark consisting of a sign which is repeated regularly and, on the other hand, the reproduction ad infinitum of other figurative or word marks constituted and registered as single signs and suitable for use as such.

75. It is clear that marks belonging to that second category may be multiplied, even if they do not consist of signs which are repeated regularly. However, each element of such a multiplication, taken individually, constitutes a sign which is not devoid of any distinctive character.

76. That is not so, in principle, in the case of a mark consisting of a sign made up of a series of elements which are repeated regularly. It is true that, in theory, such a mark may be split up or broken down in order to extract a single series of elements from that mark. However, it seems to me that such a single series of elements would, in principle, be devoid of any distinctive character, owing to its banality, and could not constitute a trade mark within the meaning of Regulation No 207/2009.

77. That, to my mind, is the reason why the degree of probability that a sign made up of a series of elements which are repeated regularly will be used as a surface pattern that is indissociable from the appearance of specific products should be higher than for other signs constituting word and figurative marks. Signs made up of elements which are repeated regularly are, to some extent, intended to be affixed to the surface or packaging of goods, since they do not consist of elements which, taken individually, may be registered and used as trade marks enabling the relevant public to identify the origin of the goods in question. Accordingly, it is unlikely that those signs will not be used as surface patterns.

78. In the second place, I note that, in case-law, the criteria developed in relation to three-dimensional marks that are indissociable from the appearance of the goods are usually applied to marks consisting of signs made up of a set of elements which are repeated regularly, affixed in advance to the goods for which trade mark protection is sought. ( 41 )

79. It is against that background that it is necessary to take into account the fact that, following registration of a sign consisting of a square graphic representation of the same set of elements which are repeated regularly, the proprietor might affix such a sign to the surface of the goods for which protection has been sought. In any event, statements regarding the intended or actual use of a mark are liable to be altered after its registration and cannot therefore have any bearing on the assessment of its registrability. ( 42 )

80. Consequently, in such a case, accepting the degree of probability suggested by the appellant in the first part of the first ground of appeal could make it possible systematically to avoid the application of the criteria developed in relation to three-dimensional marks that are indissociable from the appearance of the goods, notwithstanding the fact that the marks concerned lend themselves particularly well to being used as surface patterns and will probably be used as such.

81. In the light of the foregoing considerations, I am inclined to agree with the position adopted by the General Court in paragraphs 54 and 55 of the judgment under appeal that it is only when the use of a surface pattern is unlikely in view of the nature of the products at issue that such a sign cannot be considered a surface pattern in respect of the products at issue.

82. Nevertheless, I shall now compare those considerations with the approach adopted by the General Court in its case-law relating to signs made up of a set of elements which are repeated regularly.

(c) Analysis of the case-law of the General Court

83. The General Court has on several occasions applied the case-law developed in relation to three-dimensional marks consisting of the appearance of the product itself to a figurative sign representing a chequered pattern.

84. As regards the goods for which trade mark protection has been sought, the General Court has usually held that the possibility of a mark consisting of part of the shape of the goods concerned is a criterion for the applicability of the case-law relating to signs that are indissociable from the appearance of the goods for which trade mark protection is sought. ( 43 )

85. It is true that, recently, with regard to a figurative mark described as a ‘red and white Vichy motif’, registered for ‘milk and milk products, with the exclusion of milk-based puddings and desserts’, the General Court did not rely on the case-law relating to three-dimensional marks in its analysis concerning the plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009. The General Court, like the Board of Appeal of OHIM, applied the case-law according to which a sign which is excessively simple is not in itself capable of conveying a message which consumers will be able to remember and is therefore devoid of any distinctive character. ( 44 ) I am aware that that reasoning was to some extent determined by the decision of the Board of Appeal.

86. In response to a question put by the Court at the hearing, EUIPO stated that a sign may be devoid of any distinctive character for several reasons and that, therefore, in such a case, the Board of Appeal may choose between those two lines of case-law when it carries out its assessment of the distinctive character of a mark.

87. Thus, it is apparent from this analysis that, for the General Court, it is sufficient that the use of a sign as a surface pattern is ‘likely’ in order to apply the case-law developed in relation to three-dimensional marks that are indissociable from the appearance of the goods covered. Conversely, that case-law would not be applicable where such use is unlikely.

88. Those considerations cannot be called into question by the fact that, in the context of national trade mark systems, the competent courts assess the distinctive character of marks consisting of signs made up of a set of elements which are repeated regularly without making any reference to the case-law relating to marks that are indissociable from the appearance of the goods. ( 45 ) It is settled case-law that the legality of the decisions of the Boards of Appeal must be assessed, not on the basis of a previous decision-making practice of those boards, but solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union. ( 46 )

89. In the light of my observations as set out above, I consider that the first part of the first ground of appeal is unfounded. Like the General Court, I consider that it is only when the use of a surface pattern is unlikely in view of the nature of the products at issue that such a sign cannot be considered a surface pattern in respect of the products at issue and, therefore, that the case-law developed in relation to three-dimensional marks that are indissociable from the appearance of the goods is not applicable to it.

VII. Conclusion

90. On those grounds, and without prejudice to the merits of other parts of the first ground or of other grounds, I propose that the Court reject the first part of the first ground of appeal as unfounded.

( 1 ) Original language: French.

( 2 ) T‑579/14, EU:T:2016:650, ‘the judgment under appeal’.

( 3 ) Council Regulation of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

( 4 ) Judgment of 13 April 2011, Deichmann v OHIM (Representation of a curved band with dotted lines) (T‑202/09, not published, EU:T:2011:168, paragraph 47).

( 5 ) Judgment of 13 April 2011, Deichmann v OHIM (Representation of a curved band with dotted lines) (T‑202/09, not published, EU:T:2011:168).

( 6 ) Order of 26 April 2012, Deichmann v OHIM (C‑307/11 P, not published, EU:C:2012:254).

( 7 ) Judgment of 13 April 2011, Deichmann v OHIM (Representation of a curved band with dotted lines) (T‑202/09, not published, EU:T:2011:168).

( 8 ) Judgment of 15 May 2014, Louis Vuitton Malletier v OHIM (C‑97/12 P, not published, EU:C:2014:324).

( 9 ) Order of 26 April 2012, Deichmann v OHIM (C‑307/11 P, not published, EU:C:2012:254).

( 10 ) Judgment of 13 April 2011, Deichmann v OHIM (Representation of a curved band with dotted lines) (T‑202/09, not published, EU:T:2011:168).

( 11 ) See orders of 13 September 2011, Wilfer v OHIM (C‑546/10 P, not published, EU:C:2011:574, paragraph 62 and the case-law cited), and of 11 September 2014, Think Schuhwerk v OHIM (C‑521/13 P, EU:C:2014:2222, paragraph 43 and the case-law cited).

( 12 ) Judgment of 15 May 2014, Louis Vuitton Malletier v OHIM (C‑97/12 P, not published, EU:C:2014:324).

( 13 ) See, regarding the positions of the appellant and of EUIPO, respectively, paragraphs 43 and 47 of the judgment of 15 May 2014, Louis Vuitton Malletier v OHIM (C‑97/12 P, not published, EU:C:2014:324).

( 14 ) See, to that effect, in the context of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), judgments of 29 April 2004, Henkel v OHIM (C‑456/01 P and C‑457/01 P, EU:C:2004:258); of 7 October 2004, Mag Instrument v OHIM (C‑136/02 P, EU:C:2004:592); and of 12 January 2006, Deutsche SiSi-Werke v OHIM (C‑173/04 P, EU:C:2006:20).

( 15 ) See, to that effect, in the context of Regulation No 40/94, judgments of 29 April 2004, Henkel v OHIM (C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 38); of 7 October 2004, Mag Instrument v OHIM (C‑136/02 P, EU:C:2004:592, paragraph 30); and of 12 January 2006, Deutsche SiSi-Werke v OHIM (C‑173/04 P, EU:C:2006:20, paragraph 28).

( 16 ) See judgment of 22 June 2006, Storck v OHIM (C‑25/05 P, EU:C:2006:422, paragraph 29).

( 17 ) See order of 13 September 2011, Wilfer v OHIM (C‑546/10 P, not published, EU:C:2011:574, paragraph 59).

( 18 ) See, to that effect, order of 16 May 2011, X Technology Swiss v OHIM (C‑429/10 P, not published, EU:C:2011:307, paragraphs 36 to 38). See, also, judgment of the General Court of 13 April 2011, Deichmann v OHIM (Representation of a curved band with dotted lines) (T‑202/09, not published, EU:T:2011:168, paragraph 41).

( 19 ) Judgment of 15 May 2014, Louis Vuitton Malletier v OHIM (C‑97/12 P, not published, EU:C:2014:324, paragraph 55). Emphasis added.

( 20 ) See, with regard to three-dimensional marks, judgment of 6 September 2012, Storck v OHIM (C‑96/11 P, not published, EU:C:2012:537, paragraphs 37 and 38). With regard to two-dimensional marks, see judgment of 4 May 2017, August Storck v EUIPO (C‑417/16 P, not published, EU:C:2017:340, paragraphs 40 and 42). Emphasis added.

( 21 ) By the word ‘resemblance’, I mean a resemblance by association. I do not use the term ‘association’, in order to avoid confusion with the use of that term in the context of Article 8(5) of Regulation No 207/2009. In any event, by using the word ‘resemblance’, I am not prejudging the impossibility of applying the case-law developed in relation to three-dimensional marks that are indissociable from the appearance of the goods in situations where trade mark protection is sought in respect of services. It is against that background that I note that, in a series of judgments, the General Court has stated that that case-law also applies where the mark applied for is a figurative mark consisting of a coloured pattern without any contours. See paragraph 26 of the four judgments delivered on 10 September 2015: EE v OHIM (Representation of white dots on a grey background) (T‑77/14, not published, EU:T:2015:620); EE v OHIM (Representation of white dots on a blue background) (T‑94/14, not published, EU:T:2015:618); EE v OHIM (Representation ofwhite dots on a yellow background) (T‑143/14, not published, EU:T:2015:616); and EE v OHIM (Representation of white dots on an ivory background) (T‑144/14, not published, EU:T:2015:615). In those judgments, the General Court did not hesitate to apply the case-law relating to three-dimensional marks to marks consisting of colours in so far as trade mark protection had been sought in respect of services. I note that this is also the position favoured by EUIPO in its Guidelines, which state that a pattern mark that has been considered devoid of any distinctive character for the products it covers must also be considered devoid of any distinctive character for services that are closely connected with those goods. See Guidelines concerning proceedings before EUIPO — Part B, Section 4, Chapter 3, paragraph 13.

( 22 ) Commission Implementing Regulation of 18 May 2017 laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark (OJ 2017 L 205, p. 39).

( 23 ) See, to that effect, my Opinion in Louboutin and Christian Louboutin (C‑163/16, EU:C:2018:64, point 33).

( 24 ) Judgment of 20 October 2011 (C‑344/10 P and C‑345/10 P, EU:C:2011:680).

( 25 ) Judgment of 20 October 2011, Freixenet v OHIM (C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 48).

( 26 ) Order of 28 June 2004, Glaverbel v OHIM (C‑445/02 P, EU:C:2004:393, paragraphs 23 and 24).

( 27 ) See, to that effect, in the context of Regulation No 40/94, judgments of 7 October 2004, Mag Instrument v OHIM (C‑136/02 P, EU:C:2004:592, paragraph 31); of 29 April 2004, Henkel v OHIM (C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 39); and of 12 January 2006, Deutsche SiSi-Werke v OHIM (C‑173/04 P, EU:C:2006:20, paragraph 31).

( 28 ) Judgment of 7 October 2004 (C‑136/02 P, EU:C:2004:592).

( 29 ) See judgment of 29 January 2013, Germans Boada v OHIM (Manual tile-cutting machine) (T‑25/11, not published, EU:T:2013:40, paragraph 99). See also, to that effect, judgment of 29 June 2015, Grupo Bimbo v OHIM (Shape of a Mexican tortilla) (T‑618/14, not published, EU:T:2015:440, paragraphs 25 and 26). In that judgment, the General Court held that ‘the more closely the shape for which registration as a mark is sought 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’ and that, conversely, ‘only a trade mark which departs significantly from the sectoral standards or usual practices and is thus capable of performing its essential function of indicating origin, is not devoid of any distinctive character’.

( 30 ) Judgment of 15 May 2014, Louis Vuitton Malletier v OHIM (C‑97/12 P, not published, EU:C:2014:324).

( 31 ) Order of 26 April 2012, Deichmann v OHIM (C‑307/11 P, not published, EU:C:2012:254).

( 32 ) Judgment of 15 May 2014, Louis Vuitton Malletier v OHIM (C‑97/12 P, not published, EU:C:2014:324, paragraphs 57 and 59).

( 33 ) Order of 26 April 2012, Deichmann v OHIM (C‑307/11 P, not published, EU:C:2012:254).

( 34 ) Judgment of 15 May 2014, Louis Vuitton Malletier v OHIM (C‑97/12 P, not published, EU:C:2014:324, paragraphs 57 and 59).

( 35 ) Judgment of 15 May 2014, Louis Vuitton Malletier v OHIM (C‑97/12 P, not published, EU:C:2014:324, paragraphs 57 and 59).

( 36 ) Order of 26 April 2012, Deichmann v OHIM (C‑307/11 P, not published, EU:C:2012:254).

( 37 ) Judgment of 15 May 2014, Louis Vuitton Malletier v OHIM (C‑97/12 P, not published, EU:C:2014:324, paragraphs 57 and 59).

( 38 ) Order of 26 April 2012 (C‑307/11 P, not published, EU:C:2012:254).

( 39 ) Order of 26 April 2012 (C‑307/11 P, not published, EU:C:2012:254).

( 40 ) In that context, see the case-law referred to in point 46 of this Opinion.

( 41 ) See, in particular, the case-law referred to in point 55 of this Opinion.

( 42 ) See, to that effect, judgment of 31 May 2006, De Waele v OHIM (Shape of a sausage) (T‑15/05, EU:T:2006:142, paragraphs 28 and 29).

( 43 ) See, inter alia, judgments of 19 September 2012, Fraas v OHIM (Tartan pattern in light grey, dark grey, beige, dark red and brown) (T‑326/10, not published, EU:T:2012:436, paragraphs 52 to 57); Fraas v OHIM (Tartan pattern in black, beige, brown, dark red and grey) (T‑26/11, not published, EU:T:2012:440, paragraphs 53 to 57); Fraas v OHIM (Tartan pattern in dark grey, light grey, black, beige, dark red and light red) (T‑50/11, not published, EU:T:2012:442, paragraphs 51 and 52); 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, paragraphs 29 and 30), and Louis Vuitton Malletier v OHIM — Nanu-Nana (Representation of a grey chequerboard pattern) (T‑360/12, not published, EU:T:2015:214, paragraphs 29 and 30).

( 44 ) See judgment of 3 December 2015, Compagnie des fromages & Richesmonts v OHIM — Grupo Lactalis Iberia (Representation ofa red and white Vichy motif) (T‑327/14, not published, EU:T:2015:929, paragraph 33).

( 45 ) For example, in its judgment of 1 December 2010 (No 09/02580), the cour d’appel de Paris (Court of Appeal, Paris, France) found that a mark consisting of the Vichy pattern was not devoid of any distinctive character, on the ground that it had not been established that the use of that pattern in the packaging of food products was unremarkable and commonplace. Moreover, the cour d’appel de Paris, in its judgment of 14 December 2012 (No 12/05245), also held that a mark consisting of a monochrome tile, designed to protect goods in Class 25 of the Nice Agreement, specifically shoes, was not devoid of any distinctive character either.

( 46 ) See, to that effect, in the context of the previous practice of the Boards of Appeal with regard to Community trade marks under the regime established by Regulation No 40/94, judgment of 15 September 2005, BioID v OHIM (C-37/03 P, EU:C:2005:547, paragraph 47).