ORDER OF THE COURT (Sixth Chamber)

17 October 2008 ( )

(Appeal – Community trade mark – Regulation (EC) No 40/94 – Article 7(3) – Figurative mark representing the texture of a glass surface – Refusal of registration – Evidence of distinctive character acquired through use – Target public and territory to be considered)

In Case C‑513/07 P,

APPEAL pursuant to Article 56 of the Statute of the Court of Justice, brought on 19 November 2007,

AGC Flat Glass Europe SA, formerly Glaverbel SA, established in Jumet (Belgium), represented by T. Koerl, Rechtsanwalt,

applicant,

the other party to the proceedings being:

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

defendant at first instance,

THE COURT (Sixth Chamber),

composed of J.-C. Bonichot, President of the Chamber, P. Kūris (Rapporteur) and L. Bay Larsen, Judges,

Advocate General: P. Mengozzi,

Registrar: R. Grass,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, AGC Flat Glass Europe SA, formerly Glaverbel SA (‘Flat Glass’), seeks to have set aside the judgment of the Court of First Instance of 12 September 2007 in Case T-141/06 Glaverbel v OHIM (Texture of a glass surface) (‘the judgment under appeal’), in which the Court of First Instance dismissed its action seeking the annulment of the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 March 2006 (Case R 986/2004-4), refusing registration of a figurative mark representing the texture of a glass surface (‘the contested decision’).

Legal context

2 Under Article 7(1) and (3) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1):

‘1. The following shall not be registered:

…

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

…

2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.

3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.’

3 Article 15 of that regulation states as follows:

‘1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

2. The following shall also constitute use within the meaning of paragraph 1:

(a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

(b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes.

3. Use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor.’

The background to the dispute

4 The background to the dispute was set out by the Court of First Instance in paragraphs 1 to 10 of the judgment under appeal as follows:

‘1 On 27 May 2003, [Flat Glass] filed an application with [OHIM] for registration as a Community trade mark of the following figurative mark consisting of a design applied to the surface of goods, pursuant to Council Regulation (EC) No 40/94 …:

2 The goods in respect of which registration was sought are in Classes 19 and 21 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’)], and correspond to the following description for each of the Classes:

– Class 19: ‘Building glass; patterned glass; glazing; glass sheets for building; glass screens and partitions’;

– Class 21: ‘Unworked or semi-worked glass (except glass used in building); patterned glass (except glass used in building); glass sheets (except glass used in building); glass sheets for use in the manufacture of sanitary installations, showers, shower walls, shower enclosures, refrigerator shelves, glazing, double glazing, building partitions, building screens, doors, cupboard doors, furniture, and kitchen cutting boards’.

3 By letter of 13 November 2003 the examiner informed [Flat Glass] that the trade mark application did not appear to be eligible for registration by reason of the absolute ground for refusal laid down in Article 7(1)(b) of Regulation No 40/94.

4 In response to the examiner’s letter, [Flat Glass] maintained that, notwithstanding the fact that it considered the mark to be prima facie registrable, the mark had become distinctive in consequence of the use which had been made of it. The applicant also submitted a number of documents and declarations in support of that argument, in particular, declarations from professionals in the glass sector (trade journalists, glass processors, wholesalers and competing manufacturers) who assert, essentially, that, upon seeing the design in dispute, the person making the declaration immediately recognises a specific glass design originating from [Flat Glass]. It also produced declarations from an employee of its intellectual property department stating that the sign has been used in the territory of the European Community since approximately 1970 and showing the volume of sales between 1993 and 2001. In addition, [Flat Glass] provided examples of advertising material.

5 By decision of 2 September 2004 the examiner refused the application in its entirety for all the goods listed in the application on the basis of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation No 40/94.

6 On 25 October 2004 [Flat Glass] brought an appeal against the examiner’s decision.

7 By [the contest decision], notified to [Flat Glass] on 21 March 2006, the Fourth Board of Appeal dismissed the appeal. According to the Board of Appeal, the examiner rightly refused the application for registration on the basis of Article 7(1)(b) of Regulation No 40/94, since the mark applied for did not possess the minimum amount of distinctiveness required under that article.

8 In addition, according to the contested decision, the evidence produced by [Flat Glass] did not warrant the conclusion that the mark applied for had distinctive character acquired through use within the meaning of Article 7(3) of Regulation No 40/94.

9 In relation to distinctive character acquired through use, the Board of Appeal observed that, since the evidence submitted by [Flat Glass] was restricted to the opinion of a specialised public, it could not be regarded as sufficient since the target market for the goods in question was not made up exclusively of a specialised public.

10 In addition, according to the Board of Appeal, [Flat Glass] should have shown that the mark applied for had acquired distinctive character through use in the European Community as a whole. In its view, in respect of several Member States none of the evidence produced by [Flat Glass] was relevant.’

The procedure before the Court of First Instance and the judgment under appeal

5 On 18 May 2006, Flat Glass brought an action before the Court of First Instance seeking annulment of the contested decision in so far as it applies to the following goods in Class 21 of the Nice Agreement: ‘Patterned glass (except glass used in building); glass sheets (except glass used in building); glass sheets for use in the manufacture of showers, shower walls, shower enclosures, glazing, double glazing, building partitions, building screens, doors, cupboard doors and furniture’.

6 In support of its action, Flat Glass put forward a single plea in law alleging that the Fourth Board of Appeal of OHIM had infringed Article 7(3) of Regulation No 40/94 in considering that Flat Glass had not proved to the requisite legal standard that the trade mark applied for had acquired distinctive character through use. It based its arguments, in essence, on two factors, namely the determination of the target public and the Board of Appeal’s assessment of the evidence produced by Flat Glass.

7 As regards the target public, the Court of First Instance found, in paragraph 26 of the judgment under appeal, that ‘for all of the goods in question the target public is made up not only of professionals but also of the general public’.

8 To reach that finding, the Court of First Instance, in the first place, held in paragraph 21 of the judgment under appeal that some of the goods in question, namely ‘“patterned glass (except glass used in building)” and “glass sheets (except glass used in building)” … are not solely intended to be sold to professionals. Assessed in relation to their description, those categories also include, in addition to semi-worked glass requiring processing, ready-to-use glass sheets which are likely to be bought and used by final consumers. Consequently, such consumers are part of the relevant public in respect of those two categories of goods’.

9 In the second place, as regards the other goods in question, namely ‘glass sheets for use in the manufacture of showers, shower walls, shower enclosures, glazing, double glazing, building partitions, building screens, doors, cupboard doors and furniture’, the Court of First Instance noted, in paragraphs 22 and 25 of the judgment under appeal, ‘that, even supposing that such goods are sold only to professionals, that finding is not sufficient, by itself, in the circumstances of the present case, to warrant the conclusion that the target public is made up exclusively of professionals’. ‘…[T]he choice of the specific design of the glass sheet which will be used is determined, to a significant extent, by the final consumer, notwithstanding the fact that the sheet will be bought by the professional employed to carry out the work’.

10 As regards the evidence provided by Flat Glass, the Court of First Instance pointed out, in paragraph 34 of the judgment under appeal, that the declarations from the specialised public ‘do not come from all the Member States of the European Community. [Flat Glass] has not submitted any declaration from Denmark, Finland, Sweden, Greece or Ireland’.

11 The Court of First Instance also pointed out, in paragraph 37 of the judgment under appeal, that ‘[i]n the present case, the impression which the sign, consisting of a pattern applied to the goods themselves, may create in the mind of the consumer is in principle likely to be the same throughout the Community’. The Court of First Instance inferred from that, in paragraph 38 of the judgment under appeal, that ‘[i]t is thus in the Community as a whole that th[e] mark must have become distinctive through use in order to be registrable under Article 7(3) of Regulation No 40/94’.

12 Thus, the Court of First Instance held, in paragraph 39 of the judgment under appeal, that ‘[t]he declarations from professionals in 10 of the 15 Member States of the European Community, as at the date of filing of the application for registration of the mark, are not capable of proving that the sign has acquired distinctive character in the five remaining countries of the Community’.

13 Lastly, it held, in paragraphs 41 and 42 of the judgment under appeal respectively, that ‘[t]he sales volumes and advertising material as such do not show that the public targeted by the goods in question perceives the sign as an indication of commercial origin. In respect of the Member States of the Community for which no declaration has been produced, proof of distinctive character acquired through use cannot be furnished by the mere production of sales volumes and advertising material. Moreover, [Flat Glass] has not specified the market share of those goods nor the number of catalogues distributed in each of the Member States’. ‘The fact that the sign has been used in the Community since around 1970 is also not sufficient, as such, to show that the public targeted by the goods in question perceives it as an indication of commercial origin’.

14 Therefore, the Court of First Instance rejected the single plea in law and, accordingly, dismissed the action.

The appeal

15 In support of its appeal, Flat Glass puts forward a single plea in law consisting of two limbs. It claims that the judgment under appeal is based on an incorrect interpretation of Article 7(3) of Regulation No 40/94 on account of the incorrect assessment, respectively, of the target public and of the territory to be considered. In addition, Flat Glass requests the Court to set aside the judgment under appeal and to order OHIM to pay the costs. By document lodged at the Registry of the Court of Justice on 7 May 2008, it applied for a hearing to be held.

16 OHIM contends that the appeal should be dismissed as unfounded and Flat Glass should be ordered to pay the costs.

17 Under Article 119 of the Rules of Procedure of the Court of Justice, where the appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order dismiss the appeal in whole or in part.

Arguments of the parties

18 Under the first limb of its single plea, Flat Glass claims that the goods in question are large sheets of glass sold exclusively to glass-industry specialists. Those goods can thus be defined as all forms of unworked or semi-worked glass in Class 21 of the Nice Agreement. They do not include building glass or glass intended for end consumers referred to in Class 19 of that agreement. In addition, they cannot be sold to end consumers without first having been processed by specialists using specialist equipment, knowledge and experience. According to Flat Glass, the goods in question are not distributed directly to end consumers but are integrated into other products for end consumption, on the basis of a choice made by the specialists.

19 In relation to goods such as ‘glass sheets for use in the manufacture of showers, shower walls, shower enclosures, glazing, double glazing, building partitions, building screens, doors, cupboard doors and furniture’ for which the application for registration of the Community trade mark was filed, Flat Glass takes the view that it is apparent from the words ’in the manufacture’ that those goods are solely intended for specialists in so far as they are used in the manufacture of other goods. They are not, therefore, end consumer goods.

20 Consequently, according to Flat Glass, in contrast to the assessment carried out by the Court of First Instance in paragraph 21 of the judgment under appeal, the target public consists solely of professionals in the glass industry, and therefore the Court of First Instance wrongly applied Article 7(3) of Regulation No 40/94 in that regard.

21 Flat Glass considers that the finding which the Court of First Instance reached, in paragraphs 23 and 25 of the judgment under appeal, that the end consumers should not be ignored since the goods in question are normally also chosen by them – those goods having admittedly been purchased by the professionals in that sector but following a choice made by the end consumer between the different designs available and following the instructions given by the end consumer in relation to design – has not been proved in any way. In addition, the facts on which the Court of First Instance relies are not common knowledge.

22 Flat Glass states, in that regard, that an end consumer can only make his choice on the basis of a selection already made by the glass specialist. The choice of design used is thus made by the glass specialists and not by the end consumers. In order to reach the finding referred to in paragraphs 23 and 25 of the judgment under appeal, the Court of First Instance did not, furthermore, take account of Flat Glass’s argument that the goods for which registration is still sought are unworked glass goods in Class 21 of the Nice Agreement and not processed glass goods in Class 19 of that agreement, to which the Court of First Instance’s finding may apply.

23 Lastly, Flat Glass takes the view that the Court of First Instance contradicts its assertion, set out in paragraph 20 of the judgment under appeal, that the distinctive character of a mark, including that acquired through use, must be assessed in relation to the goods in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods in question, who is reasonably well informed and reasonably observant and circumspect, by finding, in paragraphs 23 and 25 of the judgment under appeal, that the end consumers cannot be ignored, as that finding is based on the consumers’ perception of glass products in Class 19 of the Nice Arrangement, which were no longer covered by the application for registration during the proceedings before the Court of First Instance.

24 OHIM, for its part, contends that that first limb of the single plea in law is inadmissible inasmuch as it is a request for an examination of a factual nature.

25 In any event, it is OHIM’s opinion that the Court of First Instance correctly determined the target public as made up not only of professionals but also of the general public. According to it, the Court of First Instance correctly held, inter alia in paragraphs 21 and 25 of the judgment under appeal, that, given the nature of the goods and the circumstances which may generally pertain in that case, the final consumer cannot be ignored and excluded from the group of relevant consumers in the present case.

26 In relation to the second limb of its single plea, Flat Glass claims that the Court of First Instance’s assertion that OHIM correctly examined the evidence provided in respect of the distinctive character acquired for each Member State separately apparently contradicts Article 7(3) of Regulation No 40/94, which requires distinctive character to be acquired by way of use throughout the Community. Flat Glass considers that, instead of assessing the number of Member States concerned, OHIM should have looked at the evidence provided, as a whole, and assessed whether it built a coherent picture of sustained use in a sufficiently large geographical area over a sufficiently long period of time before the filing date of the application for registration.

27 According to Flat Glass, the appropriate approach in respect of use of a Community trade mark is not that of political boundaries, but that of markets. The same approach should be applied in respect of acquired distinctive character of a mark which is the subject of an application for registration as a Community trade mark. In the present case, the recognition, by relevant professional circles representing a substantial part of the Community, of the trade mark applied for as a mark belonging to Flat Glass cannot be seriously doubted.

28 OHIM disputes that line of reasoning, contending that the Court of First Instance correctly assessed the evidence of acquired distinctive character, in accordance with Article 7(3) of Regulation No 40/94, as interpreted by the case-law of the Court of Justice.

Findings of the Court

29 In relation to the first limb of the single plea, alleging an incorrect assessment of the target public, it should be borne in mind that it is apparent from Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice that an appeal lies on points of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts. The appraisal of those facts thus does not, save where it distorts them, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 26 and the case-law cited).

30 The findings which the Court of First Instance made in paragraphs 21 and 25 of the judgment under appeal, that is to say, first, that some of the goods in question are likely to be bought and used by end consumers and, second, that, even where the goods are bought by a professional employed to carry out the work, the end consumer has an interest in being involved in the choice of a design such as that comprising the trade mark applied for, and therefore such a choice is also made, in large part, by the end consumer, are findings of a factual nature.

31 Thus the Court of First Instance, in paragraphs 21 and 25 of the judgment under appeal, clearly only examined and assessed the facts. Such an assessment, save where it distorts the facts, which Flat Glass has not claimed, cannot be called into question in the context of an appeal.

32 Therefore, the first argument made by Flat Glass, claiming that the target public consists of solely professionals from the glass industry, and the second argument, alleging that it was not proved that the goods in question are bought by professionals on the basis of the corresponding choice and instructions given in that regard by the end consumers, must be rejected as manifestly inadmissible.

33 As regards the third argument in the first limb of the single plea, claiming that the Court of First Instance did not take account of Flat Glass’s claim that the goods for which application is still sought are unworked glass goods in Class 21 of the Nice Agreement and not processed glass goods in Class 19 of that agreement, to which the Court of First Instance’s finding may apply, that argument clearly has no factual basis. It is apparent from paragraph 21 of the judgment under appeal that, in its assessment, the Court of First Instance took account of the description of the goods which are in Class 21, and not in Class 19, in finding that those goods included ‘in addition to semi-worked glass sheets requiring processing, ready‑to‑use glass sheets which are likely to be bought and used by final consumers’.

34 Therefore, the third argument in the first limb of the single plea must be rejected as manifestly unfounded.

35 As regards the fourth argument in the first limb of the single plea, alleging a contradiction between paragraphs 23 and 25 of the judgment under appeal and paragraph 20 of that judgment, it is sufficient to state that, in paragraph 20 the Court of First Instance was merely recalling the case-law of the Court of Justice on the general criteria applicable for the assessment of the distinctive character of a trade mark, including distinctive character acquired through use. Then, having recalled in paragraph 23 of the judgment under appeal, the case-law on the decisive role of the perception of consumers or end users, the Court of First Instance proceeded, in paragraph 25, to assess the facts and found, in paragraph 26, that, for all of the goods in question, the target public is made up not only of professionals but also of the general public. Therefore, it must be held that the Court of First Instance did not contradict any of its reasoning in defining the target public for the goods in question.

36 Accordingly, the fourth argument in the first limb of the single plea must be rejected as manifestly unfounded.

37 It follows from all of the foregoing that the first limb of the single plea in law must be rejected as, in part, manifestly inadmissible and, in part, manifestly unfounded.

38 At this point in the consideration of the appeal, the Court notes that the conditions for applying Article 7(3) of Regulation No 40/94 in relation to the target public and the territory to be considered are cumulative.

39 Therefore, the dismissal by the Court of First Instance was in itself legally well founded by the finding, in paragraph 44 of the judgment under appeal, first, that the public concerned by the goods in question includes end consumers and, second, that the evidence provided by Flat Glass concerned only declarations from professionals in the glass industry.

40 Therefore, the appeal must be dismissed and there is no need to examine the second limb of the single plea in law, alleging an incorrect assessment of the territory to be considered.

Costs

41 Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 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 has applied for costs against Flat Glass, and Flat Glass has been unsuccessful in its single plea in law, the latter must be ordered to pay the costs.

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

1. The appeal is dismissed.

2. AGC Flat Glass Europe SA shall pay the costs.

[Signatures]