ORDER OF THE COURT (Sixth Chamber)

14 April 2016 ( )

[Text rectified by order of 30 May 2016]

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — Community trade mark — Three-dimensional trade mark in the shape of a toy figure with protrusion — Invalidity proceedings — Rejection)

In Case C‑452/15 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 17 August 2015,

Best-Lock (Europe) Ltd, established in Colne (United Kingdom), represented by J. Becker, Rechtsanwalt,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Lego Juris A/S, established in Billund (Denmark),

intervener at first instance,

THE COURT (Sixth Chamber),

composed of A. Arabadjiev, President of the Chamber, S. Rodin (Rapporteur) and E. Regan, Judges,

Advocate General: M. Wathelet,

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,

makes the following

Order

1 By its appeal, Best-Lock (Europe) Ltd asks the Court to set aside the judgment of the General Court of the European Union of 16 June 2015 in Best-Lock (Europe) v OHIM — Lego Juris (Shape of a toy figure with protrusion) (T‑396/14, unpublished, EU:T:2015:379) (‘the judgment under appeal’) by which the General Court dismissed its application for the annulment of the decision of the Fourth Board of Appeal for the Office of Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 26 March 2014 (Case R 1696/2013-4), relating to invalidity proceedings between Best-Lock and Lego Juris A/S (‘the decision at issue’).

Legal framework

2 Article 7 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which is entitled ‘Absolute grounds for refusal’, provides in paragraph 1(e)(i):

‘The following shall not be registered:

...

(e) signs which consist exclusively of:

(i) the shape which results from the nature of the goods themselves’.

Background to the dispute

3 [As rectified by order of 30 May 2016] The background to the dispute was set out in paragraphs 1 to 7 of the judgment under appeal as follows:

‘1 On 18 April 2000, [Lego Juris] obtained registration of a Community trade mark with EUIPO, pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended [replaced by Regulation No 207/2009].

2 The mark in respect of which registration was obtained under No 50 450 is the three-dimensional trade mark reproduced below:

3 The goods in respect of which registration was obtained are, inter alia, in Class 28 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, and correspond to the following description: “Games and playthings; decorations for Christmas trees”.

4 On 17 October 2011, [Best-Lock] filed an application seeking a declaration of invalidity of the contested trade mark in respect of the goods referred to in paragraph 3 above on the basis of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(e)(i) and (ii) of that regulation.

5 On 28 June 2013, the Cancellation Division rejected the application for a declaration of invalidity.

6 On 27 August 2013, [Best-Lock] filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.

7 By [the decision at issue], the Fourth Board of Appeal of OHIM dismissed that appeal. …’

Proceedings before the General Court and the judgment under appeal

4 By application lodged at the General Court Registry on 28 May 2014, Best-Lock brought an action for annulment of the contested decision and for a declaration of invalidity of the contested mark.

5 In support of its action, Best-Lock raised, in essence, a single plea in law, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(e)(i) and (ii) of that regulation.

6 By the judgment under appeal, the General Court rejected that single plea and, therefore, dismissed the action.

Form of order sought by the appellant

7 By its appeal, Best-Lock claims that the Court should:

– set aside the judgment under appeal;

– declare the Community mark registered under No 50 450 invalid in so far as it is within Class 28 of the Nice Agreement.

The appeal

8 Pursuant to Article 181 of the Court’s Rules of Procedure, where an 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.

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

10 In support of its appeal, Best-Lock relies, essentially, on two grounds of appeal.

First ground of appeal

11 By its first ground of appeal, Best-Lock complains, in essence, that the General Court wrongly rejected as inadmissible its complaint relating to the ground for invalidity referred to in Article 7(1)(e)(i) of Regulation No 207/2009.

12 In that respect, it submits that the General Court, in so far as it declared the appellant’s action inadmissible on the ground that it had not put forward any arguments in support of its complaint without having notified the appellant that further development of its arguments was necessary, infringed the appellant’s right to be heard. In any event, the appellant lodged, at the time of submitting the action at first instance, annexes including the written pleadings before the Cancellation Division and the Board of Appeal of OHIM. The General Court should have taken those annexes into account, from which it was apparent, inter alia, that when the contested mark was registered, the appellant was already using a mini-figure in the shape at issue and was selling it, which resulted in a registration that was not in good faith.

13 It must be held that the General Court was fully entitled not to have taken into account the arguments set out in the annexes and the statements in the previous proceedings.

14 It is settled case-law that it is not for the General Court to seek and identify in the annexes and statements the pleas on which it may consider the action to be based (see judgments of 28 June 2005 in Dansk Rørindustri and Others v Commission, C‑189/02 P, C‑202/02 P, C‑205/02 P to C‑208/02 P and C‑213/02 P, EU:C:2005:408, paragraphs 97 and 100, and of 11 September 2014 in MasterCard and Others v Commission, C‑382/12 P, EU:C:2014:2201, paragraph 41). A general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law which, in accordance with the abovementioned provisions, must appear in the application (see, to that effect, judgments of 28 June 2005 in Dansk Rørindustri and Others v Commission, C‑189/02 P, C‑202/02 P, C‑205/02 P to C‑208/02 P and C‑213/02 P, EU:C:2005:408, paragraphs 94 to 100; of 13 June 2013 in Versalis v Commission, C‑511/11 P, EU:C:2013:386, paragraph 115; and of 11 September 2014 in MasterCard and Others v Commission, C‑382/12 P, EU:C:2014:2201, paragraph 40).

15 Furthermore, no provision of the Statute of the Court of Justice of the European Union or of the Rules of Procedure of the General Court required the latter to invite the appellant to supplement its application so that it complies with the requirements set out in Article 44(1)(c) of the Rules of Procedure of the General Court.

16 It follows that the first plea in law must be rejected as being manifestly unfounded.

Second ground of appeal

17 By its second ground of appeal, Best-Lock complains that the General Court wrongly denied that all the essential characteristics of the shape of the contested mark performed a technical function. The General Court, inter alia, wrongly assumed that the trade mark is a figure in human form and that these are the essential characteristics of the trade mark. Each of the figure’s shapes fulfils a technical assembly function. The General Court wrongly considered that it was irrelevant whether the particular parts of the contested mark’s shape and the characteristics of the model fulfil a technical function. Since all those parts fulfil a technical function, it cannot be maintained that the figure as a whole does not fulfil any technical function.

18 In that regard, it should be noted, first of all, that the General Court held, in paragraph 30 of the judgment under appeal, that ‘in the present case, having regard to the graphical representation of the contested trade mark and the fact that it is in the shape of a figure having a human appearance, it must be held that the head, body, arms and legs which are necessary in order for the figure to have that appearance constitute the essential characteristics of the contested trade mark’.

19 Next, in paragraph 31 of that judgment, the General Court held that ‘none of the evidence permits a finding that those particular elements of the shape in question serve any technical function’.

20 Lastly, in paragraph 32 of that judgment, the General Court was again careful to state in respect of the holes under the feet and inside the backs of the legs and the hands of the figure at issue that ‘[their] graphical representation … do[es] not, per se and a priori, enable it to be known whether those elements have any technical function and, if so, what that function is’. The General Court then held, in the same paragraph, that ‘assuming that … the shape of those elements may have a technical function, that of enabling them to be joined to other elements, in particular interlocking building blocks, those elements cannot be held, either in view of the overall impression conveyed by the contested trade mark or as a result of the analysis of its constituent elements, to be the most important elements of that mark. They do not constitute an essential characteristic of the shape in question for the purposes of case-law. Furthermore, there is nothing to show that the essential functional characteristics of the shapes of those elements are attributable to the claimed technical result’.

21 It follows that, in so far as by its second ground of appeal the appellant complains that the General Court considered it to be irrelevant whether the individual parts of the shape of the contested mark and the characteristics of the model of that mark served a technical function, that ground is based on a misreading of the judgment under appeal.

22 Furthermore, in so far as the appellant, by the arguments put forward under the second ground of appeal, seeks to dispute the General Court’s assessment that the contested mark did not consist exclusively of the product shape necessary to obtain a technical result, that amounts in reality to challenging a factual assessment made by the General Court, which is outside the jurisdiction of the Court of Justice in an appeal.

23 Therefore, the second ground of appeal must be rejected as being in part clearly inadmissible and in part clearly unfounded.

24 In the light of the foregoing, the present appeal must be dismissed in its entirety as being in part manifestly inadmissible and in part manifestly unfounded.

Costs

25 Under Article 137 of the Rules of Procedure of the Court of Justice, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings.

26 As the present order has been adopted prior to notification of the appeal to the other parties to the proceedings and, therefore, before the latter could have incurred costs, Best-Lock should be ordered to bear its own costs.

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

1. The appeal is dismissed.

2. Best-Lock (Europe) Ltd shall pay its own costs.

[Signatures]