Voss of Norway ASA v Office for Harmonisation in the Internal Market (Trade Marks and Designs).
Date: 2015-05-07
81. According to settled case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 (judgments in Mag Instrument  v OHIM , C‑136/02 P, EU:C:2004:592, paragraph 31, and Chocoladefabriken Lindt & Sprüngli  v OHIM , C‑98/11 P, EU:C:2012:307, paragraph 42).
82. In the present case, the General Court assessed, in paragraphs 51 to 53 of the judgment under appeal, the distinctive character of the contested trade mark in relation to the norms and customs of the alcoholic and non-alcoholic beverages sector.
83. In paragraph 51 of that judgment, it first of all held, as regards the three-dimensional shape of the contested trade mark, ‘it is well known that the vast majority of bottles available on the market have a cylindrical section’.
84. Next, in paragraph 52 of that judgment, the General Court held, as regards the non-transparent cap, that ‘it is well known that many bottles are closed with a cap made of a different material and colour from the body of the bottle’.
85. Lastly, in paragraph 53 of the judgment under appeal, the General Court held that the diameter of the cap, which is the same as that of the bottle, ‘is a mere variant of the existing shapes [and cannot] be regarded as departing significantly from the norms and customs of the sector, even though it is somewhat original’.
86. The General Court thus carried out an analysis of the distinctive character of the components of the three-dim ensional sign at issue in the light of the norms of the relevant sector, relying on well-known facts.
87. Consequently, Voss and the INTA are not justified in claiming that the General Court did not define the norms and customs of the sector of goods in respect of which the contested trade mark was registered.
88. As regards the INTA’s argument that the General Court erred in law by contrasting ‘mere variant’ with ‘significant departure’ in relation to the applicable norms and customs, instead of examining whether the contested trade mark deviates from the shapes that are customarily or normally used in the relevant sector to such an extent that consumers will be able to attach significance to it, it must be pointed out that for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 it must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (judgment in Freixenet  v OHIM , C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 42 and the case-law cited).
89. That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (judgment in Freixenet  v OHIM , C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43 and the case-law cited).
90. According to settled case-law, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the shape of the product itself are no different from those applicable to other categories of trade mark (judgments in Mag Instrument  v OHIM , C‑136/02 P, EU:C:2004:592, paragraph 30, and Freixenet  v OHIM , C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 45). However, for the purpose of applying those criteria, 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 designates. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark (judgments in Mag Instrument  v OHIM , C‑136/02 P, EU:C:2004:592, paragraph 30, and Freixenet  v OHIM , C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 46).
91. In those circumstances, the more closely the shape for which registration 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 for the purposes of Article 7(1)(b) of Regulation No 207/2009. 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 that provision (judgments in Mag Instrument  v OHIM , C‑136/02 P, EU:C:2004:592, paragraph 31, and Chocoladefabriken Lindt & Sprüngli  v OHIM , C‑98/11 P, EU:C:2012:307, paragraph 42).
92. It follows that, where a three-dimensional mark is constituted by 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 for the purposes of Article 7(1)(b) of Regulation No 207/2009. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (judgment in Mag Instrument  v OHIM , C‑136/02 P, EU:C:2004:592, paragraph 32).
97. In that regard, it should be recalled 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 does not, save where the facts or evidence are distorted, constitute a point of law which, as such, is open to review by the Court of Justice on appeal (judgment in Vuitton Malletier  v OHIM , C‑97/12 P, EU:C:2014:324, paragraph 61).
105. In that regard, it must be borne in mind that, according to settled case-law, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. Thus, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered (see, inter alia, judgment in Eurocermex  v OHIM , C‑286/04 P, EU:C:2005:422, paragraph 22 and the case-law cited).
106. That does not mean, however, that the competent authority, responsible for ascertaining whether the trade mark for which registration is sought is capable of being perceived by the public as an indication of origin, may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the competent authority’s overall assessment, to examine each of the components of which the trade mark concerned is composed (see, inter alia, judgment in Eurocermex  v OHIM , C‑286/04 P, EU:C:2005:422, paragraph 23 and the case-law cited).
110. Furthermore, it cannot be maintained that the General Court did not carry out a sufficiently detailed analysis of the overall impression conveyed by the contested trade mark, inasmuch as the three-dimensional shape at issue consists of two elements, namely a cylindrical basic shape and a non-transparent cap with the same diameter as that cylinder, and it is difficult to imagine other ways of combining those elements in a single three-dimensional form (see, to that effect, judgment in Eurocermex  v OHIM , C‑286/04 P, EU:C:2005:422, paragraph 29).