1. By its appeal, Louis Vuitton Malletier (‘Louis Vuitton’) requests the Court to set aside the judgment in Case T‑237/10 Vuitton Malletier v OHIM - Friis Group International (Representation of a locking device) EU:T:2011:741 (‘the judgment under appeal’) in so far as the General Court of the European Union thereby dismissed its action for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 24 February 2010 (Case R-1590/2008 1) (‘the contested decision’), relating to an application for a declaration of invalidity submitted by Friis Group International Aps in respect of the registration of Community trade mark No 3 693 116 (figurative) owned by Louis Vuitton (‘the mark at issue’). Legal context
2. Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. In view of the date on which the application for invalidity was lodged, the present case remains governed by Regulation No 40/94, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004 (OJ 2006 L 70, p. 1) (‘Regulation No 40/94’).
3. Article 7(1) of Regulation No 40/94, the terms of which were reproduced in Article 7(1) of Regulation No 207/2009, provided: ‘The following shall not be registered: … (b) trade-marks which are devoid of any distinctive character; …’
4. Article 51(1) of Regulation No 40/94, the terms of which were reproduced in Article 52(1) of Regulation No 207/2009, provided: ‘A Community trade mark shall be declared invalid on application to [OHIM] …: (a) where the Community trade mark has been registered contrary to the provisions of Article 7; …’
5. Paragraph 4 of Article 63 of Regulation No 40/94, entitled ‘Actions before the Court of Justice’, the terms of which were reproduced in Article 65 of Regulation No 207/2009, stated: ‘The action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision.’ Background to the dispute
6. The background to the dispute, as described in paragraphs 1 to 10 of the judgment under appeal, may be summarised as follows.
7. On 11 March 2004, Louis Vuitton filed with OHIM an application for registration of a Community trade mark pursuant to Regulation No 40/94.
8. The trade mark in respect of which registration was sought is the following figurative sign: >image>2
9. The goods in respect of which registration was sought are in Classes 9, 14, 18 and 25 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description: - Class 9: ‘Optical apparatus and instruments, including spectacles, sunglasses and spectacle cases’; - Class 14: ‘Jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, [tie] pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks; nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith, jewel boxes in precious metals, their alloys or coated therewith’; - Class 18: ‘Leather and imitations of leather; travel bags, travelling sets (leather goods), trunks and travelling bags, garment bags for travel, vanity cases, rucksacks, shoulder bags, handbags, attaché cases, document cases and briefcases of leather, pouches, wallets, purses, key cases, card cases; umbrellas’; - Class 25: ‘Clothing and underwear, including sweaters, shirts, T-shirts, lingerie, belts (clothing), headscarves, neckties, shawls, waistcoats, skirts, waterproof clothing, overcoats, braces, trousers, jeans, pullovers, dresses, jackets, scarves, gloves, tights, socks, swimsuits, bathrobes, pyjamas, nightgowns, shorts, pouches (clothing); shoes, boots, slippers; headgear’.
10. On 28 July 2005, the mark at issue was registered as No 3 693 116 in respect of all the goods referred to in the application for registration.
11. On 16 February 2007, Friis Group International filed an application pursuant to Article 55 of Regulation No 40/94, the terms of which were reproduced in Article 56 of Regulation No 207/2009, for a declaration that the trade mark at issue was invalid. The grounds relied on were those provided for in Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) thereof, the terms of which were reproduced in Article 52(1)(a) and Article 7(1)(b) respectively of Regulation No 207/2009.
12. By decision of 21 October 2008, OHIM’s Cancellation Division rejected, in its entirety, that application for a declaration of invalidity.
13. On 4 November 2008, Friis Group International lodged an appeal under Articles 57 to 62 of Regulation No 40/94, the terms of which were reproduced in Articles 58 to 64 respectively of Regulation No 207/2009, against the Cancellation Division’s decision.
14. By the contested decision, the First Board of Appeal of OHIM (‘the Board of Appeal’) upheld the application for a declaration of invalidity and declared the mark at issue invalid for the goods in Classes 9, 14 and 18, holding that that mark was devoid of any distinctive character in relation to those goods and that Louis Vuitton had not furnished proof that the mark had acquired distinctiveness in consequence of the use made of it, for the purposes of Article 7(3) and Article 52(2) of Regulation No 207/2009.
15. In so far as the Class 25 goods covered by the mark at issue had formed no part of the subject-matter of the appeal lodged by Friis Group International, the Cancellation Division’s decision rejecting the application for a declaration of invalidity had become final with respect to those goods. The action before the General Court and the judgment under appeal
16. On 26 May 2010, Louis Vuitton brought an action for annulment of the contested decision before the General Court, relying on two pleas in law, alleging respectively: (i) infringement of Article 7(1)(b) of Regulation No 207/2009 and, in the alternative, (ii) infringement of Articles 7(3) and 52(2) of that regulation.
17. By the judgment under appeal, the General Court upheld Louis Vuitton’s first plea in part, finding that the Board of Appeal had been incorrect in finding, in the contested decision, that the mark at issue was devoid of any distinctive character in relation to some of the goods at issue in Classes 14 and 18. By contrast, the General Court rejected the second plea in law.
18. As regards the first plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, the General Court first of all referred, in paragraphs 15 to 21 of the judgment under appeal, to the case-law relevant for the purposes of determining whether a three-dimensional mark is distinctive for the purposes of that provision, namely, inter alia, Case C‑136/02 P Mag Instrument v OHIM EU:C:2004:592; Case C‑173/04 P Deutsche Sisi-Werke v OHIM EU:C:2006:20; and Case C‑25/05 P Storck v OHIM EU:C:2006:422. In particular, under that case-law, only a mark which departs significantly from the norm or customs of the sector is capable of having the requisite distinctiveness. In that regard, the General Court held that that line of authority, which had evolved in relation to three-dimensional trade marks consisting of the appearance of the product designated, also applied where the trade mark in question was a figurative mark consisting of the shape of that product.
19. Secondly, the General Court examined, in paragraphs 23 to 28 of the judgment under appeal, the question of the applicability of that line of authority to the proceedings before it, having regard to the fact that - as Louis Vuitton had observed - contrary to the circumstances contemplated in that case-law, the mark at issue, which consists in the representation of a locking device, had not been registered for locking devices.
20. In that regard, the General Court held that the Board of Appeal had been correct in finding that that line of authority, which had evolved in respect of three-dimensional trade marks, applied to a figurative mark such as the mark at issue, which consists of the shape of part of the product concerned, since such a mark is likewise not independent of the appearance of the product it designates. The General Court went on to note that a mark consisting of part of the shape of the product designated was also likely to establish a direct link between the mark and the product concerned, in so far as the relevant public will perceive it, immediately and without particular thought, as a representation of a particularly interesting or attractive detail of the product in question rather than as an indication of its commercial origin.
21. Thirdly, the General Court proceeded, in paragraphs 29 to 46 of the judgment under appeal, to examine in the light of those considerations the question whether the Board of Appeal was correct in finding that the locking device represented by the mark at issue could be regarded as an integral part of the goods covered by that mark.
22. As regards the Class 9 goods, most of the Class 14 goods and most of the Class 18 goods for which the mark at issue had been registered, the General Court rejected Louis Vuitton’s arguments in respect of each product concerned - in paragraphs 29 to 32, 33 to 35, and 45 of the judgment under appeal respectively - and confirmed that a locking device could form an integral part of those goods.
23. As regards, on the other hand, ‘nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith’ in Class 14 and ‘leather and imitations of leather’ in Class 18, covered by the mark at issue as materials, the General Court held, in paragraphs 36 to 43 and 46 of the judgment under appeal, that a locking device did not seem likely to form an integral part of those goods. Consequently, the General Court upheld the plea put forward by Louis Vuitton and annulled the contested decision to the extent that it concerned those goods.
24. Fourthly, the General Court went on to examine, in paragraphs 47 to 82 of the judgment under appeal, Louis Vuitton’s arguments relating to the distinctive character of the mark at issue in relation to the other goods featuring a locking device.
25. In that regard, the General Court held in paragraphs 48 to 53 of the judgment under appeal that the Board of Appeal had correctly observed that consumers are used to perceiving locking devices as functional items, or as ornamental, or indeed as combining those two functions, and not as indications of the commercial origin of the goods covered by the mark at issue. According to the General Court, in arguing that fashion houses have a trade practice of personalising items such as buckles or buttons affixed to goods so as to make them instantly recognisable, Louis Vuitton did not show that the public concerned by goods covered by the mark at issue which may include a locking device would regard the shape of that device as an indication of commercial origin. On the basis of the relevant case-law, cited in paragraph 18 above, the General Court therefore held that the mark at issue could not be registered in respect of goods covered by that mark which included a locking device unless the mark could be regarded as departing significantly from the norm or customs of the sector and thereby fulfilling its essential function of indicating origin.
26. Fifthly, the General Court determined whether the Board of Appeal was justified in essentially finding that that was not the position in the case of the mark at issue.
27. In that connection, the General Court rejected, in paragraphs 54 to 58 of the judgment under appeal, as being essentially based on a misreading of the contested decision, Louis Vuitton’s argument that the Board of Appeal had failed to have regard to the obligation to assess the distinctiveness of a sign in abstracto , without any reference to its actual use as a mark.
28. After examining the analysis undertaken by the Board of Appeal of the distinctive character of the mark at issue, the General Court concluded in paragraph 64 of the judgment under appeal that, contrary to the assertions made by Louis Vuitton, the Board had examined that mark taken as a whole, it being neither contrary to the case-law nor irreconcilable with such an overall assessment that a detailed examination of certain parts of that mark had been carried out beforehand.
29. Sixthly, in paragraphs 65 to 81 of the judgment under appeal, the General Court checked the accuracy of the Board of Appeal’s finding that the mark at issue was not distinctive in respect of the goods at issue.
30. In the light of various arguments put forward by Louis Vuitton relating to the original and unique shape of the locking device of the mark at issue, the General Court pointed out in paragraphs 66 and 67 of the judgment under appeal that, for the purposes of assessing the distinctiveness of that mark, the issue was not whether or not a mark consisting of the shape or image of the product concerned was similar to the shapes or images of other examples of the same product, but whether or not the shape of the mark at issue departed significantly from the norm or customs of the sector.
31. In that respect, the General Court - seventhly - observed in paragraphs 68 to 74 of the judgment under appeal that, despite the aspects highlighted by Louis Vuitton, the shape of the mark at issue did not depart significantly from the norm or customs of the sector as regards the ‘spectacle cases’ in Class 9, the ‘jewel boxes in precious metals, their alloys or coated therewith’ in Class 14, or the ‘travel bags, travelling sets (leather goods), trunks and travelling bags, garment bags for travel, vanity cases, rucksacks, shoulder bags, handbags, attaché cases, document cases and briefcases of leather, pouches, wallets, purses, key cases, card cases’ in Class 18. The General Court therefore concluded that the Board of Appeal had been correct in finding that the mark at issue was devoid of any distinctive character as regards those goods and that Louis Vuitton’s first plea had to be rejected to the extent that it concerned those goods and, generally, the Class 9 goods covered by the application for the mark at issue.
32. As regards, by contrast, the ‘jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, [tie] pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks’ in Class 14 and the ‘umbrellas’ in Class 18, the General Court - eighthly - essentially held, in paragraphs 75 to 81 of the judgment under appeal, that, even if those goods may include a locking device, the locking devices that they include do not, as a general rule, take the form of the locking device in the mark at issue. On any view, so far as those products are concerned, the shape of the locking device in the mark at issue departed significantly from the norms and customs of the sector and - contrary to the finding made by the Board of Appeal - accordingly possessed in relation to those goods the minimum degree of distinctive character required.
33. The General Court therefore concluded, in paragraph 82 of the judgment under appeal, that Louis Vuitton’s first plea had to be upheld and the contested decision annulled to the extent that it declared the mark at issue invalid in respect of the goods referred to in paragraphs 23 and 32 above.
34. Lastly, as regards Louis Vuitton’s second plea, alleging infringement of Articles 7(3) and 52(2) of Regulation No 207/2009, the General Court essentially approved, in paragraphs 83 to 104 of the judgment under appeal, the findings of the Board of Appeal in support of its conclusion that the mark at issue had not acquired distinctive character through use, and rejected Louis Vuitton’s arguments in that connection as unfounded or ineffective. Forms of order sought The appeal
35. By its appeal, Louis Vuitton claims that the Court should: - set aside the judgment under appeal in so far as, by that judgment, the General Court dismissed its action against the contested decision and, in consequence, annul that decision to the extent that the Board of Appeal thereby declared that the registration of the mark at issue was invalid; and - order OHIM and Friis Group International to pay the costs incurred for the purposes of the present proceedings.
36. OHIM contends that the Court should: - dismiss the appeal; and - order Louis Vuitton to bear the costs.
37. Friis Group International contends that the Court should dismiss Louis Vuitton’s claim that the Court should order it to pay the costs incurred by that company for the purposes of the present proceedings. The cross-appeal
38. By the response, OHIM also lodged a cross-appeal against the judgment under appeal.
39. By that cross-appeal, OHIM claims that the Court should set aside the judgment under appeal to the extent that, by that judgment, the General Court annulled the contested decision.
40. Louis Vuitton contends that the Court should dismiss OHIM’s cross-appeal. Consideration of the appeal
41. Louis Vuitton relies on a single ground of appeal, alleging infringement of Article 7(1)(b) of Regulation No 207/2009. That ground is divided into two parts, alleging respectively: (i) the General Court erred in law in applying to the mark at issue the case-law relating to three-dimensional marks and (ii) the General Court infringed the rules relating to the burden of proof and distorted the clear sense of the evidence. The first part of the single ground of appeal: the General Court erred in law in applying to the mark at issue the case-law relating to three-dimensional marks Arguments of the parties
42. Louis Vuitton states that it approves the findings, set out in paragraphs 20 to 27 of the judgment under appeal, relating to the applicability of the case-law on three-dimensional marks. However, it submits that, in its assessment of the mark at issue, the General Court arbitrarily departed from the line of reasoning that it should have followed.
43. Thus, first, in paragraphs 28 to 46 of that judgment, the General Court applied the wrong test by seeking to determine whether it was possible, conceptually, to view the mark at issue as constituting part of the goods that it covers, instead of addressing the question whether the relevant public would associate the mark at issue ‘immediately and without the need for a complex process of association’ with the goods covered. Contrary to its initial approach, the General Court found, wrongly, that any sign representing the shape of a part of a product is subject to the principles laid down in relation to three-dimensional marks unless it is absolutely impossible, conceptually, to view the sign as a part of the products covered.
44. The General Court accordingly found that, with some exceptions, a closing mechanism could in theory be used as part of the product in the case of all the goods in Classes 9, 14 and 18 for which the mark at issue had been registered. According to the case-law, figurative marks representing shapes other than the shape of the product itself as a whole fall within that case-law on three-dimensional marks only in so far as they are unequivocally perceived as an essential part of the goods concerned. In other words, by contrast with the present case in which the mark concerned does not represent an essential part of the goods covered, the sign would have to consist in a faithful representation, either of the whole product or of one of its main parts, which is immediately recognisable as such, and it would have to be thus perceived by consumers.
45. Secondly, according to Louis Vuitton, in mistakenly considering whether the mark at issue could, in theory, be used as a closing mechanism for the goods falling within Classes 9, 14 and 18, the General Court also erred in law, in paragraphs 31, 34, 36, 45, 46 and 75 of the judgment under appeal, by incorrectly seeking to answer the question whether closing/locking mechanisms in general - rather than the mark at issue - could be used on the goods covered by that mark. Moreover, the General Court did not take public perception into proper consideration. In adopting that flawed approach, the General Court inevitably reached incorrect conclusions in its assessment of the distinctive character of the goods at issue. According to Louis Vuitton, if the General Court had undertaken a correct analysis, it would have found that the case-law relating to three-dimensional marks - and, accordingly, the requirement for the mark to ‘depart significantly’ - was not applicable.
46. According to OHIM, the first part of this ground of appeal must be rejected.
47. As regards, first, the argument alleging misapplication of the case-law relating to three-dimensional marks, OHIM contends that it is based on a misinterpretation of the judgment under appeal. In the first place, even if, according to that case-law, it is not necessary for three-dimensional marks to have more than a minimal degree of distinctiveness, the Court of Justice has laid down a rule to the effect that, in order to establish the requisite distinctiveness, it is necessary to produce evidence that the sign for which protection is sought departs significantly from the norm or customs of the sector concerned. In the second place, it appears from that case-law that that rule applies in the same way to all signs, including not only those representing the whole product but also those representing only a part of the product. In the third place, the Court of Justice has never referred to the requirement that that part must be ‘the main’, or ‘the essential’, or even ‘an important’ part of the product, as Louis Vuitton maintains.
48. As regards Louis Vuitton’s arguments that the sign at issue should be immediately recognisable as part of the goods in Classes 9, 14 and 18, OHIM contends, in particular, that that condition cannot be assessed in abstracto , that is to say, independently of the list of goods; rather it must be assessed in concreto , that is to say, ‘under the assumption that the public sees the representation of the locking device affixed or attached to those goods’.
49. As regards, second, the argument that the General Court addressed, incorrectly, the question whether closing/locking mechanisms in general - rather than the mark at issue - could be used on the goods falling within Classes 9, 14 and 18, OHIM argues that it is based on a misreading of the judgment under appeal and accordingly unfounded. The General Court conducted an overall examination in two stages of the capacity of the mark at issue to indicate commercial origin, based on all the evidence produced by the parties and not vitiated by any error of law. Lastly, Louis Vuitton’s arguments that that mark is perceived not as a lock but as a logo are inadmissible. Findings of the Court
50. The Court has consistently held that the distinctive character of a trade mark, for the purposes of Article 7(1)(b) of Regulation No 40/94, means that the mark in question makes it possible to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings. That distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (order of 13 September 2011 in Case C‑546/10 P Wilfer v OHIM , not published in the ECR, paragraph 52 and the case-law cited).
51. The criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. For the purposes of applying those criteria, the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of 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 as to 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 may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (order in Wilfer v OHIM , paragraph 53 and the case-law cited).
52. In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 (order in Wilfer v OHIM , paragraph 54 and the case-law cited).
53. Furthermore, the line of authority that evolved in relation to three-dimensional trade marks consisting of the appearance of the product itself also applies where the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such cases, the mark likewise does not consist of a sign independent of the appearance of the products it designates (order in Wilfer v OHIM , paragraph 58 and the case-law cited).
54. It follows from that latter finding that the case-law relating to three-dimensional marks must be applicable also where only part of the product designated is represented by a mark. As the General Court noted in paragraph 25 of the judgment under appeal, such a mark no more consists of a sign independent of the appearance of the product it designates than a figurative mark representing the entire product (order in Wilfer v OHIM , paragraph 59).
55. Contrary to Louis Vuitton’s submissions, even if the application of the case-law relating to three-dimensional and figurative marks constituted, respectively, by the shape of the product concerned or by 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, such a mark need not be perceived as an essential part of the product concerned. Accordingly, the General Court correctly held in paragraph 27 of the judgment under appeal that a figurative mark constituted by part of the shape of the product which it designates is not independent of the appearance of the product it designates in so far as the relevant public perceives it, immediately and without particular thought, as a representation of a particularly interesting or attractive detail of the product in question rather than as an indication of its commercial origin.
56. Consequently, the General Court did not err in law in referring to the case-law applicable to three-dimensional marks. Accordingly, the argument relied upon in this connection in support of the first part of the single ground of appeal must be rejected as unfounded.
57. As regards the examination carried out at first instance, the General Court first considered, in paragraphs 29 to 46 and 75 of the judgment under appeal, whether the goods in Classes 9, 14 and 18 could include a locking device or could be used in connection with such a device. The aim of that analysis was to determine whether the case-law relating to three-dimensional marks was applicable to the mark at issue.
58. Secondly, the General Court examined, in paragraphs 59 to 74 and 76 to 81 of that judgment, whether the mark at issue - and not simply any form of locking device - met the test set by the Court of Justice consisting in ascertaining whether the mark at issue departed significantly from the norm or customs of the sector concerned.
59. The General Court thus - in accordance with the settled case-law of the Court of Justice which requires that, in assessing the distinctive character of a mark, account be taken of the overall impression produced by that mark (see, to that effect, Case C‑238/06 P Develey v OHIM EU:C:2007:635, paragraph 82 and the case-law cited) - carried out an overall examination of the capacity of the mark at issue to denote the commercial origin, and based that examination on the facts, arguments and evidence produced by the parties, in relation to every group of products covered by the application for registration of that mark. The General Court did not therefore err in law as alleged by Louis Vuitton.
60. Moreover, in so far as Louis Vuitton challenges the outcome of the analysis made by the General Court, it must be noted that that analysis falls to be classed as an assessment of a factual nature.
61. 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 (order of 16 May 2011 in Case C‑429/10 P X Technology Swiss v OHIM , not published in the ECR, paragraph 41).
62. It must be stated that Louis Vuitton has not put forward any argument in support of its challenge that demonstrates that the General Court distorted the evidence.
63. The second argument put forward in support of the first part of the single ground of appeal is therefore in part unfounded and in part inadmissible.
64. It follows from the foregoing considerations that the first part of that single ground, which is in part unfounded and in part inadmissible, must be rejected in its entirety. The second part of the single ground of appeal: the General Court infringed the rules relating to the burden of proof and distorted the clear sense of the evidence Arguments of the parties
65. By the second part of its single ground of appeal, Louis Vuitton claims that, in its evaluation of the validity of the mark at issue, in paragraphs 47 to 82 of the judgment under appeal, the General Court infringed the rules relating to the burden of proof and distorted the evidence produced before it.
66. First, the General Court did not give sufficient weight to the presumption of validity which must be granted, under Article 99 of Regulation No 207/2009, to registrations of Community trade marks. As soon as Louis Vuitton had obtained registration of the mark at issue, the onus was on Friis Group International to rebut that presumption by proving that OHIM had committed an error initially in holding that the mark was inherently distinctive. According to Louis Vuitton, if the General Court had correctly applied the rules relating to the burden of proof, it would undoubtedly have concluded that Friis Group International had not discharged that evidential burden.
67. Secondly, Louis Vuitton submits, in particular, after re-examining the documents and images produced by Friis Group International, that none of that evidence is properly dated. It concludes from this that the General Court had not only failed to take into consideration the presumption of validity, but it had also distorted the evidence produced before it.
68. OHIM contends that the second part of the single ground of appeal should be rejected. As regards, in the first place, the burden of proof and the presumption of validity, Louis Vuitton’s argument is manifestly unfounded. In particular, in holding that it was for Louis Vuitton to mount a convincing challenge to the findings made by the Board of Appeal, the General Court merely applied an established principle of case-law, which applies both in ex parte and in inter partes cases, in relation to absolute grounds for refusal or invalidity.
69. In the second place, as regards the alleged distortion of the facts, OHIM concedes that the existence of an absolute ground for refusal must be determined with reference to the date on which the application for registration of a Community trade mark is lodged. However, Louis Vuitton’s argument is inadmissible for three reasons: (i) that argument was put forward for the first time at the appeal stage; (ii) it is settled case-law that documents bearing a date later than the relevant date nevertheless cannot be entirely lacking in evidential value if they enable conclusions to be drawn with regard to the situation as it was at that date and, as it is, Louis Vuitton has failed to produce any evidence in support of its arguments that the locking devices at issue had not been put on the market before the date on which the application for the mark at issue was filed; and (iii) Louis Vuitton has not substantiated the arguments that the alleged distortion of the evidence was clear. Findings of the Court
70. As regards the burden of proof and the presumption of validity, it must be pointed out, first of all, that in the context of an examination of the existence of absolute grounds for refusal under Article 7(1) of Regulation No 40/94, the role of OHIM is to decide whether the application for registration of the trade mark falls under an absolute ground for refusal ( Develey v OHIM , EU:C:2007:635, paragraph 48).
71. It must be ad ded that, under Article 74(1) of Regulation No 40/94, OHIM must examine of its own motion the relevant facts that could lead it to apply an absolute ground for refusal ( Develey v OHIM , EU:C:2007:635, paragraph 49).
72. Lastly, as was correctly pointed out in paragraph 53 of the judgment under appeal, if an applicant claims that a trade mark applied for is distinctive, despite OHIM’s analysis, it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has either an intrinsic distinctive character or a distinctive character acquired through use ( Develey v OHIM , EU:C:2007:635, paragraph 50).
73. It must therefore be found that the General Court did not infringe the rules governing the burden of proof.
74. As regards the alleged distortion of the facts, it is sufficient to note that, by that line of argument, Louis Vuitton is actually calling into question the assessment of the facts and evidence made by the General Court, without establishing - as required by the case-law - that those facts and evidence were clearly distorted by the latter (see, to that effect, judgment of 10 November 2011 in Case C‑88/11 P LG Electronics v OHIM , not published in the ECR, paragraph 37 and the case-law cited). That line of argument must therefore be rejected as inadmissible, pursuant to the case-law referred to in paragraph 61 above.
75. Accordingly, the second part of the single ground of appeal must be dismissed as in part inadmissible and in part unfounded.
76. The single ground of appeal must therefore be rejected and, in consequence, the appeal brought by Louis Vuitton must be dismissed. The cross-appeal
77. In support of its cross-appeal, OHIM raises two grounds of appeal, alleging: (i) failure to state reasons in relation to the ‘nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals’ and ‘leather and imitations of leather’ and (ii) contradictory reasoning as regards the other goods in respect of which the contested decision was annulled.
78. According to Louis Vuitton, in so far as OHIM is seeking, through its cross-appeal, essentially to call into question the assessment of the facts made by the General Court as regards the distinctive character of the mark at issue, that cross-appeal must be dismissed in its entirety as inadmissible or, in any case, as clearly unfounded. The first ground of the cross-appeal: failure to state reasons Arguments of the parties
79. OHIM submits in essence that, by rejecting, in paragraphs 40, 41 and 46 of the judgment under appeal, the reasoning followed by the Board of Appeal as regards the lack of distinctiveness of the mark at issue, the General Court disregarded the additional reasons given by the Board in point 44 of the contested decision, asserting in particular that the mark consists of ‘a shape that is not particularly striking and that is not composed of any particular features that might confer it an arbitrary character’, that fact alone being justification for a refusal to register a Community trade mark or for its annulment, regardless of whether or not the case-law relating to three-dimensional signs applies. The General Court did not state specifically why that reason given by the Board of Appeal is legally wrong.
80. According to Louis Vuitton, that ground is clearly unfounded. The Board of Appeal did not, in the contested decision, rely on several reasons in support of the finding that the mark at issue lacked distinctive character. Furthermore, even if it were necessary to construe that decision as specifying several grounds as a basis for finding that the mark at issue is invalid, the judgment under appeal nevertheless contains, in the light of the established case-law of the Court on the duty to state reasons, sufficient reasons as regards this issue, since the General Court is not obliged, in setting out the reasoning of its judgments, to adopt a position on all the arguments relied upon. Findings of the Court
81. First of all, it must be observed that an action before the General Court against a Board of Appeal’s decision in opposition proceedings is not open to OHIM. In fact, under Article 63(4) of Regulation No 40/94, such an action ‘shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision’ (Case C‑106/03 P Vedial v OHIM EU:C:2004:611, paragraph 31). Accordingly, OHIM cannot seek the annulment or alteration of the Board of Appeal’s decision on a point not raised in the application initiating proceedings ( Vedial v OHIM , EU:C:2004:611, paragraph 34).
82. However, in accordance with Article 176 of the Rules of Procedure of the Court of Justice, OHIM may bring a cross-appeal before the Court of Justice. Under Article 178(1) of those Rules, that cross-appeal must seek to have set aside, in whole or in part, the decision of the General Court.
83. In that regard, OHIM submits that the General Court disregarded the additional reasons set out by the Board of Appeal in support of its finding that the mark at issue lacked distinctive character.
84. The question whether the grounds of a judgment of the General Court are inadequate is a question of law which, as such, is amenable to review on appeal (see, inter alia, Case C‑263/09 P Edwin v OHIM EU:C:2011:452, paragraph 63 and the case-law cited).
85. After holding, in paragraphs 41 and 46 of the judgment under appeal, that the case-law relating to three-dimensional marks did not apply to the mark at issue with regard to ‘nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals’ in Class 14 or to ‘leather and imitations of leather’ in Class 18, the General Court decided, in paragraph 82 of the judgment under appeal, to annul the contested decision in respect of those goods.
86. Admittedly, the General Court did not refer to other reasons to which the Board of Appeal may have referred as justification for the annulment of the registration of the mark at issue in respect of those products.
87. However, it is necessary to examine point 44 of the contested decision in the light of the full analysis made in points 38 to 53 of that decision. It is apparent - from a reading of points 51 to 53 thereof, in particular - that the Board of Appeal annulled the registration of the mark at issue specifically because it took the view that the case-law relating to three-dimensional marks, which takes into account the ‘depart significantly’ criterion, applied to the mark at issue in respect of all the goods covered by the trade mark application and that, for that reason, the mark was devoid of distinctive character. Thus, the Board of Appeal did not rely on other reasons to justify its finding that the ground for invalidity provided for in Article 7(1)(b) of Regulation No 40/94 had to be applied to that mark.
88. Consequently, OHIM’s line of argument is based on a misinterpretation of the contested decision. The General Court took into consideration the sole reason for which the Board of Appeal had annulled the registration of the mark at issue with respect to ‘nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals’ in Class 14, and ‘leather and imitations of leather’ in Class 18, and it cannot therefore have disregarded additional reasons that the Board of Appeal is said to have put forward in that regard.
89. Accordingly, the first ground of the cross-appeal must be rejected as unfounded. The second ground of the cross-appeal: contradictory reasoning Arguments of the parties
90. OHIM submits that the General Court followed the correct approach in finding, in paragraphs 30 to 32 and 74 of the judgment under appeal, that the mark at issue was devoid of any distinctive character in respect of ‘spectacle cases’ and that, accordingly, the absolute ground for refusal provided for in Article 7(1)(b) of Regulation No 207/2009 extended to the general category of ‘optical apparatus and instruments’ in Class 9, which includes ‘spectacle cases’.
91. However, in accordance with that approach, the General Court should also have found that the mark at issue was devoid of distinctive character in respect of the general categories of ‘jewellery’ and ‘horological and chronometric instruments and apparatus’, those categories necessarily including both ‘jewel boxes in precious metals, their alloys or coated therewith’, in respect of which the mark at issue had been found to lack distinctiveness, and ‘cases for watches’ and ‘clock cases’.
92. According to Louis Vuitton, the judgment under appeal does not contain any contradiction in relation to those goods and that ground should therefore be rejected as clearly unfounded. In particular, ‘jewel boxes in precious metals, their alloys or coated therewith’ do not, by definition, fall within the general category of ‘jewellery’. As regards the other goods mentioned, OHIM has failed, according to Louis Vuitton, to put forward any relevant argument in support of its submission. Findings of the Court
93. The question whether the grounds of a judgment of the General Court are contradictory is a question of law which, as such, is amenable to review on appeal (see, inter alia, Joined Cases C‑120/06 P and C‑121/06 P FIAMM and Others v Council and Commission EU:C:2008:476, paragraph 90 and the case-law cited).
94. It must be pointed out that the fact that a sign is devoid of any distinctive character in relation to only some of the goods or services within a category listed as such in the application for registration does not preclude that application from being refused or the sign in question from being declared invalid if it has already been registered, given that, in the opposite situation, nothing would preclude its proprietor from using it also for the goods or services of the category of goods for which its registration is sought, in respect of which it is not distinctive (see, to that effect, Case T‑304/06 Reber v OHIM - Chocoladefabriken Lindt & Sprüngli (Mozart) EU:T:2008:268, paragraph 92 and the case-law cited).
95. In that connection, the General Court was correct in holding, in paragraphs 30 and 31 of the judgment under appeal, that the mark at issue must be considered to be devoid of any distinctive character in respect of all the goods in Class 9, unless it is shown to be distinctive in respect of spectacle cases, observing that the word ‘including’ indicates that the ‘spectacles, sunglasses and spectacle cases’ are specific articles falling within the category of ‘optical apparatus and instruments’ in Class 9.
96. However, a semi-colon establishes a distinction between two different categories falling within the same class. Thus, the ‘jewel boxes in precious metals, their alloys or coated therewith’ are not, by definition, ‘jewellery’ and, consequently, they do not constitute articles falling within the general category of ‘jewellery’.
97. That difference between the effect of a semi-colon and the effect of the word ‘including’ in a list of goods covered by a particular class is supported by OHIM’s Manual of Trade Mark Practice . Point 3.4.4 of Part B.3 of that manual states that ‘[t]he use of commas serves to separate items within a similar category or expression’, whereas ‘a semi-colon means a separation between expressions’.
98. It follows from the foregoing that the General Court was correct to establish a distinction between ‘jewel boxes in precious metals, their alloys or coated therewith’ and ‘jewellery’ in Class 14.
99. As regards the goods in the category ‘horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks’ in Class 14, it must be observed that the General Court held in paragraph 79 of the judgment under appeal that the mark at issue possessed, in relation to those goods, the minimum degree of distinctive character required to justify its registration in respect of them.
100. By its arguments in this connection, OHIM seeks to call into question the assessment of the facts and evidence made by the General Court, which - as was pointed out in paragraph 61 above - 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.
101. It must be stated that OHIM has not put forward, as regards the goods in the category ‘horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks’ in Class 14, any argument capable of demonstrating that the General Court distorted the facts or evidence produced before it.
102. In the light of the foregoing considerations, the second ground relied on by OHIM in support of its cross-appeal must also be rejected, being in part unfounded and in part inadmissible.
103. It follows that the cross-appeal must be dismissed. Costs
104. Under Article 138(1) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. However, pursuant to Article 138(3) of those Rules, the parties are to bear their own costs where each party succeeds on some and fails on other heads.
105. Under Article 140(3) of those Rules, the Court of Justice may order an intervener other than those referred to in the preceding paragraphs of Article 140 to bear its own costs.
106. In the present case, Louis Vuitton and OHIM have been unsuccessful in all the grounds of appeal relied on in support, respectively, of the appeal and the cross-appeal.
107. Accordingly, it must be held that Louis Vuitton, OHIM and Friis Group International should bear their own costs.