1 By their appeals, The Yokohama Rubber Co. Ltd (‘Yokohama’) (C‑818/18 P) and the European Union Intellectual Property Office (EUIPO) (C‑6/19 P) seek to have set aside the judgment of the General Court of the European Union of 24 October 2018, Pirelli Tyre v EUIPO - Yokohama Rubber (Representation of an L-shaped groove) (T‑447/16, EU:T:2018:709; ‘the judgment under appeal’), by which the General Court annulled in part the decision of the Fifth Board of Appeal of EUIPO of 28 April 2016 (Case R 2583/2014‑5), relating to invalidity proceedings between Yokohama and Pirelli Tyre SpA (‘the decision at issue’). Legal context
2 Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009, repealed and replaced Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) and was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), before being repealed and replaced, with effect from 1 October 2017, by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). However, since the decisive date for identifying the applicable substantive law is the date on which the application for registration was filed (judgment of 2 March 2017, Panrico v EUIPO , C‑655/15 P, not published, EU:C:2017:155, paragraph 2 and the case-law cited), namely 23 July 2001, the present dispute is governed by Regulation No 40/94, at least as regards provisions that are not strictly procedural.
3 Article 7 of Regulation No 40/94, entitled ‘Absolute grounds for refusal’, provided, in paragraph 1(e)(ii) thereof: ‘The following shall not be registered: … (e) signs which consist exclusively of: … (ii) the shape of goods which is necessary to obtain a technical result …’
4 Article 52 of that regulation, entitled ‘Relative grounds for invalidity’, provided, in paragraph 1(a) thereof: ‘A Community trade mark shall be declared invalid on application to [EUIPO] or on the basis of a counterclaim in infringement proceedings: (a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled’. Background to the dispute
5 The facts of the dispute, as set out in paragraphs 1 to 8 of the judgment under appeal, may be summarised as follows.
6 On 23 July 2001, Pirelli Tyre SpA (‘Pirelli’) filed an application for registration of a Community trade mark with EUIPO pursuant to Regulation No 40/94. Registration as a mark was sought for the following figurative sign:
7 The goods in respect of which registration was sought are in Class 12 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. They correspond to the following description: ‘Tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds’.
8 The sign referred to in the preceding paragraph was registered as a Community trade mark on 18 October 2002 under number 2319176 (‘the mark at issue’).
9 On 27 September 2012, Yokohama filed before EUIPO an application for a declaration of invalidity of the mark at issue for the goods ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’, based on Article 52(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) or Article 7(1)(e)(ii) of that regulation.
10 By decision of 28 August 2014, the Cancellation Division of EUIPO declared the mark at issue invalid for those goods, as well as for ‘rims and covers for vehicle wheels of all kinds’, on the ground that the mark at issue consisted exclusively of the shape of the goods concerned necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94.
11 Pirelli filed a notice of appeal against that decision with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009.
12 The Fifth Board of Appeal of EUIPO upheld the appeal in part, annulling the decision of the Cancellation Division in so far as it had declared the mark at issue invalid for ‘rims and covers for vehicle wheels of all kinds’. It dismissed the appeal as to the remainder, thus confirming the invalidity of the mark at issue in respect of ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’. The procedure before the General Court and the judgment under appeal
13 By application lodged at the Registry of the General Court on 4 August 2016, Pirelli brought an action for annulment of the decision at issue in so far as it confirmed the invalidity of the mark at issue in respect of ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’.
14 In support of its action, Pirelli relied on three pleas in law, alleging (i) that the decision at issue was based on a version of Article 7(1)(e)(ii) of Regulation No 40/94 that was inapplicable ratione temporis , (ii) certain procedural irregularities and infringement of the obligation to state reasons and (iii) infringement of Article 7(1)(e)(ii) of Regulation No 40/94. The third plea in law comprised two parts. By the first part of that plea, Pirelli claimed that the mark at issue did not consist exclusively of the shape of the goods concerned and could not therefore be refused on the basis of that provision. By the second part of that plea, Pirelli submitted that the essential characteristics of that mark were not all exclusively functional.
15 By the judgment under appeal, the General Court upheld the first part of the third plea relied on by Pirelli and annulled the decision at issue in so far as it had declared the registration of the mark at issue invalid in respect of ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’ and had ordered Pirelli to repay EUR 1 700 to Yokohama.
16 In paragraphs 70 and 71 of the judgment under appeal, the General Court found that the mark at issue ‘represents a single groove of a tyre tread’ and ‘is not made up exclusively of the shape of the goods in question or of a shape which, on its own, represents, quantitatively and qualitatively, a significant part of those goods’. It stated, in paragraph 72 of that judgment, that the evidence submitted by Yokohama and examined by the Board of Appeal ‘does not establish that a single groove, in the shape identical to that represented by the [mark at issue], is capable of producing the technical result accepted in the [decision at issue]’ and, in paragraph 73 thereof, that, in those circumstances, the registration of that mark is not liable to prevent Pirelli’s competitors from making and marketing tyres which incorporate an identical or similar shape to that represented by that mark when such a shape is combined with other elements of a tyre tread and creates, in conjunction with those other elements, a shape that is different from each of those elements taken individually. Forms of order sought by the parties and the procedure before the Court of Justice
17 In Case C‑818/18 P, Yokohama claims that the Court should: - set aside the judgment under appeal; - if necessary, refer the case back to the General Court; and - order Pirelli to pay the costs, including the costs incurred in the proceedings before the General Court and before the Board of Appeal.
18 EUIPO claims that the Court should: - uphold the appeal and set aside the judgment under appeal, and - order Pirelli to pay the costs incurred by EUIPO.
19 Pirelli contends that the Court should: - dismiss the appeal, and - order Yokohama to pay the costs incurred by Pirelli.
20 In Case C‑6/19 P, EUIPO claims that the Court should: - set aside the judgment under appeal, and - order Pirelli to pay the costs incurred by EUIPO.
21 Yokohama claims that the Court should: - set aside the judgment under appeal, and - order Pirelli to pay the costs, including the costs incurred in the proceedings before the General Court and before the Board of Appeal.
22 Pirelli contends that the Court should: - dismiss the appeal, and - order EUIPO to pay the costs incurred by Pirelli.
23 By decision of the President of the Court of 25 October 2019, Cases C‑818/18 P and C‑6/19 P were joined for the purposes of the oral procedure and the judgment.
24 By order of the President of the Court of 13 November 2019, the European Association of Trade Mark Owners (Marques) was granted leave to intervene in support of the form of order sought by Pirelli and to submit its observations during the oral procedure, if it were to take place. The appeals
25 In support of its appeal in Case C‑818/18 P, Yokohama puts forward two grounds of appeal, the first alleging infringement of Article 7(1)(e)(ii) of Regulation No 40/94 and the second alleging distortion of the facts.
26 In support of its appeal in Case C‑6/19 P, EUIPO puts forward a single ground of appeal, alleging infringement of Article 7(1)(e)(ii) of Regulation No 40/94.
27 It is appropriate to examine Yokohama’s two grounds of appeal and EUIPO’s single ground of appeal together, on account of their connectedness. Arguments of the parties
28 Yokohama’s first ground of appeal consists of two parts.
29 By the first part of that ground of appeal, Yokohama claims, in essence, that the General Court infringed Article 7(1)(e)(ii) of Regulation No 40/94 by holding that the mark at issue does not represent the shape of the goods at issue.
30 In the first place, Yokohama claims that the judgment under appeal is vitiated by a contradiction in its reasoning. First, it is apparent from paragraph 51 of that judgment that Pirelli does not contest ‘that some of its tyre models contain, on the surface of the tyre, a groove in the shape represented by the [mark at issue]’. Second, it is apparent from paragraph 43 of that judgment that ‘the possibility afforded to the competent authority, to take into account material relevant to identifying the essential characteristics of a … three-dimensional sign, has been extended to the examination of two-dimensional signs’, such as the mark at issue. According to Yokohama, it is therefore contradictory in the present case to consider, in paragraph 53 of the judgment under appeal, that the mark at issue does not represent a tyre or a whole tyre tread and, in paragraph 61 of that judgment, that it does not represent a tread pattern design.
31 In addition, in paragraph 60 of the judgment under appeal, the General Court distorted the facts by stating that the documents relied on by Yokohama before EUIPO related to signs different from the sign comprising the mark at issue.
32 Yokohama adds that the images in the decision at issue should lead to the finding that not only does the mark at issue cover a significant part of a tyre, but also that Pirelli may, at any time, market a tyre covered exclusively by the mark at issue. Consequently, Yokohama submits that the General Court erred in law in holding that the applicable provisions preclude consideration of the actual use made of the mark at issue following its registration.
33 In the second place, Yokohama submits that paragraph 69 of the judgment under appeal - in which the General Court held that the scope of Article 7(1)(e)(ii) of Regulation No 40/94 was not limited solely to signs formed exclusively of the shape of goods as such, but could extend to signs consisting of the shape of a part of a product that is necessary to obtain a technical result, where that shape represents, quantitatively and qualitatively, a significant part of that product - is arbitrary and contrary to Article 7(1)(e) of Regulation No 40/94, as interpreted by the Court of Justice. What matters is whether such a sign constitutes a part of the product covered by the mark that has a connection with the appearance of that product and performs a technical function.
34 In the third place, Yokohama claims that, in paragraph 54 of the judgment under appeal, the General Court did not take into account, for the purposes of assessing whether the mark at issue represents the goods covered by it or, at least, a tyre tread, the evidence which it produced before the Board of Appeal, from which it follows that, from a technical point of view, a single groove, identical to the mark at issue, is capable of producing the technical result accepted in the decision at issue.
35 In the fourth place, Yokohama claims that the statement in paragraph 73 of the judgment under appeal that, as such, the shape represented by the mark at issue does not necessarily feature on a tyre tread is not sufficient to justify the statement in the same paragraph of that judgment that the registration of that mark is not liable to prevent Pirelli’s competitors from making and marketing tyres which incorporate an identical or similar shape. According to Yokohama, the General Court took into account only the identification function of the mark, thus disregarding its other functions, such as communication, advertisement and investment.
36 By the second part of the first ground of appeal, which concerns paragraphs 57, 58 and 61 of the judgment under appeal, Yokohama claims that the General Court made an error in law in finding that the Board of Appeal had unlawfully added to the shape of the mark at issue elements which did not form part of it and which were therefore external or foreign. According to Yokohama, a proper examination of the mark at issue entails, in accordance with the relevant case-law of the Court, the analysis not only of the characteristics of the shape resulting from its graphic representation but also of the characteristics external and foreign to that shape, having regard to the function of the goods at issue, by taking into account additional information.
37 By its second ground of appeal, Yokohama claims that, in paragraph 72 of the judgment under appeal, the General Court made an error of assessment, leading to a distortion of the facts, in that it rejected as irrelevant the evidence produced by Yokohama before EUIPO and examined by the Board of Appeal. According to Yokohama, that evidence shows that the single groove represented by the mark at issue is capable of producing the technical result accepted in the decision at issue.
38 EUIPO’s single ground of appeal consists of three parts.
39 By the first part of that ground of appeal, EUIPO claims, like the second and third arguments in the first part of Yokohama’s first ground of appeal, that the General Court misinterpreted the ground for refusal of registration set out in Article 7(1)(e)(ii) of Regulation No 40/94 by making it subject to the condition that the part of a product represented by a sign must be quantitatively and qualitatively significant.
40 First, EUIPO emphasises that it does not follow from the Court’s case-law that the application of that ground for refusal of registration is subject, in the case of a sign which represents the shape of a part of a product, to the importance of that part in relation to the product as a whole, or to the condition that that shape reveals the outline of that product.
41 Second, EUIPO recalls that, according to settled case-law, a sign consisting of a shape which represents only part of a product may also fall within the absolute ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 where all the essential characteristics of that sign are necessary to obtain a technical result (judgment of 10 November 2016, Simba Toys v EUIPO , C‑30/15 P, EU:C:2016:849, paragraphs 40 and 46). It is therefore necessary to identify the essential characteristics of the sign at issue and to establish whether they are all functional and, to that end, to determine at the outset the shape represented by that sign.
42 In the present case, the General Court, in holding, in paragraphs 69 to 71 of the judgment under appeal, that a sign made up of the shape of a single groove on a tyre tread cannot be regarded as representing either the goods at issue or a part thereof, if it does not constitute, quantitatively and qualitatively, a significant part of a tyre, laid down a condition not provided for in Article 7(1)(e)(ii) of Regulation No 40/94 and, accordingly, misinterpreted the ground for refusal of registration provided for in that provision.
43 According to EUIPO, the signs covered by the prohibition on registration set out in that provision include those made up of a shape which can be incorporated into the product in question and which performs a technical function. In view of the purpose of Article 7(1)(e)(ii) of Regulation No 40/94 - which is to ensure that identical or similar shapes which merely incorporate a technical solution are refused registration and can therefore be freely used by competitors - the General Court, by ruling out the application to the mark at issue of the absolute ground for refusal of registration set out in that provision on the ground that that mark does not represent, quantitatively and qualitatively, a significant part of the goods concerned, unduly limited the scope of that provision.
44 By the second part of its single ground of appeal, EUIPO claims that the General Court wrongly held, in paragraphs 55 and 72 of the judgment under appeal, that a single groove represented by the mark at issue is not capable, on its own, of performing a technical function for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94, on the ground that, in a tyre tread, the groove appeared in combination with other elements.
45 EUIPO submits that that provision requires an examination of the technical result obtained by the feature of a product represented by the sign at issue, and not the technical result obtained by the product as a whole. Thus, a sign is caught by the absolute ground for refusal of registration set out in Article 7(1)(e)(ii) of Regulation No 40/94 if it is shown that all the essential characteristics of the shape of that sign are necessary to obtain a technical result and that that shape contributes to the functioning of the product concerned, even if it is not sufficient in itself to obtain the intended technical result of that product.
46 That is so even where not all the elements necessary for the implementation of the technical solution are visible in the graphic representation of the sign at issue. A contrary interpretation would allow an applicant for a trade mark to circumvent the application of Article 7(1)(e)(ii) of Regulation No 40/94 by splitting into separate trade marks the various elements which, together, implement the technical solution and would thus make it impossible for that applicant’s competitors to use a certain number of product shapes incorporating identical or similar elements.
47 By the third part of its single ground of appeal, EUIPO submits that the General Court, in paragraph 73 of the judgment under appeal, held wrongly that the registration of a sign comprising a single groove such as that represented by the mark at issue does not prevent Pirelli’s competitors from making and marketing tyres with identical or similar grooves. What matters for the purposes of delimiting the rights conferred by registration of the mark at issue is knowing whether that sign can be identified on a tyre tread, not whether it is combined with other elements on a tyre tread.
48 Pirelli disputes the arguments put forward by Yokohama and EUIPO and asks the Court to reject Yokohama’s first ground of appeal and EUIPO’s single ground of appeal as unfounded, and Yokohama’s second ground of appeal as inadmissible and, in any event, unfounded. Findings of the Court The arguments based on the General Court’s appraisal of the facts or assessment of the evidence or on their distortion
49 It should be recalled, as a preliminary point, 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 is to be limited to points of law. The General Court thus has exclusive jurisdiction to appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence have been distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (judgment of 11 May 2017, Yoshida Metal Industry v EUIPO , C‑421/15 P, EU:C:2017:360, paragraph 22 and the case-law cited).
50 Furthermore, given the exceptional nature of a complaint of distortion, both the provisions referred to in the preceding paragraph of the present judgment and Article 168(1)(d) of the Rules of Procedure of the Court of Justice require that an appellant indicate precisely the elements alleged to have been distorted by the General Court and show the errors of appraisal which, in its view, led to that distortion. Such a distortion must be obvious from the documents in the file, without there being any need to carry out a new assessment of the facts and the evidence (judgment of 11 May 2017, Yoshida Metal Industry v EUIPO , C‑421/15 P, EU:C:2017:360, paragraph 23 and the case-law cited).
51 In the present case, in the context of the first argument in the first part of its first ground of appeal, Yokohama claims that the General Court distorted the facts, in so far as it found, in paragraph 60 of the judgment under appeal, that the evidence which Yokohama produced before EUIPO, from which it is allegedly apparent that Pirelli acknowledged that the mark at issue was a ‘tread pattern design’, concerned signs that were different from the mark at issue.
52 In that regard, it should be noted that, in paragraph 60 of the judgment under appeal, the General Court stated that the documents relied on by Yokohama, in which Pirelli allegedly acknowledged that the mark at issue was a ‘tread pattern design’, referred to or showed signs which were different from that mark. In the same paragraph of the judgment under appeal, the General Court referred, in particular, to Annexes 8, 9 and 10 to Yokohama’s observations submitted before EUIPO on 19 December 2013.
53 Yokohama has not indicated precisely which elements were distorted by the General Court. First, it made no mention, in its appeal, of Annexes 8, 9 and 10 to its observations submitted before EUIPO on 19 December 2013, to which the General Court specifically referred in paragraph 60 of the judgment under appeal. Second, although Yokohama did mention Annexes 1, 26 and 28, attached to those observations, in the appeal, it merely criticised the General Court for failing to take them into account in the judgment under appeal. In so doing, Yokohama has not shown the errors of appraisal that were made, in its view, by the General Court and led it to distort those elements. It follows that the complaint of distortion put forward by Yokohama is not in line with the case-law cited in paragraph 50 of the present judgment and must, therefore, be rejected as inadmissible.
54 Furthermore, in so far as, by the third argument in the first part of its first ground of appeal, Yokohama criticises the General Court for not having taken into account, in paragraph 54 of the judgment under appeal, the evidence and the documents which it produced before the Board of Appeal attesting to the technical result capable of being produced by a single groove, it seeks, in fact, to call into question the General Court’s finding that the evidence submitted before EUIPO showed that the groove represented by the mark at issue does not appear in isolation on the Pirelli’s tyres, but repeatedly and criss-crossed on the tyre tread to the point where it creates a shape which is different from the shape of the initial, individual groove. Consequently, in accordance with the case-law cited in paragraph 49 of the present judgment, that argument must be rejected as inadmissible.
55 As regards the second ground of appeal, by which Yokohama claims that the General Court, in paragraph 72 of the judgment under appeal, made an error of assessment, leading to a distortion of the facts - in that it found that the evidence submitted by Yokohama before EUIPO and examined by the Board of Appeal did not establish that a single groove, in the shape identical to that represented by the mark at issue, is capable of producing the technical result accepted in the decision at issue - it is sufficient to note that, under the guise of an alleged distortion of the facts, Yokohama is in fact seeking to obtain a new assessment of that evidence, so that it would follow that such a single groove is capable of producing the technical result at issue, as Yokohama argued before the General Court. Therefore, in the light of the case-law referred to in paragraphs 49 and 50 of the present judgment, this ground of appeal must be rejected as inadmissible. The argument relating to a contradiction in the grounds of the judgment under appeal
56 The first argument in the first part of its first ground of appeal, by which Yokohama claims that the judgment under appeal is vitiated by a contradiction between, on the one hand, paragraphs 43 and 51 of that judgment and, on the other hand, paragraphs 53 and 61 thereof, may be refuted by reading paragraphs 51 to 61 of that judgment as a whole.
57 It is true that, in paragraph 51 of the judgment under appeal, the General Court noted that Pirelli did not contest that some of its tyre models contain, on the surface of the tyre, a groove in the shape represented by the mark at issue. It further noted, in paragraph 52 of that judgment, that, in view of the case-law cited in paragraphs 40 to 43 thereof, EUIPO could not be criticised for having, pursuant to Article 7(1)(e)(ii) of Regulation No 40/94, assessed that mark in the context of the goods covered by it and for having taken the view that it could represent a groove similar to those which feature on the tyres marketed by Pirelli.
58 However, as is apparent from paragraph 53 of the judgment under appeal, introduced by the word ‘however’, the General Court found that the grounds in paragraph 51 of that judgment did not, by themselves, support the conclusion that the mark at issue represented a tyre or a whole tyre tread. The grounds for that finding were set out in paragraphs 54 to 61 of the judgment under appeal. Irrespective of the merits of those grounds, some of which are contested by Yokohama and by EUIPO, it cannot therefore be held that the judgment under appeal contains a contradiction in those grounds. The arguments relating to the identification of the essential characteristics of the mark at issue
59 By its arguments put forward under the first part of its first ground of appeal, set out in paragraph 32 above, and under the second part of its first ground of appeal, directed against paragraphs 57, 58 and 61 of the judgment under appeal, Yokohama claims, in essence, that the General Court erred in law in finding that the Board of Appeal of EUIPO had unlawfully added to the shape of the mark at issue elements which did not form part of it and which were therefore external or foreign to it. According to Yokohama, the General Court was wrong to find that the Board of Appeal could not analyse the characteristics of the shape resulting from its graphic representation, having regard to the function of the goods at issue, by taking into account additional information not apparent from that graphic representation.
60 In that regard, it must be borne in mind that the Court has repeatedly held that the correct application of Article 7(1)(e)(ii) of Regulation No 40/94 requires that the authority deciding on the application for registration of a trade mark must, first, identify the essential characteristics of the sign at issue and, second, ascertain whether those characteristics all perform the technical function of the product to which that trade mark refers (see, to that effect, judgments of 14 September 2010, Lego Juris v OHIM , C‑48/09 P, EU:C:2010:516, paragraphs 68 and 72, and of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry , C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 46).
61 In the present case, the General Court, at the end of the first stage of analysis mentioned in the preceding paragraph of the present judgment, in which it examined the graphic representation of the mark at issue, also taking into account the evidence submitted before EUIPO, noted, in paragraph 55 of the judgment under appeal, that that sign is only a very limited part, namely a single groove, of another part, namely a tyre tread. It stated that such a tyre tread is formed of multiple interlacing elements and is itself a part which, together with other parts, particularly sidewalls, constitutes the goods covered by the mark at issue, namely tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds. The General Court therefore found, in that paragraph, that the mark at issue does not represent the goods covered by it or a tyre tread.
62 In paragraph 57 of the judgment under appeal, the General Court considered that, although the expert’s report and all the relevant items mentioned in the case-law referred to in paragraph 60 of the present judgment served to establish what the mark at issue actually represents, they did not allow it to be defined by adding to it characteristics that it did not possess. Consequently, the General Court held, in paragraph 58 of the judgment under appeal, that the Board of Appeal had departed from the shape represented by the mark at issue and had modified it by adding to it all the elements which appeared on a tyre tread in order to find that that mark represented the shape of the goods in question for which it had been registered.
63 In so doing, the General Court correctly applied the case-law cited in paragraph 60 of the present judgment. Contrary to what Yokohama claims, the General Court did not hold that the Board of Appeal could not analyse the characteristics of the shape of the mark at issue, as it results from its graphic representation, in the light of the goods covered by that mark or additional information.
64 On the contrary, in paragraph 50 of the judgment under appeal, the General Court noted that, in order to identify the essential characteristics of a sign such as the mark at issue, the Board of Appeal could carry out a detailed examination, taking into account, inter alia, material that makes it possible to assess what that mark actually represents. Furthermore, in paragraph 52 of the judgment under appeal, the General Court added that EUIPO could not be criticised for having considered the nature of the mark at issue in the context of the goods covered by it.
65 However, as is apparent from paragraph 58 of the judgment under appeal, in its unfettered assessment of the facts and evidence produced before it, the General Court held, in essence, that the elements which the Board of Appeal was entitled to take into account did not allow it to qualify the mark at issue as a ‘representation of a tyre tread’.
66 It follows from the foregoing that, contrary to what Yokohama claims, it is without erring in law and on the basis of the relevant provisions, as interpreted by the case-law, that the General Court held that the Board of Appeal of EUIPO had unlawfully added to the shape of the mark at issue elements which did not form part of it. Accordingly, Yokohama’s arguments, set out in paragraph 59 of the present judgment, must be rejected as unfounded. The arguments relating to the additional condition for refusal of registration laid down in the judgment under appeal
67 By the first part of EUIPO’s single ground of appeal and by the second argument in the first part of Yokohama’s first ground of appeal, directed against paragraphs 69 to 71 of the judgment under appeal, the appellants submit that the General Court misinterpreted Article 7(1)(e)(ii) of Regulation No 40/94 by holding that, in order for a sign to be covered by the ground for refusal of registration set out in that provision, the part of a product represented by that sign must be, quantitatively and qualitatively, a significant part of that product.
68 In that regard, in paragraph 69 of the judgment under appeal, the General Court stated, taking up an argument put forward by EUIPO, that the scope of the absolute ground for refusal of registration provided for in that provision may extend, in view of the public interest underlying that provision, to the registration of signs consisting of the shape of part of a product that is necessary to obtain a technical result, that being the case, in particular, where that shape represents, quantitatively and qualitatively, a significant part of that product.
69 The General Court found, in paragraph 70 of the judgment under appeal, that the mark at issue represents a single groove of a tyre tread and not a tyre tread, since it does not incorporate the other elements of a tyre tread, with which that mark creates numerous shapes, which are complex and different from the shape of each of the grooves and of each of the elements considered in isolation. The General Court concluded, in paragraph 71 of that judgment, that the mark at issue is not made up exclusively of the shape of the goods in question or of a shape which, on its own, represents, quantitatively and qualitatively, a significant part of those goods.
70 However, in paragraph 72 of the judgment under appeal, the General Court noted that the evidence submitted by Yokohama before EUIPO did not establish that a single groove, in the shape identical to that represented by the mark at issue, was capable of producing the technical result accepted in the decision at issue. That finding, which follows from the General Court’s unfettered assessment of the facts and evidence and is not, in principle, capable of being called into question on appeal, constitutes an independent ground sufficient in itself to result in the annulment of the decision at issue.
71 It follows that, even if the General Court held, in paragraphs 69 to 71 of the judgment under appeal, that, in order for a sign to be covered by the ground for refusal of registration set out in Article 7(1)(e)(ii) of Regulation No 40/94, the part of a product represented by that sign must be, quantitatively and qualitatively, a significant part of that product and, therefore, erred in law in interpreting that provision, as Yokohama and EUIPO maintain, such an error could not, in any event, lead to the judgment under appeal being set aside.
72 In those circumstances, the arguments of EUIPO and Yokohama directed against paragraphs 69 and 71 of the judgment under appeal must be rejected as ineffective. The argument relating to the technical function of a shape that can be incorporated into a product
73 By the second part of its single ground of appeal, EUIPO claims that the General Court made an error of law by disregarding the fact that a sign may be covered by Article 7(1)(e)(ii) of Regulation No 40/94 if it is shown that all the essential characteristics of the shape of that sign are necessary to obtain a technical result and that that shape contributes to the functioning of the product concerned, even if it is not sufficient in itself to obtain the intended technical result of that product. According to EUIPO, that error led the General Court to consider, incorrectly, in paragraphs 55 and 72 of the judgment under appeal, that a single groove represented by the mark at issue is not, in itself, capable of performing a technical function for the purposes of that provision.
74 However, that complaint is based on a misreading of the judgment under appeal. It is not apparent from paragraph 55 or paragraph 72 of that judgment that the General Court excluded the possibility that Article 7(1)(e)(ii) of Regulation No 40/94 might apply to a sign the shape of which is necessary to obtain a technical result which contributes to the functioning of a product, even if that shape is not sufficient, in itself, to obtain the intended technical result of that product.
75 In paragraph 55 of the judgment under appeal, the General Court set out what, according to its unfettered assessment of the facts and evidence, the mark at issue represents, namely a single groove. In paragraph 72 of that judgment, it noted that the evidence examined by the Board of Appeal does not establish that such a single groove is capable of producing, not any technical result, but ‘the technical result accepted in the [decision at issue]’.
76 It follows that the General Court did not make the error of law of which the second part of EUIPO’s single ground of appeal complains and that, consequently, the second part of EUIPO’s single ground of appeal must be rejected as unfounded. The arguments relating to the functions of the trade mark
77 Yokohama, by its argument summarised in paragraph 35 of the present judgment, and EUIPO, by the third part of its single ground of appeal, dispute paragraph 73 of the judgment under appeal, in which the General Court held that the registration of the mark at issue, the protection of which is limited to the shape which it represents, is not liable to prevent Pirelli’s competitors from making and marketing tyres which incorporate an identical or similar shape when such a shape is combined with other elements of a tyre tread and creates, in conjunction with those other elements, a shape that is different from each of the elements taken individually, especially since that shape, as such, does not necessarily feature on a tyre tread in a manner that enables the mark at issue to be identified.
78 However, first, the statement that the registration of the mark at issue is not liable to prevent Pirelli’s competitors from marketing tyres which incorporate an identical or similar shape to the shape of that mark when that shape, combined with other elements, creates a different shape, is not vitiated by any error of law. Since, ultimately, it is a question of a shape different from the mark at issue, Pirelli cannot rely on that mark to prevent the marketing of tyres which incorporate that different shape.
79 Second, the statement, in the second sentence of paragraph 73 of the judgment under appeal, that the shape which the mark at issue represents does not necessarily feature on a tyre tread in a manner that enables that mark to be identified, constitutes a factual appraisal by the General Court, which cannot be called into question on appeal, except in the event of distortion, which is in no way alleged by Yokohama or EUIPO.
80 Accordingly, Yokohama’s argument summarised in paragraph 35 of the present judgment and the third part of EUIPO’s single ground of appeal must be rejected.
81 In the light of the foregoing, Yokohama’s first ground of appeal must be rejected as in part inadmissible and in part unfounded, Yokohama’s second ground of appeal must be rejected as inadmissible and EUIPO’s single ground of appeal must be rejected as unfounded.
82 It follows that the appeal in Case C‑818/18 P and the appeal in Case C‑6/19 P must be dismissed in their entirety. Costs
83 Under Article 184(2) of the Rules of Procedure, where the appeal is unfounded the Court is to make a decision as to costs.
84 In accordance with 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.
85 Since Pirelli has applied for costs and Yokohama and EUIPO have been unsuccessful, they must be ordered to bear their own costs in relation to the appeal proceedings and to pay, in equal parts, the costs incurred by Pirelli in relation to those proceedings.
86 Furthermore, under Article 140(3) in conjunction with Article 184(1) of the Rules of Procedure, the Court may order an intervener to bear its own costs.
87 Marques, in its capacity as intervener in the appeal, is to bear its own costs, to the extent that it has incurred them. On those grounds, the Court (Fourth Chamber) hereby: 1. Dismisses the appeals in Cases C ‑ 818/18 P and C ‑ 6/19 P; 2. Orders The Yokohama Rubber Co. Ltd and the European Union Intellectual Property Office (EUIPO) to bear their own costs in relation to the appeal proceedings in Cases C ‑ 818/18 P and C ‑ 6/19 P and to pay, in equal parts, the costs incurred by Pirelli Tyre SpA in relation to those proceedings; 3. Orders the European Association of Trade Mark Owners (Marques) to bear its own costs. Vilaras Piçarra Šváby Rodin Jürimäe Delivered in open court in Luxembourg on 3 June 2021. A. Calot Escobar M. Vilaras Registrar President of the Fourth Chamber * Language of the case: English.