JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

26 November 2015 (*)

(Community trade mark — Application for Community trade mark KJ Kangoo Jumps XR — Absolute ground for refusal — Devoid of any distinctive character — Article 7(1)(b) of Regulation No 207/2009)

In Case T‑390/14,

Établissement Amra, established in Vaduz (Liechtenstein), represented by S. Rizzo, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant,

ACTION against the decision of the Second Board of Appeal of OHIM of 10 March 2014 (Case R 1511/2013-2), concerning an application for registration of the ‘3D position mark’ KJ Kangoo Jumps XR as a Community trade mark,

THE GENERAL COURT (Seventh Chamber),

composed of M. van der Woude (Rapporteur), President, I. Wiszniewska-Białecka and I. Ulloa Rubio, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 3 June 2014,

having regard to the response lodged at the Court Registry on 7 October 2014,

having regard to the reply lodged at the Court Registry on 12 December 2014,

having regard to OHIM’s rejoinder lodged at the Court Registry on 9 March 2015,

further to the hearing on 2 July 2015,

gives the following

Judgment

 Background to the dispute

1        On 10 April 2013, the applicant, Établissement Amra, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        The mark in respect of which registration was sought is the sign reproduced below:

3        The description of the mark is as follows:

‘Position mark, consisting of the lower spring portion of a sporting and exercising device. The claimed lower spring portion is placed under an upper foot-receiving portion (not claimed by the applicant) and comprises an upper spring layer arched upwardly, a lower spring layer arched downwardly and an intermediate component consisting in elastic plastic straps. The figurative mark “KANGOO JUMPS” is placed in both the upper spring layer and the lower spring layer. The letters “KJ” and “XR” are placed at the ends of the intermediate elastic plastic straps. No colours are claimed as a feature of the mark. The dotted outline is intended to show the position of the mark and is not a part of the mark.’

4        The goods in respect of which registration was sought are in Class 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Gymnastic and sporting articles not included in other classes.’

5        By decision of 19 April 2013, the examiner rejected the application for registration on the basis of Article 7(1)(b) of Regulation No 207/2009, on the ground that the trade mark applied for was devoid of any distinctive character.

6        On 5 August 2013, the applicant brought an appeal before OHIM against the examiner’s decision of 19 April 2013 under Articles 58 to 64 of Regulation No 207/2009.

7        By decision of 10 March 2014, (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In particular, it stated that as it might prove more difficult to establish distinctive character in relation to three-dimensional marks than in relation to verbal or figurative marks, only a mark which departs significantly from the norm or customs of the industry and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character. The Board of Appeal found that, in the present case, the mark at issue does not contain characteristics that are sufficiently specific and arbitrary to retain the attention of the relevant public and that the average consumer will perceive the shape of the spring represented, exclusively and at most, as a combination of technical, functional and ornamental features and not as a sign indicating the origin of the product. It also found that the component ‘kangoo jumps’ can be seen only with great difficulty, while the groups of letters ‘kj’ and ‘xr’ cannot be seen at all. Therefore, the Second Board of Appeal held that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

 Procedure and forms of order sought

8        By application lodged at the Court Registry on 3 June 2014, the applicant brought the present action.

9        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

10      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

11      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.

12      In the first place, according to the applicant, it follows from the wording of Article 7(1)(b) of Regulation No 207/2009 that a minimum degree of distinctive character is sufficient for the registration of a mark. OHIM has not put forward any convincing legal or factual arguments as to why the mark applied for does not possess this minimum degree of distinctiveness in relation to the goods concerned.

13      In that connection, it should be recalled that, according to settled case-law, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see judgment of 20 October 2011 in Freixenet v OHIM, C‑344/10 P and C‑345/10 P, ECR, EU:C:2011:680, paragraph 45 and the case-law cited).

14      However, when those criteria are applied, account must be taken of the fact that 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 denotes. 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 (see judgment in Freixenet v OHIM, cited in paragraph 13 above, EU:C:2011:680, paragraph 46 and the case-law cited).

15      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 207/2009 (see Freixenet v OHIM, cited in paragraph 13 above, EU:C:2011:680, paragraph 47 and the case-law cited). Thus, for a three-dimensional mark to be regarded as distinctive, it must, in particular, not look like a mere variant of the basic shape of the good in question, commonly used in trade (see judgment of 31 May 2006 in DeWaele v OHIM (Shape of a sausage), T‑15/05, ECR, EU:T:2006:142, paragraph 38 and the case-law cited).

16      It is clear from the contested decision that the Board of Appeal did not consider that the mark applied for was devoid of distinctive character simply because it is three-dimensional, contrary to the applicant’s submissions. It is apparent from paragraphs 23 to 30 of the contested decision that the Board of Appeal carried out a thorough analysis of the mark applied for and of the applicant’s arguments before concluding that the various elements of that trade mark which fulfil only a technical, functional or ornamental role, were insufficient, taken as a whole, to confer on it a minimum degree of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

17      In the second place, the applicant takes the view that the consumer of gymnastic and sporting articles is probably the most accustomed to distinguishing the origin of different articles, not only by traditional word marks and labels, but also by a number of other ‘non-conventional trademarks’ similar to the mark applied for. It gives two examples in support of its arguments, namely the shape of the upper part of a treadmill and the air-cushioning unit in the heel of a sports shoe.

18      In that connection, it must be held, first, that the applicant has not produced any evidence capable of establishing that the average consumer of sports goods is in fact able to recognise the commercial origin of a treadmill or a sports shoe solely on the basis of the shape of those goods. Furthermore, as OHIM rightly states, only consumers who practice sports particularly intensively, for example by regularly frequenting gyms may be able to recognise the origin of those goods on the basis of the shape of part of them alone. In the present case, the applicant has not challenged the finding of the Board of Appeal, in paragraph 14 of the contested decision, that the relevant public was constituted of the average European consumer who is reasonably well-informed and reasonably observant and circumspect, and not a consumer who practices sport very intensively or at a professional level. Furthermore, the applicant has also failed to show that the average consumer of sporting goods was more used to distinguishing the origin of goods through ‘three-dimensional position marks’ representing the shape of the relevant goods than average consumers of other goods.

19      Second, it should also be stated that the fact that the rebound device is placed under the rebound boot is not capable of conferring a distinctive character on the mark applied for, since the normal position of a rebound device is precisely under such boots. The applicant has, moreover, failed to produce any evidence to establish that the position of the rebound device was unusual.

20      Therefore, the applicant’s argument that the relevant public is used to distinguishing the origin of sports goods by way of three-dimensional marks such as the mark applied for must be rejected as unfounded.

21      In the third place, the applicant submits, first of all, that OHIM has the burden of establishing that the mark applied for is devoid of any distinctive character. It has not produced any evidence or carried out a serious analysis of the reasons justifying the finding that the mark lacked distinctive character. OHIM merely made general assertions based on practical experience. Second, the applicant takes the view that the mark applied for does not merely represent a combination of functional or ornamental features, having regard to its unique and original character and its precise position under the rebound boots. Third, the applicant states that the mark applied for also contains the word element ‘kj kangoo jumps xr’, and a figurative element, which contribute to the distinctive character of the sign. Fourth, the applicant states that a significant part of the relevant public would be able to recognise the shape of the spring mounted on the applicant’s rebound boots, since its goods have been marketed in the European Union since 2000.

22      In that connection, first, it should be recalled that it is clear from the case-law that, in so far as the applicant relies on the distinctive character of the mark applied for, notwithstanding the examiner’s findings, the onus is on the applicant to provide specific and substantiated evidence that the trade mark applied for has an intrinsic distinctive character, since it is much better placed to do so, given its thorough knowledge of the market (see judgments of 15 March 2006 in Develey v OHIM (Shape of a plastic bottle), T‑129/04, ECR, EU:T:2006:84, paragraphs 19 and 21 and the case-law cited, and 15 June 2010 in X Technology Swiss v OHIM (Orange colouring of the toe of a sock), T‑547/08, ECR, EU:T:2010:235, paragraph 43 and the case-law cited).

23      Furthermore, it should be observed that when the Board of Appeal finds that the mark applied for has no intrinsic distinctive character, it may base its examination on the facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are, in particular, known by the consumers of those goods. In such cases, the Board of Appeal is not obliged to give examples of such practical experience (see judgments of 3 February 2011 in Gühring v OHIM (Combination of the colours broom yellow and silver grey), T‑299/09 and T‑300/09, EU:T:2011:28, paragraph 36 and the case-law cited, and of 19 September 2012 in Fraas v OHIM (Tartan pattern in dark grey, light grey, black, beige, dark red and light red), T‑50/11, EU:T:2012:442, paragraph 27).

24      Therefore, in the light of the case-law cited in paragraphs 22 and 23 above, it must be held, first, that it is indeed for the applicant to provide specific and substantiated evidence establishing the distinctive character of the mark applied for and, second, that the Board of Appeal could, where appropriate, base its reasoning on practical experience generally acquired from the marketing of general consumer goods, the goods covered by the mark applied for belonging to that category.

25      Second, it should be recalled that novelty or originality are not relevant criteria for the assessment of the distinctive character of a trade mark, so that, in order for a trade mark to be registered it is not sufficient for it to be original, but it must differ substantially from the basic shapes of the goods concerned, commonly used in trade, and that it does not appear as a simple variant of those shapes (see judgments of 14 September 2009 in Lange Uhren v OHIM (Geometric shapes on a watch face), T‑152/07, EU:T:2009:324, paragraph 71 and the case-law cited and of 11 July 2013 in Think Schuhwerk v OHIM (Red shoe lace end caps), T‑208/12, EU:T:2013:376, paragraph 47).

26      As OHIM rightly states, it cannot be held that the applicant’s trade mark, which is essentially composed of two arching springs separated by elastic plastic straps, departs significantly from the basic shape of the goods concerned. The way in which the elements of the mark applied for are combined cannot confer on it a distinctive character. The mark applied for therefore consists of a simple variation of the basic shapes of the goods concerned. The fact that various models of rebound boots exist on the market does not give the model covered by the mark applied for a distinctive character. Even if the lower part of the model of the applicant’s rebound boots could be regarded as unusual that is not sufficient, in the present case, to influence the overall impression made by the mark applied for to such a degree that it could be said to depart significantly from the norm or customs of the sector and thereby to be capable of fulfilling its essential function.

27      Third, it must be stated that the word and figurative elements of the mark applied for, namely the expression ‘kangoo jumps’, placed on the upper and lower spring layer and the groups of letters ‘kj’ and ‘xr’ appearing on the ends of the intermediate elastic plastic straps are extremely minor in the mark applied for, regardless of the quality of the representation of the latter provided by the applicant and, therefore, they are of such a superficial nature that they do not bring any distinctive character to the mark applied for as a whole. In the present case, such elements do not present any aspect enabling that mark to accomplish its essential function as regards the goods and services concerned by the application for registration.

28      Fourth, as regards the argument, that the relevant public is easily able to recognise the shape of the spring mounted on the applicant’s rebound boots as that shape appears in different media such as video clips, magazines or promotional articles, which show that rebound boots carrying the mark applied for are widely distributed in the European Union, it suffices to hold that at no time has the applicant claimed the existence of distinctive character acquired through use, for the goods for which registration is sought, within the meaning of Article 7(3) of Regulation No 207/2009. Furthermore, the applicant has not produced any evidence to show that its presence on the market could establish in itself that the mark applied for had intrinsic distinctive character within the meaning of the case-law cited in paragraph 22 above.

29      Therefore, the finding of the Board of Appeal, in paragraph 30 of the contested decision, that the mark applied for as a whole is only the sum of various elements fulfilling a technical, functional or ornamental role and that it is accordingly not capable of indicating the origin of the goods must be upheld.

30      In those circumstances, the action must be dismissed, without there being any need to adjudicate upon the admissibility of the new evidence put forward by OHIM in its defence.

 Costs

31      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

32      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Établissement Amra to pay the costs.

Van der Woude

Wiszniewska-Białecka

Ulloa Rubio

Delivered in open court in Luxembourg on 26 November 2015.

[Signatures]