JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

25 November 2015 (*)

(Community trade mark — Application for a three-dimensional Community trade mark — Shape of a car — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)

In Case T‑629/14,

Jaguar Land Rover Ltd, established in Coventry (United Kingdom), represented by F. Delord and R. Grewal, Solicitors,

applicant,

v

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 24 April 2014 (Case R 1622/2013-2) concerning an application for registration of a three-dimensional sign consisting of the shape of a car as a Community trade mark,

THE GENERAL COURT (Fourth Chamber),

composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 21 August 2014,

having regard to the response lodged at the Court Registry on 3 October 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991, applicable in the present case pursuant to Article 227(7) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 30 November 2012, the applicant, Jaguar Land Rover Ltd, filed an application for the registration of a Community trade mark with 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        Registration as a mark was sought for the three-dimensional sign reproduced below:

3        The goods in respect of which registration was sought are in Classes 12, 14 and 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.

4        By decision of 28 June 2013, the examiner, while allowing registration for the other goods in respect of which registration was sought, refused the application for registration in respect of the goods in Classes 12 and 28 listed below, on the basis of Article 7(1)(b) of Regulation No 207/2009, on the ground that, as regards those goods, the sign at issue was devoid of any distinctive character:

–        Class 12: ‘Vehicles; apparatus for locomotion by land, air or water, ambulances, Automobiles, Cars, Golf carts, Electric vehicles, Military vehicles for transport, Motor homes, Refrigerated vehicles, Remote control vehicles, other than toys, Sports cars, Vans [vehicles], Vehicles for locomotion by land, air, water or rail, automobile bodies, Automobile chassis, Automobile hoods, Bodies for vehicles, Hoods for vehicles, Vehicle chassis, Vehicle covers [shaped]’;

–        Class 28: ‘Games and playthings, Games, Radio-controlled toy vehicles, Scale model kits [toys], Scale model vehicles, Toy vehicles, Toys’.

5        On 20 August 2013, the applicant filed a notice of appeal with OHIM pursuant to Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.

6        By decision of 24 April 2014 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the examiner’s decision as regards ‘apparatus for locomotion by air or water’ in Class 12, while dismissing the appeal as to the remainder. In particular, it found that none of the features visible on the representation of the mark applied for or claimed by the applicant departed significantly from the customary and usual shapes of cars. The mark applied for was merely another variation of the typical shape of a car and, therefore, devoid of any distinctive character as regards the goods in Classes 12 and 28 listed in paragraph 4 above, with the exception of ‘apparatus for locomotion by air or water’ in Class 12. As regards the latter, the mark applied for departed significantly from the norm and customs of the sector and, therefore, had distinctive character.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order the publication of the application for registration at issue for opposition purposes in respect of all the goods set out therein;

–        order OHIM to pay the costs.

8        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility of the applicant’s second head of claim

9        By its second head of the claim, the applicant asks the Court to order that ‘the Contested Application be published for opposition purposes in respect of all of the goods set out therein’.

10      It must be observed, as did OHIM, that it is clear from settled case-law that, in an action before the Courts of the European Union against the decision of a Board of Appeal of OHIM, OHIM is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of the Courts of the European Union. It is therefore not for the General Court to issue directions to OHIM; rather, it is for OHIM to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 20 and the case-law cited). Consequently, the applicant’s second head of claim that the Court issue directions to OHIM to publish the application for registration at issue for opposition purposes in respect of all the goods referred to therein is inadmissible.

 Substance

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

12      The applicant complains, in essence, that the Board of Appeal concluded that the mark applied for was devoid of any distinctive character.

13      In particular, first, the applicant claims that the Board of Appeal did not give due consideration to the detail contained within the graphic representation as filed. Second, the applicant claims that the Board of Appeal placed undue and incorrect emphasis on the fact that the supporting materials referred to the terms ‘Range Rover Evoque’ or ‘Evoque’, whereas those words were not the subject of, nor contained within, the application for registration at issue. Thirdly, the applicant complains that the Board of Appeal failed to give adequate weight to the third party reviews of the shape of the vehicle. Fourthly, the applicant submits that the Board of Appeal was wrong in referring to Article 7(1)(e)(iii) of Regulation No 207/2009.

14      OHIM disputes the applicant’s arguments.

15      Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.

16      According to settled case-law, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the goods or services in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (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 42 and the case-law cited).

17      That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public, which consists of the consumers of those goods or services (see judgment in Freixenet v OHIM, cited in paragraph 16 above, EU:C:2011:680, paragraph 43 and the case-law cited).

18      It is also settled case-law that 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 in Freixenet v OHIM, cited in paragraph 16 above, EU:C:2011:680, paragraph 45 and the case-law cited).

19      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 designates. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or textual 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 16 above, EU:C:2011:680, paragraph 46 and the case-law cited).

20      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 judgment in Freixenet v OHIM, cited in paragraph 16 above, EU:C:2011:680, paragraph 47 and the case-law cited).

21      Therefore, where a three-dimensional mark consists of the shape of the product in respect of which registration is sought, the mere fact that that shape is a ‘variant’ of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (see, to that effect, judgment of 7 October 2004 in Mag Instrument v OHIM, C‑136/02 P, ECR, EU:C:2004:592, paragraph 32).

22      First, as regards the relevant public, the Board of Appeal was correct in finding, in paragraphs 9 and 10 of the contested decision, that the goods at issue in Class 12 are aimed at the general public as well as professionals and the goods at issue in Class 28 are aimed at the general public. While that relevant public will have a high degree of attention when purchasing the goods at issue in Class 12, in particular, on account of their price, its degree of attention will be average when acquiring the goods at issue in Class 28, which are generally relatively inexpensive.

23      Next, as regards the sign applied for, it consists of a three-dimensional graphic representation, namely of six line drawings of different perspectives of the body of a car. Furthermore, it does not contain any word or figurative element.

24      In those circumstances, in accordance with the case-law cited in paragraph 20 above, it is necessary to determine whether the mark applied for departs significantly from the norm or customs of the sectors concerned.

25      In the present case, the Board of Appeal correctly observed, in paragraph 20 of the contested decision, that the sign applied for depicts an apparatus for locomotion by land and not an apparatus for locomotion by air or water. It must, therefore, be regarded as departing significantly from the norm and customs of the sector for apparatus for locomotion by air and water and, consequently, as not being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. The Board of Appeal was therefore correct in annulling the examiner’s decision as regards ‘apparatus for locomotion by air or water’ in Class 12 and allowing the application for registration in respect of those goods.

26      However, it must be stated that the same reasoning ought to have led the Board of Appeal also to annul the examiner’s decision as regards ‘vehicles for locomotion by air and water’ in Class 12 and allow the application for registration in respect of those goods. The sign applied for depicts an apparatus for locomotion by land and not ‘vehicles for locomotion by air and water’. It must, therefore, be regarded as departing significantly from the norm and customs of the sector for vehicles for locomotion by air and water and, consequently, as not being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. It follows that the contested decision must be annulled in so far as it refused registration of the mark applied for as regards ‘vehicles for locomotion by air and water’ in Class 12.

27      As regards the other goods covered by the mark applied for, the Board of Appeal found, in paragraphs 24 to 29 of the contested decision, that the graphic representation of the sign applied for was for a sketchy design of the hull of a car with four wheels and two doors on each side, in six different perspectives. According to the Board of Appeal, there were no features that distinguished that car’s hull significantly from any other randomly chosen car hull for cars available on the market. The features visible were typical for modern cars, such as a flat windscreen, a rounded front, a sloping coupe roofline, a rising waistline, bumpers as well as front and back lights integrated into the hull, and the airflow (aerodynamic) wing at the top of the rear. Furthermore, the car grille was extremely sketchy and there was no particular feature visible. The impression was that of a very stylised drawing of a car, which did not give weight to minor features, such as wipers, antennas or rims. The Board of Appeal stated that car hulls have become more and more standardised, and that a number of features, such as, inter alia, a rounded front, an airflow wing at the top of the rear and a rather flat front glass are suggested by technical and economic considerations. It concluded that, on the whole, none of the features as visible on the representation or claimed by the applicant departed significantly from the customary and usual shapes of cars. On the contrary, the sign applied for was merely another variation of the typical shape of a car.

28      In the first place, the applicant complains that the Board of Appeal did not give due consideration to the detail contained within the six graphic representations filed, and states that each of the six graphic representations of the vehicle in question, as filed, were sufficiently intelligible, unequivocal and objective. It states that those drawings were created by experienced automotive designers to an internationally high standard.

29      It should be observed that the applicant, in so doing, in no way states that the mark applied for departs significantly from the norm or customs of the sector concerned as opposed to constituting merely a ‘variant’ of a common shape of a car, which would nevertheless be necessary, in accordance with the case-law cited in paragraphs 20 and 21 above, in order to show that the Board of Appeal had erred in finding that, on the whole, the sign applied for did not depart significantly from the customary and usual shapes of cars and was merely a variation of the typical shape of a car. Even if the applicant’s statements regarding the quality and level of detail of the six graphic representations were proved, the fact remains that a high quality and extremely detailed drawing may well contain merely a variation of the typical shape of a car.

30      It follows that the applicant’s argument regarding the quality and level of detail of the six graphic representations constituting the sign applied for cannot call in question the Board of Appeal’s assessment that the mark applied for did not depart significantly from the customs of the sectors concerned and that argument is, therefore, ineffective.

31      In so far as the applicant states, in that context, that the graphic representation of the sign applied for is at least as clear and precise as those of other three-dimensional marks registered for Class 12, it should be observed, first, that it is not possible to infer, with certainty, from the existence of those registrations that OHIM in fact found that the marks covered by those registrations departed significantly from the norm or customs of the car sector and were therefore not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. As OHIM correctly contends, those marks are different from the mark applied for and, in a certain number of cases, had acquired distinctive character through use under Article 7(3) of Regulation No 207/2009.

32      Next, according to settled case-law, the legality of the decisions of Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of OHIM’s previous decision-making practice, which, in any event, cannot bind the Courts of the European Union (judgments of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 47; 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 48; and 30 April 2013 in Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, EU:T:2013:225, paragraph 33). Moreover, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must thus be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgments of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 77, and RELY-ABLE, cited above, EU:T:2013:225, paragraph 34). It follows that the existence of other registrations of three-dimensional marks for Class 12 does not, on its own, lead to the conclusion that the mark applied for departs significantly from the norm or customs of the sector and is, therefore, not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.

33      In the second place, the applicant claims that the Board of Appeal was wrong in stating that the terms ‘Range Rover Evoque’ or ‘Evoque’ were irrelevant in the present case. The third party commentaries produced by the applicant included images of the vehicle described (known as the ‘Range Rover Evoque’). It was therefore sufficiently certain that each review or article referred to that vehicle design and no other. In any event, the images of the ‘Range Rover Evoque’ taken from the applicant’s website and produced by it before the Court dispelled any doubt that the vehicle, the design of which is the subject of the mark applied for, is known as the ‘Range Rover Evoque’.

34      In this connection, it should be recalled that, according to the scheme of Regulation No 207/2009, the registration can take effect only on the basis of, and within the limits of, the application for registration filed by the applicant with OHIM. It follows that, when examining the distinctive character of a three-dimensional mark, OHIM must refer to the reproduction of the mark applied for attached to the application for registration and to the description, if any, included in that application. Therefore, OHIM may not take into account characteristics of the mark applied for that are not set out in the application for registration and the documents accompanying it (judgments of 30 November 2005 in Almdudler-Limonade v OHIM (Shape of a lemonade bottle), T‑12/04, EU:T:2005:434, paragraph 42, and 22 March 2013 in Bottega Veneta International v OHIM (Shape of a bag), T‑410/10, EU:T:2013:149, paragraph 38). Since the function of the graphic representation is to define the mark, it must be self-contained, in order to determine with clarity and precision the precise subject-matter of the protection afforded by the registered trade mark to its proprietor (see, to that effect, judgment of 12 December 2002 in Sieckmann, C‑273/00, ECR, EU:C:2002:748, paragraphs 48 and 50 to 52).

35      In the present case, OHIM correctly observes that the application for registration in no way states that the shape of the car represented in the six line drawings filed for the purposes of registration is that of a car named ‘Range Rover Evoque’ or ‘Evoque’. It should also be pointed out that the application for registration concerned six line drawings and not photographs of ‘ready-made’ cars or scale models of cars.

36      It follows that the Board of Appeal was fully entitled to hold, in particular, in paragraphs 21, 29 and 31 of the contested decision, that account had to be taken exclusively of the representation of the sign as filed, and not of the photographs of the ready-made car or the verbal explanations provided by the applicant concerning that car.

37      In particular, the Board of Appeal did not err in holding, in paragraph 23 of the contested decision, that the references to the model ‘Range Rover Evoque’, or simply ‘Evoque’, were irrelevant in the present case, since those terms did not appear in the mark applied for.

38      In so far as the applicant relies on reviews by third parties and claims that they refer to the mark applied for, suffice it to point out that, in fact, those reviews do not concern the six line drawings filed by the applicant for the purposes of registration as a three-dimensional Community trade mark, but rather a ready-made car or photographs of such a ready-made car. It follows that the Board of Appeal did not err in not taking account of those reviews.

39      In the third place, the applicant claims that the Board of Appeal did not give adequate weight to the third party reviews of the shape of the vehicle in question. It claims that those reviews were not merely ‘indicators of attractive or high aesthetic level’, but were also indicators of features possessed by the vehicle design concerned that were considered, by independent third parties, to demonstrate an inherent level of distinctive character. In considering the impression made by the graphic representation only, and not that made by ready-made vehicles, the Board of Appeal contradicted its own approach of assessing whether the shape in question departed sufficiently from the ‘existing design field’. The applicant argues that current design trends in the automotive industry were very relevant for the assessment of distinctive character. The Board of Appeal was not entitled to exclude the impression made by ready-made cars when assessing the significance and relevance of third party reviews in relation to whether there was sufficient distinctive character.

40      In accordance with the case-law referred to in paragraph 34 above, OHIM may not take into account characteristics of the mark applied for that are not set out in the application for registration and the documents accompanying it. As stated in paragraph 35 above, the mark applied for consists of six line drawings and not photographs of ready-made cars or scale models of cars. As pointed out in paragraph 38 above, the reviews submitted by the applicant do not concern the six line drawings it filed for the purposes of registration as a Community trade mark, but rather a ready-made car or photographs of such a ready-made car.

41      It should be stated that the photographic representations produced by the applicant bring out a number of features, including the car grille and uprights, which are not visible in the six line drawings it filed for the purposes of registration as a Community trade mark. Consequently, as OHIM correctly contends, the photographic representations of the car model in question are not identical to the mark applied for.

42      The Board of Appeal cannot be criticised, therefore, for not having taken account of those reviews, which relate either to a ready-made car or to photographs of such a ready-made car.

43      In so far as the applicant complains that the Board of Appeal’s approach when assessing whether the mark applied for departed significantly from the norm or customs of the sectors concerned was contradictory in that it considered only the impression made by the graphic representations filed, and not that made by ready-made cars, it must be held that there is, in fact, no such contradiction. According to the case-law cited in paragraph 34 above, OHIM must refer to the reproduction of the mark applied for attached to the application for registration and may not take into account characteristics of the mark applied for that are not set out in the application for registration and the documents accompanying it. Consequently, the details of a graphic representation filed for the purposes of registration as a three-dimensional Community trade mark must, on their own, make it possible to determine whether the mark applied for departs significantly from the norm or customs of the sectors concerned, and is thus not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.

44      In the fourth and last place, in so far as the applicant submits that the Board of Appeal was wrong in referring, in paragraph 31 of the contested decision, to Article 7(1)(e)(iii) of Regulation No 207/2009, suffice it to observe, as did OHIM, that the Board of Appeal did not in fact rely on that provision in reaching the conclusion that the mark applied for was devoid of any distinctive character as regards many of the goods at issue in Classes 12 and 28. That is unequivocally clear, on the one hand, from the wording of the sentence, in paragraph 31 of the contested decision, that refers to Article 7(1)(e)(iii) of Regulation No 207/2009, that that reference is made ‘[m]oreover, for the sake of completeness’, and, on the other, from the conclusion set out in paragraph 33 of the contested decision that is based solely on Article 7(1)(b) of Regulation No 207/2009. The applicant’s argument in this regard is therefore ineffective.

45      It follows that the arguments put forward by the applicant in support of its single plea in law are not capable of calling into question the Board of Appeal’s assessment that, as regards goods other than ‘vehicles for locomotion by air and water’ in Class 12, the mark at issue, rather than departing significantly from the norm or customs of the sector, is merely a variation of the typical shape of a car and is, therefore, devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.

46      It follows that the single plea in law raised by the applicant can be upheld only as regards ‘vehicles for locomotion by air and water’ in Class 12, and that, consequently, the action must be dismissed as to the remainder.

 Costs

47      Under Article 134(3) of the Rules of Procedure, the parties are to bear their own costs where each party succeeds on some heads and fails on others. However, if it appears justified in the circumstances of the case, the Court may order that one party, in addition to bearing his own costs, pay a proportion of the costs of the other party.

48      In the present case, since OHIM has been unsuccessful only as regards ‘vehicles for locomotion by air and water’ in Class 12, whereas the applicant has for the most part been unsuccessful, the latter must be ordered to bear its own costs and to pay nine-tenths of those incurred by OHIM. OHIM shall bear one-tenth of its own costs.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 24 April 2014 (Case R 1622/2013-2) in so far as it refused registration of the mark applied for as regards ‘vehicles for locomotion by air and water’ in Class 12;

2.      Dismisses the action as to the remainder;

3.      Orders Jaguar Land Rover Ltd to bear its own costs and to pay nine-tenths of those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM);

4.      Orders OHIM to bear one-tenth of its own costs.

Prek

Labucka

Kreuschitz

Delivered in open court in Luxembourg on 25 November 2015.

[Signatures]