JUDGMENT OF THE GENERAL COURT (Second Chamber)

13 June 2014 (*)

(Community trade mark — Invalidity proceedings — Community figurative mark representing parallel stripes on a shoe — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EC) No 207/2009))

In Case T‑85/13,

K-Swiss, Inc., established in Westlake Village, California (United States), represented by R. Niebel and K. Tasma, lawyers,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Künzli SwissSchuh AG, established in Windisch (Switzerland),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 30 October 2012 (Case R 174/2011-2), relating to invalidity proceedings between Künzli SwissSchuh AG and K-Swiss, Inc.,

THE GENERAL COURT (Second Chamber),

composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 14 February 2013,

having regard to the response lodged at the Court Registry on 23 May 2013,

having regard to the reply lodged at the Court Registry on 20 August 2013,

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 give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 8 December 2005, the applicant, K-Swiss, Inc., filed a Community trade mark application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by 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 figurative sign reproduced below:

3        The products in respect of which registration was sought are in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the description: ‘Footwear’.

4        That application was published in Community Trade Marks Bulletin No 27/2006 of 3 July 2006 and the mark was registered on 22 August 2007 under number 4771978.

5        On 24 February 2009, Künzli SwissSchuh AG filed an application for a declaration of invalidity concerning all the products protected under the registration of the Community trade mark, on the basis of Article 51(1)(a) and Article 7(1)(b) of Regulation No 40/94 (now Article 52(1)(a) and Article 7(1)(b) of Regulation No 207/2009).

6        By decision of 11 January 2011, the Cancellation Division granted the application for a declaration of invalidity pursuant to Article 7(1)(b) of Regulation No 40/94, read in conjunction with Article 51(1)(a) of that regulation. The Cancellation Division observed, in particular, that the contested Community mark, which is presented in the specific form of a design with five stripes, did not constitute an ‘adequate point of contact’ in order to fulfil the function consisting of indicating the commercial origin of the products concerned, that the five stripes placed on the shoe were basic geometric shapes and would be perceived as a technical means to reinforce the shoe or as a pure embellishment of an indistinct, common nature. It inferred from this that the consumer would accord them only fleeting attention.

7        On 20 January 2011, the applicant filed an appeal against the Cancellation Division’s decision.

8        By decision of 30 October 2012 (‘the contested decision’) the Second Board of Appeal confirmed the decision of the Cancellation Division.

9        In the contested decision, the Board of Appeal made, essentially, the following observations: in the first place, the products designated by the Community mark at issue are footwear intended for a potentially unlimited number of consumers of any age group; thus the distinctive character of the trade mark applied for must be assessed taking into account the presumed expectations of an average consumer of the general public in the European Union, who is reasonably observant and circumspect and reasonably well informed (point 18 of the contested decision); in the second place, to the extent to which average consumers are not in the habit of making assumptions as to the commercial origin of products on the basis of signs which are indistinguishable from the appearance of the goods themselves, whether those signs are figurative, three-dimensional or other, such signs are distinctive only if they depart significantly from the norms or customs of the sector (points 19 and 20 of the contested decision); in the third place, the Community mark at issue, consisting of the two-dimensional representation of the shape of a shoe showing five parallel stripes, does not possess the required minimum degree of distinctive character given that there is nothing about the sign at issue that makes it distinguishable from the appearance of the product that it covers (point 21 of the contested decision); in the fourth place, the fact that the product is represented using a dotted line does not render the whole representation distinctive, since this is a minor detail which fails to draw the consumer’s attention away from the fact that the sign represents a shoe (point 22 of the contested decision); in the fifth place, the five parallel stripes form a basic geometrical pattern, which appears on the shoe where those who buy and wear sports and leisure shoes expect to find a figurative element; those five stripes inserted in the shape of a shoe are consequently banal and common for manufacturers of sports and leisure shoes (point 22 of the contested decision).

10      The Board of Appeal added, inter alia, that, even if the Community mark at issue were to be considered to be a two-dimensional design consisting of five parallel stripes placed on a specific part of the surface of the designated products, it does not possess the required minimum degree of distinctive character since that design does not depart significantly from the standard designs that are shown on the sides of these kind of products and will be perceived simply as decoration (point 31 of the contested decision).

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM and, if appropriate, the intervener to pay the costs.

12      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      The applicant relies on a single plea, alleging breach of Article 7(1)(b) of Regulation No 40/94.

14      It is apparent from settled case-law in this connection that the distinctive character of a trade mark within the meaning of Article 7(1)(b) of Regulation No 40/94 means that the mark in question makes it possible to identify the product for which registration is sought as originating from a given undertaking and therefore to distinguish the product from those of other undertakings (Joined Cases C‑473/01 P and C‑474/01 P Procter & Gamble v OHIM [2004] ECR I‑5173, paragraph 32, and Case C‑64/02 P OHIM v Erpo Möbelwerk [2004] ECR I‑10031, paragraph 42).

15      That distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, secondly, by reference to the perception of the relevant public (Procter & Gamble v OHIM, paragraph 14 above, paragraph 33, and Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 25).

16      The perception of the relevant public is, however, liable to be influenced by the nature of the sign in respect of which registration is sought. Thus, inasmuch as the average consumer does not usually make assumptions as to the commercial origin of products on the basis of signs which are indistinguishable from the appearance of the products themselves, such signs are distinctive within the meaning of Article 7(1)(b) of Regulation No 40/94 only if they depart significantly from the norm or customs of the sector (see, to that effect, Case C‑136/02 P Mag Instrument v OHIM [2004] ECR I‑9165, paragraphs 30 and 31; Case C‑173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I‑551, paragraphs 28 and 31; Case C‑144/06 P Henkel v OHIM [2007] ECR I‑8109, paragraphs 36 and 37; Case T‑547/08 X Technology Swiss v OHIM (Orange colouring of the toe of a sock) [2010] ECR II‑2409, paragraph 25).

17      The decisive factor governing the applicability of the case-law cited in paragraph 16 above is not the classification of the sign as figurative, three-dimensional or other, but the fact that the sign is indistinguishable from the appearance of the product designated. Thus, that test has been applied to, in addition to three-dimensional marks (Procter & Gamble v OHIM, paragraph 14 above; Mag Instrument v OHIM and Deutsche SiSi-Werke v OHIM, paragraph 16 above), figurative marks consisting of a two-dimensional representation of the product designated (Storck v OHIM, paragraph 15 above, and Henkel v OHIM, paragraph 16 above), or even to a sign consisting of a design applied to the surface of the product (order in Case C‑445/02 P Glaverbel v OHIM [2004] ECR I‑6267). Likewise, according to case-law, colours and abstract combinations thereof cannot be regarded as intrinsically distinctive save in exceptional circumstances, since these are indistinguishable from the appearance of the goods and are not, in principle, used as a means of identifying commercial origin (see, to that effect, Case C‑104/01 Libertel [2003] ECR I‑3793, paragraphs 65 and 66, and Case C‑49/02 Heidelberger Bauchemie [2004] ECR I‑6129, paragraph 39).

18      In so far as the applicant claims that the trade mark applied for is distinctive, notwithstanding the analysis of the Board of Appeal based on practical experience acquired generally from the marketing of popular consumer goods, the onus is on it 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, to that effect, Orange colouring of the toe of a sock, paragraph 16 above, paragraph 43 and the case-law cited).

19      In the contested decision, the Board of Appeal relied on the case-law cited at paragraph 16 above to conclude that the mark at issue was devoid of the minimum degree of distinctive character required (points 19, 20, 21 and 31 of the contested decision).

20      In those circumstances, it is necessary to ascertain, at the outset, whether the Board of Appeal was correct in relying on the case-law cited at paragraph 16 above. To that end, it is appropriate to examine whether the mark at issue is indistinguishable from the appearance of the product designated or whether it is, on the contrary, independent of it.

21      The Community mark at issue consists in the two-dimensional representation of the shape of a shoe with five parallel stripes on its side. It cannot therefore be disassociated from the products it designates, namely shoes. Consequently, it must be considered to be indistinguishable from the appearance of the products designated and, therefore, the case-law cited in paragraph 16 above is applicable.

22      However, the applicant, during the procedure before OHIM, declared that the mark at issue was in fact a ‘position mark’.

23      It must be noted, first, that the Community mark at issue was presented by the applicant in its trade mark application as a figurative mark and, secondly, that the trade mark application does not contain any description of the mark which suggests that it includes only the five parallel stripes and that the representation of the shoe serves only to provide details of the positioning of those stripes on the product.

24      Be that as it may, even if the mark for which protection is sought is limited to the five parallel stripes referred to in paragraph 19 above, which should be positioned on the side of the shoes, it is nevertheless presented in the form of a design intended to be placed on part of the products designated and thus is indistinguishable from the appearance of those products. The case-law cited in paragraph 16 above is therefore still applicable.

25      The conclusion reached by the Court at paragraph 24 above is not such as to be called into question by the arguments submitted by the applicant in this regard.

26      Thus, the applicant claims that, in the sports and leisure shoe sector, consumers are accustomed to making assumptions as to the commercial origin of products based on simple signs, composed of lines or stripes placed on the products, in particular on the side of them.

27      To substantiate its claims, the applicant relies, essentially, on examples of trade marks. It is apparent from those examples that certain undertakings in the sector in question use geometrical patterns, some of which are composed of lines, stripes or other geometrical patterns, to enable consumers to identify the commercial origin of the products.

28      The applicant also relies on the fact that, in stores, the goods at issue are positioned on shelves in a way such that consumers are first confronted with their side.

29      Lastly, it claims that the application of parallel stripes on the side of shoes is a long-standing practice used by itself and another undertaking in the sector.

30      Attention must be drawn to the fact here that the Board of Appeal observed in the contested decision that placing decorative elements on shoes was a common practice and many variations of geometric patterns were placed on the side of shoes. It added that consumers would not consider those elements to be an indication of origin of the products unless they have become fixed in the minds of consumers through intensive use as identifiers of commercial origin. Lastly, it stated that the fact that some signs placed on the side of shoes, which did not have the intrinsic distinctive character required if they are to be considered marks, had acquired distinctive value by virtue of the intensive use which had been made of them on the market, did not suggest that consumers had learnt to establish a link between any sign placed on the side of a shoe and a particular manufacturer (point 33 of the contested decision).

31      The factors put forward by the applicant (see paragraphs 27 to 29 above), on which it falls to adduce specific and substantiated evidence establishing that the trade mark sought has the minimum required degree of distinctive character, are not sufficient to demonstrate that the grounds on which the Board of Appeal based its decision that the mark at issue was indistinguishable from the appearance of the product designated, grounds repeated at paragraph 30 above, are flawed.

32      Furthermore, the applicant claims that sports and leisure shoes are generally perceived as fashion items and consequently the public is naturally inclined to pay close attention to details in models and designs of those products insofar as they constitute an indication of their commercial origin. However, that claim is not proven in any way.

33      Having regard to the foregoing considerations, it must be found that the Board of Appeal was fully justified in considering that it could apply in the present case the case-law cited at paragraph 16 above.

34      Consequently, it is necessary to assess whether the Board of Appeal was incorrect in taking the view that the mark at issue did not have the required minimum degree of distinctive character (points 21 and 31 of the contested decision).

35      The applicant maintains that the number of stripes which it used is unusual and that, moreover, since that number is limited, it can easily be identified by consumers.

36      The evidence thus put forward does not prove that the mark at issue departs significantly from the norm or customs of the sector, and that the mark at issue should be regarded as a figurative mark consisting of the representation of a side-view of a shoe on which five stripes appear or regarded as restricted to the five parallel stripes previously mentioned, which should be positioned on the side of the shoes.

37      The applicant moreover relies on the fact that, as regards the sub‑category of business and dress shoes, which is, in its view, also relevant for the purposes of the present case, it is not common to place designs on the side of the shoes.

38      It must be stated that the argument referred to in paragraph 37 above is irrelevant. The mark at issue, as it results from the trade mark application filed by the applicant, is not a design intended to be placed on the products it designates, but a two-dimensional representation of those products.

39      Even were the mark at issue to be regarded as restricted to the five parallel stripes referred to in paragraph 19 above, which should be positioned on the side of the shoes, the applicant’s argument supports the fact, as regards the sub-category of business and dress shoes, that the relevant public is not accustomed to considering designs applied to their surface to be an element identifying their commercial origin.

40      In addition, while the fact that a sign composed of a design applied to the surface of a product departs significantly from the norm or customs of the sector concerned is a necessary condition for the purposes of finding that that sign is distinctive (see the case-law cited at paragraphs 16 and 17 above), it is not a sufficient condition for such a finding. The sign at issue must also be independent of the appearance of the product it designates in order, in particular, not to be perceived by the relevant public merely as a decorative element.

41      In order to be conceded distinctive character, a design applied to the surface of a product must be capable of being apprehended without the product’s inherent qualities being perceived simultaneously, so that the design can be easily and instantly recalled by the relevant public as a distinctive sign (see, to that effect, order in Glaverbel v OHIM, paragraph 17 above, paragraphs 22 to 24 and 33 to 36; Case T‑36/01 Glaverbel v OHIM (Surface of a plate of glass) [2002] ECR II‑3887, paragraph 28).

42      In the present case, the applicant has not proven that the five parallel stripes, applied to the external surface of business or dress shoes, could be apprehended without the intrinsic characteristics of those shoes being simultaneously perceived. It has not therefore proven that those five stripes could be easily and instantly recalled by the relevant public as a distinctive sign.

43      It follows from the foregoing that the Board of Appeal was correct in concluding that the mark at issue did not have the required minimum degree of distinctive character (paragraphs 21 and 31 of the contested decision).

44      The foregoing conclusion cannot be called into question by the other arguments submitted by the applicant.

45      First, the applicant relies on the registration of Community trade marks, some of which were lodged by the applicant itself, which are comparable to the mark at issue and which have nevertheless been conceded distinctive character.

46      Case-law provides that OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. Nonetheless, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, 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. That examination must 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 present 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, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541 paragraphs 74 to 77).

47      In the present case, it is apparent from the contested decision that the Board of Appeal made a full and specific examination of the trade mark sought in order to refuse its registration. Moreover, that examination led the Board of Appeal to correctly uphold the absolute ground for refusal of registration in Article 7(1)(b) of Regulation No 40/94 and so to oppose the registration of the trade mark sought.

48      Since the examination of the mark at issue could not have culminated in a different outcome, the applicant’s claims relating to the failure to take into consideration the registration of other marks cannot succeed.

49      Secondly, the applicant relies on the fact that registrations of the mark at issue in eight Member States prove its distinctive character.

50      In this connection, registrations already made in Member States are only one factor which may be taken into account in connection with the registration of a Community trade mark, the mark for which registration is sought having to be assessed on the basis of the relevant EU rules, and it follows that OHIM is under no obligation to follow the assessment of the competent national authorities or to register the mark at issue as a Community trade mark on the basis of those considerations (Case C‑98/11 P Chocoladefabriken Lindt & Sprüngli v OHIM [2012] ECR, paragraph 50).

51      In the present case, the fact that the sign is registered as a trade mark in eight Member States does not enable the applicant to prove that the Board of Appeal concluded, incorrectly, that the mark at issue lacked distinctive character.

52      Thirdly, as regards the argument that the Board of Appeal ignored the fact that the use of figurative elements was not typical for all kind of shoes, it must be held that, although the Board of Appeal did not expressly refer to types of shoes other than sports and leisure shoes, it none the less did not intend to restrict its assessment of the distinctive character of the mark at issue to those categories of shoes.

53      At point 18 of the contested decision, the point in which it determined the relevant public, the Board of Appeal pointed out that the products designated by the mark at issue were ‘footwear’ intended for a potentially unlimited number of consumers of any age group. Admittedly, the Board of Appeal focused its analysis on sports and leisure shoes. However, the applicant had itself focused its objection on those products, stating, in the pleadings it produced in the procedure before the Board of Appeal, that the Cancellation Division had, in its view, correctly found that the sports and leisure shoe market was the relevant market to take into consideration for the purposes of the assessment as to whether the mark at issue had distinctive character.

54      The applicant had also developed a line of argument relating to the sports and leisure shoe sector, in which it maintained that manufacturers of sports and leisure shoes attached to the surface of the shoes marks which also had a decorative function, so that consumers in that sector were accustomed to perceiving decorative elements as indicators of the commercial origin of the products (point 10 of the contested decision).

55      The Board of Appeal responded to that line of argument without stating whether, in respect of other sub-categories of products where such practices were neither relied upon by the applicant nor widely known, the public would perceive the five parallel stripes applied to the surface of the product as having a distinctive character. Having regard to the content of the applicant’s objection, viewed as a whole, the failure of the Board of Appeal to specify this expressly does not appear to show an omission on its part.

56      Lastly, fourthly, the applicant claims that the Board of Appeal misconstrued the rules on the burden of proof borne by the applicant.

57      However, according to the case-law cited in paragraph 18 above, the applicant’s assertions must be rejected as unfounded.

58      It follows from all the foregoing that all the complaints relied on by the applicant must be rejected and, consequently, the action must be dismissed.

 Costs

59      Under Article 87(2) 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. 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 (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders K-Swiss, Inc. to pay the costs.

Martins Ribeiro

Gervasoni

Madise

Delivered in open court in Luxembourg on 13 June 2014.

[Signatures]