JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

25 September 2014 (*)

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

In Case T‑171/12,

Peri GmbH, established in Weißenhorn (Germany), represented by J. Dönch, lawyer,

applicant,

v

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

defendant,

ACTION brought against a decision of the First Board of Appeal of OHIM of 26 January 2012 (Case R 1209/2011-1), relating to an application for a three‑dimensional sign comprising the shape of a turnbuckle as a Community trade mark,

THE GENERAL COURT (Eighth Chamber),

composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,

Registrar: S. Bukšek Tomac, Administrator,

having regard to the application lodged at the Registry of the General Court on 12 April 2012,

having regard to the response lodged at the Court Registry on 24 July 2012,

further to the hearing on 5 June 2014,

gives the following

Judgment

 Background to the dispute

1        On 5 October 2010, the applicant, Peri GmbH, 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 three-dimensional shape of which registration as a trade mark was applied for is reproduced below:

3        The goods for which registration was sought fall within Classes 6 and 19 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 6: ‘Shuttering of metal for concrete and accessories thereof’;

–        Class 19: ‘Shuttering, not of metal, for concrete and accessories thereof’.

4        On 21 April 2011, the examiner dismissed the application for registration for all the goods concerned on the basis of Article 7(1)(b) of Regulation No 207/2009.

5        On 7 June 2011, the applicant filed a notice of appeal, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the examiner.

6        By decision of 26 January 2012 (the ‘contested decision’), served on the applicant on 13 February 2012, the First Board of Appeal of OHIM dismissed the appeal on the basis that, with regard to the goods in question, the three-dimensional sign of which registration as a Community trade mark had been applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

8        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Subject-matter of the dispute

9        When asked at the hearing whether it wished to make any observations on the Report for the Hearing, the applicant informed the Court that it wished the report to be amended to take account of the restriction to its application for registration. When questioned on this, it indicated that the restriction, which was made on 23 May 2014, succeeded the adoption of the contested decision, and that it entailed the addition, in regard to the goods which are the subject-matter of the mark applied for and are set out at paragraph 3 above, of the following clarification: ‘except clamps for shuttering’.

10      OHIM claimed that that application could not be taken into account by the Court as, in its view, is clear from the case-law (judgment of 20 November 2007 in Tegometall International v OHIM — Wuppermann (TEK), T‑458/05, ECR, EU:T:2007:349) insofar as that would entail unlawfully amending the subject-matter of the dispute pursuant to Article 135(4) of the Rules of Procedure of the Court.

11      According to OHIM, it is true that the Court has acknowledged that a statement by an applicant for a trade mark withdrawing its application in respect of some of the goods or services initially listed, which succeeds a Board of Appeal decision, may be interpreted as seeking to challenge the lawfulness of the contested decision only in so far as it relates to the rest of the goods or services concerned and does not therefore alter the subject-matter of the dispute. However that is not true in this case, since the restriction of the trade mark application does not involve the withdrawal of a product but an amendment to the description of the goods in question.

12      Notwithstanding that objection, the applicant maintained its argument.

13      It is important from the outset to recall that the Court may annul or alter a decision of a Board of Appeal of OHIM only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration referred to in Article 65(2) of Regulation No 207/2009. In fact, under Article 76 of the regulation, the Court must determine the proceedings in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment in TEK, cited at paragraph 10 above, EU:T:2007:349, paragraph 19 and case-law cited).

14      The decision may not, however, be annulled or altered on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006 in Sunrider v OHIM, C‑416/04 P, ECR, EU:C:2006:310, paragraph 55, and 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 24).

15      In addition, Article 26(1)(c) of Regulation No 207/2009 provides as follows: ‘An application for a Community trade mark shall contain … a list of the goods or services in respect of which the registration is requested.’

16      Lastly, Article 43(1) of Regulation No 207/2009 provides: ‘The applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein.’

17      It is common ground in this case that the applicant restricted the goods referred to in its application for registration as a Community trade mark after the adoption of the contested decision.

18      It follows that, in principle, a restriction within the meaning of Article 43(1) of Regulation No 207/2009 to the list of goods or services contained in a Community trade mark application made after the adoption of the decision of the Board of Appeal challenged before the Court cannot affect the legality of that decision, which is the only decision being challenged before the Court (see judgment in Mozart, cited at paragraph 14 above, EU:T:2008:268, paragraph 25 and case-law cited).

19      It must also be noted, however, that a decision of a Board of Appeal of OHIM can be challenged before the Court in relation solely to some of the goods or services in the list given in the Community trade mark application concerned. In such a case, that decision becomes final in respect of the other goods or services on the same list (judgment in Mozart, cited at paragraph 14 above, EU:T:2008:268, paragraph 26).

20      Having regard to that possibility, the Court has interpreted a statement made by a trade mark applicant to it, and thus subsequent to the decision of the Board of Appeal, to the effect that it was withdrawing its application in respect of some of the goods covered by its initial application, as a statement that the contested decision was being challenged only in so far as it covered the remainder of the goods concerned, or as a partial withdrawal, where the statement was made at an advanced stage of the proceedings before the Court (see judgment in Mozart, cited at paragraph 14 above, EU:T:2008:268, paragraph 27 and case-law cited).

21      However, if, by its restriction of the list of goods referred to in the Community trade mark application, the applicant for the trade mark is not seeking to withdraw from that list one or more goods, but to alter one or more characteristics, it is possible that that alteration might have an effect on the examination of the Community trade mark carried out by the instances of OHIM during the administrative procedure. Accordingly, to allow that alteration at the stage of the action before the Court would amount to changing the subject-matter of the proceedings pending, which is prohibited by Article 135(4) of the Rules of Procedure. Therefore such a restriction cannot be taken into account by the Court when examining the merits of the case (judgments in TEK, cited at paragraph 10 above, EU:T:2007:349, paragraph 25, and of 20 February 2013 in Caventa v OHIM — Anson’s Herrenhaus (B BERG), T‑631/11, EU:T:2013:85, paragraph 23).

22      It is therefore necessary to determine whether the restriction on the application for registration of the trade mark concerned made on 23 May 2014, and which the applicant set out at the hearing, may be interpreted as a statement by it that it is challenging the contested decision only in so far as it relates to the goods appearing on the amended list or as a partial withdrawal.

23      That is not the case. The applicant did not, by that restriction, withdraw goods from the list of those for which registration of the trade mark in question had been applied for, which remain, first of all, with regard to Class 6, clamps for shuttering and accessories thereof of metal and, with regard to Class 19, shuttering, not of metal, for concrete and accessories thereof, but indicated that those goods were to be understood ‘except clamps for shuttering’. It may therefore be that, in proceeding in that manner, the applicant made an alteration affecting the examination of the Community trade mark by the OHIM authorities during the administrative procedure. Yet, as was pointed out at paragraph 21 above, such a restriction cannot be taken into account by the Court, since it would alter the subject-matter of the dispute.

24      It must therefore be concluded that the goods to be taken into account for the purposes of this action are those included in the list of goods referred to in the applicant’s initial trade mark application (see paragraph 3 above).

25      Consequently the applicant’s request set out at paragraph 9 above must be dismissed.

 Merits

26      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 7(1)(b) of Regulation No 207/2009 and, second, infringement of Article 7(1)(e) of that regulation.

 First plea: infringement of Article 7(1)(b) of Regulation No 207/2009

27      The applicant maintains that, with regard to the level of attention paid by the relevant public, made up of professionals, being greater than the amount of attention paid by the average reasonably well-informed and reasonably observant and circumspect consumer, and with regard to the very recognisable characteristics of the turnbuckle depicted by the sign in question, the Board of Appeal should have concluded that the mark applied for was distinctive.

28      The applicant argues that the Board of Appeal did not submit specific evidence in support of its examination, which was based on mere unsupported assumptions. It adds that those assumptions are gainsaid by the evidence produced before OHIM, in particular the survey which it submitted, and which the Board of Appeal was wrong to hold related only to the German-speaking public, when a turnbuckle is a sign which can be ‘read’ without knowledge of any language.

29      OHIM contests the applicant’s arguments.

30      In that regard it must be recalled that, under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

31      The distinctive character of a trade mark for the purposes of Article 7(1)(b) of Regulation No 207/2009 means that that mark enables the goods in respect of which registration has been applied for to be identified as originating from a particular undertaking and so distinguished from those of other undertakings (see judgment of 9 December 2010 in Wilo v OHIM (Faceted casing of an electric motor and representation of green facets), T‑253/09 and T‑254/09, EU:T:2010:507, paragraph 17 and case-law cited).

32      That distinctive character in a trade mark must be assessed by reference, first, to the goods or services for which registration has been applied for and, secondly, by reference to the perception of the goods or services by the relevant public, which is made up of the average, reasonably well-informed and reasonably observant and circumspect consumer of those goods or services (see judgment in Faceted casing of an electric motor and representation of green facets, cited at paragraph 31 above, EU:T:2010:507, paragraph 18 and case-law cited).

33      It is settled case-law that the criteria for assessing the distinctiveness of trade marks which comprise the appearance of the goods themselves are no different from those which apply to other categories of trade mark (see judgment in Faceted casing of an electric motor and representation of green facets, cited at paragraph 31 above, EU:T:2010:507, paragraph 19 and case-law cited).

34      None the less, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the goods it identifies. Indeed, 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 distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see judgment in Faceted casing of an electric motor and representation of green facets, cited at paragraph 31 above, EU:T:2010:507, paragraph 20 and case-law cited).

35      Furthermore, according to the case-law, the more the shape of which registration has been applied for is similar to the shape which the goods in question are most likely to take, the more likely it is that the shape lacks distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. In those circumstances, only a mark which departs significantly from the norms or customs in the sector, and is therefore liable to fulfil its essential function as an indication of origin is not devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 (judgment in Faceted casing of an electric motor and representation of green facets, cited at paragraph 31 above, EU:T:2010:507, paragraph 21 and case-law cited).

36      It is in the light of those considerations that the applicant’s arguments must be examined.

37      As regards the relevant public, the Board of Appeal correctly held that the public in this case was a specialist one (paragraph 11 of the contested decision). While agreeing with this view, the applicant concludes that the relevant public is therefore the professional public, which is only partially true. Since, as indeed the applicant concedes, the relationship of that public with the field concerned is such as to suggest, more broadly, persons ‘who are fundamentally interested in the field’, that relationship may, in some cases, and contrary to the accepted meaning of the applicant’s words go beyond the strictly professional context.

38      Subject to that clarification, it must be pointed out that the parties are rightly ad idem on the conclusion to be drawn from the fact that the relevant public is a specialist one, namely the high level of attention which that public will pay to a three-dimensional sign such as the sign in question, as is seen inter alia in its ‘attention to the technical features of such a locking system (to the quality of both the material and the workmanship)’ (paragraph 11 of the contested decision).

39      On the other hand, the applicant maintains that, having regard to that greater degree of attention paid by the relevant public, the features of the turnbuckle which is the subject of the three-dimensional sign in respect of which registration as a Community trade mark was applied for, namely in particular the exposed line of teeth and the central notching in the vertical anchoring shaft, could not go unnoticed, and that they therefore confer distinctiveness on the trade mark, as was corroborated by the results of a survey. The applicant criticises the Board of Appeal for having failed to cite any specific evidence justifying its refusal to register the trade mark applied for.

40      The Board of Appeal for its part found that, precisely because of the considerable level of attention paid by the relevant public noted at paragraph 38 above, the public would primarily perceive the relevant functional aspects as a technical means of joining together or locking parts of wall or pieces of concrete. Since those technical aspects are found in other turnbuckles, the slight differences between the turnbuckle in question and other turnbuckles are not, in the view of the Board of Appeal, such as to cause the three-dimensional mark applied for to be regarded as a unique and striking concept.

41      It must be stressed that, in the field of three-dimensional trade marks, under the case-law set out at paragraph 35 above, only a trade mark which departs significantly from the norms or customs in the relevant sector and is therefore able to fulfil its essential function as an indication of origin is not devoid of distinctive character.

42      That observation remains entirely relevant where the public in question is a specialist one (see, with regard to a closed circle of consumers, in relation to microphones, judgment of 12 September 2007 in Neumann v OHIM (Form of a microphone head grill), T‑358/04, ECR, EU:T:2007:263, paragraph 46; in relation to canopies and covers for shade, judgment of 17 December 2008 in Somm v OHIM (Shelter for shade), T‑351/07, EU:T:2008:591, paragraph 29; and in relation to luxury watches and watch faces for luxury watches, judgment of 14 September 2009 in Lange Uhren v OHIM (Geometric shapes on a watch-face), T‑152/07, EU:T:2009:324, paragraph 87).

43      It is therefore by virtue of rigorous application of Article 7(1)(b) of Regulation No 207/2009 that the Board of Appeal found that the turnbuckle depicted lacked a unique and striking concept, since it differs only slightly from other goods of this type. Indeed, the turnbuckle in question does not appear in this case to be so unusual as to justify the view that a mere three-dimensional representation thereof confers on the trade mark applied for an inherent capacity to distinguish the goods which it is intended to cover from those of its competitors.

44      Although the applicant criticises the Board of Appeal for not having submitted any specific evidence in support of its assertion, that argument is wanting. In this regard, it is clear from the contested decision that the Board of Appeal examined the examples of turnbuckles produced by the applicants’ competitors and noted that they merely enabled it to be established that the clamps ‘could be conceived differently as regards function or aesthetics’, but that these product variations’ did not result in a finding that they performed a ‘trade mark function in terms of their overall impression’ (paragraph 17 of the contested decision). The Board of Appeal was right to indicate to the applicant that it was not sufficient that the public be able to recognise differences between the various turnbuckles, which is in fact within the capabilities of a specialised public such as in this case, but that the public must be able to perceive the turnbuckle presented by the applicant as ‘so different that [it] recognises the turnbuckle as an indication of origin’ (paragraph 18 of the contested decision). As the Board of Appeal rightly pointed out, the differences in the turnbuckle in question, identifiable though they certainly are, appear however to be simple production variants of turnbuckles. Those characteristics are not therefore such as to individualise the product in question or to indicate, in and of themselves, a particular commercial origin.

45      Finally, as regards the evidential value of the survey produced by the applicant at the proceedings before OHIM on the distinctiveness of the three-dimensional sign in question, the Board of Appeal was right to point out that it was carried out only among the specialist German-speaking public, not among the specialist public of the European Union, which is the relevant public in this case. Indeed, even in the case of an application for a three-dimensional Community trade mark, which, as the applicant rightly points out, does not require knowledge of any language to be ‘read’, it is still the case that the relevant German-speaking public is none the less more familiar with goods sold by German and Austrian companies and will therefore naturally name them more frequently in a survey, which the specialist public in the Union as a whole would not.

46      In addition, the applicant, citing the results of that survey, had argued before the Board of Appeal (paragraph 6, fourth indent, of the contested decision) that ‘a large percentage of the specialist German public’ identified the manufacturer of the three-dimensional shape in respect of which registration as a Community trade mark had been applied for. Yet, distinctiveness must be perceived as such across the relevant public as a whole (which is the relevant public in the Union). It follows that the Board of Appeal was right to disregard that survey as incapable of affecting its finding that the three-dimensional shape lacked distinctiveness.

47      In as much as the applicant relies on the results of that survey to establish the sign’s distinctiveness with the relevant public for goods which the sign connotes, and which the applicant is already marketing, that is an argument which relates to acquired distinctiveness following the use made of the mark applied for. The Board of Appeal did not therefore err when it pointed out that such evidence could not lead to OHIM excluding the application of an absolute ground for refusal within the meaning of Article 7(1)(b) of Regulation No 207/2009 (see, to this effect, judgment of 7 February 2002 in Mag Instrument v OHIM (Torch shape), T‑88/00, ECR, EU:T:2002:28, paragraph 39). Such evidence can only therefore be taken into account in the context of the application of Article 7(3) of the regulation, a provision not invoked by the applicant at any point in the proceedings.

48      It follows that the Board of Appeal was right to hold that the three-dimensional trade mark in question was devoid of distinctive character for all the goods concerned within the meaning of Article 7(1)(b) of Regulation No 207/2009.

49      Accordingly, the first plea in law must be rejected.

 Second plea: Infringement of Article 7(1)(e) of Regulation No 207/2009

50      It must be noted that the Board of Appeal did not, at paragraph 23 of the contested decision, in concluding, mention the fact that it was open to the examiner to dismiss the application for a trade mark also, on the basis of Article 7(1)(e)(i) and (ii) of Regulation No 207/2009, only supererogatorily without applying it. It follows from the wording itself of that paragraph that, for reasons of procedural economy, the Board of Appeal decided not to remit the case to the examiner for a further decision given that the application had ‘in any event to be dismissed on the basis of Article 7(1)(b) of Regulation No 207/2009’, the legality of which finding was confirmed at paragraphs 30 to 48 above.

51      Thus, since the contested decision was not based on Article 7(1)(e)(i) and (ii) of Regulation No 207/2009, as OHIM states in the reply, the plea of infringement of that provision cannot have any effect on the legality of that decision.

52      For the same reason, Article 75 of Regulation No 207/2009, under which decisions of OHIM are to state the reasons on which they are based, was not disregarded. It was clearly not necessary to consult the applicant in advance about evidence on which the Board of Appeal decided of its own motion not to base its decision.

53      It follows from the foregoing that the second plea must be rejected.

54      Therefore the application is to be dismissed in its entirety, without it being necessary to determine the admissibility of the document produced at the hearing by the applicant.

 Costs

55      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

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

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Order Peri GmbH to pay the costs.

Gratsias

Kancheva

Wetter

Delivered in open court in Luxembourg on 25 September 2014.

[Signatures]