JUDGMENT OF THE GENERAL COURT (Second Chamber)

15 December 2015 (*)

(Community trade mark — Application for a Community trade mark consisting of two parallel stripes on the long sleeves of a shirt — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)

In Case T‑63/15,

Shoe Branding Europe BVBA, established in Oudenaarde (Belgium), represented by J. Løje, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by P. Geroulakos, and subsequently by D. Gája, acting as Agents,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 3 December 2014 (Case R 2560/2013-5), concerning an application for registration of a sign consisting of two parallel stripes on the long sleeves of a shirt as a Community trade mark,

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 Court Registry on 9 February 2015,

having regard to the response lodged at the Court Registry on 21 April 2015,

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 of 2 May 1991,

gives the following

Judgment

 Background to the dispute

1        On 31 May 2012, the applicant, Shoe Branding Europe BVBA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 trade mark was sought for the following sign:

3        In the application form, the mark was described as follows:

‘The trade mark is a position mark. The mark consists of two parallel stripes of equal width positioned on the side of both sleeves of long sleeve shirts. The parallel stripes run from the upper part of the sleeves beginning at the shoulder se[a]m and three quarters down the sleeves. The width of the space between the two parallel stripes is equal to the width of each of the stripes. The dotted line marks the position of the trade mark and does not form part of the mark.’

4        The products in respect of which registration was applied for are in Class 25 of the Nice Agreement concerning the 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: ‘Clothing, namely long sleeve shirts’.

5        By decision of 17 October 2013, the examiner refused protection for the mark in its entirety pursuant to Article 7(1)(b) of Regulation No 207/2009.

6        On 17 December 2013, the applicant filed a notice of appeal against the decision of the examiner.

7        By decision of 3 December 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal.

8        In the contested decision, the Board of Appeal noted, in particular, the following: first, the goods applied for are mass-consumption products which are directed at the public at large, which has a normal level of attentiveness (paragraph 19 of the contested decision); second the sign at issue is very simple and ordinary (paragraphs 21 and 23); according to case-law, a sign made up of a basic geometrical figure lacks distinctive character, unless it has been acquired through use (paragraph 24); moreover, when the position of the sign at issue on the shirt is taken into account, it appears that, in the absence of evidence to establish that that relevant public would be used to distinguishing the commercial origin of certain sports and leisure shirts on the basis of the existence of two parallel stripes placed on the sleeves, that sign will be perceived by the relevant public as a decorative feature and not as an indication of the commercial origin of the products on which it is placed (paragraphs 25 to 29); third, the legality of the decisions of the Boards of Appeal must be assessed purely by reference to Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of OHIM’s practice in earlier decisions (paragraph 36); fourth, even if the applicant’s argument is interpreted as relying on the existence of a distinctive character acquired through use, the evidence provided is insufficient to demonstrate that the relevant public will identify the sign at issue as an indication of the commercial origin of the products concerned (paragraphs 37 to 40).

 Forms of order sought

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      The applicant relies on a single plea, alleging breach of Article 7(1)(b) of Regulation No 207/2009.

12      Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character may not be registered.

13      It is apparent from settled case-law that the distinctive character of a trade mark within the meaning of Article 7(1)(b) of Regulation No 207/2009 means that that mark 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 (judgments of 29 April 2004 in Procter & Gamble v OHIM, C‑473/01 P and C‑474/01 P, ECR, EU:C:2004:260, paragraph 32, and 21 October 2004 in OHIM v Erpo Möbelwerk, C‑64/02 P, ECR, EU:C:2004:645, paragraph 42).

14      That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception which the relevant public has of those goods or services (judgments in Procter & Gamble v OHIM, cited in paragraph 13 above, EU:C:2004:260, paragraph 33, and of 22 June 2006 in Storck v OHIM, C‑25/05 P, ECR, EU:C:2006:422, paragraph 25).

15      Article 7(1)(b) of Regulation No 207/2009 requires the examiner and, in appropriate cases, the Board of Appeal, to examine — in the context of an a priori examination and apart from any actual use of the sign for the purposes of Article 7(3) of Regulation No 207/2009 — whether there appears to be no possibility that the sign in question may be capable of distinguishing, in the eyes of the public to which it is addressed, the products or services referred to from those of a different origin, where that public will be called upon to make its choice in commerce (judgment of 5 April 2001 in Bank für Arbeit und Wirtschaft v OHIM (EASYBANK), T‑87/00, ECR, EU:T:2001:119, paragraph 40).

16      Moreover, where a party claims that a trade mark sought is distinctive, despite OHIM’s analysis, it is for the applicant to provide specific and substantiated information to show that the trade mark applied for has an inherent distinctive character (judgment of 25 October 2007 in Develey v OHIM, C‑238/06 P, ECR, EU:C:2007:635, paragraph 50).

17      In the present case, as the Board of Appeal correctly observed in paragraph 27 of the contested decision, although the patterns and simple designs affixed to the products applied for or, more generally, on sports products, may be perceived in some cases as indications of commercial origin, that does not mean that any pattern would be perceived that way.

18      In addition, the limitation of the list of the products on which the sign is affixed, and also the position of that sign on the products at issue are only elements which, among others, may be taken into account by OHIM when analysing the inherent distinctive character of a sign.

19      The mark applied for consists of two parallel stripes of equal width and length positioned on the side of the two sleeves of a long sleeved shirt.

20      First, as the Board of Appeal correctly observed in the contested decision, the pattern concerned is very simple and ordinary which, as such, lacks distinctive character (paragraphs 21 and 23 of the contested decision).

21      Second, the Board of Appeal was also correct in considering that the applicant had not established that such a pattern would acquire a distinctive character from the fact that it was affixed on a specific part of the shirt (paragraphs 23, 25 and 28 of the contested decision).

22      Contrary to what the applicant claims, the fact that the two stripes in question are affixed along the sleeves, on the outside, thus on the most visible side and start from the shoulder and stop, arbitrarily, three quarters of the way down the sleeves is not capable of distinguishing that pattern from other purely decorative patterns which may be used on the products at issue.

23      Thus, the applicant, whose task it is, in accordance with the case-law cited in paragraph 16 above, to establish that the mark applied for has an inherent distinctive character, did not provide sufficient evidence in that regard.

24      It follows from the foregoing that the Board of Appeal was correct in concluding that the contested sign is not capable of constituting, for the average consumer, an indication of the commercial origin of the products at issue.

25      The foregoing conclusion cannot be called into question by the applicant’s other arguments.

26      First, although the applicant produces some evidence, already adduced before OHIM, to establish that sportswear manufacturers use simple geometric shapes as trade marks, that evidence does not enable it to be established that the average consumer will necessarily perceive any simple geometric shape, such as that used in the sign applied for, as a trade mark.

27      It is conceivable, moreover, that, even if certain simple geometric shapes enable the average consumer to establish a link between the product on which they are affixed and a specific manufacturer, the distinctive value of those signs owes less to their simplicity and their positioning on the product than the intensive use which has been made of those signs elsewhere on the market.

28      In any event, even if it is accepted that the average consumer pays particularly close attention to simple geometric shapes positioned on clothing — especially on the outside of the sleeves of shirts — to such an extent that he considers that such shapes are generally trade marks, the applicant has not produced sufficient evidence to establish, given the ordinary nature of the sign at issue, that the average consumer would regard the sign as an indication of the origin of the products at issue and not as a mere decorative element.

29      Moreover, accepting that any geometric shape, including the simplest one, has a distinctive character because it is affixed to a particular portion of the sleeve of a sport shirts would result in some manufacturers being able to appropriate simple, primarily decorative, shapes, which must remain accessible to all, except where the distinctive character of the sign has been acquired through use.

30      Second, the applicant submits that the Board of Appeal ignored and departed from its decision-making practice without good reason.

31      According to case-law, 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. That said, 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 for 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 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, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 74 to 77).

32      In the present case, it is apparent from the contested decision that the Board of Appeal performed a full and specific examination of the trade mark applied for before refusing to register it. That examination led the Board of Appeal to uphold correctly the absolute ground for refusal of registration provided for in Article 7(1)(b) of Regulation No 207/2009 and so to oppose the registration of the mark applied for.

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

34      It follows from all the foregoing that the single plea alleging breach of Article 7(1)(b) of Regulation No 207/2009 must be rejected.

35      Since all the applicant’s complaints have been rejected, the action must be dismissed.

 Costs

36      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. 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 Shoe Branding Europe BVBA to pay the costs.

Martins Ribeiro

Gervasoni

Madise

Delivered in open court in Luxembourg on 15 December 2015.

[Signatures]