JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

7 October 2015 (*)

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

In Case T‑243/14,

The Smiley Company SPRL, established in Brussels (Belgium), represented by A. Freitag and C. Albrecht, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos and A. Folliard-Monguiral, acting as Agents,

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 16 January 2014 (Case R 837/2013-1) concerning an application for registration as a Community trade mark of a three-dimensional sign comprising the shape of a face,

THE GENERAL COURT (Fifth Chamber),

composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 17 April 2014,

having regard to the response lodged at the Court Registry on 10 July 2014,

further to the hearing on 5 March 2015,

gives the following

Judgment

 Background to the dispute

1        On 6 September 2012, the applicant, The Smiley Company SPRL, filed an application for 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 following three-dimensional sign:

3        When filing the application for registration, the applicant described the mark applied for as a three-dimensional mark.

4        The goods in respect of which registration was sought are in Classes 29 and 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 29: ‘Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats’;

–        Class 30: ‘Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices; Sugar, honey, treacle; Yeast, baking powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice’.

5        On 24 September 2012, the examiner informed the applicant of his objections to the registration of the mark applied for as regards the following products: ‘Jellies, preserved, frozen, dried and cooked fruits and vegetables; milk products’ in Class 29 and ‘Preparations made from cereals, pastry and confectionery, ices’ in Class 30.

6        By letter of 25 January 2013, the applicant responded to those objections.

7        By decision of 6 March 2013, the examiner rejected the application for registration in respect of the goods referred to in paragraph 5 above, on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

8        On 6 May 2013, the applicant filed a notice of appeal with OHIM against the examiner’s decision.

9        By decision of 16 January 2014 (‘the contested decision’), the First Board of Appeal of OHIM dismissed that appeal.

10      In reaching that decision, the Board of Appeal took the view that the goods at issue were basic foodstuffs aimed at the general end consumer who, as a rule, is deemed to be reasonably well informed, observant and circumspect. As regards the sign at issue, it was described by the Board of Appeal as a three-dimensional ‘curved flat shape of a face featuring two eyes and a smiling mouth. The upper part of the shape resembles a hat or a halo’. General practical experience gained marketing those types of goods shows that all of them can be moulded or cut, at different stages in their processing or manufacture, into various shapes and that they are regularly offered in basic geometrical shapes, like in the present case, along with a wide range of decorative elements, including faces, in order to draw the attention of younger consumers in particular. In the Board of Appeal’s view, it is precisely in that sense that the shape at issue will be perceived, and not as an indicator of the commercial origin of the goods in question. The applicant’s argument that there is no other foodstuff of similar shape to that of the sign applied for does not refute that conclusion. Rather, it confirms that the shape in question is a variant of other existing shapes in which the goods at issue are marketed. Consumers will choose those goods mainly on the basis of the verbal elements of their trade marks, such as those shown on the examples of goods submitted by the applicant. Although, according to the case-law, it is for the applicant to do so, it has not adduced any evidence that the relevant public is accustomed to perceiving a shape such as the one at issue as a means of distinguishing various brands from the goods at issue. It follows, in the view of the Board of Appeal, that the mark applied for is devoid of any distinctive character in relation to those goods. With regard to the applicant’s argument that similar signs have been registered in the past, the Board of Appeal takes the view, essentially, that previous decisions are not binding on OHIM.

 Forms of order sought by the parties

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

12      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

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

14      It is of the view that the Board of Appeal wrongly found that the mark applied for did not possess the minimum degree of distinctiveness for the goods at issue.

15      The argument of the Board of Appeal that ‘jellies; preserved, frozen, dried and cooked fruits and vegetables; milk products’ in Class 29 and ‘ices’ in Class 30 are capable of being presented in a shape identical to that of the mark applied for is based not on any fact or experience in the sector concerned but on a mere assumption, without any example having been presented. Specifically, it is physically impossible to manufacture yoghurt in such a shape. As regards fruits and vegetables, they are usually offered not in the shape of the mark applied for, but in their natural shape. The same is true of jellies and ices, which are not presented in those kinds of shapes.

16      By virtue of the specific shape of the mark applied for, the goods in respect of which registration was refused are personified in a cute and funny way and will thus retain the public’s attention. Further, no other manufacturer would use the very same, specific shape in order to avoid confusion between products and misleading consumers who purchase the same shape with another taste. Consequently, far from being perceived as a mere decorative element, the mark applied for represents an unusual and exceptional form of the goods at issue on the market, capable, as far as such consumers are concerned, of distinguishing their commercial origin.

17      The Board of Appeal was also wrong to consider that, because of the use of word marks for the goods at issue, consumers would not perceive a variant consisting simply of forms and shapes as a trade mark. That assumption is not consistent with the principle that the distinctiveness of a trade mark has to be examined by reference to the mark itself without presuming the existence of other trade marks for the goods.

18      The applicant adds that the Board of Appeal erred in holding that a smiling face — solely on the ground that it was commonly used — would be perceived as a mere decorative element fulfilling ornamental or aesthetic purposes, or as a purely appreciative element emphasising the positive characteristics of the products, their good taste and their quality. That perception implies that signs composed of a smiling face are generally not distinctive. However, according to OHIM’s practice, emoticons possess sufficient distinctiveness. In support of that argument, the applicant submits a list of 32 signs representing round faces expressing various emotions and which have been registered as figurative marks. As the criteria for assessing the distinctive character of a three-dimensional mark cannot be stricter than those that apply to other categories of mark, there is no reason to subject the sign for which registration is sought in this case to a different assessment.

19      Moreover, several almost identical three-dimensional signs have already been registered for similar goods by OHIM. The sign applied for being even more particular than the previously-registered signs, a different assessment of its distinctiveness would be unjustifiable. At the hearing, the applicant added that the contested decision therefore breached the principle of non-discrimination as well as its legitimate expectations.

20      Last, the shape applied for clearly differs from the other shapes offered on the EU market. Whereas OHIM did not provide any example to the contrary, the applicant submitted a list of examples of common shapes, offered on the market in relation to the goods which were rejected, namely ‘preparations made from cereals, pastry, confectionery’, none of which is composed of a misshapen head or even a smiling face. With regard to the other products, no similar typical shapes could be found on the European market. In fact, the other shapes depart greatly from the one at issue here.

21      OHIM disputes the applicant’s arguments.

22      First of all, while it acknowledges that, according to the case-law, the criteria for assessing the distinctive character of three-dimensional signs consisting of the appearance of the product itself or of its packaging, such as that at issue in the present case, are no different from those applicable to other categories of trade marks, it argues, citing the judgment of 8 April 2003 in Linde and Others (C‑53/01 to C‑55/01, ECR, EU:C:2003:206, paragraph 48), that, in the mind of the relevant consumer, such signs are less likely to convey a message about their commercial origin. Therefore, it may be more difficult in practice to establish the distinctiveness of such a sign, that sign having to depart significantly from the norm or customs of the sector for that purpose.

23      Next, OHIM submits, essentially, that, contrary to what the applicant argues, everyday experience indicates that all the goods for which registration of the mark applied for was refused can take the same form as the latter after having been moulded or cut into various forms. That is clear for ‘pastries’, ‘confectionery’ and ‘ices’, and it also applies to the remaining products. In particular, ‘milk products’ are not limited to products in liquid form, but include cheeses and cheesecakes. At the hearing, OHIM argued that the same was true of butter. ‘Preparations made from cereals’ include (apart from cereal flakes) snacks made from cereals. ‘Preserved, frozen, dried and cooked fruits and vegetables’ are processed products that can be given any shape. That is particularly true for frozen fruits or vegetables, for which shapes appealing to children are often used in order to encourage their appetite for greens and other healthy foodstuffs.

24      The examples submitted by the applicant itself demonstrate rather that shapes similar to the one applied for are very common. Recourse to decorative elements to attract the attention of younger consumers, particularly by transmitting feelings or portraying characters — such as smiling faces — is a widespread practice in the market for those products.

25      With regard to the applicant’s criticism concerning the alleged conclusions which OHIM drew from the association of the word marks with the products at issue, OHIM states that the Board of Appeal did not examine the distinctive character of the contested application in relation to other signs. It merely responded to arguments relating to the list of examples of cereals, confectioneries and ices submitted by the applicant during the procedure before the examiner. In the contested decision, the Board of Appeal rightly held that the marks in the examples mainly derived their distinctiveness from the verbal elements accompanying them and not from their shape. Moreover, the Board reached those conclusions after having examined the distinctiveness of the contested sign as such, which was in line both with Regulation No 207/2009 and the case-law.

26      Thus, the shape at issue is merely a variant of other shapes in which the relevant products are marketed. Since, according to the case-law (judgment of 12 December 2013 in Sweet Tec v OHIM (Oval shape), T‑156/12, EU:T:2013:642, paragraph 22), the relevant consumer is unlikely to pay much attention to the shape of the product or to make his choice solely on the basis of his perception of it, it is to be concluded that the mark applied for in the present case does not satisfy the conditions laid down in Article 7(1)(b) of Regulation No 207/2009.

27      Last, OHIM contends, essentially, that it cannot be bound by its prior decision-making practice.

28      In that regard, it should be noted that, pursuant to Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are to be refused registration.

29      For a trade mark to possess distinctive character, for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods in respect of which registration has been sought as originating from a particular undertaking, and thus to distinguish those goods from the goods of other undertakings (see judgments of 29 April 2004 in Henkel v OHIM, C‑456/01 P and C‑457/01 P, ECR, EU:C:2004:258, paragraph 34 and the case-law cited, and 11 April 2014 in Olive Line International v OHIM (OLIVE LINE), T‑209/13, EU:T:2014:216, paragraph 18 and the case-law cited).

30      A minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 inapplicable (judgment of 14 March 2014 in Lardini v OHIM (Affixing of a flower to a collar), T‑131/13, EU:T:2014:129, paragraph 16).

31      That distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been sought and, second, by reference to the perception of the relevant public, which consists of average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect (see judgments in Henkel v OHIM, cited in paragraph 29 above, EU:C:2004:258, paragraph 35, and OLIVE LINE, cited in paragraph 29 above, EU:T:2014:216, paragraph 19).

32      According to established case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see judgment in OLIVE LINE, cited in paragraph 29 above, EU:T:2014:216, paragraph 20 and the case-law cited).

33      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 goods themselves, 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 designates. Average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could 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 OLIVE LINE, cited in paragraph 29 above, EU:T:2014:216, paragraph 21 and the case-law cited).

34      In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. 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 that provision. Therefore, where a three-dimensional mark is constituted by the shape of the product for 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 judgment in OLIVE LINE, cited in paragraph 29 above, EU:T:2014:216, paragraph 22 and the case-law cited).

35      As part of that assessment, the overall impression given by the mark must be considered. This does not mean, however, that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgment in OLIVE LINE, cited in paragraph 29 above, EU:T:2014:216, paragraph 30 and the case-law cited).

36      Moreover, 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 distinctive character, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 16 January 2014 in Steiff v OHIM (Metal button in the middle section of the ear of a soft toy), T‑433/12, EU:T:2014:8, paragraph 22 and the case-law cited).

37      Similarly, it is important to point out that novelty or originality are not relevant criteria in the assessment of the distinctive character of a mark. Accordingly, for a three-dimensional mark to be registered, it is not enough that it is original, but it must differ substantially from the basic shapes of the goods in question, commonly used in trade, and not look like a mere variant of those shapes. Last, it is not necessary to provide evidence of the usual character of the shape in trade to establish the lack of distinctive character of the mark applied for (see judgment in Metal button in the middle section of the ear of a soft toy, cited in paragraph 36 above, EU:T:2014:8, paragraph 33 and the case-law cited).

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

39      In that regard, it is important to point out that the applicant has not disputed the finding, in paragraph 14 of the contested decision, that the goods at issue are basic foodstuffs aimed at the general consumer who is deemed to be reasonably well informed, observant and circumspect.

40      It should also be noted that the distinctive character of the mark applied for cannot simply be inferred from the possible distinctiveness of a number of figurative marks registered by the applicant as Community trade marks. Since the mark applied for is a three-dimensional sign which may coincide with the appearance of the goods in question, it needs to be assessed whether it departs significantly from the norm or customs of the sectors of those goods and thereby fulfils its essential function of indicating origin (see paragraphs 32 to 34 above).

41      In the first place, in relation to ‘jellies’ in Class 29 and ‘preparations made from cereals, pastry, confectionery, ices’ in Class 30, the Court considers it appropriate to uphold the analysis conducted by the Board of Appeal.

42      Consumers who are used to a very wide variety of goods such as the ones at issue, and the shapes and decorations of such goods, do not perceive those latter elements as an indicator of origin (see, to that effect, judgment in OLIVE LINE, cited in paragraph 29 above, EU:T:2014:216, paragraph 21 and the case-law cited). Neither a round shape decorated, for example, with curved features, holes or reliefs or a hat or a halo nor the shape in question considered as a whole, representing a smiling face with a simple oval element on top, exhibits any particularity or significantly departs from the customs of the sectors concerned.

43      The constituent elements of the mark applied for taken individually and the shape created taken as a whole will be perceived by the relevant consumers as possible — or even common — variants of the presentation and decoration of those goods.

44      The shape of a smiling face with a hat or a halo, for the goods in question, could also be intended to convey positive feelings or affection where such goods are offered or to communicate a positive message about the goods or to arouse favourable opinion regarding their properties and qualities.

45      Nevertheless, it cannot be accepted that, beyond their decorative, emotive or laudatory effect, average consumers, who are reasonably well informed, observant and circumspect, will assign the sign in question an identificatory function as to the origin of the goods concerned. Given the abundance of shapes in the sectors in question, the mark applied for is not such as to indicate commercial origin (see, by analogy, judgment of 6 July 2011 in Timehouse v OHIM (Shape of a watch with jagged edges) (T‑235/10, EU:T:2011:331, paragraph 31).

46      That finding is supported by the case-law according to which a mark applied for consisting of a chocolate shape, the upper face of which represented an animal, is not separate from all the shapes existing in that sector to such an extent that it specifically draws the consumer’s attention. The consumer will see only a decorative configuration; he will not however accord particular attention to it or go to the trouble of analysing it (judgment of 17 December 2010 in Storck v OHIM (Shape of a chocolate mouse), T‑13/09, EU:T:2010:552, paragraph 32). It follows, moreover, from the judgment of 30 April 2003 in Axions and Belce v OHIM (Brown cigar shape) (T‑324/01 and T‑110/02, ECR, EU:T:2003:123, paragraph 35), that, in relation to confectionery and pastry goods, average consumers do not subject the shape of the products concerned to close analysis, but accord them only fleeting attention. The same is true in the sectors of preparations made from cereals, jellies and ices, and particularly true of ice lollies, products which consumers are also used to seeing with a wide variety of shapes and decorations (see paragraph 42 above), with the result that they will not perceive the sign applied for as an identification of commercial origin.

47      The Board of Appeal was therefore correct to find that the sign at issue did not have distinctive character for ‘jellies’ in Class 29 and ‘preparations made from cereals, pastry and confectionery, ices’ in Class 30.

48      Further, the argument put forward by the applicant at the hearing, that the goods at issue will not necessarily come in the shape of the sign applied for, cannot succeed. It is sufficient that it be possible for the sign applied for to coincide with the shape of the goods at issue (see, to that effect, judgment of 16 September 2009 in Alber v OHIM (Hand grip), T‑391/07, EU:T:2009:336, paragraph 55). In that regard, it is also important to note that, for a mark to be registered, it must differ substantially from the basic shapes of the goods in question, commonly used in trade, and not look like a mere variant of those shapes. It is clear from the above that the sign applied for is sufficiently similar to other common shapes which are, thus, likely to be used for the goods at issue. After all, it is clear from the application, and in particular from points 17 and 19 thereof, that the applicant intends to offer the goods at issue in the shape of the mark applied for.

49      With regard to the applicant’s argument alleging that OHIM has already registered similar or almost identical three-dimensional marks, it should be noted that OHIM is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 73, and order of 12 December 2013 in Getty Images (US) v OHIM, C‑70/13 P, EU:C:2013:875, paragraph 41).

50      In the light of those two principles, 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 special care whether it should decide in the same way or not (see judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 49 above, EU:C:2011:139, paragraph 74 and the case-law cited, and order in Getty Images (US) v OHIM, cited in paragraph 49 above, EU:C:2013:875, paragraph 42).

51      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 to the benefit of someone else (see, to that effect, judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 49 above, EU:C:2011:139, paragraphs 75 and 76 and the case-law cited; order in Getty Images (US) v OHIM, cited in paragraph 49 above, EU:C:2013:875, paragraph 43; and judgment of 16 October 2014 in Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, ECR, EU:T:2014:891, paragraph 36).

52      Moreover, for reasons of legal certainty and, specifically, of sound administration, the examination of any trade mark application must be stringent and comprehensive, 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 (judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 49 above, EU:C:2011:139, paragraph 77, and order in Getty Images (US) v OHIM, cited in paragraph 49 above, EU:C:2013:875, paragraph 44).

53      Furthermore, according to the case-law of the Court of Justice, the considerations set out in paragraphs 49 to 52 above apply even if the sign in respect of which registration is sought as a Community trade mark is composed in a manner identical to that of a mark in respect of which OHIM has already approved registration as a Community trade mark and which relates to goods or services identical or similar to those in respect of which registration of the sign in question is sought (order in Getty Images (US) v OHIM, cited in paragraph 49 above, EU:C:2013:875, paragraph 45).

54      In the present case, it is clear from the examination conducted in paragraphs 39 to 46 above that the Board of Appeal was right to find, on the basis of a full examination and having regard to the perception of the relevant public, that the application for a Community trade mark submitted by the applicant was rendered inadmissible by the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009, in relation to ‘jellies’ in Class 29 and ‘preparations made from cereals, pastry and confectionery, ices’ in Class 30. Consequently, pursuant to the case-law cited in paragraphs 49 to 53 above, that finding cannot be called into question by virtue of the mere fact that the Board of Appeal did not follow OHIM’s decision-making practice in the present case (see, to that effect, judgment in GRAPHENE, cited in paragraph 51 above, EU:T:2014:891, paragraph 37 and the case-law cited). Accordingly, and for the same reasons, the specific complaint alleging breach of the principle of non-discrimination and of legitimate expectations must also be rejected. The Court points out in particular that, regard being had to the reasons set out in paragraphs 49 to 53 above, OHIM’s earlier decisions cannot give rise to legitimate expectations.

55      It follows that the action must be dismissed in so far as it was found in the contested decision that the mark applied for was devoid of distinctive character for ‘jellies’ in Class 29 and ‘preparations made from cereals, pastry and confectionery, ices’ in Class 30.

56      In the second place, as regards ‘preserved, frozen, dried and cooked fruits and vegetables; milk products’ in Class 29, it should be noted that, in order for the Board of Appeal to has been able to base its analysis on practical experience acquired generally from the marketing of those goods, it would also have been necessary, as is required by the case-law, that the facts on which it based its analysis were likely to be known by anyone or could be learnt from generally accessible sources (see, to that effect, judgments of 20 April 2005 in Atomic Austria v OHIM — Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ), T‑318/03, ECR, EU:T:2005:136, paragraph 35, and 17 December 2010 in Chocoladefabriken Lindt & Sprüngli v OHIM (Shape of a chocolate rabbit), T‑395/08, EU:T:2010:550, paragraph 41).

57      While it is certainly true that the goods in question can be moulded or cut into various shapes and that they are offered in various basic geometrical shapes, it is not widely known that they are also offered with a variety of decorative elements, let alone ornaments as elaborate as faces and other anthropomorphic or zoomorphic elements, contrary to what the Board of Appeal essentially stated in paragraph 16 of the contested decision.

58      As the applicant essentially submits, milk products in liquid or creamy form, such as yoghurts, cannot take such a shape. A pot of yoghurt in the shape of the mark applied for would actually be very impractical, or indeed unsuitable for use, in so far as the spoon necessary for consuming it may not reach all the areas of the pot. With regard to solid milk products, such as cheese or butter, those are usually offered in simple shapes such as rectangles, circles, ovals, hearts, balls, cones or pyramids, and do not have such a degree of decoration as the shape for which registration is sought. As regards cheesecakes, considered by OHIM to be included within milk products (see paragraph 23 above), it should be made clear that they, like all cakes, are rather pastry products, in respect of which the mark applied for was correctly found by the Board of Appeal not to have distinctive character (see paragraph 55 above).

59      With regard to preserved, frozen, dried and cooked fruits and vegetables, as the applicant essentially claims, those products are usually packaged and presented in their natural form, chopped, as coulis or in classic or functional geometric shapes, such as cubes, discs, pebbles, tiles, balls or coils and do not have such a degree of decoration as the shape for which registration is sought, either.

60      Accordingly, while it is true that the average consumer generally does not pay attention to the shape of foodstuffs and normally does not assume that it is an indication of origin (see, to that effect, judgments in Oval shape, cited in paragraph 26 above, EU:T:2013:642, paragraph 22, and OLIVE LINE, cited in paragraph 29 above, EU:T:2014:216, paragraph 21 and the case-law cited), the exceptional nature of the habits in the sectors concerned involving presenting those goods in the shape of the mark applied for renders that mark capable of indicating the commercial origin of the goods concerned.

61      That conclusion cannot be called in question by the arguments raised by OHIM at the hearing.

62      On the one hand, contrary to what OHIM essentially argued, the correctness of the assertion regarding OHIM’s practical experience concerning the ‘preserved, frozen, dried and cooked fruits and vegetables’ sectors in Class 29 was not raised by the General Court of its own motion, but by the applicant in points 15, 17 and 24 of its application.

63      On the other hand, OHIM cannot properly rely on the argument that, essentially, registration as a Community trade mark of the sign applied for in respect of certain foodstuffs would, because of the alleged homogeneity of all the goods at issue, result in OHIM’s refusal of registration being circumvented and a protection being obtained by the mark applied for not only for identical goods, but also for other similar foodstuffs. First, OHIM itself did not oppose the registration of the sign applied for in relation to a number of the goods in relation to which registration was sought, such as ‘meat, fish, poultry and game; meat extracts; jams, compotes; eggs; milk; edible oils and fats’ in Class 29 and ‘coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour; bread, sugar, honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; ice’ in Class 30, which are also basic foodstuffs. Therefore, that argument contradicts its own decision regarding the present trade mark application. Second, even though all the goods in respect of which registration was sought are foodstuffs commonly purchased by the consumers relevant here, they differ substantially in terms of whether the mark applied for departs significantly from the norm or customs of the various sectors concerned, as is apparent from paragraphs 41 to 55 and 56 to 60 above, respectively. Accordingly, the concern expressed by OHIM is not well founded.

64      It follows from all the foregoing that the contested decision must be annulled in so far as it rejects the application for registration of the mark in question for ‘preserved, frozen, dried and cooked fruits and vegetables; milk products’ in Class 29. The action must be dismissed as to the remainder.

 Costs

65      Pursuant to Article 87(3) of the Rules of Procedure, the General Court may order that the costs be shared or that each party bear its own costs where each party succeeds on some and fails on other heads. In the circumstances of the present case, each party must be ordered to bear its own costs (see, to that effect, judgment of 26 September 2014 in DK Recycling und Roheisen v Commission, T‑630/13, EU:T:2014:833, paragraphs 120 and 121).

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 16 January 2014 (Case R 837/2013-1) with regard to the refusal to register the mark applied for in respect of ‘preserved, frozen, dried and cooked fruits and vegetables; milk products’;

2.      Dismisses the action as to the remainder;

3.      Orders the parties to bear their own costs.

Dittrich

Schwarcz

Tomljenović

Delivered in open court in Luxembourg on 7 October 2015.

[Signatures]