Judgments nº T-307/17 of Tribunal General de la Unión Europea, June 19, 2019
| Resolution Date | June 19, 2019 |
| Issuing Organization | Tribunal General de la Unión Europea |
| Decision Number | T-307/17 |
(EU trade mark - Invalidity proceedings - EU figurative mark representing three parallel stripes - Absolute grounds for invalidity - No distinctive character acquired through use - Article 7(3) and Article 52(2) of Regulation (EC) No 207/2009 (now Article 7(3) and Article 59(2) of Regulation (EU) 2017/1001) - Form of use unable to be taken into account - Form that differs from the form under which the mark has been registered by significant variations - Inversion of the colour scheme)
In Case T-307/17,
adidas AG, established in Herzogenaurach (Germany), represented by I. Fowler and I. Junkar, Solicitors,
applicant,
supported by:
Marques, established in Leicester (United Kingdom), represented by M. Treis, lawyer,
intervener,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being:
Shoe Branding Europe BVBA, established in Oudenaarde (Belgium), represented by J. Løje, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 7 March 2017 (Case R 1515/2016-2), relating to invalidity proceedings between Shoe Branding Europe and adidas,
THE GENERAL COURT (Ninth Chamber, Extended Composition),
composed of S. Gervasoni, President, L. Madise, R. da Silva Passos, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: E. Hendrix, Administrator,
having regard to the application lodged at the Court Registry on 18 May 2017,
having regard to the response of EUIPO lodged at the Court Registry on 10 August 2017,
having regard to the response of the intervener lodged at the Court Registry on 12 July 2017,
having regard to the order of 5 December 2017 granting Marques leave to intervene in support of the form of order sought by the applicant,
having regard to the intervention of Marques lodged at the Court Registry on 22 January 2018,
having regard to the observations of the applicant lodged at the Court Registry on 19 February 2018,
having regard to the observations of EUIPO lodged at the Court Registry on 28 February 2018,
having regard to the observations of the intervener lodged at the Court Registry on 28 February 2018,
further to the hearing on 24 January 2019,
gives the following
Judgment
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Background to the dispute
1 On 18 December 2013, the applicant, adidas AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark (OJ 2017 L 154, p. 1)).
2 The trade mark in respect of which registration was sought is reproduced below:
3 In the application for registration, the mark is identified as a figurative mark and corresponds to the following description:
‘The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction.’
4 The goods in respect of which registration was applied for are in Class 25 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 to the following description: ‘Clothing; footwear; headgear’.
5 The mark was registered on 21 May 2014 under the number 12442166.
6 On 16 December 2014, the intervener, Shoe Branding Europe BVBA, filed an application for declaration of invalidity of the mark at issue pursuant to Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001) in conjunction with Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001).
7 On 30 June 2016, the Cancellation Division granted the application for declaration of invalidity filed by the intervener, on the ground that the mark at issue was devoid of any distinctive character, both inherent and acquired through use.
8 On 18 August 2016, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division. In that appeal, it did not dispute the lack of inherent distinctive character of the mark at issue, but, on the other hand, the applicant claimed that that mark had acquired distinctive character through use within the meaning of Article 7(3) and Article 52(2) of Regulation No 207/2009 (now Article 7(3) and Article 59(2) of Regulation 2017/1001).
9 By decision of 7 March 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
10 The Board of Appeal stated, first, that the mark at issue had been validly registered as a figurative mark (paragraph 20 of the contested decision). Next, it confirmed the Cancellation Division’s assessment that the mark was inherently devoid of distinctive character (paragraph 22 of the contested decision). Finally, it examined the evidence adduced by the applicant and found that the applicant had failed to establish that the mark had acquired distinctive character through use throughout the European Union (paragraph 69 of the contested decision). Consequently, the Board of Appeal found that the mark at issue had been registered in breach of Article 7(1)(b) of Regulation No 207/2009 and that it should therefore be declared invalid (paragraph 72 of the contested decision).
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Forms of order sought
11 The applicant, supported by the association Marques (‘the intervening association’), claims that the Court should:
- annul the contested decision;
- order EUIPO and the intervener to pay the costs.
12 EUIPO contends that the Court should:
- dismiss the action;
- order the applicant to pay the costs;
- order the intervening association to bear its own costs.
13 The intervener contends that the Court should:
- dismiss the action;
- order the applicant to pay the costs.
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Law
14 In support of its action, the applicant, supported by the intervening association, puts forward a single plea in law, alleging infringement of Article 52(2) of Regulation No 207/2009, read in conjunction with Article 7(3) of that regulation and with the principles of the protection of legitimate expectations and proportionality.
15 That plea can be regarded as comprising two parts, in so far as the applicant submits, in essence, first, that the Board of Appeal wrongly dismissed numerous items of evidence on the ground that that evidence related to signs other than the mark at issue and, secondly, that the Board of Appeal made an error of assessment in holding that it was not established that the mark at issue had acquired distinctive character following the use which has been made of it within the European Union.
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Preliminary observations
16 First, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character may not be registered. Pursuant to Article 7(2) of that regulation (now Article 7(2) of Regulation 2017/1001), that absolute ground for refusal applies even if it obtains in only part of the European Union. However, under Article 7(3) of Regulation No 207/2009, that ground does not preclude registration of a trade mark if that mark has become distinctive in relation to the goods or services for which it was registered following the use which has been made of it.
17 Secondly, under Article 52(1)(a) of Regulation No 207/2009, the invalidity of an EU trade mark is to be declared, on application to EUIPO, where the EU trade mark has been registered contrary to the provisions of Article 7 of that regulation. However, under Article 52(2) of Regulation No 207/2009, where an EU trade mark has been registered in breach of the provisions of Article 7(1)(b) of that regulation, it may nevertheless not be declared invalid if, in consequence of the use that has been made of it, it has after registration acquired distinctive character in relation to the goods or services for which it is registered.
18 Thus, it follows from Article 7(3) and Article 52(2) of Regulation No 207/2009 that, in the context of invalidity proceedings, the lack of inherent distinctive character of a registered trade mark does not mean that the trade mark is invalid where that trade mark has acquired distinctive character through use which has been made of it, either before it was registered or in the period between being registered and the date on which a declaration of invalidity was sought (see, to that effect, judgment of 14 December 2017, bet365 Group v EUIPO - Hansen (BET 365), T-304/16, EU:T:2017:912, paragraph 23 and the case-law cited).
19 It should also be noted that the distinctive character of a trade mark, whether it is inherent or acquired through use, means that that mark serves to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings (see, to that effect and by analogy, judgments of 4 May 1999, Windsurfing Chiemsee, C-108/97 and C-109/97, EU:C:1999:230, paragraph 46, and of 18 June 2002, Philips, C-299/99, EU:C:2002:377, paragraph 35).
20 That distinctive character, whether inherent or acquired through use, 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 (see, by analogy, judgments of 18 June 2002, Philips, C-299/99, EU:C:2002:377, paragraphs 59 and 63, and of 12 February 2004, Koninklijke KPN Nederland, C-363/99, EU:C:2004:86, paragraphs 34 and 75).
21 In the present case, the relevant public for the goods for which the mark at issue has been...
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