Judgments nº T-658/18 of Tribunal General de la Unión Europea, December 03, 2019

Resolution Date:December 03, 2019
Issuing Organization:Tribunal General de la Unión Europea
Decision Number:T-658/18
 
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(EU trade mark - International registration designating the European Union - Figurative mark representing a chequered gingham pattern - Absolute grounds for refusal - No distinctive character - Article 7(1)(b) of Regulation (EU) 2017/1001) In Case T-658/18,

Hästens Sängar AB, established in Köping (Sweden), represented by M. Johansson and R. Wessman, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Söder, H. O’Neill and D. Gája, acting as Agents,

defendant,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 August 2018 (Case R 442/2018-2) concerning the international registration designating the European Union of a figurative mark representing a chequered gingham pattern,

THE GENERAL COURT (Second Chamber),

composed of E. Buttigieg, acting as President, B. Berke (Rapporteur) and M.J. Costeira, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 31 October 2018,

having regard to the response lodged at the Court Registry on 30 January 2019,

further to the hearing on 24 September 2019,

gives the following

Judgment

Background to the dispute

1 On 16 December 2016 the applicant, Hästens Sängar AB, filed an application for international registration designating the European Union at 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 trade mark (OJ 2017 L 154, p. 1)).

2 The mark which is the subject of the international registration designating the European Union is the following figurative sign:

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3 The goods and services for which registration was sought are in Classes 20, 24, 25 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 20: ‘Furniture, including beds, bed frames and bedroom furniture; mattresses, spring mattresses, overlay mattress; pillows and down pillows’;

- Class 24: ‘Woven textiles, textile products, not included in other classes; bed linen; down quilts’;

- Class 25: ‘Clothing; footwear; headgear’;

- Class 35: ‘Marketing, commercial information related to furniture, home furnishings and interior decoration products, textile products, bed linen, bed covers, clothing, footwear and headgear and toys’.

4 By decision of 9 January 2018, the examiner refused protection on the basis of Article 7(1)(b) of Regulation 2017/1001 in relation to the goods and services in question on account of the mark’s lack of distinctive character.

5 On 7 March 2018, the applicant filed a notice of appeal under Articles 66 to 71 of Regulation 2017/1001 against the decision of the examiner.

6 By decision of 8 August 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal with regard to all the goods and services in question on the basis of Article 7(1)(b) of Regulation 2017/1001.

7 First, the Board of Appeal held that the relevant public, which consists of the general public in the European Union as a whole, would perceive the mark applied for as a simple geometric pattern, namely a square divided into four squares of the same size, of which three are filled with different shades of grey-blue while the fourth is white. Second, the Board of Appeal held that, since such a pattern could be applied to the surface of the applicant’s textiles, furniture and clothing, the mark applied for did not consist of a sign unrelated to the appearance of the goods it designated. Third, the Board of Appeal held that the mark applied for, when applied to the goods at issue, would be perceived as an attractive detail rather than as an indication of its commercial origin since it did not differ significantly from the norm or customs of the sector. Fourth, the Board of Appeal took the view that the mark applied for did not contain any notable variation in relation to the conventional representation of a chequered design found everywhere in the field of textiles.

Forms of order sought

8 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

9 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

10 It is necessary to clarify that the applicant’s complaints, although divided into four subheadings, in fact concern errors of assessment regarding the lack of distinctive character of the mark applied for. In addition, under the same subheadings, the applicant brings together materially different complaints such as infringement of the right to be heard and error of assessment. In essence, the applicant relies on three pleas in law, alleging, (i) infringement of Article 7(1)(b) of Regulation 2017/1001; (ii) failure to comply with Article 94(1) of that regulation; and, (iii) infringement of Article 94(1) and Article 95(1) of the same regulation.

The first plea, alleging infringement of Article 7 (1)(b) of Regulation 2017/1001

11 By this plea, in essence, the applicant criticises the Board of Appeal for having found that the mark applied for was a repeated pattern or a three-dimensional mark, for having considered that the assessment of the general use of chequered patters on the market in the textiles sector was relevant for the purpose of assessing the distinctive character of the mark applied for, and for having wrongly based its assessment on the finding that the mark consisted of the surface of the goods, whereas in fact it consists of a logo.

12 EUIPO disputes the applicant’s arguments.

13 As a preliminary point, it should be recalled that, under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.

14 It is apparent from settled case-law that for a trade mark to possess distinctive character for the purposes of that article, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (judgments of 29 April 2004, Procter & Gamble v OHIM, C-473/01 P and C-474/01 P, EU:C:2004:260, paragraph 32; of 8 May 2008, Eurohypo v OHIM, C-304/06 P, EU:C:2008:261, paragraph 66; and of 21 January 2010, Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 33).

15 In that regard, in the first place, a mark’s 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 relevant public’s perception of the mark (judgments of 29 April 2004, Procter & Gamble v OHIM, C-473/01 P and C-474/01 P, EU:C:2004:260, paragraph 33; of 8 May 2008, Eurohypo v OHIM, C-304/06 P, EU:C:2008:261, paragraph 67; and of 21 January 2010, Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 34).

16 A minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 inapplicable (judgment of 14 March 2014, Lardini v OHIM (Affixing of a flower to a collar), T-131/13, not published, EU:T:2014:129, paragraph 16).

17 The finding that a mark has distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark enables the relevant public to identify the origin of the goods or services which it covers and to distinguish them from those of other undertakings (judgments 16 September 2004, SAT.1 v OHIM, C-329/02 P, EU:C:2004:532, paragraph 41, and of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T-139/08, EU:T:2009:364, paragraph 27).

18 Nevertheless, a sign which is excessively simple and composed of a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (judgments of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon), T-304/05, not published, EU:T:2007:271, paragraph 22, and of 29 September 2009, Representation of half a smiley smile, T-139/08, EU:T:2009:364, paragraph 26).

19 In the second place, it is also settled case-law that 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 of 21 April 2015, Louis Vuitton Malletier v OHIM - Nanu-Nana (Representation of a grey chequerboard pattern), T-360/12, not published, EU:T:2015:214, paragraph 20 and the case-law cited).

20 However, it should be borne in mind that, for the purpose of applying those criteria, the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of a word or figurative mark consisting of a sign unrelated to the appearance of the products it denotes (judgment of 21 April 2015, Representation of a grey chequerboard pattern, T-360/12, not published, EU:T:2015:214, paragraph 21).

21 Average consumers are not in the habit...

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