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JUDGMENT OF THE GENERAL COURT (Second Chamber)

4 December 2015 (*)

(Community trade mark — International registration designating the European Community — Figurative mark representing parallel stripes on a shoe — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)

In Case T‑3/15,

K-Swiss Inc., established in Westlake Village, California (United States), represented by R. Niebel and M. Hecht, lawyers,

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,

respondent,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 30 October 2014 (Case R 1093/2014-2), concerning the international registration, designating the European Community, of a figurative mark representing parallel stripes on a shoe,

THE GENERAL COURT (Second Chamber),

composed of 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 6 January 2015,

having regard to the response lodged at the Court Registry on 24 March 2015,

having regard to the decision of 13 April 2015 not to allow the lodging of a reply,

having regard to the fact that no application for a hearing was made 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 rule on the action 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 23 May 2013, the applicant, K-Swiss Inc., pursuant to Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), filed with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) an application for protection in the European Union of International Registration No 932758.

2        The registration for which protection has been sought is the following figurative sign:

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3        The goods in respect of which protection has been sought are in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, at the latest stage of the application, as amended by letter of 8 October 2013, to the following description: ‘athletic shoes, namely tennis shoes, basketball shoes, cross-country and jogging shoes and casual shoes’.

4        By decision of 4 March 2014, the examiner refused to grant protection for the mark in its entirety pursuant to Article 7(1)(b) of Regulation No 207/09.

5        On 23 April 2014, the applicant filed an appeal against the examiner’s decision.

6        By decision of 30 October 2014 (‘the contested decision’), the Second Board of Appeal dismissed the appeal.

7        In the contested decision, the Board of Appeal, in essence, stated the following: in the first place, the five parallel stripes placed on the shoe do not have any original feature and are nothing more than a rather banal generic embellishment in view of the widespread practice of placing a stripe pattern on sports shoes (paragraph 21 of the contested decision); in the second place, with regard to the relevant public’s attention, while it is possible that the consumer will be more attentive to the choice of branded goods, in particular when he or she buys particularly expensive shoes, such an approach on the part of the consumer cannot be presumed without evidence with regard to all goods in that sector (paragraph 22 of the contested decision); in the third place, the evidence provided by the applicant does not demonstrate that it is the usual practice of OHIM to register, as a mark for sports shoes, designs consisting only of stripes (paragraph 23 of the contested decision); in the fourth place, the legality of the decisions of the Boards of Appeal must be assessed on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of OHIM (paragraph 26 of the contested decision).

 Procedure and forms of order sought

8        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

9        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

10      The applicant raises two pleas in law in support of its claim for annulment, the first alleges infringement of Article 7(1)(b) of Regulation No 207/2009, while the second alleges infringement of Article 76(1) of that regulation.

 First plea in law

11      According to Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character cannot be registered.

12      According to consistent case-law, the distinctive character of a trade mark within the meaning of Article 7(1)(b) of Regulation No 207/2009 means that the mark in question makes it possible to identify the product in respect of which registration has been applied for as originating from a particular undertaking, and thus to distinguish that 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 of 21 October 2004 in OHIM v Erpo Möbelwerk, C‑64/02 P, ECR, EU:C:2004:645, paragraph 42).

13      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 12 above, paragraph 33, EU:C:2004:260, and of 22 June 2006 in Storck v OHIM, C‑25/05 P, ECR, EU:C:2006:422, paragraph 25).

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

15      In the present case, as is apparent from the OHIM file, the mark applied for is described in the application for international registration in Spanish, English and in French respectively as follows: ‘La marca consista en dos series de cinco franjas paralelas cada una, las cuales se extienden de la parte central (frontal) de la pala del zapato hacia la suela’; ‘The trade mark consists of two sets of five parallel stripes, each set of five stripes extending downward from the central, frontal, portion of the shoe upper to the sole of the shoe’; ‘La marque consiste en une chaussure ornée de deux séries de cinq bandes allant chacune de la partie frontale et centrale de la chaussure vers sa semelle’.

16      Despite the wording of the French version of the application for international registration cited in the preceding paragraph, and as is clear from the wording of the Spanish and English versions, the view must be taken that the mark applied for is presented in the form of a design intended to be placed on part of the goods concerned, and not in the form of a two-dimensional representation of a shoe. Moreover, the Board of Appeal found in the contested decision, in particular in paragraph 15, that the mark for which protection was sought consisted of stripes placed on a shoe, and the parties, in their pleadings, are in agreement on that point.

17      With regard to the Board of Appeal’s reasons for dismissing the appeal, it considered that, in view of its inherently banal character and the fact that it did not depart sufficiently from the widespread practice in the sector of placing a stripe pattern on sports shoes, the mark applied for would not be perceived as an indication of the commercial origin of the goods concerned (paragraph 21 of the contested decision).

18      In this regard, it must first be stated, as the Board of Appeal correctly pointed out in paragraph 21 of the contested decision, that stripes are nothing more than a rather banal generic embellishment.

19      The mark applied for consists of a simple juxtaposition of five sloping, parallel stripes, the size of which varies so as to correspond to that of the side of the shoe.

20      In addition, a design such as that described in the preceding paragraph, which is simple and banal, is unlikely to acquire distinctive character simply because it is placed on the side of the shoe.

21      First, as the applicant itself stated in paragraph 20 of the application, many manufacturers of sports shoes or casual shoes use relatively simple patterns of lines or stripes which they also place on the side of the shoe.

22      Secondly, the fact that the sign in question extends to the full height of the side of the shoe confirms its lack of originality, since the variation in the size of the stripes appears to be naturally determined by the actual shape of the object on which those stripes are placed (paragraph 21 of the contested decision). This contributes to preventing the sign from being apprehended without the product’s inherent qualities being perceived simultaneously (see, to that effect, judgment of 9 October 2002 in Glaverbel v OHIM (Glass-sheet surface), T‑36/01, ECR, EU:T:2002:245, paragraph 28).

23      Consequently, the placing of the sign at issue on the side of the shoe is not likely to attract the attention of the relevant public and to distinguish it from other designs applied to the side of shoes. The sign at issue, as placed on the side of the shoe, cannot therefore immediately be apprehended as constituting an indication of the commercial origin of the goods concerned.

24      The foregoing conclusion cannot be called into question by the arguments put forward by the applicant.

25      In the first place, the applicant claims that, for the purposes of determining whether a sign is distinctive, and therefore capable of being registered as a mark, it is essential that the customs of the market in question be taken into account. The applicant states that the practice of placing their mark on the side of the shoes is a common practice of manufacturers of sports shoes. According to the applicant, because of that practice the average consumer will pay particular attention to the shapes placed there and will naturally consider them to be trade marks.

26      Although the information provided by the applicant may show that many manufacturers of sports shoes have developed a practice such as that described in the preceding paragraph or that sellers display in shops the side of the shoes on which the mark appears, that information still does not make it possible to determine that the average consumer has learned to establish an automatic link between the sign featuring on the side of a sports shoe and a particular manufacturer and that that consumer will therefore necessarily perceive any geometric shape placed on the side of a sports shoe as being a trade mark.

27      Furthermore, it is possible that, even if some simple geometrical shapes placed on the side of the shoe make it possible for the average consumer to establish a link between the product on which those shapes are placed and a specific manufacturer, the distinctive value of those signs may be explained less by their positioning on the product than by the intensive use which has in fact been made of them on the market.

28      In that regard, it must be stated that, contrary to what the applicant maintains, the case-law which it cites does not make it possible to conclude that the General Court or the Court of Justice have already held that simple geometric shapes placed on the side of a sports shoe necessarily have a distinctive function.

29      Thus, in paragraph 53 of the judgment of 13 April 2011 in Deichmann v OHIM (Representation of a chevron with dotted lines), T‑202/09, EU:T:2011:168, the Court at most merely made reference to the existence of a ‘practice of placing a sign on the exterior of the shoes as an indication of their commercial origin which essentially concerns sports shoes and casual shoes’. In paragraph 52 of the judgment in Representation of a chevron with dotted lines, EU:T:2011:168, the Court was also careful to explain that the assertion that, in the case of sports shoes and casual shoes, the consumer would make his or her choice almost exclusively on the basis of the recognisable signs on the shoes was only assumed to be correct.

30      The same considerations apply mutatis mutandis to paragraphs 49 to 51 and 77 of the judgment of 6 November 2014 in Vans v OHIM (Representation of a wavy line), T‑53/13, ECR (Extracts), EU:T:2014:932, which the applicant also invokes.

31      With regard to the Court of Justice, in the order of 26 April 2012 in Deichmann v OHIM, C‑307/11 P, EU:C:2012:254, paragraph 60, it merely confirmed the reasoning followed by the General Court in the judgment in Representation of a chevron with dotted lines, cited in paragraph 29 above, EU:T:2011:168, according to which the fact that the consumer might make his choice, in respect of sports shoes and casual shoes, almost exclusively on the basis of the recognisable signs on the shoes was irrelevant for the purposes of recognising the mark at issue as having a distinctive character, inasmuch as registration was sought for orthopaedic shoes and shoes in the general sense of the term. The Court of Justice, in its appellate jurisdiction, has therefore not confirmed or rebutted the assertion referred to in paragraph 29 above.

32      The applicant’s argument must therefore be rejected.

33      In any event, even if it were accepted that the average consumer pays particularly close attention to the shapes placed on the side of the shoe, to the point that that consumer considers that those shapes generally constitute trade marks, the applicant has not adduced sufficient evidence to establish that, in view of the banal nature of the sign at issue, the average consumer would consider that sign to be an indication of the origin of the goods at issue and not a mere decorative element.

34      Moreover, to accept that every geometric shape, even the most simple, has distinctive character because it features on the side of a sports shoe would make it possible for some manufacturers to appropriate simple, and above all decorative, shapes, which must remain accessible to everyone, with the exception of those situations in which the distinctive character of the sign has been acquired by use.

35      In the second place, even if it were assumed, as the applicant maintains, that sports shoes and casual shoes are considered to be fashion items by the average consumer, this would still not lead to the conclusion that, for that reason alone, the consumer would be particularly attentive when purchasing any article of that type.

36      The Court has already found, in relation to the clothing sector, that this comprises goods which vary widely in quality and price and that, while it is possible that the consumer may be more attentive to the choice of mark when he or she buys a particularly expensive item of clothing, such an approach on the part of the consumer cannot be presumed without evidence with regard to all goods in that sector (judgment of 6 October 2004 in New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, ECR, EU:T:2004:293, paragraph 43).

37      That finding also applies to the sector of sports shoes and casual shoes.

38      In the third place, the applicant submits that the Board of Appeal overlooked and disregarded without good reason its own decision-making practice.

39      According to the 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 to 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 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 (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).

40      In the present case, it is apparent from the contested decision that the Board of Appeal carried out a full and specific examination of the mark applied for before refusing to register it. Moreover, that examination led the Board of Appeal correctly to uphold the absolute ground for refusal of registration in Article 7(1)(b) of Regulation No 207/2009 and thus to refuse registration of the mark applied for.

41      Since the examination of the mark applied for could not have led to any different outcome, the applicant’s claims relating to the failure to take into consideration the registration of other marks cannot succeed.

42      It follows from all of the foregoing that, contrary to what the applicant contends, the Board of Appeal acted correctly in law in concluding that the mark applied for was devoid of distinctive character.

43      Consequently, the first plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, must be rejected.

 Second plea in law

44      The applicant alleges infringement of Article 76(1) of Regulation No 207/2009, in that the Board of Appeal ought to have supplemented the evidence at its disposal.

45      In that regard, although it is true that under Article 76(1) of Regulation No 207/2009 OHIM must examine of its own motion the relevant facts that could lead it to apply an absolute ground for refusal set out in Article 7(1) of that regulation, the fact none the less remains, as was stated in paragraph 14 above, that if an applicant claims that a trade mark applied for is distinctive, despite OHIM’s analysis, it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has an intrinsic distinctive character.

46      It was therefore not for the Board of Appeal to supplement the evidence that was available to it.

47      In addition, as is apparent from the first plea in law relied on by the applicant, the latter has failed to provide specific and substantiated information to show that the mark applied for has intrinsic distinctive character.

48      Thus, contrary to what the applicant maintains, the view cannot be taken that the Board of Appeal failed to fulfil its obligations under Article 76(1) of Regulation No 207/2009, and the second plea in law must also be rejected.

49      It follows that the action must be dismissed.

 Costs

50      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 K-Swiss Inc. to pay the costs.

Martins Ribeiro

Gervasoni

Madise

Delivered in open court in Luxembourg on 4 December 2015.

[Signatures]


* Language of the case: English.