Language of document : ECLI:EU:T:2020:258

JUDGMENT OF THE GENERAL COURT (Tenth Chamber)

10 June 2020 (*)

(EU trade mark — Invalidity proceedings — International registration designating the European Union — Figurative mark representing a chequerboard pattern — Absolute grounds for refusal — No distinctive character — Well-known facts — Distinctive character acquired through use — Overall assessment of the evidence of the distinctive character acquired through use — Article 7(1)(b) and (3) of Regulation (EU) 2017/1001 — Article 59(1) and (2) of Regulation 2017/1001)

In Case T‑105/19,

Louis Vuitton Malletier, established in Paris (France), represented by P. Roncaglia, G. Lazzeretti, F. Rossi, N. Parrotta and P.-Y. Gautier, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Norbert Wisniewski, residing in Warsaw (Poland),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 22 November 2018 (Case R 274/2017-2) relating to invalidity proceedings between Mr Wisniewski and Louis Vuitton Malletier.

THE GENERAL COURT (Tenth Chamber),

composed of A. Kornezov (Rapporteur), President, E. Buttigieg and K. Kowalik-Bańczyk, Judges,

Registrar: R. Ukelyte, Administrator,

having regard to the application lodged at the Court Registry on 20 February 2019,

having regard to the response lodged at the Court Registry on 14 May 2019,

having regard to the order of 12 July 2019 refusing to grant Mr Wisniewski the status of intervener,

having regard to the reassignment of the case to the Tenth Chamber,

further to the hearing on 22 January 2020,

gives the following

Judgment

 Background to the dispute

1        On 4 November 2008, the applicant, Louis Vuitton Malletier, obtained, from the International Bureau of the World Intellectual Property Organisation (WIPO), international registration No 986207 designating, in particular, the European Union (‘the international registration’).

2        The mark in respect of which the international registration was granted was the following figurative sign:

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3        The goods in respect of which registration was sought are in Class 18 within the meaning 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: ‘Boxes of leather or imitation leather, trunks, suitcases, traveling sets (leatherware), traveling bags, luggage, garment bags for travel, hat boxes of leather, vanity cases (not fitted), toiletry bags (empty), backpacks, satchels, handbags, beach bags, shopping bags, shoulder-strap bags, carrier bags, shoulder bags, waist bags, purses, attaché cases, briefcases (leatherware), school bags, document holders, clutch bags, wallets, change purses, key cases, card cases (wallets), umbrellas, sunshades’.

4        The international registration was received at the European Union Intellectual Property Office (EUIPO) on 18 December 2008, was published in Community Trade Marks Bulletin No 51/2008 of 22 December 2008 and was recognised as having the same protection as that granted to a European Union trade mark on 13 November 2009 (Community Trade Marks Bulletin No 45/2009 of 23 November 2009).

5        On 25 June 2015, Mr Norbert Wisniewski (‘the applicant for a declaration of invalidity’) filed an application with EUIPO for a declaration of invalidity of the effects of the international registration, 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)), in particular Article 158(2) thereof, read in conjunction with Article 52(1)(a) and Article 7(1)(b), (c) and (e) thereof (now, respectively, Article 198(2), Article 59(1)(a) and Article 7(1)(b), (c) and (e) of Regulation 2017/1001).

6        By decision of 14 December 2016, pursuant to Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(b) of Regulation No 207/2009, the Cancellation Division upheld the application for a declaration of invalidity in respect of all the goods covered by the international registration (‘the Cancellation Division’s decision’). The Cancellation Division considered that there was no need to examine the absolute grounds for refusal set out in Article 7(1)(c) and (e) of Regulation No 207/2009 and concluded that Article 52(2) of Regulation No 207/2009 (now Article 59(2) of Regulation 2017/1001) was not applicable to the present case.

7        On 3 February 2017, the applicant filed a notice of 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 Cancellation Division’s decision, requesting that it be annulled.

8        By decision of 22 November 2018 in Case R 274/2017-2, the Second Board of Appeal of EUIPO dismissed the appeal (‘the contested decision’).

 Forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the applicant for a declaration of invalidity to pay the costs which it has incurred.

10      EUIPO contends that the Court should:

–        dismiss the action in its entirety;

–        order the applicant to pay the costs incurred by EUIPO.

 Law

11      The applicant relies on two pleas in law, the first alleging an incorrect assessment by the Board of Appeal of the inherent distinctive character of the mark at issue and the second alleging an error in the assessment of the distinctive character acquired through use of the mark at issue.

 The first plea in law

12      In support of its first plea, alleging an incorrect assessment by the Board of Appeal of the inherent distinctive character of the mark at issue, the applicant essentially puts forward, two complaints. The applicant argues that the contested decision is contrary first, to the rules concerning the burden of proof in invalidity proceedings and, second, to the principle of equality of arms, to the right to a fair trial and to the applicant’s rights of defence.

 The alleged infringement of the rules on the burden of proof in invalidity proceedings

13      The applicant notes that, according to settled case-law, the mark at issue enjoys a presumption of validity from the time it was registered. Therefore, in the context of invalidity proceedings, it is for the applicant for a declaration of invalidity to provide strong and conclusive evidence that calls into question the validity of the mark at issue, and it is for the Board of Appeal to examine whether the mark at issue lacked inherent distinctive character in the light of the evidence presented by that applicant for a declaration of invalidity.

14      However, according to the applicant, the evidence provided by the applicant for a declaration of invalidity was sparse and lacked probative value. The Board of Appeal compensated for the lack of adequate evidence provided by the applicant for a declaration of invalidity by basing its decision on allegedly well-known facts, which, moreover, have not been established. Therefore, since the Board of Appeal, in essence, proceeded to carry out a fresh assessment of its own motion of the inherent distinctive character of the mark at issue, it infringed the rules on the burden of proof in invalidity proceedings.

15      EUIPO disputes the applicant’s arguments.

16      In the present case, the Board of Appeal noted, in paragraph 66 of the contested decision, that the mark at issue consisted of a pattern intended to be placed on part of the goods at issue or to cover the whole of their surface area and thus corresponded to the outward appearance of the goods. To assess the inherent distinctive character of such a mark, the Board of Appeal relied on the principles applicable to three-dimensional marks, in accordance with the case-law (see, to that effect, judgments of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 34; 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, paragraphs 24, 25 and 31; and of 21 April 2015, Louis Vuitton Malletier v OHMI — Nanu-Nana (Representation of a brown and beige chequerboard pattern), T‑359/12, EU:T:2015:215, paragraphs 24, 25 and 31), which is moreover not disputed by the parties.

17      According to those principles, only a mark which departs significantly from the norm or customs of the sector of the goods and services at issue and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001 (see, to that effect, judgments of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 33; of 21 April 2015, Representation of a grey chequerboard pattern, T‑360/12, not published, EU:T:2015:214, paragraph 23 and the case-law cited; and of 21 April 2015, Representation of a brown and beige chequerboard pattern, T‑359/12, EU:T:2015:215, paragraph 23 and the case-law cited).

18      In the contested decision, the Board of Appeal began by recalling, in paragraph 69, that, in its assessment of the inherent distinctive character of the mark at issue, nothing prevented it from relying on well-known facts. It then noted, in paragraphs 70, 73 and 75 to 78 of the contested decision, with reference to the judgments of 21 April 2015, Representation of a grey chequerboard pattern (T‑360/12, not published, EU:T:2015:214), and of 21 April 2015, Representation of a brown and beige chequerboard pattern (T‑359/12, EU:T:2015:215) that, first, it was a well-known fact that the chequerboard pattern had always existed and had been used in the decorative arts sector, and that it was a basic and commonplace figurative pattern that did not contain any notable variation in relation to the conventional representation of chequerboards and was therefore the same as the traditional form of such a pattern, with the result that, even when applied to goods such as those in Class 18, that pattern did not differ from the norm or customs of the sector, secondly, the weft and warp pattern that appears on the inside of each of the chequerboard squares created the visual effect of interlacing two different fabrics, which is customary as regards goods in Class 18 and, thirdly, the juxtaposition of the chequerboard pattern and the weft and warp pattern, when applied to the goods at issue in Class 18, resulted in a commonplace and everyday pattern that did not diverge from the norms or customs of the sector concerned. On those grounds, the Board found that the mark at issue did not depart significantly from the norm or customs of the sector concerned.

19      It is thus apparent from the contested decision that the Board of Appeal based its assessment regarding the lack of inherent distinctive character of the mark at issue, in particular, on well-known facts.

20      It is therefore necessary to examine, in the first place, whether the Board of Appeal was entitled to base its assessment regarding the lack of inherent distinctive character of the mark at issue on well-known facts and, in the second place, whether the fact that the mark at issue was a basic and commonplace pattern that did not depart significantly from the norm or customs of the sector concerned could be regarded as a well-known fact.

21      In the first place, as regards the question whether the Board of Appeal was entitled to base its decision on well-known facts in the context of invalidity proceedings, it must be recalled that, in accordance with settled case-law, pursuant to Article 95(1) of Regulation 2017/1001, when examining absolute grounds for refusal, such as that concerning a lack of inherent distinctive character, EUIPO examiners and, on appeal, the Boards of Appeal of EUIPO are required to examine the facts of their own motion in order to determine whether the mark for which registration is sought comes within one of the absolute grounds for refusal set out in Article 7 of that regulation. It follows that the competent bodies of EUIPO may be led to base their decisions on facts which have not been invoked by the applicant (see, to that effect, judgment of 29 March 2019, All Star v EUIPO — Carrefour Hypermarchés (Shape of a shoe sole), T‑611/17, not published, EU:T:2019:210, paragraph 43 and the case-law cited).

22      In invalidity proceedings, however, the Board of Appeal cannot be required to carry out afresh the examination conducted at the time of registration by the competent EUIPO bodies, of their own motion, of the relevant facts. It follows from the provisions of Articles 59 and 62 of Regulation 2017/1001 that the EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the review carried out by EUIPO in the examination of an application for registration (see, to that effect, judgment of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 44 and the case-law cited).

23      By virtue of that presumption of validity, EUIPO’s obligation, under Article 95(1) of Regulation 2017/1001, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by the examiners and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. In invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (see, to that effect, judgment of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 45 and the case-law cited). Thus, pursuant to the last sentence of Article 95(1) of Regulation 2017/1001, which consolidates the Court’s previous case-law (see judgment of 24 October 2019, Rubik’s Brand v EUIPO — Simba Toys (Shape of a cube with surfaces having a grid structure), T‑601/17, under appeal, not published, EU:T:2019:765, paragraph 82), in the context of invalidity proceedings under Article 59 of that regulation, EUIPO is to limit its examination to the grounds and arguments submitted by the parties.

24      However, while the presumption of validity of the registration restricts EUIPO’s obligation to an examination of the relevant facts, it does not preclude it, in particular in view of the elements put forward by the party challenging the validity of the mark at issue, from relying, not only on those arguments and any evidence produced by that party in its application for a declaration of invalidity, but also on well-known facts observed by EUIPO in the context of the invalidity proceedings (see, to that effect, judgment of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 46 and the case-law cited).

25      Thus, where a party contests the validity of a registered mark relying on evidence in support of its application for a declaration of invalidity, the Board of Appeal is required to examine that evidence and to take into account the existence of well-known facts that the examiner might have omitted to take into consideration in the registration procedure (see judgment of 3 May 2018, Raise Conseil v EUIPO — Raizers (RAISE), T‑463/17, not published, EU:T:2018:249, paragraph 28 and the case-law cited).

26      In the present case, while assessing the inherent distinctive character of the mark at issue, the Board of Appeal took into account, in accordance with the case-law, the arguments and evidence invoked by the applicant for a declaration of invalidity in support of his invalidity request (see, in that regard, paragraph 70 of the contested decision) and the well-known facts that the examiner might have omitted to take into consideration in his analysis of the international registration in 2008.

27      In particular, in his application for a declaration of invalidity and his observations before the Cancellation Division, the applicant for a declaration of invalidity had claimed that the mark at issue was a simple, basic and commonplace pattern that did not differ from the norm or customs of the sector because it was one of the oldest and most common patterns, in particular in respect of textile goods, bags and the like, including the goods in Class 18. Moreover, the applicant for a declaration of invalidity had provided evidence in that regard, namely photos of goods bearing the chequerboard design, in his application for a declaration of invalidity and in Annex 2 to his observations before the Cancellation Division, and images of patterns registered as Community designs, in Annex 1 to his observations before the Cancellation Division. Lastly, the applicant for a declaration of invalidity had referred to the judgments of 21 April 2015, Representation of a grey chequerboard pattern (T‑360/12, not published, EU:T:2015:214), and of 21 April 2015, Representation of a brown and beige chequerboard pattern (T‑359/12, EU:T:2015:215).

28      Thus, the Board of Appeal assessed whether the mark at issue was basic and commonplace in view of the arguments and evidence invoked by the applicant for a declaration of invalidity. Contrary to the applicant’s claims, the Board of Appeal did not carry out a fresh assessment of its own motion; rather it merely examined the arguments and evidence invoked by the applicant for a declaration of invalidity and found these to be substantiated by well-known facts.

29      Hence, the fact that, in addition to the arguments and evidence invoked by the applicant for a declaration of invalidity, the Board of Appeal took into account a well-known fact when finding that the mark at issue lacked inherent distinctive character, is in no way contrary to the rules on the burden of proof (see, to that effect, judgments of 21 April 2015, Representation of a grey chequerboard pattern, T‑360/12, not published, EU:T:2015:214, paragraphs 64 and 65, and of 21 April 2015, Representation of a brown and beige chequerboard pattern, T‑359/12, EU:T:2015:215, paragraphs 64 and 65).

30      In the second place, as regards the question whether it is a well-known fact that the mark at issue is basic and commonplace, it should be recalled that, according to settled case-law, well-known facts are defined as facts that are likely to be known by anyone or may be learnt from generally accessible sources (see, to that effect, judgment of 24 October 2018, Bayer v EUIPO — Uni-Pharma (SALOSPIR), T‑261/17, not published, EU:T:2018:710, paragraph 42 and the case-law cited). Where bodies of EUIPO decide to take account of well-known facts, they are not required to establish in their decisions the accuracy of such facts (see, to that effect, judgment of 21 September 2017, Novartis v EUIPO — Meda (Zimara), T‑238/15, not published, EU:T:2017:636, paragraph 123 and the case-law cited). However, an applicant is entitled to produce documents before the Court as evidence of the accuracy — or inaccuracy — of a matter of common knowledge (see judgment of 15 January 2013, Gigabyte Technology v OHIM — Haskins (Gigabyte), T‑451/11, not published, EU:T:2013:13, paragraph 22 and the case-law cited).

31      In the present case, the mark at issue consists, on the one hand, of a regular pattern of squares in two alternating colours, namely blue and beige, as confirmed by the parties during the hearing, which is reminiscent of a chequerboard pattern and, on the other hand, of a weft and warp structure, which constitutes a pattern within a pattern and appears on the inside of the squares in the manner of a weaving method shown by two interlacing threads.

32      As the Board of Appeal correctly stated in paragraph 73 of the contested decision, the chequerboard pattern is a basic and commonplace figurative pattern, since it is composed of a regular succession of squares of the same size which are differentiated by alternating different colours, one light and one dark, namely blue and beige. The pattern thus does not contain any notable variation in relation to the conventional representation of chequerboards and is the same as the traditional form of such a pattern. Even applied to goods such as those falling within Class 18, the pattern in question does not significantly differ from the norm or customs of the sector inasmuch as such goods are generally covered with fabrics of different kinds, and the chequerboard pattern, due to its great simplicity, might constitute precisely one of those patterns. In that regard, as the Board of Appeal rightly pointed out in paragraph 70 of the contested decision, the chequerboard pattern is one that has always existed and has been used in decorative arts, which have an indisputable link with goods in Class 18 (see, to that effect, judgments of 21 April 2015, Representation of a grey chequerboard pattern, T‑360/12, not published, EU:T:2015:214, paragraphs 37 and 38, and of 21 April 2015, Representation of a brown and beige chequerboard pattern, T‑359/12, EU:T:2015:215, paragraphs 37 and 38).

33      As the Board of Appeal also correctly noted, in paragraph 75 of the contested decision, the weft and warp pattern that appears on the inside of each of the chequerboard squares corresponds with the desired visual effect of interlacing two different fabrics, of whatever type they may be (wool, silk, leather, etc.), which is thus customary as regards goods such as those within Class 18 (see, to that effect, judgments of 21 April 2015, Representation of a grey chequerboard pattern, T‑360/12, not published, EU:T:2015:214, paragraph 39, and of 21 April 2015, Representation of a brown and beige chequerboard pattern, T‑359/12, EU:T:2015:215, paragraph 39).

34      The Board of Appeal was correct in concluding therefrom, in paragraph 76 of the contested decision, that, when applied to the goods in Class 18 at issue in the present case, the representation of a chequerboard in the alternating colours of blue and beige and the impression of interlacing threads did not, from a graphic point of view, contain any notable variation in relation to the conventional presentation of such goods, so that the relevant public would in fact perceive only a commonplace and everyday pattern (see, to that effect, judgments of 21 April 2015, Representation of a grey chequerboard pattern, T‑360/12, not published, EU:T:2015:214, paragraph 40, and of 21 April 2015, Representation of a brown and beige chequerboard pattern, T‑359/12, EU:T:2015:215, paragraph 40).

35      The Board of Appeal also rightly noted, in paragraph 77 of the contested decision, that the juxtaposition of two elements that were not in themselves distinctive could not alter the perception of the relevant public as to the absence of distinctive character, a