JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
19 October 2022 (*)
(EU trade mark – Invalidity proceedings – International registration designating the European Union – Figurative mark representing a chequerboard pattern – Absolute ground for invalidity – No distinctive character acquired through use – Article 7(3) and Article 51(2) of Regulation (EC) No 40/94 (now Article 7(3) and Article 59(2) of Regulation (EU) 2017/1001) – Overall assessment of the evidence of distinctive character acquired through use – Geographical scope of the evidence of distinctive character acquired through use – Evidence of use of the mark on the internet – Evidence regarding infringement proceedings)
In Case T‑275/21,
Louis Vuitton Malletier, established in Paris (France), represented by P. Roncaglia, N. Parrotta and P.-Y. Gautier, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Norbert Wisniewski, residing in Warsaw (Poland),
THE GENERAL COURT (Tenth Chamber),
composed, at the time of the deliberations, of A. Kornezov (Rapporteur), President, E. Buttigieg and K. Kowalik-Bańczyk, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 24 March 2022,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, Louis Vuitton Malletier, seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 February 2021 (Case R 1307/2020-5) (‘the contested decision’).
Background to the dispute
2 On 25 June 2015, Mr Norbert Wisniewski filed an application with EUIPO for a declaration of invalidity of the effects of international registration No 986207 designating, inter alia, the European Union, which had been obtained by the applicant from the International Bureau of the World Intellectual Property Organisation (WIPO) on 4 November 2008.
3 The mark covered by the international registration is the following figurative sign:
4 The goods covered by the contested mark, in respect of which a declaration of invalidity was sought, were in Class 18 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 corresponded 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’.
5 The grounds relied on in support of the application for a declaration of invalidity were those set out in 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 Article 198(2), Article 59(1)(a) and Article 7(1)(b), (c) and (e) of Regulation 2017/1001 respectively).
6 On 14 December 2016, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) thereof.
7 On 3 February 2017, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
8 By decision of 22 November 2018 in Case R 274/2017-2, the Second Board of Appeal of EUIPO dismissed the appeal. It found that the contested mark was inherently devoid of distinctive character and that the applicant had not demonstrated that the contested mark had acquired distinctive character through use.
9 By application lodged at the Court Registry on 20 February 2019, the applicant brought an appeal against the decision of the Second Board of Appeal, registered under number T‑105/19.
10 By judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern) (T‑105/19, not published, EU:T:2020:258), the Court annulled the decision of the Second Board of Appeal. After rejecting the applicant’s arguments seeking to challenge the lack of inherent distinctive character of the contested mark, the Court found that the Board of Appeal had infringed Article 59(2) of Regulation 2017/1001, as interpreted by the Courts of the European Union, in that it had failed to examine all the relevant evidence submitted by the applicant in order to demonstrate the distinctive character acquired through use of the contested mark and to carry out an overall assessment of that evidence.
11 Following the judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258), the case was remitted to the Fifth Board of Appeal, which, in the contested decision, after examining all the evidence submitted by the applicant, held that the applicant had not demonstrated distinctive character acquired through the use of the contested mark and dismissed the action.
Forms of order sought
12 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– alter the contested decision, by holding that the contested mark has acquired distinctiveness through use;
– order EUIPO and the applicant for a declaration of invalidity to pay the costs incurred by the applicant during these proceedings.
13 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs incurred by EUIPO.
Law
14 In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 7(3) and of Article 59(2) of Regulation 2017/1001.
15 As the applicant obtained the international registration on 4 November 2008, with an accepted priority date of 27 May 2008, the facts of this case are governed by the material provisions of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (see, to that effect and by analogy, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
16 Consequently, in this case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 7(3) and to Article 59(2) of Regulation 2017/1001 should be understood as referring to Article 7(3) and Article 51(2) of Regulation No 40/94 respectively, which are identical in content.
17 That said, it should be noted, as a preliminary point, that in its judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258), which has now become final, the Court ruled that the Board of Appeal was correct in finding that the contested mark lacked inherent distinctive character. Consequently, this action relates solely to whether the contested mark has acquired a distinctive character in consequence of the use which has been made of it, within the meaning of Article 7(3) and Article 51(2) of Regulation No 40/94.
18 According to Article 51(2) of Regulation No 40/94, where an EU trade mark has been registered in breach of, inter alia, Article 7(1)(b) thereof, which provides that trade marks which are devoid of any inherent distinctive character are not to be registered, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. Under Article 7(3) of Regulation No 40/94, paragraph 1(b) of that article does not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
19 Acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking, because of that mark (see judgment of 20 November 2019, Rezon v EUIPO (imot.bg), T‑101/19, not published, EU:T:2019:793, paragraph 46 and the case-law cited).
20 The burden of proof of distinctive character acquired through use, pursuant to Article 51(2) of Regulation No 40/94 and Article 7(3) thereof, rests with the proprietor of the mark at issue (see, to that effect, judgment of 4 April 2019, Stada Arzneimittel v EUIPO (Representation of two facing arches), T‑804/17, not published, EU:T:2019:218, paragraph 49 and the case-law cited).
21 Accordingly, in the context of invalidity proceedings based on absolute grounds for refusal of a mark, the proprietor of that mark is required to prove either that it had acquired distinctive character owing to the use that had been made of it prior to the date on which the application for registration was filed, or that the mark had acquired such character owing to the use that had been made of it between the date of its registration and the date of application for a declaration of invalidity (see, to that effect, judgment of 15 December 2016, Mondelez UK Holdings & Services v EUIPO – Société des produits Nestlé (Shape of a chocolate bar), T‑112/13, not published, EU:T:2016:735, paragraph 117 and the case-law cited).
22 According to the case-law, in order to determine whether a mark has acquired distinctive character through the use that has been made of it, the competent authority must carry out an examination by reference to the actual situation and make an overall assessment of the evidence that that mark has come to identify the goods or services concerned as originating from a particular undertaking (see judgment of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 40 and the case-law cited).
23 In order to determine whether a mark has acquired distinctive character, account must be taken, inter alia, of the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls (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 90 and the case-law cited).
24 As regards the geographical scope of the proof of distinctive character acquired through use, it should be recalled that a sign may be registered as an EU trade mark under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, in consequence of the use that has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). It follows that, with regard to a mark that is, ab initio, devoid of distinctive character in all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (see judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 75 and 76 and the case-law cited).
25 In that regard, the Court of Justice has stated that it would be unreasonable to require proof of such acquisition for each individual Member State (see, to that effect, judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 62).
26 In that context, a distinction must be made between, first, the facts to be proved, namely the acquisition of distinctive character through use by a sign that is devoid of inherent distinctive character, and, secondly, the means of proving such facts. No provision of Regulation No 40/94 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State (judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 79 and 80).
27 Thus it is possible that evidence of acquisition of distinctive character through use, by a particular sign, is relevant with regard to several Member States, or even to the whole of the European Union. In particular, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the products and services that are present on the national market of the second (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 80 to 82).
28 Although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 40/94, a mark that is, ab initio, devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must nevertheless be capable of demonstrating acquisition thereof throughout the Member States of the European Union. Indeed, in the case of a mark that does not have inherent distinctive character throughout the European Union, the distinctive character acquired through use of that mark must be shown throughout that territory, and not only in a substantial part or the majority of the territory of the European Union, and consequently, although such proof may be produced globally for all the Member States concerned or separately for different Member States or groups of Member States, it is not, however, sufficient that the party with the burden of providing such evidence merely produces evidence of such acquisition that does not cover part of the European Union, even a part consisting of only one Member State (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 83 and 87).
29 In addition, it should be borne in mind that, in EU trade mark law, the principle of unfettered adduction of evidence applies, which confers on the parties the possibility of producing before the Courts of the European Union any evidence lawfully obtained that they consider relevant to support their arguments. That unfettered adduction of evidence contributes to guaranteeing the parties a right to an effective remedy, enshrined in Article 47 of the Charter of Fundamental Rights of the European Union (see judgment of 16 December 2020, H.R. Participations v EUIPO – Hottinger Investment Management (JCE HOTTINGUER), T‑535/19, not published, EU:T:2020:614, paragraph 65 and the case-law cited).
30 Furthermore, according to settled case-law, the principle that prevails in EU law is that of the unfettered evaluation of evidence, from which it follows, in particular, that the only relevant criterion for the purpose of assessing the probative value of evidence lawfully adduced relates to its credibility. Thus, in order to assess the probative value of a piece of evidence, it is necessary to take account, in particular, of the person from whom the evidence originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the evidence appears to be sound and reliable (see judgment of 9 September 2020, Glaxo Group v EUIPO (Shade of the colour purple), T‑187/19, not published, EU:T:2020:405, paragraph 92 and the case-law cited).
31 Lastly, it must be noted that the burden of proof imposed on the proprietor of the contested mark of demonstrating distinctive character acquired through the use of that mark must not be unreasonable. That requirement forms part of the general principles of EU law and, in particular, of the right to sound administration, also enshrined in Article 41 of the Charter of Fundamental Rights (see, to that effect, judgment of 8 July 2008, Huvis v Council, T‑221/05, not published, EU:T:2008:258, paragraph 77).
32 It is in the light of those considerations that it is appropriate to examine the single plea in law raised by the applicant, which is divided, in essence, into two parts alleging, first, errors in the approach taken by the Board of Appeal in the contested decision in examining the distinctive character acquired through use of the contested mark and, secondly, errors in the individual and overall assessments carried out by the Board of Appeal of the evidence submitted by the applicant for the purpose of demonstrating the distinctive character acquired through use of that mark.
The approach taken by the Board of Appeal in assessing the distinctive character acquired through the use of the contested mark (first part)
33 In the contested decision, the Board of Appeal decided to examine first whether the contested mark had acquired distinctive character through the use that had been made of it in Bulgaria, Estonia, Latvia, Lithuania, Slovakia and Slovenia (together, ‘the Member States concerned’), stating that it would proceed to such an examination in respect of the other EU Member States only if distinctive character acquired through use had been demonstrated for the Member States concerned. The Member States concerned were, together with Malta, the Member States in which the applicant did not have any stores. To that end, first, the Board of Appeal examined the various pieces of evidence submitted by the applicant individually, by items or by groups of items. Secondly, it assessed that evidence as a whole, in relation to each of the Member States concerned. Thirdly, it held, in the light of all the evidence submitted by the applicant, that the applicant had not demonstrated that the contested mark had acquired distinctive character through its use in the Member States concerned and that, consequently, Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) thereof, was not applicable in the circumstances, there being no need to examine whether the contested mark had acquired distinctiveness through its use in the other EU Member States.
34 The applicant submits, in essence, that the Board of Appeal based its findings on a limited amount of evidence, specifically regarding the Member States concerned, and thus failed to make an overall assessment of all the evidence presented by the applicant. In so doing, the Board of Appeal disregarded the guidance stemming from the judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258).
35 EUIPO disputes the applicant’s arguments.
36 First, as the Court has already ruled in the judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258), the Board of Appeal was able, for reasons of procedural economy, to limit its analysis to the Member States concerned, given that, if it were to find that the evidence submitted by the applicant, considered as a whole, was insufficient to prove that distinctive character had been acquired through use in those Member States, it was entitled to conclude that the mark at issue had not acquired distinctive character through use, without any need to assess whether the mark at issue had acquired such distinctive character in the other EU Member States (see, to that effect, judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 80).
37 Secondly, the applicant’s argument that the Board of Appeal based its findings on a limited amount of evidence must be rejected. Unlike the disputed decision that gave rise to the judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258), in which the Board of Appeal limited itself to analysing only 8 of the 68 exhibits containing evidence submitted by the applicant before EUIPO for the purpose of demonstrating distinctive character acquired through use of the contested mark, taking into consideration only the evidence referring specifically to the Member States concerned, the Board of Appeal did, in the present case, examine all the evidence submitted by the applicant, including the evidence not referring expressly to the Member States concerned.
38 Thirdly, contrary to what the applicant is claiming, the Board of Appeal did, in paragraphs 74 to 131 of the contested decision, examine whether, for each of the Member States concerned, the relevant evidence submitted by the applicant, considered as a whole, was capable of demonstrating that the contested mark had acquired distinctive character through its use in that Member State. In so doing, the Board of Appeal did carry out an overall assessment of all the relevant evidence, as required by the case-law.
39 It follows that the first part of the single plea must be rejected as unfounded.
Assessment by the Board of Appeal of the evidence submitted by the applicant (second part)
40 The applicant submits, in essence, that the Board of Appeal made a number of errors in assessing the evidence the applicant had submitted in order to demonstrate the distinctive character acquired through use of the contested mark. According to the applicant, the overall assessment of all of those pieces of evidence, in particular those c