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Language of document : ECLI:EU:T:2014:817

Case T‑171/12

Peri GmbH

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Application for three-dimensional Community trade mark — Turnbuckle shape — Absolute ground for refusal — Lack of distinctiveness — Article 7(1)(b) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Eighth Chamber), 25 September 2014

1. Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Annulment or variation for reasons appearing after judgment was delivered — Exclusion

(Council Regulation No 207/2009, Arts 65(2), and 76)

2. Community trade mark — Appeals procedure — Action before the EU judicature — Limitation of the list of products and services after the decision of the Board of Appeal — Consequences

(Rules of Procedure of the General Court, Art. 135(4); Council Regulation No 207/2009, Art. 43(1))

3. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Assessment of distinctive character — Criteria

(Council Regulation No 207/2009, Art. 7(1)(b))

4. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Three-dimensional mark constituted by the shape of the product — Distinctive character — Criteria for assessment

(Council Regulation No 207/2009, Art. 7(1)(b))

5. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character

(Council Regulation No 207/2009, Art. 7(1)(b))

1. See the text of the decision.

(see paras 13, 14)

2. In principle, a restriction within the meaning of Article 43(1) of Regulation No 207/2009 to the list of goods or services contained in a Community trade mark application made after the adoption of the decision of the Board of Appeal challenged before the Court cannot affect the legality of that decision, which is the only decision being challenged before the Court. It must also be noted, however, that a decision of a Board of Appeal of OHIM can be challenged before the Court in relation solely to some of the goods or services in the list given in the Community trade mark application concerned. In such a case, that decision becomes final in respect of the other goods or services on the same list.

Thus, a statement by the trade mark applicant before the General Court, and thus subsequent to the decision of the Board of Appeal, that he withdraws his application in respect of some of the products referred to in the initial application may be interpreted a statement that the contested decision is being challenged only in so far as it covers the remainder of the goods concerned, or as a partial withdrawal, where the statement was made at an advanced stage of the proceedings before the Court.

However, if, by its restriction of the list of goods referred to in the Community trade mark application, the applicant for the trade mark is not seeking to withdraw from that list one or more goods, but to alter one or more characteristics, it is possible that that alteration might have an effect on the examination of the Community trade mark carried out by the instances of OHIM during the administrative procedure. In those circumstances, to allow that alteration at the stage of the action before the Court would amount to changing the subject-matter of the proceedings pending, which is prohibited by Article 135(4) of the Rules of Procedure. Therefore such a restriction cannot be taken into account by the Court when examining the merits of the case.

(see paras 18-21)

3. See the text of the decision.

(see paras 31, 32)

4. The criteria for assessing the distinctiveness of trade marks which comprise the appearance of the goods themselves are no different from those which apply to other categories of trade mark. None the less, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the goods it identifies. Indeed, average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. Furthermore, the more the shape of which registration has been applied for is similar to the shape which the goods in question are most likely to take, the more likely it is that the shape lacks distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. In those circumstances, only a mark which departs significantly from the norms or customs in the sector, and is therefore liable to fulfil its essential function as an indication of origin is not devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

(see paras 33-35)

5. A three-dimensional sign constituted by the shape of a turnbuckle, registration of which is sought in respect of Shuttering of metal for concrete and accessories thereof’ and ‘Shuttering, not of metal, for concrete and accessories thereof’ within Classes 6 and 19 of the Nice Agreement, is devoid of distinctive character in relation to the products concerned for the purposes of Article 7(1)(b) of Regulation No 207/2009 on the Community trade mark, since, for the EU specialist public, the turnbuckle in question exhibits only slight differences from other products of that type and does not appear to be so unusual as to justify the view that a mere three-dimensional representation thereof confers on the trade mark applied for an inherent capacity to distinguish the goods which it is intended to cover from those of its competitors.

(see paras 37, 38, 43)