JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)
12 September 2007 (*)
(Community trade mark – Application for a Community figurative mark representing the texture of a glass surface – Absolute ground for refusal – Absence of evidence of distinctive character acquired through use)
In Case T‑141/06,
Glaverbel SA, established in Brussels (Belgium), represented by S. Möbus and T. Koerl, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar, acting as Agent,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 1 March 2006 (Case R 0986/2004-4), relating to an application for registration as a Community trade mark of a figurative mark representing the texture of a glass surface,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),
composed of J. Pirrung, President, A.W.H. Meij and I. Pelikánová, Judges,
Registrar: C. Kantza, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 18 May 2006,
having regard to the response lodged at the Court Registry on 23 August 2006,
having regard to the Court’s written question to the parties of 22 January 2007,
having regard to the observations lodged at the Court Registry on 6 February 2007,
further to the hearing on 6 March 2007,
gives the following
Judgment
1 On 27 May 2003 the applicant, Glaverbel SA, filed an application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration as a Community trade mark of the following figurative mark consisting of a design applied to the surface of goods, pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark (OJ 1994 L 11, p. 1), as amended.
2 The goods in respect of which registration was sought are in Classes 19 and 21 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 for each of the Classes:
– Class 19: ‘Building glass; patterned glass; glazing; glass sheets for building; glass screens and partitions’;
– Class 21: ‘Unworked or semi-worked glass (except glass used in building); patterned glass (except glass used in building); glass sheets (except glass used in building); glass sheets for use in the manufacture of sanitary installations, showers, shower walls, shower enclosures, refrigerator shelves, glazing, double glazing, building partitions, building screens, doors, cupboard doors, furniture, and kitchen cutting boards’.
3 By letter of 13 November 2003 the examiner informed the applicant that the trade mark application did not appear to be eligible for registration by reason of the absolute ground for refusal laid down in Article 7(1)(b) of Regulation No 40/94.
4 In response to the examiner’s letter, the applicant maintained that, notwithstanding the fact that it considered the mark to be prima facie registrable, the mark had become distinctive in consequence of the use which had been made of it. The applicant also submitted a number of documents and declarations in support of that argument, in particular, declarations from professionals in the glass sector (trade journalists, glass processors, wholesalers and competing manufacturers) who assert, essentially, that, upon seeing the design in dispute, the person making the declaration immediately recognises a specific glass design originating from Glaverbel. It also produced declarations from an employee of its intellectual property department stating that the sign has been used in the territory of the European Community since approximately 1970 and showing the volume of sales between 1993 and 2001. In addition, the applicant provided examples of advertising material.
5 By decision of 2 September 2004 the examiner refused the application in its entirety for all the goods listed in the application on the basis of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation No 40/94.
6 On 25 October 2004 the applicant brought an appeal against the examiner’s decision.
7 By decision of 1 March 2006 (‘the contested decision’), notified to the applicant on 21 March 2006, the Fourth Board of Appeal dismissed the appeal. According to the Board of Appeal, the examiner rightly refused the application for registration on the basis of Article 7(1)(b) of Regulation No 40/94, since the mark applied for did not possess the minimum amount of distinctiveness required under that article.
8 In addition, according to the contested decision, the evidence produced by the applicant did not warrant the conclusion that the mark applied for had distinctive character acquired through use within the meaning of Article 7(3) of Regulation No 40/94.
9 In relation to distinctive character acquired through use, the Board of Appeal observed that, since the evidence submitted by the applicant was restricted to the opinion of a specialised public, it could not be regarded as sufficient since the target market for the goods in question was not made up exclusively of a specialised public.
10 In addition, according to the Board of Appeal, the applicant should have shown that the mark applied for had acquired distinctive character through use in the European Community as a whole. In its view, in respect of several Member States none of the evidence produced by the applicant was relevant.
Forms of order sought
11 In the present action the applicant challenges the contested decision in respect only of the following goods in Class 21 of the Nice Agreement: ‘Patterned glass (except glass used in building); glass sheets (except glass used in building); glass sheets for use in the manufacture of showers, shower walls, shower enclosures, glazing, double glazing, building partitions, building screens, doors, cupboard doors and furniture’ (‘the goods in question’).
12 The applicant claims that the Court of First Instance should:
– annul the contested decision in so far as the decision applies to the goods in question;
– order OHIM to pay the costs.
13 OHIM contends that the Court of First Instance should:
– dismiss the application in its entirety;
– order the applicant to pay the costs.
Law
The subject-matter of the proceedings
14 The application for partial annulment of the contested decision submitted by the applicant is not contrary to the prohibition in Article 135(4) of the Rules of Procedure on changing, before the Court of First Instance, the subject-matter of the proceedings before the Board of Appeal (Case T‑289/02 Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS) [2004] ECR II‑2851, paragraph 14). In addition, it should be recalled that the applicant has not changed the intended purposes of the goods in question. It is thus necessary to examine the distinctive character of the mark applied for only in so far as it concerns the goods in question.
Substance
15 In support of its application for annulment the applicant puts forward a single plea alleging that the Board of Appeal infringed Article 7(3) of Regulation No 40/94 in considering that the applicant had not proved to the requisite legal standard that the sign had acquired distinctive character through use. It bases its arguments, essentially, on two factors, namely the determination of the target public and the assessment carried out by the Board of Appeal of the evidence produced by the applicant.
The determination of the target public
– Arguments of the parties
16 The applicant submits that the relevant public for the goods in question is made up exclusively of specialists, that is to say, members of the building trade or glass industry. Its primary interest in the mark relates to large semi-worked glass sheets, the purchasers of which are specialist glass processors who use those sheets as a raw material. Members of the general public are not in a position to process such glass sheets, since such an operation requires the specialist equipment and knowledge of a specialist processor.
17 OHIM considers that the Board of Appeal rightly stated, in the contested decision, that specialists could not be considered to be the only persons which make up the target market for the goods in question. It points out that the description of those goods does not comprise exclusively goods such as large semi-worked glass sheets intended for further processing and transformation, but also goods such as small panels or windows which are intended to be mounted, for example, in a window frame or in kitchen doors. The replacement of a small panel of glass in a window frame is something which is likely to be done by any ‘do-it-yourself’ enthusiast.
18 In addition, given the ornamental function which patterned glass also has, choosing the glass may be something which is not left solely or at all to the criteria of professionals but rather a choice which is made by any individual consumer.
– Findings of the Court
19 Under Article 7(3) of Regulation No 40/94, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude the registration of a mark if that mark has become distinctive in relation to the goods for which registration is requested in consequence of the use which has been made of it.
20 The distinctive character of a mark, including that acquired through use, must be assessed in relation to the goods in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods in question, who is reasonably well informed and reasonably observant and circumspect (judgment of 15 December 2005 in Case T‑263/04 BIC v OHIM(shape of a lighter with a flint), not published in the ECR, paragraph 65).
21 First, as regards ‘patterned glass (except glass used in building)’ and ‘glass sheets (except glass used in building)’ it is clear that, contrary to the applicant’s submission, those goods are not solely intended to be sold to professionals. Assessed in relation to their description, those categories also include, in addition to semi-worked glass sheets requiring processing, ready-to-use glass sheets which are likely to be bought and used by final consumers. Consequently, such consumers are part of the relevant public in respect of those two categories of goods.
22 Second, as regards the other goods in question, namely ‘glass sheets for use in the manufacture of showers, shower walls, shower enclosures, glazing, double glazing, building partitions, building screens, doors, cupboard doors and furniture’, it should be pointed out that, even supposing that such goods are sold only to professionals, that finding is not sufficient, by itself, in the circumstances of the present case, to warrant the conclusion that the target public is made up exclusively of professionals.
23 According to settled case‑law, the essential function of a trade mark is to guarantee the identity of the origin of the product or service covered by the mark to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 28; Case C‑517/99 Merz & Krell [2001] ECR I‑6959, paragraph 22; and Case C‑371/02 Björnekulla Fruktindustrier [2004] ECR I‑5791, paragraph 20). In general, the perception of consumers or end users plays a decisive role since the whole aim of the commercialisation process is the purchase of the product by those persons and the role of the intermediary consists as much in detecting and anticipating the demand for that product as in increasing or directing it (Björnekulla Fruktindustrier, paragraph 24).
24 The consumers and end users of the goods are not necessarily those which have concluded a contract of sale with the producer. It is not uncommon for a manufacturer of goods not to be in direct contact with the final consumer.
25 In the circumstances of this case, a final consumer who entrusts to a professional in the building industry work requiring the use of patterned glass normally chooses the design to be used. In so far as a design such as the one which makes up the mark applied for remains visible in the final product and is thus capable of having an aesthetic function, the final consumer has an interest in being involved in choosing it. Although it is true that he is helped by a professional, the fact remains that the consumer is confronted with the various designs that are available by way of a catalogue or samples, and that he chooses from them the one which suits him best. Therefore, the choice of the specific design of the glass sheet which will be used is determined, to a significant extent, by the final consumer, notwithstanding the fact that the sheet will be bought by the professional employed to carry out the work.
26 Consequently, for all of the goods in question the target public is made up not only of professionals but also of the general public. Consequently, the applicant’s first argument must be rejected.
The assessment of the evidence produced by the applicant
– Arguments of the parties
27 The applicant submits that the evidence which it produced demonstrates that the sign has acquired distinctiveness through use as regards the relevant public and that the relevant public recognises the sign as an indication of the origin of the goods. In particular, the declarations from purchasers and users of the goods in question, trade journalists, wholesalers and competing manufacturers, taken as a whole, demonstrate that the sign indicates the origin of the goods and that it is recognised as such an indication. The Board of Appeal erroneously assessed that primary evidence of distinctiveness acquired through use.
28 With respect to the geographical scope of the distinctiveness acquired through use, the applicant points out that the file contains declarations from 10 of the 15 Member States (as at the date of filing of the application). Those Member States represent around 90% of the population of the Community. Declarations emanating from territories representing about 90% of the population of the Community are representative of the single market.
29 In addition, the evidence submitted shows that, at the date of filing of the application for registration of the mark, that mark had been used continuously throughout the Community for over 30 years, that significant quantities of goods bearing that mark had been sold within the Community and that a significant amount of advertising material bearing the mark had been distributed.
30 The indication of the quantity of sales and the advertising material placed in the file should be regarded as secondary evidence corroborating the direct evidence of distinctiveness acquired through use as presented in the declarations.
31 OHIM contends that the sign would have to have become distinctive through use throughout the Community in order to be registrable under Article 7(3) of Regulation No 40/94. There is no reason to exclude the population of five Member States of the Community from the consumer circles whose awareness and perception of the sign in question must be assessed.
– Findings of the Court
32 It is clear from the case-law that the acquisition of distinctiveness through use of a mark, under Article 7(3) of Regulation No 40/94, requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data, such as specific percentages (Case T‑402/02 Storck v OHIM (shape of a sweet wrapper) [2004] ECR II‑3849, paragraph 77, and the case‑law cited).
33 In assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia, the market share held by the mark, how intensive, geographically widespread and long-standing 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 goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) of Regulation No 40/94 is satisfied (see shape of a sweet wrapper, cited in paragraph 32 above, paragraph 79, and the case‑law cited).
34 As regards the declarations from the specialised public which the applicant provided, it is common ground that they do not come from all the Member States of the European Community. The applicant has not submitted any declaration from Denmark, Finland, Sweden, Greece or Ireland.
35 A mark can be registered under Article 7(3) of Regulation No 40/94 only if evidence is produced to show that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it did not originally have such character within the meaning of Article 7(1)(b) (Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 83).
36 In the case of non-word marks it may be assumed that the assessment of their distinctiveness will be the same throughout the Community, unless there is concrete evidence to the contrary (Case T‑399/02 Eurocermex v OHIM (shape of a beer bottle) [2004] ECR II‑1391, paragraph 47, and shape of a sweet wrapper, cited in paragraph 32 above, paragraph 86).
37 In the present case, the impression which the sign, consisting of a pattern applied to the goods themselves, may create in the mind of the consumer is in principle likely to be the same throughout the Community, as rightly submitted by OHIM.
38 It is thus in the Community as a whole that that mark must have become distinctive through use in order to be registrable under Article 7(3) of Regulation No 40/94.
39 The declarations from professionals in 10 of the 15 Member States of the European Community, as at the date of filing of the application for registration of the mark, are not capable of proving that the sign has acquired distinctive character in the five remaining countries of the Community.
40 In that regard, it must be observed that the applicant’s argument that the approach consisting of counting the number of countries from which evidence emanates is contrary to the need to regard the European Community as a single market cannot be upheld. Under Article 7(1)(b) of Regulation No 40/94, read in conjunction with Article 7(2) thereof, a mark must be refused registration if it is devoid of any distinctive character in part of the Community and the part of the Community referred to in Article 7(2) may be comprised of a single Member State (Storck v OHIM, cited in paragraph 35 above, paragraphs 81 to 83). The Board of Appeal thus rightly examined the evidence concerning distinctive character acquired through use for each Member State separately.
41 As regards sales volumes and advertising material, the applicant concedes that these can be regarded only as secondary evidence which may support, where relevant, the direct proof of distinctive character acquired through use, such as provided by the declarations. The sales volumes and advertising material as such do not show that the public targeted by the goods in question perceives the sign as an indication of commercial origin. In respect of the Member States of the Community for which no declaration has been produced, proof of distinctive character acquired through use cannot be furnished by the mere production of sales volumes and advertising material. Moreover, the applicant has not specified the market share of those goods nor the number of catalogues distributed in each of the Member States.
42 The fact that the sign has been used in the Community since around 1970 is also not sufficient, as such, to show that the public targeted by the goods in question perceives it as an indication of commercial origin. In addition, the applicant does not specify when it started to market products bearing that sign in each of the Member States of the Community.
43 It follows that the second argument must also be rejected.
44 In the light of all of the above, it is apparent that the Board of Appeal rightly considered that the evidence adduced by the applicant was insufficient to show the distinctive character acquired through use of the sign in question. The declarations of professionals produced by the applicant are insufficient, first, because they concern only the opinion of a professional public although the public concerned by the goods in question includes final consumers and, second, because they do not cover all the territory of the European Community. The indication of sales volumes and the production of advertising material is not sufficient to fill those gaps.
45 It is thus necessary to reject the single plea and consequently to dismiss the action.
Costs
46 Under Article 87(2) of the Rules of Procedure, 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 incurred by OHIM, as applied for by the latter.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Glaverbel SA to pay the costs.
Delivered in open court in Luxembourg on 12 September 2007.