JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
6 November 2014 (*) (1)
(Community trade mark — Application for the Community figurative mark representing a wavy line — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — No distinctive character acquired through use — Article 7(3) of Regulation No 207/2009 — Article 76 of Regulation No 207/2009 — Article 75 of Regulation No 207/2009)
In Case T‑53/13,
Vans, Inc., established in Cypress, California (United States), represented by M. Hirsch, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 14 November 2012 (Case R 860/2012-5), concerning the application for registration as a Community trade mark of a figurative sign representing a wavy line,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 31 January 2013,
having regard to the response of OHIM lodged at the Court Registry on 7 May 2013,
having regard to the fact that no application for a hearing was submitted 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,
gives the following
Judgment
Background to the dispute
1 On 14 September 2011, the applicant, Vans, Inc., filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 18 and 25 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, for each of those classes, to the following description:
– Class 18: ‘Leather and imitations of leather, and goods made of these materials; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; wallets; bags; rucksacks; belt bags; briefcases; (school)bags for school; (school)bags for sport; beachbags; key rings; card holders; hip bags’;
– Class 25: ‘Clothing, footwear, headgear; belts; gloves’.
4 By decision of 7 March 2012, the examiner rejected the application for registration of the Community trade mark in respect of all the goods on the basis of Article 7(1)(b) of Regulation No 207/2009. First, she stated that the mark consisted of a wavy line which slants and curves and found that, even though it could be interpreted in various ways, it was devoid of any distinctive character. Secondly, she found that the fact that the mark applied for had already been registered in certain Member States was irrelevant. Thirdly and lastly, as regards the acquisition of distinctive character through use, for the purposes of Article 7(3) of Regulation No 207/2009, she found that there were lacunae in the evidence provided by the applicant and that that evidence did not make it possible to ascertain the degree of recognition of the mark applied for by the relevant public in the various Member States. She therefore found that the mark applied for had not acquired distinctive character through use, for the purposes of that article.
5 On 2 May 2012, the applicant filed a notice of appeal against that decision with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009.
6 By decision of 14 November 2012 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal. In the first place, the Board of Appeal found that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. In that regard, first, it pointed out that the goods covered by the mark applied for were aimed at the general public, which would pay an average degree of attention to them at the time of purchase. Secondly, it found that that public would not meticulously analyse the characteristics of the mark applied for, but would recall only the concept of a wavy line, which is too vague to identify the goods as coming from a certain producer. Thirdly, it stated that graphic lines and stripes were commonly used on clothing, footwear and goods in Classes 18 and 25 for decorative purposes and it therefore took the view that the relevant public would perceive the mark applied for as an element with an exclusively ornamental function. In the second place, the Board of Appeal found that the existence of other earlier national or Community registrations was irrelevant in assessing the distinctive character of the mark at issue inasmuch as, first, the Community trade mark system is autonomous and, secondly, the Board of Appeal is not bound by previous or erroneous decisions made by OHIM, since each case must be assessed on its own merits. Lastly, in the third place, the Board of Appeal found that the applicant had not provided appropriate evidence to prove that a part of the relevant public would, because of the mark applied for, identify the goods covered by that mark and that it had thus acquired distinctive character through use in the European Union as a whole for the purposes of Article 7(3) of Regulation No 207/2009.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision in its entirety and remit the case to the Board of Appeal;
– order OHIM to pay the costs.
8 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
9 The applicant puts forward three pleas in law in support of its action. The first plea in law alleges, in particular, infringement of Article 76(1) of Regulation No 207/2009, the second alleges infringement of Article 7(1)(b) of that regulation and the third alleges infringement of Article 7(3) of that regulation.
The first plea, alleging, in particular, infringement of Article 76(1) of Regulation No 207/2009
10 By its arguments the applicant complains that the Board of Appeal did not duly examine the submissions filed. It submits that, in assessing the inherent distinctiveness of the mark applied for, the Board of Appeal did not take account of Annexes 5 and 6 to the observations submitted on 27 January 2012 following the communication of the existence of an absolute ground for refusal (‘the observations of 27 January 2012’). According to the applicant, those annexes made it possible to establish that the marks to which it was referring and, in particular, the Community registrations, were inherently distinctive and had not therefore acquired, contrary to what the Board of Appeal stated in paragraph 16 of the contested decision, distinctive character through use. It also submits that, in assessing any distinctive character acquired through use which the mark applied for might have, the Board of Appeal did not examine the sales figures in Annex 10 to the appeal brought before the Board of Appeal or the evidence from independent sources which it had submitted in Annex 2 to the observations of 27 January 2012, consisting of, inter alia, a page from the fashion magazine Elle which reproduces a photograph of a model wearing a pair of shoes manufactured by the applicant.
11 OHIM takes the view that, by its arguments, the applicant alleges, in essence, infringement of the obligation to state reasons and disputes those arguments.
12 It must be borne in mind that, as is apparent from the case-law, according to Article 76(1) of Regulation No 207/2009, examiners and the Boards of Appeal of OHIM are required to examine the facts of their own motion. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been put forward by the applicant for the mark (judgment of 23 January 2014 in Novartis v OHIM (CARE TO CARE), T‑68/13, EU:T:2014:29, paragraph 22; see also, to that effect, judgment of 22 June 2006 in Storck v OHIM, C‑25/05 P, ECR, EU:C:2006:422, paragraphs 50, 51 and 54). Furthermore, it is apparent from settled case-law that OHIM infringes Article 76 of Regulation No 207/2009 if it refuses to take into consideration arguments or items of evidence which the parties have submitted in due time (see, to that effect, judgments of 9 November 2005 in Focus Magazin Verlag v OHIM — ECI Telecom (Hi-FOCuS), T‑275/03, ECR, EU:T:2005:385, paragraph 43, and 10 July 2006 in La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, ECR, EU:T:2006:197, paragraph 68).
13 In the present case, by its arguments, the applicant puts forward, in essence, two complaints, the first of which alleges that the evidence referred to in paragraph 10 above was not duly examined and the second of which alleges that the statement of reasons is insufficient.
14 As regards the first complaint, alleging that the evidence referred to in paragraph 10 above was not duly examined, it must, first, be pointed out that it is in no way apparent from the contested decision that the Board of Appeal refused to take into consideration any arguments or evidence submitted by the applicant.
15 Secondly, it must be pointed out, as regards the documents submitted by the applicant in Annexes 5 and 6 to the observations of 27 January 2012, that it is apparent from paragraphs 14 to 16 of the contested decision that the Board of Appeal took them into consideration and rejected them. It is apparent, in particular, from paragraph 16 of the contested decision that the Board of Appeal reproduced the criteria set out in the case-law (see paragraph 84 below) and applied them to the Community registrations relied on by the applicant in order to reject them in so far as it was not bound by previous or erroneous decisions taken by OHIM. It was following that analysis that the Board of Appeal erroneously stated, for the sake of completeness, as is indicated by the use of the expression ‘moreover’, that those registrations could have been based on Article 7(3) of Regulation No 207/2009.
16 It is indeed true that, in the course of the analysis of those documents, the Board of Appeal erred in stating, in paragraph 16 of the contested decision, that the Community registrations could have been based on the acquisition of distinctive character through use, for the purposes of Article 7(3) of Regulation No 207/2009. However, that error, which, moreover, concerns an argument which was set out for the sake of completeness and was made in the course of the examination of the documents submitted by the applicant, cannot constitute an infringement of Article 76 of Regulation No 207/2009, but is a substantive error the possible consequences of which will be examined in paragraphs 84 to 88 below.
17 A superficial examination of the evidence, like that which the applicant alleges that the Board of Appeal carried out in the present case, even if it were proved, could not constitute an infringement of the procedural provision in Article 76 of Regulation No 207/2009. An incorrect assessment of the evidence provided by a party may, as the case may be, give rise to an infringement of the substantive provision applicable in the present case.
18 Thirdly, as regards Annex 10 to the appeal brought before the Board of Appeal, it must be pointed out that that document contains, inter alia, particulars relating to the applicant’s sales volumes in the years 2010 and 2011 in certain Member States, namely Benelux, the Czech Republic, Denmark and Sweden inasmuch as they are part of Scandinavia, Germany, Greece, Spain, France, Italy, Poland and the United Kingdom. It also contains a sales forecast for 2012 in respect of those Member States. This document is thus intended to supplement the content of the affidavit of the applicant’s Vice President of Events, Promotions, which was submitted to the examiner and which, as the Board of Appeal stated in paragraph 23 of the contested decision, reproducing the examiner’s findings, contains figures relating to sales volumes which are not broken down by country, do not indicate the overall amount for the European Union and are not confirmed by other documents, such as invoices.
19 It is apparent from the contested decision that, as the applicant has submitted, the Board of Appeal did not rule on that document. The document is not referred to, in paragraph 21 of the contested decision, as one of the additional documents which the applicant provided before the Board of Appeal and the Board of Appeal did not, in addition, refer to that document in assessing the evidence provided by the applicant.
20 It must, however, be pointed out that the fact that the Board of Appeal did not reproduce all of the arguments of one party and the evidence provided by that party, or did not reply to each of those arguments and items of evidence, cannot by itself lead to a finding that the Board of Appeal refused to take them into account (judgment of 9 December 2010 in Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, ECR, EU:T:2010:505, paragraph 46).
21 In the present case, it is by no means apparent from the contested decision that the Board of Appeal refused to take into account the document set out in Annex 10 to the appeal brought before it. The Board of Appeal did not, inter alia, claim that the applicant had not submitted it in due time and did not reject it as inadmissible. It is possible that the fact that Annex 10 to the appeal before it contained particulars relating to the applicant’s sales volumes in certain Member States escaped the Board of Appeal’s notice.
22 However, that fact alone is not capable of constituting an infringement of the procedural provision in Article 76 of Regulation No 207/2009. It constitutes an incorrect assessment of the evidence provided by the applicant which may, as the case may be, give rise to an infringement of a substantive provision. The possible consequences of that incorrect assessment will be examined in the context of the examination of the plea alleging infringement of Article 7(3) of Regulation No 207/2009 (see paragraph 107 below).
23 Fourthly, it must be pointed out, as regards the evidence which is allegedly from independent sources, in Annex 2 to the observations of 27 January 2012, that it is a page from the fashion magazine Elle. That page reproduces a photograph of a model wearing a pair of shoes manufactured by the applicant bearing the sign in respect of which registration was sought.
24 In that regard, it must be held that, contrary to what the applicant claims, even though it is not an advertisement, it constitutes promotional material which relates to the applicant and was published in a fashion magazine which serves to present its goods to the public. As the Board of Appeal examined all the advertising material in paragraphs 26 and 27 of the contested decision, it cannot be alleged that it did not take that document into account. It did not therefore infringe the procedural provision in Article 76 of Regulation No 207/2009.
25 In any event, even if, as the applicant has submitted, that document were to be regarded as evidence from an independent source, it must be pointed out that, as with Annex 10 to the appeal brought before the Board of Appeal, it is by no means apparent from the contested decision that the Board of Appeal refused to take it into account. The Board of Appeal thus did not claim that the applicant had not submitted it in due time and did not reject it as inadmissible. Consequently, even if the Board of Appeal may not have noticed that document, that fact alone, as has been stated in paragraph 22 above, is not capable of constituting an infringement of the procedural provision in Article 76 of Regulation No 207/2009. It may constitute an incorrect assessment of the evidence provided by the applicant, the possible consequences of which will be examined in the context of the examination of the plea alleging infringement of Article 7(3) of Regulation No 207/2009 (see paragraph 107 below).
26 Consequently, it must be held that the applicant cannot complain that the Board of Appeal infringed the procedural provision in Article 76 of Regulation No 207/2009. The applicant’s arguments in that regard must therefore be rejected.
27 As regards the second complaint, relating to infringement of the obligation to state reasons to which the Board of Appeal is subject pursuant to Article 75 of Regulation No 207/2009, it must, first of all, be pointed out that the applicant also submits that the statement of reasons set out by the Board of Appeal to substantiate the lack of distinctive character of the mark applied for is insufficient, inasmuch as it did not examine the distinctive character of that mark in relation to each of the sub-categories of goods concerned. According to the applicant, such a statement of reasons does not enable the Court to exercise the power to review the validity of the contested decision, which constitutes an infringement of the obligation to state reasons.
28 Secondly, it must be pointed out that, in accordance with the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review (judgments of 21 October in KWS Saat v OHIM, C‑447/02 P, ECR, EU:C:2004:649, paragraphs 63 to 65; 15 November 2011 in Abbott Laboratories v OHIM (RESTORE), T‑363/10, EU:T:2011:662, paragraph 73; and CARE TO CARE, EU:T:2014:29, paragraph 27).
29 It is also apparent from the case-law that it is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgments in KWS Saat v OHIM, EU:C:2004:649, paragraph 65, and RESTORE, EU:T:2011:662, paragraph 73).
30 Consequently, when OHIM refuses registration of a sign as a Community trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal, absolute or relative, which precludes that registration and the provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify the application of the provision relied on. Such a statement of reasons is, in principle, sufficient to satisfy the requirements referred to in paragraphs 28 and 29 above (judgments of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 46, and CARE TO CARE, EU:T:2014:29, paragraph 28).
31 Furthermore, it must be pointed out that, according to settled case-law, the obligation to state reasons is an essential procedural requirement and distinct from the question whether the reasons given are correct. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (judgments of 17 May 2011 in Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), T‑7/10, EU:T:2011:221, paragraph 59, and 12 September 2012 in Duscholux Ibérica v OHIM — Duschprodukter i Skandinavien (duschy), T‑295/11, EU:T:2012:420, paragraph 41).
32 In the present case, as regards, in the first place, the applicant’s argument that, in assessing the inherent distinctiveness of the mark applied for, the Board of Appeal did not examine Annexes 5 and 6 to the observations of 27 January 2012, which make it possible to establish that the sign at issue had been found to be inherently distinctive, as had other similar signs in various Community registrations, which had not therefore been registered on account of distinctiveness acquired through use, it must be pointed out that the Board of Appeal examined, in paragraphs 14 to 16 of the contested decision, all of the applicant’s arguments relating to the existence of earlier registrations concerning lines and rejected them. Accordingly, first, as is apparent from paragraph 15 of the contested decision, in the case of the national registrations, the Board of Appeal referred to settled case-law, according to which the trade mark regime is an autonomous system and the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009. Secondly, as is apparent from paragraph 16 of the contested decision, in the case of the Community registrations, the Board of Appeal stated that it was not bound by previous or erroneous decisions made by OHIM and that, in any event, each case had to be assessed on its own merits. Furthermore, it stated that the fact that the signs had been registered as Community trade marks did not mean that they had been found to be inherently distinctive, since the registration could have been based on Article 7(3) of Regulation No 207/2009.
33 That line of reasoning shows, as required by the case-law referred to in paragraph 28 above, the reasoning of the Board of Appeal with regard to the earlier registrations relied on by the applicant, in particular in respect of the Community registrations referred to in Annexes 5 and 6 to the observations of 27 January 2012, which is based on the case-law applicable to the matter. Furthermore, the Board of Appeal’s reasoning enabled the applicant to ascertain the reasons for the contested decision and to bring an action before the Court challenging the Board of Appeal’s findings in that regard.
34 It follows that, without prejudice to the examination of their merits, which will be carried out in the context of the examination of the plea alleging infringement of Article 7(1)(b) of Regulation No 207/2009, those findings constitute a sufficient statement of reasons, with the result that the applicant’s complaint alleging failure to state the reasons in that regard, must be rejected.
35 As regards, in the second place, the applicant’s argument that, in assessing any distinctive character acquired through use which the mark applied for might have, the Board of Appeal did not examine the sales figures in Annex 10 to the appeal brought before the Board of Appeal or the evidence from independent sources which it had submitted and which was contained in Annex 2 to the observations of 27 January 2012, it must be pointed out that the Board of Appeal examined, in paragraphs 22 to 29 of the contested decision, the argument relating to the distinctive character acquired through use of the mark applied for and rejected it. First, in paragraph 23 of the contested decision, the Board of Appeal found that the sales figures in the affidavit of 25 January 2012 provided by the applicant were not broken down by country and did not indicate the amounts for the European Union as a whole. It also stated that those figures were not confirmed by further documents from an independent source, such as invoices, which were not produced by the applicant. Secondly, in paragraph 26 of the contested decision, the Board of Appeal, after examining all the documents in question provided by the applicant, namely the affidavit of 25 January 2012, catalogues, advertising containing, inter alia, examples of the 2011 branding campaign published in printed media and the book Birth of Icons (paragraphs 20 and 21 of the contested decision), stated that, overall, no material originating from a source not related to the applicant had been provided.
36 That line of reasoning, even though it does not take into account the document contained in Annex 10 to the appeal brought before the Board of Appeal (see paragraph 19 above) and may not have taken into account the document contained in Annex 2 to the observations of 27 January 2012 as being a document from an independent source (see paragraph 25 above), shows, as required by the case-law referred to in paragraph 28 above, the reasoning of the Board of Appeal with regard to the assessment of any distinctive character acquired through use which the mark applied for might have. It follows that, without prejudice to the examination of their merits, which will be carried out in the context of the examination of the plea alleging infringement of Article 7(3) of Regulation No 207/2009 (see paragraph 107 below), those findings on the part of the Board of Appeal constitute a sufficient statement of reasons, with the result that the applicant’s complaint alleging failure to state the reasons in that regard must be rejected.
37 As regards, in the third place, the applicant’s argument that the statement of reasons set out by the Board of Appeal to substantiate the lack of distinctive character of the mark applied for is insufficient, inasmuch as it did not examine the distinctive character of that mark in relation to each of the sub-categories of goods concerned, it is sufficient to point out that the Board of Appeal stated, in paragraphs 11 and 12 of the contested decision, the reasons why the mark applied for was devoid of any distinctive character in respect of the goods in Classes 18 and 25. Accordingly, first, it found, in paragraph 11 of the contested decision, that consumers of the goods in question would not meticulously analyse the number of curves and slants, the thickness, the waviness or the other characteristics of the mark applied for, but that, at best, they would recall only the concept of a wavy line, which is too vague to identify those goods. Secondly, it stated, in paragraph 12 of the contested decision, that graphic lines and stripes were commonly used on clothing, footwear and goods in Classes 18 and 25 for decorative purposes and that, accordingly, either the relevant public would not remember them or it would perceive them as a purely decorative feature.
38 It follows that, contrary to what the applicant claims, that line of reasoning shows, as required by the case-law referred to in paragraph 28 above, the reasoning of the Board of Appeal with regard to the assessment of any distinctive character acquired through use which the mark applied for might have in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review.
39 It follows that, without prejudice to the examination of their merits, which will be carried out in the context of the examination of the plea alleging infringement of Article 7(1)(b) of Regulation No 207/2009, those findings on the part of the Board of Appeal constitute a sufficient statement of reasons, with the result that the applicant’s complaint alleging failure to state the reasons in that regard must be rejected.
40 In the light of all of the foregoing, the present plea must therefore be rejected.
The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
41 By its arguments, the applicant submits, in essence, that the Board of Appeal erred in finding that the mark applied for was devoid of any distinctive character.
42 In the first place, the applicant submits that, as the goods covered by the mark applied for exhibit differences relating to their nature, characteristics, intended purpose and methods of marketing, they cannot be regarded as constituting a homogenous category in respect of which one general statement of reasons is sufficient. Accordingly, the applicant submits that the perception of graphic lines and stripes varies notably between the different goods applied for. First, in the case of footwear, it takes the view that consumers, who are accustomed to the use of single graphic lines and stripes on sports shoes as an indication of commercial origin, will not perceive the mark applied for as a decoration. Secondly, in the case of fashion articles such as clothing, headgear and gloves in Class 25 and leather, imitations of leather, goods made of these materials, and animal skins and hides in Class 18, it submits that the mark applied for features a form which is, at least to some extent, eccentric and evocative and will be perceived by the relevant public as an indication of origin. Thirdly, in the case of the remaining items, namely, first, trunks and travelling bags, wallets, bags, rucksacks, belt bags, hip bags, briefcases, (school)bags for school, (school)bags for sport, beach bags, key rings and card holders and, secondly, umbrellas, parasols, walking sticks, whips, harness and saddlery, it maintains that, in so far as they are not fashion items, the mark applied for must be regarded as significantly distinctive.
43 OHIM disputes the applicant’s arguments.
44 In that regard, it must, first, be pointed out that, as is apparent from the case-law, where registration of a mark is sought in respect of various goods or services, the Board of Appeal must determine specifically that none of the grounds for refusal of registration listed in Article 7(1) of Regulation No 207/2009 applies to the mark in question, in relation to each of those goods or services claimed, and may reach conclusions which differ depending upon the goods or services in question (judgment of 2 April 2009 in Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, ECR, EU:T:2009:100, paragraph 27; see also, by analogy, judgment of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraphs 33 and 73).
45 It follows that, when refusing registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated. However, where the same ground for refusal is given for a category or group of goods or services, the competent authority may limit itself to using general reasoning for all of the goods or services concerned (judgments of 15 October 2008 in TridonicAtco v OHIM (Intelligent Voltage Guard), T‑297/07, EU:T:2008:445, paragraph 22, and ULTIMATE FIGHTING CHAMPIONSHIP, EU:T:2009:100, paragraph 27; see also, by analogy, judgment of 15 February 2007 in BVBA Management, Training en Consultancy, C‑239/05, ECR, EU:C:2007:99, paragraph 38).
46 The option for the Board of Appeal to use general reasoning for a series of goods or services can extend only to goods or services which have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision in question, first, to explain adequately the reasoning followed by the Board of Appeal for each of the goods and services belonging to that category and, second, to be applied without distinction to each of the goods or services concerned. The mere fact that the goods and services in question are in the same class under the Nice Agreement is not sufficient for that purpose, since those classes often contain a wide variety of goods or services which do not necessarily have a sufficiently direct and specific link to each other (judgment in ULTIMATE FIGHTING CHAMPIONSHIP, EU:T:2009:100, paragraph 28).
47 In the present case, the applicant takes the view that the goods in Classes 18 and 25 covered by the mark applied for may be regrouped into four sub-categories, namely, first, footwear; secondly, fashion articles, that is to say, clothing, headgear and gloves as well as leather, imitations of leather, and goods made of these materials, animal skins and hides; thirdly, trunks and travelling bags, wallets, bags, rucksacks, belt bags, hip bags, briefcases, (school)bags for school, (school)bags for sport, beach bags, key rings and card holders and, fourthly, umbrellas, parasols, walking sticks, whips, harness and saddlery.
48 First, as regards footwear, it must be pointed out that it belongs to the fashion sector, in the same way as clothing, headgear, belts and gloves, all of which are in Class 25. They are items which, in addition to their main function of clothing feet, enable the consumer to convey a certain aesthetic image of himself (see, to that effect, judgment of 29 September 2009 in The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, ECR, EU:T:2009:364, paragraph 19).
49 The applicant maintains that, in the case of sports shoes, signs such as the mark applied for are commonly used as an indication of commercial origin by manufacturers of those goods and the relevant public therefore perceives them as having distinctive character.
50 Even if that contention were correct, it has by no means been claimed, or a fortiori proved, that it relates to all the footwear covered by the mark which is the subject-matter of the application for registration. It must be pointed out that, when examining the registrability of a sign, OHIM may only take account of the list of goods applied for as it appears in the trade mark application concerned (see, to that effect, judgment of 13 April 2011 in Deichmann v OHIM (Representation of a chevron with a border of broken lines), T‑202/09, EU:T:2011:168, paragraph 52).
51 In the present case, the list of goods covered by the mark applied for refers to footwear in the generic sense of the term. Consequently, the applicant’s argument relating specifically to sports shoes is irrelevant.
52 Secondly, the applicant takes the view that trunks and travelling bags, wallets, bags, rucksacks, belt bags, hip bags, briefcases, (school)bags for school, (school)bags for sport, beach bags, key rings and card holders are not fashion items, but items which are used to transport objects of all kinds.
53 In that regard, it must be pointed out that, contrary to what the applicant claims, the fact that the goods referred to in paragraph 52 above have a different function from that of footwear, clothing, headgear, belts and gloves does not make it possible to conclude that they constitute a different sub-category of goods. Those goods have a sufficiently direct and specific link to each other, so much so that they form a sufficiently homogenous category.
54 As regards bags, belt bags, hip bags, briefcases, (school)bags for school, (school)bags for sport, beach bags, key rings and card holders in Class 18, it must be observed that they are items which may fulfil, in addition to their primary function, a common aesthetic function by contributing, as a whole, to the outward image of the consumer concerned.
55 As the Court has already held, the various leatherware and luggage goods in Class 18 and clothing and clothing accessories in Class 25 may be regarded as part of the fashion sector in the broad sense of the term (judgment of 22 March 2013 in Bottega Veneta International v OHIM (Shape of a handbag), T‑409/10, EU:T:2013:148, paragraph 56; see, by analogy, judgment in Representation of half a smiley smile, EU:T:2009:364, paragraph 19).
56 It must therefore be held that the luggage and leatherware items referred to in paragraph 54 above constitute fashion items in the broad sense of the term, in the same way as footwear, clothing, headgear, belts and gloves in Class 25.
57 As regards trunks and travelling bags, it must be pointed out that they are offered not only by manufacturers of travel goods, but also by manufacturers of fashion items and clothing accessories and that their aesthetic function is not therefore, from the point of view of the consumer, negligible. They must therefore, as has been stated in paragraph 55 above, also be regarded as part of the fashion sector in the broad sense of the term.
58 It follows that, contrary to what the applicant claims, the goods referred to in paragraph 52 above have a direct and specific link to each other which enables the Board of Appeal to limit itself to using general reasoning for all of those goods.
59 Thirdly, as regards umbrellas, parasols, walking sticks, whips, harness and saddlery in Class 18, it must be pointed out that the applicant confines itself to stating that they cannot be regarded as being fashion items or footwear and seems to claim that, as with the goods referred to in paragraph 52 above, the mark applied for is significantly distinctive in respect of the goods in question.
60 In that regard, it must be pointed out that the applicant did not submit specific arguments setting out the reasons why the goods in question constitute a different sub-category of goods. It merely stated that they cannot be regarded as being footwear or fashion items and concluded that ‘[t]he aforesaid (paragraph 26) also applies to those goods since they are, as well, significantly distinctive’.
61 First, it must also be pointed out that, in addition to their primary function, items like umbrellas, parasols and walking sticks may be regarded as part of the fashion sector in the broad sense of the term, inasmuch as they may be used by consumers to convey a certain outward image (see, to that effect, judgment in Representation of half a smiley smile, EU:T:2009:364, paragraph 19). Secondly, harness and saddlery and whips, as leatherware items, have a link with leather and imitations of leather, and goods made of these materials and animal skins and hides in Class 18.
62 Furthermore, fashion items in the broad sense of the term as well as harness and saddlery and whips are goods which may be decorated with different forms of decorations, inter alia, wavy lines.
63 It follows that the goods at issue constitute a homogenous category and that the examination of the distinctive character of the mark applied for which the Board of Appeal carried out makes it possible to explain its reasoning with regard to those goods and cannot lead to conclusions which differ depending upon the goods in question. In fact, the applicant itself implicitly admits, in its written pleadings, that there is a link between the goods in question, which gives rise to a homogenous category of goods, when it submits that the evidence of use provided in respect of footwear, in order to prove that the mark applied for has acquired distinctive character through use, may also be used in respect of the other goods in question, in so far as they are similar to footwear.
64 Consequently, the applicant’s arguments in that regard must be rejected as unfounded.
65 In the second place, the applicant disputes, in essence, the Board of Appeal’s assessment that the mark applied for will be perceived by the relevant public as being solely decorative. According to the applicant, the mark in question is not a commonly used motif and the single stripe of which it consists is, at least to some extent, an eccentric and evocative form, which will be perceived by the relevant public as somewhat exceptional and, therefore, as an indication of the commercial origin of the goods that it designates.
66 Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered. According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 5 May 2009 in Rotter v OHIM (Shape of an arrangement of sausages), T‑449/07, ECR, EU:T:2009:137, paragraph 18, and Representation of half a smiley smile, EU:T:2009:364, paragraph 14).
67 In accordance with the case-law, the distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration or the protection of the mark has been applied for and, secondly, by reference to the perception of the relevant public, which consists of average consumers of those goods or services (judgments in Shape of an arrangement of sausages, EU:T:2009:137, paragraph 19, and Representation of half a smiley smile, EU:T:2009:364, paragraph 15).
68 A minimum degree of distinctive character is, however, sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 inapplicable (judgments of 20 May 2009 in CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD), T‑405/07 and T‑406/07, ECR, EU:T:2009:164, paragraph 57, and Representation of half a smiley smile, EU:T:2009:364, paragraph 16).
69 A finding that a mark has distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services it covers and to distinguish them from those of other undertakings (judgments of 16 September 2004 in SAT.1 v OHIM, C‑329/02 P, ECR, EU:C:2004:532, paragraph 41, and Representation of half a smiley smile, EU:T:2009:364, paragraph 27).
70 However, a sign which is excessively simple and is constituted by a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (judgments of 12 September 2007 in Cain Cellars v OHIM (Representation of a pentagon), T‑304/05, EU:T:2007:271, paragraph 22, and Representation of half a smiley smile, EU:T:2009:364, paragraph 26).
71 It is in the light of that case-law that it must be examined whether, in the present case, the mark applied for will be perceived by the relevant public as an indication of commercial origin.
72 In that regard, it must, first of all, be pointed out that the protection of the mark in question was refused in respect of all the goods for which that protection was claimed. As has been stated in paragraph 3 above, those goods are, in essence, first, luggage and leatherware goods, as well as umbrellas, parasols and walking sticks, in Class 18 and, secondly, clothing, footwear, headgear, belts and gloves in Class 25. As those goods are, in essence, aimed at the general public, the Board of Appeal rightly found, in paragraph 8 of the contested decision, that the relevant public was the general public in the European Union, which is reasonably observant and circumspect and reasonably well informed. The applicant does not, moreover, dispute that fact.
73 Secondly, it must be pointed out that the mark applied for consists of a line which slants and curves and that it does not have any striking element capable of attracting the consumer’s attention. As the Board of Appeal rightly observed in paragraph 12 of the contested decision, and the applicant has not challenged that point, single lines and stripes are commonly used as a decorative motif for goods in Classes 18 and 25. Accordingly, contrary to what the applicant claims, the mark applied for does not have any characteristic element, nor any striking or eye-catching feature capable of distinguishing it from the customs of the sector and conferring on it a minimum degree of distinctive character, and enabling the consumer to perceive it otherwise than as a simple decoration.
74 Furthermore, it must be observed that the applicant’s claims that the mark applied for, first, will be perceived as a single somewhat exceptional stripe and, secondly, constitutes an eccentric and evocative form are not substantiated by any arguments and do not therefore make it possible to call the foregoing considerations into question.
75 It must therefore be held that the relevant public will perceive the mark applied for as a simple line which combines slants and curves and will not therefore make it possible to individualise any of the goods in question in relation to competing goods.
76 Consequently, the Board of Appeal was right in finding, in paragraph 12 of the contested decision, that the mark applied for would be perceived by the relevant public as an exclusively ornamental element in relation to those goods and in upholding, in paragraph 13 of that decision, the examiner’s decision that that mark was devoid of any distinctive character.
77 That finding cannot be invalidated by the applicant’s argument that, in the sports shoes sector, in which single stripes are commonly used as an indication of commercial origin by the majority of manufacturers, the relevant public will not perceive the mark applied for as a mere decorative element.
78 In that regard, it must be pointed out that the mere fact that other marks, although equally simple, have been regarded as being capable of identifying the commercial origin of the goods in question without any possibility of confusion with those of a different origin and, therefore, as not being devoid of any distinctive character, is not conclusive for the purpose of establishing whether the mark at issue also has the minimum degree of distinctive character necessary for protection in the European Union (see, to that effect, judgment in Representation of half a smiley smile, EU:T:2009:364, paragraph 34).
79 Furthermore, as has been stated in paragraph 50 above, it must be borne in mind that, when examining the registrability of a sign, OHIM may only take account of the list of goods applied for as it appears in the trade mark application concerned. In the present case, since the application for registration is not confined to sports shoes, that argument must be rejected as irrelevant.
80 In the third place, the applicant submits, in essence, that the Board of Appeal did not correctly assess Annexes 5 and 6 to the observations of 27 January 2012, which make it possible to establish that OHIM had found other representations of a line to be inherently distinctive in the case of other Community registrations. According to the applicant, the Board of Appeal therefore erred in not taking them into account and taking the view that they could have been registered on the basis of Article 7(3) of Regulation No 207/2009.
81 Those annexes, which the applicant has provided, consist, first, of a certificate of Community registration containing the representation of a line with slants and curves like that which is the subject-matter of the application for registration in the present case and, secondly, of extracts from OHIM’s database, which are intended to show that other representations of lines have been registered for goods identical to those covered by the mark applied for.
82 It is apparent from the documents in question relating to Community registrations that, as the applicant has submitted, the various representations of lines in question were not registered on the basis of Article 7(3) of Regulation No 207/2009. Those signs were therefore found to have inherent distinctive character.
83 It is therefore necessary to examine whether the fact that those registrations were examined only superficially by the Board of Appeal may affect the assessment of the distinctive character of the mark applied for.
84 In that regard, it must be pointed out that, as is apparent from the case-law, OHIM is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and must consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Accordingly, such an 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 (judgments of 24 April 2012 in Leifheit v OHIM (EcoPerfect), T‑328/11, EU:T:2012:197, paragraph 61, and CARE TO CARE, EU:T:2014:29, paragraph 51; see also, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77).
85 As regards Community registration No 002940344, it must be observed that that registration concerns the line which is the subject-matter of the mark applied for and covers footwear in Class 25. It is true, as the applicant has submitted, that that registration was not based on Article 7(3) of Regulation No 207/2009. However, by contrast with the mark applied for, the line which is the subject-matter of that registration occupies a specific position on the goods in question, namely one of the sides of a shoe.
86 As the circumstances of the present case are not comparable with those which resulted in the registration of Community trade mark No 002940344 in respect of footwear, the fact that that mark was found to have inherent distinctive character cannot lead to the conclusion, in the absence of any other consideration, that such distinctive character exists in the present case.
87 As regards the other Community registrations concerning various representations of lines, it must be pointed out, first, that in certain cases, the goods and services concerned are not those covered by the mark applied for, as is the case with registrations Nos 007543929, 005228465, 000001248, 000177485, 001343409 or 008817405. It must be pointed out, secondly, in the case of the registrations covering goods identical to those covered by the mark applied for that, as has been stated in paragraph 78 above, the mere fact that other marks, although equally simple, have been regarded as being capable of identifying the commercial origin of the goods in question without any possibility of confusion with those of a different origin and, therefore, as not being devoid of any distinctive character, is not conclusive for the purpose of establishing whether the mark at issue also has the minimum degree of distinctive character necessary for protection in the European Union.
88 It follows that, in spite of the error which the Board of Appeal made in paragraph 16 of the contested decision of assuming that the various Community registrations could have been based on Article 7(3) of Regulation No 207/2009, the possible existence of Community registrations which have been found to have inherent distinctive character is irrelevant for the purpose of establishing, in the present case, that the mark applied for has inherent distinctive character.
89 In the light of all of the foregoing, the present plea must be rejected.
The third plea, alleging infringement of Article 7(3) of Regulation No 207/2009
90 The applicant disputes, in essence, the Board of Appeal’s finding that the mark applied for has not acquired distinctive character through use, for the purposes of Article 7(3) of Regulation No 207/2009.
91 In that regard, the applicant submits that, in the first place, the evidence provided in respect of Germany, Spain, France, Italy and the United Kingdom is sufficient to prove the acquisition of distinctive character for the European Union as a whole; in the second place, the evidence submitted in respect of footwear is also applicable to the other goods, which are similar; in the third place, in the vast majority of the evidence submitted, the mark applied for does not have a decorative function, in so far as it plays the major part in the representations and may be perceived as an indication of commercial origin; in the fourth place, its page on the website Facebook is relevant evidence for the purposes of establishing the distinctive character acquired through use of the mark applied for because it makes it possible to establish the renown both of the undertaking and of its main trade marks, inter alia, that of the mark applied for, which is featured on that page; in the fifth place, the mark applied for has been subject to extensive use, by reason of which it has acquired its distinctive character, and it submits that that is shown by the revenue generated by goods featuring the side stripe, by the overall sale figures and by other evidence in the Annexes which makes it possible to ascertain the promotional effort which it has made.
92 OHIM disputes the applicant’s arguments.
93 Under Article 7(3) of Regulation No 207/2009, 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 it 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. In the circumstances referred to in Article 7(3) of Regulation No 207/2009, the fact that the sign which constitutes the mark in question is actually perceived by the relevant public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the underlying public-interest considerations set out in Article 7(1)(b) to (d), which require that the marks referred to in those provisions may be freely used in order to avoid conceding an unjustified competitive advantage to a single trader (judgments of 21 April 2010 in Schunk v OHIM (Representation of part of a chuck), T‑7/09, EU:T:2010:153, paragraph 38, and Shape of a handbag, EU:T:2013:148, paragraph 74).
94 It is apparent from the case-law that, in order to have the registration of a trade mark accepted under Article 7(3) of Regulation No 207/2009, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation. Furthermore, the acquisition of distinctive character through use must have taken place before the application for registration was filed (judgments in Representation of part of a chuck, EU:T:2010:153, paragraph 40, and Shape of a handbag, EU:T:2013:148, paragraph 76).
95 However, the Court of Justice has held 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 in Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, ECR, EU:C:2012:307, paragraph 62).
96 In the case of non-word marks, the General Court has held that it may be assumed that the assessment of their distinctiveness will be the same throughout the European Union, unless there is concrete evidence to the contrary (see judgment of 12 September 2007 in Glaverbel v OHIM (Texture of a glass surface), T‑141/06, EU:T:2007:273, paragraph 36 and the case-law cited).
97 It is also apparent from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant 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 (judgments in Representation of part of a chuck, EU:T:2010:153, paragraph 39, and Shape of a handbag, EU:T:2013:148, paragraph 75).
98 Furthermore, 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 the 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, identify the 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 207/2009 is satisfied (judgments in Representation of part of a chuck, EU:T:2010:153, paragraph 41, and Shape of a handbag, EU:T:2013:148, paragraph 77).
99 According to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services 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 or services in question, who is reasonably well informed and reasonably observant and circumspect (judgments in Representation of part of a chuck, EU:T:2010:153, paragraph 42, and Shape of a handbag, EU:T:2013:148, paragraph 78).
100 Lastly, it is apparent from the case-law that proof of distinctive character acquired through use cannot be furnished by the mere production of sales volumes and advertising material. Similarly, the mere fact that the sign has been used in the territory of the European Union for a certain time is also not sufficient to show that the target public for the goods in question perceives it as an indication of commercial origin (see, to that effect, judgment in Texture of a glass surface, EU:T:2007:273, paragraphs 41 and 42).
101 It is in the light of those considerations that it must be examined whether, in the present case, the Board of Appeal erred in finding that the mark applied for had not become distinctive in consequence of the use which had been made of it, within the meaning of Article 7(3) of Regulation No 207/2009.
102 In the present case, the applicant submitted as evidence intended to prove the distinctiveness acquired through use of the mark applied for an affidavit of its Vice President of Events, Promotions which shows that the sign applied for has been used since 1977 and states, inter alia, the turnover for 2011 in the Europe, Middle East and Africa region (EMEA); catalogues; advertising material; a copy of the cover of a book edited by the applicant, entitled Birth of Icons, which describes the sign at issue as one of the applicant’s most iconic emblems; a printout of its page on the website Facebook and a document containing the sales figures relating to 2010 and 2011 as well as a sales forecast for 2012.
103 By contrast, the applicant has not provided any declaration from the relevant class of persons which makes it possible to establish that the sign in question was perceived by the relevant public as an indication of the commercial origin of the goods in question throughout the European Union.
104 Consequently, in the light of the case-law cited in paragraph 100 above, none of the items of evidence submitted by the applicant makes it possible to establish that the relevant class of persons, or at least a significant proportion thereof, identify the goods covered by the mark applied for because of that mark. The evidence submitted makes it possible to establish only that the sign in respect of which registration has been applied for has been used by the applicant both on those goods, inter alia, footwear, which are sold in various Member States of the European Union, and in the context of various promotional activities. However, it does not make it possible to establish that that sign will be perceived by the relevant public as an indication of the commercial origin of the goods in question.
105 Furthermore, it must be pointed out, as regards the affidavit drawn up by one of the applicant’s employees, that that affidavit cannot, in accordance with the case-law, on its own constitute adequate proof of the acquisition through use of distinctive character by the trade mark applied for (see, to that effect, judgment of 15 December 2005 in BIC v OHIM (Shape of a lighter), T‑262/04, ECR, EU:T:2005:463, paragraph 79). Since it is thus of less evidential value, its content must, as a general rule, be confirmed by the submission of additional evidence, which was not the case here (see, to that effect, judgments of 7 June 2005 in Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, ECR, EU:T:2005:200, paragraphs 42 and 43, and 18 January 2011 in Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, EU:T:2011:9, paragraph 44).
106 Consequently, it must be held that the evidence submitted by the applicant does not make it possible to establish that the mark applied for had acquired distinctive character through use at the time when the application for registration was filed.
107 That finding cannot be invalidated by the applicant’s argument that the Board of Appeal did not examine the sales figures in Annex 10 to the appeal brought before it or the evidence from an independent source which it had submitted and which is contained in Annex 2 to the observations of 27 January 2012. First, as regards the document in Annex 10, which contains particulars relating to the applicant’s sales volumes in the years 2010 and 2011 in certain Member States and also contains a sales forecast for 2012, it must be pointed out that, although it is indeed true that the Board of Appeal did not take a view on that document, it is, however, apparent from the case-law cited in paragraph 100 above that proof of the distinctive character acquired through use of the mark applied for cannot be furnished by the mere production of sales volumes, which are, in addition, limited to certain Member States and which, contrary to what the applicant claims, do not indicate the amounts of sales for the European Union. Secondly, as regards the document contained in Annex 2 to the observations of 27 January 2012, it must be stated that it is a page from the fashion magazine Elle, which reproduces a photograph of a model wearing a pair of shoes manufactured by the applicant and shows the use of the sign on sports shoes in the territory of the European Union; however, its mere production does not, in accordance with the case-law referred to in paragraph 100 above, prove that the mark applied for has acquired distinctive character through use.
108 In the light of all of the foregoing, the present plea must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
109 Under Article 87(2) 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 incurred by OHIM, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Vans, Inc. to pay the costs.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 6 November 2014.
[Signatures]