Case T‑547/13

Rosian Express SRL

v

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

(Community trade mark — Application for a three-dimensional Community trade mark — Shape of a games box — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Obligation to state reasons — Right to be heard — Article 75 of Regulation No 207/2009)

Summary — Judgment of the General Court (Eighth Chamber), 8 October 2015

1.      Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU

(Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence)

2.      Community trade mark — Procedural provisions — Decisions of the Office — Observance of the rights of the defence — Scope of the principle

(Council Regulation No 207/2009, Art. 75, second sentence)

3.      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))

4.      Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Three-dimensional trade marks consisting of the shape of the product itself — Shape of a games box

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

5.      Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Scope — No obligation to prove matters within common knowledge

(Council Regulation No 207/2009, Art. 76(1))

6.      Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — OHIM’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case

1.      See the text of the decision.

(see para. 15)

2.      See the text of the decision.

(see paras 24, 25)

3.      See the text of the decision.

(see paras 38-40)

4.      A sign constituted by a rectangular wooden box made with a system of sliding racks for storing the pieces and a closing mechanism for those racks at both ends of the box is devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 on the Community trade mark. Accordingly, the mark applied for has a sliding mechanism which allows the four game racks to be incorporated within the box and also the game pieces, and the supports for the racks are included between the four racks which form the supporting walls of the box which has two small plates, attached by screws, acting as a closing mechanism without there being a need for further packaging. Each lateral wall has, on the inside, two carved slots which allow the two pairs of racks to slide. The small plates for closing the box are rectangular in shape with rounded ends and bevelled edges, fixed to the frame by a screw.

Having regard to that description, the mark applied for does not depart significantly from the norms or customs of the sector concerned. It is common for parlour games and toys (for example the toy version of the game rummy for children) to be packaged and sold in packaging made from different types of material including wooden boxes.

It is common knowledge that the goods at issue are often presented in a rectangular wooden box. Similarly, the way of unfolding and assembling the box the shape of which constitutes the mark in question, namely by a system of sliding racks allowing the game to be put away or to be assembled, does not depart significantly from the norms or customs of the sector. It is well-known that similar sliding systems exist to enable the goods at issue to be put away and to be assembled. Nor, seen as a whole, do the various characteristics of the mark applied for enable that mark to be considered as differing significantly from the norms and customs of the sector. Consequently, the mark applied for is not distinctive allowing the relevant public to identify the goods at issue as originating from a specific undertaking and, therefore, to distinguish those goods from those coming from other undertakings.

(see paras 44-46)

5.      In accordance with Article 76(1) of Regulation No 207/2009 on the Community trade mark, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is required to examine of its own motion the relevant facts which may lead it to apply an absolute ground of refusal pursuant to Article 7(1) of that regulation. It follows that OHIM may be led to base its decisions on facts which have not been raised by the applicant for the mark.

Whilst, in principle, it is for OHIM to establish in its decisions the accuracy of such facts, that is not the case in relation to well-known facts. Therefore, nothing prevents OHIM from taking well-known facts into consideration in its assessment. It follows that OHIM may lawfully find that the mark applied for has no distinctive character relying on well-known facts arising from practical experience generally acquired from the marketing of general consumer goods without it being necessary to provide specific examples.

(see paras 47, 48)

6.      See the text of the decision.

(see para. 52)