JUDGMENT OF THE GENERAL COURT (Third Chamber)
14 December 2011 (*)
(Community trade mark – Invalidity proceedings – Distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 – No distinctive character acquired through use – Article 7(3) of Regulation (EC) No 207/2009)
In Case T-237/10,
Louis Vuitton Malletier, established in Paris (France), represented by P.L. Roncaglia, G. Lazzeretti, M. Boletto and E. Gavuzzi, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Friis Group International ApS, established in Copenhagen (Denmark), represented by C. Type Jardorf, lawyer,
ACTION against the decision of the First Board of Appeal of OHIM of 24 February 2010 (Case R 1590/2008-1) concerning invalidity proceedings between Friis Group International Aps and Louis Vuitton Malletier,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President, I. Labucka and D. Gratsias (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 26 May 2010,
having regard to the response of OHIM lodged at the Court Registry on 2 September 2010,
having regard to the response of the intervener lodged at the Court Registry on 18 August 2010,
having regard to the order of the President of the Third Chamber of the General Court of 2 March 2011 in Case T-237/10 Vuitton Malletier v OHIM – Friis Group International (Representation of a locking device), not published in the ECR, dismissing the application for leave to intervene in support of the form of order sought by OHIM lodged by C&A Buying KG,
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 Court,
gives the following
Judgment
Background to the dispute
1 On 11 March 2004, the applicant, Louis Vuitton Malletier, 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought are in Classes 9, 14, 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 9: ‘Optical apparatus and instruments, including spectacles, sunglasses and spectacle cases’;
– Class 14: ‘Jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, ties pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks; nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith, jewel boxes in precious metals, their alloys or coated therewith’;
– Class 18: ‘Leather and imitations of leather; travel bags, travelling sets (leather goods), trunks and travelling bags, garment bags for travel, vanity cases, rucksacks, shoulder bags, handbags, attaché cases, document cases and briefcases of leather, pouches, wallets, purses, key cases, card cases; umbrellas’;
– Class 25: ‘Clothing and underwear, including sweaters, shirts, T-shirts, lingerie, belts (clothing), headscarves, neckties, shawls, waistcoats, skirts, waterproof clothing, overcoats, braces, trousers, jeans, pullovers, dresses, jackets, scarves, gloves, tights, socks, swimsuits, bathrobes, pyjamas, nightgowns, shorts, pouches (clothing); shoes, boots, slippers; headgear’.
4 On 28 July 2005, the Community trade mark was registered under No 3 693 116 in respect of all the goods referred to in the application for registration.
5 On 16 February 2007, the intervener, Friis Group International ApS, filed an application pursuant to Article 55 of Regulation No 40/94 (now Article 56 of Regulation No 207/2009) for a declaration that the trade mark at issue was invalid. The grounds relied on were those provided for in Article 51(1)(a) of that regulation, read in conjunction with Article 7(1)(b) thereof, (now Article 52(1)(a) and Article 7(1)(b) respectively of Regulation No 207/2009).
6 By decision of 21 October 2008, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
7 On 4 November 2008, the intervener appealed under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Cancellation Division’s decision.
8 By decision of 24 February 2010 (‘the contested decision’), which was notified to the applicant on 29 March 2010, the First Board of Appeal took cognisance of the fact that the intervener had limited the scope of its appeal to the goods in Classes 9, 14 and 18 covered by the mark at issue and that, in consequence, the Cancellation Division’s decision rejecting the application for a declaration of invalidity had become final in so far as it concerned the goods in Class 25 covered by that mark (paragraphs 16 to 19 and point 1 of the operative part of the contested decision).
9 The Board of Appeal then found, in substance, that the mark at issue was devoid of any distinctive character as regards the goods in Classes 9, 14 and 18 for which it had been registered (paragraphs 36 to 55 of the contested decision) and that Louis Vuitton had not furnished proof that that mark had acquired such distinctive character in consequence of the use made of it, for the purposes of Article 7(3) and Article 52(2) of Regulation No 207/2009 (paragraphs 56 to 81 of the contested decision).
10 The Board of Appeal therefore upheld the application for a declaration of invalidity and declared the mark at issue invalid for the goods in Classes 9, 14 and 18 in respect of which it had been registered.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs incurred by it before the Court;
– order the intervener to pay the costs incurred by it before the Cancellation Division and the Board of Appeal;
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– uphold the contested decision in its entirety;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant relies on two pleas in law. The first plea alleges infringement of Article 7(1)(b) of Regulation No 207/2009. The second plea, put forward in the alternative, alleges infringement of Article 7(3) and Article 52(2) of Regulation No 207/2009.
The first plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
General comments
15 Under Article 52(l)(a) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to OHIM where the Community trade mark has been registered contrary to the provisions of Article 7 of that regulation. In that regard, Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered.
16 According to consistent case-law, the distinctive character of a trade mark within the meaning of that provision means that the mark in question makes it possible to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, paragraph 32; Case C-144/06 P Henkel v OHIM [2007] ECR I-8109, paragraph 34; and Case C-238/06 P Develey v OHIM [2007] ECR I-9375, paragraph 79).
17 That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception which the relevant public has of those goods or services (Procter & Gamble v OHIM, paragraph 16 above, paragraph 33, and Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 25).
18 According to equally consistent case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. None the less, for the purpose of applying those criteria, the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions as to 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 may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (Case C‑136/02 P Mag Instrument v OHIM [2004] ECR I-9165, paragraph 30; Storck v OHIM, paragraph 17 above, paragraphs 24 and 25; and Develey v OHIM, paragraph 16 above, paragraph 80).
19 In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 (Case C‑173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 31, and Storck v OHIM, paragraph 17 above, paragraph 28).
20 The case-law cited in paragraphs 16 to 19 above, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product designated, also applies where the trade mark in question is a figurative mark consisting of the shape of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers (Storck v OHIM, paragraph 17 above, paragraph 29, and Henkel v OHIM, paragraph 16 above, paragraph 38).
21 The Court will take account of all the foregoing considerations when examining the first plea by which the applicant submits, in essence, that the Board of Appeal erred in finding that the mark applied was devoid of any inherent distinctive character in respect of the goods covered by the registration.
The relevant public
22 The Board of Appeal took the view, in paragraphs 32 to 34 of the contested decision, that all the goods covered by the contested mark were directed at the general public. It added that, with the sole exception of ‘jewellery’, those goods were purchased on a regular basis. By contrast, jewellery, although also targeted at the general public, is not purchased on a regular basis and only after in-depth consideration, with the result that the relevant consumer displays a higher level of attention with regard to it (contested decision, paragraph 33). All of those findings, not disputed by any of the parties, must be concurred with.
The applicability of the case-law relating to three-dimensional marks in the present case
23 As the Board of Appeal stated in paragraph 20 of the contested decision, the mark applied for is a figurative mark consisting of a two-dimensional representation of a locking device. In that regard, the applicant states that, unlike the cases envisaged by the case-law cited in paragraphs 16 to 19 above, locking devices are not among the goods in respect of which the mark at issue was registered.
24 That is correct. Nevertheless, as is apparent from paragraph 36 of the contested decision, the Board of Appeal found that the case-law in question applies in the present case, on the ground that the object (the locking device) represented by the mark at issue could be used as ‘part’ of the goods for which it was registered.
25 Subject to verification of the factual accuracy of that finding, disputed by the applicant, the Board of Appeal cannot be criticised for having erred in law in that regard. The considerations set out in paragraph 20 above also justify the application of the case-law regarding three-dimensional marks, cited in paragraphs 16 to 19 above, to figurative marks constituted by the shape of part of the product concerned since such a mark is likewise not independent of the appearance of the product it designates (see, to that effect, judgment of 21 April 2010 in Case T‑7/09 Schunk v OHIM (Representation of part of a chuck), not published in the ECR, paragraph 24, and judgment of 8 September 2010 in Case T-458/08 Wilfer v OHIM (Representation of a guitar head), not published in the ECR, paragraph 41).
26 The applicant submits that the application of the case-law relating to three-dimensional and figurative marks constituted by the shape of the product concerned or by a representation of that shape presupposes the existence of a link between the mark and the product concerned which will, immediately and without the need for a complex process of association, be recognised by the relevant public.
27 That is in fact true of a figurative mark constituted by part of the shape of the product which it designates, in so far as the relevant public will perceive it, immediately and without particular thought, as a representation of a particularly interesting or attractive detail of the product in question rather than as an indication of its commercial origin.
28 In those circumstances, it must be ascertained whether the Board of Appeal was right to find that the locking device represented by the mark at issue could be used as part of the goods covered by that mark.
The locking device as part of the goods covered by the contested mark
29 First, as regards the ‘optical apparatus and instruments, including spectacles, sunglasses and spectacle cases’ in Class 9, the applicant submits that the shape of a locking device is totally arbitrary in connection with ‘eyewear’ as the two categories of goods have absolutely nothing in common. The link between them is no more direct than that between locking devices and the goods in Class 25 in respect of which the distinctive character of the mark at issue has not been put in question. The applicant also refers, in that regard, to certain photographs which it filed at OHIM during the administrative procedure. Those photographs show the spectacles it markets, which have a locking device such as that represented by the contested mark in the place where eyewear manufacturers usually affix their trade marks.
30 In that regard, it must be pointed out that, in accordance with the application for registration filed by the applicant, the contested mark was registered for ‘optical apparatus and instruments’, that is to say for a category of goods in Class 9. The ‘spectacles, sunglasses and spectacle cases’ in the same class are not referred to individually, but as part of the same category of goods (‘including’).
31 Spectacle cases may include a locking device, which implies that, in respect of those goods, a mark representing such an object will be perceived by the relevant public as a representation of part of the product covered by that mark. As a result and unless it is shown that, in spite of that fact, the contested mark has distinctive character in respect of spectacle cases, it must be considered to be devoid of any distinctive character with regard to all the goods in Class 9 which it covers.
32 The fact that a sign is devoid of any distinctive character in relation to only some of the goods or services within a category referred to as such in the application for registration does not preclude that application being rejected, or the mark in question being declared invalid if it has already been registered, since otherwise nothing would prevent its proprietor from also using it for the goods or services within the category of goods covered by the registration in respect of which it does not have distinctive character (see, by analogy, Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927 and the case-law cited).
33 Secondly, as regards the goods in Class 14 covered by the contested mark, the applicant itself concedes that the shape of a locking device ‘could probably be considered somewhat related’ to buckles, trinkets, watches or jewel boxes, but adds that ‘such [a] link would never be direct enough’ to render that form devoid of any distinctive character with regard to those goods since, in its view, although those goods may have closing mechanisms, such mechanisms do not usually take the form of a locking device.
34 It must be pointed out that a closing mechanism is often used not only on the goods referred to in the preceding paragraph but, more generally, on the ‘jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, ties pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks; jewel boxes in precious metals, their alloys or coated therewith’ in Class 14. Since a locking device such as that in the mark at issue constitutes such a mechanism, it must be concluded that the Board of Appeal did not err in finding that a locking device could be used as part of those goods. That conclusion is however without prejudice to the examination of whether the contested mark has distinctive character with regard to those goods on the ground that it departs significantly from the norm or customs of the sector (see the case-law cited in paragraph 19 above). It is also in that latter context that the applicant’s statement summarised in the preceding paragraph must be analysed.
35 It must, moreover, be stated that the terms ‘jewellery’ and ‘horological and chronometric instruments and apparatus’ designate two categories of goods which include the goods, preceded by the expression ‘including’, which are described after those two terms, and that the considerations set out in paragraphs 30 to 32 above also apply, mutatis mutandis, to those two categories of goods.
36 Thirdly, on the other hand, as regards ‘nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith’ in Class 14, it appears impossible that a locking device could be included as part of those goods. It must be pointed out, in that regard, that, in paragraph 44 of the contested decision, the Board of Appeal stated that locking devices such as depicted by the contested mark ‘can be used on the goods for which the contested trade mark is registered for either as a locking device or for ornamental purposes’. Nutcrackers and candlesticks do not, as a general rule, include a locking device, even for ornamental purposes.
37 OHIM, however, submits that even the goods covered by the contested mark which do not necessarily themselves have locks or fasteners are very often sold in boxes or cases which bear a closing mechanism. The intervener states, as regards goods of which a locking device is not normally a part, that the lock ‘can clearly conceptually be linked to these items, such as sunglasses or bracelets’.
38 That argument cannot succeed. It is true that the case-law cited in paragraphs 16 to 19 above is applicable, strictly speaking, not only to marks consisting of the shape of a product, but also to those consisting of the shape of its wrapper or packaging (see Case T-305/02 Nestlé Waters France v OHIM (Shape of a bottle) [2003] ECR II‑5207, paragraphs 30 and 31, and Case T‑402/02 Storck v OHIM (Shape of a sweet wrapper) [2004] ECR II-3849, paragraph 49).
39 However, as is apparent from paragraph 30 of Shape of a bottle, paragraph 38 above, the application of the case-law on the shape of a product also to a mark consisting of the shape of a bottle, registration of which had been applied for in respect of water and non-alcoholic beverages, was justified by the fact that beverages cannot, on account of their nature, be sold as they are but require packaging. The judgment in Shape of a sweet wrapper, paragraph 38 above (paragraph 49), refers to paragraph 30 of Shape of a bottle, paragraph 38 above.
40 In the light of that consideration, it must be held that the case-law regarding three-dimensional marks consisting of the shape or image of the product concerned applies only to the packaging or wrapper of a product which, on account of its nature or of trade practices, is as a general rule offered to the consumer with packaging or a wrapper which will be removed only immediately before that product is consumed or used. It is only in such a case that the shape of the packaging or wrapper is equivalent, in the mind of the relevant consumer, to the shape of the product itself, with the result that it cannot be regarded as unrelated to the appearance of that product, for the purposes of the case-law cited in paragraph 20 above.
41 That is not the case either with nutcrackers or candlesticks. Although it is perfectly conceivable that, when they are sold, those goods will be placed in an appropriate box or case, and indeed may come with a protective cover, neither their nature nor trade practices will cause those who purchase and use them to regard them as indissociable from their packaging or wrapper.
42 Furthermore, the intervener has not substantiated its statement that, in essence, the locking device in the mark applied for ‘can clearly conceptually be linked’ to objects which are not capable of including such a device. In the absence of a convincing explanation to the contrary, it must be held that there is no conceptual link between a locking device of a particular type and an object which is in no way likely to include a device of that type. Consequently, the intervener’s argument must be rejected.
43 It follows that the findings in the contested decision relating to the absence of distinctive character of the mark in question do not apply to ‘nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith’ in Class 14 with the result that the present plea must be upheld, without any need to examine, with regard to those goods, the applicant’s other arguments, and the contested decision must be annulled inasmuch as it declared the contested mark invalid in so far as it covers those goods.
44 Fourthly, as regards the goods in Class 18 covered by the contested mark, the applicant states that there is no evidence in the intervener’s submissions or in the contested decision that it would be customary for them to bear a locking device, ‘with the possible exception’ of items such as ‘trunks’, ‘vanity cases’, ‘attaché cases’ and ‘briefcases’.
45 However, it must be stated, as does OHIM, that, with the sole exception of leather and imitations of leather, which are covered by the contested mark as materials, the other goods in Class 18 are all likely to include a closing, and therefore locking, mechanism and that it cannot be claimed that the Board of Appeal made any error in that regard, subject always to the examination of the applicant’s arguments relating to the exact shape of the locking device represented by its mark and to its distinctive character.
46 By contrast, in so far as the contested mark covers ‘leather and imitations of leather’ in Class 18, which, as materials, clearly do not include a locking device, even for ornamental purposes, the present plea must be upheld and the contested decision annulled on the same grounds as those stated in paragraph 43 above.
The distinctive character of the mark applied for in respect of the goods covered which include a locking device
47 The applicant’s other arguments will be examined only in regard to goods covered by the contested mark other than ‘nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith’ (Class 14) and ‘leather and imitations of leather’ (Class 18).
48 In that regard, it must be borne in mind that, in paragraph 37 of the contested decision, the Board of Appeal pointed out that consumers are used to perceiving locking devices as mechanisms that make it possible to close and open objects and therefore primarily as functional items. ‘Subsidiarily’, they may also perceive them as ornamental or as simultaneously combining technical and ornamental functions. On the other hand, the Board of Appeal took the view that consumers did not perceive such mechanisms as trade marks. It added that that was also due to the fact that the brand name of the product is often engraved on the surface of such mechanisms and that it is that brand name, rather than the shape of the locking device concerned, that allows consumers to establish a link between the product and its manufacturer. In that regard, the Board of Appeal stated that the evidence submitted before OHIM by the intervener ‘merely confirms this: the lock devices bear the distinctive LV monogram and/or the name Louis Vuitton engraved on them’.
49 The Board of Appeal based those findings, as it was entitled to do, at least in part on facts arising from practical experience generally acquired from the marketing of general consumer goods (see, to that effect, Case T-129/04 Develey v OHIM (Shape of a plastic bottle) [2006] ECR II-811, paragraph 19; judgment of 5 May 2009 in Case T‑104 ars Parfum Creation & Consulting v OHIM (Shape of a spray bottle), not published in the ECR, paragraph 20; judgment of 3 February 2011 in Joined Cases T-299/09 and T-300/09 Gühring v OHIM (Combination of broom yellow and silver grey and combination of yellow ochre and silver grey), not published in the ECR, paragraph 36). It must be borne in mind, in that regard, that the Board of Appeal correctly pointed out, in paragraphs 32 to 34 of the contested decision that, with the sole exception of jewellery, all the goods covered by the contested mark are purchased on a regular basis (see paragraph 22 above), which unquestionably makes them ‘general consumer goods’. The same is true of jewellery, which may be purchased by anyone even though such purchases do not take place at regular and frequent intervals, but on rare and special occasions and require an in-depth examination.
50 The applicant disputes the abovementioned findings of the Board of Appeal and submits that there is a trade practice on the part of fashion houses of personalising items such as buckles, clips, patterns, buttons, eyewear sidepieces, locks or hooks, which are affixed to jewellery and leather goods and to accessories in general, so as to make them instantly recognisable and therefore to serve as indications of commercial origin. The Board of Appeal did not take account of that practice, which is known to average consumers. In order to prove that the practice exists, the applicant puts forward nine Community trade marks registered by third parties. The applicant states that it is aware of the settled case-law according to which OHIM is not bound by its decisions concerning the registration of other marks, but submits that the approach adopted in respect of those marks may be applied by analogy to the present case.
51 However, the various marks put forward by the applicant show, at the very most, that each fashion house has a tendency to individualise a different item or accessory, which it chooses in an arbitrary manner, in order to use it on a number of its goods as an indication of their origin. Only one of the marks referred to by the applicant (that registered under the number 8465528) shows a closing device for a bag or a similar product. Another mark (registered under the number 268854) shows a half-sphere the use of which is not apparent, but which could be used as a press stud for a handbag or a similar product. By contrast, the other marks referred to by the applicant are completely different items or accessories, namely part of the sole of a shoe characterised by a red line (mark number 1027747); a hook in the shape of a panther (mark number 1989946); a representation of a sword used, according to the information provided by the applicant, on eyewear sidepieces (mark number 859447); a hook closing device, which seems to be capable of being used as a belt buckle (mark number 618546); a clip in the shape of a knot (mark number 6687081); the entire shape of a bag which does not, however, include a locking device (mark number 6472898); and, lastly, a representation of three rings through which straps pass (mark number 3958451).
52 It follows that the practice invoked by the applicant, even if it were proved to exist, is apt to concern a multitude of different items or accessories. It does not therefore show that the public concerned by goods covered by the contested mark which may include a locking device will regard the shape of that device as an indication of the commercial origin of those goods.
53 The applicant, who must provide specific and substantiated information to show that the trade mark applied for has inherent distinctive character if it claims that it has such character despite OHIM’s analysis (see, to that effect, Develey v OHIM, paragraph 16 above, paragraph 50), has put forward no other arguments in that regard than that rejected in the preceding paragraph. Consequently and taking into account the fact that the findings of fact in paragraph 37 of the contested decision are correct, it must be held, applying the case-law cited in paragraph 19 above, that the contested mark may be registered in respect of goods covered by that mark which include a locking device only if the mark departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin.
54 In order to ascertain whether the Board of Appeal was right to find, in essence, that that is not the case, it is necessary, first, to examine the applicant’s argument, based on the reference in paragraph 37 of the contested decision to ‘the distinctive LV monogram and/or the name Louis Vuitton’ (see paragraph 48 above), that the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 in so far as it failed to have regard to the obligation to assess the distinctive character of a sign in abstracto, without any reference to its actual use as a mark.
55 The argument is based on a misreading of the contested decision and must be rejected. It must be pointed out in that regard that, for the purposes of the examination of the various grounds for invalidity put forward by the intervener, including that relating to Article 7(1)(b) of Regulation No 207/2009, the Board of Appeal gave, in paragraph 20 of the contested decision, a detailed description of the mark at issue. That description does not contain any reference to the presence of a monogram or name engraved on the locking device whose image constitutes the contested mark. It is on the basis of that description of the contested mark that the Board of Appeal analysed, in paragraphs 44 to 49 of the contested decision, whether that mark may have distinctive character and that it found, in paragraphs 51 to 53, that it did not have such distinctive character.
56 Paragraph 37 of the contested decision, referred to by the applicant, concerns a different issue, that of whether consumers of the goods covered by the contested mark are used to perceiving a locking device as an indication of the commercial origin of those goods. As has already been pointed out (paragraph 48 above), the Board of Appeal referred in that regard to the fact that, there were, among the evidence submitted before OHIM by the intervener, images of a locking device similar to that of the contested mark on which the applicant’s name or monogram was engraved.
57 Those images are also reproduced in paragraph 3 of the contested decision. One of them shows a belt with a locking device similar to that of the contested mark, which actually includes the words ‘LOUIS VUITTON PARIS’. The other one shows a bag with a locking device similar to that of the contested mark, but it is difficult to ascertain whether a word or a monogram is engraved on the surface of the locking device.
58 It has already been pointed out (paragraph 53 above) that the Board of Appeal’s findings of fact in paragraph 37 of the contested decision were based, to the requisite legal standard, on practical experience generally acquired from the marketing of general consumer goods and that they were correct. Even if the Board of Appeal erred in believing that it saw the applicant’s name or monogram on the bag represented by the second of the images mentioned in the preceding paragraph, such an error would have no influence on the merits of the contested decision.
59 Secondly, as regards whether the locking device whose image constitutes the contested mark departs significantly from the norm or customs of the sector, the Court notes, as did paragraph 20 of the contested decision, that that device consists of two parts. The top of the upper part constitutes a rectangle the left and right sides of which are rounded and which is placed above an inverted triangle resembling the capital letter ‘V’ and obviously serving as a clasp. The left and right sides of the triangle are also rounded. There are circles resembling eyelets or screws on either side of the rectangle with the rounded corners, which make it possible to secure it to another object (for example, a bag). The lower part of the locking device has the shape of a square with slightly rounded corners and its four corners also have circles resembling eyelets or screws used to secure it. Two further, larger circles are situated one to the left and one to the right of the centre of the square and probably activate the mechanism for opening the locking device.
60 In its analysis of the distinctive character of the contested mark, the Board of Appeal examined each part of the locking device represented by that mark. It reached the conclusion that both the triangular shape of the upper part and the square shape of the lower part constitute basic geometrical shapes and do not depart significantly from the shapes of locking devices already present on the market (paragraphs 47 and 48 of the contested decision). Furthermore, various elements of the locking device of the contested mark are of a functional nature. That is true, inter alia, of the eyelets, which serve to secure the device in question (paragraphs 45 and 48 of the contested decision), but also of the triangle which constitutes the upper part of the device and serves to open and close the lock. The latter element will be perceived by the average consumer as a functional or ornamental element, but not as an indication of origin (paragraph 47 of the contested decision).
61 Furthermore, the Board of Appeal compared the contested mark with seven different locking devices the images of which it reproduced in paragraph 45 of the contested decision. Those seven images are taken from a catalogue of various locking devices offered by an ironmongery manufacturer, which were submitted by the intervener as an Annex to its application for a declaration of invalidity (see paragraph 3, first indent, of the contested decision) and are in the file relating to the proceedings before OHIM. Taking that comparison into account as well, the Board of Appeal pointed out, in paragraph 46 of the contested decision, that ‘the upper part of the contested trade mark does not constitute a significant variation of clasps that already exist’.
62 The applicant complains that the Board of Appeal focused its examination on each of the elements forming the contested mark, instead of analysing it as a whole.
63 It must be pointed out that, after setting out, in paragraphs 45 to 48 of the contested decisions, its findings concerning, first the upper part and then the lower part of the contested mark, the Board of Appeal stated the following, in paragraph 49 of the contested decision: ‘the combination of the different parts [of the contested mark] described before does not lead to a unique, elegant and eye-catching character. It is rather likely that the relevant consumer will perceive the contested trade mark as what it is, a clasp lock enabling the users to open and close bags, etc.’ In paragraph 51 of the contested decision, the Board of Appeal continued as follows: ‘The combination of the elements of which the contested sign is made up does not depart significantly from the shapes of clasp locks already existing on the market in a way which could render the clasp lock distinctive, which is also corroborated by the examples brought forward by [the intervener]. To the contrary, the relevant consumer will attribute to the different shape elements merely a functional and an aesthetic role.’ It is on the basis of those findings that, in paragraph 52 of its decision, the Board of Appeal found the contested mark to be ‘the image that naturally comes to mind as the typical representation of a common clasp lock’ and thus devoid of any distinctive character.
64 It follows that, contrary to what the applicant submits, the Board of Appeal found that the mark at issue has no distinctive character in respect of the goods it covers following an examination of the mark, taken as a whole. The fact that, at the outset, the Board of Appeal carried out a detailed examination of certain parts of that mark is neither contrary to the case-law (see, to that effect, Case C-304/06 P Eurohypo v OHIM [2008] ECR I-3297, paragraph 41 and the case-law cited) nor irreconcilable with an overall assessment of the mark in question.
65 Next, it must be examined whether the Board of Appeal was correct in finding that the mark at issue has no distinctive character in respect of the goods it covers which include a locking device. In that regard, the applicant more specifically submits that the Board of Appeal’s analysis was ‘quite superficial’. According to the applicant, the examples of locking devices reproduced in paragraph 45 of the contested decision are similar whereas the contested mark departs significantly from those examples. The applicant refers in that regard to the fact that the locking device of the contested mark is the only one where the upper part has a totally different shape from that of the lower part and does not completely overlap it or fit into it. The locking device of the contested mark is also the only one to give the impression of consisting of two parts, whereas all the others seems to consist of just one part. Lastly, it is the only one the clasp of which is a stylised triangle, the contested decision incorrectly stating, in paragraph 46, that ‘it is already practice on the market of clasp locks to use clasps in a variety of shapes, including shapes in the form of stylised triangles’.
66 It must be pointed out that, according to settled case-law, also referred to by the Board of Appeal in paragraph 50 of the contested decision, novelty or originality are not relevant criteria in the assessment of the distinctive character of a mark consisting of the shape of the product concerned or of an image of that product so that, for such a mark to be registered, it does not suffice that it is original, but it must differ substantially from the basic shapes of the goods in question, commonly used in the trade, and not look like a mere variant of those shapes (Joined Cases T‑324/01 and T-110/02 Axions and Belce v OHIM (Brown cigar shape and gold ingot shape) [2003] ECR II-1897, paragraph 44; Case T-15/05 De Waele v OHIM (Shape of a sausage) [2006] ECR II-1511, paragraph 38; and judgment of 14 September 2009 in Case T-152/07 Lange Uhren v OHIM (Geometric shapes on a watch-face), not published in the ECR, paragraph 71).
67 In the light of that case-law, it must be pointed out, as did the Board of Appeal in paragraph 43 of the contested decision, that the existence or absence of a similarity between a mark consisting of the shape or image of the product concerned and the shapes or images of other examples of the same product is not a relevant criterion in assessing the distinctive character of the mark concerned. It follows that the applicant’s reference to the existence of an alleged similarity between the seven locking device models shown in paragraph 45 of the contested decision which distinguishes them from the contested mark is irrelevant. The question is whether the shape of the contested mark departs significantly from the norm or customs of the sector (see paragraph 19 above).
68 As regards the latter question, it must be pointed out that the various aspects of the contested mark highlighted by the applicant are not sufficient to conclude that the shape of that mark departs significantly from the norm or customs of the sector as regards the ‘spectacle cases’ in Class 9, the ‘jewel boxes in precious metals, their alloys or coated therewith’ in Class 14 and the ‘travel bags, travelling sets (leather goods), trunks and travelling bags, garment bags for travel, vanity cases, rucksacks, shoulder bags, handbags, attaché cases, document cases and briefcases of leather, pouches, wallets, purses, key cases, card cases’ in Class 18.
69 As OHIM correctly states, all the examples of locking devices in paragraph 45 of the contested decision consist of two separate parts. The fact that the locking device of the contested mark consists of two clearly distinguishable parts is not, therefore, sufficient to establish that there is a significant departure from the norms or customs of the sector. The same is true of the shape of those parts, since some of the examples shown in paragraph 45 of the contested decision include a part of the shape which is almost triangular (example number 6786, upper part; example number 6639, lower part; example number 6935, clasp) or square (example number 6786, lower part; example number 8561, the lower part of which takes the form of a square with a rounded bottom edge).
70 Furthermore, as was pointed out, in essence, by the Board of Appeal, squares, rectangles and triangles are basic geometrical shapes which people expect to see in a standard locking device, with the result that the mere use of such shapes cannot establish that the contested mark departs significantly from the norms and customs of the sector.
71 It must be added that the seven examples of locking devices shown in paragraph 45 of the contested decision are only a small selection, by the Board of Appeal, from a number of shapes of such devices in the catalogue submitted by the intervener as an Annex to its application for a declaration of invalidity. That catalogue contains a number of other examples of rather diverse shapes, including a locking device almost identical to that of the contested mark.
72 Although the presence, in the catalogue, of a locking device almost identical to that of the contested mark is not on its own sufficient to conclude that the earlier mark does not depart significantly from the norms and customs of the sector, it must be pointed out that the presence, in that catalogue, of a number of models of locking devices of very diverse shapes confirms the conclusion, which may also be based on practical experience generally acquired from the marketing of general consumer goods, that the locking devices used on the goods referred to in paragraph 68 above may take different forms but very frequently consist of two parts which lock into each other in various ways (in particular by means of insertion or pressure or a combination of those two methods) and of a device, such as a button or lever, to activate the unlocking mechanism.
73 In so far as the mark applied for has those characteristics and other characteristics capable of substantiating a significant departure from the norms or customs of the sector have not been put forward by the applicant or discovered by the Court in its analysis of that mark, it must be held that the Board of Appeal was right to find, in paragraph 52 of the contested decision, that that mark consists of the typical image of a locking device for the goods mentioned in paragraph 68 above and is, therefore, devoid of any distinctive character as regards those goods.
74 It follows that the first plea must be rejected in so far as it relates to the goods mentioned in paragraph 68 above and, more generally, the goods in Class 9 covered by the registration of the contested mark (see paragraphs 30 to 32 above).
75 As regards, by contrast, the ‘jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, ties pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks’ in Class 14 and the ‘umbrellas’ in Class 18, it must be pointed out that, although it is true that those goods may include a locking device, the fact remains that, as is apparent from practical experience generally acquired from the marketing of such goods which, as has been pointed out, are general consumer goods, the locking devices which they include do not, as a general rule, take the form of the locking device of the contested mark anymore than that of the examples of such devices shown in paragraph 45 of the contested decision.
76 As has already been pointed out (paragraph 61 above), those examples were taken from the catalogue of an ironmongery manufacturer. Neither those examples nor the other models of locking devices shown in that catalogue are suitable, according to general experience, for use on an item of jewellery or a horological product such as a watch.
77 It would be somewhat unusual to see locking devices for use on those kinds of goods offered by an ironmongery manufacturer. Practical experience shows that locking devices for jewellery and horological goods, including chronometric apparatus, take, inter alia, the form of a bracelet which is locked by a folding mechanism or by a buckle, two links of a chain one of which is inserted into the other, or a small screw. As regards umbrellas, the part of the locking device visible to the user is limited, as a general rule, to a button or lever which, when activated, opens the umbrella.
78 The foregoing considerations are in no way contradicted by the contested decision, in so far as the Board of Appeal did not focus on the abovementioned goods, but expressed its findings in paragraphs 44 to 53 of the decision in relation to all the goods covered by the contested mark, on the premiss, expressly stated in paragraph 44, that a locking device such as that depicted by the contested mark can be used on all the goods covered by that mark ‘either as a locking device or for ornamental purposes’.
79 Although it is possible that a locking device identical or similar to that of the contested mark might be adapted for use on the goods mentioned in paragraph 75 above, the fact remains that such a device departs significantly from the norms and customs of the sector and, consequently and contrary to what the Board of Appeal found in paragraphs 52 and 53 of the contested decision, possesses the minimum degree of distinctive character required to justify the registration of the contested mark in respect of those goods.
80 Nothing in OHIM’s and the intervener’s arguments calls that conclusion into question. Those parties also put forward, in relation to those goods, the arguments summarised in paragraph 37 above, according to which, in essence, the goods covered by the contested mark which do not necessarily themselves have locks or fasteners are very often sold in boxes or cases which have a closing or locking mechanism. On the grounds stated in paragraphs 38 to 42 above, those arguments cannot succeed.
81 Furthermore, it must be pointed out that, in its response, the intervener states that it submitted before OHIM ‘evidence that other well-known manufacturers of trunks and bags in France make use of a very similar lock device’. That statement tends to support the conclusion that the goods mentioned in paragraph 75 do not, as a general rule, have a locking device such as that of the contested mark, which is used more on ‘trunks’ and ‘bags’ and, more generally, on spectacle cases in Class 9, ‘jewel boxes in precious metals, their alloys or coated therewith’ in Class 14 and on the goods in Class 18 covered by the contested mark, with the exception of the goods ‘leather and imitations of leather’ and ‘umbrellas’.
Conclusion
82 It is apparent from all of the foregoing considerations that the first plea must be partially upheld and the contested decision annulled in so far as it declared the contested mark invalid in respect of ‘Jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, ties pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks; nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith’ in Class 14 and ‘leather and imitations of leather’ and ‘umbrellas’ in Class 18. The remainder of the first plea must be dismissed.
The second plea, alleging infringement of Article 7(3) and Article 52(2) of Regulation No 207/2009
83 This plea, which the applicant puts forward in the alternative, must be examined only in relation to the goods in respect of which the first plea has been rejected, namely the ‘Optical apparatus and instruments, including spectacles, sunglasses and spectacle cases’ in Class 9, the ‘jewel boxes in precious metals, their alloys or coated therewith’ in Class 14 and the ‘travel bags, travelling sets (leather goods), trunks and travelling bags, garment bags for travel, vanity cases, rucksacks, shoulder bags, handbags, attaché cases, document cases and briefcases of leather, pouches, wallets, purses, key cases, card cases’ in Class 18.
84 Under Article 7(3) of Regulation No 40/94, the absolute ground for refusal laid down in Article 7(1)(b) of that regulation does not preclude registration of a mark if, in relation to the goods for which registration has been requested, that mark has become distinctive in consequence of the use which has been made of it.
85 Likewise, Article 52(2) of Regulation No 207/2009 provides, inter alia, that where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
86 Pursuant to Article 7(3) of Regulation No 207/2009, a sign devoid of any inherent distinctive character which, by reason of the use made of it prior to the filing of the application for its registration as a Community trade mark, has acquired such character for the goods or services covered by that application, is to be registered. A trade mark thus registered cannot be declared invalid under Article 52(1)(a) of Regulation No 207/2009 since it is not a trade mark ‘registered in breach of the provisions of Article 7’. Article 52(2) of Regulation No 207/2009 is therefore wholly irrelevant to that situation. The latter provision covers only trade marks the registration of which contravened the grounds for refusal in Article 7(1)(b) to (d) of Regulation No 207/2009 and which, in the absence of such a provision, would have had to be declared invalid pursuant to Article 52(1) of Regulation No 207/2009. The precise purpose of Article 52(2) of Regulation No 207/2009 is to maintain the registration of such of those marks which, because of the use which made of them, have in the meantime – that is to say, after their registration – acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7 of Regulation No 207/2009 (Case T-405/05 Powerserv Personalservice v OHIM – Manpower (MANPOWER) [2008] ECR II-2883, paragraph 127).
87 It is apparent from the case-law that the acquisition of a distinctive character through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services concerned as originating from a particular undertaking because of the mark (Case T-399/02 Eurocermex v OHIM (Shape of a beer bottle) [2004] ECR II-1391, paragraph 42, and Case T‑262/04 BIC v OHIM (Shape of a lighter) [2005] ECR II-5959, paragraph 61).
88 It is also settled 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 Community where it was devoid ab intitio of any such character under Article 7(1)(b) of that regulation (Storck v OHIM, paragraph 17 above, paragraph 83; Case T-91/99 Ford Motor v OHIM (OPTIONS) [2000] ECR II-1925, paragraphs 26 and 27; and judgment of 12 September 2007 in Case T-141/06 Glaverbal v OHIM (Texture of a glass surface), not published in the ECR, paragraph 40).
89 In the present case, examining any acquisition by the contested mark of distinctive character on account of the use which had been made of it, the Board of Appeal, first, stated, in paragraph 65 of the contested decision, that the applicant had not adduced any evidence showing use of that mark in respect of part of the goods it covers.
90 Secondly, taking into account the filing date of the application for registration of the contested mark (11 March 2004), which is prior to the accession, on 1 May 2004, of 10 new Member States to the European Union, the Board of Appeal, in accordance with the case-law cited in paragraph 86 above, found, in paragraph 69 of its decision, that the applicant had to prove either that the contested mark had, prior to the filing date of the application for registration, acquired distinctive character on account of the use which had been made of it in the then 15 Member States of the European Union at that time or that it had acquired such distinctive character on account of the use which had been made of it, after its registration on 28 July 2005, in the then 25 Member States of the European Union.
91 In paragraph 73 of the contested decision, the Board of Appeal found that that evidence had not been adduced, in so far as the applicant ‘failed to submit evidence for a number of Member States, such as Austria, Belgium, Czech Republic, France, Germany, Greece, Italy, Spain, Sweden, United Kingdom, Denmark, Ireland, Netherlands, Portugal, Hungary, Luxembourg and Cyprus’.
92 Thirdly, in paragraphs 74 to 79 of the contested decision, the Board of Appeal found that, in any event, the evidence adduced by the applicant did not show use of the contested mark ‘as a trade mark’.
93 The applicant disputes the finding summarised in paragraph 91 above. It concedes that it is in line with the Community case-law, but takes the view that that case-law was developed for word marks with the goal of avoiding the obtaining of exclusive rights to signs which, ‘for example’, are descriptive in the language of one or more Member States. However, there is a profound and substantial difference between word marks, on the one hand, and figurative and three-dimensional marks on the other, with the result that the extension of the case-law developed, it claims, for word marks to figurative and three-dimensional marks is not justified and is contrary to the unitary character of the Community trade mark. According to the applicant, figurative and three-dimensional marks must be eligible for registration if they have acquired distinctive character in a substantial part of the European Union, even if evidence provided by the party concerned does not cover each Member State. The applicant suggests the application, to the present case, of the case-law relating to the interpretation of Article 9(1)(c) of Regulation No 207/2009, according to which, for the purpose of examining whether a mark has a reputation in a substantial part of the European Union, the territory of a single Member State may be considered to constitute such a substantial part (Case C-301/07 PAGO International [2009] ECR I-9429, paragraph 30).
94 That line of argument cannot be accepted. The case-law cited in paragraph 87 above only summarises the conclusions which follow from a combined reading of the relevant provisions.
95 Article 7(2) of Regulation No 207/2009 provides that Article 7(1) thereof, which relates to the various absolute grounds for refusal to register, is to apply notwithstanding that those grounds obtain in only part of the European Union.
96 The absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 refers to trade marks which are devoid of any distinctive character, without distinguishing between word marks and figurative or three-dimensional marks.
97 The situation, envisaged by the applicant, of a word mark which is descriptive of the goods or services it covers falls more within the scope of Article 7(1)(c) and is therefore irrelevant as regards the interpretation of Article 7(1)(b) of that regulation. In any event, it must be pointed out that Article 7(1)(c) of Regulation No 207/2009 likewise does not distinguish between word marks and figurative or three-dimensional marks.
98 As the Court of Justice held in Storck v OHIM (paragraph 17 above, paragraph 83), the part of the European Union referred to in Article 7(2) of Regulation No 207/2009 may be comprised of a single Member State (see also judgment of 17 May 2011 in Case 7/10 Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), not published in the ECR, paragraph 40). PAGO International, paragraph 93 above, which is relied on by the applicant in support of its line of argument, supports that finding, in so far as it confirms, also as regards whether a Community trade mark has a reputation, that the territory of a single Member State may be considered to constitute a substantial part of the European Union.
99 It follows that the absence of distinctive character of a mark (be it a word, figurative or three-dimensional mark) on the territory of a single Member State is sufficient to justify that that mark be refused registration or declared invalid if it has been registered, unless Article 7(3) or Article 52(2) of Regulation No 207/2009 applies. The application of those two provisions presupposes the production of evidence of distinctive character acquired through the use of that mark in the part of the European Union where it was devoid ab intitio of any such character, namely in the Member State concerned.
100 The unitary character of the Community trade mark, to which the applicant refers, does not cast doubt on that finding but, on the contrary, confirms it, since it is apparent therefrom that, in order to be accepted for registration, a sign must possess distinctive character, inherent or acquired through use, throughout the European Union (υγεία, paragraph 98 above, paragraph 40). It would be paradoxical to accept, on the one hand, pursuant to Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), that a Member State has to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other, that that same Member State has to respect a Community trade mark relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State (see, by analogy, υγεία, paragraph 98 above, paragraph 53).
101 It is apparent from all of the foregoing considerations that, since it found, in paragraph 73 of the contested decision, that the applicant had not adduced evidence of the acquisition by the contested mark of distinctive character on account of the use which had been made of it in a number of Member States, the Board of Appeal did not infringe either Article 7(3) or Article 52(2) of Regulation No 207/2009 when it declared it invalid for the goods mentioned in paragraph 83 above.
102 By the other arguments it put forward in the context of the second plea, the applicant does not dispute the finding in paragraph 73 of the contested decision nor does it claim that the evidence of the acquisition by the contested mark of distinctive character through use also related to the Member States mentioned in that paragraph of the contested decision.
103 By those arguments, the applicant seeks, rather, to challenge the findings of the Board of Appeal that the evidence it provided does not show that the contested mark has been used as a trade mark and does not cover all the goods for which that mark had been registered (paragraphs 74 and 65 respectively of the contested decision).
104 The conclusion in the contested decision that, in essence, Article 7(3) and Article 52(2) of Regulation No 207/2009 do not preclude the contested mark from being declared invalid is based, to the requisite legal standard, on the finding, in paragraph 73 of the contested decision, that the evidence provided by the applicant does not cover certain Member States in which that mark was devoid of any distinctive character. It follows that the other arguments put forward by the applicant in the context of this plea, which have been summarised in the preceding paragraph, are ineffective and that the second plea must therefore be rejected. The scope of the annulment of the contested decision will therefore be that stated in paragraph 82 above and the remainder of the action must be dismissed.
Costs
105 Pursuant to Article 87(3) of the Rules of Procedure of the General Court, the Court may order that the costs be shared or that each party bear its own costs where each party succeeds on some and fails on other heads. In the present case, the applicant, OHIM and the intervener all failed in part of their claims. Consequently, it is appropriate to order each party to bear the costs it has incurred in the course of the proceedings before the Court.
106 Furthermore, the applicant claimed that the Court should order the intervener to pay the costs of the entire proceedings, including the proceedings before the Cancellation Division of OHIM and the Board of Appeal of OHIM. In that regard, it must be borne in mind that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that is not the case with regard to the costs incurred for the purposes of proceedings before the Cancellation Division. Therefore, the applicant’s claim concerning the costs relating to the proceedings before the Cancellation Division, which do not constitute recoverable costs, is inadmissible. As regards the applicant’s claim that the intervener should be ordered to pay the costs of the proceedings before the Board of Appeal, it is for the Board of Appeal to decide, in the light of the present judgment, as to the costs relating to those proceedings (see, to that effect, judgment of 28 June 2011 in Case T-483/09 ATB Norte v OHIM – Bricocenter Italia (Affiliato BRICO CENTER), not published in the ECR, paragraph 69).
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 24 February 2010 (Case R 1590/2008-1) in so far as it declared Community trade mark number 3 693 116 invalid for ‘Jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, ties pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks; nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith’ in Class 14 and ‘leather and imitations of leather’ and ‘umbrellas’ in Class 18;
2. Dismisses the action as to the remainder;
3. Orders Louis Vuitton Malletier, Friis Group International ApS and OHIM to each bear the costs they have incurred in the course of the proceeding before the General Court.
Delivered in open court in Luxembourg on 14 December 2011.
[Signatures]