Judgment of the General Court (Second Chamber) of 29 January 2013 — Germans Boada v OHIM (Manual tile-cutting machine)
(Case T‑25/11)
Community trade mark — Application for a Community three-dimensional mark — Manual tile-cutting machine — Absolute ground for refusal — Lack of 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 — Obligation to state reasons — Articles 75 and 76 of Regulation No 207/2009 — Equal treatment
1. Community trade mark — Appeals procedure — Action before the EU judicature — Possibility for the General Court to alter the contested decision — Limits (Council Regulation No 207/2009, Art. 65(2) and (3)) (see paras 16, 17)
2. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Assessment of distinctive character — Criteria (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 22-24)
3. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Acquisition of distinctiveness through use — Three-dimensional mark representing a manual tile-cutting machine (Council Regulation No 207/2009, Art. 7(1)(b) and (3)) (see paras 30-34, 43-50, 79-91)
4. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Three-dimensional mark constituted by the shape of the product — Distinctive character — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 35-38)
5. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Acquisition of distinctiveness through use — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b) and (3)) (see paras 53-57)
6. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Acquisition of distinctiveness through use — Mark devoid of distinctive character in part of the Union — Acquisition of distinctive character in that same part (Council Regulation No 207/2009, Art. 7(2) and (3)) (see paras 55, 68, 69)
7. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Acquisition of distinctiveness through use — Criteria for assessment — Account taken of the market share held by the mark and the share of advertising investment undertaken by the promoter — Lawfulness (Council Regulation No 207/2009, Art. 7(3)) (see paras 76-78)
8. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Acquisition of distinctiveness through use — Three-dimensional mark — Criteria for assessment (Council Regulation No 207/2009, Art. 7(3)) (see para. 83)
9. Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — OHIM’s previous decision-making practice (see para. 93)
10. 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) (see para. 104)
Re:
| ACTION brought against the decision of the First Board of Appeal of OHIM of 28 October 2010 (Case R 771/2010‑1), relating to an application for registration of the three-dimensional sign representing a manual tile-cutting machine as a Community trade mark. |
Operative part
The Court:
2. | | Orders Germans Boada, SA to pay the costs. |