JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

5 February 2020(*) (1)

(EU trade mark — Application for a three-dimensional EU trade mark — Shape of a shoe lace — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001 — Protection of a right relating to an earlier design — Evidence submitted for the first time before the Court)

In Case T‑573/18,

Hickies, Inc., established in New York, New York (United States), represented by I. Fowler, Solicitor, and S. Petivlasova, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 28 June 2018 (Case R 2693/2017-5), relating to an application for registration of a three-dimensional sign consisting of the shape of a shoe lace as an EU trade mark,

THE GENERAL COURT (Sixth Chamber),

composed of S. Papasavvas, acting as President, Z. Csehi and O. Spineanu-Matei (Rapporteur), Judges,

Registrar: R. Ūkelytė, administrator,

having regard to the application lodged at the Court Registry on 25 September 2018,

having regard to the response lodged at the Court Registry on 13 December 2018,

having regard to the designation of another Judge to complete the Chamber as one of its Members was prevented from acting,

further to the hearing on 11 September 2019,

gives the following

Judgment

 Background to the dispute

1        On 5 July 2017 the applicant, Hickies, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a trade mark was sought for the following three-dimensional sign:

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3        The goods for which registration was sought fall within Class 26 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Shoe laces; shoe ornaments made of plastic; laces for footwear; accessories for apparel, sewing articles and decorative textile articles; shoe eyelets; shoe buckles; shoe hooks; shoe fasteners’.

4        By letter of 17 July 2017, the examiner raised objections to the mark applied for being registered on the ground that the mark was devoid of any distinctive character.

5        By decision of 19 October 2017, the examiner rejected the application for registration of that mark on the basis of Article 7(1)(b) of Regulation 2017/1001.

6        On 19 December 2017 the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.

7        By decision of 28 June 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld in part that appeal and annulled the examiner’s decision in so far as it had refused registration of the mark applied for in respect of ‘shoe eyelets’ and ‘shoe hooks’, in Class 26.

8        The Board of Appeal, however, dismissed the appeal in respect of ‘shoe laces’, ‘shoe ornaments made of plastic’, ‘laces for footwear’, ‘accessories for apparel’, ‘sewing articles and decorative textile articles’, ‘shoe buckles’ and ‘shoe fasteners’, in Class 26, taking the view that, in respect of those goods, the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

 Forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision in so far as it applies to the goods referred to in paragraph 8 above;

–        order EUIPO to pay the costs.

10      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility of documents submitted for the first time before the Court

11      EUIPO submits that Annexes A.7 to A.13 and A.16 to A.24 to the application are inadmissible. It asserts that those annexes contain documents which are being submitted for the first time before the Court and which do not fall within the exceptions to the principle that documents submitted for the first time to the Court are inadmissible, in that they do not prove a clear distortion of the facts, do not support or dispute the accuracy of a matter of common knowledge relevant to the contested decision and do not constitute judicial or EUIPO decisions that have a purely illustrative purpose.

12      When questioned in that respect at the hearing, the applicant acknowledged that Annexes A.7 to A.13 and A.16 to A.24 to the application were being produced for the first time before the Court, but argued that they were complementary to those produced in the administrative proceedings. In addition, the applicant acknowledged that not all of those annexes might be admissible.

13      In that respect, it must be noted that Annexes A.7 to A.13 and A.16 to A.24 to the application are being submitted before the Court for the first time. Some of those annexes contain extracts from websites and concern the alleged use, recognition or reputation of the mark applied for or of a product of the applicant, the shape of which corresponds to the shape of which the mark applied for consists and which the applicant asserts is an alternative to classic shoe laces (Annexes A.7 to A.13 to the application). The remaining annexes contain extracts from websites, photographs and correspondence with third parties and are submitted in order to demonstrate that the abovementioned product is not a classic shoe lace (Annexes A.16, A.17, A.21 and A.22 to the application); that the mark applied for may be used for all the products it is intended to protect as well as for many other products (Annexe A.18 to the application) and, finally, the infringement of the applicant’s alleged intellectual property rights and the steps taken by the applicant to protect those rights (Annexes A.19, A.20, A.23 and A.24 to the application).

14      In the first place, as regards Annexes A.7 to A.13 and A.16 to A.18 to the application, those are submitted in order to prove the distinctiveness of the mark applied for. As regards Annex A.24 to the application, the applicant seeks, by means of that annex, to demonstrate that it has brought legal proceedings in Germany against the main distributor of a third party’s products, which it alleges are imitations of its product, the shape of which corresponds to the shape of which the mark applied for consists, and that it has made known its concerns to that third party. The applicant also seeks to prove the steps taken in 2014 to protect its alleged intellectual property rights, which it asserts led, in 2017, to the withdrawal of products from sale via an online sales platform.

15      In accordance with case-law, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, and consequently it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, Annexes A.7 to A.13, A.16 to A.18 and A.24 must be excluded, there being no need to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

16      In the second place, as regards Annexes A.19 to A.23 to the application, which contain extracts from websites, the applicant seeks to use those to challenge the Board of Appeal’s assessments of the lack of distinctiveness of the mark applied for, which are supported by information from the same websites. Accordingly, the applicant wishes to demonstrate that (i) the websites mentioned by the examiner or the Board of Appeal are platforms, and not websites of trade mark proprietors (Annex A.19 to the application); (ii) the hyperlinks cited by the examiner and the Board of Appeal, which link to websites on which counterfeits were allegedly sold, have been disabled (Annex A.20 to the application); (iii) one of the websites mentioned in the contested decision offers sales outside the European Union and is therefore not relevant (Annex A.21 to the application); (iv) another of those websites relates to a blog concerning goods manufactured by a third party, and not to an online store (Annex A.22 to the application), and (v) the products manufactured by that third party are no longer available on one of those websites, which belongs to a German distributor (Annex A.23 to the application).

17       As a preliminary point, it should be noted that, in the application, the applicant states that the websites concerned were cited by the examiner or the Board of Appeal. Nevertheless, at the hearing, in response to a question from the Court, the applicant confirmed that they had been mentioned solely by the Board of Appeal, except for the AliExpress website, extracts from which were attached as Annex A.20 to the application.

18      Contrary to EUIPO’s assertion, Annexes A.19 to A.23 to the application must be held to be admissible. First, Annex A.19 to the application is submitted in order, in essence, to demonstrate the existence of a matter of common knowledge. According to the case-law, an applicant is entitled to submit before the Court documents in order to either substantiate or challenge before it the accuracy of a matter of common knowledge (see judgment of 19 June 2018, Erwin Müller v EUIPO — Novus Tablet Technology Finland (NOVUS), T‑89/17, not published, EU:T:2018:353, paragraph 16 and the case-law cited). Second, Annexes A.20 to A.23 to the application are submitted in order, in essence, to refute the relevance of the examples put forward by the Board of Appeal. Consequently, they relate to factual matters referred to in the contested decision and which therefore fall within the factual framework of the proceedings before the Board of Appeal (see, to that effect and by analogy, judgment of 11 April 2019, Adapta Color v EUIPO — Coatings Foreign IP (Bio proof ADAPTA), T‑224/17, not published, EU:T:2019:242, paragraph 17).

19      In the light of the foregoing considerations, Annexes A.7 to A.13, A.16 to A.18 and A.24 to the application must be declared to be inadmissible. By contrast, Annexes A.19 to A.23 are admissible.

 Substance

20      In support of the action, the applicant relies on a single plea in law, alleging, in essence, infringement of Article 7(1)(b) of Regulation 2017/1001.

21      The applicant takes the view that the Board of Appeal erred in concluding that the mark applied for was devoid of any distinctive character.

22      EUIPO contests the applicant’s argument.

23      Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.

24      For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, it must serve 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 (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).

25      The concept of public interest underlying Article 7(1)(b) of Regulation 2017/1001 is clearly indissociable from the essential function of a trade mark which is to ensure that the consumer or the end user can identify the origin of the good or service denoted by the mark by allowing him to distinguish that good or service from those of a different origin, without any risk of confusion (see, to that effect, judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 48).

26      Distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation 2017/1001 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 of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).

27      The criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are no different from those applicable to other categories of trade mark. Nonetheless, for the purpose of applying those criteria, the relevant public’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 from the appearance of the product it denotes. Average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (judgments of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 30, and of 20 October 2011 Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraphs 45 and 46).

28      Registration of a sign as an EU trade mark 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 protected thereby and to distinguish them from those of other undertakings (see judgment of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 41).

29      In accordance with the case-law, the more closely the shape for which registration as a trade mark is sought resembles the most likely shape to be taken by the product at issue, the greater the likelihood of that shape being devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. 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 that provision (see judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 31).

30      It follows that, where a three-dimensional mark consists of the shape of the product for which registration is sought, the mere fact that that shape is a ‘variant’ of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 32).

31      It is necessary to examine whether, as the applicant maintains, the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 by concluding that the mark applied for is devoid of any distinctive character in relation to the goods it covers, in the light of the considerations set out in paragraphs 23 to 30 above.

32      First of all, the Board of Appeal held that the goods denoted by the mark applied for, in Class 26, were intended for the general public, on the one hand, and for the specialist public, such as those working in the footwear industry, on the other. In addition, it took the view that the relevant public was that of the European Union as a whole and that, since those goods are used daily and sold at low prices, the level of attention of that public was deemed to be average (paragraph 18 of the contested decision).

33      In that respect, at the hearing, the applicant claimed that the Board of Appeal’s assessments of the perception of the relevant public were incorrect. The applicant thus argued that, in the footwear and footwear accessories sector, that public paid attention to the details of the product and that its level of attention was therefore either average or above average, as the examiner had considered. EUIPO claimed that that submission was inadmissible, arguing that it had not been put forward in the application. In response to the Court’s questions on that point, the applicant referred to paragraph 28 of the application, and then stated that that submission had only been put forward implicitly in the application.

34      It must be noted that, in paragraph 28 of the application, the applicant asserts, in essence, that the sign at issue does not illustrate a shoe lace, that it is not even certain that consumers visualising it would perceive it as a closure system for shoes and that the type of closure system it has launched and created is completely new and departs significantly from the norms and customs of the footwear sector. The applicant adds that the application for registration at issue is intended to obtain protection for goods other than shoe laces. It is therefore clear that those arguments do not seek to challenge the Board of Appeal’s assessment of the level of attention of the relevant public. It is also clear that, in the other paragraphs of the application, the applicant did not contest that assessment either explicitly or implicitly. Consequently, the submission that that assessment is incorrect must be held to be submitted for the first time at the hearing, that submission not being the result of matters of law or fact which have come to light in the course of the proceedings and that submission not constituting an expansion of a plea or submission made in the application, and it must be rejected as being inadmissible pursuant to Article 84(1) of the Rules of Procedure.

35      The findings of the Board of Appeal set out in paragraph 18 of the contested decision must be upheld, given that the applicant’s argument seeking to contest them is inadmissible and having regard to the nature of the goods at issue.

36      Subsequently, the Board of Appeal, after having described the mark applied for, stated that it was common ground that the shoe strap constituting the mark applied for was used to thread and lace shoes and could thus be categorised as a shoe lace, a substitute for shoe lace, namely shoe buckles and shoe fasteners, or as a shoe ornament. The Board added that that strap was therefore also covered by the broader terms ‘accessories for apparel and/or sewing articles and decorative textile articles’ (paragraph 20 of the contested decision).

37      The Board of Appeal concluded that the mark applied for was a three-dimensional mark consisting of the shape of the product it denoted, namely a shoe lace or a substitute for shoe lace. In its view, none of the characteristics of that shape allowed the relevant public to perceive it as a shape which, at the date of filing the application for registration, departed significantly from the sector norms or customs for such goods. In that respect, the Board took the view that the existence of shoe straps used as an alternative to classic shoe laces was a matter of common-knowledge and that the use of shoe straps of a similar shape was merely additional evidence as to how the relevant public perceived the mark applied for when faced with it in relation to those goods (paragraphs 21 to 26 of the contested decision).

38      The Board of Appeal also stated that the overall impression given by the mark applied for was limited to the combination of purely decorative or functional elements and was therefore not apt to conferring on it, considered as a whole, a function of indicating origin for the goods referred to in paragraph 8 above (paragraphs 25 and 34 of the contested decision).

39      The Board of Appeal concluded that, having regard to the goods referred to in paragraph 8 above, the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 (paragraphs 26 and 34 of the contested decision).

40      The applicant claims, in the first place, that, contrary to the finding of the Board of Appeal, the mark applied for does not illustrate a traditional footwear fastening system, but a completely new type of fastening system and departs significantly from the norms and customs of the footwear sector. Secondly, it claims that the Board of Appeal appears to have ignored the fact that the mark applied for is intended not only to obtain protection for shoe laces but also for the other goods mentioned in paragraph 8 above.

41      In that respect, it should be noted that, as the Board of Appeal has stated, in essence, the mark applied for is a three-dimensional mark, which takes the shape of a link, which is represented in four illustrations from different angles. At one end of that link is an eyelet into which the button at the other end can be inserted to close that link. In the first illustration, the link is shown closed and the combination of the eyelet and the button inserted into it forms a convex oval shape. In the following three illustrations, the link is shown open, seen from above, from below and in profile (paragraph 19 of the contested decision). It must be noted, as did the Board of Appeal (paragraph 20 of the contested decision), that the type of material from which the strap is made cannot be inferred from the illustration in the application for registration.

 The distinctiveness of the mark applied for with regard to shoe laces

42      The Board of Appeal took the view that the mark applied for was a slightly modified variant of the typical shapes for shoe laces or substitutes for shoe laces. It should be pointed out that the Board based its statements in that respect not on abstract knowledge of the relevant market, but on concrete evidence in its possession, in so far as it endorsed the examiner’s findings which derived from an internet search and mentioned them in the contested decision, and carried out its own internet searches on 28 June 2018 (paragraph 23 of the contested decision).

43      However, the applicant disputes the findings of the Board of Appeal and claims that the mark applied for is neither a shoe lace nor a variant of such a shoe lace, which would, by definition, be used to close a shoe by passing it through eyelets. According to the applicant, its product, represented in the mark applied for, is not mentioned in articles on the history of shoe laces, all of which refer to classic shoe laces.

44      In the first place, it should be recalled that, among the annexes to the application submitted in support of the applicant’s argument that the mark applied for is not a shoe lace, Annexes A.16 and A.17 to the application are inadmissible.

45      According to the extracts from the Oxford English Dictionary, submitted by the applicant, a shoe lace is defined as being, respectively, ‘a lace used to fasten a shoe by passing it in and out through eyelet-holes’ (Annex A.14 to the application) or ‘a cord or leather strip used to draw together opposite edges (chiefly of a garment or item of footwear) by being passed in and out eyelets, or around hooks, studs etc., and pulled tight and fastened’ (Annex A.15 of the application). In addition, according to the electronic version of the Oxford English Dictionary, a shoe lace is defined as ‘a cord or leather strip passed through eyelets or hooks on opposite sides of a shoe and pulled tight and fastened’, and, according to the electronic version of the Collins English Dictionary lite, it is defined as ‘a cord or lace for fastening shoes’. Thus, it is apparent from those definitions that the function of a shoe lace is to bring both sides of the upper of a shoe closer together and to keep them attached. By contrast, contrary to the applicant’s assertion, the tying of such a lace is not one of its essential characteristics.

46      Moreover, as the Board of Appeal stated (paragraph 20 of the contested decision) and as the applicant points out, the type of material from which the link it represents is made cannot be inferred from the illustration of the mark applied for. While the applicant states that it could be plastic, textile or rope, it must be pointed out that the application for registration of that mark contains no such indication.

47      Therefore, contrary to the applicant’s claim, the shape of which the mark applied for consists is likely to correspond to the abovementioned definitions of shoe laces. Moreover, the file shows that the applicant describes its product, having the shape of the mark applied for, using the expression ‘elastic shoe laces’.

48      In the second place, in support of its claim that the mark applied for departs significantly from the norms and customs of the sector concerned, the applicant submits that the Board of Appeal referred to a number of hyperlinks which it claims are irrelevant.

49      First, the applicant claims that the hyperlinks mentioned by the Board of Appeal date from 28 June 2018, that is to say ‘more than one year after the filing of the application’ for registration of the mark at issue. The applicant claims that they therefore do not prove that the mark was, at the time of that filing, devoid of the required distinctive character and that they should be disregarded. In addition, the applicant claims that the links relied on by the examiner and endorsed by the Board of Appeal have not been investigated or evaluated by the Board of Appeal and must be disregarded.

50      As stated in paragraph 42 above, the Board of Appeal both endorsed the examiner’s findings and set out the results of its own internet searches carried out on 28 June 2018 (paragraph 23 of the contested decision).

51      It must be pointed out that the distinctiveness of the mark applied for must be assessed on the date of filing of the application for registration of that mark and that the date of the Board of Appeal’s search corresponds to that of the contested decision. In view of the period of almost a year between those two dates and the fact that there is no reason to take the view that the examples cited by the Board of Appeal already existed on the date of the abovementioned filing, those examples are not capable of demonstrating that the mark applied for has no distinctive character.

52      However, as is clear from the contested decision, the examples mentioned by the Board of Appeal only add to those cited by the examiner in her letter of 17 July 2017, cited in paragraph 4 above. Accordingly, the examiner mentioned four links to online sales websites, which were illustrated by screenshots showing shoe laces of a shape similar to that of the mark applied for. As the date of the examiner’s search is very close to the date of filing of the application for registration of the mark at issue, the examples accordingly cited must be held to be relevant, as the applicant moreover does not dispute, to the assessment of whether or not that mark lacked the required distinctive character at the time of that filing.

53      In addition, since the Board of Appeal pointed out that the examiner had already shown, through various examples, that there were many straps for lacing shoes on the market which were similar in shape, it must be held that, contrary to the applicant’s claim, the Board of Appeal assessed those examples.

54      Second, the applicant asserts that, in any event, both the examples cited by the examiner, and endorsed by the Board of Appeal in paragraph 23 of the contested decision, and those mentioned solely by the Board of Appeal, do not establish that the mark applied for lacks the required distinctive character. In order to contradict those examples, the applicant claims that the goods concerned are imitations.

55      Having regard to the findings set out in paragraphs 51 to 54 above, the applicant’s arguments must be examined in order to assess whether they call into question the Board of Appeal’s findings in so far as they are based on the examples cited by the examiner.

56      First, the applicant submits that none of the websites cited by the examiner are sites of trade mark proprietors. Rather, they are online sales platforms, some of which are particularly well known as being used by counterfeiters as sales vehicles. It must be held that the fact that online sales platforms are concerned in no way diminishes the probative value of the evidence provided by the examiner seeking to demonstrate the existence on the EU market of shapes similar to that forming the mark applied for. Moreover, even if some of those sites were to be used for the sale of counterfeit goods, that possibility alone does not prove that the goods referred to by the links cited by the examiner and endorsed by the Board of Appeal are counterfeit. In any event, the Court does not have jurisdiction to rule on the alleged counterfeiting.

57      Second, the applicant maintains that most of the hyperlinks cited in support of the claim that the mark applied for is devoid of any distinctive character are no longer active. In particular, it refers to two hyperlinks cited by the examiner and endorsed by the Board of Appeal in paragraph 23 of the contested decision. The applicant claims, in fact, to have taken the necessary measures to ensure that its intellectual property rights are no longer infringed by the counterfeit goods referred to by the links. In that respect, it must be held that the argument that those links are no longer active is not relevant, since the action before the Court seeks a review of the legality of decisions of the Boards of Appeal within the meaning of Article 72 of Regulation 2017/1001 and, in proceedings for annulment, the legality of the contested measure must be assessed in the light of the facts and law existing on the date on which the measure was adopted (see, to that effect, judgment of 21 April 2005, Ampafrance v OHIM — Johnson & Johnson (monBeBé), T‑164/03, EU:T:2005:140, paragraph 29). In any event, the applicant does not dispute that the two abovementioned links referred to examples of shapes similar to that of which the mark applied for consists.

58      It follows from the foregoing that the applicant’s arguments do not call into question the findings of the Board of Appeal, which endorse the examples cited by the examiner and indicate that the mark applied for does not depart significantly from the norms and customs of the sector concerned.

59      Third, the applicant relies on the success of its product, the shape of which corresponds to the shape of which the trade mark applied for consists, as well as that of its ‘brand’, which may be deduced from the fact that, first, two companies market goods bearing both their brand and the ‘HICKIES brand’ and, second, the applicant’s competitors use that brand as a key word to attract internet consumers. In that respect, it must be held that, in addition to the fact that Annex A.11 to the application, submitted in support of that argument, is inadmissible, first, the applicant is relying on the success of a mark which is not the mark applied for and, second, it has not argued for distinctive character acquired by use of the mark applied for as referred to in Article 7(3) of Regulation 2017/1001, as correctly found by the Board of Appeal (paragraph 33 of the contested decision).

60      Fourth, the applicant relies on the novelty of the product whose shape corresponds to that of which the mark applied for consists. In that respect, it claims to be a trendsetter and relies on the worldwide launch of the idea for the product in 2012 and the EU launch of the product itself in 2014.

61      It must be noted that the evidence (Annexes A.7 to A.9 to the application) submitted in support of the applicant’s claims is inadmissible. As a result, that argument can only be rejected since the applicant has provided no evidence permitting a finding of novelty in respect of the product whose shape corresponds to that of which the mark applied for consists.

62      In any event, it must be held that, even if a finding of novelty were to be established in respect of the product, the shape of which corresponds to that of which the mark applied for consists, as relied on by the applicant, that fact does not necessarily mean that that mark is distinctive.

63      First, it must be recalled that, according to well-established case-law, the signs commonly used for the marketing of the goods or services concerned are deemed incapable of identifying the origin of those goods or services. Nevertheless, that claim cannot be interpreted a contrario to conclude that the mark applied for has distinctive character when it is not commonly used for the goods and services at issue. It follows from case-law that the assessment of an EU trade mark’s distinctive character is not based on the originality or lack of use of that mark in the area covering the goods and services concerned (see judgment of 12 February 2015, Vita Phone v OHIM (LIFEDATA), T‑318/13, not published, EU:T:2015:96, paragraph 24 and the case-law cited).

64      In addition, it should be pointed out that the applicant’s argument that there has been an infringement of intellectual property rights, which in the present case is the right to two EU designs, by reason of the marketing of goods with a shape similar to that of the applicant’s product, whose shape corresponds to that of which the mark applied for consists, does not affect the analysis of the intrinsic distinctiveness of the mark applied for, as stated by the Board of Appeal (paragraph 28 of the contested decision). The protection of a design right does not actually imply that the shape concerned is distinctive, because the criteria for examining those two rights are fundamentally different. The protection of a design right concerns the appearance of a product that differs from existing designs and is based on the novelty of that design, namely that no identical design has been publicly disclosed, and on its individual character. By contrast, in the case of a trade mark, while the shape of which the mark applied for consists must necessarily depart significantly from the norm or from the customs of the sector concerned in order for it to have distinctive character, the mere novelty of that shape is not sufficient ground to find that such a character exists, since the decisive criterion is the ability of that shape to fulfil the function of indicating commercial origin.

65      The Board of Appeal was also correct to downplay the importance of the design awards relied on by the applicant. Indeed, according to the case-law, the fact that goods benefit from a high quality design does not necessarily mean that a mark consisting of the three-dimensional shape of those goods enables ab initio those goods to be distinguished from those of other undertakings for the purposes of Article 7(1)(b) of Regulation 2017/1001 (see judgment of 12 September 2007, Neumann v OHIM (Shape of a microphone head), T‑358/04, EU:T:2007:263, paragraph 64 and the case-law cited). In addition, as EUIPO argues, the experts awarding those prizes may focus on very small differences, while the relevant public, with average attention in the present case, will not carry out an analytical examination of the shape at issue.

66      Moreover, as regards the decision of the Second Board of Appeal of EUIPO of 16 April 2014 (Case R 2072/2013-2) on which the applicant relies and in which account was taken of the fact that a three-dimensional mark for an inhaler had won several design awards, it should be noted that, as EUIPO maintains, that case was different from the present case. First, it is apparent from that decision that the existence of many examples of nasal and oral inhalation devices in very different shapes was an important factor in the Board of Appeal’s assessment. Second, account was taken of the fact that the relevant public would be guided by health professionals, who would not only recognise minimal differences between the different goods, but would also be familiar with the pharmaceutical manufacturers and their goods. Third, design awards have been treated as one of a number of factors, such as surveys carried out in different EU countries and trade mark registrations in several States.

67      Consequently, while it is possible to take account of there being awards for the design of the product, whose shape corresponds to that of which the mark applied for consists, the fact remains that those awards cannot constitute a factor which of itself allows a conclusion that the mark applied for has a distinctive character, and that the importance to be granted to that factor depends on the circumstances of the case.

68      On the other hand, since the application for registration of that mark was submitted in 2017, it does not matter that the product whose shape corresponds to that of which the mark applied for consists may have been new in 2014. The Board of Appeal therefore was correct to reject the same argument put before it by the applicant, taking the view that in the present case, the sole matter of importance was whether, at the time of the application for registration of the mark applied for, the extent to which the sign at issue differed from the sector norm or uses for that category of goods was sufficient to justify a finding that it had intrinsic distinctiveness (paragraph 29 of the contested decision).

69      It follows from all the foregoing that, with regard to shoe laces, it must be held that the Board of Appeal was correct, in essence, to consider that there was concrete evidence that at the date of filing of the application for registration of the mark at issue the relevant public was accustomed to the existence of shapes similar to the shape of that mark and that that shape did not depart significantly from the norm or customs of the sector concerned.

70      Even if, as the applicant claims, the relevant public could possibly perceive that that shape represents an innovative type of footwear closure, the fact remains that, as the Board of Appeal has, in essence, held (paragraphs 22 and 25 of the contested decision), the relevant public would perceive it only as a variant of the shape of a shoe lace without any particular elements capable of identifying the commercial origin of that shoe lace.

71      Moreover, it must be held, as did the Board of Appeal (paragraph 25 of the contested decision), that the eyelet and button located at each end of the lace which form a convex oval when the button is inserted into the eyelet to close the lace and thus the shoe, will be perceived by the relevant public as functional or decorative elements, but cannot confer a distinctive character on the mark applied for.

72      Therefore, in relation to shoe laces, the mark applied for is not capable of fulfilling its essential function of indicating origin and enabling the relevant public, which has been categorised as having an average attention level, to distinguish those goods from those of other undertakings without conducting an analytical examination and without paying particular attention. Consequently, it must be held to be devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 in respect of those goods.

 The distinctiveness of the mark applied for in relation to the other goods concerned

73      The applicant claims that the mark applied for is intended to obtain protection for goods other than shoe laces. In its view, those goods are not a simple substitute for shoe laces or a shoe ornament.

74      As recalled in paragraphs 36 to 39 above, the Board of Appeal considered that, since the shoe strap, the shape of which constitutes the mark applied for could be categorised as a shoe lace, as a substitute for shoe lace, namely shoe buckles and shoe fasteners, or also as shoe ornaments, it therefore also fell within the broader terms of ‘accessories for apparel and/or sewing articles and decorative textile articles’. In the Board’s view, none of the characteristics of that shape allowed the relevant public to perceive it as a form of shoe lace or shoe lace substitute which at the date of filing the application for registration departed significantly from the sector norms and customs for such goods. In addition, the Board took the view that the overall impression produced by the mark applied for was limited to a combination of purely decorative or functional elements. The Board therefore concluded that the mark applied for lacked the distinctive character referred to in Article 7(1)(b) of Regulation 2017/1001 for both the shoe laces and the other goods referred to in paragraph 8 above, namely ‘shoe buckles’, ‘shoe fasteners’, ‘shoe ornaments made of plastic’, ‘laces for footwear’, ‘accessories for apparel’ and ‘sewing articles and decorative textile articles’.

75      As a preliminary point, it must be recalled that, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. Furthermore, that obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, 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 (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).

76      In that respect, contrary to what the applicant appears to suggest, without nevertheless explicitly raising a plea in law or complaint alleging a lack of or an insufficient statement of reasons in the contested decision in relation to the goods referred to in paragraph 8 above, other than shoe laces, it must be observed that the Board of Appeal has, first, taken into consideration the fact that the mark applied for is intended to obtain protection for the sign at issue also with respect to those other goods and, second, stated the reasons why it took the view that the mark applied for was also devoid of any distinctive character in respect of those goods. Consequently, it cannot be claimed that the Board of Appeal failed to comply with the requirement to state reasons.

77      In the first place, as regards the applicant’s argument that the trade mark applied for is capable of being used for the goods covered by the application for registration of the trade mark applied for and for many other goods, it is sufficient to recall that, in accordance with settled case-law, cited in paragraph 26 above, the distinctive character of a trade mark must be assessed solely in relation to the goods and services for which registration is sought. Consequently, the fact that the contested mark may be used, for example, for bracelets or key rings, which are not referred to in the application for registration of that mark, is irrelevant for the purposes of examining its inherent distinctiveness.

78      In the second place, the goods at issue, mentioned in paragraph 8 above, are, in addition to ‘shoe laces’, ‘shoe fasteners’, ‘shoe ornaments made of plastic’, ‘laces for footwear’, ‘accessories for apparel’, ‘sewing articles and decorative textile articles’ and ‘shoe buckles’. All those goods are capable of falling within a generic category of products denoting a shoe fastening system, namely ‘shoe fasteners’. In addition, as the applicant argues, it is not known what the product, the shape of which constitutes the mark applied for, is made of (see paragraph 41 above). Consequently, as the shape of which the mark applied for consists is a variant of a shape for a shoe fastening system (see paragraphs 69 and 70 above), it may be relevant to all of those goods.

79      Therefore, in relation to the goods referred to in paragraph 8 above, other than ‘shoe laces’, as the shape of which the mark applied for consists is a variation of a shape similar to that of a fastening system familiar to the relevant public on the date of filing of the application for registration of that mark (see paragraphs 69 and 70 above), it is not so distinctive as to enable the relevant public, whose level of attention has been categorised as average, to distinguish those goods from those of other undertakings without conducting an analytical examination and without paying particular attention.

80      In any event, as the Board of Appeal considered, in relation to all the goods mentioned in paragraph 8 above, the various elements constituting the requested shape, namely both the oval convex shape of that strap in the closed position and in the facing upwards position, and the eyelet and button at its ends, do not constitute distinctive characteristics of the shape applied for, but are perceived as purely decorative or functional elements.

81      Therefore, in relation to the goods referred to in paragraph 8 above, other than ‘shoe laces’, the mark applied for is no more capable of fulfilling its essential function of indicating origin and must be considered to be devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

82      In the light of all the foregoing considerations, it must be concluded that the Board of Appeal was correct to take the view that the mark applied for was devoid of any distinctive character in relation to the goods referred to in paragraph 8 above. Accordingly, the single plea in law alleging infringement of Article 7(1)(b) of Regulation 2017/1001 must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

83      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Hickies, Inc to pay the costs.

Papasavvas

Csehi

Spineanu-Matei

Delivered in open court in Luxembourg on 5 February 2020.

E. Coulon

 

      S. Papasavvas

Registrar

 

Acting as President


*      Language of the case: English.


1 The present judgment is published by extracts.