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Cite as: [2011] EUECJ T-318/09, [2011] EUECJ T-318/9

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JUDGMENT OF THE GENERAL COURT (Third Chamber)

6 July 2011 (*)

(Community trade mark – Application for the Community word mark TDI – Absolute ground for refusal – Descriptive character – No distinctive character acquired through use – Article 7(1)(c) and 7(3) of Regulation (EC) No 207/2009 – Articles 75 and 76(1) of Regulation No 207/2009)

In Case T-318/09,

Audi AG, established in Ingolstadt (Germany),

Volkswagen AG, established in Wolfsburg (Germany),

represented by P. Kather, lawyer,

applicants,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 14 May 2009 (Case R 226/2007-1), concerning an application for registration of the word sign TDI as a Community trade mark,

THE GENERAL COURT (Third Chamber),

composed of O. Czúcz (Rapporteur), President, I. Labucka and K. O’Higgins, Judges,

Registrar: C. Heeren, Administrator,

having regard to the application lodged at the Registry of the General Court on 14 August 2009,

having regard to the response lodged at the Registry of the General Court on 27 November 2009,

having regard to the reply lodged at the Registry of the General Court on 5 February 2010,

further to the hearing on 8 December 2010,

gives the following

Judgment

Background to the dispute

1 On 22 May 2003, the applicants, Audi AG and Volkswagen AG, filed an application for registration of a Community trade mark at 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 Registration as a mark was sought for the word sign TDI.

3 The goods in respect of which registration was sought are in Class 12 of the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, as revised and amended, and correspond to the following description: ‘Vehicles and constructive parts thereof’.

4 By decision of 1 February 2007, the examiner rejected the application for registration with regard to all the goods in respect of which registration was sought pursuant to Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009). He also took the view that Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009) was not applicable on the ground that acceptance by the public of the sign applied for as a trade mark had not been adequately established.

5 On 5 February 2007, the applicants appealed against the examiner’s decision.

6 By decision of 14 May 2009 (‘the contested decision’), the First Board of Appeal of OHIM dismissed that appeal on the ground that the sign TDI was descriptive in respect of all the goods covered for the purposes of Article 7(1)(c) of Regulation No 207/2009, as the Court had held in Case T-16/02 Audi v OHIM (TDI) [2003] ECR II-5167. Furthermore, as regards the application of Article 7(3) of Regulation No 207/2009, the Board of Appeal found that the acquisition of distinctive character through use had to be proved throughout the European Union. It stated that the applicants had not adduced that evidence in respect of the mark TDI. As regards Denmark, the Netherlands and Ireland, it considered the documents which had been filed to be insufficient. In respect of the other Member States, it stated that the evidence furnished was not capable of proving acceptance of the sign applied for in so far as it did not show that that mark enabled consumers from those countries to identify the commercial origin of the goods in question.

Forms of order sought

7 The applicants claim that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

8 OHIM contends that the Court should:

– dismiss the action;

– order the applicants to pay the costs.

Law

9 In support of their action the applicant put forward four pleas in law. The first plea alleges infringement of Article 7(3) of Regulation No 207/2009. The second plea relates to Article 7(1)(b) and (c) of that regulation. The third and fourth pleas allege infringement of Article 76(1) and of Article 75 of Regulation No 207/2009 respectively.

10 The Court considers it appropriate, first, to examine the second plea, then the first plea and, lastly, the third and fourth pleas.

The second plea: infringement of Article 7(1)(b) and (c) of Regulation No 207/2009

Arguments of the parties

11 The applicants first of all submit that the sign TDI has been the subject of a number of national registrations and of an international registration. That, they argue, demonstrates that the sign is not descriptive and is not devoid of distinctive character.

12 Secondly, the applicants submit that OHIM assessed their application for registration of the sign TDI differently from applications for registration relating to similar signs, namely the signs CDI and HDI, which were filed by two other car manufacturers, in so far as it did not require it to be shown, for the purpose of the registration of those signs, that they had acquired distinctive character through use. Referring to the order of the Court of Justice of 12 February 2009 in Joined Cases C-39/08 and C-43/08 Bild digital (formerly Bild.T-Online.de), not published in the ECR, paragraph 17, they maintain that OHIM is required to take into account the decisions already taken in respect of similar applications and to consider with particular care whether it should decide in the same way or not, even though it cannot under any circumstances be bound by those decisions. It is, however, not apparent from the contested decision that the Board of Appeal took into account the decisions to register the signs CDI and HDI as Community trade marks.

13 OHIM disputes the applicants’ arguments.

Findings of the Court

14 It should be noted at the outset that the Board of Appeal based the contested decision solely on Article 7(1)(c) of Regulation No 207/2009. Consequently, the applicants’ arguments alleging infringement of Article 7(1)(b) of Regulation No 207/2009 are irrelevant.

15 Under Article 7(1)(c) of Regulation No 207/2009, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ may not be registered. According to Article 7(2), ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

16 The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the point of view of the relevant public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-2383, paragraph 24, and judgement of 9 June 2010 in Case T-315/09 Hoelzer v OHIM (SAFELOAD), not published in the ECR, paragraph 15).

17 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (PAPERLAB, cited in paragraph 16 above, paragraph 25, and SAFELOAD, cited in paragraph 16 above, paragraph 16).

18 As regards the word sign TDI, the Court held in its judgment in TDI, cited in paragraph 6 above, at paragraph 31, that this is an abbreviation of ‘turbo diesel injection’ or ‘turbo direct injection’. It also held that it is the quality of vehicles which is designated by that word sign, given that being equipped with a ‘turbo diesel injection’ or ‘turbo direct injection’ engine is an essential characteristic of a vehicle. As regards constructive parts for vehicles, the Court stated that the word sign TDI designated the type of goods (TDI, cited in paragraph 6 above, paragraph 34).

19 The Court also held in that judgment that the sign TDI was descriptive of the goods concerned in the entire European Union. Since the vehicles are, in principle, sold under the same names on the entire internal market, there is no difference between the various parts of the European Union in terms of the relevant public’s understanding of the meaning of that sign and of the link between that sign and the goods in respect of which registration is sought (TDI, cited in paragraph 6 above, paragraph 38).

20 First, the applicants’ argument relating to the national registrations and to the international registration of the sign TDI must be rejected as irrelevant. It is sufficient to point out that, according to well-established case-law, first of all, the Community trade mark regime is an autonomous system and secondly, that the legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 (Case T-122/01 Best Buy Concepts v OHIM (BEST BUY) [2003] ECR II-2235, paragraph 41; Case T-320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411, paragraph 95; and judgment of 12 March 2008 in Case T-128/07 Suez v OHIM (Delivering the essentials of life), not published in the ECR, paragraph 32).

21 Secondly, it is necessary to examine the applicants’ head of claim alleging infringement of the principle of equal treatment.

22 First, in that regard, it must be borne in mind that, according to settled case-law, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. The legality of decisions of the Boards of Appeal must therefore be assessed purely by reference to that regulation, as interpreted by the Community Courts, and not to the practice of the Boards in earlier cases (Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 47; Case T-36/01 Glaverbel v OHIM (Surface of a plate of glass) [2002] ECR II-3887, paragraph 35; and Case T-207/06 Europig v OHIM (EUROPIG) [2007] ECR II-1961, paragraph 40).

23 Secondly, as regards the applicants’ arguments relating to the order in Bild digital (formerly Bild.T-Online.de), cited in paragraph 12 above, it must be pointed out that the Court of Justice stated in paragraph 17 of that order, concerning the interpretation of Article 3 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), that a national authority responsible for registration must, in examining an application for registration and in so far as it has information in that regard, take into account the decisions already adopted in respect of similar applications and consider with particular care whether it should decide in the same way or not. However, even if such a consideration were to apply by analogy to the examination carried out by the departments of OHIM under Regulation No 207/2009, the Court of Justice has also stated that the authority in question cannot under any circumstances be bound by the decisions already adopted in respect of those similar applications. Furthermore, the Court of Justice also pointed out in paragraph 18 of that order that the way in which the principle of equal treatment is applied must be consistent with respect for legality, with the result that an undertaking cannot rely before the responsible authority on the benefit of a decision-making practice on the part of that authority which is contrary to the legislation applicable or which would lead that authority to take an unlawful decision.

24 Consequently, the applicants cannot validly rely on the registration of the other signs as Community trade marks for the purpose of demonstrating that the contested decision is unlawful.

25 For the sake of completeness, it must be added that the applicants have not shown that there was a sufficiently direct and specific relationship between those signs and the goods in question to enable the public concerned immediately to perceive the acronyms HDI and CDI, without further thought, as being a description of motor car vehicles or their components or of one of their characteristics. By contrast, as has been pointed out in paragraph 18 above, the Court held that the acronym TDI is perceived by the relevant public as being an abbreviation of the words ‘turbo diesel injection’ or ‘turbo direct injection’ and therefore designates the quality or type of the goods in respect of which registration is applied for. The applicants have not therefore shown that their situation was comparable to that of the applicants for registration of the marks HDI and CDI. The principle of equal treatment is, however, infringed only where comparable situations are treated differently or different situations are treated in the same way (Case 106/83 Sermide [1984] ECR 4209, paragraph 28, and Case T-304/02 Hoek Loos v Commission [2006] ECR II-1887, paragraph 96).

26 The second plea must therefore be rejected.

The first plea: infringement of Article 7(3) of Regulation No 207/2009

Arguments of the parties

27 First, the applicants maintain that acceptance of the mark does not have to be proved in all the Member States. They also submit that the principles applicable to the reputation of a mark, within the meaning of Article 9(1)(c) of Regulation No 207/2009, must be applied to the assessment of the acquisition by a mark of distinctive character through use. It is, they submit, for that reason sufficient to show that the mark has been accepted in a substantial part of the territory of the European Union. In that regard, the applicants also rely on the judgments in Case T-262/04 BIC v OHIM (Shape of a lighter) [2005] ECR II-5959, paragraph 69, and Case C-301/07 PAGO International [2009] ECR I-9429.

28 Furthermore, the applicants state that, in the context of the interpretation of Article 7(3) of Regulation No 207/2009, it is also necessary to take into consideration the fact that an assessment based on a country-by-country examination is not concordant with a common market and an economic union. They maintain that it is necessary rather to ascertain whether the mark allows a significant section of the population of the European Union to identify the goods or services concerned as coming from a specific undertaking.

29 The applicants dispute OHIM’s argument that geographical borders are relevant, arguing that what is in issue here is a matter of language barriers. According to the applicants, the sign TDI, which consists of three letters, will be perceived identically in all languages.

30 As regards OHIM’s argument that, in respect of Denmark, the Netherlands and Ireland, they adduced no evidence other than that relating to market shares, the applicants refer to the Court’s judgment of 14 September 2009 in Case T-152/07 Lange Uhren v OHIM (Geometric fields on the face of a watch), not published in the ECR, paragraph 126. According to the applicants, the Court expressed the view in that judgment that the market share held by the mark was an item of information which could be relevant for the purpose of assessing whether that mark had acquired distinctive character through use. The applicants share that opinion and submit that it is possible to deduce from the market shares of the goods to which the sign TDI has been affixed the degree of renown of that sign in respect of which registration has been applied for, in so far as that sign is displayed, as a matter of course, on the boot of the vehicle. That market share therefore makes it possible directly to deduce the ‘penetration’ of the sign TDI.

31 The applicants also submit that the registration of the mark TDI in certain Member States is tantamount to evidence that that mark has been accepted in those countries. The acquisition by that mark of distinctive character through use is necessary only if the mark has not been registered in accordance with national law harmonised with the Community regime. In the present case, the population of the countries in which the mark TDI has been registered represents almost two thirds of the population of the European Union at the time when the application for registration of the sign TDI as a Community trade mark was filed.

32 Secondly, the applicants agree with the Board of Appeal’s assessment that the level of attention of the average consumer is high when that consumer is purchasing a car. However, they dispute the finding in paragraph 28 of the contested decision that the level of attention of the relevant public is different when technical information is involved. According to the applicants, in the case of very expensive, high-tech goods, the consumer studies all the information, including the make of the car, with particular attention.

33 Thirdly, the applicants submit that, during the procedure before the examiner, they sent him, first, data showing that their vehicles bearing the sign TDI represented a significant market share in the motor vehicle market of the European Union at the time when the application for registration was filed and, secondly, the turnover made from the sale of those vehicles. Furthermore, they state that the fact that each vehicle is being driven with the sign TDI affixed to its boot constitutes a moving advertisement, which makes the figures communicated all the more significant. They also submit that the degree of renown of the mark applied for is proportionate to the turnover and constitutes an important factor in assessing acceptance of that mark. Lastly, they refer to the advertising material and to declarations from automobile clubs which they submitted in the course of the procedure before the examiner.

34 Furthermore, the applicants refer to declarations from competitors, according to which those competitors do not use the sign TDI and it is associated with the applicants. The applicants state that certain car manufacturers buy engines from them, that they have authorised those car manufacturers to use the mark TDI to promote those engines and that one of them did not market any diesel vehicles prior to 2009.

35 In addition, according to the applicants, the use by competitors of distinct acronyms to name their diesel vehicles reinforces the fact that the acronym TDI is the applicants’ name for their diesel vehicles in the mind of consumers.

36 Fourthly, the applicants criticise the Board of Appeal for taking the view that they did not, in trade, use the sign TDI as a trade mark, but as a ‘descriptive acronym’. They submit that, according to the case-law, use as a mark does not mean that the sign in question must be used on its own. The use of that sign in conjunction with other signs is also relevant. In the present case, they submit that they furnished proof of the use of the sign TDI in conjunction with other marks.

37 The applicants dispute the Board of Appeal’s view that it is necessary to show that the types of public concerned perceive the sign at issue as a mark. They state that it is sufficient to show that the relevant class of persons actually perceives the product or service, designated exclusively by the mark applied for, as originating from a given undertaking. The applicants accuse the Board of Appeal of circular reasoning in stating that the sign TDI was a descriptive indication and, consequently, that the relevant class of persons does not associate that sign with a given undertaking. Such reasoning implies that an inherently descriptive sign can never acquire distinctive character through use on the ground that that sign cannot be perceived by the relevant public as an indication of the commercial origin of the goods or services to which it is affixed. Such an approach, they contend, would render Article 7(3) of Regulation No 207/2009 meaningless. They refer, in that regard, to the judgment in Case C-299/99 Philips [2002] ECR I-5475, paragraph 40. Furthermore, the concept of acceptance of the mark is specifically intended to offset the ‘alleged shortcoming of a descriptive indication’.

38 OHIM disputes the applicants’ arguments.

Findings of the Court

39 Under Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal to register set out in Article 7(1)(b) to (d) of that regulation do not preclude registration of a trade mark if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

40 Article 7(3) of Regulation No 207/2009 does not provide an independent right to have a trade mark registered. It is an exception to the grounds for refusal listed in Article 7(1)(b) to (d) of the regulation. Its scope must therefore be interpreted in light of those grounds for refusal (Geometric fields on the face of a watch, cited in paragraph 30 above, paragraph 121; see also, and by analogy, Case C-108/05 Bovemij Verzekeringen [2006] ECR I-7605, paragraph 21).

41 Moreover, it follows from the case-law that the acquisition by a mark of distinctive character through use requires that at least a significant proportion of the relevant 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 Geometric fields on the face of a watch, cited in paragraph 30 above, paragraph 122).

42 Furthermore, the Court of Justice held in its judgment in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, at paragraph 49, that, in determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings.

43 In that regard, account must be taken of, inter alia: the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons which, because of the mark, identifies the goods concerned as originating from a particular undertaking; statements from chambers of commerce and industry or other trade and professional associations as well as consumer surveys (see Shape of a beer bottle, cited in paragraph 41 above, paragraph 44 and the case-law cited).

44 In the present case, the Board of Appeal found, on the basis of the judgment in TDI, cited in paragraph 6 above, that, as the sign TDI consists of the first letters of the words contained in the expressions ‘turbo direct injection’ or ‘turbo diesel injection’, the absolute ground for refusal in Article 7(1)(c) of Regulation No 207/2009 pertained throughout the European Union and that, consequently, the mark TDI had to have acquired distinctive character through use in each of the 15 Member States of the European Union at the date on which the application for registration was filed, namely 22 May 2003 (paragraphs 32 and 33 of the contested decision). According to the Board of Appeal, however, the applicants had not proved that the mark had become accepted through use in Denmark, the Netherlands and Ireland (paragraph 40 of the contested decision). Furthermore, the Board of Appeal found that, in the other Member States, the sign TDI had not been used as a mark, but solely as a descriptive indication, with the result that it could not acquire, through that use, any distinctive character (paragraphs 41 and 44 of the contested decision).

45 In the first place, the applicants dispute the Board of Appeal’s assertion that proof that the mark TDI has been accepted must be furnished in respect of each of the Member States of the European Union. They take the view that it is sufficient to show that that acceptance relates to a substantial part of the territory of the European Union.

46 According to the case-law, a mark can be registered by virtue of Article 7(3) of Regulation No 207/2009 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character. The part of the European Union referred to in Article 7(2) may be comprised of a single Member State (Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 83).

47 It is thus in all the Member States of the European Union in which the mark applied for did not, ab initio, have distinctive character that it must have become distinctive through use in order to be registrable under Article 7(3) of Regulation No 207/2009 (see, to that effect, judgment of 12 September 2007 in Case T-141/06 Glaverbel v OHIM (Texture of a glass surface), not published in the ECR, paragraph 38). Furthermore, the evidence adduced with regard to certain Member States is not capable of proving that the sign has acquired distinctive character in the other Member States of the European Union (see, to that effect, Texture of a glass surface, paragraph 39).

48 It follows that, in the present case, as the sign TDI is inherently descriptive throughout the European Union, the acquisition of distinctive character through use must be proved in respect of each of the Member States of the European Union.

49 The applicants’ arguments cannot call that finding into question.

50 First, as regards the arguments derived from the judgment in Shape of a lighter, cited in paragraph 27 above, it is apparent from paragraph 68 et seq. of that judgment that the Court did not intend to rule on the principles to be applied in regard to the definition of the relevant territory for the purpose of assessing the acquisition of distinctive character through use, but merely stated that, in that case, ‘[the proof of use] [had to] be produced in respect of a substantial part of the Community’. Furthermore, the Court also held in that case that the evidence adduced to prove acceptance of the three-dimensional mark applied for was inadequate, with the result that it was not necessary, in order to dispose of the case, to determine whether or not the absence of evidence that distinctive character had been acquired through use in certain countries precluded registration pursuant to Article 7(3) of Regulation No 207/2009.

51 The applicants cannot therefore rely on the judgment in Shape of a lighter, cited in paragraph 27 above, in order to call into question the approach taken by the Board of Appeal, which is compatible with the case-law cited in paragraph 45 above.

52 Secondly, the applicants maintain that the Board of Appeal should use the same criterion as that which it applies in ascertaining whether a mark has a reputation within the meaning of Article 9(1)(c) of Regulation No 207/2009 and find that it is sufficient to show that the mark has been accepted in a substantial part of the territory of the European Union.

53 It must be borne in mind that, pursuant to Article 9(1)(c) of Regulation No 207/2009, the proprietor of a Community trade mark is entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, that Community trade mark, in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the European Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.

54 In that regard, it must be pointed out that the applicants cannot validly call into question the approach taken by the Board of Appeal, which is compatible with the specific case-law relating to the acquisition of distinctive character through use, pursuant to Article 7(3) of Regulation No 207/2009, by relying on case-law which relates to a separate provision of that regulation.

55 In particular, having regard to the difference in the logic which forms an integral part of the application, first, of Article 9(1)(c) of Regulation No 207/2009, which relates to reputation, and, secondly, of Article 7(3) of that regulation, which concerns the acquisition of distinctive character through use, and to their respective positions in the general scheme of that regulation, the same test cannot be used as regards the relevant territory within the context of the application of those two provisions.

56 Article 9(1)(c) of Regulation No 207/2009 protects the legitimate interests of proprietors whose marks have, on account of their commercial and advertising efforts, acquired a reputation. Consequently, the use of the mark by another trader may serve to take unfair advantage of, or be detrimental to, the mark which has a reputation even if the mark is well-known, depending on the circumstances, only to a significant section of the relevant public within a single Member State.

57 By contrast, in the context of the application of Article 7(3) of Regulation No 207/2009, account must be taken of the fact that that provision constitutes an exception to the prohibition on registering, inter alia, a descriptive sign as a Community trade mark and that, according to Article 7(2), that prohibition applies even if the ground of non-registrability obtains in only part of the European Union. If the interpretation proposed by the applicants were upheld, it would imply that a descriptive mark could be registered on the basis that it had acquired distinctive character through use in a substantial part of the European Union, even though the mark would remain descriptive in the other parts of the European Union. The interpretation proposed by the applicants is for that reason contrary to the very wording of Regulation No 207/2009.

58 Consequently, it is necessary to reject the applicants’ argument criticising the Board of Appeal for failing to interpret the relevant territory, with a view to establishing whether distinctive character had been acquired through use, in the same way as the Court of Justice had done in the judgments relating to the determination of whether a reputation existed within the meaning of Article 9(1)(c) of Regulation No 207/2009.

59 Thirdly, the applicants cannot validly claim that, in the light of the establishment of the single economic area of the European Union, geographical borders have become irrelevant.

60 It must be borne in mind in that regard that, in its judgment in Texture of a glass surface, cited in paragraph 47 above, at paragraph 40, the Court took the view that:

‘[The argument] that the approach consisting of counting the number of countries from which evidence emanates is contrary to the need to regard the [European Union] as a single market cannot be upheld. Under Article 7(1)(b) of Regulation No [207/2009], read in conjunction with Article 7(2) thereof, a mark must be refused registration if it is devoid of distinctive character in part of the [European Union] and the part of the [European Union] referred to in Article 7(2) may be comprised of a single Member State… The Board of Appeal thus rightly examined the evidence concerning distinctive character acquired through use for each Member State separately.’

61 Having regard to the foregoing, it must held that the Board of Appeal acted correctly in finding that, as the sign was descriptive throughout the European Union, the applicants were required to adduce evidence that it had acquired distinctive character through use in each of the 15 Member States of the European Union at the time when the application for registration was filed.

62 In the second place, the applicants maintain that, contrary to the Board of Appeal’s assessment, they did adduce evidence of the acquisition of distinctive character through use in each of the Member States, including Ireland, Denmark and the Netherlands.

63 In that regard, it is clear that the only relevant item of evidence adduced by the applicants regarding those three Member States is the market share which they hold there.

64 The circumstances in which the condition as to the acquisition of distinctive character through use may be regarded as satisfied cannot, however, be shown to exist solely by reference to general, abstract data, such as specific percentages (see Texture of a glass surface, cited in paragraph 47 above, paragraph 32 and the case-law cited, and Case T-405/05 Powerserv Personalservice v OHIM – Manpower (MANPOWER) [2008] ECR II-2883, paragraph 131).

65 In particular, data relating to market share do not, as such, show that the public targeted by the goods in question perceives a descriptive sign as an indication of commercial origin (see, by analogy with the provision of data relating to sales volumes and advertising material, Texture of a glass surface, cited in paragraph 47 above, paragraph 41). Furthermore, as regards the abovementioned Member States, the applicants have not submitted comprehensive information on a case-by-case basis, inter alia on how intensive, geographically widespread and long-standing the use of the mark TDI has been or on the amount which they have invested in promoting that mark.

66 Consequently, it must be held that the Board of Appeal acted correctly in finding that there was insufficient evidence of the acquisition of distinctive character through use in Ireland, Denmark and the Netherlands.

67 Given that the applicants had to adduce evidence of the acquisition of distinctive character through use in each of the 15 Member States of the European Union (see the conclusion in paragraph 61 above), the absence of sufficient evidence as regards those three Member States is sufficient in itself to support the Board of Appeal’s decision to reject the application for registration.

68 Consequently, it is not necessary to examine the merits of the arguments which the applicants have put forward with regard to the grounds for the contested decision which relate to the absence of use of the sign TDI as a mark.

69 It must, however, be stated, for the sake of completeness, that the Board of Appeal was right to find, in paragraph 53 of the contested decision, that it could not be concluded that the sign TDI had been used as a mark since that sign was either used in a directly descriptive manner or appeared in advertising material along with other marks of the applicants which are distinctive.

70 According to the case-law, in regard to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark. The expression ‘use of the mark as a trade mark’ must therefore be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking (see, by analogy, Case C-353/03 Nestlé [2005] ECR I-6135, paragraphs 26 and 29).

71 Contrary to the applicants’ contentions, the Board of Appeal did not find that there had been no use as a trade mark on the basis of circular reasoning in assuming that, as the sign is descriptive, it could not be used as a trade mark.

72 In paragraphs 45 to 52 of the contested decision, the Board of Appeal analysed a number of advertisements submitted by the applicants. Furthermore, as the Board of Appeal rightly found, that advertising material clearly gives the relevant public the impression that the sign TDI was not used to identify the commercial origin of the goods in question, but to describe a characteristic of the motor vehicles in that material, namely that of being equipped with a direct fuel-injection diesel engine.

73 In addition, in the advertising material submitted by the applicants and included in the administrative file, the sign TDI always appears with another mark belonging to the applicants, such as the trade marks Audi, VW or Volkswagen. The Court has, however, held on numerous occasions that advertising material on which a sign which is devoid of any distinctive character always appears with other marks which, by contrast, do have such distinctive character does not constitute proof that the public perceives the sign applied for as a mark which indicates the commercial origin of the goods (Shape of a beer bottle, cited in paragraph 41 above, paragraph 51, and Shape of a lighter, cited in paragraph 27 above, paragraph 77). In any event, by quoting an internet site indicating that the Spanish public perceives the sign TDI as an abbreviation which refers to the type of direct fuel-injection diesel engine, irrespective of the car manufacturer, the Board of Appeal established that, despite all the applicants’ advertising efforts in Spain, the relevant public did not perceive that sign as identifying the commercial origin of the goods in question, but as a descriptive and generic term.

74 In the light of the foregoing, the first plea must be rejected.

The third plea: infringement of Article 76(1) of Regulation No 207/2009

Arguments of the parties

75 The applicants submit that the examiner did not reply to their requests for a meeting to discuss the need and the scope of an opinion poll which, they claim, would show, in respect of the goods in question, that the mark TDI had acquired distinctive character through use. They maintain that their willingness was guided by the fact that polls generate significant costs and by the fact that, in the absence of agreement on the parameters of the poll, they would incur unnecessary effort, which would not make their work or that of OHIM easier. Furthermore, OHIM ought, in compliance with the principle that it is to examine the facts of its own motion, to have contacted them with regard to the parameters of such a poll. Given that such a consultation did not take place, OHIM was in breach of Article 76(1) of Regulation No 207/2009.

76 Furthermore, the applicants criticise the Board of Appeal’s finding in paragraph 55 of the contested decision that, in essence, the fact that the examiner did not accede to their request for a consultation on the conditions for a poll is regrettable, but does not release them from the risk that the evidence may remain insufficient in the absence of the submission of such a poll. In accordance with the principle that OHIM is to examine the facts of its own motion, they argue that OHIM is required to respond to a ‘request for guidance’ in order to provide an applicant with the possibility of conferring on its opinion poll, from the outset, the characteristics which will make it acceptable to OHIM. Lastly, the applicants submit that, when the Board of Appeal establishes that there is an error in the assessment carried out by the examiner, which it did in the present case by using the word ‘regrettable’, it may exercise any power within the examiner’s competence and correct that error.

77 OHIM disputes the applicants’ arguments.

Findings of the Court

78 Article 76(1) of Regulation No 207/2009 provides that ‘[i]n proceedings before it [OHIM] shall examine the facts of its own motion’.

79 The applicants complain in respect of OHIM that the examiner did not reply to their requests for a meeting to discuss the need and the scope of an opinion poll which, they claim, would show, in respect of the goods at issue, that the mark TDI had acquired distinctive character through use. The absence of a poll was, however, they argue, also taken into account by the Board of Appeal when it dismissed the applicants’ appeal before it, with the result that the absence of a reply on the part of the examiner affects the validity of the contested decision.

80 It must be stated that that plea on the part of the applicants has no factual basis.

81 By letter of 20 October 2004, the examiner informed the applicants, in accordance with Rule 11(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), that the sign TDI was not eligible for registration. In that letter, the examiner stated that ‘opinion polls [were] almost always indispensable in examination procedures involving acceptance [of the mark]’.

82 It was in response to the communication of the grounds for refusal that, by letter of 20 January 2005, the applicants proposed that their counsel ‘take advantage of the opportunity presented by a forthcoming business trip to Spain to agree with the OHIM examiners on a meeting at which the subsequent stages of the procedure could be directly discussed; experience shows that a direct exchange concerning the subsequent stages of the procedure is more effective and economical than lengthy written documents’.

83 The letter of 20 January 2005 does not, however, contain any reference to an offer to provide an opinion poll, the content of which could have been discussed with the examiner during a ‘business meeting’ and, in that letter, the applicants mentioned the ‘likely very limited utility’ of opinion polls at European level and stated that, according to the practice of OHIM and of the Courts of the European Union, opinion polls were not necessary.

84 Consequently, it must be held that the examiner stated clearly that opinion polls were ‘almost always indispensable’ to prove the acceptance of a mark. By contrast, it is not apparent from the applicants’ letter of 20 January 2005 that they offered to carry out opinion polls or that they wished to specify their scope before conducting them, particularly as they had expressed their view that opinion polls were not necessary according to the practice of OHIM and according to the case-law.

85 In those circumstance, the applicants cannot validly claim that, in the present case, the fact that there was no business meeting with the applicants’ counsel to specify the content of the opinion polls to be carried out constitutes an unlawful act capable of affecting the validity of the contested decision.

86 Consequently, the third plea must be rejected.

The fourth plea: infringement of Article 75 of Regulation No 207/2009

Arguments of the parties

87 According to the applicants, the contested decision is based in essence on the Board of Appeal’s finding that the acquisition of distinctive character through use was not possible as the mark was descriptive in nature. The Board of Appeal, they submit, took the view in that regard that an opinion poll was necessary (paragraph 54 of the contested decision).

88 The applicants also submit that the Board of Appeal did not inform them that it concurred, on that point, with the examiner’s opinion. Having regard to their offer of evidence, the Board of Appeal ought to have informed them that it was also of the view that the acquisition of distinctive character through use could be proved only by an opinion poll. The Board of Appeal, however, adopted the contested decision without first having given the slightest indication as to the need to conduct opinion polls.

89 OHIM disputes the applicants’ arguments.

Findings of the Court

90 According to Article 75 of Regulation No 207/2009, OHIM decisions must state the reasons on which they are based and may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

91 In that regard, suffice it to state that the applicants’ line of argument is based on an erroneous premiss, namely that there was an offer of evidence relating to the conduct of opinion polls. As has been stated in paragraph 84 above, however, it is not apparent from the applicants’ letter of 20 January 2005 that they offered to carry out opinion polls or that they wished to specify the scope of such polls before doing so.

92 It must further be pointed out that the applicants do not mention any rule of law which obliged the Board of Appeal to inform them, prior to the adoption of the contested decision, of its intention to take into account the absence of an item of evidence – namely the opinion polls – the importance of which had already been made clear by the examiner.

93 Consequently, the fourth plea must be rejected and the action dismissed in its entirety.

Costs

94 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicants have been unsuccessful, they must be ordered to pay the costs of OHIM, in accordance with the form of order sought by the latter.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1. Dismisses the action;

2. Orders Audi AG and Volkswagen AG to pay the costs.

Czúcz

Labucka

O’Higgins

Delivered in open court in Luxembourg on 6 July 2011.

[Signatures]

* Language of the case: German.