Court of Justice of the European Communities (including Court of First Instance Decisions)

ORDER OF THE GENERAL COURT (Fifth Chamber)

14 December 2018 (*)

(EU trade mark — Application for registration of a three-dimensional EU mark — Shape of a drinking straw with filter — Disregard of the procedural requirements — Article 177(1)(d) of the Rules of Procedure of the General Court — Article 7(1)(b) of Regulation (EU) 2017/1001 — No distinctive character — Article 7(3) of Regulation 2017/1001 — No distinctive character acquired through use — Action manifestly lacking any foundation in law)

In Case T-526/18,

Vestergaard SA, established in Lausanne (Switzerland), represented by S. Hansen, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO),

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 8 June 2018 (Case R 2345/2017-5), relating to an application for registration of a three-dimensional sign consisting of the shape of a drinking straw with filter as an EU trade mark,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias (Rapporteur), President, I. Labucka and I. Ulloa Rubio, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 27 August 2018,

makes the following

Order

 Background to the dispute

1        On 11 April 2017, the applicant, Vestergaard SA, 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 mark was sought for the following three-dimensional sign:

3        The goods in respect of which registration was sought are in Class 21 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: ‘Drinking straw with filter’.

4        The applicant also claimed the colours turquoise and blue for the cylindrical tubes represented in the sign in question.

5        By decision of 4 September 2017, the examiner declared that the application for registration filed by the applicant should be rejected on the basis of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) and Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001).

6        On 31 October 2017, the applicant appealed against that decision before EUIPO. More specifically, it argued, in the first place, that the mark applied for is distinctive in particular because it differs significantly from the examples referred to by the examiner, all the more so because it is a drinking straw with an original filter that saves millions of lives every year. In the second place, it submitted that the relevant public was composed of, inter alia, humanitarian organisations and other emergency relief organisations, hikers, scouts and people who pursue outdoor activities, for which the choice of product is significant. Lastly, it submitted that the examiner had failed to carry out a detailed examination of the evidence provided regarding distinctive character acquired through use.

7        By decision of 8 June 2018 (‘the contested decision’), which was notified to the applicant on 27 June 2018, the Fifth Board of Appeal of EUIPO dismissed the appeal. More specifically, it considered, first, that the goods covered by the application for registration are relatively specialised in the light of their nature and are aimed at both the average consumer and business consumers, who have a high level of attention. It went on to consider that the mark applied for does not depart significantly from the norms and customs of the sector, inasmuch as the overall impression conveyed by the mark is merely that of a drinking straw. The mark in question is therefore, according to the Board of Appeal, devoid of any distinctive character, as it is merely a variant of a common shape of the goods in respect of which registration was sought.

8        Moreover, as regards the applicant’s claims on the basis of Article 7(3) of Regulation 2017/1001, the Board of Appeal considered in the first place that, as a whole, the evidence submitted by the applicant referred to the mark LIFESTRAW, that is, the name of the product represented by the three-dimensional sign applied for. There was therefore a certain amount of uncertainty whether the use of the word element ‘lifestraw’ is connected, for the relevant public, to the mark applied for. What is more, that evidence included, inter alia, information as to the innovative nature of the technological and socio-economic aspects of the goods manufactured by the applicant, without referring to the shape of the goods per se.

9        In the second place, the Board of Appeal stated, in paragraph 42 of the contested decision, that the evidence submitted by the applicant referred to possible use of the mark in Poland only sporadically, while no reference was made to such use in, for example, Estonia, Croatia, Lithuania, Luxembourg or Romania. Therefore, even assuming that it were established that the mark applied for had acquired distinctive character in some Member States, the Board of Appeal could not validly draw conclusions concerning the distinctive character acquired by the contested mark throughout the European Union from its examination of the distinctiveness acquired by the contested mark on the basis of the mere percentage of the public that recognises the mark in those Member States.

 Procedure and forms of order sought

10      By application lodged at the Court Registry on 27 August 2018, the applicant brought the present action against the contested decision.

11      The applicant claims that the Court should:

–        annul the contested decision in its entirety and declare that the Fifth Board of Appeal of EUIPO wrongfully rejected the appeal and refused protection of the mark applied for;

–        order EUIPO to pay the costs.

12      On 5 September 2018, the applicant lodged a submission that it termed a ‘supplemental pleading’ at the Court Registry.

 Law

13      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, without taking further steps in the proceedings, give a decision on the action by reasoned order.

14      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to Article 126 of the Rules of Procedure, to give its decision without taking further steps in the proceedings.

 Admissibility

15      It must be recalled that under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which is applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 of that Statute, and under Article 177(1)(d) of the Rules of Procedure, all applications must state the subject matter of the dispute, the pleas and arguments put forward and a brief statement of the pleas in law on which the application is based. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the application, even without further information. In order to guarantee legal certainty and the sound administration of justice, it is necessary, for an action to be admissible, that the basic legal and factual particulars on which it is based be indicated, at least in summary form, coherently and intelligibly in the application itself (orders of 28 April 1993, De Hoe v Commission, T‑85/92, EU:T:1993:39, paragraph 20; of 21 May 1999, Asia Motor France and Others v Commission, T‑154/98, EU:T:1999:109, paragraph 49; and judgment of 15 June 1999, Ismeri Europa v Court of Auditors, T‑277/97, EU:T:1999:124, paragraph 29).

16      While the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed to it, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law which, in accordance with the provisions mentioned in paragraph 15 above, must appear in the application (order of 21 May 1999, Asia Motor France and Others v Commission, T‑154/98, EU:T:1999:109, paragraph 49).

17      Furthermore, it should be recalled that the conditions for the admissibility of an action concern an absolute bar to proceeding with the action which the Courts of the European Union must consider of their own motion should such an issue arise (see judgment of 8 February 2011, Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, EU:T:2011:33, paragraph 28 and the case-law cited).

18      In the present case, the applicant has not put forward, in its application, any plea or argument in support of its action. It has merely referred to the arguments put forward ‘previously’ during the proceedings before the Board of Appeal of EUIPO (paragraph 25 of the application) without expressly stating to which of those pleas it was referring. Indeed, the applicant has merely submitted a brief statement of the claims it intended to establish before the Court, that is, in the first place, that the mark applied for is distinctive and, in the second place and in any event, that the mark in question has acquired such distinctive character through use (paragraphs 26 and 27 of the application). Lastly, the applicant has stated that it reserves the right to present additional observations and pleas (paragraphs 12 and 24 of the application).

19      Admittedly, it must be stated that the applicant lodged, on 5 September 2018, that is, before the expiry of the prescribed period for bringing an action against the contested decision, a submission that it termed a ‘supplemental pleading’. In that document, the applicant sets out, for the first time, the points in relation to which it submits that the Board of Appeal committed errors and sets out, also for the first time, detailed arguments against the Board of Appeal’s reasoning.

20      In that regard, the Court has admittedly held that a submission which may be regarded as amplifying a plea made previously, whether directly or by implication, in the original application, and which is closely connected therewith, must be declared admissible (judgments of 20 September 1990, Hanning v Parliament, T‑37/89, EU:T:1990:49, paragraph 38; of 21 March 2002, Joynson v Commission, T‑231/99, EU:T:2002:84, paragraph 156; and of 27 March 2014, Saint-Gobain Glass France and Others v Commission, T‑56/09 and T‑73/09, EU:T:2014:160, paragraph 301).

21      However, in the present case, irrespective of whether it was admissible for the applicant to lodge the ‘supplemental pleading’ of 5 September 2018, it cannot be held that the pleas set out in that submission can be regarded as amplifying a plea made in the application, in so far as, in the application, the applicant had not set out any plea and, therefore, the application did not meet the conditions for admissibility laid down in Article 177 of the Rules of Procedure.

22      Nonetheless, without it being necessary to rule on whether the application lodged on 27 August 2018 and the submission lodged on 5 September 2018 could be considered together as a single action for annulment brought against the contested decision and lodged before the expiry of the period within which proceedings must be brought or whether the action meets the conditions laid down in Article 177 of the Rules of Procedure, the action must be dismissed in any event as manifestly unfounded for the reasons set out below.

 Substance

23      The applicant relies on two pleas in law in support of its action, alleging, first, in essence, infringement of Article 7(1)(b) of Regulation 2017/1001 and, second, in essence, infringement of Article 7(3) of Regulation 2017/1001.

 The first plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001

24      The applicant argues, first, that the mark applied for differs significantly from the three-dimensional marks whose registration was refused on 19 April and 4 September 2017. It claims that the Board of Appeal failed to take into account the colours of the product represented by the mark applied for, which play an important role in the recognition by consumers of the commercial origin of the goods covered by the mark.The applicant claims, in addition, that neither the examiner nor the Board of Appeal examined in detail the mark applied for, which must not be mistaken for a simple drinking straw devoid of distinctive character. Referring, moreover, to the decision of the examiner, the applicant claims that the examiner erred in taking into account counterfeit goods in the context of the present case and that the Board of Appeal also erred in failing to address that issue in the contested decision.

25      The applicant adds that the adjudicating bodies of EUIPO failed to demonstrate that the mark applied for constitutes a ‘combination of elements that are typical of the goods in question’. Lastly, it claims that the adjudicating bodies of EUIPO also failed to define the relevant public in the present case. According to the applicant, the product is directed at consumers whose life could be in danger if, instead of purchasing the product the applicant markets, they purchased a simple drinking straw without a filter. That public will therefore be more observant and will be in a position to identify the goods covered by the mark applied for and distinguish them from goods of a different commercial origin.

26      It should be recalled in that regard that Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character are not to be registered.

27      It is settled case-law that, for a trade mark to possess distinctive character, it must serve to identify the product, in respect of which registration is applied for, as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 6 September 2017, Waldhausen v EUIPO (Representation of the silhouette of a horse’s head), T‑717/16, not published, EU:T:2017:667, paragraph 16 and the case-law cited).

28      Thus, the marks referred to in Article 7(1)(b) of Regulation 2017/1001 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the product at issue, thus enabling the consumer who acquired the product to which the mark is affixed to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 26 September 2017, Representation of the silhouette of a horse’s head, T‑717/16, not published, EU:T:2017:667, paragraph 17 and the case-law cited).

29      Pursuant to case-law, the distinctive character of a mark must be assessed, first, by reference to the goods in respect of which registration of the mark is sought and, second, by reference to the perception which the relevant public, composed of the average consumer of those goods, has of the goods (see judgment of 26 September 2017, Representation of the silhouette of a horse’s head, T‑717/16, not published, EU:T:2017:667, paragraph 18 and the case-law cited).

30      In order to render inapplicable the absolute ground for refusal in Article 7(1)(b) of Regulation 2017/1001, a minimum degree of distinctive character is sufficient (see judgment of 26 September 2017, Representation of the silhouette of a horse’s head, T‑717/16, not published, EU:T:2017:667, paragraph 18 and the case-law cited).

31      As regards, more specifically, three-dimensional marks consisting of the appearance of the product itself, in order to assess whether they can be perceived by the public as an indication of origin, it is necessary to analyse the overall impression conveyed by the appearance of that product, which is not incompatible with an examination of each of its individual features in turn (see judgment of 5 May 2009, ars Parfum Creation & Consulting v OHIM (Shape of a spray bottle), T‑104/08, not published, EU:T:2009:138, paragraph 39 and the case-law cited).

32      The criteria for assessing the distinctive character of that category of three-dimensional marks are no different from those applicable to other categories of mark. However, it should be borne in mind, for the purpose of applying those criteria, that the perception of the average consumer is not necessarily the same in relation to such a three-dimensional mark as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the goods it designates. Average consumers are not in the habit of making assumptions as to the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it may therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see judgment of 19 September 2012, Fraas v OHIM (Tartan pattern in dark grey, light grey, black, beige, dark red and light red), T‑50/11, not published, EU:T:2012:442, paragraph 40 and the case-law cited).

33      It follows from these considerations that, in order to fulfil its function of indicating origin, a three-dimensional mark consisting of the appearance of the product itself must depart significantly from the norm or customs of the sector concerned (see judgment of 19 September 2012, Tartan pattern in dark grey, light grey, black, beige, dark red and light red, T‑50/11, not published, EU:T:2012:442, paragraph 41 and the case-law cited).

34      That is not the situation of the mark applied for in this case.

35      As the Board of Appeal rightly observed, in line with the case-law cited in paragraph 33 above, each of the elements making up the mark applied for fulfils a technical function in the design of the goods concerned (paragraphs 21 to 24 of the contested decision). It is therefore plausible that those elements are commonly used in the sector concerned and are not, as a result, capable of distinguishing those goods from goods originating from other undertakings (paragraph 25 of the contested decision). Moreover, it does not seem, in the present case, that the way in which the elements making up the earlier mark are combined is capable of conferring distinctive character on that mark, having regard in particular to the technical function of those elements.

36      Irrespective of whether the Board of Appeal could have based the refusal to register at issue on Article 7(1)(e)(ii) of Regulation 2017/1001, the arguments raised by the applicant are not such as to call those findings into question.

37      First, as regards the comparison made by the applicant between the mark applied for and the three-dimensional marks whose registration was refused (see paragraph 24 above), it must be stated that, aside from the dates on which those decisions were adopted, the applicant does not adduce any evidence that could allow the reasons why the marks to which it refers are distinguishable from the mark applied for to be identified. Moreover, it is clear that the Board of Appeal in no way took those decisions into consideration and did not carry out any comparison between the mark applied for and other three-dimensional marks.

38      Even on the assumption that the applicant is referring to comparisons carried out by the examiner at a stage of the procedure prior to the case coming before the Board of Appeal, it must be stated that the Board of Appeal did not merely approve the examiner’s findings, but carried out its own assessment of the mark applied for before concluding that the mark was devoid of distinctive character. The same is true of the applicant’s claims that, in its decision, the examiner wrongly took account of counterfeit goods (see paragraph 24 above).

39      Secondly, contrary to the applicant’s claims (see paragraph 24 above), the Board of Appeal took into account the colour of the product represented by the mark applied for. In paragraph 24 of the contested decision, it considered that the combined colours of the product were devoid of distinctive character, given that drinking straws come, in general, in a wide variety of colours. The same applies to survival equipment or goods intended for outdoor activities. The applicant does not put forward any argument that might undermine those findings.

40      Thirdly, the applicant is of the incorrect opinion that the adjudicating bodies of EUIPO failed to demonstrate that the mark applied for constitutes a ‘combination of elements that are typical of the goods in question’ (see paragraph 25 above). Contrary to the applicant’s claim, the Board of Appeal examined in detail the mark applied for before making the findings set out in paragraph 35 above. The applicant does not put forward any argument or complaint that might undermine those findings. Aside from the claims regarding the quality and usefulness of its goods, the applicant does not provide any evidence to demonstrate that the mark applied for has inherent distinctive character. Even on the assumption that the applicant invokes the fact that its product includes a filter as a feature which can confer distinctive character on the sign applied for, it is clear that this cannot be the case in the light of the overall image of that product as depicted in the sign applied for.

41      It should be borne in mind in that regard that, according to case-law, if an applicant claims that a mark applied for has distinctive character despite the Board of Appeal’s analysis, based, as in the present case, on facts arising from practical experience generally acquired from the marketing of general consumer goods, it is for the applicant to provide specific and substantiated information to show that the mark applied for has either inherent distinctive character or distinctive character acquired through use, since it is in a much better position to do so, given its thorough knowledge of the market (see, to that effect, judgment of 14 December 2011, Vuitton Malletier v OHIM — Friis Group International (Representation of a locking device), T‑237/10, not published, EU:T:2011:741, paragraph 53 and the case-law cited). According to the Court of Justice, that applies provided that the Board of Appeal has assessed the distinctive character of the mark applied for specifically by reference to the goods or services designated (see, to that effect, judgment of 9 September 2010, OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, EU:C:2010:508, paragraphs 33, 59 and 60); that condition is met in the present case.

42      Lastly, contrary to the applicant’s claims (see paragraph 25 above), in paragraph 12 of the contested decision, the Board of Appeal defined the relevant public and took account of that public’s level of attention, that is, a high level of attention (see paragraph 7 above). As regards, more specifically, the applicant’s argument that the high level of attention of the relevant public enables that public to distinguish between the goods in question and distinguish them from those with a different commercial origin because the consumers concerned would be putting their life in danger if they purchased a simple drinking straw instead of the product at issue, that argument must be rejected. Even if the relevant public were capable of perceiving that the product represented by the mark applied for consists of a drinking straw with a filter, none of the evidence submitted by the applicant shows that, by virtue of that fact, that public would be likely to identify the commercial origin of that product.

43      Having regard to the foregoing, the first plea must be rejected as manifestly unfounded.

 The second plea in law, alleging infringement of Article 7(3) of Regulation 2017/1001

44      According to the applicant, the evidence it submitted before the adjudicating bodies of EUIPO concerning the distinctive character acquired by the mark applied for through use was sufficient for it to be registered. The applicant claims that the adjudicating bodies of EUIPO did not examine that evidence and they were not able to refer to case-law or to arguments other than general arguments, resulting in an incomplete examination that did not enable the applicant to evaluate the refusal to register at issue.

45      In that regard, it should be noted that, according to case-law, as regards a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to Article 7(3) of Regulation 2017/1001 only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (see judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 76 and the case-law cited).

46      As observed in paragraph 9 above, the Board of Appeal considered in essence in paragraphs 42 to 45 of the contested decision that, in so far as the evidence submitted by the applicant does not concern the use of the mark applied for throughout the territory of the European Union, it cannot be held that the mark has acquired distinctive character through use within the meaning of Article 7(3) of Regulation 2017/1001.

47      The applicant does not put forward any argument before the Court likely to call that finding into question. It merely claims that the Board of Appeal failed to take into consideration the evidence provided before the adjudicating bodies of EUIPO.

48      However, that is not the case here. The Board of Appeal not only examined that evidence but also considered, in paragraph 44 of the contested decision, that there was no justification in the present case for extrapolating any evidence provided for certain Member States to the other Member States to which the evidence did not refer. As the Court of Justice has indeed held, no provision of Regulation 2017/1001 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State. Thus, it is not inconceivable that the evidence provided to establish that a particular sign has acquired distinctive character through use is relevant with regard to several Member States, or even to the whole of the European Union (judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 80) However, as noted in paragraph 48 above, the applicant has not submitted evidence before the Court capable of calling into question the Board of Appeal’s finding in that regard. In so far as the applicant has not, therefore, challenged effectively the Board of Appeal’s finding regarding the extent of the use of the mark applied for in the European Union, all the other arguments it has submitted in the light of the alleged infringement of Article 7(3) of Regulation 2017/1001 must be rejected as ineffective.

49      The second plea in law must therefore be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on its admissibility.

 Costs

50      Since this order has been made before service of the application on EUIPO and before the latter could have incurred any costs, it is sufficient to decide that the applicant must bear its own costs, in accordance with Article 133 of the Rules of Procedure.

On those grounds,

THE GENERAL COURT (Fifth Chamber),

hereby orders:

1.      The action is dismissed.

2.      Vestergaard SA shall bear its own costs.

Luxembourg, 14 December 2018.

*      Language of the case: English.

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