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

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

4 May 2022(*)

(EU trade mark – Invalidity proceedings – EU figurative mark representing a cross on the side of a sports shoe – Article 7(1)(b) and Article 51(1)(a) of Regulation (EC) No 40/94 (now Article 7(1)(b) and Article 59(1)(a) of Regulation (EU) 2017/1001) – Article 94(1) of Regulation 2017/1001)

In Case T‑117/21,

Deichmann SE, established in Essen (Germany), represented by C. Onken, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Munich, SL, established in La Torre de Claramunt (Spain), represented by J. Güell Serra and M. Guix Vilanova, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 7 December 2020 (Case R 2882/2019-4), relating to invalidity proceedings between Deichmann and Munich,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, J. Schwarcz (Rapporteur) and C. Iliopoulos, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 18 February 2021,

having regard to the response of EUIPO lodged at the Court Registry on 27 April 2021,

having regard to the response of the intervener lodged at the Court Registry on 24 May 2021,

further to the hearing on 23 February 2022,

gives the following

Judgment

 Background to the dispute

1        On 6 November 2002, the intervener, Munich, SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), 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 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        The figurative mark for which registration was sought was represented as follows:

3        The goods in respect of which registration was sought are in Class 25 of the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ʻSports footwearʼ.

4        The trade mark was registered on 24 March 2004 under number 2923852.

5        On 26 January 2011, the applicant, Deichmann SE, filed, with EUIPO, an application for a declaration of invalidity of the trade mark at issue on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001).

6        By decision of 17 October 2019, the Cancellation Division rejected the application and ordered the applicant to bear the costs.

7        On 17 December 2019, the applicant filed an appeal against the decision of the Cancellation Division.

8        By decision of 7 December 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO upheld the decision of the Cancellation Division and dismissed the appeal. It found, in essence, that the intervener had convincingly demonstrated, in its submissions and evidence, that many undertakings used relatively simple patterns on the side of the shoe to indicate the commercial origin of their shoes, and that the evidence adduced by the applicant, far from undermining this, served to confirm it. It concluded that the contested mark had distinctive character.

 Forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to bear the costs.

10      EUIPO and the intervener contend, in essence, that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

11      As a preliminary point, it should be noted that, given the date on which the application for registration at issue was filed, namely 6 November 2002, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect and by analogy, judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

12      Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.

13      Consequently, as far as the substantive rules in the present case are concerned, the references to Article 59(1)(a) and Article 7(1)(b) of Regulation 2017/1001 made by the Board of Appeal in the contested decision, and by the applicant and the intervener in their arguments, must be understood as referring to Article 51(1)(a) and Article 7(1)(b) of Regulation No 40/94, the wording of which is identical.

14      In support of its action, the applicant raises three pleas in law alleging, first, infringement of the first sentence of Article 94(1) of Regulation 2017/1001, second, infringement of the second sentence of Article 94(1) of Regulation 2017/1001 and, third, infringement of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(b) of the same regulation.

 The first plea in law, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001

15      By its first plea, the applicant claims that the Board of Appeal infringed the first sentence of Article 94(1) of Regulation 2017/1001 in so far as it did not provide an adequate statement of reasons for the contested decision. On the basis of paragraphs 19 and 20 of the contested decision, the applicant claims that the Board of Appeal did not mention the evidence included in Exhibit A3, that the applicant submitted to the Cancellation Division. It also criticises the Board of Appeal, in essence, for having relied on the premiss that Exhibits A1 to A3 submitted by the applicant contain ‘past and present trade mark registrations [showing] that sports shoe manufacturers do indeed place such relatively simple trade marks on the sides of their sports shoes, and that trade mark protection has been both applied for and granted to such signs’. According to the applicant, since it had never submitted such evidence, the assumption of the Board of Appeal is incorrect or lacks reasoning.

16      EUIPO and the intervener dispute the applicant’s arguments.

17      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. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That obligation has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to address all relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must 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. Furthermore, the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision. In addition, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its review (see judgment of 12 March 2020, Maternus v EUIPO – adp Gauselmann (Jokers WILD Casino), T‑321/19, not published, EU:T:2020:101, paragraphs 15 to 17 and the case-law cited).

18      It should also be recalled that the failure to state reasons or inadequacy of the reasons given constitutes a plea alleging infringement of essential procedural requirements, which is distinct, as such, from the plea alleging inaccuracy of the reasons given for the decision, the review of which falls within the scope of the examination of the merits of that decision (see, to that effect, judgments of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraph 67, and of 23 September 2015, Mechadyne International v OHIM (FlexValve), T‑588/14, not published, EU:T:2015:676, paragraph 59). The fact that the grounds given may be incorrect does not mean that no grounds were given (see judgment of 30 September 2016, Alpex Pharma v EUIPO – Astex Pharmaceuticals (ASTEX), T‑355/15, not published, EU:T:2016:591, paragraph 45 and the case-law cited).

19      Lastly, when the Board of Appeal upholds the decision of the Cancellation Division on certain points, and taking into account the continuity in terms of function between the Cancellation Divisions and Boards of Appeal, to which Article 64(1) of Regulation No 207/2009 attests, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the parties and enables the Court to carry out fully its review as to whether the Board of Appeal’s assessment was well founded (see judgment of 18 March 2015, Naazneen Investments v OHIM – Energy Brands (SMART WATER), T‑250/13, not published, EU:T:2015:160, paragraph 16 and the case-law cited).

20      In the present case, it should be noted that, in paragraph 19 of the contested decision, the Board of Appeal, first, endorsed the Cancellation Division’s findings that the intervener ‘had convincingly demonstrated in its submissions and evidence that, vis-a-vis sports shoes, many undertakings [used] relatively simple patterns on the side of the shoe to indicate the commercial origin of their shoes’. Second, it stated that the ‘evidence of the [applicant], far from undermining [such conclusions], [served] to confirm it’. Third and lastly, it found that it was correct to conclude that ‘the average consumer [would perceive] such patterns as inherently distinctive signs, and that the relevant public for the goods at issue [would] pay close attention to the shapes placed on the sides of sports shoes’ and that ‘when applied to a shoe, such a sign [would] serve as a trade mark and [would be] capable of fulfilling the main function of a trade mark, namely to distinguish the shoes of one undertaking from those of another’.

21      Furthermore, in paragraph 20 of the contested decision, the Board of Appeal found that it was not ‘convincing to argue that the contested [mark] [would] be perceived only as a decorative element or as a reinforcement for the … goods’. It added that:

‘no cogent case has been made in this regard; to the contrary, the evidence filed by the [applicant] by way of its [Exhibits A1 to A3] indeed shows the reverse, to the extent that the affidavit evidence and details of past and present trade mark registrations show that sports shoe manufacturers do indeed place such relatively simple trade marks on the sides of their sports shoes, and that trade mark protection has been both applied for and granted to such signs.’

22      In addition, the Cancellation Division explained the reasons and evidence on the basis of which it had reached the conclusion that the contested mark had distinctive character. It should be added that a description of at least part of that evidence is also set out in paragraphs 2 to 4 of the contested decision.

23      Therefore, in the light of the case-law referred to in paragraphs 17 to 19 above, the applicant’s complaint cannot succeed, since the applicant is in a position to understand, on the basis of the explanations provided in paragraphs 2 to 4 and 19 to 20 of the contested decision and those set out in the Cancellation Division’s decision, the reasons supporting the Board of Appeal’s finding as to the distinctive character of the contested mark. It is apparent, moreover, from the arguments put forward by the applicant in the context of the present plea, but also in the action as a whole, by which it disputes the merits of the contested decision, that it was able to understand the reasons why the Board of Appeal found that the contested mark had distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

24      It is indeed true, as acknowledged by EUIPO in its response and at the hearing, that the Board of Appeal referred, in paragraphs 2 and 20 of the contested decision, to ‘past and present trade mark registrations’, whereas Exhibit A3 relates to design registrations as argued by the applicant. However, irrespective of the fact that the Cancellation Division did not commit such an error, it must be held that that fact does not suffice to conclude that the applicant was unable to understand the Board of Appeal’s reasoning with regard to the rejection of the arguments which it had put forward during the proceedings before the adjudicating bodies of EUIPO.

25      In the light of the wording of paragraph 20 of the contested decision (see paragraph 21 above), there is no ambiguity as regards the fact that the Board of Appeal refers in particular to Exhibits A1 to A3 submitted by the applicant, when it states that the ‘affidavit evidence and details of past and present trade mark registrations show that sports shoe manufacturers do indeed place such relatively simple trade marks on the sides of their sports shoes, and that trade mark protection has been both applied for and granted to such signs’. The applicant cannot therefore claim that the Board of Appeal failed to fulfil its duty to state reasons by failing to provide any evidence of its factual premiss that there were ‘past and present trade mark registrations’.

26      Lastly, it should be noted, in accordance with the case-law referred to in paragraph 17 above, that the issue whether that premiss is incorrect or whether the Board of Appeal erred in its assessment of the evidence produced by the applicant, as the applicant, in essence, submits, are issues which do not fall within the scope of the statement of reasons for the contested decision, but rather the merits of that decision, which is assessed in the context of the third plea.

27      As regards, finally, the applicant’s argument that the Board of Appeal did not refer in the contested decision to the evidence produced by the applicant in Exhibit A3, it is sufficient to note that it is not necessary for the reasoning of the contested decision to go into all the relevant facts and points of law, as stated in paragraph 17 above. Similarly, the Board of Appeal was not required, in the context of its duty to state reasons, to explain the probative value of each item of evidence on which it based its decision, in so far as its reasoning enables the applicant to ascertain the reasons for the decision taken and, therefore, to defend itself and the Court to exercise its power of review.

28      It follows from all of the foregoing that the Board of Appeal, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, disclosed in a clear and unequivocal manner the essential reasons why it found that the mark applied for had distinctive character.

29      The first plea in law must therefore be rejected.

 The second plea in law, alleging infringement of the second sentence of Article 94(1) of Regulation 2017/1001

30      By its second plea, the applicant claims that the Board of Appeal based its decision on matters of fact on which it was unable to submit observations, contrary to Article 94(1) of Regulation 2017/1001. It maintains, therefore, that the Board of Appeal infringed its right to be heard.

31      The applicant criticises the Board of Appeal, in particular, for having based its decision on ‘past and present trade mark registrations’ without giving the applicant any details of those registrations and thus depriving it of the opportunity of presenting its comments. The applicant adds that, if it had had the opportunity to submit its observations on the alleged existence of past and present trade mark registrations consisting of two crossed stripes on the side of sports shoes, the applicant could have clarified that there were no such trade mark registrations. The applicant could also have explained that what the Board of Appeal apparently believed to be trade mark registrations were in fact design registrations.

32      EUIPO and the intervener dispute the merits of that plea.

33      Under the second sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

34      That provision constitutes a specific application of the general principle of respect for the rights of the defence, which is guaranteed, furthermore, by Article 41(2)(a) of the Charter of Fundamental Rights of the European Union, according to which a person whose interests are affected by a decision of a public authority must be given the opportunity effectively to make his or her point of view known. The right to be heard extends to all the factual and legal material which forms the basis of the decision (see, to that effect, judgments of 16 July 2015, Roland v OHIM – Louboutin (Nuance of red on the sole of a shoe), T‑631/14, not published, EU:T:2015:521, paragraph 20, and of 29 March 2019, All Star v EUIPO – Carrefour Hypermarchés (Shape of a shoe sole), T‑611/17, not published, EU:T:2019:210, paragraph 72).

35      At the outset, it should be noted that the ‘details of past and present trade mark registrations’ on which the applicant claims not to have been heard correspond to the registrations referred to by the Board of Appeal in paragraph 20 of the contested decision.

36      As has been pointed out in paragraph 25 above, there is no ambiguity as regards the fact that the Board of Appeal refers, inter alia, to Exhibits A1 to A3 submitted by the applicant in the proceedings before EUIPO, when it states that the ‘affidavit evidence and details of past and present trade mark registrations show that sports shoe manufacturers do indeed place such relatively simple trade marks on the sides of their sports shoes, and that trade mark protection has been both applied for and granted to such signs’. The applicant cannot therefore claim that it was deprived of its right to be heard when those are its own documents.

37      That is particularly true because, as is apparent from paragraphs 10 and 11 of the contested decision, the applicant claimed that the ‘material it [had] filed together with the invalidity request (Exhibits A1, A2 and A3) [showed] that crossed lines [were] a common device used by various shoe manufacturers’, which the intervener disputed by ‘supporting the contested decision, and submitting, inter alia, that the evidence filed by the [applicant] … in fact [was] either irrelevant or at best [showed] the opposite of its allegations, i.e. the material [showed] that the crossed lines sign [was] distinctive for “sports shoes”’.

38      It should be added that the question whether the Board of Appeal erred in its assessment of the evidence produced by the applicant, as the applicant, in essence, submits, by considering trade mark registrations which are in fact design registrations, is an issue which relates not to the right to be heard or to the reasoning of the contested decision, but to the merits of that decision, which is assessed in the context of the third plea.

39      In any event, even if the registrations to which the Board of Appeal refers in paragraph 20 of the contested decision relate to registrations other than those contained in Exhibits A1 to A3 submitted by the applicant, the claim that if the applicant had been able to make known its views on the alleged existence of past and present trade mark registrations consisting of two crossed stripes on the side of sports shoes, the applicant would have been able to state that there were no such registrations must be rejected.

40      It must be stated that it is clear from the file relating to the proceedings before EUIPO that the parties discussed, during the administrative procedure before the Board of Appeal, the alleged existence of past and present trade mark registrations consisting of two crossed stripes on the side of sports shoes or the existence of registered marks with similar characteristics.

41      More specifically, as is apparent from paragraph 3 of the contested decision and page 2 of the Cancellation Division’s decision, the intervener rejected the arguments raised by the applicant in that regard and it submitted to the Cancellation Division a number of examples of such registrations of similar marks, including, inter alia, the registration of EU trade mark No 006041081, of which the applicant is the proprietor, represented as follows:

42      The intervener emphasised the contradiction on the part of the applicant, which sought to have the contested mark declared invalid for lack of distinctive character and, at the same time, applied for registration of similar marks consisting of two stripes on the side of a sports shoe.

43      In the light of the foregoing considerations, it cannot be held that the applicant’s right to be heard was infringed in the present case.

44      The second plea in law must therefore be rejected.

 The third plea in law, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(b) thereof

45      By its third plea, the applicant claims, in essence, that the Board of Appeal did not properly assess the distinctive character of the contested mark, on the ground inter alia that it is incorrect to assume that the average consumer perceives simple patterns on the side of sports shoes as inherently distinctive signs. Moreover, the Board of Appeal did not take into account the special conditions that apply to trade marks that are indissociable from the appearance of the product concerned. Lastly, it claims that no conclusions may be drawn from the judgment of 17 January 2018, Deichmann v EUIPO – Munich (Representation of a cross on the side of a sports shoe) (T‑68/16, EU:T:2018:7), since that case did not relate to Article 7(1)(b) of Regulation No 207/2009.

46      EUIPO and the intervener dispute the merits of that plea.

47      As a preliminary point, it should be recalled that Article 51(1)(a) of Regulation No 40/94 provides that an EU trade mark is to be declared invalid where it has been registered contrary to the provisions of Article 7 of that regulation.

48      It should be added that the only date relevant for the purposes of the assessment of an application for a declaration of invalidity under Article 51(1)(a) of Regulation No 40/94 is the date of filing of the application for the mark at issue. The fact that the case‑law allows material subsequent to that date to be taken into account, far from weakening that interpretation of Article 51(1)(a) of Regulation No 40/94, reinforces it, since it is only possible to take such material into account if it relates to the situation on the date of filing of the trade mark application (see, to that effect, judgment of 3 June 2009, Frosch Touristik v OHIM – DSR touristik (FLUGBÖRSE), T‑189/07, EU:T:2009:172, paragraph 19).

49      According to Article 7(1)(b) of Regulation No 40/94, trade marks which are devoid of any distinctive character are not to be registered.

50      According to the case-law, an absolute ground for refusal must be interpreted in the light of the general interest underlying it. As regards Article 7(1)(b) of Regulation No 40/94, the underlying notion of general interest is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer by enabling him or her, without any possibility of confusion, to distinguish the product or service from others which have another origin (see judgment of 3 May 2018, Raise Conseil v EUIPO – Raizers (RAISE), T‑463/17, not published, EU:T:2018:249, paragraph 35 and the case-law cited).

51      A mark is distinctive where it serves to identify the goods or services for which registration is sought as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 5 June 2019, EBM Technologies v EUIPO (MobiPACS), T‑272/18, not published, EU:T:2019:373, paragraph 18 and the case-law cited).

52      It is not necessary for the trade mark to convey exact information about the identity of the manufacturer of the goods or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the goods or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality (see judgment of 5 June 2019, MobiPACS, T‑272/18, not published, EU:T:2019:373, paragraph 19 and the case-law cited).

53      A minimum degree of distinctive character is sufficient to render inapplicable the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 40/94 (see judgment of 5 June 2019, MobiPACS, T‑272/18, not published, EU:T:2019:373, paragraph 20 and the case-law cited).

54      The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, second, by reference to the relevant public’s perception of the mark, the relevant public consisting of average consumers of those goods or services, who are reasonably well informed and reasonably observant and circumspect. The level of attention of the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, varies according to the category of the goods or services in question (see judgment of 3 May 2018, RAISE, T‑463/17, not published, EU:T:2018:249, paragraph 37 and the case-law cited).

55      It is in the light of those considerations that the Court must examine whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(b) of Regulation No 40/94 by finding that the mark applied for had distinctive character.

56      In the first place, it should be noted that the applicant does not dispute the Board of Appeal’s findings in paragraph 18 of the contested decision that the relevant public is, in the present case, composed of the public at large with an average degree of attention. Moreover, there is nothing in the file that is capable of calling that assessment into question.

57      In the second place, as is apparent from EUIPO’s file, it must be pointed out that the contested mark is described in the application for registration in Spanish as follows: ‘La marca consiste en un diseño constituido por la representación de un aspa situada en un lateral de un calzado deportiva’, that is to say as a ‘design consisting of the representation of a cross on the side of a sports shoe’. It must therefore be held that the contested mark is presented in the form of a pattern intended to be placed on part of the designated goods and not in the form of the two-dimensional representation of a shoe. Moreover, as is apparent from the file, the contested mark may be seen as consisting of a cross, made up of two black intersecting stripes, represented in solid lines or as crossed stripes inclined towards the right. Contrary to what the applicant submitted at the hearing, although the stripes cross in their upper part, that cannot exclude the possibility that the relevant public, when faced with the contested mark, might perceive those stripes as resembling the capital letter ‘X’.

58      In the third place, as regards the meaning of the contested mark, the applicant submits that the Board of Appeal erred in assuming that the relevant public perceived simple patterns on the side of sports shoes as inherently distinctive signs. According to the applicant, the Board of Appeal misjudged the market realities and ignored that fact that crossed stripes on sports shoes were so common that they were not able to fulfil the main function of a trade mark, namely to distinguish the shoes of one undertaking from those of another.

59      In that regard, while it is true, as EUIPO points out in its response and at the hearing, that it has already been held that there is nothing to prevent a distinctive sign from also serving other purposes, in particular a decorative purpose (see, to that effect, judgment of 9 October 2002, Glaverbel v OHIM (Glass-sheet surface), T‑36/01, EU:T:2002:245, paragraph 24) and that simple signs consisting of a single letter were not, a priori, devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 (see, to that effect, judgment of 9 September 2010, OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, EU:C:2010:508, paragraph 39), the fact remains that a design, which is simple and banal, is unlikely to acquire distinctive character simply because it is placed on the side of the shoe, since many manufacturers of sports shoes or casual shoes use relatively simple patterns on the side of the shoe (see, to that effect and by analogy, judgment of 4 December 2015, K-Swiss v OHIM (Representation of parallel stripes on a shoe), T‑3/15, not published, EU:T:2015:937, paragraphs 20 and 21).

60      It must be added that, although the information provided by the intervener may indeed show, as both the Cancellation Division and the Board of Appeal maintain, that many manufacturers of sports shoes have developed a practice of placing their trade mark on the side of the shoe or that sellers display in shops the side of the shoes on which the mark appears, that information still does not make it possible to determine that the average consumer has learned to establish an automatic link between the sign featuring on the side of a sports shoe and a particular manufacturer and that that consumer will therefore necessarily perceive any geometric shape placed on the side of a sports shoe as being a trade mark (see, to that effect, judgment of 4 December 2015, Representation of parallel stripes on a shoe, T‑3/15, not published, EU:T:2015:937, paragraph 26).

61      To accept that every geometric shape, even the most simple, has distinctive character because it features on the side of a sports shoe would make it possible for some manufacturers to appropriate simple, and above all decorative, shapes, which must remain accessible to everyone, with the exception of those situations in which the distinctive character of the sign has been acquired by use (judgment of 4 December 2015, Representation of parallel stripes on a shoe, T‑3/15, not published, EU:T:2015:937, paragraph 34).

62      However, in the present case, irrespective of whether the average consumer pays particular attention to the shapes positioned on the side of the shoe, to the extent that he or she considers that those shapes generally constitute trade marks, it should be borne in mind that in invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (judgments of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraph 28, and of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a grey chequerboard pattern), T‑360/12, not published, EU:T:2015:214, paragraph 61).

63      In that regard, it must be borne in mind that, as is apparent from EUIPO’s file, for the purposes of demonstrating that the sign was devoid of any distinctive character for the goods at issue, the applicant submitted, first, printouts of 93 shoe models of a certain manufacturer, some of which had various kinds of stripes on their sides, from a German website (Exhibit A1), second, an affidavit dated 7 September 2009 from a managing partner of a German company, attesting that his company had marketed sports shoes with logos similar to that of the contested mark (Exhibit A2), third, printouts of registration details for past and present German and international designs consisting of various kinds of crossed lines on sports shoes (Exhibit A3).

64      As regards, in particular, Exhibit A3, it should be noted that, as EUIPO acknowledged in its response and at the hearing, it contains ‘German and International design registrations’ and not ‘trade mark registrations’ as the Board of Appeal erroneously stated in paragraphs 2 and 20 of the contested decision. However, that error in identifying the content of Exhibit A3 has no bearing on the outcome of the dispute, contrary to what the applicant maintained in its application and at the hearing. Irrespective of whether it is a clerical error as claimed by the intervener at the hearing and the fact that the Cancellation Division did not make such an error in its analysis, it should be noted that the Board of Appeal relied on numerous items of evidence other than those in Exhibit A3 in finding that the contested mark had distinctive character. Therefore, even if the Board of Appeal did not commit that error, there is nothing to suggest that the Board of Appeal would have reached a different conclusion in the present case.

65      In any event, it must be held, as the intervener pointed out both before the adjudicating bodies of EUIPO and before the Court, that the evidence contained in Exhibits A1 to A3 is not capable of establishing that the contested mark, referred to in paragraph 2 above, which represents a cross or crossed stripes inclined towards the right, is devoid of distinctive character.

66      Contrary to what the applicant claims, in essence, in its application and as the intervener rightly submits, the fact that a certain manufacturer or another German company marketed footwear with various kinds of stripes and graphic features on the side of the shoe (such as those appearing in the Exhibits A1 and A2), or even that designs containing similar stripes on the side of sports shoes (such as those appearing in Exhibit A3) were registered, cannot, in itself, suffice to show that the contested mark lacks distinctive character in relation to sports shoes.

67      First, as the intervener pointed out before the adjudicating bodies of EUIPO and in its response, some of the models sold by the German company presented in Exhibit A2 show a sign on the side of the shoes which coincides with international trade mark No 822829 which that German company filed and which was registered in 2004. Therefore, the fact that that graphic element has been registered tends rather to confirm that such an element may have distinctive character. Second, as EUIPO rightly pointed out at the hearing, the fact that several designs containing similar stripes on the side of sports shoes have been registered does not allow any conclusion to be drawn as to their actual use on the market and is therefore not, as such, evidence capable of proving that the relevant public perceives the contested mark as being devoid of distinctive character.

68      Moreover, irrespective of the presumption of validity enjoyed by the contested mark (see paragraph 62 above), it should be noted that it is apparent from EUIPO’s file that the intervener has demonstrated the existence of numerous past and present trade mark registrations consisting of two stripes on the side of sports shoes similar to the contested mark. More specifically, as is apparent from paragraph 3 of the contested decision, page 2 of the Cancellation Division’s decision and paragraph 2 of the statement of 3 July 2014, the intervener disputed the arguments raised by the applicant and it submitted to the Cancellation Division a number of examples of such registrations, including, in particular, the registration of EU trade mark No 006041081, of which the applicant is the proprietor, represented as follows:

69      It should be added that the applicant cannot reasonably claim that no conclusion can be drawn from the judgment of 17 January 2018, Representation of a cross on the side of a sports shoe (T‑68/16, EU:T:2018:7), which involved the same parties and the same mark. It is true that, even though the scope of revocation proceedings which were at issue in the case that gave rise to the judgment cited above is different from the invalidity proceedings at issue in the present case, the fact remains that the Court indirectly ruled and indirectly confirmed, in paragraphs 73 to 75 of the judgment of 17 January 2018, Representation of a cross on the side of a sports shoe (T‑68/16, EU:T:2018:7), that the contested mark had a minimum degree of distinctiveness in relation to the goods at issue, as the Court had to specify what the distinctive character of the mark as registered was and assess whether the manner of use altered its distinctive character.

70      Lastly, as regards the applicant’s argument that the Board of Appeal did not take account of the specific conditions which apply to marks that are indissociable from the appearance of the goods, it is sufficient to state that it is ineffective since, as has been pointed out in paragraph 57 above, the contested mark takes the form of a design intended to be placed on part of the designated goods and not the form of a two-dimensional representation of a shoe.

71      In the light of the foregoing considerations, it must be held that the applicant has failed to demonstrate that the Board of Appeal infringed Article 7(1)(b) of Regulation No 40/94 in finding that the contested mark, consisting of a cross or crossed stripes inclined towards the right, had distinctive character.

72      Consequently, the third plea in law must be rejected and the action must therefore be dismissed in its entirety.

 Costs

73      Under Article 134(1) 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.

74      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Deichmann SE to pay the costs of the European Union Intellectual Property Office (EUIPO) and of Munich, SL.

Delivered in open court in Luxembourg on 4 May 2022.

*      Language of the case: English.

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