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

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

26 October 2022 (*) (1)

(EU trade mark – Revocation proceedings – Three-dimensional EU trade mark – Shape of a baby’s bottle – Genuine use of the mark – Point (a) of the second subparagraph of Article 18(1) and Article 58(1)(a) of Regulation (EU) 2017/1001 – Nature of use of the mark – Form differing in elements which do not alter the distinctive character – Obligation to state reasons)

In Case T‑273/21,

The Bazooka Companies, Inc., established in New York, New York (United States), represented by D. Wieddekind and D. Wiemann, lawyers, authorised to replace The Topps Company, Inc.,

applicant,

v

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

defendant,

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

Trebor Robert Bilkiewicz, residing in Gdańsk (Poland), represented by P. Ratnicki-Kiczka, lawyer,

THE GENERAL COURT (Fifth Chamber),

composed, at the time of the deliberations, of D. Spielmann, President, R. Mastroianni and I. Gâlea (Rapporteur), Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the written part of the procedure, in particular the application for replacement of a party, pursuant to Article 174 of the Rules of Procedure of the General Court, lodged by The Bazooka Companies at the Registry of the General Court on 13 May 2022 and the observations of EUIPO and of The Topps Company lodged at the Court Registry on 20 May and 29 May 2022 respectively,

further to the hearing on 31 May 2022,

gives the following

Judgment

1        By its action based on Article 263 TFEU, the applicant, The Bazooka Companies, Inc., seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 March 2021 (Case R 1326/2020‑2) (‘the contested decision’).

 Background to the dispute

2        On 12 December 2018, the intervener, Mr Trebor Robert Bilkiewicz, filed an application with EUIPO for revocation of the European Union trade mark registered pursuant to an application submitted on 25 November 1999 for the following three-dimensional sign:

3        The goods covered by the contested mark and in respect of which revocation was sought are in Class 30 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: ‘Confectionery; sugar confectionery; candy; sweets; sherbet’.

4        The ground relied on in support of the application for revocation was that set out in Article 58(1)(a) of 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).

5        On 23 April and 23 September 2019, The Topps Company, Inc., submitted evidence seeking to establish genuine use of the contested mark.

6        On 5 July and 25 November 2019, the intervener submitted his observations regarding that evidence. The Topps Company responded to those observations on 6 January 2020.

7        On 21 May 2020, the Cancellation Division granted the application for revocation in respect of all the goods covered by the contested mark as from 12 December 2018.

8        On 29 June 2020, The Topps Company filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

9        By the contested decision, the Board of Appeal dismissed the appeal. First of all, regarding the question whether the use of the contested mark was in accordance with Article 18(1)(a) of Regulation 2017/1001, it found that the distinctive character of the contested mark, which consists of a commonly shaped baby’s bottle, was weak and would therefore be easily altered. In addition, it found that the forms submitted in evidence differed from the form protected by the contested mark by significant variations in nature, length and position. In that regard, it concluded that the additional word and figurative elements are not negligible but rather distinctive. Therefore, the Board of Appeal found that the use as demonstrated was neither use of the contested mark as registered, nor use in a form differing in elements which did not alter its distinctive character. Next, it found that, although several marks could be used genuinely on one product at the same time, the proprietor of the mark for which use had to be demonstrated had to show that that mark was still perceived as an independent mark. Lastly, it found that this was not the case, since the contested mark as registered had merged with the additional figurative and word elements to form another sign.

 Forms of order sought

10      The Topps Company claims, in essence, that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

11      EUIPO contends that the Court should:

–        dismiss the action;

–        order The Topps Company to pay the costs.

12      The intervener contends, in essence, that the Court should:

–        dismiss the action;

–        order The Topps Company to pay the costs relating both to the proceedings before EUIPO and to the proceedings before the Court.

 Law

 The application for replacement of a party

13      By letter of 13 May 2022, the representative of The Topps Company, providing proof of an authority to act given by The Bazooka Companies, stated that the latter company was now the proprietor of the contested mark and that it wished to replace The Topps Company. The representative enclosed with his letter, inter alia, a notification, dated 17 January 2022, of the registration with EUIPO of the transfer of the contested mark to The Bazooka Companies.

14      Under Article 176(1) to (3) of the Rules of Procedure of the General Court, after the application for replacement has been served on the parties and after those parties have been given an opportunity to submit their observations, the decision on the application for replacement is to take the form of a reasoned order of the President or is to be included in the decision closing the proceedings.

15      In accordance with Article 174 of the Rules of Procedure, where an intellectual property right affected by the proceedings has been transferred to a third party by a party to the proceedings before the Board of Appeal of EUIPO, the successor to that right may apply to replace the original party in the proceedings before the General Court. Article 176(5) of the Rules of Procedure states that, if the application for replacement is granted, the successor to the party who is replaced must accept the case as he, she or it finds it at the time of that replacement. That successor is to be bound by the procedural documents lodged by the party whom he, she or it replaces.

16      It is apparent, moreover, from Articles 20 and 27 of Regulation 2017/1001 that, after the transfer of an EU trade mark has been entered in EUIPO’s register, the successor in title may invoke the rights arising from that mark.

17      In the present case, the representative of The Topps Company, the former proprietor of the contested mark, has informed the Court of the transfer of that mark to The Bazooka Companies and, as the latter’s representative, has applied for The Topps Company to be replaced in the present proceedings by The Bazooka Companies. As has been stated in paragraph 13 above, he has also produced before the Court a notification of the registration with EUIPO of the transfer of the contested mark to the latter company.

18      Therefore, since the intervener did not submit any observations regarding the application for replacement within the time limit set, and since EUIPO has stated that it has no objections to that application, The Bazooka Companies must be granted leave to replace The Topps Company as applicant in the present case.

 The claim for annulment

19      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 58(1)(a) and of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001. Furthermore, in its arguments in support of that action, the applicant also alleges that the Board of Appeal did not give adequate reasons for the contested decision.

 The statement of reasons for the contested decision

20      Without formally and succinctly setting out a separate complaint in its arguments, the applicant claims that the Board of Appeal did not provide adequate reasons and justification for its decision to attribute a weak distinctive character to the contested mark. It also submits that the Board of Appeal did not provide reasons for its assessment that the contested mark had merged with the additional figurative and word elements to form another sign.

21      EUIPO disputes the applicant’s arguments.

22      A distinction must be drawn between the complaint based on a failure to state reasons or an inadequate statement of reasons and those alleging infringement of Article 58(1)(a) and point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001. A claim that there is no, or only an inadequate, statement of reasons constitutes a plea of infringement of an essential procedural requirement, which, as such, is different from a plea that the grounds of the decision are inaccurate, the latter plea being a matter to be reviewed by the Court when it examines the substance of that decision (see judgment of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL), T‑686/19, not published, EU:T:2020:320, paragraph 22 and the case-law cited). Moreover, the fact that the applicant has not formally submitted a separate plea in law alleging a failure to state reasons or an inadequate statement of reasons does not preclude the examination of that complaint by the Court. It should be borne in mind that a lack of reasoning or an inadequate statement of reasons constitutes an infringement of essential procedural requirements for the purposes of Article 263 TFEU and is a plea involving a matter of public policy which may, and even must, be raised by the EU judicature of its own motion (see judgment of 2 March 2022, Distintiva Solutions v EUIPO – Makeblock (Makeblock), T‑86/21, not published, EU:T:2022:107, paragraph 96 and the case-law cited).

23      It should be noted that, under Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. According to the case-law, that obligation has the same scope as that laid down by the second paragraph of Article 296 TFEU and its purpose is, first, to enable interested parties to know the justification for the measure taken so as to be able to defend their rights and, secondly, to enable the EU judicature to exercise its jurisdiction to review the legality of the decision contested before it (judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86, and of 8 May 2019, Inditex v EUIPO – Ffauf Italia (ZARA), T‑269/18, not published, EU:T:2019:306, paragraph 34).

24      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 power of review (see judgment of 8 July 2020, GNC LIVE WELL, T‑686/19, not published, EU:T:2020:320, paragraph 21 and the case-law cited).

25      In the present case, it should be noted that the Board of Appeal found that the distinctive character of the contested mark was weak due to the fact that it consisted of a commonly shaped baby’s bottle and was therefore easily altered. Furthermore, after recalling that it was for the proprietor of that mark to furnish proof that that mark alone, as opposed to any other mark also present, indicated the origin of the goods and that it was still perceived by the relevant consumer independently of the second sign affixed to it, the Board of Appeal found that this was not the case and that the contested mark had merged with the additional figurative and word elements to form another sign.

26      In that regard, in the first place, the question whether the distinctive character of the contested mark is weak due to the fact that it consists of a commonly shaped baby’s bottle relates not to the statement of reasons for the contested decision, but to the merits of that decision, which is assessed in the context of the analysis of the second complaint of the single plea in law relied on by the applicant.

27      In the second place, as regards the assertion that the contested mark has merged with the additional figurative and word elements, it is true that the lack of precision and the scarcely substantiated nature of the Board of Appeal’s assessment in that regard is regrettable. However, first of all, the Board of Appeal stated that the added word and figurative elements were not negligible, but rather distinctive. Next, it noted that the proprietor of the contested mark had to furnish proof that that mark alone, as opposed to any other mark present, indicated the origin of the goods. Lastly, it concluded, albeit implicitly, that such proof had not been furnished, since it found that that mark was not perceived by the relevant consumer independently of the second sign present and that it had merged with the additional figurative and word elements. Accordingly, the Board of Appeal set out the facts and legal considerations having decisive importance in the context of the contested decision. Moreover, there is no indication that the applicant was not in a position to understand the grounds of the contested decision and to challenge them before the Court.

28      Accordingly, it must be held that the Board of Appeal did not vitiate the contested decision by a failure to state reasons or an inadequate statement of reasons, without prejudice to the analysis of the arguments raised by the applicant from the point of view of their merits, which are assessed in the context of the plea in law alleging infringement of Article 58(1)(a) and of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001.

 The single plea in law, alleging infringement of Article 58(1)(a) and of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001

29      The applicant raises, in essence, three complaints in support of the plea in law alleging infringement of Article 58(1)(a) and of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001. The first complaint is based on the identity between the shape of the product and the shape of the contested mark, the second on the highly distinctive character of the contested mark and the third on the assertion that the combination of a three-dimensional mark with a figurative or word mark or with other elements does not alter the distinctive character of that mark and that, in the present case, those elements do not dominate the overall impression.

30      It should be recalled that, under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods in respect of which it is registered, and there are no proper reasons for non-use. However, that article states that no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application, genuine use of the trade mark has been started or resumed.

31      In addition, it should be noted that, under point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor, is also be to regarded as genuine use.

32      The purpose of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, which avoids imposing strict conformity between the form of the EU trade mark as used and the form in which that mark was registered, is to allow its proprietor, in the commercial exploitation of the sign, to make variations, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. Consequently, where the sign used in trade differs from the form in which it was registered only in negligible elements, with the result that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to demonstrate use of the registered trade mark may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (judgment of 10 October 2017, Klement v EUIPO – Bullerjan (Form of an oven), T‑211/14 RENV, not published, EU:T:2017:715, paragraph 35).

33      In the context of the application of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, the form of use of the registered mark must be assessed in the light of its distinctive character, in order to ascertain whether that distinctive character has been altered. For the purposes of that verification, account must be taken, in particular, of the greater or lesser degree of distinctive character of the mark at issue. The weaker the distinctive character, the easier it will be to alter it by adding an element that is itself distinctive, and the more the mark in question will lose its ability to be perceived as indicative of the origin of the product. The reverse is also true (see, to that effect, judgments of 10 October 2017, Form of an oven, T‑211/14 RENV, not published, EU:T:2017:715, paragraph 36, and of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 140).

34      Furthermore, a finding of an alteration of the distinctive character of the contested mark requires an assessment of the distinctive and dominant character of the added elements based on the inherent qualities of each of those elements and the relative position of the different elements within the arrangement of the trade mark (judgment of 23 September 2020, Shape of a blade of grass in a bottle, T‑796/16, EU:T:2020:439, paragraph 139 (not published)).

–       The first complaint, alleging that the shape of the product and the shape of the contested mark are identical

35      The applicant submits that the baby’s bottle shape used is identical to the shape protected by the contested mark and that that point was not rebutted in the contested decision. It maintains that it is apparent from the images of the sign as used that all the distinctive and dominant elements of that mark are present within that sign. Moreover, the applicant argues that the Board of Appeal accepted that there was no difference between the shape protected by the contested mark and the shape of the product as used.

36      EUIPO contends that the Board of Appeal did not accept that there was no difference between the shape as registered and the shape of the product sold. Thus, it argues that, in the present case, the Board of Appeal stated that the forms submitted differed from the form protected by the contested mark by significant variations in nature, length and position, and noted significant differences. In addition, EUIPO maintains that the lid is transparent in the mark as used and that, unlike the mark as registered, it allows the teat and the entire serrated pattern of the collar to be seen. It argues that the lid is also less slender in the mark as registered and occupies a slightly greater proportion than on the representations of the mark as used.

37      The intervener contends that the contested mark is a three-dimensional mark, registered as a simple black and white depiction of the well-known shape of a baby’s bottle without any word or figurative element.

38      As a preliminary point, it should be noted that, on the one hand, the English-language version of Regulation 2017/1001 uses the word ‘shape’ in the first paragraph of Article 4 thereof, which provides that ‘an EU trade mark may consist of any signs, in particular … the shape of goods or of the packaging of goods’. On the other hand, the word ‘form’ appears in point (a) of the second subparagraph of Article 18(1) of that regulation, which refers to ‘use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’. It should be noted that the French-language version of Regulation 2017/1001 uses only the word forme in both provisions.

39      Therefore, first of all, it is necessary to examine whether the form of which the contested mark as used consists, that is to say, the three-dimensional ‘shape’, differs from the form in which the contested mark is registered. Next, it must be determined whether the addition of word and figurative elements may have led to use in a ‘form’ differing from the contested mark as registered only in elements which do not alter the distinctive character of that mark. It is apparent from the case-law that a situation such as that at issue in the present case, in which a word or figurative mark is superimposed on a three-dimensional mark, falls within the scope of the situation referred to in point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001, namely use of the trade mark in a form differing from that in which that trade mark was registered (see, to that effect, judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 19). Lastly, it should be pointed out that the present complaint relates solely to the first question, whereas the second question is examined in the context of the third complaint.

40      At the outset, it is apparent from paragraph 2 above that the contested mark as registered consists of the shape of a baby’s bottle with a teat, a lid corresponding to the shape of that teat, and a serrated surface underneath the teat.

41      Thus, it is necessary to examine whether the Board of Appeal acknowledged, as the applicant claims, that the shape of which the contested mark as registered consists was identical to the shape of that mark as used. In that regard, it should be noted that, in the contested decision, under the heading ‘Legal background’, the Board of Appeal observed, citing the judgment of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) (T‑29/04, EU:T:2005:438, paragraph 34), that the Court had referred to situations where several signs were used simultaneously in an autonomous way and, therefore, the sign as registered was perceived independently within that combination. The Board of Appeal went on to find that the situation was not, ‘in this case’, that the sign as registered was used in a form differing from that in which it was registered, but that several signs were used simultaneously.

42      It should be noted that the expression ‘in this case’ used by the Board of Appeal did not appear in the citation of the judgment of 8 December 2005, CRISTAL CASTELLBLANCH (T‑29/04, EU:T:2005:438). Thus, as the applicant submits, it could be understood that the Board of Appeal accepted, in the circumstances of the present case, that the sign as registered and the sign as used had the same form. However, in its analysis under the heading ‘The present case’, the Board of Appeal then pointed out that the forms submitted in evidence differed from the form protected by the contested mark by significant variations in nature, length and position, without describing those variations. Therefore, it is apparent from the contested decision that the Board of Appeal did not acknowledge that the shape protected by the contested mark as registered and the shape of which the contested mark as used consists were identical.

43      In addition, EUIPO contends that the lid is transparent in the contested mark as used, which, unlike the contested mark as registered, makes it possible to see the teat and the entire serrated pattern of the collar. It also argues that the lid is less slender in the contested mark as registered and occupies a slightly greater proportion than on the representations of the contested mark as used, reproduced below:

44      In the present case, having regard to the form of which the contested mark as registered consists (that is to say, the three-dimensional ‘shape’), described in paragraph 40 above, it must be held that no variation between that form and the form of which the contested mark as used consists, reproduced in paragraph 43 above, can be regarded as significant. Both have the shape of a baby’s bottle, with a teat, a serrated surface and a lid. Thus, it is practically impossible that the relevant public, consisting of the public at large with an average level of attention, would perceive the differences relied on by EUIPO, in particular in terms of proportion, given that they are difficult to perceive with the naked eye. Therefore, despite the transparent nature of the lid, the baby’s bottle shape of which the contested mark as used consists will be perceived by the relevant public as identical to the form protected by the contested mark as registered.

45      Therefore, it must be held that the form of which the contested mark as used consists (that is to say, the three-dimensional ‘shape’) is perceived as identical to the form of the contested mark as registered.

–       The second complaint, alleging that the contested mark has a highly distinctive character

46      In the first place, the applicant submits that the Board of Appeal erred in law and made an error of assessment when it attributed only a weak distinctive character to the contested mark. It claims that the fact that a baby’s bottle is a common shape is immaterial, given that just because a shape is common in one field does not mean that it has no distinctive character in another. The applicant submits that the distinctive character must be assessed by reference to the goods in respect of which the contested mark is registered. However, it argues that that trade mark designates goods that are entirely unrelated to goods used for feeding milk to babies. The applicant claims that, in the absence of evidence to the contrary, there is no reason to think that registered marks do not consist of highly unusual shapes for the protected goods and that they do not have a highly distinctive character.

47      In the second place, the applicant maintains that it submitted evidence of the uniqueness of the baby’s bottle shape, the impact of which is greater than the figurative elements present on the surface of the goods, especially as the candy is typically in bright colours and as those elements are decorative, with the exception of famous cartoon characters. It argues that, as shown by the evidence, consumers remember that the element ‘big baby pop!’ corresponds to candy shaped like a baby’s bottle and that shape is easy to spot on the shelves. Lastly, the applicant submits that the contested mark has a highly distinctive character, both inherently and due to the public’s recognition of it, since millions of goods have been sold in the European Union for decades. Consequently, according to the applicant, in finding that the distinctive character of the contested mark was weak, the Board of Appeal did not correctly assess the impact that the use of the figurative and word elements on the surface of the goods at issue had on the assessment of the use of the shape of which the contested mark consists.

48      In the first place, EUIPO contends that it may prove more difficult to establish the distinctive character of a three-dimensional mark. It argues that the contested mark consists of an ordinary container and that such a baby’s bottle shape is not ‘highly unusual’ for the protected goods in Class 30. It maintains that the fact that the contested mark might not resemble the shape most likely to be taken by the product at issue does not make it ‘highly distinctive’, but merely registrable.

49      In the second place, EUIPO contends that the mere production of sales volumes and advertising material cannot constitute relevant proof of an alleged highly distinctive character. In that regard, it argues that the applicant has not demonstrated the relevant public’s perception of the contested mark as indicative of origin, for example by producing a market survey.

50      The intervener contends that the contested mark consists of a well-known, commonly used shape of a baby’s bottle and that no element distinguishes that mark from such bottles. Moreover, he argues that there is no evidence of its recognition by the relevant public. Therefore, according to the intervener, the contested mark has a weak distinctive character.

51      It is apparent from the case-law that for a trade mark to possess distinctive character for the purposes of Regulation 2017/1001, 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 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited).

52      Furthermore, it should be borne in mind that the distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect (judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35).

53      In addition, it should be noted that, as regards three-dimensional marks consisting of the shape or appearance of the product itself, it is settled case-law that the criteria for assessing their distinctive character are no different from those applicable to other categories of trade mark (judgments of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 30, and of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 45). That case-law can be applied to the assessment of the genuine use of such three-dimensional marks. Indeed, neither Regulation 2017/1001 nor the case-law states that different, or stricter, criteria are to be applied to them. In particular, it cannot be required as a matter of principle that those marks be used in isolation or that they have a particularly high degree of distinctive character, whether inherent or acquired through use (judgment of 24 September 2015, Klement v OHIM – Bullerjan (Form of an oven), T‑317/14, not published, EU:T:2015:689, paragraph 35).

54      However, when assessing both distinctive character and its alteration, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the shape of the product itself as it is in the case of a word or figurative mark consisting of a sign which is independent from the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about 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 could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 30).

55      In those circumstances, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001 (judgment of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 36). Only a mark which departs significantly from the norm or customs of the sector, and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision (judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 31).

56      In the present case, it should be noted that the Board of Appeal, in finding that the distinctive character of the contested mark was weak because that mark consisted of a commonly shaped baby’s bottle, did not take into account, in its assessment of that distinctive character, the type of goods in respect of which the contested mark was registered. As the applicant submits, the contested mark consisting of the shape of a baby’s bottle is registered in respect of goods such as confectionery, sugar confectionery, candy and sherbet which are entirely unrelated to goods used for feeding milk to babies. Accordingly, it cannot be concluded that the contested mark has a weak distinctive character for the sole reason, put forward by the Board of Appeal, that it consists of a commonly shaped baby’s bottle.

57      As regards EUIPO’s argument that, first, the contested mark consists exclusively of a rather ordinary container that can be filled with sweets and, secondly, the shape of a baby’s bottle is not ‘highly unusual’ for the protected goods in Class 30, it should be borne in mind that registration of the contested mark as an EU trade mark was allowed and that that mark must be presumed not to be devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, which, moreover, has not been called into question by the parties (see, to that effect, judgment of 10 October 2017, Form of an oven, T‑211/14 RENV, not published, EU:T:2017:715, paragraph 26). Furthermore, the distinctive character of the baby’s bottle shape of which the contested mark consists, which is unchanged in the present case, derives from the fact that, at the time of its registration, EUIPO considered that it departed significantly from the norm or customs of the sector concerned, consisting, inter alia, of lollipops, chocolate bars and candy bags. It is true that a finding that there has been a significant departure from the norm or customs of the sector concerned does not necessarily mean that the contested mark has an average or highly distinctive character. However, it may be recalled that EUIPO had considered the shape of which the contested mark consists, at the time of its registration, to be unusual with regard to the goods at issue.

58      Furthermore, it is apparent from the documents submitted in the course of the proceedings before EUIPO that the contested mark is regularly described as candy in the shape of a baby’s bottle. In that regard, as was acknowledged at the hearing by EUIPO and the applicant, the baby’s bottle of which the shape of the contested mark consists represents both the shape of the product and its packaging. It should be noted that it appears relatively rare in the candy and confectionery sector to emphasise the shape of a product or its packaging. Furthermore, in everyday life, the baby’s bottle of which the contested mark consists is not perceived as having a purpose other than that of containing milk or a baby’s beverage. Those findings confirm the applicant’s argument that the shape of a baby’s bottle stands out from other products with more conventional shapes, such as lollipops, sticks of rock, gobstoppers, rectangular chocolate bars or candy bags. Therefore, for all those reasons, even if, as EUIPO asserts, the fact that the contested mark might not resemble the shape most likely to be taken by the product at issue does not automatically make it ‘highly distinctive’, it must be held that the contested mark has an average inherent distinctive character and not a weak distinctive character as found by the Board of Appeal.

59      As regards the applicant’s argument that the contested mark has a highly distinctive character as a result of the public’s recognition of that mark, it should be noted that the existence of a highly distinctive character as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation 2017/1001. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraphs 34 and 35 and the case-law cited).

60      In the present case, it should be noted that the applicant merely relied, in support of its argument alleging that the contested mark had a highly distinctive character as a result of the public’s recognition, on a list of sales made in various countries of the European Union, as well as advertisements. That list does not state that the sales figures included concern the goods covered by the contested mark. Moreover, the advertisements submitted do not make it possible to establish the market share held by that mark and the proportion of the relevant section of the public which identifies the goods as originating from the undertaking in question. Therefore, those facts alone are not sufficient to conclude that the contested mark has a highly distinctive character as a result of the public’s recognition of that mark on the market.

61      In the light of the foregoing, the Board of Appeal erred in attributing a weak distinctive character to the contested mark on the sole ground that it consisted of a commonly shaped baby’s bottle. The goods protected by that mark, such as candy and sugar confectionery, are entirely unrelated to babies’ bottles. Furthermore, it is apparent from the documents submitted in the course of the proceedings before EUIPO that that mark is sometimes described as candy in the shape of a baby’s bottle, whereas it is unusual in the relevant sector to designate candy by its shape. Therefore, it must be held that the contested mark has an average distinctive character, and that that distinctive character cannot be regarded as high as a result of the public’s recognition of that mark. It is in the light of that finding that it is now necessary to analyse the impact of the addition of figurative and word elements to the surface of the contested mark as used.

–       The third complaint, alleging, in essence, that the combination of a three-dimensional mark with a figurative or word mark or with other elements does not alter the distinctive character of that mark and that those elements do not dominate the overall impression

62      In the first place, the applicant submits that the contested mark has not merged with the figurative and word elements present on the packaging of the mark as used but, on the contrary, is perceived as an independent sign that has been used in exactly the same shape as that in which it was registered. Furthermore, according to the applicant, the Court of Justice has held that a mark could have been put to genuine use where it was used only through a composite mark or in conjunction with another mark. In addition, it maintains that the Court of Justice has stated that the superimposing of a word sign on a wordless figurative mark would still allow the use of the composite mark to establish genuine use of the wordless mark if the distinctive character of the latter was not altered by the added word element. In the present case, the applicant submits that the relevant public may still rely on the shape of the product sold, which is identical to that protected by the contested mark as registered, as an element which, by itself, may serve to distinguish that product from those of other manufacturers. It claims that the contested mark was registered because it was distinguishable from the usual shape in which sweets were sold. Moreover, according to the applicant, the shape is a characteristic of the product which is separate from the design of its surface, and the added word and figurative elements do not therefore affect the ability of the shape to serve as an indication of origin. Therefore, it argues that the contested mark has not lost its ability to distinguish the product from others since the elements on its surface do not alter its shape.

63      In the second place, the applicant submits that if it were so easy for the addition of word or figurative elements to alter the distinctive character of a mark, the registration of shape marks without a specific representation would become futile. Therefore, it maintains that the goods are not sold as ‘shapes’ alone, due in particular to labelling and decoration requirements, but that their shape remains the feature on which the consumer relies as an indication of commercial origin. In addition, it submits that it is normal to combine a three-dimensional shape with a word mark. According to the applicant, that additional word element may even facilitate the determination of the commercial origin of the goods covered without affecting the distinctive character of the three-dimensional mark. It claims that, in the present case, only the shape of which the contested mark consists, along with the name, serves to identify the product, and both also do so separately. Moreover, the applicant maintains that the fact that invoices refer only to the mark BIG BABY POP! suggests at most that those terms also enable the product to be identified, but does not indicate that the shape of which the contested mark consists has not been used as a mark. Furthermore, according to the applicant, the higher the degree of distinctive character of the contested mark, the less it would be altered. It argues that this is confirmed by distributors of the product who associate that product with the applicant.

64      In the third place, according to the applicant, the Board of Appeal erred in stating that the proprietor of the contested mark had to show that the shape of the product was still perceived as a mark when it was combined with other elements. It claims that this would amount to requiring the proprietor to prove acquired distinctive character as if it were a situation falling within the scope of Article 59(2) of Regulation 2017/1001. However, according to the applicant, the Court of Justice confirmed that it was necessary for a person applying for revocation to prove that the shape of which the mark contested by that person consists was customary in the industry in order for that mark to be revoked, and that if a shape was sufficiently unusual to be registered as a mark, it would remain distinctive.

65      In the fourth place, the applicant submits that, even taking account of the figurative and word elements present on the surface of the product, those elements do not alter the distinctive character of the contested mark, since they do not dominate the overall impression and the product continues to be perceived as a sugary snack in the shape of a baby’s bottle. Furthermore, at the hearing, the applicant clarified its assertion that the figurative and word elements highlighted the shape of a baby’s bottle and that some of them had a weak distinctive character and were decorative in nature. Thus, it argues, the letter ‘i’ is stylised in order to represent a baby’s bottle, the name of the product contains the element ‘baby’, referring to the shape of the mark, and a baby character features on that product. Therefore, according to the applicant, the word and figurative elements support the perception of the product as ‘candy in the shape of a baby’s bottle’. Furthermore, the applicant claims that use of the shape mark without any information on the surface of the goods would be impossible due to regulatory requirements. Lastly, the applicant submits that the label used in the present case is not particularly large, does not dominate the overall impression produced by the contested mark and does not prevent the average consumer from perceiving the shape of a baby’s bottle and the inside thereof.

66      In the first place, EUIPO contends that, where a mark is used in conjunction with another mark, the condition relating to genuine use may be satisfied only if the mark continues to be perceived as indicative of the origin of the product and if the additional word and figurative elements do not prevent the public from perceiving the shape of that mark as an independent element. Thus, it argues that the elements at issue should merely be juxtaposed with the mark, without forming a unit with it.

67      In the second place, EUIPO contends that the Board of Appeal was correct to rely on the judgment of 16 September 2015, Société des Produits Nestlé (C‑215/14, EU:C:2015:604), in order to find that the applicant had to prove that the contested mark alone, as opposed to any other mark that might also be present, identified the goods as originating from a particular undertaking. According to EUIPO, the Court of Justice held that the requirements for verification of genuine use are analogous to those concerning the acquisition by a sign of distinctive character through use. Moreover, EUIPO argues that the circumstances of the case which gave rise to the judgment of 23 January 2019, Klement v EUIPO (C‑698/17 P, not published, EU:C:2019:48), are not comparable. It contends that, in the present case, the additional elements occupy most of the surface of the contested mark and are very prominently and repeatedly displayed. Furthermore, according to EUIPO, the proprietor remains free to choose the format, colour, size and layout of the label.

68      In the third place, EUIPO contends that the additional word and figurative elements are rather distinctive. It maintains that the expression ‘big baby pop!’ is distinctive with regard to the goods at issue, occupies a central position, sometimes appears twice and is so prominent that it influences the overall appearance of the product. By contrast, according to EUIPO, the two-dimensional representation of the baby’s bottle is marginal. It argues that the other word and figurative elements attract the consumer’s attention more than that representation due to their size, colours and proportions. Moreover, EUIPO contends that the baby represented is frequently replaced by other characters or elements while the element ‘baby’ is part of the longer expression ‘big baby pop!’. It argues that, overall, the link between those elements and the shape is too tenuous. In addition, according to EUIPO, the argument that the additional elements either highlight the characteristics of the shape or are decorative and devoid of distinctive character is contradictory. Lastly, EUIPO contends that, since those elements are distinctive and not negligible, they have merged with the registered mark and form a unit with it. Therefore, it maintains that those elements prevent the contested mark from being perceived as an independent element and from being associated with a particular undertaking, thereby altering its distinctive character.

69      The intervener contends that point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 operates only in situations where the form of the sign used differs from the form in which it was registered in negligible elements. He maintains that the mark as used alters the distinctive character of the contested mark since the mark as used contains several dominant elements occupying a prominent position. According to the intervener, various colour combinations are used and the product is associated with the expression ‘big baby pop!’ as well as with other figurative elements depicting a baby in various forms and colours. He states that some of the goods also feature film characters. According to the intervener, those additional elements have a highly distinctive character. Furthermore, he contends that the invoices submitted in the course of the proceedings before EUIPO attest to the association of the goods with the expression ‘big baby pop!’. Therefore, the intervener argues that the contested mark has been changed so much that it can no longer perform the function of a trade mark.

70      The Board of Appeal found that the forms submitted in evidence differed from the form protected by the contested mark by significant variations in nature, length and position. Furthermore, it took the view that the additional word and figurative elements are not negligible but rather distinctive. The Board of Appeal therefore found that the marks as used could not be regarded as ‘broadly equivalent’ to the mark as registered and that the use as demonstrated was not use in a form differing in elements which did not alter its distinctive character. In addition, it found that, although several marks could be used genuinely on one product at the same time, the proprietor of the mark for which use had to be demonstrated had to show that that mark was still perceived as an independent mark. Thus, it noted that the mark as registered had to be perceived by the relevant consumer independently of the second sign and found that this was not the case since the contested mark had merged with the additional figurative and word elements to form another sign.

71      As a preliminary point, it is apparent from paragraph 44 above that the contested mark as used consists of a baby’s bottle shape that is almost identical to the contested mark as registered. Furthermore, additional coloured word and figurative elements are frequently affixed to that mark, such as ‘big baby pop!’, whose stylised letter ‘i’ depicts a baby’s bottle, as well as a baby character and a figurative element indicating the taste of the product.

72      In the first place, it should be noted that, in proceedings for revocation of a mark, it is in principle for the proprietor of the mark to establish genuine use of that mark (see, to that effect, judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 63).

73      In the second place, it should be noted that the criterion of use cannot be assessed in the light of different considerations according to whether the issue to be decided is whether that criterion is capable of giving rise to rights relating to a mark or of ensuring that such rights are preserved. If it is possible to acquire trade mark protection for a sign through a specific use made of that sign, that same form of use must also be capable of ensuring that such protection is preserved. Therefore, the requirements that apply to verification of the genuine use of a mark, within the meaning of Article 18(1) of Regulation 2017/1001, are analogous to those concerning the acquisition by a sign of distinctive character through use for the purpose of its registration, within the meaning of Article 7(3) of that regulation (see, by analogy, judgment of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraphs 33 and 34).

74      However, it is apparent from the case-law that the acquisition of distinctive character may result both from the use, as part of a registered trade mark, of an element thereof and from the use of a separate mark in conjunction with a registered trade mark. In both cases, it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the goods or services, designated exclusively by the mark applied for, as originating from a particular undertaking (see, by analogy, judgments of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30, and of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 27).

75      Accordingly, in the light of paragraphs 73 and 74 above, it must be emphasised that a registered trade mark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 (see, by analogy, judgment of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 35).

76      Furthermore, it is apparent from the case-law relating to the acquisition by a sign of distinctive character through use within the meaning of Article 7(3) of Regulation 2017/1001 that, although the mark being contested may have been used as part of a registered trade mark or in conjunction with such a mark, the fact remains that, for the purposes of the registration of the mark itself, the person applying for registration must prove that that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate (see, to that effect, judgment of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraph 66).

77      In that regard, it is apparent from paragraph 73 above that the requirements that apply to verification of the genuine use of a mark, within the meaning of Article 18(1) of Regulation 2017/1001, are analogous to those concerning the acquisition by a sign of distinctive character through use for the purpose of its registration, within the meaning of Article 7(3) of that regulation. Furthermore, it should be borne in mind that the General Court has interpreted that case-law by holding that the fact that the relevant public might recognise the mark being contested by referring to another mark which designates the same goods and is used in conjunction with the mark being contested does not mean that the latter mark is not used as a means of identification in itself (see, to that effect, judgments of 15 December 2016, Mondelez UK Holdings & Services v EUIPO – Société des produits Nestlé (Shape of a chocolate bar), T‑112/13, not published, EU:T:2016:735, paragraph 99, and of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 74).

78      In the present case, contrary to the applicant’s assertions, the Board of Appeal correctly found that the proprietor of the contested mark had to show that that mark was still perceived as an independent mark and that combining it with another mark did not alter its distinctive character. In addition, it should be noted that the applicant submitted, in the course of the proceedings before EUIPO, various items such as articles and screenshots of websites offering for sale the goods covered by the contested mark where they were described on various occasions as candy or lollipops in the shape of a baby’s bottle. Furthermore, as the applicant submits, the product at issue is also referred to as ‘the famous playful bottle shaped confectionery’.

79      In the third place, it should be noted that, in the context of the case which gave rise to the judgment of 10 October 2017, Form of an oven (T‑211/14 RENV, not published, EU:T:2017:715), the Court pointed out that the condition of genuine use of a mark within the meaning of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 could be satisfied where a trade mark was used in conjunction with another mark, provided that the mark continued to be perceived as indicative of the origin of the product at issue. It held that this was the case given that the addition of the word mark at issue in the abovementioned case did not alter the form of the mark contested in that case since the consumer could still distinguish the form of the three-dimensional mark, which remained identical, as indicative of the origin of the goods (see, to that effect, judgment of 10 October 2017, Form of an oven, T‑211/14 RENV, not published, EU:T:2017:715, paragraph 47). Moreover, the Court of Justice has confirmed that a three-dimensional mark could be used in conjunction with a word element without necessarily calling into question the consumer’s perception of the form as indicative of the commercial origin of the goods (judgment of 23 January 2019, Klement v EUIPO, C‑698/17 P, not published, EU:C:2019:48, paragraph 47).

80      First, in that regard, it should be noted that the factual circumstances surrounding the cases which gave rise to the judgments of 23 January 2019, Klement v EUIPO (C‑698/17 P, not published, EU:C:2019:48), and of 10 October 2017, Form of an oven (T‑211/14 RENV, not published, EU:T:2017:715), are, admittedly, different from the factual circumstances at issue. However, the addition of the mark BIG BABY POP! and the few other figurative and word elements to the surface of the contested mark as used does not alter the form of that mark since the consumer can still distinguish the form of the three-dimensional mark, which remains identical in the eyes of that consumer. Furthermore, as is apparent from paragraph 78 above, the product at issue is described on various occasions in the documents submitted in the course of the proceedings before EUIPO as candy in the shape of a baby’s bottle. By way of example, it is even sometimes referred to as ‘the famous playful bottle shaped confectionery’.

81      Secondly, the fact that the mark BIG BABY POP! may facilitate the determination of the commercial origin of the candy in question is not at odds with the fact that it may not alter the distinctive character of the three-dimensional mark consisting of the shape or the appearance of those goods for the purposes of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001. Otherwise, the relatively common addition of a word element to a three-dimensional mark, which may still facilitate the determination of the commercial origin of the goods covered, would necessarily imply an alteration of the distinctive character of that three-dimensional mark (see, to that effect, judgment of 23 January 2019, Klement v EUIPO, C‑698/17 P, not published, EU:C:2019:48, paragraphs 44 and 45).

82      Furthermore, while it is true that, in the event of joint use of a three-dimensional mark with another mark, it may be easier to establish the alteration of the distinctive character of such a three-dimensional mark than the alteration of the distinctive character of a word or figurative mark (see, to that effect, judgment of 24 September 2015, Form of an oven, T‑317/14, not published, EU:T:2015:689, paragraph 37), it should also be borne in mind that, in the relevant sector of candy, confectionery and sugar confectionery, the combination of a three-dimensional form with additional word or figurative elements is common.

83      In that regard, it should be noted that it is inconceivable from a commercial and regulatory point of view to sell the goods at issue solely in the form of which the contested mark consists and without any label on its surface, even though, as EUIPO contends, the proprietor of the contested mark remains free to choose the format, colour, size and layout of the label covering it. In the present case, it must be pointed out that the figurative and word elements affixed to that form do not prevent the average consumer from perceiving the form as a whole, as well as the inside thereof.

84      Thirdly, as regards, specifically, the figurative and word elements included on the contested mark as used, it should be noted that the mark BIG BABY POP!, although it does indeed occupy a significant portion of the surface of the product, alludes to the baby’s bottle shape of which the contested mark consists. The stylised letter ‘i’ in the shape of a baby’s bottle recalls that shape, and the word ‘baby’ refers to users of babies’ bottles. Furthermore, the word ‘pop’ may evoke the word ‘lollipop’, and is therefore only weakly distinctive with regard to the goods protected by the contested mark.

85      In addition, as regards the other figurative or word elements frequently represented on the examples submitted in the course of the proceedings before EUIPO, it should be emphasised that the representation of the baby as a cartoon character, even though it is occasionally replaced by other characters, also refers to the terminology of the baby’s bottle. Moreover, the figurative element indicating the taste of the product, when it is present, has an informative purpose and therefore has a weak distinctive character with regard to the goods at issue. Therefore, it does not appear contradictory to take the view that one part of the figurative and word elements alludes to the baby’s bottle shape of which the contested mark consists and that another part is weakly distinctive. Accordingly, since those elements are less striking than the shape of the product itself and in the light of paragraph 80 above, an unequivocal conclusion must be drawn that the consumer is in a position to associate the form protected by the contested mark with a particular undertaking, and that that mark therefore continues to be perceived as indicative of the origin of the goods (see, to that effect, judgments of 28 February 2019, PEPERO original, T‑459/18, not published, EU:T:2019:119, paragraph 72, and of 23 September 2020, Shape of a blade of grass in a bottle, T‑796/16, EU:T:2020:439, paragraph 147).

86      Fourthly, as regards the intervener’s assertion that the invoices submitted by the applicant show that the goods covered by the contested mark are associated with the expression ‘big baby pop’, it should be emphasised that the fact that the form of which the contested mark consists does not appear on those invoices does not alter the fact that the consumer identifies that mark as indicative of the commercial origin of the goods at issue. Although only the mark BIG BABY POP or its abbreviation appear on those invoices, that practice is not unusual in the case of such documents where the use of a word element facilitates the course of business and where it is difficult to conceive of reproducing the baby’s bottle shape of which the contested mark consists alongside each heading designating the goods at issue.

87      Likewise, that conclusion cannot be altered by the fact that the contested mark as used has various bright colours while it was registered without colour. In that regard, it should be borne in mind that, according to settled case-law, whilst colours are capable of conveying certain associations of ideas and of arousing feelings, they possess little inherent capacity for communicating specific information. That is all the more the case since they are commonly and widely used, because of their appeal, in order to advertise and market goods and services without any specific message, including goods such as those at issue in the present case. It must be added that those various colours, while admittedly bright, are rather commonplace and vary according to the examples submitted of the contested mark as used. They are not, in themselves, so exceptional that they will be memorised in respect of the goods at issue. They will be understood more as elements for purely aesthetic purposes or as presentational features and not as indicative of the commercial origin of the goods (see, to that effect, judgment of 23 October 2017, Galletas Gullón v EUIPO – O2 Holdings (Shape of a packet of biscuits), T‑418/16, not published, EU:T:2017:746, paragraph 33 and the case-law cited).

88      In the light of all of the foregoing and taking into account the average distinctive character of the contested mark, it must be held that the figurative and word elements that cover the contested mark as used, even though they may facilitate the determination of the commercial origin of the goods covered, do not alter the distinctive character of the contested mark for the purposes of point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001 and do not call into question the fact that their addition may be regarded as having given rise to use of that mark in an acceptable variant. Accordingly, the Board of Appeal erred in finding that the contested mark had merged with the additional figurative and word elements to form, in the eyes of the relevant consumer, another sign, while the form of which that mark consists continued to be perceived by the relevant public as indicative of the commercial origin of the goods at issue.

89      In the light of all the foregoing considerations, the contested decision must be annulled.

 Costs

90      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

91      Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter.

92      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear his own costs.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Grants The Bazooka Companies, Inc., leave to replace The Topps Company, Inc., as applicant;

2.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 March 2021 (Case R 1326/2020‑2);

3.      Orders EUIPO to bear its own costs and to pay the costs incurred by The Bazooka Companies;

4.      Orders Mr Trebor Robert Bilkiewicz to bear his own costs.

Delivered in open court in Luxembourg on 26 October 2022.

*      Language of the case: English.

1      This judgment is published in extract form.

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