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

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

23 October 2024 (*)

( EU trade mark - Invalidity proceedings - EU figurative mark representing two parallel stripes on the side of a sports shoe - Absolute ground for refusal - No distinctive character - Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EU) 2017/1001) - Obligation to state reasons - Right to property - Legal certainty - Legitimate expectations )

In Case T-307/23,

Jima Projects, established in Oudenaarde (Belgium), represented by J. Løje, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas 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

Eli Salis Sulam, residing in Alicante (Spain), represented by M. Pomares Caballero, T. Barber Giner and K. Schmid, lawyers,

THE GENERAL COURT (Eighth Chamber),

composed of A. Kornezov (Rapporteur), President, G. De Baere and S. Kingston, Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the written part of the procedure,

further to the hearing on 30 April 2024,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Jima Projects, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 March 2023 (Case R 1215/2022-1) (‘the contested decision’).

 Background to the dispute

2        On 15 December 2020, the intervener, Eli Salis Sulam, filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 12 August 2002 in respect of the following figurative sign:

3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in, inter alia, Class 25 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 corresponded to the following description: ‘Footwear, including sports footwear’.

4        The ground relied on in support of the application for a declaration of invalidity was that set out in 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, itself 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)) and, more specifically, in Article 51(1)(a) (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) of that regulation (now Article 7(1)(b) of Regulation 2017/1001).

5        On 11 May 2022, the Cancellation Division, first, upheld the application for a declaration of invalidity on the ground that the contested mark was devoid of any inherent distinctive character and, secondly, reserved its decision as regards the issue of whether that mark had acquired distinctive character through use.

6        On 2 December 2022, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

7        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the contested mark was devoid of any inherent distinctive character and remitted the case to the Cancellation Division for the purposes of the examination of the applicant’s subsidiary claim that the contested mark had acquired distinctive character through use pursuant to Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation 2017/1001).

 Forms of order sought

8        The applicant claims that the Court should:

-        annul the contested decision;

-        order EUIPO to pay the costs.

9        EUIPO contends that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs incurred by EUPO in the event that a hearing is convened.

10      The intervener contends that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs.

 Law

11      The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation, and, secondly, infringement of Article 17 and Article 41(2)(c) of the Charter of Fundamental Rights of the European Union (‘the Charter’) and of the principles of legal certainty and of the protection of legitimate expectations.

 The applicable law

12      Given the date on which the application for registration in question was filed, namely 12 August 2002, which is decisive for the purposes 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, order of 5 October 2004, Alcon v OHIM, C-192/03 P, EU:C:2004:587, paragraphs 39 and 40, and 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).

13      Furthermore, since, 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 case is governed by the procedural provisions of Regulation 2017/1001.

 The first plea, alleging infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation

14      By its first plea, the applicant disputes the Board of Appeal’s finding that the contested mark is devoid of any inherent distinctive character. That plea comprises, in essence, three complaints, alleging, first, an incorrect assessment of the relevant public’s level of attention, secondly, an incorrect assessment of the perception of the contested sign and its characteristics and, thirdly, an error on the part of the Board of Appeal in that it did not apply the case-law and the decision-making practice of EUIPO which existed as at the date on which the application for registration in question was filed.

15      It must be pointed out at the outset that it is apparent from EUIPO’s case file that the contested mark was registered as a figurative mark. In that regard, the Board of Appeal found that, given that the outline of the shoe was represented by broken or dotted lines, that mark did not take the form of a two-dimensional representation of a shoe, but actually that of a device which was intended to be positioned on a part of the designated goods, namely two transversal lines placed on the side of a shoe, a finding which the applicant does not dispute.

16      In that regard, it must be stated, as noted by the Board of Appeal, that, at the time when the application for registration of the contested mark was filed, neither Regulation No 40/94 nor Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) referred to ‘position marks’ as a specific category of marks. However, since Article 4 of Regulation No 40/94 (now Article 4 of Regulation 2017/1001) does not contain an exhaustive list of signs of which EU trade marks may consist, that is without relevance to the registrability of ‘position marks’ (judgment of 15 June 2010, X Technology Swiss v OHIM (Orange colouring of the toe of a sock), T-547/08, EU:T:2010:235, paragraph 19).

17      In addition, it appears that ‘position marks’ are similar to the categories of figurative and three-dimensional marks, as they relate to the application of figurative or three-dimensional elements to the surface of a product (judgment of 15 June 2010, Orange colouring of the toe of a sock, T-547/08, EU:T:2010:235, paragraph 20).

18      However, the classification of a ‘position mark’ as a figurative or three-dimensional mark, or as a specific category of marks, is irrelevant for the purpose of assessing its distinctive character (judgment of 15 June 2010, Orange colouring of the toe of a sock, T-547/08, EU:T:2010:235, paragraph 21). Article 7(1)(b) of Regulation No 40/94 provides that trade marks which are devoid of any distinctive character must not be registered.

19      For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).

20      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 relevant public’s perception of the mark (see judgment of 29 April 2004, Henkel v OHIM, C-456/01 P and C-457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).

21      The perception of the relevant public is, however, liable to be influenced by the nature of the sign in question. Therefore, since average consumers are not in the habit of making assumptions as to the commercial origin of goods on the basis of signs which are indistinguishable from the appearance of the goods themselves, such signs will be distinctive, within the meaning of Article 7(1)(b) of Regulation No 40/94, only if they depart significantly from the norms or customs of the sector (see judgment of 15 June 2010, Orange colouring of the toe of a sock, T-547/08, EU:T:2010:235, paragraph 25 and the case-law cited).

22      The decisive factor governing the applicability of the case-law cited in paragraph 21 above is not the classification of the sign concerned as figurative, three-dimensional or other, but the fact that the sign is indistinguishable from the appearance of the product designated. Thus, that criterion has been applied, in addition to three-dimensional marks, to figurative marks consisting of a two-dimensional representation of the product designated, to a sign consisting of a design applied to the surface of the product or to a position mark (see, to that effect, judgment of 15 June 2010, Orange colouring of the toe of a sock, T-547/08, EU:T:2010:235, paragraph 26 and the case-law cited).

23      In the present case, it is not disputed that the contested mark is indistinguishable from the appearance of the product designated. As is apparent from the contested decision and from the information provided by the applicant, the contested mark is intended to be placed on a specific part of the surface of the product designated. Thus, it cannot be dissociated from the shape of a part of that product, namely the side of a shoe. Consequently, it must be held that the contested mark is indistinguishable from the appearance of the product designated and that therefore the case-law cited in paragraph 21 above is applicable.

24      It is in the light of those considerations that it must be determined whether the Board of Appeal was right in finding that the contested mark was devoid of any inherent distinctive character.

 The first complaint, alleging an incorrect assessment of the relevant public’s level of attention

25      The applicant disputes the Board of Appeal’s assessment that the relevant public consists of the general public in the European Union which has an average level of attention. In its view, the relevant public will accord a ‘higher degree of attentiveness’ to sports shoes.

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

27      In that regard, it must be borne in mind that the Court has already held that ‘footwear’ in Class 25 must be considered to be everyday consumer goods that are aimed at the general public, which will display an average level of attention when purchasing them (see, to that effect, judgment of 8 July 2020, Pablosky v EUIPO - docPrice (mediFLEX easystep), T-20/19, EU:T:2020:309, paragraph 40 and the case-law cited).

28      The fact, noted by the applicant, that many footwear manufacturers have developed a practice of placing relatively simple elements on the side of shoes in order to indicate their commercial origin does not make it possible to determine that the average consumer will display a high level of attention with regard to those goods, since they are everyday consumer goods. Furthermore, the Court has already held, in relation to the clothing sector, that it comprises goods which vary widely in quality and price and that, whilst it is possible that the consumer may be more attentive to the choice of mark when buying a particularly expensive item of clothing, such an approach on the part of the consumer cannot be presumed without evidence with regard to all the goods in that sector. That finding also applies to the sector of sports shoes and casual shoes (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 36 and 37).

29      In any event, it must be borne in mind that the fact that the relevant public has a high level of attention cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. A high level of attention does not necessarily mean that a weaker distinctive character of a sign is sufficient (see, to that effect, judgment of 8 September 2021, Eos Products v EUIPO (Shape of a spherical container), T-489/20, not published, EU:T:2021:547, paragraph 32 and the case-law cited).

30      The first complaint must therefore be rejected as unfounded.

 The second complaint, alleging an incorrect assessment of the relevant public’s perception of the contested mark and its characteristics

31      In the first place, the applicant submits that, contrary to what the Board of Appeal found, the contested mark does not consist of simple geometric shapes, but of two distinctive stripes which are characterised by their slanted appearance, their different lengths, their slight curve, their specific angles and their specific position on the side of a shoe. In that regard, the applicant contends that the Board of Appeal analysed the distinctive character of the contested mark on the basis of the Common Communication ‘CP3’ entitled ‘Distinctiveness - Figurative marks containing descriptive/non-distinctive words’, adopted on 2 October 2015 by the European Union Intellectual Property Network (EUIPN) (‘the CP3 communication’), which expanded the definition of simple geometric figures as compared with the commonly accepted definition.

32      In the second place, the applicant submits, in essence, that the Board of Appeal should have found that the relevant public would pay particular attention to the shapes placed on the side of sports shoes, on account of the practice of placing a trade mark there. It refers in that regard to EUIPN’s Common Communication ‘CP9’, entitled ‘Distinctiveness of three-dimensional marks (shape marks) containing verbal and/or figurative elements when the shape is not distinctive in itself’, dated 1 April 2020 (‘the CP9 communication’). According to the applicant, the practice of placing a trade mark on the side of shoes is commonplace, with the result that the relevant public pays particular attention to signs affixed there, which leads it to perceive ‘any’ identifiable ‘sign’ placed there as an indication of commercial origin.

33      Lastly and in the third place, the applicant submits that the intervener has not submitted any evidence which supports the conclusion that the contested mark is perceived by the relevant public as a simple decorative element, and not as an indication of the commercial origin of the goods which it covers.

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

35      In order to assess whether or not a trade mark has any distinctive character, the overall impression created by that mark must be taken into consideration (see judgment of 7 October 2015, JP Divver Holding Company v OHIM (EQUIPMENT FOR LIFE), T-642/14, not published, EU:T:2015:753, paragraph 28 and the case-law cited).

36      In the present case, the Board of Appeal observed that the contested mark consisted of two oblique stripes resembling two simple geometric shapes, namely parallelograms. It noted that that mark did not include any other element, be it word or figurative, which could endow it with the minimum distinctive character necessary for it to be perceived as an indication of origin. On the contrary, according to the Board of Appeal, the contested mark was perceived, as at the date of the application for registration, as a simple decorative element.

37      Furthermore, the Board of Appeal observed that, given the norms and customs of certain sectors, a position mark could appeal to the eye as an independent feature which was distinguishable from the product in itself and communicated a trade mark message. In that regard, referring to, inter alia, the evidence submitted by the applicant, some of which is reproduced in the contested decision, it found that it was well known that many undertakings use relatively simple patterns on the side of sports footwear, to indicate the commercial origin of that footwear. However, it noted that, despite that ‘market practice’, it was not possible to establish that such markings were habitually recognised as indicating commercial origin, as opposed to being merely decorative adornments, with the result that it was not possible to determine that the consumer had learned to establish an automatic link between a sign placed on the side of a sports shoe and a particular manufacturer. On the contrary, the Board of Appeal observed that designs consisting of various stylised shapes and, in particular, single lines were commonly used as decorative motifs for goods in Class 25, including footwear.

38      On that basis, the Board of Appeal stated that the contested mark did not display any features that could attract the consumer’s attention and enable him or her to remember it as an indication of the commercial origin of the goods. Consequently, it concluded that the contested mark consisted of an extremely simple and banal sign, which would not have been capable, at the time when the application for registration was filed, of distinguishing it from other signs on the footwear market and of fulfilling the essential function of a trade mark.

39      In that regard, in the first place, it must be stated, as pointed out by the Board of Appeal, that the contested mark consists of two oblique stripes which form a shape resembling that of parallelograms. Even if it were accepted, as the applicant claims, that those stripes do not constitute parallelograms in the strict sense of the term, they are close to them and may be broadly similar to them. The characteristics of that mark, which have been pointed out by the applicant and have been reproduced in paragraph 31 above, are not striking and will not be easily identified or memorised by the relevant public. The Board of Appeal was therefore right in finding that the two stripes constituting the contested mark resembled basic geometric shapes.

40      Similarly, and irrespective of whether those stripes could be regarded as parallelograms and constitute simple geometric shapes, the Court has also held that stripes are nothing more than a rather banal generic embellishment (judgment of 4 December 2015, Representation of parallel stripes on a shoe, T-3/15, not published, EU:T:2015:937, paragraph 18).

41      It must be borne in mind that a sign which is excessively simple and is constituted by a basic geometric figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (see judgment of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T-139/08, EU:T:2009:364, paragraph 26 and the case-law cited).

42      In the second place, the applicant errs in claiming that the relevant public perceives the contested mark as an indication of commercial origin merely because it is intended to be affixed to the side of a shoe.

43      In that regard, it must be borne in mind that the fact, noted by the applicant, that many shoe manufacturers have developed a practice of affixing their mark to the side of shoes 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 shoe and a particular manufacturer and that that consumer will therefore necessarily perceive any geometric shape placed on the side of a shoe as being a trade mark (judgment of 4 December 2015, Representation of parallel stripes on a shoe, T-3/15, not published, EU:T:2015:937, paragraph 26).

44      Thus, the Court has already held that the fact that a sign consisting of various oblique stripes extends to the full height of the side of a shoe confirms its lack of originality, since the variation in the size of the stripes appears to be naturally determined by the actual shape of the object on which those stripes are placed (see judgment of 4 December 2015, Representation of parallel stripes on a shoe, T-3/15, not published, EU:T:2015:937, paragraph 22 and the case-law cited).

45      Furthermore, it is possible that, even if some simple geometric shapes placed on the side of the shoe make it possible for the average consumer to establish a link between the product on which those shapes are placed and a specific manufacturer, the distinctive value of those signs may be explained less by their positioning on the product than by the intensive use which has in fact been made of them on the market (judgment of 4 December 2015, Representation of parallel stripes on a shoe, T-3/15, not published, EU:T:2015:937, paragraph 27).

46      The case-law cited by the applicant does not call that finding into question.

47      In that regard, in the judgment of 4 May 2022, Deichmann v EUIPO - Munich (Representation of two crossed stripes on the side of a shoe) (T-117/21, not published, EU:T:2022:271), to which the applicant refers, the Court has already held that 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 judgment of 4 May 2022, Representation of two crossed stripes on the side of a shoe, T-117/21, not published, EU:T:2022:271, paragraph 59 and the case-law cited).

48      As regards the judgment of 6 March 2003, DaimlerChrysler v OHIM (Grille) (T-128/01, EU:T:2003:62), to which the applicant also refers, it must be stated that the case which gave rise to that judgment concerned a mark and goods which are very different from those at issue in the present case. Moreover, it does not follow from that judgment that an automatic link is made between a mark which is indistinguishable from a part of the product which it designates and the commercial origin of that product. On the contrary, it is apparent from that judgment that such a link can be made only in certain cases, on the basis of all the relevant factors in the circumstances of the case.

49      It follows that the mere fact that the contested mark is intended to be affixed to the side of a shoe is not capable of endowing it with inherent distinctive character, since many manufacturers of sports shoes or casual shoes use relatively simple motifs in that location.

50      In fact, that practice, which has been noted by the applicant itself, is customary in the casual or sports shoes sector, as the Board of Appeal correctly pointed out. Consequently, as there is no particularly striking element that is capable of distinguishing it, the contested mark does not depart significantly from the norms or customs of the footwear sector, a point which the applicant does not, moreover, dispute in its application.

51      At the hearing, the applicant added that the specific position of the contested mark on the shoe, namely a slightly odd place on that shoe, because, in most cases, the motifs are situated slightly towards the front or on the heel counter, was ‘striking’, which contributes towards the distinctive character of the mark in relation to other shoe designs on the market.

52      However, it must be stated, first, that such an argument is not apparent from the application and, secondly and in any event, that the characteristics relied on by the applicant at the hearing and reproduced in paragraph 51 above are not ‘striking’, contrary to what the applicant claims, and will not be easily identified or memorised by the relevant public. Those characteristics are not therefore sufficient to establish that the contested mark departs significantly from the norms or customs of the sector.

53      In the third place, the applicant errs in claiming that the Board of Appeal relied on the CP3 communication, since there is no mention of that communication in the reasons for the contested decision.

54      In the fourth place, the applicant relies on the judgment of 21 May 2015, adidas v OHIM - Shoe Branding Europe (Two parallel stripes on a shoe) (T-145/14, not published, EU:T:2015:303), claiming that, in that judgment, the Court acknowledged that another of the applicant’s marks, which was almost identical to the contested mark, had distinctive character. However, it must be pointed out that that case concerned opposition proceedings against that mark, with the result that the distinctive character of that mark was not the subject matter of the proceedings. Consequently, that judgment is not relevant with regard to the outcome of the present case.

55      In the fifth place, the applicant argues that it is apparent from the CP9 communication that, if a non-distinctive shape contains an element that is distinctive, it suffices to render the sign as a whole distinctive and that the contrast between the figurative elements affixed to such a shape and the specific market realities must be taken into consideration. However, it must first of all be pointed out that such a communication is not a binding legal act for the purpose of interpreting provisions of EU law (judgment of 8 May 2024, Daimler Truck v EUIPO (CERTIFIED), T-436/23, not published, EU:T:2024:289, paragraph 33). Furthermore, it is sufficient to state in that regard that that communication is not applicable to the contested mark, since, as has been pointed out in paragraph 15 above, that mark seeks only to protect the two parallel stripes applied to the side of a shoe, and not the shape of that shoe in itself. In any event, it is also apparent from that communication that a simple sign affixed to shapes which are devoid of any distinctive character cannot confer distinctive character on the overall shape. It is apparent from the analysis carried out previously that the parallel stripes constituting the contested mark are similar to simple geometric shapes.

56      In the sixth place, it is not possible to accept the applicant’s argument that the intervener did not submit any evidence that signs similar to the contested mark were signs commonly used as decorative elements on footwear at the time when the application for registration was filed. The applicant states that that cannot be regarded as a well-known fact.

57      In that regard, it must be borne in mind that, in invalidity proceedings, as the 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 (see judgment of 4 May 2022, Representation of two crossed stripes on the side of a shoe, T-117/21, not published, EU:T:2022:271, paragraph 62 and the case-law cited).

58      However, while the presumption of validity of the registration restricts EUIPO’s obligation to examine the relevant facts, it does not preclude it, inter alia in view of the particulars put forward by the party challenging the validity of the mark at issue, from relying, not only on the arguments and any evidence produced by that party in its application for a declaration of invalidity, but also on well-known facts observed by EUIPO in the context of the invalidity proceedings (see judgment 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 46 and the case-law cited).

59      Where the Board of Appeal finds that the contested mark is devoid of any inherent distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of everyday consumer goods, facts which are likely to be known by anyone and are, in particular, known by the consumers of those goods (see, to that effect, judgment of 13 April 2011, Deichmann v OHIM (Representation of a chevron with a border of broken lines), T-202/09, not published, EU:T:2011:168, paragraph 32 and the case-law cited).

60      In the present case, it is apparent from EUIPO’s case file that the intervener set out, in his application for a declaration of invalidity, a number of arguments regarding the relevant public’s perception of the contested mark by referring to the case-law and to the norms and customs on the footwear market, arguments which the Board of Appeal duly took into consideration. Furthermore, the Board of Appeal could rightly take into account well-known facts. In that regard, it is apparent from the contested decision that the Board of Appeal found that it was well known that many undertakings used relatively simple patterns on the side of footwear, both as at the date of the application for registration of the contested mark, namely 12 August 2002, and as at the date of the contested decision. Furthermore, as is apparent from the case-law of the Court, the practice of using decorative appliqués or reinforcements is well known in the footwear sector (judgment of 13 April 2011, Representation of a chevron with a border of broken lines, T-202/09, not published, EU:T:2011:168, paragraph 32), it being specified that that judgment concerned a trade mark application which was filed at a time relatively close to the date of the application for registration of the contested mark in the present case. In view of the case-law cited in paragraphs 58 and 59 above, the fact that the intervener did not submit any evidence that signs similar to the contested mark were signs commonly used as decorative elements on footwear does not therefore permit the inference that the contested decision is vitiated by error.

61      In the light of all of those considerations, the second complaint in the first plea must be rejected as unfounded.

 The third complaint, alleging that the Board of Appeal erred in not applying the case-law and the decision-making practice of EUIPO which existed as at the date on which the application for registration in question was filed

62      The applicant submits, in essence, that the Board of Appeal based its assessment of the inherent distinctive character of the contested mark not on the case-law and the decision-making practice of EUIPO which existed as at the date on which the application for registration of that mark was filed, which set out ‘more lenient’ criteria for that purpose, but on later case-law and decision-making practice. According to the applicant, if the Board of Appeal had applied the criteria in the case-law dating from the early 2000s, it would have found that the contested mark had inherent distinctive character. The applicant argues that, even though the case-law and the decision-making practice of EUIPO might not have changed, the relevant public’s perception of the contested mark could have changed. Lastly, it submits that marks which are similar, or even identical, to the contested mark have been registered in various States, which demonstrates that that mark has inherent distinctive character.

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

64      It must be borne in mind, first of all, that, in invalidity proceedings, the relevant date for assessing the lack of distinctive character of an EU trade mark is the date on which the application for registration of that mark was filed, namely, in the present case, 12 August 2002 (order of 4 October 2018, Safe Skies v EUIPO, C-326/18 P, not published, EU:C:2018:800, paragraph 18).

65      In that regard, it must be stated that the wording of Article 7(1)(b) of Regulation No 40/94, which was in force on the date on which the application for registration of the contested mark was filed, has to date remained unchanged.

66      The interpretation that the EU judicature gives to a rule of EU law clarifies and specifies, if necessary, the meaning and scope of that rule, as it must or ought to have been understood or applied since its entry into force (see judgment of 1 September 2021, e*Message Wireless Information Services v EUIPO - Apple (e*message), T-834/19, not published, EU:T:2021:522, paragraph 32 and the case-law cited).

67      It follows that the Board of Appeal did not err in basing the contested decision on, inter alia, the interpretation given by the Court of Justice and by the General Court to Article 7(1)(b) of Regulation No 40/94 in decisions delivered after the date on which the application for registration of the contested mark was filed, since, by those decisions, the EU judicature merely interpreted the substantive rules applicable as at the date on which that application had been filed, with the result that such decisions, which clarify the scope and conditions for the application of Article 7(1)(b) of Regulation No 40/94, allow conclusions to be drawn about the legal situation at issue as it presented itself on that date (judgment of 1 September 2021, e*message, T-834/19, not published, EU:T:2021:522, paragraph 33).

68      That also applies, in principle, to the case-law relating to the interpretation of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) and of Article 7(1)(b) of Regulation 2017/1001, since those provisions are identical to those of Article 7(1)(b) of Regulation No 40/94, with the result that they constitute successive codifications of equivalent provisions. Accordingly, the case-law relating to the provisions of Article 7(1)(b) of Regulation No 207/2009 and of Article 7(1)(b) of Regulation 2017/1001 is, in principle, relevant with regard to the equivalent provisions of Regulation No 40/94 (see judgment of 1 September 2021, e*message, T-834/19, not published, EU:T:2021:522, paragraph 34 and the case-law cited).

69      In any event, the applicant confines itself to disputing the application of the case-law cited in the contested decision on the sole basis that it postdates the filing date of the application for registration of the contested mark, without stating how the criteria referred to in that case-law are different from those which were allegedly in force on that date. Although it submits that the criteria resulting from the case-law in force on that date are ‘more lenient’, it does not substantiate that claim.

70      Furthermore, as regards the applicant’s arguments relating to EUIPO’s decision-making practice, which was allegedly ‘more lenient’ at the time when the application for registration of the contested mark was filed, and the arguments relating to registrations of similar, or even identical, marks in various States, it must be borne in mind that the decisions concerning the invalidity of an EU trade mark that EUIPO takes under the substantive provisions of Regulation No 40/94, which are applicable in the present case, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of EUIPO or a previous national decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C-412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).

71      Moreover, although EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, compliance with the principle of legality requires that the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as an EU trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraphs 76 and 77; of 16 January 2019, Poland v Stock Polska sp. z o.o. and EUIPO, C-162/17 P, not published, EU:C:2019:27, paragraph 60; and of 6 December 2018, Vans v EUIPO - Deichmann (V), T-817/16, not published, EU:T:2018:880, paragraph 132).

72      In the present case, as is apparent from paragraphs 35 to 61 above, the Board of Appeal was right in finding that the contested mark was caught by the ground for refusal set out in Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation, with the result that the applicant cannot usefully rely, for the purposes of casting doubt on that finding, on previous decisions of EUIPO or, a fortiori, of offices of Member States or of third States.

73      In any event, the decisions of EUIPO referred to by the applicant relate to marks which are different from the contested mark and do not make it possible to discern a change in EUIPO’s decision-making practice as regards the distinctive character of simple figurative marks. It is sufficient to state that the applicant confines itself to referring to those decisions, without explaining how the principles deriving from them are different from or more favourable to registrations to which Article 7(1)(b) of Regulation No 40/94 applies than the alleged subsequent interpretation of that provision and of the equivalent provisions of Regulations No 207/2009 and 2017/1001.

74      Consequently, the applicant’s arguments alleging a possibly different previous decision-making practice on the part of EUIPO or the existence of registrations of the contested mark in certain States must be rejected.

75      Lastly, in so far as the applicant claims, in essence, that the Board of Appeal, contrary to the case-law cited in paragraph 64 above, based its decision on the relevant public’s perception as at the date of its decision, and not as at the date on which the application for registration of the contested mark was filed, it is sufficient to state that it is clear on a number of occasions in the contested decision that the Board of Appeal took into account the relevant public’s perception in relation to the goods at issue as at the date on which the application for registration of the contested mark was filed, namely 12 August 2002. In any event, it must be pointed out that the applicant has not shown that there was any change in the relevant public’s perception between the date on which the application for registration of the contested mark was filed and the date of the contested decision. Although it claims that, even though the interpretation of the provision in question might not have changed, the perception of the marks by the relevant public on the footwear market has changed, that argument is not sufficiently substantiated by evidence.

76      In the light of those considerations, the third complaint in the first plea and, as a result, the first plea in its entirety must be rejected as unfounded.

 The second plea, alleging infringement of Article 17 and Article 41(2)(c) of the Charter and of general principles of EU law

77      By its second plea, the applicant submits that the contested decision infringes Article 17 and Article 41(2)(c) of the Charter and the principles of the protection of legitimate expectations and of legal certainty.

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

79      In the first place, as regards the alleged infringement of Article 17 of the Charter and of the principles of the protection of legitimate expectations and of legal certainty, the applicant submits, in essence, that the contested decision has the effect of depriving it of its intellectual property, even though the contested mark was validly registered. Furthermore, it argues that the Board of Appeal infringed the principle of legal certainty by applying case-law and a decision-making practice of EUIPO which were not in force on the date on which the application for registration the contested mark was filed. Lastly, the applicant contends that it had a legitimate expectation that that mark was valid as a result of its registration, after examination by the examiner, in accordance with the law and practice applicable at the time when the application for registration of that mark was filed.

80      In that regard, it is important to bear in mind that the registration of a mark cannot protect the proprietor of that mark from the risk of its being declared invalid under Article 51(1) of Regulation No 40/94 and that the objective of that provision is precisely to enable any errors made by the examiner at the time when an application for registration is filed to be corrected (see judgment of 1 September 2021, e*message, T-834/19, not published, EU:T:2021:522, paragraph 91 and the case-law cited).

81      Moreover, according to Article 54(2) of Regulation No 40/94 (now Article 62(2) of Regulation 2017/1001), the effect of a declaration of invalidity of a trade mark is that that mark is deemed not to have had, as from the outset, the effects specified in that regulation.

82      Those provisions were in force both on the date on which the application for registration at issue was filed and on the date on which the contested mark was registered and their wording was clear and unambiguous. It follows that the applicant was deemed to be aware of the proceedings to which the contested mark could, as the case may be, be subject after its registration.

83      Accordingly, the applicant’s argument that, in essence, by finding that the contested mark did not have any inherent distinctive character, notwithstanding its registration, the Board of Appeal infringed Article 17 of the Charter and the principles of the protection of legitimate expectations and of legal certainty, is tantamount, in actual fact, to calling into question the legality of the provisions of Articles 51 and 54 of Regulation No 40/94.

84      However, it must be stated that the applicant has not put forward any plea of illegality against those provisions. Furthermore, there is nothing in the general arguments that it puts forward which supports the conclusion that those provisions, which are part of a coherent set of rules that are applicable to EU trade marks, are unlawful.

85      Moreover, the applicant’s argument that the infringement of its right to property and of the principles of legal certainty and of the protection of legitimate expectations stems from the Board of Appeal’s application of a decision-making practice and case-law which were stricter than those which obtained at the time when the application for the contested mark was filed must be rejected on the grounds set out in paragraphs 64 to 75 above.

86      Furthermore, if the applicant’s arguments were to be interpreted as claiming that the fact that the Board of Appeal found that the contested mark did not have any inherent distinctive character even though the examiner had registered that mark, after having initially put forward objections which he had subsequently withdrawn, constitutes an infringement of the principles of legal certainty and of the protection of legitimate expectations, first, it is sufficient to state that, as has been pointed out in paragraph 82 above, the applicant was deemed to be aware of the proceedings to which the contested mark could, as the case may be, be subject after its registration. Secondly, the registration of an EU trade mark cannot give rise to any legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings, since the rules applicable expressly allow for that registration to be challenged subsequently in an application for a declaration of invalidity or a counterclaim in infringement proceedings (judgment of 19 May 2010, Ravensburger v OHIM - Educa Borras (Memory), T-108/09, not published, EU:T:2010:213, paragraph 25).

87      Consequently, the applicant’s arguments alleging that the Board of Appeal infringed Article 17 of the Charter and the principles of legal certainty and of the protection of legitimate expectations must be rejected.

88      In the second place, as regards the alleged infringement of Article 41(2)(c) of the Charter, the applicant submits, first, that the Board of Appeal did not sufficiently explain the reasons which led it to apply stricter criteria than those which obtained on the date on which the application for registration of the contested mark was filed and, secondly, that the Board of Appeal did not provide any clear description of the evidence on which it had based its assessment. It argues that, consequently, the Board of Appeal did not state the reasons why the examiner’s decision to register the contested mark was incorrect.

89      The right to good administration includes, in accordance with Article 41(2) of the Charter, the obligation of the administration to give reasons for its decisions. That obligation, which also stems from Article 73 of Regulation No 40/94 (now the first and second sentences of Article 94(1) of Regulation 2017/1001), has the dual purpose of enabling interested parties to know the justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their power to review the legality of the decision concerned (see judgment of 28 June 2018, EUIPO v Puma, C-564/16 P, EU:C:2018:509, paragraph 64 and the case-law cited).

90      In the first place, as regards the argument that the statement of reasons for the contested decision is based on criteria which are stricter than those applicable on the date on which the application for registration at issue was filed, it is sufficient to state that that argument is based on an incorrect premiss, as is apparent from paragraphs 64 to 75 above, with the result that it must be rejected.

91      In the second place, in so far as the applicant claims that the Board of Appeal did not clearly establish which evidence served as the basis for the contested decision, it must be stated that the Board of Appeal fully took into account the evidence provided by the applicant, which related to EUIPO’s decision-making practice and to the particularities of the footwear market, evidence which was, moreover, reproduced in the contested decision. Furthermore, the Board of Appeal also clearly set out the considerations which it derived from facts arising from practical experience generally acquired from the marketing of the goods covered by the contested mark, in accordance with the case-law cited in paragraph 59 above, and from well-known facts, such as the existence of a practice on the footwear market of placing relatively simple patterns on the sides of that footwear. In the context of its analysis, the Board of Appeal also referred to the common definitions of the terms ‘shape’, ‘geometric’ and ‘parallelogram’, as set out in an online dictionary. Lastly, as has been stated in paragraph 60 above, it also took into consideration the evidence, the case-law and the arguments put forward by the intervener. Consequently, it must be held that the Board of Appeal duly set out the evidence on which it based its analysis.

92      Lastly, it must be pointed out that, contrary to what the applicant claims, in invalidity proceedings the Board of Appeal is not required to state expressly the reasons why the examiner’s decision to register the contested mark is incorrect. In such proceedings, it is not that decision which is the subject of the appeal before the Board of Appeal.

93      In the light of those considerations, the second plea must be rejected as unfounded and, consequently, the action must be dismissed in its entirety.

 Costs

94      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.

95      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 (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Jima Projects to pay the costs.

Delivered in open court in Luxembourg on 23 October 2024.

*      Language of the case: English.

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