Azur Space Solar Power v EUIPO () and de briques blanches sur fond noir) (Judgment) [2016] EUECJ T-578/15 (24 November 2016)

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(EU trade mark — International registration designating the European Union — Figurative mark representing white lines and bricks on a black background — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009)

Azur Space Solar Power GmbH, established in Heilbronn (Germany), represented by J. Nicodemus and S. Stöcker, lawyers,

European Union Intellectual Property Office (EUIPO), represented initially by E. Zaera Cuadrado, and subsequently by A. Folliard-Monguiral, acting as Agents,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 July 2015 (Case R 2780/2014-4), concerning the international registration designating the European Union of a figurative mark representing white lines and bricks on a black background,

composed of D. Gratsias, President, A.M. Collins and N. Półtorak (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 30 September 2015,

1 On 11 March 2014, the applicant, Azur Space Solar Power GmbH, designated the European Union in respect of its international registration No 1 201 973, which is reproduced below:

2 The goods in respect of which protection in the European Union was sought are in Classes 7 and 9 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:

– Class 9: ‘Semiconductors, semiconductor devices, semiconductor devices for solar cells and solar modules, solar cells, solar cells made of III-V material, solar cells having a plurality of band gaps; solar cell modules, solar cell modules with an array of solar cells’.

3 On 16 May 2014, the examiner informed the applicant that an absolute ground for refusal of the international registration at issue pursuant to Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) existed in respect of the goods concerned. The applicant replied to those objections.

4 By decision of 25 September 2014, the examiner refused protection of the international registration in the European Union in respect of all the goods covered by the application, pursuant to Article 7(1)(b) of Regulation No 207/2009.

5 On 30 October 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

6 By decision of 27 July 2015 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal and confirmed the examiner’s decision. It found, in essence, that the mark applied for would be perceived by the relevant specialist public as a very simple schematic representation of the structure or of an array of solar panels. In the Board of Appeal’s view, the fact that that representation is one mere variant of a wider variety of structural possibilities is irrelevant since it will be perceived as no more than an extremely simplified representation of the structure of the solar panel array itself. The Board of Appeal thus found that the mark applied for was devoid of any distinctive character.

9 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, inasmuch as the Board of Appeal erred in finding that the international registration at issue lacks distinctive character within the meaning of that provision.

10 Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered.

11 For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods in respect of which registration has been applied for as coming from a particular undertaking, and thus to distinguish those goods from those which come from other undertakings (judgments of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 29; of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 34; and of 11 April 2014, Olive Line International v OHIM (OLIVE LINE), T‑209/13, not published, EU:T:2014:216, paragraph 18).

12 The distinctive character of a mark must be assessed, first, by reference to the goods in respect of which registration has been sought and, secondly, by reference to the relevant public’s perception of that mark (judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 25; of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 35; and of 11 April 2014, OLIVE LINE, T‑209/13, not published, EU:T:2014:216, paragraph 19).

13 According to settled case-law, the case-law relating to three-dimensional trade marks consisting of the appearance of the goods themselves also applies where, as in the present case, the mark applied for is a figurative mark, since that mark consists of the two-dimensional representation of those goods. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the goods it covers (judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 29; of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 38; and of 11 April 2014, OLIVE LINE, T‑209/13, not published, EU:T:2014:216, paragraph 23).

14 In that regard, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the goods themselves 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 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 26).

15 However, when those criteria are applied, account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional or figurative mark consisting of the appearance of the goods themselves as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the goods it designates. As average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape in the absence of any graphic or word element, it could prove more difficult to establish distinctiveness in relation to a three-dimensional or figurative mark consisting of the appearance of the goods themselves (see, to that effect, judgments of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 30, and of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 36).

16 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 No 207/2009 (judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 31).

17 Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of identifying origin is not devoid of any distinctive character for the purposes of that provision (judgments of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 31, and of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 28).

18 Therefore, where a three-dimensional mark consists of the shape of the product in respect of which registration is sought, the mere fact that that shape is a variant of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (judgments of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 32, and of 11 April 2014, OLIVE LINE, T‑209/13, not published, EU:T:2014:216, paragraph 22).

19 In the present case, the goods in respect of which protection in the European Union was sought are, first, solar modules, which, as the applicant states, are also called solar panels, solar cells, which are components of solar modules, and also the goods comprising the solar cells themselves, which fall within Class 9, and, secondly, electronic generators using solar cells, which fall within Class 7. The Board of Appeal was therefore right in finding, in paragraph 14 of the contested decision, that the goods concerned in Classes 7 and 9 were all for solar cells and modules and goods closely related to those goods. The applicant does not dispute the Board of Appeal’s assessment.

20 It must be pointed out, as the Board of Appeal observed in paragraph 10 of the contested decision, that the relevant public consists of professionals in the European Union. The applicant does not, moreover, dispute that definition of the relevant public.

21 The mark applied for consists of six sloping white lines, which are all connected to each other, and of three rectangular white bricks. As the Board of Appeal correctly observed in paragraph 14 of the contested decision, the two pairs of sloping white lines in the centre of the sign appear to depict roofs and each roof ends with a white brick. On each side of the outer two bricks there is a tapering and upward tilting white line, the one on the left pointing left and the one on the right pointing right. Those white lines and bricks are represented on a black background.

22 In paragraph 15 of the contested decision, the Board of Appeal found that the combination of those white lines and bricks on a black background would be immediately perceived by the relevant public, consisting of specialists, as a very simple schematic representation of an array of solar panels.

23 The applicant does not dispute that the relevant public might perceive the sign at issue as a very simple schematic representation of an array of solar panels. However, it submits, in essence, that the Board of Appeal erred in finding that a representation of a ‘possible arrangement’ of the goods concerned was sufficient to justify the finding that the mark applied for has no distinctive character, particularly because, as a whole, the sign at issue does not appear as a flat planar shape representing the outward appearance of those goods. It must, however, be pointed out that, even if the outward appearance of solar panels could appear as a flat planar shape, as the applicant suggests, the Board of Appeal’s assessment set out in paragraph 22 above would not be called into question. On account, in particular, of the way in which they are combined and slope, it must be held that the relevant public, which consists of specialists, is likely to perceive the lines at issue as a very simple schematic representation of solar panels and thus perceive the sign at issue as a whole as an array of solar panels. Contrary to what the applicant submits, that is sufficient to hold that the mark applied for has no distinctive character.

24 In that regard, it must be stated, as the Board of Appeal observed in paragraph 16 of the contested decision, that arrays of solar panels traditionally slope at a certain angle and are fixed in such a way as to best catch the sun’s rays as it moves in the sky in the course of the day. Furthermore, as the Board of Appeal correctly observed, arrays of solar panels are often fixed to roofs.

25 The Board of Appeal was right in finding, in accordance with the case-law set out in paragraph 18 above, that the fact that the sign at issue represented merely one variant of a wider variety of structural possibilities was irrelevant, since it would be perceived as no more than an extremely simplified representation of a solar panel array.

26 The Board of Appeal was also right in finding that the fact that the two lines on each side of the outer two bricks are tapered does not depart significantly from the normal way of representing solar panels on a sketch by way of a single straight line. In spite of that slight difference, the relevant public, having regard to the sign at issue as a whole, will perceive those tapering lines, in the same way as it will perceive the other lines of which that sign consists, as a very simple schematic representation of solar panels.

27 In that regard, contrary to what the applicant submits, the Board of Appeal correctly assessed the significance which those tapering lines could have. It must be held that the tapering lines in question do not include elements capable of distinguishing them from other representations of lines (see, to that effect, judgment of 13 April 2011, Air France v OHIM (Shape of a parallelogram), T‑159/10, not published, EU:T:2011:176, paragraph 24). That very minimal difference is therefore incapable of attracting the relevant public’s attention.

28 The foregoing findings of the Board of Appeal cannot be altered by the fact relied on by the applicant that the goods are aimed at a specialist public, the level of attention of which is higher than that of the average consumer. That fact cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the level of attention of the relevant specialist public is, by definition, higher than that of the general public, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 48). In any event, in the present case, although the relevant specialist public is more observant than the general public, it is also more circumspect. Consequently, as EUIPO correctly states, the mark applied for is all the more likely to be perceived as a schematic representation of the goods concerned because the relevant public is used to working with those goods and is familiar with that representation. It is apparent from the file submitted by EUIPO that, in the solar energy sector, to which the goods concerned relate, schematic representations are, inter alia, used to represent the components of a solar panel.

29 Furthermore, as has previously been stated in paragraph 19 above, the goods in Classes 7 and 9, covered by the mark applied for, are all for solar cells and modules and goods closely related to those goods, a finding which the applicant did not dispute. The goods concerned are therefore intended to be components of solar modules or to be used with solar modules. In the present case, the relationship between the solar modules and the mark applied for is sufficient for the lack of distinctive character of that mark to be extended to the goods concerned which are closely related to solar panels (see, by analogy, judgment of 29 November 2012, Hopf v OHIM (Clampflex), T‑171/11, not published, EU:T:2012:636, paragraph 48 and the case-law cited).

30 It follows that the Board of Appeal was right to find that the mark applied for was, for the relevant public, devoid of any distinctive character with regard to all of the goods concerned, in accordance with Article 7(1)(b) of Regulation No 207/2009.

31 The applicant does not put forward any other arguments which are capable of calling into question that finding of the Board of Appeal.

32 In the first place, the applicant’s arguments that the ‘appearance of a possible installation of the goods’ is not relevant for the evaluation of distinctiveness and that the decisions cited by the Board of Appeal refer to marks with shapes resembling the goods but do not refer to the ‘shape of a possible installation of the goods’ do not call into question the Board of Appeal’s assessments.

33 Although the decisions in question do not refer to the ‘shape of a possible installation of the goods’, it must be held that, for the reasons set out in paragraphs 22 to 30 above, the mark applied for cannot be dissociated from a schematic representation of an array of solar panels and is therefore indistinguishable from the appearance of the goods. The Board of Appeal was therefore right in applying the case-law relating to two-dimensional trade marks consisting of the appearance of the goods and, consequently, found that the mark applied for was devoid of any distinctive character.

34 It must be borne in mind that, in the context of examination of the existence of absolute grounds for refusal under Article 7(1) of Regulation No 207/2009, the role of EUIPO is to decide, after having assessed, objectively and impartially, the circumstances of the case in question in the light of the applicable rules of that regulation and the interpretation thereof given by the Courts of the European Union, whilst allowing the trade mark applicant to submit its observations and to know the reasons for the decision adopted, whether the application for the trade mark falls under an absolute ground of refusal. That decision follows from a legal assessment which, by its very nature, cannot be subject to an obligation of proof, the merits of that assessment being, moreover, capable of being contested if an action is brought before the Court (judgments of 15 March 2006, Develey v OHIM (Shape of a plastic bottle), T‑129/04, EU:T:2006:84, paragraph 15, and of 29 June 2015, Grupo Bimbo v OHIM (Shape of a Mexican tortilla), T‑618/14, not published, EU:T:2015:440, paragraph 29).

35 It must also be borne in mind that, if an applicant claims that a trade mark applied for is distinctive, despite EUIPO’s analysis, it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has either intrinsic distinctive character or distinctive character acquired through use (judgments of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraphs 49 and 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 62).

36 In the present case, given the technical nature of the goods at issue, the applicant is, in view of its knowledge of the solar energy sector, best placed to provide information relating to that sector and to the goods concerned. However, the fact remains that the applicant did not, before the adjudicating bodies of EUIPO, submit any information capable of establishing that the mark applied for departed from the representations used in the sector concerned and enabled the relevant public to distinguish the goods concerned from those of other undertakings. Furthermore, before the Court, it merely states that ‘the overall impression [of the mark applied for] may be described as a mixture of a wavelike line and a zigzag line, differing from a pure zigzag line or a pure wavelike line’.

37 In the second place, it is necessary to reject the applicant’s argument that the tapered lines and the bricks of which the mark applied for consists are the main characteristics of that mark, with the result that they distinguish it from any representation of triangular-shaped roofs. It must be pointed out that the applicant merely states, without further explanation, that those tapered lines are, with those bricks, the main characteristics of the mark applied for.

38 In the present case, as is apparent from paragraph 27 above, the tapered lines are not, in themselves, capable of attracting the relevant public’s attention. Similarly, the bricks at issue are basic geometrical figures which are very simple and are not, as such, capable of conveying a message which consumers may remember (see, to that effect, judgment of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22).

39 In the third place, it must be stated that, contrary to what the applicant submits, the sign at issue as it is represented in paragraph 1 above does not resemble a ‘fork-tailed swallow’. Furthermore, the applicant confines itself to making that claim without putting forward any other information in support of its submission. That argument cannot therefore call into question the substantiated reasoning of the Board of Appeal or the conclusions which it drew from it.

40 Moreover, as the Board of Appeal stated in paragraph 13 of the contested decision, and in accordance with the case-law set out in paragraph 14 above, the criteria for assessing the distinctive character of figurative trade marks consisting of the two-dimensional representation of the goods themselves are no different from those applicable to other categories of trade mark. It must therefore be ascertained whether, having regard to its characteristics, the mark applied for permits the average consumer of the goods at issue to distinguish the goods concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (judgment of 11 April 2014, OLIVE LINE, T‑209/13, not published, EU:T:2014:216, paragraph 41).

41 It must be held that the mark applied for, which simply consists of six sloping white lines and three rectangular white bricks on a black background, does not have any element which is memorable or capable of endowing it with distinctive character. On account of the overall simplicity of the mark applied for, which overall simplicity the applicant itself, moreover, points out in its application, that mark will not, associated with the goods concerned, make it possible to identify those goods as coming from a particular undertaking and thus to distinguish them from those which come from other undertakings.

42 It is apparent from the information in the case file that the mark applied for is not significantly different from the representations which are likely to be used in respect of the goods covered by the application in the sector concerned, but constitutes a mere variant of those representations. The applicant did not, in that regard, as has been pointed out in paragraph 36 above, submit any information capable of establishing that the mark applied for departed from the norm or customs of the sector. In the present case, it is not apparent that that mark departs significantly from the norm or customs of the sector and thereby fulfils its essential function of identifying origin (judgment of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 31).

43 It follows from all of the foregoing that the action is unfounded and must be dismissed.

44 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Azur Space Solar Power v EUIPO () and de briques blanches sur fond noir) (Judgment) [2016] EUECJ T-578/15 (24 November 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T57815.html Cite as: [2016] EUECJ T-578/15, EU:T:2016:674, ECLI:EU:T:2016:674

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