Pirelli Tyre v EUIPO (Position de deux bandes courbees sur les flancs d'un pneu) (Trade marks Intellectual, industrial and commercial property : Judgment) [2017] EUECJ T-81/16 (04 July 2017)

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(EU trade mark — Application for an EU trade mark consisting of a pair of curved strips on the side of a tyre — Absolute grounds for refusal — No distinctive character — Article 7(1)(b) of Council Regulation (EC) No 207/2009 — No distinctive character acquired through use — Article 7(3), Articles 75 and 76 of Regulation No 207/2009)

Pirelli Tyre SpA, established in Milano (Italy), represented by T. Müller and F. Togo, lawyers,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

ACTION brought against the decision of the First Board of Appeal of EUIPO dated 9 December 2015 (Case R 1019/2015-1) concerning an application for registration of a sign consisting of a pair of curved strips on the side of a tyre as an EU trade mark,

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

having regard to the application lodged at the Court Registry on 18 February 2016,

1 On 21 October 2014, the applicant, Pirelli Tyre SpA, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p.1).

3 In the application for registration, the mark at issue is described as follows:

‘A pair of essentially equal curved strips positioned on the side of a tyre and running along its circumference. The trade mark in question is a position mark’.

4 The goods in respect of which registration was sought fall within Class 12 of the Nice Agreement on 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: ‘Tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels’.

5 By decision of 26 March 2015, the examiner refused the application for registration, on the ground that the trade mark sought was devoid of any distinctive character for the goods referred to in paragraph 4 above, within the meaning of Article 7(1)(b) of Regulation No 207/2009.

6 On 25 May 2015, 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.

7 By decision of 9 December 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In the first place, the Board of Appeal considered that the trade mark sought was inherently devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. In that regard, first, it noted that the goods covered by the trade mark applied for were intended both for professionals and for the general public, whopay them a high level of attention when making the purchase. Second, the Board of Appeal pointed out that the shape of the strips, which form the mark applied for, was too simple and had no special characteristic or an appearance that might enable the relevant public to recognise the origin of the goods covered by that mark. Third, the Board of Appeal considered that neither the position of the strips on the side of the tyres nor the dark grey colour of the strips was capable of conferring any distinctive character on the mark applied for. In the second place, the Board of Appeal noted that the applicant had submitted no evidence to establish a distinctive character acquired through use of the mark applied for, for the purpose of Article 7(3) of Regulation No 207/2009.

Admissibility of the evidence adduced for the first time before the General Court

10 The applicant adduced, for the first time before the General Court, new evidence intended to support, in essence, the distinctive character of the mark applied for.

11 In particular, the evidence consists of, first, an extract of the website ‘www.tirestickers.com’ which markets stickers intended to be affixed to tyres with a similar shape to the mark applied for and which was submitted to the General Court after the application was lodged and, second, photographs representing shop fronts showing Brown and Tag Hauergoodsand also a regulation of the Economic Commission for Europe of the United Nations, submitted during the hearing.

13 According to settled case-law, the purpose of bringing an action before the General Court is to review the legality of the decisions of the Boards of Appeal of EUIPO for the purpose of Article 65 of Regulation No 207/2009. It follows from that provision that facts not relied on by the parties before the adjudicatory bodies of EUIPO may not be relied on at the stage of the action before the General Court and that the General Court may not re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. Indeed, the legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see judgment of 16 January 2014, Optilingua v OHIM — Esposito (ALPHATRAD), T‑538/12, not published, EU:T:2014:9, paragraph 19 and the case-law cited).

14 Consequently, the evidence mentioned in paragraph 11 above, which was presented for the first time before the General Court, must be rejected as inadmissible. In any event, that evidence was adduced during the hearing without any argument capable of justifying their late submission having been put forward by the applicant.

15 In support of its application, the applicant puts forward three pleas in law. The first alleges, in essence, infringement of the duty to state reasons laid down in Article 75 of Regulation No 207/2009 and breach of the duty to examine the facts of its own motion laid down in Article 76 of Regulation No 207/2009. The second alleges infringement of Article 7(1)(b) of Regulation No 207/2009. The third alleges infringement of Article 7(3) of that regulation.

The first plea in law, alleging infringement of Articles 75 and 76 of Regulation No 207/2009

16 In the context of the first plea, the applicantputs forward, essentially, two parts. The first part refers to breach of the duty to state reasons and the second to infringement of the principle of examination of the facts [by EUIPO] of its own motion.

– First part of the first plea, alleging infringement of Article 75 of Regulation No 207/2009

17 In its first complaint, the applicant claims that the Board of Appeal merely conducted an overall analysis of the distinctive character of the mark applied for in respect of the goods concerned, without giving reasons for its decision for each of the goods covered. In that regard, in its opinion, the Board of Appeal erred by limiting its analysis to general reasoning on tyres while ignoring the rest of the goods in question. In its second complaint, the applicant maintains that the Board of Appeal breached the duty to state reasons in that it did not explain what the factors were that underpinned its allegation that the consumer will not consider the mark applied for as an indication of commercial origin enabling him to distinguish the goods in question as originating from a specific undertaking, but will perceive the sign as a mere frame for technical information provided on tyres’ sidewalls.

19 The first sentence of Article 75 of Regulation No 207/2009 provides that decisions of EUIPO must state the reasons on which they are based. Theduty to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose clearly and unequivocally the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review (judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65; of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T‑363/10, not published, EU:T:2011:662, paragraph 73; and of 23 January 2014, Novartis v OHIM (CARE TO CARE), T‑68/13, not published, EU:T:2014:29, paragraph 27).

20 It is not necessary for the reasoning to go into all the relevant facts and points of law, inasmuch as the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see judgment of 23 January 2014, CARE TO CARE, T‑68/13, not published, EU:T:2014:29, paragraphs 27 and the case-law cited).

21 Thus, when EUIPO refuses registration of a mark as an EU trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal, absolute or relative, which precludes that registration as well as the provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify application of the provision relied on. Such a statement of reasons is, in principle, sufficient to satisfy the requirements set out in paragraphs 19 and 20 above (judgments of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 46, and of 23 January 2014, CARE TO CARE, T‑68/13, not published, EU:T:2014:29, paragraph 28).

22 Furthermore, it should be observed that, in accordance with settled case-law, the duty to state reasons is an essential procedural requirement and distinct from the question of whether the reasons given are correct. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (judgments of 17 May 2011, Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), T‑7/10, not published, EU:T:2011:221, paragraph 59, and of 12 September 2012, Duscholux Ibérica v OHIM — Duschprodukter i Skandinavien (duschy), T‑295/11, not published, EU:T:2012:420, paragraph 41).

23 In the present case, in the first place, concerning the applicant’s argument that the statement of reasons given by the Board of Appeal to substantiate the lack of distinctive character of the mark applied for is insufficient, in that it did not examine the distinctive character of that mark in relation to each of the goods in question, it must be noted that the Board of Appeal could have given a general reasoning for all the goods covered by the mark applied for, given that those goods have a sufficiently direct and specific link to the point where they form a sufficiently homogeneous category or group of goods (see, to that effect, judgment of 6 November 2014, Vans v OHIM (Representation of a wavy line), T‑53/13, EU:T:2014:932, paragraph 46).

24 In any event, it is sufficient to note that the applicant applied for registration of the mark applied for as a ‘position mark’, to the effect that the applicant claims a pair of essentially equal curved strips positioned on the side of a tyre and running along its circumference. In that regard, the mark applied for is in the form of a design intended to be affixed to a tyre part and corresponds to the circumferential shape of tyres. It will therefore be difficult to dissociate it from the tyres. It must therefore be considered that, even though the applicant has claimed protection for additional goods, namely, rims and covers for the wheels of vehicles, the sign for which registration is sought is necessarily limited to tyres, being affixed to these, and not to any other goods. This is a direct consequence of the nature of the mark applied for, namely, a ‘position mark’affixed to the side of a tyre.

25 Accordingly, the applicant’s complaint alleging a failure to state the reasons in respect of that point must be rejected.

26 In the second place, the applicant maintains that, in the context of the assessment of the inherent distinctive character of the mark applied for, the Board of Appeal breached the duty to state reasons, inasmuch as its main argument for rejecting the distinctive character of the mark is that the consumer will not consider the mark applied for as an indication of commercial origin enabling him to distinguish the goods in question as originating from a specific undertaking, but will perceive the mark applied for as a mere frame for technical information provided on the sidewalls of tyres. Moreover, the applicant submits that the Board of Appeal did not explain the factors underlying that allegation.

27 Furthermore, the applicant claims that the Board of Appeal failed to substantiate its reasons for considering that the position on the tyres’ sidewalls is, from experience, the most suitable part to affix marks and other indications since it is the most visible.

28 In this respect, it is sufficient to note that the marking of technical specifications on tyre sidewalls is a matter of common knowledge which requires no specific reasoning to be taken into account by the Board of Appeal. Furthermore, contrary to what the applicant claims, it is apparent from the wording used in paragraph 16 of the contested decision that the Board of Appeal relied on that reason for the sake of completeness in relation to the reason relating to the extreme simplicity of the mark applied for. Moreover, the question whether the Board of Appeal’s assessment that the relevant public could perceive that mark as a frame containing the tyres’ technical specifications is correct concerns the validity of the reasons, which is the subject of the second plea, and not the adequacy of the statement of reasons of the contested decision as an essential procedural requirement (judgments of 17 May 2011, υγεία, T‑7/10, not published, EU:T:2011:221, paragraph 59, and of 12 September 2012, duschy, T‑295/11, not published, EU:T:2012:420, paragraph 41).

29 It follows that those considerations of the Board of Appeal constitute a sufficient statement of reasons, with the result that the applicant’s complaint alleging failure to state reasons must be rejected.

30 In the light of the all of the foregoing, the first part of the first plea in law must be rejected.

– Second part of the first plea, alleging infringement of Article 76 of Regulation No 207/2009

31 The applicant claims, in essence, that the Board of Appeal infringed the principle of examination of the facts by EUIPO of its own motion, provided for in Article 76(1) of Regulation No 207/2009, by finding that the mark applied for was devoid of any distinctive character without providing reasons or evidence in that regard. Thus, the applicant maintains that it did not have to prove conclusively the distinctive character of the mark applied for and that EUIPO should have examined the facts of its own motion. Moreover, the applicant maintains that the Board of Appeal should have explained the reasons why the mark applied for had no distinctive character.

33 The applicant, by its last complaint, alleges, in essence, breach of the duty to state reasons. In that regard, in paragraph 29 above, it has already been stated that the Board of Appeal had given sufficient reasons for the contested decision and the reasons for which the mark applied for lacked distinctiveness were sufficiently explained and substantiated.

34 In addition,the applicant complains that the Board of Appeal did not examine the facts of its own motion. Nevertheless, the applicant does not indicate in what way the Board of Appeal failed to examine the facts. The applicant’s argument is very brief and that allegation does not explain how the Board of Appeal omitted to take into consideration facts, arguments or evidence before it made the contested decision.

35 Finally, it should be pointed out that, whereas, pursuant to Article 76(1) of Regulation No 207/2009, EUIPO is required to examine of its own motion the relevant facts which may lead it to apply an absolute ground of refusal pursuant to Article 7(1) of that regulation, the fact remains that, in so far as an applicant claims that a 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 is inherently distinctive.

36 It was therefore for the applicant to present evidence to EUIPO showing that the mark applied for had acquired a distinctive character in the European Union. It is therefore not for the Board of Appeal to supplement the evidence in its possession.

37 Thus, contrary the applicant’s submission, the Board of Appeal did not fail to fulfil its obligations under Article 76 of Regulation No 207/2009, so the second part of the first plea in law must be rejected as well as the first plea in law in its entirety.

The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

38 The applicant argues that the Board of Appeal was wrong to hold that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

39 In that regard, in the first place, the applicant argues that the Board of Appeal erred in considering that the mark applied for was nothing but a very simple geometrical shape. Furthermore, it maintains that the relevant criterion for assessing distinctive character is not the graphic design of the mark applied for but how the mark is perceived on the relevant market, that is to sayfor the relevant goods.

40 In the second place, the applicant maintains that the mark applied for gives an eye-catching, unbalanced and asymmetric overall impression, by the position of the two strips, thus creating a diverging interspace between the two upper and lower ends, which serves to identify the goods in respect of which registration is sought. Furthermore, it argues that it is not a mere figurative mark but a ‘position mark’ seeking protection for a specific position of two strips affixed to the goods in question, which makes the mark neither a simple geometric shape, nor a mark that is entirely ordinary. It adds that simpler and more ordinary signs have already been registered as indications of origin. In that regard, it refers to EUIPO’s previous decision-making practice.

41 In the third place, the applicant maintains that the mark applied for is original and innovative, in relation to the products covered, owing to the striking contrast between the colour of the strips and the basic colour of the tyre. In addition, it adds that the mark applied for is not a frame but a uniform surface contrasting with the basic colour of the tyre, and is by no means used as a frame for technical indications, as the Board of Appeal maintains.

42 In the fourth place, the applicant claims that the only tyres sold on the EU market and identified by a mark whose design specifically includes two curved strips are the tyres marketed by the applicant itself. It therefore maintains that the contested sign departs significantly from the norms or customs of the sector and, consequently, has distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

44 As a preliminary point, with regard to the ‘position mark’ classification of the mark applied for, it should be noted that neither Regulation No 207/2009 nor Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1) refers to ‘position marks’ as a specific category of marks. However, in so far as Article 4 of Regulation No 207/2009 does not contain an exhaustive list of signs capable of being Union trade marks, that circumstance is without relevance to the registrability of ‘positional marks’. 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. Nonetheless, the classification of a ‘position mark’ as a figurative, three-dimensional or specific category mark is irrelevant for the purpose of assessing its distinctive character (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, paragraphs 19 to 21).

45 Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctiveness may not be registered.

46 According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or service designated by the mark to make the same choice, when making a subsequent acquisition, if the experience has proved positive, or to make another choice, if it has proved negative (judgments of 5 May 2009, Rotter v OHIM (Shape of an arrangement of sausages), T‑449/07, EU:T:2009:137, paragraph 18, and of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 14).

47 In accordance with the case-law, the distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration or protection of the mark has been applied for and, second, by reference to the perception of the relevant public, which consists of average consumers of those goods or services (judgments of 5 May 2009, Shape of an arrangement of sausages, T‑449/07, EU:T:2009:137, paragraph 19, and of 29 September 2009, Representation of half a smiley smile, T‑139/08, EU:T:2009:364, paragraph 15).

48 A minimum degree of distinctive character is however sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 inapplicable (judgments of 20 May 2009, CFCMCEE v OHIM (P@YWEB CARD et PAYWEB CARD), T‑405/07 and T‑406/07, EU:T:2009:164, paragraph 57, and of 29 September 2009, Representation of half a smiley smile, T‑139/08, EU:T:2009:364, paragraph 16).

49 The finding that a mark has distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark enables the relevant public to identify the origin of the goods or services which it covers and to distinguish them from those of other undertakings (see judgments 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 41, and of 29 September 2009, Representation of half a smiley smile, T‑139/08, EU:T:2009:364, paragraph 27).

50 Nevertheless, a sign which is excessively simple and is constituted of a basic geometrical 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 judgments of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22, and of 29 September 2009, Representation of half a smiley smile v OHIM, T‑139/08, EU:T:2009:364, paragraph 26).

51 The General Court must examine in the light of those considerations whether, in the present case, the relevant public will perceive the mark applied for as an indication of commercial origin.

52 In the present case, as regards the definition of the relevant public, the applicant does not dispute the Board of Appeal’s assessment that the goods at issue are directed both at the public at large and a professional public. By contrast, it disputes the Board of Appeal’s assessment that that relevant public will display a merely high level of attention. The applicant claims that the relevant public’s level of attention is particularly high given that the goods at issue are not purchased regularly, require a certain financial investment and must be compatible with goods already in the consumer’s possession and used by him, including for safety reasons.

53 It must be noted in that regard that the Board of Appeal’s assessment is not vitiated by error. Even if the goods covered by the mark applied for are not purchased regularly, require a certain financial investment and consumers must think during the purchase, it must be pointed out, in this respect, that, as regards tyres, it is apparent from the case-law that, even if those goods are not everyday consumer goods, their acquisition does not require in depth consideration (see, to that effect, judgment of 23 April 2013, Apollo Tyres v OHIM — Endurance Technologies (ENDURACE), T‑109/11, not published, EU:T:2013:211, paragraph 53 and the case-law cited). Accordingly, the level of attention cannot be considered as being particularly high.

54 In any event, the question whether the relevant public is characterised by a high or particularly high level of attention is irrelevant. Having regard to the elements composing the mark applied for, which are characterised by extreme simplicity, the mark does not convey a message related to the commercial origin of the goods covered, whatever the relevant public’s level of attention.

55 As regards the shape of the strips composing the mark applied for, the Board of Appeal considered that it was too simple to be remembered by the relevant consumer. In particular, it stated that it was in essence a rectangular, long, thin shape, which appeared to be curved because it was affixed to a tyre’s sidewalls.

56 Those considerations are not vitiated by error. It must be considered that the mark applied for, contrary to what the applicant claims, is extremely simple and does not display any particular characteristics or an aspect easily and immediately perceived by the relevant public as indicating the commercial origin of the goods at issue. Consequently, consumers will perceive the contested sign as a mere decorative element affixed to the sidewall of tyres or any other goods covered by the application for registration.

57 Given the superfluousnature of the Board of Appeal’s assessment relating to the alleged function of the mark applied for as a frame containing the technical specifications of the tyres, the argument of the applicant based on an alleged error vitiating that assessment is irrelevant.

58 It follows that the Board of Appeal was correct in finding, in paragraph 19 of the contested decision, that the mark applied for was devoid of distinctive character.

59 That conclusion is not called into question by the applicant’s other arguments.

60 In that regard, it must be noted that the mere fact that other marks, although equally simple, have been regarded as being capable of identifying the commercial origin of the goods in question without any possibility of confusion with those of a different origin and, therefore, as not being devoid of any distinctive character, is not conclusive for the purpose of establishing whether the mark at issue also has the minimum degree of distinctive character necessary for protection in the Union (see, judgment of 29 September 2009, Representation of half a smiley smile, T‑139/08, EU:T:2009:364, paragraph 34).

61 Furthermore, as is apparent from the case-law cited in paragraph 49 above, novelty or originality are not relevant criteria for the assessment of the distinctive character of a trade mark, so that, in order for a trade mark to be registered it is not sufficient for it to be original, it must also differ substantially from the basic shapes of the goods concerned, commonly used in trade, and must not appear as a simple variant of those shapes (judgments of 30 April 2003, Axions and Belce v OHIM (Brown cigar shape), T‑324/01 and T‑110/02, EU:T:2003:123, paragraph 44, and of 31 May 2006, DeWaele v OHIM (Shape of a sausage), T‑15/05, EU:T:2006:142, paragraph 38).

62 The applicant’s argument that the fact that, in its previous decision-making practice, EUIPO has accepted the registration of EU marks consisting of signs which were relatively simple and similar to the mark applied for shows that this kind of mark has been recognised as having an inherent distinctive character must also be rejected.

63 In that regard, for reasons of legal certainty and, indeed, of sound administration, 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 a 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 (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77).

64 In the present case, it must be noted that, even if EUIPO seeks to take decisions consistent with one another, it may happen that descriptive marks or marks devoid of distinctive character are accepted for registration. Nevertheless, the principle of legality is not to be breached for the sake of satisfying the applicant’s expectations relating to the registration of comparable signs. In addition, in no way can a possible error made in the context of other proceedings justify the registration of a mark that does not meet the conditions set out in Article 7 of Regulation No 207/2009. Consequently, the fact that simple signs, such as strips, have been registered as EU trade marks is not relevant for the purposes of assessing whether or not the mark in question is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

The third plea, alleging infringement of Article 7(3) of Regulation No 207/2009

66 The applicant contests, in essence, the Board of Appeal’s conclusion that the mark applied for has not acquired distinctive character through use, as provided for in Article 7(3) of Regulation No 207/2009.

67 In that regard it states, in the first place, that it has been the official and sole supplier of tyres for Formula 1 Championship teams since 2011. In the second place, it refers to the quantities of tyres labelled with the mark applied for, for Formula 1 Championship cars for the years 2012, 2014 and 2015. In the third place, it maintains that the global visibility of the mark applied for is guaranteed through extensive worldwide media interest in Formula 1 Championship, which leads to important television coverage. In the fourth place, the applicant mentions PIRELLI’s extensive promotional and merchandising activity promoting the mark applied for in sectors other than the sectors of tyres, rims and covers. Lastly, in the fifth place, the applicant states that the mark is also used in the context of advertising campaigns.

69 Under Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal referred to in Article 7(1)(b), (c) and (d) of that regulation do not preclude the registration of a trade mark if it has become distinctive in relation to the goods or services for which registration is sought in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) of Regulation No 207/2009, the fact that the sign constituting the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of goods or services is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public interest considerations underlying Article 7(1)(b), (c) and (d), which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader (judgments of 21 April 2010, Schunk v OHIM (Representation of part of a chuck), T‑7/09, not published, EU:T:2010:153, paragraph 38, and of 22 March 2013, Bottega Veneta International v OHIM (Shape of a handbag), T‑409/10, not published, EU:T:2013:148, paragraph 74).

70 It is clear from that case-law that, in order to have the registration of a trade mark accepted under Article 7(3) of Regulation No 207/2009, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b), (c) and (d) of that regulation. Furthermore, the acquisition of distinctive character through use must have taken place before the application for registration was filed (judgments of 21 April 2010, Representation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 40, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 76).

71 Nevertheless, the Court ruled that it would be unreasonable to require proof of such an acquisition for each Member State individually (see, to that effect, judgments of 24 May 2012, Chocoladefabriken Lindt & Sprüngliv OHIM, C‑98/11 P, EU:C:2012:307, paragraph 62, and of 21 April 2015, Louis Vuitton Malletier v OHIM — Nanu-Nana (Representation of a brown and beige chequerboard pattern), T‑359/12, EU:T:2015:215, paragraph 91.

72 In the case of non-verbal marks, the General Court held that it may be assumed that the assessment of the distinctive character was the same throughout the Union, unless there is concrete evidence to the contrary (judgment of 12 September 2007, Glaverbel v OHIM (Texture of a glass surface), T‑141/06, not published, EU:T:2007:273, paragraph 36 and the case-law cited).

73 It is also apparent from the case-law that, for a mark to have acquired distinctiveness through use, it is necessary that at least a significant proportion of the relevant public, by virtue of that mark, identifies the goods or services concerned as originating from a particular undertaking. However, the circumstances in which that requirement for acquisition of distinctive character through use may be regarded as satisfied cannot be established solely by reference to general, abstract data such as predetermined percentages (judgments of 21 April 2010, Representation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 39, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 75).

74 Furthermore, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia, the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify the goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) of Regulation No 207/2009 is satisfied (judgments of 21 April 2010, Representation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 41, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 77).

75 According to the case-law, the distinctive character of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration has been sought and in the light of the presumed perception of the mark by an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (judgments of 21 April 2010, Representation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 42, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 78).

76 Finally, it is clear from the case-law that proof of distinctive character acquired through use cannot be furnished by the mere production of sales volumes and advertising material. Similarly, the mere fact that the sign has been used in the territory of the Union for some time is not sufficient either to show that the public targeted by the goods in question perceives it as an indication of commercial origin (see, to that effect, judgment of 12 September 2007, Texture of a glass surface, T‑141/06, not published, EU:T:2007:273, paragraphs 41 and 42).

77 It is in the light of those considerations that the General Court must examine whether, in the present case, the Board of Appeal erred in finding that the mark applied for had not acquired distinctive character in consequence of the use which has been made of it, within the meaning of Article 7(3) of Regulation No 207/2009.

78 In the present case, the applicant submitted as evidence seeking to establish the distinctive character acquired through use of the mark applied for an extract of the Wikipedia website entitled ‘Formula One tyres’, which tells the story of Formula 1 Championships and indicates that the applicant has been the official supplier of tyres for Formula 1 Championship teams since 2011, a document taken from the applicant’s website showing the quantities of tyres bearing the mark applied for the Formula 1 Championship for the years 2012, 2014 and 2015, a document produced by Mr Sergio Battista, agent of Pirelli, showing the figures relating to television viewing of World Championship Formula 1 races, and finally, advertising material in which the mark applied for can be seen.

79 In that regard, as the Board of Appeal rightly noted, the applicant has presented none of the necessary information, such as the market share held by the mark, the duration, extent or geographic area of use, which would make it possible to prove the use of the mark applied for. The applicant merely states that it has supplied since 2011, exclusively, tyres for Formula 1 Championship teams and that, therefore, the mark applied for enjoys wide televised media coverage, accordingly it is seen by millions of viewers across the entire world. Nevertheless, it does prove that the public recognises the origin of the goods at issue thanks to the mark applied for. It is clear that it is not sufficient, for the purposes of the application of Article 7(3) of Regulation No 207/2009, that a mark has been seen by many. It is also necessary for those persons to be capable of attributing to that mark a distinctive function. None of the evidence presented provides information relating to the way in which the relevant public understands the mark.

80 In addition, it must be noted that hardly any of the evidence relates specifically to the mark applied for. Indeed, it all relates to the mark PIRELLI. It is true that the strips are affixed to Formula 1 championship racing car tyres, but they appear only in conjunction with the mark PIRELLI, which also appears on the tyres.

81 Thus, having regard to the case-law cited above, none of the evidence submitted makes it possible to show that the relevant persons or, at least, a significant proportion of these, identify, thanks to the mark applied for, the goods covered by it. The evidence submitted merely makes it possible to show that the sign for which registration was sought was used by the applicant on those goods. Nevertheless, they do not make it possible to show that the sign will be perceived by the relevant public as an indication of commercial origin of the goods covered by the mark applied for.

82 Accordingly, it must be held that the evidence adduced by the applicant does not make it possible to show that the mark applied for had acquired distinctive character through use at the time the trade mark application was submitted.

83 In the light of all the foregoing, the appeal must be dismissed in its entirety.

84 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) >> Pirelli Tyre v EUIPO (Position de deux bandes courbees sur les flancs d'un pneu) (Trade marks Intellectual, industrial and commercial property : Judgment) [2017] EUECJ T-81/16 (04 July 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T8116.html Cite as: [2017] EUECJ T-81/16, EU:T:2017:463, ECLI:EU:T:2017:463

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