Order of 2 Sep 2015, C-531/14 (Giorgis), ECLI:EU:C:2015:547.

ORDER OF THE COURT (Sixth Chamber)

2 September 2015 (*)

(Appeals — Article 181 of the Rules of Procedure of the Court of Justice — Community trade mark — Invalidity proceedings — Three-dimensional Community trade mark — Regulation (EC) No 207/2009 — Article 7(1)(b) — Absolute ground for invalidity — No distinctive character — Shape of two packaged goblets)

In Case C-531/14 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 November 2014,

Giorgio Giorgis, residing in Milano (Italy), represented by I. Prado and A. Tornato, avvocati,

applicant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),

defendant at first instance,

Comigel SAS, established in Saint-Julien-lès-Metz (France),

intervener at first instance,

THE COURT (Sixth Chamber),

composed of S. Rodin, President of the Chamber, A. Borg Barthet (Rapporteur) and F. Biltgen, Judges,

Advocate General: M. Szpunar,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1        By his appeal, Mr Giorgis seeks to have set aside the judgment of the General Court of the European Union in Giorgis v OHIM — Comigel (Shape of two packaged goblets) (T-474/12, EU:T:2014:813; ‘the judgment under appeal’), by which the General Court dismissed his action brought against the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 26 April 2012 (Case R 1301/2011-1), relating to invalidity proceedings between Comigel SAS (‘Comigel’) and Mr Giorgis (‘the contested decision’).

 Legal context

2        Article 7(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), entitled ‘Absolute grounds for refusal’, provides:

‘The following shall not be registered:

…

(b)      trade-marks which are devoid of any distinctive character;

…’

3        Article 52(1) of that regulation, entitled ‘Absolute grounds for invalidity’, provides:

‘A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings,

(a)      where the Community trade mark has been registered contrary to the provisions of Article 7;

…’

 Background to the dispute and the contested decision

4        The background to the dispute, as set out by the General Court in paragraphs 1 to 6 of the judgment under appeal, may be summarised as follows.

5        On 11 November 2009, Mr Giorgis obtained registration from OHIM, pursuant to Regulation No 207/2009, under No 8132681 of the three-dimensional Community trade mark reproduced below (‘the contested trade mark’):

6        The goods in respect of which that mark was registered are in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Ice, flavoured ices, mixed sorbets, ice sorbets, ice creams, ice-cream drinks, ice-cream goods, ice-cream desserts, semi-frozen desserts, desserts, frozen yoghurt, pastry’.

7        On 19 January 2010, Comigel filed an application for a declaration that the contested mark was invalid on the basis of Article 7(1)(b) and (d) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation.

8        By decision of 21 April 2011, the Cancellation Division of OHIM granted the application for a declaration of invalidity and declared the contested mark to be invalid for all the goods in question on the basis of the abovementioned provisions. In addition, it rejected the argument put forward by Mr Giorgis that the contested mark had acquired distinctive character through use in accordance with Article 7(3) of Regulation No 207/2009.

9        On 16 June 2011, Mr Giorgis filed a notice of appeal at OHIM against the Cancellation Division’s decision.

10      By the contested decision, the First Board of Appeal of OHIM (‘the Board of Appeal’) dismissed the appeal. It confirmed the conclusions of the Cancellation Division that, firstly, the contested mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 and, secondly, Mr Giorgis had failed to demonstrate that the contested mark had acquired distinctive character through use, for the purposes of Article 7(3) of Regulation No 207/2009, read in conjunction with Article 52(2) of that regulation.

 The proceedings before the General Court and the judgment under appeal

11      By application lodged at the Registry of the General Court on 31 October 2012, Mr Giorgis brought an action for annulment of the contested decision.

12      In support of that action, Mr Giorgis raised two pleas in law.

13      The first plea alleged an infringement of Article 7(1)(b) of Regulation No 207/2009, in that, in essence, the Board of Appeal made an incorrect assessment of the distinctive character of the mark at issue.

14      The second plea alleged an infringement of Article 7(3) of Regulation No 207/2009, in that the Board of Appeal wrongly assessed the evidence adduced by Mr Giorgis as insufficient to show that the mark at issue had acquired distinctive character through use.

15      In paragraphs 10 to 48 of the judgment under appeal, the General Court rejected the first plea in law raised by Mr Giorgis in support of his action on the ground that he had failed to show that the Board of Appeal had erred in considering that the mark at issue was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

16      The General Court held, in particular, in paragraph 38 of the judgment under appeal, that Mr Giorgis could not argue that the Board of Appeal did not carry out an overall assessment of the distinctive character of the contested mark, that it did not take account of its characteristics, and that it found merely that the sum of each of the elements of the contested mark lacked distinctive character.

17      In that regard, in paragraph 37 of the judgment under appeal, the General Court noted, firstly, that the Board of Appeal took the view that the features of the mark at issue were not sufficient to make it an unusual design on the market for desserts, ice creams, sorbets and yoghurts that could clearly be recognised as different from the forms available. Secondly, the General Court was of the view that the Board of Appeal held that the examples provided by Comigel showed certain shapes of packaging that were very similar to the shape of the contested mark and, thirdly, that it took the view that the use of two containers held together by cardboard packaging was one of the most common ways of presenting the products to consumers. Finally, fourthly, the General Court held that the Board of Appeal concluded that, taken as a whole, the mark at issue closely resembled the shapes that the goods in question were most likely to take and that, consequently, it had to be regarded as being devoid of any distinctive character.

18      Furthermore, in answer to Mr Giorgis’ argument that the Board of Appeal was wrong to hold that the mark at issue corresponded to a shape of packaging which is in common use on the market to sell the goods in question, while it was apparent from the examples which he supplied that the most commonly used packaging in that sector is totally different from that of the mark at issue, the General Court held, in paragraph 40 of the judgment under appeal, that the fact that there are other types of packaging on the market for the goods in question is not inconsistent with the Board of Appeal’s finding that there are also shapes of packaging that are very similar to that of the mark at issue and which are not unusual. The General Court then stated that, for a finding that a trade mark does not have distinctive character, it is sufficient that the mark does not depart significantly from the norm or customs of the sector and it is not necessary to show that that mark is the form of packaging that is the most common on the market.

19      In paragraphs 49 to 59 of the judgment under appeal, the General Court rejected the second plea in law raised by Mr Giorgis in support of his action.

 The form of order sought by the applicant

20      By his appeal, Mr Giorgis claims that the Court should:

–        set aside the judgment under appeal and annul the contested decision; and

–        order OHIM to pay the costs.

 The appeal

21      By virtue of Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

22      In the present case, the Court considers that it has sufficient information from the documents in the case-file and decides, pursuant to that article, to rule by way of reasoned order, without it being necessary to serve the appeal on the defendant.

23      In support of his appeal, Mr Giorgis relies on a single ground of appeal, alleging that the General Court infringed Article 7(1)(b) of Regulation No 207/2009.

24      That ground of appeal is divided into two parts which it is appropriate to examine separately.

 The first part of the single ground of appeal

 The applicant’s arguments

25      By the first part of his single ground of appeal, in essence, Mr Giorgis complains that the General Court held, in paragraphs 37 and 38 of the judgment under appeal, that the Board of Appeal assessed the distinctive character of the mark at issue as a whole, despite the fact that it is clear from the contested decision that it merely examined the distinctive character of each of the two elements of which it is composed.

26      In that regard, Mr Giorgis submits that, although the mark at issue is formed of a combination of elements, each of which may be considered devoid of distinctive character, that fact is not sufficient for the view to be taken that the sign as a whole is devoid of distinctive character, since a correct assessment of the distinctive character ought to take into consideration the manner in which the various elements are combined.

27      In the present case, the combination of elements forming the mark at issue, namely a goblet and a cardboard envelope, creates, in the view of Mr Giorgis, a true distinctive character and cannot be regarded as common in the sector concerned.

 Findings of the Court

28      In so far as it alleges that the General Court, in paragraphs 37 and 38 of the judgment under appeal, held that the Board of Appeal assessed the distinctive character of the mark at issue as a whole, while it is clear from the contested decision that that is not the case, the first part of the single ground for appeal must be rejected as manifestly unfounded.

29      In fact, in paragraphs 41 to 45 of the contested decision, the Board of Appeal, as the General Court rightly noted in paragraph 37 of the judgment under appeal, carried out an analysis of the overall impression produced by the shape of the packaging registered under the mark at issue. Thus, the Board of Appeal took the view, in paragraph 41 of the contested decision, that the features of the mark at issue were not sufficient to make it an unusual design on the market for desserts, ice creams, sorbets and yoghurts that could clearly be recognised as different from the forms available. That Board then held, in paragraph 43 of the contested decision, that the examples provided by Comigel showed certain shapes of packaging that were very similar to the shape of the contested mark. Finally, in paragraph 44 of the contested decision, the Board took the view that the use of two containers held together by cardboard packaging was one of the most common ways of presenting the products to consumers. The Board of Appeal concluded, in paragraph 45 of the contested decision, that, taken as a whole, the mark at issue closely resembled the shapes that the goods in question were most likely to take and that, consequently, it had to be regarded as being devoid of any distinctive character.

30      Accordingly, the General Court was able, without erring in law, to conclude, in paragraph 38 of the judgment under appeal, that Mr Giorgis cannot argue that the Board of Appeal did not carry out an overall assessment of the distinctive character of the mark at issue, that it did not take account of its characteristics, and that it found merely that the sum of each of the elements of the mark at issue lacked distinctive character.

31      Furthermore, in so far as Mr Giorgis argues that the combination of the elements forming the mark at issue gives it distinctive character, it must be noted that that analysis falls within the scope of a factual assessment.

32      In that regard, it is necessary to recall that, under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus does not, save where the facts or evidence are distorted, constitute a point of law which, as such, is open to review by the Court of Justice on appeal (judgment in Voss of Norway v OHIM, C-445/13 P, EU:C:2015:303, paragraph 97).

33      Mr Giorgis has not put forward any argument in support of that assertion that shows that the General Court distorted the evidence.

34      Having regard to the foregoing considerations, the first part of the single ground of appeal must be rejected as being in part manifestly inadmissible and in part manifestly unfounded.

 The second part of the single ground of appeal

 Arguments of the applicant

35      By the second part of his single ground of appeal, in essence, Mr Giorgis claims that the Board of Appeal and the General Court wrongly defined the standard model and customs of the sector in question in that they failed to determine the types of packaging widely used in that sector.

36      According to Mr Giorgis, that incorrect approach led the Board of Appeal to conclude, wrongly, that the mark at issue is not very different from the standard model and customs of that sector.

 Findings of the Court

37      According to the settled case-law of the Court of Justice, it follows from Article 256 TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice and Article 69(2) of the Rules of Procedure that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal (see, inter alia, order in Think Schuhwerk v OHIM, C-521/13 P, EU:C:2014:2222, paragraph 27).

38      That requirement is not satisfied by an appeal which, without even including an argument specifically identifying the error of law allegedly vitiating the contested judgment, confines itself to reproducing the pleas in law and arguments previously submitted to the General Court. In reality, such an appeal amounts to no more than a request for a re-examination of the application submitted to the General Court, a matter which falls outside the jurisdiction of the Court of Justice (order in Think Schuhwerk v OHIM, C-521/13 P, EU:C:2014:2222, paragraph 28).

39      Furthermore, arguments in an appeal which criticise the decision whose annulment was applied for before the General Court, rather than the judgment delivered by the General Court following that application for annulment, are inadmissible (order in Think Schuhwerk v OHIM, C-521/13 P, EU:C:2014:2222, paragraph 29).

40      In the present case, by the second part of the single ground of appeal, Mr Giorgis criticises the contested decision and asks the Court of Justice, in essence, to rule afresh on certain aspects of the dispute, without claiming any error of law vitiating the assessments made by the General Court.

41      Accordingly, it is appropriate to reject the second part of the single ground of appeal as manifestly inadmissible and, thus, to dismiss the appeal as a whole.

 Costs

42      Under Article 137 of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184 of those rules, a decision as to costs is to be given in the order which closes the proceedings.

43      Since the present order has been adopted before the appeal was notified to OHIM, and therefore before the latter could have incurred costs, it is appropriate to decide that Mr Giorgis is to bear his own costs.

On those grounds, the Court (Sixth Chamber) hereby orders:

1.      The appeal is dismissed.

2.      Mr Giorgio Giorgis shall bear his own costs.

[Signatures]

* Language of the case: English.