Onvoldoende onderscheidend vermogen vormmerk Range Rover Evoque
Gerecht EU 25 november 2015, IEF 15448; ECLI:EU:T:2015:878; T-629/14 (Jaguar Land Rover tegen BHIM)
Modellenrecht. Gevorderd wordt de nietigverklaring van de beslissing van de Second Board of Appeal van het OHIM. Zij bekrachtigde hiermee het besluit van de examiner om het vormmerk voor de Range Rover Evoque af te wijzen op grond van gebrek aan onderscheidend vermogen. Het Gerecht is het eens met de Second Board of Appeal dat het aangevraagde vormmerk geen onderscheidend vermogen heeft. De vordering wordt afgewezen.
31 In so far as the applicant states, in that context, that the graphic representation of the sign applied for is at least as clear and precise as those of other three-dimensional marks registered for Class 12, it should be observed, first, that it is not possible to infer, with certainty, from the existence of those registrations that OHIM in fact found that the marks covered by those registrations departed significantly from the norm or customs of the car sector and were therefore not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. As OHIM correctly contends, those marks are different from the mark applied for and, in a certain number of cases, had acquired distinctive character through use under Article 7(3) of Regulation No 207/2009.
32 Next, according to settled case-law, the legality of the decisions of Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of OHIM’s previous decision-making practice, which, in any event, cannot bind the Courts of the European Union (judgments of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 47; 12 January 2006 inDeutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 48; and 30 April 2013 in Boehringer Ingelheim International vOHIM (RELY-ABLE), T‑640/11, EU:T:2013:225, paragraph 33). Moreover, for reasons of legal certainty and 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. Such an examination must thus 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 (see, to that effect, judgments of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 77, and RELY-ABLE, cited above, EU:T:2013:225, paragraph 34). It follows that the existence of other registrations of three-dimensional marks for Class 12 does not, on its own, lead to the conclusion that the mark applied for departs significantly from the norm or customs of the sector and is, therefore, not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.
33 In the second place, the applicant claims that the Board of Appeal was wrong in stating that the terms ‘Range Rover Evoque’ or ‘Evoque’ were irrelevant in the present case. The third party commentaries produced by the applicant included images of the vehicle described (known as the ‘Range Rover Evoque’). It was therefore sufficiently certain that each review or article referred to that vehicle design and no other. In any event, the images of the ‘Range Rover Evoque’ taken from the applicant’s website and produced by it before the Court dispelled any doubt that the vehicle, the design of which is the subject of the mark applied for, is known as the ‘Range Rover Evoque’.
34 In this connection, it should be recalled that, according to the scheme of Regulation No 207/2009, the registration can take effect only on the basis of, and within the limits of, the application for registration filed by the applicant with OHIM. It follows that, when examining the distinctive character of a three-dimensional mark, OHIM must refer to the reproduction of the mark applied for attached to the application for registration and to the description, if any, included in that application. Therefore, OHIM may not take into account characteristics of the mark applied for that are not set out in the application for registration and the documents accompanying it (judgments of 30 November 2005 inAlmdudler-Limonade v OHIM (Shape of a lemonade bottle), T‑12/04, EU:T:2005:434, paragraph 42, and 22 March 2013 in Bottega Veneta International v OHIM (Shape of a bag), T‑410/10, EU:T:2013:149, paragraph 38). Since the function of the graphic representation is to define the mark, it must be self-contained, in order to determine with clarity and precision the precise subject-matter of the protection afforded by the registered trade mark to its proprietor (see, to that effect, judgment of 12 December 2002 in Sieckmann, C‑273/00, ECR, EU:C:2002:748, paragraphs 48 and 50 to 52).
35 In the present case, OHIM correctly observes that the application for registration in no way states that the shape of the car represented in the six line drawings filed for the purposes of registration is that of a car named ‘Range Rover Evoque’ or ‘Evoque’. It should also be pointed out that the application for registration concerned six line drawings and not photographs of ‘ready-made’ cars or scale models of cars.
38 In so far as the applicant relies on reviews by third parties and claims that they refer to the mark applied for, suffice it to point out that, in fact, those reviews do not concern the six line drawings filed by the applicant for the purposes of registration as a three-dimensional Community trade mark, but rather a ready-made car or photographs of such a ready-made car. It follows that the Board of Appeal did not err in not taking account of those reviews.
39 In the third place, the applicant claims that the Board of Appeal did not give adequate weight to the third party reviews of the shape of the vehicle in question. It claims that those reviews were not merely ‘indicators of attractive or high aesthetic level’, but were also indicators of features possessed by the vehicle design concerned that were considered, by independent third parties, to demonstrate an inherent level of distinctive character. In considering the impression made by the graphic representation only, and not that made by ready-made vehicles, the Board of Appeal contradicted its own approach of assessing whether the shape in question departed sufficiently from the ‘existing design field’. The applicant argues that current design trends in the automotive industry were very relevant for the assessment of distinctive character. The Board of Appeal was not entitled to exclude the impression made by ready-made cars when assessing the significance and relevance of third party reviews in relation to whether there was sufficient distinctive character.
40 In accordance with the case-law referred to in paragraph 34 above, OHIM may not take into account characteristics of the mark applied for that are not set out in the application for registration and the documents accompanying it. As stated in paragraph 35 above, the mark applied for consists of six line drawings and not photographs of ready-made cars or scale models of cars. As pointed out in paragraph 38 above, the reviews submitted by the applicant do not concern the six line drawings it filed for the purposes of registration as a Community trade mark, but rather a ready-made car or photographs of such a ready-made car.
41 It should be stated that the photographic representations produced by the applicant bring out a number of features, including the car grille and uprights, which are not visible in the six line drawings it filed for the purposes of registration as a Community trade mark. Consequently, as OHIM correctly contends, the photographic representations of the car model in question are not identical to the mark applied for.
43 In so far as the applicant complains that the Board of Appeal’s approach when assessing whether the mark applied for departed significantly from the norm or customs of the sectors concerned was contradictory in that it considered only the impression made by the graphic representations filed, and not that made by ready-made cars, it must be held that there is, in fact, no such contradiction. According to the case-law cited in paragraph 34 above, OHIM must refer to the reproduction of the mark applied for attached to the application for registration and may not take into account characteristics of the mark applied for that are not set out in the application for registration and the documents accompanying it. Consequently, the details of a graphic representation filed for the purposes of registration as a three-dimensional Community trade mark must, on their own, make it possible to determine whether the mark applied for departs significantly from the norm or customs of the sectors concerned, and is thus not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.
45 It follows that the arguments put forward by the applicant in support of its single plea in law are not capable of calling into question the Board of Appeal’s assessment that, as regards goods other than ‘vehicles for locomotion by air and water’ in Class 12, the mark at issue, rather than departing significantly from the norm or customs of the sector, is merely a variation of the typical shape of a car and is, therefore, devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.
