CANCELLATION No 9944 C (INVALIDITY)

Griesson- de Beukelaer GmbH & Co; KG, Postfach 11 63, 56747 Polch Germany (applicant), represented by Jonas Rechtsanwaltegessellschaft MBH, Postfach 26 01 20, 50514 Cologne, Germany (professional representative)

a g a i n s t

Générale Biscuit-Glico France, 6 avenue Réaumur, 92140 Clamart, France (CTM proprietor), represented by Alezan Avocats, 9, Avenue Percier, 75008 Paris, France (professional representative).

On 17/12/2015, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. Community trade mark No 9 391 401 is declared invalid for some of the contested goods, namely:

Class 30: Bakery products, pastries, confectionery, namely, biscuits (sweet or savoury), wafers, all these products being natural and/or with toppings and/or stuffed and/or flavoured.

3. The Community trade mark remains registered for all the remaining goods, namely:

Class 30: Cocoa, chocolate, cocoa-based and/or chocolate-based beverages and preparations for making beverages; Bakery products, pastries, confectionery, namely, bread, rusks, waffles, cakes, pastries; Cereal bars; Cereal preparations; All these products being natural and/or with toppings and/or stuffed and/or flavoured

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against Community trade mark No 9 391 401 (3D mark) (the CTM). The request is directed against all the goods covered by the CTM, namely:

Class 30: Cocoa, chocolate, cocoa-based and/or chocolate-based beverages and preparations for making beverages; Bakery products, pastries, confectionery, namely, bread, rusks, biscuits (sweet or savoury), waffles, wafers, cakes, pastries; Cereal bars; Cereal preparations; All these products being natural and/or with toppings and/or stuffed and/or flavoured.

The applicant invoked Article 52(1)(a) CTMR in conjunction with Article  7(1)(b) and (g) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that insofar the CTM registration covers bakery products, pastries, confectionery and goods falling within these categories, it is devoid of distinctive character as its shape does not depart significantly from the norm or custom of industry. It has been registered contrary to Article 7(1)(b) CTMR. In addition, insofar the contested registration covers goods outside the above mentioned categories, it can deceive the public as to the nature of these goods because they cannot have the shape embodied in the mark. It follows that the registration is contrary to Article 7(1)(g) CTMR. Consequently, it shall be declared invalid.

In support of its observations, the applicant filed the following evidence:

• Enclosure 1 o 6: Examples of products falling within the categories bakery products, pastries, confectionery and shaped like a stick (trade marks Mikado, Amicelli, After Eight Fine Sticks, Choceur Deluxe chocolate Sticks, Cioko Sticks and Liebniz Choco Sticks).

• The lack of distinctive character is further supported by previous refusals of highly similar marks, among which the proprietor’s international registration No 992 606 representing the shape of a MIKADO stick for goods in Class 30 and refused by the OHIM (Enclosure 7).

• The deceptiveness of the contested trade mark for other goods in Class 30 is supported by a decision of the OHIM of 30/09/2005 in relation to 3D CTMA No 3 514 171 covering chairs and furniture, found not distinctive for chairs and deceptive for other furniture (Enclosure 8).

The CTM proprietor argues that the appearance of the contested CTM differs from the usual norms of the sector ‘sweet biscuits’ or even confectionary in general as these goods are commonly circular or rectangular and not oblong. It also considers that with respect to cancellation for lack of use or acquisition of distinctiveness by use, the burden of proof is met provided that it concerns a substantial part of the Community, even though this area corresponds to one Member State. France being one of the most important markets in the EU, the survey in enclosure 3 is of particular relevance. In addition, it was conducted to defend the owner trade mark following the unfair introduction of ChocOlé bicuits in the market. It considers the present cancellation action has been introduced by the applicant to interfere with likely infringement proceedings to be initiated by the owner. The twirls made of darker chocolate surrounding the biscuit in the contested CTM are far from being a secondary element as they bring a totally different look to the biscuit and allows consumers to identify the biscuit. The overhaul impression is different, also compared to the biscuit refused by the OHIM. Therefore the CTM registration is not devoid of distinctive character; it is intensively used and known in France and in several Member States (Spain, United Kingdom, Austria, Germany, Belgium) and has therefore acquired distinctiveness. Finally, on the ground of deceptiveness, pursuant to OHIM guidelines, if a non-deceptive use is possible in connection with concerned goods and services there is no deceptiveness. Consequently, the CTM is not deceptive, in particular with respect to “cocoa, chocolate, cocoa based and/or chocolate based beverages and preparations for making beverages; bread; cereal bars; cereal preparations”.

In support of its observations, the CTM proprietor filed the following evidence:

• Enclosure 1: GC T 458/05 Tergometall International AG, paragraph 78) and other CG cases

• Enclosure 2: Google search for cookies and biscuits showing results of circular or rectangular shape

• Enclosure 3: IN VIVO awareness survey, sept. 2014 (and its English translation)

• Enclosure 4: Pressbook MIKADO KING CHOCO, May 2012

• Enclosure 5: consumers’ comments about MIKADO KING CHOCO, Sept 2014

• Enclosure 6: Paper ‘The Grocer’, 16/03/2014

• Enclosure 7: Paper ‘La Femme Actuelle’, 25/02/2013, paper ‘Linéaires’ 01/11/2012, visual of MIKADO KING CHOCO biscuit downloaded from a website

• Enclosure 8: France- Key elements about MIKADO KING CHOCO

• Enclosure 9: MILKA chocolate with OREO biscuits chunk

• Enclosure 10: NESQUIK products

• Enclosure 11: Special K cereal bars

• Enclosure 12: Nestlé Fitness cookies & cream

• Enclosure 13: Harry’s bread

• Enclosure 14: Chocolate lollipops

• Enclosure 15: “NINCHIE” lollipops

• Enclosure 16: Spain MIKADO KING CHOCO social media activation report,

• Enclosure 17: Compilation of webpage referring to MIKADO KING CHOCO, examples of use on YouTube

• Enclosure 18: Spain- consumer survey

• Enclosure 19: Spain- digital marketing campaign “How do you eat your Mikado?”

• Enclosure 20: Spain- Advertisement and marketing expenses

• Enclosure 21: France- Media plans for 2012-2015

• Enclosure 23: United Kingdom- marketing brief and plan

• Enclosure 24: United Kingdom – Facebook pages for MIKADO referring to MIKADO KING CHOCO (2014- January 2015)

• Enclosure 22: Key elements for MIKADO KING CHOCO

• Enclosure 25: Power of attorney

• Enclosure 26: Austria –media plan

• Enclosure 27: Austria – advertising poster

• Enclosure 28: Austria – digital campaign screenshots

• Enclosure 29: Austria- advertising poster

• Enclosure 30: Germany - advertising poster

• Enclosure 31: Germany MIKADO KING CHOCO documentation

• Enclosure 32: Germany –media plan

• Enclosure 33: Germany –Facebook pages for MIKADO referring to MIKADO KING CHOCO (2013-2014)

• Enclosure 34: Germany MIKADO KING CHOCO sampling tour Deutschland

• Enclosure 35: Germany –advertising film

• Enclosure 36: Belgium – 2012 communication campaign

• Enclosure 37: Belgium – Facebook pages for MIKADO referring to MIKADO KING CHOCO

The applicant answered that the relevant sector is confectionary as a whole. The shape of the contested mark does not depart significantly from the norm of the sector. The product has a long shape as mentioned in enclosure 3 but that does not say anything about the use of this shape in the sector. The presence of the twirls does not lead the CTM registration being distinctive. As admitted by the proprietor himself, the contested CTM has family resemblances with the 3D CTMA No 992 606 (depiction of a MIKADO stick) refused by the OHMI. The mere fact that the contested shape is a variant of the type of product at issue is not sufficient to establish that said shape is not devoid of distinctive character. About the alleged acquired distinctiveness through use, it is necessary that a significant proportion of the relevant public identifies the goods and services as originating from a particular undertaking because of the trade mark in question. The burden of proof is on the proprietor. The material submitted is not sufficient. The contested CTM does not contain any verbal elements and is thus devoid of distinctive character in the EU as a whole. Consequently, the ground could only be overcome if the proprietor was able to demonstrate that the CTM registration had acquired distinctness in the EU as a whole. This does not mean that the evidence has to be submitted in relation to all EU Member States. However, the present case does not allow for extrapolation of evidence from on Member State to another. As to deceptiveness, some of the goods (cocoa, chocolate, cocoa based and/or chocolate based beverages and preparations for making beverages; bread; cereal bars; cereal preparations) are simply not capable of taking the shape of the CTM registration. The CTM thus deceives the relevant public as to the nature of the goods for which it is registered.

The proprietor in its last submission mostly repeats what was already mentioned in previous observations. The shape (long with chocolate coating looking like MIKADO and twisted) of the contested CTM is not necessary. On the ground of deceptiveness, it is recognised when a non-deceptive use of the trade mark is impossible. In relation to liquids, or powders, they can be contained in a shell of a particular shape. This is the case for example for sorbet cartons or candies having the shape of tubes filled with powders. Therefore, products having the shape of a biscuit MIKADO KING CHOCO filed with cocoa powder or liquid is not extravagant. Furthermore, a shell having the shape of a biscuit MIKADO KING CHOCO may also contain solid objects.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) IN CONJUNCTION WITH ARTICLE 7 CTMR

According to Article 52(1)(a) and (3) CTMR, a Community trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 CTMR. Where the grounds for invalidity apply for only some of the goods or services for which the Community trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) CTMR that Article 7(1) CTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Community.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 CTMR, which were the subject of the ex officio examination prior to registration of the CTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the Community trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (see order of 23/04/2010, C332/09 P, ‘Frosch Touristik’, paragraphs 41 and 43).

Non-distinctiveness – Article 7(1)(b) CTMR

The contested mark for is the following three-dimensional sign:

As previously mentioned, it is registered for the following goods:

Class 30: Cocoa, chocolate, cocoa-based and/or chocolate-based beverages and preparations for making beverages; Bakery products, pastries, confectionery, namely, bread, rusks, biscuits (sweet or savoury), waffles, wafers, cakes, pastries; Cereal bars; Cereal preparations; All these products being natural and/or with toppings and/or stuffed and/or flavoured.

Signs that are subject to an objection under Article 7(1)(b) CTMR ‘… are incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition’ (judgment of 30/04/2003, joined cases T‑324/01 and T‑110/02, ‘Forme de cigare de couleur brune’, paragraph 29).

Accordingly, the distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003, T‑348/02, ‘Quick’, paragraph 29).

The term ‘namely’, used in the list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed products. In the present case, the objectionable goods covered by the mark applied for are everyday consumption goods and are mainly aimed at the average consumers.

In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

The criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself or its packaging are no different from those to be applied to other categories of trade mark (judgment of 18/06/2002, C‑299/99, ‘Philips’, paragraph 48).

Nevertheless, when those criteria are applied, it must be taken into account that the perception of the relevant public is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself or its packaging as it is in relation to a word mark, a figurative mark or a three-dimensional mark not consisting of that appearance. Whilst the public is used to recognising the latter marks instantly as signs identifying the product, this is not necessarily so where the sign is indistinguishable from the appearance of the product itself or its packaging (see, by analogy, judgment of 08/04/2003, joined cases C‑53/01, C‑54/01, and C‑55/01, ‘Linde’, paragraph 48).

The way in which the relevant consumer, in this case the average consumer, perceives a trade mark is influenced by that person’s level of attention, which is likely to vary according to the category of goods or services in question. In the present case the level of attention paid by the average consumer to the appearance of the goods claimed is not high given the nature of the goods.

In order to ascertain whether the sign claimed may be perceived by members of the public as an indication of origin, the overall impression produced by that sign must be analysed. That is not incompatible with an examination of each of the sign’s individual features in turn (judgment of 19/09/2001, T‑337/99, ‘Tablette ronde rouge and blanc’, paragraph 49).

The features of the shape of the mark applied for, taken alone or combined with each other, are not distinctive: the graphic representation depicts a biscuit partly coated with chocolate. The biscuits have the form of long stick and the chocolate coating used two different chocolates (one darker than the other) the darkest chocolate being twisted around the stick. A wafer being a type of biscuit, this applied also to wafers.

Taken as a whole, the mark applied for only consists of a combination of features that are typical of the goods in question, namely stick biscuits with chocolate toppings embellishments. This stick shape is not markedly different from various basic shapes commonly used in trade for the goods at issue, but is simply a variation thereof. Therefore, it is not likely to be perceived by the consumers as an indication of origin and it does not have inherent distinctive character as consumers are not used to perceive the mere three dimensional shape of a biscuit as an indication of origin in absence of other elements.

The CTM proprietor mentions that biscuits traditionally have a round or square shape which is not confirmed for example by the shape of the traditional biscuits sticks (that existed before the contested CTM which was filed on 21/09/2010) which is neither rounded not square as shown in enclosures 1 to 6 sent by the applicant and previously listed. In enclosure 7, the applicant also refers to a decision of the office refusing international registration designating the European Union No 992 606 for the figurative mark filed for coated or frosted cookies especially with chocolate or caramel frosting or coating in Class 30:

The CTM proprietor argues that not a single image show biscuits having the same appearance. This does not mean that the shape filed can work as a badge of origin for the relevant public. What is assessed is not the novelty or the individual character of the appearance of a products as in the design field but whether the shape filed as a trade mark (which in this case is the shape of part of the products covered), can work as a badge of origin. Considering the relevant sector of biscuits where traditionally many shapes and chocolate decorations are used, and the level of attention of the public previously mentioned, the shape of the biscuit in question is not likely to be inherently perceived as a badge of origin because it does not depart significantly from what was offered in the market prior to its filing.

It follows that the shape in question, even if it is a variant of traditional shapes, cannot be sufficiently distinguished from other shapes commonly used for confectionary goods and will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin.

The same applies with the chocolate embellishment around the stick that has nothing particular allowing to see it as an origin indicator. Chocolate is traditionally used as an embellishment in biscuits or wafers and the use of two different topping one being twirled around the other is not unusual.

Both the shape of the products and its embellishments are devoid of distinctive character and the overall impression given by the mark is that it is the mere representation of a stick biscuit with chocolate toppings.

Therefore, the contested three-dimensional trade mark is devoid of any distinctive character and is not capable of distinguishing bakery products, pastries, confectionery, namely, biscuits (sweet or savoury), wafers, All these products being natural and/or with toppings and/or stuffed and/or flavoured for which registration is sought within the meaning of Article 7(1)(b) CTMR.

It is found to have at least the minimum distinctive character for the remaining goods as for example waffles, cakes, pastries; bread, rusks; cereal bars; cereal preparations or even beverages are not likely to take the shape represented which is the shape of what can be seen as a biscuit or a wafer. It is considered that this three dimensional mark applied to the remaining goods in Class 30 can work as a figurative trade mark would, as it will not be perceived as having any relevant relation to the goods.

Acquired distinctiveness- Article 7(3) and 52(2) CTMR

In Cancellation Proceedings, a trade mark which was registered in breach of the provisions of Article 7(1)(b), (c) or (d) CTMR may nevertheless no longer be declared invalid if, in consequence of the use which has been made of it, it has before its filing or after registration acquired a distinctive character for the goods or services for which it is registered (Article 52(2) CTMR).

The precise purpose of this norm is to maintain the registration of those marks which, due to the use which has been made of them, have in the meantime – that is to say, after their registration – acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7 CTMR (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 86 and judgment of 15/10/2008, T-405/05, ‘Manpower’ para. 127).

Article 7(3) CTMR constitutes an exception to the rule laid down in Articles 7(1)(b), (c) or (d) CTMR, whereby registration must be refused for trade marks which are per se devoid of any distinctive character, for descriptive marks, and for marks which consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade.

Distinctive character acquired through use means that although the sign ab initio lacks inherent distinctiveness with regard to the goods and services claimed, owing to the use made of it on the market, the relevant public has come to see it as identifying the goods and services claimed in the CTM application as originating from a particular undertaking. Thus, the sign has become capable of distinguishing goods and services from those of other undertakings because they are perceived as originating from a particular undertaking. In this way, a sign originally unable to be registered under Article 7(1)(b), (c) or (d) CTMR can acquire a new significance and its connotation, no longer purely descriptive or non-distinctive, permits it to overcome those absolute grounds for refusal of registration as a trade mark that would have otherwise applied.

In this case, it was incumbent upon the CTM proprietor to demonstrate to the Cancellation Division that its CTM had acquired distinctive character throughout the European Union where the absolute ground for refusal arose, either:

• before the date of filing of the mark on 21/09/2010 when the European Union covered 27 counties or

• between the date of registration on 30/09/2011 (European Union covered 27 countries) and the application for declaration of invalidity on 13/10/2014 (European Union covered 28 countries).

In its observations, the CTM proprietor informed that the product represented in the contested trade mark was first launched in France in spring/summer 2012. Therefore the evidence of use is by definition later that the registration date of the mark. In other words, the evidence must relate to a marked that mid 2012 covered 27 countries and 28 as from July 2013.

Territorial Aspects

Pursuant to Article 1 CTMR, a Community trade mark has a unitary character and has equal effect throughout the European Union. Article 7(2) CTMR provides that a trade mark must be refused registration if an absolute ground exists only in part of the European Union.

As a logical consequence thereto, acquired distinctiveness must be established throughout the territory in which the trade mark did not, ab initio, have such character (judgment of 22/06/2006, C-0025/05P, ‘Sweet wrapper’, paras 83, 86; and judgment of 29/09/2010, T-0378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, para. 30).

This is because the unitary character of the Community trade mark requires a sign to possess distinctive character, inherent or acquired through use, throughout the European Union (judgment of 17/05/2011, T-7/10, ‘υγεία’, para. 40). It would be paradoxical to accept, on the one hand, pursuant to Article 3(1)(b) TMD that a Member State has to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other, that that same Member State has to respect a Community trade mark relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 100).

If the objection exists throughout the European Union, as is normally the case for 3D marks, colours per se and figurative trade marks consisting exclusively of the depiction of the goods in question, acquired distinctiveness must be proven throughout the entire European Union.

The Court of Justice has provided guidance on the conditions which should result in a finding that a trade mark has acquired a distinctive character through use: ‘If the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied.’ (Judgment of 04/05/1999, C-0108/97 & C-0109/97, ‘Chiemsee’, para. 45 et seq.).

Accordingly, the evidence must demonstrate that a significant proportion of the relevant public for the claimed goods and services in the relevant territory see the trade mark as identifying the relevant goods or services of a specific undertaking, in other words, that the use made of the mark has created a link in the mind of the relevant public with a specific company’s goods or services, regardless of the fact that the wording at issue would lack the distinctiveness to make this link had such use not taken place.

An important issue in the evaluation of evidence is whether the Office can extrapolate from selective evidence to draw broader conclusions. This concerns the extent to which evidence showing distinctiveness acquired through use in certain Member States can be used to make inferences with regard to the market situation in other Member States not covered by the evidence.

Extrapolating in this way to make broader inferences is of particular relevance to an enlarged European Union comprising many Member States, since it is very unlikely that a party will be able to provide evidence with respect to the whole European Union, but will rather tend to concentrate on some areas.

Extrapolation is possible where the market is homogenous and if at least some evidence is submitted. The market conditions and the consumer habits have to be comparable. Consequently, it is particularly important that the applicant submits data concerning the size of the market, its own market share, and if possible that of its main competitors, as well as its marketing expenses. Only if all data is comparable, may the Office extrapolate the results from one territory to another. For example, if the CTM is used in the entire relevant territory but the evidence only refers to a part of it, inference is possible if the circumstances are comparable. However, if the CTM is only used in part of the relevant territory (and the evidence refers to this), it will usually be difficult to extrapolate those facts to other parts of the territory.

In the case at hand, as admitted by the CTM proprietor, the evidence of use describe above related to the following territories: France, Spain, United Kingdom, Austria, Germany, Belgium. In other words, the evidence is limited to six Member States out of 27 or 28. Therefore, there is no evidence at all for 21 or 22 countries, including big markets in term of population such as Italy or Poland. Entire markets of the European Union are left out the evidence, such as Scandinavian or Central Europe markets. In other words, an extrapolation of the evidence filed for 6 countries is not possible for the remaining markets and for economy of procedure, the evidence does not have to be assessed any further considering that it is obviously insufficient.

Since the trade mark was found distinctive for some goods in Class 30, namely:

Cocoa, chocolate, cocoa-based and/or chocolate-based beverages and preparations for making beverages; Bakery products, pastries, confectionery, namely, waffles, cakes, pastries; bread, rusks; Cereal bars; Cereal preparations; All these products being natural and/or with toppings and/or stuffed and/or flavoured,

the cancellation decision must continue for these goods based on the other ground mentioned by the applicant.

Deceptiveness- Article 7(1)(g) CTMR

Article 7(1)(g) CTMR provides that marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services, shall not be registered.

According to the case-law relating to Article 3(1)(g) of the First Trademark Directive (TMD), the wording of which is identical to that of Article 7(1)(g) CTMR, the circumstances for refusing registration referred to in Article 7(1)(g) CTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see judgment of 30/05/2006, C-259/04, ‘Elizabeth Emanuel’, para. 47 and the case-law cited therein).

Pursuant to the above, the Office, as a matter of practice, makes the twin assumptions that:

1. There is no reason to assume that a trade mark is intentionally applied for to deceive customers. No deceptiveness objection should be raised if a non-deceptive usage of the mark is possible vis-à-vis the goods and services specified: i.e. an assumption is made that non-deceptive use of the sign will be made if possible,

2. The average consumer is reasonably attentive and should not be regarded as particularly vulnerable to deception. An objection will generally only be raised where the mark leads to a clear expectation which is patently contradictory to, for instance, the nature or quality or geographical origin of the goods.

An objection should be raised when the list of goods/services is worded in such a way that a non-deceptive use of the trade mark is impossible.

The cancellation division does not consider that the use of the contested mark

to distinguish cocoa, chocolate, cocoa based and/or chocolate-based beverages and preparations for making beverages; All these products being natural and/or with toppings and/or stuffed and/or flavoured, would deceive the public as the trade mark does not represent the goods in questions and because of the market reality and consumers habits and perception. If the sign is used for beverages or preparation to make beverages, it would be perceived as fanciful as biscuits and beverages are not usually sold together, their packaging and content is different. The mark can work as a figurative mark not necessarily giving indication as to the nature of the products themselves except maybe that chocolate is involved which in fact is the case.

Similarly, if the sign is use to distinguish products related to waffles, cakes, pastries; bread, rusks; cereal bars; cereal preparations while what is represented is a biscuit, or wafer, one would maybe expect to buy the represented biscuit because these specific bakery products, pastries or cereal products are usually sold in the same area of a supermarket or in bakeries. Nevertheless, the fact that the goods in question are in competition and can have the same origin, which make them similar, does not mean that the public would be deceived in case the image of one good is used to distinguish other similar goods.

The cancellation division would like to underline that the fact that these goods are refused based on deceptiveness means by definition that they have been accepted on distinctiveness which means that the shape of these goods cannot be the shape represented. A waffle, a cake, bread, pastries, rusks, or cereal goods can take a variation of shapes none of which come close to the represented biscuit.

In addition, contrarily to what the CTM proprietor tried to illustrate, the shape represented is the shape of a biscuit made of flour and chocolate and not a packaging made of plastic or cardboard material. Therefore, all the arguments trying to demonstrate that the shape in question can also be the shape of packaging of goods other than biscuits in order to demonstrate that the contested registration is not deceptive are not relevant.

Nevertheless, if a consumer is shown a biscuit topped with chocolate used as a trademark, it will not necessarily expect to get a waffles, pastries, cakes, bread, pastries, rusks or cereal products having that shape. This is why there is no deception. Deception in this case would mean that represented biscuits have higher qualities than waffles, pastries, cakes, bread, pastries, rusks or cereal products which is not the case. The consumer would be probably puzzled by the use of the mark on similar goods with a different nature but it is considered the mark could function as a figurative trade mark. There will be no actual deceit or a serious risk that the consumer will be deceived. As regards to the contested goods in Class 30 the consumer will not be deceived as it will believe that the goods in question will be biscuits as they are clearly not biscuits and have a different shape than the one represented, something the reasonable attentive consumer will be aware off. Therefore, the relevant consumer will not be misled into thinking that these products are biscuits, even though the contested mark represents a biscuit. They may perceive the goods as containing chocolate, or they may wonder whether the goods indeed contain chocolate (bread and rusks can also contain chocolate). But the situation in which the consumer is exactly aware of the relevant good not being biscuits as such cannot be described as actual deceit or risk of deception (see in the same sense decision of the Board of Appeal, R 1293/2011-4- SHAPE OF A BOTTLE QUINTA DE S. VICENTE/PASSANHA et al., of 18/12/2012, paragraph 44).

The applicant considers the deceptiveness of the contested trade mark for other goods in class 30 is supported by a decision of the OHIM of 30/09/2005 in relation to three dimensional CTMA No 3 514 171 covering chairs and furniture, found not distinctive for chairs and deceptive for other furniture (Enclosure 8).

Nevertheless, the Office is not bound by a previous decision. In addition, the field of furniture and of biscuits have nothing in common and what can be defended for chairs and furniture cannot necessary be extrapolated to biscuits.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is partially successful and the Community trade mark should be declared invalid for part of the contested goods, namely:

Class 30: Bakery products, pastries, confectionery, namely, biscuits (sweet or savoury), wafers, all these products being natural and/or with toppings and/or stuffed and/or flavoured.

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Ana MUÑIZ RODRIGUEZ Jessica LEWIS Isabel DE ALFONSETI HARTMANN

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.