DECISION

of the Second Board of Appeal
of 28 August 2016

In Joined Cases R 360/2016-2 and R 378/2016-2

Generale Biscuit-Glico France
6 Av Réaumur 92140 Clamart France	EUTM proprietor / Appellant in case R 378/2016-2 EUTM proprietor / Respondent in case R 360/2016-2

represented by Alezan Avocats, 9, avenue Percier, 75008 Paris, France

v

Griesson – de Beukelaer GmbH & Co. Kg
August-Horch-Str. 23 56751 Polch Germany	Cancellation applicant / Appellant in cases R 360/2016-2 Cancellation applicant / Respondent in case R 378/2016-2

represented by Jonas Rechtsanwaltsgesellschaft MBH, Hohenstaufenring 62, 50674 Köln, Germany

APPEAL relating to Invalidity proceedings No 9 944 C (registered EUTM No 9 391 401)

The Second Board of Appeal

composed of T. de las Heras (Chairperson and Rapporteur), R. Ocquet (Member) and H. Salmi (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 21 September 2010, Générale Biscuit-Glico France (‘the EUTM proprietor’) sought to register the 3D mark

for the following list of 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.

2. The mark claimed the colours ‘yellow and brown’.

3. The mark was registered on 30 September 2011.

4. On 13 October 2014, Griesson - de Beukelaer GmbH & Co. KG (‘the cancellation applicant’) filed an invalidity request against the registered mark, pursuant to Article 52(1)(a) EUTMR, in conjunction with Article 7 EUTMR. Its reasons can be summarized as follows:

• The mark does not significantly depart from the normal shape of goods falling in the categories ‘bakery products’, ‘pastries’, ‘confectionery’ and goods falling within these categories; therefore, the mark was registered contrary to Article 7(1)(b) EUTMR;

• For goods outside of those categories, the mark is of such a nature so as to deceive the public, since they cannot have the shape as embodied by the mark; therefore, the mark was registered contrary to Article 7(1)(g) EUTMR.

5. On 3 February 2015, the EUTM proprietor filed observations on the request for invalidity. They can be summarized as follows:

• The mark differs from the norms of the sector; confectionery in general is commonly square, circular or rectangular and not oblong;

• Survey evidence shows consumers exposed to the image of the biscuit spontaneously describe the main feature as the oblong shape; the oblong shape is not secondary; it is not a mere variant; the twirls are an additional specific feature;

• The mark has also acquired distinctiveness in the European Union.

6. On 17 December 2015, after further rounds of submissions, the Cancellation Division issued its decision (hereafter ‘the contested decision’) which partially upheld the request for invalidity and declared the challenged mark invalid for the following goods:

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.

7. The mark was allowed to stay registered for the remainder.

8. The contested decision can be summarized as follows:

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

• Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union;

• As regards the assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the mark, 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 EUTM application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing;

• 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 biscuit has the form of a long stick and the chocolate coating uses two different chocolates (one darker than the other) the darkest chocolate being twisted around the stick. A wafer being a type of biscuit, this also applies 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 topping 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 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 the absence of other elements;

• The EUTM proprietor mentions that biscuits traditionally have a round or square shape which is not confirmed, for example, by the shape of traditional biscuits sticks (that existed before the contested mark which was filed on 21 September 2010) which are neither rounded nor square, as shown in the previously-listed enclosures;

• The EUTM proprietor argues that not a single image shows biscuits having the same appearance. This does not mean that the shape filed can work as a badge of origin as regards the relevant public. What is assessed is not the novelty or the individual character of the appearance of a product 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 previously-mentioned public, 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 on the market prior to its filing;

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

• The same applies to the chocolate embellishment around the stick that has nothing in particular to allow it to be seen as an origin indicator. Chocolate is traditionally used as an embellishment on biscuits or wafers and the use of two different toppings, one being twirled around the other, is not unusual;

• Both the shape of the product 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 incapable 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) EUTMR;

• It is found to have a minimum distinctive character for, at least, the remaining goods, such 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, as it will not be perceived as having any relevant relationship with the goods.

Acquired distinctiveness – Article 7(3) EUTMR and Article 52(2) EUTMR

• In cancellation proceedings, a trade mark which was registered in breach of the provisions of Article 7(1)(b), (c) or (d) EUTMR 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 distinctive character for the goods or services for which it is registered (Article 52(2) EUTMR);

• 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 EUTMR;

• Article 7(3) EUTMR constitutes an exception to the rule laid down in Article 7(1)(b), (c) or (d) EUTMR, 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 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 EUTM 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) EUTMR 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 otherwise would have applied;

• In this case, it was incumbent upon the EUTM proprietor to demonstrate to the Cancellation Division that its mark had acquired distinctive character throughout the European Union where the absolute ground for refusal arose, either: before the filing date of the mark on 21 September 2010 when the European Union covered 27 counties; or between the date of registration on 30 September 2011 (the European Union covered 27 countries) and the application for a declaration of invalidity on 13 October 2014 (the European Union covered 28 countries);

• In its observations, the EUTM 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 than the registration date of the mark. In other words, the evidence must relate to a market that by mid-2012 covered 27 countries and 28 as from July 2013;

Territorial Aspects

• Pursuant to Article 1 EUTMR, a European trade mark has a unitary character and has equal effect throughout the European Union. Article 7(2) EUTMR 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;

• 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 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’;

• 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 EUTM proprietor 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 the data is comparable, may the Office extrapolate the results from one territory to another. For example, if the EUTM 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 EUTM 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 EUTM proprietor, the evidence of use describe above related to the following territories: France, Spain, the United Kingdom, Austria, Germany and 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 large markets in term of population such as Italy or Poland. Entire markets of the European Union are left out the evidence, such as the Scandinavian or Central European markets. In other words, an extrapolation of the evidence filed for six 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 cancellation applicant;

Deceptiveness – Article 7(1)(g) EUTMR

• Article 7(1)(g) EUTMR provides that marks which are of such a nature so 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) EUTMR, the circumstances for refusing registration referred to in Article 7(1)(g) EUTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived;

• 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 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; and 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, quality or geographical origin of the goods;

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

• The Cancellation Division does not consider that 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 question, because of market reality and consumers’ habits and perception. If the sign is used for beverages or preparations 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 an 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 biscuit represented 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 if 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, cake, bread, pastries, rusks, or cereal goods can take a variety of shapes, none of which comes close to the biscuit represented;

• In addition, contrarily to what the EUTM 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. Therefore, all the arguments trying to demonstrate that the shape in question can also be the shape of the goods’ packaging, 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 trade mark, he or she will not necessarily expect to get 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 the biscuits represented have higher qualities than waffles, pastries, cakes, bread, pastries, rusks or cereal products, which is not the case. The consumer would probably be 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 the contested goods in Class 30, the consumer will not be deceived into believing that the goods in question are biscuits, since they are clearly not biscuits; they have a different shape than the one represented, something the reasonable attentive consumer will be aware of. 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). However, 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.

9. On 17 February 2016, in appeal proceedings R 378/2016-2 the EUTM proprietor filed a notice of appeal against the contested decision.

10. On 18 April 2016, in appeal proceedings R 378/2016-2, the EUTM proprietor submitted its grounds of appeal.

11. On 10 May 2016, in appeal proceedings R 378/2016-2 the cancellation applicant filed observations on the grounds of appeal.

12. On 16 February 2016, in appeal proceedings R 360/2016-2, the cancellation applicant filed a notice of appeal against the contested decision.

13. On 21 March 2016, in appeal proceedings R 360/2016-2, the cancellation applicant submitted its grounds of appeal.

14. On 31 March 2016, in appeal proceedings R 360/2016-2, the EUTM proprietor, filed observations on the grounds of appeal.

Arguments and submissions of the parties

15. The cancellation applicant requests that the Board partly annul the contested decision and invalidate the EUTM registration in its entirety. Its arguments can be summarized as follows:

Grounds of appeal

• The Cancellation Division confirmed the non-distinctive character of the features of the shape of the contested mark; it is not likely to be perceived by consumers as an indication of origin, because it cannot be distinguished from other shapes; nevertheless, the Cancellation Division argued that for some goods (i.e. the goods for which the mark has been allowed to remain registered) the mark has a minimum degree of distinctive character; the decision therefore is contradictory; it separates waffles and biscuits, but reveals no differentiation for the remaining categories; the decision leads to misunderstandings and confusion;

• The shape in question is either normal for the goods (and hence to be rejected pursuant to Article 7(1)(b) EUTMR ) or deceptive (and hence to be rejected pursuant to Article 7(1)(g) EUTMR);

• The overall impression given by the mark is a mere representation of a stick biscuit with chocolate toppings; the Cancellation Division failed to see that this is transferable to most of the named goods; consumers are used to seeing the goods served in a wide variety of unusual shapes; this is true regarding confectionery and pastries as well;

• It is almost impossible to distinguish between the various possible pastry products; affirming non-distinctiveness for pastries and confectionery leads to affirm the same for bakery products also;

• Moreover, a wide variety of oblong shapes exists in the range of bakery products, pastry and confectionery; even bread, rusks and pastries are commonly served in an oblong shape, with or without chocolate; waffles are sold in stick form these days and are often covered in chocolate;

• It is possible to produce goods with similar characteristics as the mark in the same oblong shape with a chocolate cover and with twirls; the shape applied for looks like a variant shape of a bakery product; so that even if there are no identical shapes, it does not enable the relevant public to distinguish it from other undertakings, without conducting an examination and without paying attention;

• It is common to use chocolate with all kind of shapes, especially as an oblong stick; regarding the mark in question, chocolate is its main ingredient; it is not enough for the shape to be just a variant of a common shape or a variant of a number of shapes in an area where there is a huge diversity of designs;

• Even if the Board were to regard the mark as figurative, distinctiveness cannot be established; while the public is accustomed to recognise a three-dimensional mark as an indicator of source, this is not necessarily the case where the three-dimensional sign is indistinguishable from the product itself;

• The average consumer will perceive the shape as a decorative element and not as a sign indicating the commercial origin of the product; the end-user will pay more attention to the label on the product or its packaging than to the shape of the product;

• Only the combination with words and the brand name would establish distinctiveness for such types of chocolates or cereals; but since the registration lacks such components, this conclusion cannot be drawn;

• For the goods such as cocoa, cocoa-based or chocolate-based beverages and preparations, use of the mark is not possible; they are liquids and just displaying the mark without verbal elements cannot establish distinctiveness;

• Where targeted consumers are made to believe that the goods possess certain characteristics which they do not in fact possess, they will be deceived by the trade mark;

• The goods in question are for mass consumption; they are inexpensive items bought without too much consideration or detailed attention; consumers will expect to receive a biscuit, cookie or similar bakery product when confronted with the trade mark; instead, they will find a completely different product with a whole different structure, such as a cocoa or cereal preparation, which would irritate the consumer;

Observations

• The EUTM proprietor only repeats the same arguments already presented to the Cancellation Division, therefore they cannot lead to a different legal finding; the documents filed on appeal are not sufficient to establish distinctiveness through use;

• The mark is a mere stick with chocolate and swirls; the shape could be any product; it is clear from the case-law that a mark made up of non-distinctive elements is, as a whole, also non-distinctive; the features are typical for bakery products etc.; it will not be perceived by the consumer as an indication of origin; consumers are not used to perceiving the mere three-dimensional stick shape as an indication of origin in the absence of other elements (p. 2, last paragraph);

• Survey evidence showing the mark to be distinctive in France, cannot be extrapolated to the whole of the European Union; in addition, the goods were first promoted in France and have been on sale for a long time; thus the results in other parts of the European Union would differ; it is wrong to assume that evidence of only six Member States is sufficient to prove acquired distinctiveness; France, Spain, the United Kingdom, Austria, Germany and Belgium are ‘quite similar’ and ‘customers are used to similar products’; this ignores the fact that the food market is very diverse; the evidence is not sufficient;

• The oblong shape is not unusual; there are numerous similar products available; the oblong shape is not innovative or significantly different.

16. The EUTM proprietor requests that the Board partly annul the contested decision and allow the challenged mark to remain on the Register in its entirety. Its reasons can be summarized as follows:

Grounds of appeal

• The Cancellation Division has improperly described the features of the mark, considering that the ‘graphic representation depicts a biscuit partly coated with chocolate’; there is no verbal description of a biscuit on the registration certificate; the mark as depicted does not obviously and necessarily correspond to the shape of a biscuit; the contested decision relies on an inaccurate ab initio analysis;

• The mark includes several specific features which makes its whole appearance differ from what is commonly used in the marketplace for similar products;

• In the relevant food sector, bakery products, waffles and wafers are commonly circular, square or rectangular and not oblong; survey evidence shows that 19% of consumers spontaneously identified the presence of twirls as features of said biscuit;

• From a random search, there are statistically no biscuits naturally having the shape of a cylindrical stick; the mark’s shape is unusual for biscuits or wafers; the spiral surrounding the cylindrical stick is not a mere secondary detail; the element creates the impression of rotation and makes the cylindrical part much thicker;

• The mark has been used in France since 2012, alone or in combination with the word ‘MIKADO’; the biscuit’s appearance is easily recognised by the consumer; it is well known; the mark has been used in Spain since 2013, the United Kingdom since 2014, Austria since 2013, Germany since 2013 and Belgium since 2012;

Observations

• The cancellation applicant has failed to grasp that the modifier ‘namely’ in the list of goods restricts the category of ‘bakery products, confectionery’; the mark is not registered for the whole category, but only for the terms which follow the modifier ‘namely’, i.e. ‘bread’, ‘rusks’, ‘waffles’, ‘cakes’ and ‘pastries’; because of this, the cancellation applicant makes an erroneous comparison between pastries and confectionery on the one hand and bakery products on the other, in order to demonstrate that they have common features;

• The cancellation applicant itself admits that the ‘oblong’ shape is unusual for the goods; as far as chocolate products and cereals are concerned, the cancellation applicant has not produced examples of products which are similar to the mark at issue; they are in the shape of a half-cylinder, closer to the shape of a standard chocolate bar;

• With respect to beverages and preparations for making beverages, the mark can function as a figurative mark, as it will not be perceived as having any relationship with the goods;

• According to the Office’s guidelines, the non-deceptive character of a mark is assumed; deception only obtains when the trade mark leads to a clear expectation which is patently contradictory to, for example, the nature, quality or geographical origin of the goods; furthermore, the consumer is aware that the food and beverages industries search for diversification and offer ‘cross branding’ on new products.

Reasons

17. Since each of the parties in the cancellation proceedings has filed an appeal before the Board against the same contested decision, they will thus be examined jointly in accordance with Article 7(1) BoA-RP.

18. The joined appeals comply with Articles 58, 59 and 60 EUTMR and Rule 48(1) CTMIR. Therefore, they are admissible.

19. Pursuant to Article 52(1)(a) EUTMR, a trade mark shall be declared invalid on application to the Office where it has been registered contrary to the provisions of Article 7 EUTMR.

20. In that regard, Article 7 EUTMR, which sets out the absolute grounds for refusal of registration of signs as EUTMs, states in relevant part:

‘The following shall not be registered:

…

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

…

(g) trade 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 service;

...’

21. Signs that are incapable of identifying specifically the origin of the goods covered and 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 purchase must be regarded as devoid of any distinctive character (09/07/2008, T 302/06, E, EU:T:2008:267, § 1).

22. According to settled case-law, the distinctive character of a trade mark, as required under Article 7(1)(b) EUTMR, must be assessed by reference, first, to the goods or services in respect of which registration is sought and, secondly, to the perception of the relevant persons, namely the consumers of the goods or services (12/02/2004, C‑218/01, Perwoll, EU:C:2004:88, § 50).

23. As regards a mark composed of distinct elements, such as the mark in question, the distinctiveness of each taken separately may be assessed in part, but must in any event depend on an appraisal of the composite whole (12/06/2007, T‑190/05, Twist & Pour, EU:T:2007:171, § 43).

24. In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 (14/12/2011, T‑237/10, Clasp lock, EU:T:2011:741, § 19)

25. 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 ((18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 48).

26. 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, 08/04/2003, C‑53/01, C 54/01 & C 55/01, Linde, EU:C:2003:206, § 48).

27. 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 (19/09/2001, T 335/99, T 336/99 & T 337/99, Tabs, EU:T:2001:219, § 49).

28. The challenged mark is reproduced below:

29. The Cancellation Division declared it invalid for the following goods:

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.

30. But note: because of the presence of the adverb ‘namely’, the goods are in fact limited to ‘biscuits’ and ‘wafers’, which are in turn ‘natural’, with ‘toppings’ and are ‘stuffed’ or ‘flavoured’.

31. The reason given for the invalidation of the mark for these goods, was that the mark ‘consists of a combination of features that are typical of the goods in question’ (see p. 6, § 5 of the contested decision).

32. In contrast, the mark was allowed to remain on the register for the following goods:

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.

33. Nevertheless, the Board cannot help but note a difficulty in this division between the goods for which the mark was found distinctive and those for which the mark was found non-distinctive.

34. On the one hand, the mark has been revoked with respect to ‘wafers’, on the grounds that the mark’s shape is ‘typical’ of such goods. However, a ‘wafer’ is a ‘thin crisp cake or biscuit’, a ‘flat disc’, a ‘thin disc’ or ‘thin slice’ (see e.g. the online dictionary.com). None of these shapes corresponds with the mark in question, which takes the form of a thin stick. Therefore, given that the mark is not in the shape of a ‘wafer’, it follows that the objection with respect to these goods—at least as it has been framed by the Cancellation Division’s examiner—cannot be upheld.

35. On the other hand, the mark has been revoked for ‘biscuits’ but allowed for ‘cereal bars’. Nonetheless, since ‘biscuits’ are made out of cereals they cannot be too different from a ‘cereal bar’ or even ‘preparations made out of cereals’. There is no reason why they cannot assume the same shape. The contested decision gives no concrete reasons why the two products are regarded differently.

36. Bearing in mind these observations, the Board finds the outcome of the contested decision tainted with inconsistency.

37. The Board also finds the cancellation applicant’s arguments unsound.

38. The cancellation applicant alleges a ‘contradiction’ in the contested decision, claiming that the mark has been revoked and non-revoked for the same goods, which it identifies as ‘bakery products, pastries and confectionery’ (see p. 2 of its grounds of appeal). However, this is an error. The cancellation applicant has not appreciated the function of the adverb ‘namely’ in the list of goods, which makes it clear that the mark has not been revoked, or kept registered, for these general categories (see the Board’s comments on this point in paragraph 30). When the function of ‘namely’ is understood as a restriction to the broad category, the apparent contradiction disappears.

39. The cancellation applicant repeatedly maintains that the mark is ‘normal’ for the goods, a ‘mere representation of a stick biscuit’, ‘looks like a variant shape of bakery product’ and that ‘confectionery that is shaped liked a stick is very common throughout the EU’.

40. Nevertheless, no solid evidence has been submitted to back up this claim. The cancellation applicant, in the filing of the invalidity request on 13 October 2014, produced eight enclosures which purportedly demonstrated similar chocolate sticks on the market. Enclosure # 1 includes the EUTM proprietor’s so-called ‘Mikado’ sticks which have been on the market for ‘a very long time’. However, the Board can see little relevance in this exhibit, since it is not a third-party product, but the EUTM proprietor’s own product which is partly similar to the challenged mark. The ‘Amicelli’ sticks in Enclosure # 2 are simply that – sticks. They show no spiral features, no ‘stalk’, and no compatible body shape to the mark at issue. The same applies to the chocolate sticks in Enclosures # 3 and # 4. Enclosures # 5 and # 6 reveal chocolate bars, not sticks. Nor do they exhibit any of the secondary features visible in the challenged mark.

41. In its submission of 20 May 2015, the cancellation applicant appears to concede that an Internet search carried out in respect of cookies and biscuits does not return any images of the goods having the same shape as the challenged mark (see p. 2, § 3). It has no substantial response to that fact apart from dismissing it as ‘irrelevant’. Again, however, it makes the error of believing that the mark is registered for confectionery as a broad category (p. 2, § 4), instead of a relatively restricted list of goods. Because of this, the cancellation applicant is clearly in the wrong to suggest that the confectionery sector as a ‘whole’ should be taken into consideration. None of the additional exhibits show any product like the EUTM proprietor’s.

42. In its observations filed in appeal R 378/2016-2, the cancellation applicant revisits its arguments already put forward in the invalidity proceedings. Again it reproduces a number of confectionery products that it claims to be similar to the challenged mark. Nevertheless, the Board once more has to deny any substantial resemblance. The stick-shaped products do not include a ‘shaft’ or reveal any spiral elements. Moreover, they are in the shape of a regular thin tube which does not conform to the body of the challenged mark.

43. The cancellation applicant’s appeal, in R 360/2016-2, fails to improve on arguments already submitted earlier in the proceedings. It points out that a wide variety of ‘oblong shapes throughout bakery products, pastry and confectionery’ exist. In support, it adduces pictures of several products. However, from the outset, the challenged mark does not conform to the description of ‘oblong’. When something is ‘oblong’ it signifies that it is longer than it is wider, and that its cross-section is normally square or circular (see e.g. the online dictionary.com). That is not the case with the challenged mark. It is not correct to call it ‘oblong’, nor even ‘tube’-like. Its body is more like a narrow stick than an ‘oblong’. In any event, the products shown by the cancellation applicant (see p. 4) bear no resemblance whatsoever to the mark in question.

44. The Office’s rejection of the EUTM proprietor’s sister mark (IR 992 606) is not decisive here, since the mark is substantially different to the one at issue in these proceedings and clearly less distinctive. Although it features the same yellow stalk and chocolate-stick body, it lacks the elaborate spiral design which so prominently features in the challenged mark.

45. In the Board’s view, the evidence filed by the cancellation applicant fails to demonstrate that the mark conforms to the norms or customs of the sector. Therefore, there is no reason, in principle, why it cannot serve to indicate trade origin (see by analogy 14/12/2011, T 237/10, Clasp lock, EU:T:2011:741, § 19). On the contrary, the shape, although formed out of relatively simple features, when taken as a whole is seen to possess an index of distinctiveness which is not found in the same or similar products of the sector. The mark consists of a thin stick of chocolate surmounted on a yellow stalk. The stick is spanned from top to bottom by a helix of darker coloured chocolate, suggesting to the eye a rotary movement. It does not resemble the typical bar of oblong chocolate. It does not conform to the typical shape found in trade such as a bar, block, square, rectangle or disc. It cannot be qualified as a ‘wafer’. It does not look like a waffle. It does not take the form of a thin tube such as that of, for example, an After Eight® confection. The mark defies any attempt to reduce it to a typical shape of the goods for which is it registered. Indeed, no obvious word springs to mind which would be apt to describe it in its totality.

46. Moreover, contrary to the cancellation applicant’s assertion, the shape does not comprise merely ‘decorative elements’. All the constituent elements of the mark—the yellow stalk, the pencil-thin stick of chocolate, the spiral or helical effect of darker chocolate—combine to create a single fanciful and aesthetically balanced three-dimensional construction. Since the mark does not take the form of the appearance of the product itself or its packaging, there is no reason why the relevant consumer could not perceive it as a badge of trade origin (see, by analogy, 08/04/2003, C 53/01, C 54/01 & C 55/01, Linde, EU:C:2003:206, § 48). The shape is memorable and will enable the customer to identify it on future occasions for a repeated purchase, if the experience on prior occasions has been positive, or to avoid the purchase, if the experience has been hitherto negative. The challenged mark is, therefore, sufficiently distinctive for the partial objection under Article 7(1)(b) EUTMR to be dismissed.

47. The objection to the mark is also raised under Article 7(1)(g) EUTMR with respect to goods which allegedly cannot take the shape embodied by the challenged mark, i.e. ‘cocoa, cocoa-based chocolate-based beverages and preparations for making beverages’, ‘cereal preparations’ and ‘bread’. However, the Board confirms, and refers to, the relevant part of the contested decision which denied that use of the mark on these goods would deceive the public.

48. The Board could add here that there are no reasons to believe that the mark in question, attached to a package containing e.g. a chocolate drink or preparation for making a drink, would deceive the public. At the very worst, the consumer might be puzzled. The consumer might ask himself what relationship the EUTM proprietor’s three-dimensional mark, which appears like a stick biscuit, has with a chocolate drink; but there are no other relevant consequences. The fact that the consumer might be puzzled, or even—in the cancellation applicant’s words—‘irritated’ does not mean that he or she has been deceived, either intentionally or otherwise. After all, since the challenged mark contains no wording of any kind, there is no possibility of the consumer being confused or led astray by contradictory messages. If follows that, in line with the contested decision, the objection under this ground must be rejected.

49. In conclusion, the invalidity request must be roundly rejected on all counts, since there are no grounds for believing that the mark had been granted protection in the European Union in breach of Article 7 EUTMR.

50. The contested decision is partly annulled.

Costs

51. Pursuant to Article 85(1) EUTMR, the cancellation applicant, as the losing party in the joined appeals, must bear the EUTM proprietor’s representation costs incurred in both proceedings together with the appeal fee borne by the EUTM proprietor in appeal R 378/2016-2. Pursuant to Article 85(6) EUTMR and Rule 94(3), last sentence, CTMIR, it is therefore ordered to reimburse the costs of the EUTM proprietor’s professional representation costs of EUR 1 100 and the appeal fee of EUR 800. As to the invalidity proceedings, the Board orders that the cancellation applicant bear the EUTM proprietor’s representation costs of EUR 450.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the cancellation applicant’s appeal in R 360/2016-2;

2. Upholds in its entirety the EUTM proprietor’s appeal in R 378/2016-2;

3. Orders the cancellation applicant to bear the total amount of EUR 2 350 in respect of the costs and fees incurred by the EUTM proprietor in the appeal and invalidity proceedings.

Signed T. de las Heras

According to Article 6 of Commission Regulation (EC) No 216/96 Signed T. de las Heras

Signed H. Salmi

Registrar: Signed H.Dijkema