Leitsätzliches
Das europäische Gericht erster Instanz hat im Sommer 2009 entschieden, dass dem Schokoriegel Bounty bezüglich der Form kein dreidimensionaler Markenschutz innerhalb der europäischen Gemeinschaft zukommt.

EuG zur Eintragungsfähigkeit dreidimensionaler Formmarken - Urteil vom 08.07.2009 , - T-28/08 -

 

Dreidimensionale Marke, - EuG, Urteil vom 08. Juli 2009, Az. T-28/08 -

Entscheidung vom 08. Juli 2008
Aktenzeichen: T-28/08

 

 

JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)

8 July 2009 (*)

 

(Community trade mark – Invalidity proceedings – Community three-dimensional mark – Shape of a chocolate bar – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EC) No 207/2009) – Lack of distinctive character acquired through use – Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009) – Right to be heard – Articles 73 and 74 of Regulation No 40/94 (now Articles 75 and 76 of Regulation No 207/2009))

 

In Case T-28/08,

Mars, Inc., established in McLean, Virginia (United States), represented by A. Bryson, Barrister, and G. Mills, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Ludwig Schokolade GmbH & Co. KG, established in Bergisch Gladbach (Germany), represented by M. Knitter and R. Jacobs, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 October 2007 (Case R 1325/2006-2), relating to invalidity proceedings between Ludwig Schokolade GmbH & Co. KG and Mars, Inc.,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),

composed of O. Czúcz, President, I. Labucka and K. O’Higgins (Rapporteur), Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 14 January 2008,

having regard to the response of OHIM lodged at the Court Registry on 28 March 2008,

having regard to the response of the intervener lodged at the Court Registry on 16 April 2008,

further to the hearing on 27 January 2009,

gives the following

 

Judgment

 Background to the dispute

On 7 May 1998, the applicant, Mars, Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)), relating to the three-dimensional mark reproduced below:

 

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The goods in respect of which registration was sought are in Classes 5, 29 and 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 5: ‘Medicated confectionery’;

–        Class 29: ‘Snack foods’;

–        Class 30: ‘Non-medicated confectionery; pastries, cakes, biscuits; ices, ice cream, ice cream products, frozen confections; chilled desserts, mousses, sorbets’.

On 24 April 2003, the mark was registered for all the goods in respect of which registration had been sought.

On 11 December 2003, the intervener, Ludwig Schokolade GmbH & Co. KG (‘Ludwig Schokolade’) filed an application for a declaration that the Community trade mark at issue was invalid pursuant to Article 51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009), on the ground that the registration of that trade mark infringed the provisions of Article 7(1)(b), (c) and (e)(i) of that regulation (now Article 7(1)(b), (c) and (e)(i) of Regulation No 207/2009).

By decision of 10 August 2006, the Cancellation Division rejected the application for a declaration of invalidity on the ground that the mark in question was devoid of any inherent distinctive character, but that it was not directly descriptive and did not infringe the provisions of Article 7(1)(e)(i) or (ii) of Regulation No 40/94 (Article 7(1)(e)(ii) is now Article 7(1)(e)(ii) of Regulation No 207/2009). The Cancellation Division also found that the conditions referred to in Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009) had been met and that the mark had therefore acquired distinctive character through use.

On 11 October 2006, Ludwig Schokolade filed a notice of appeal against that decision pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).

By decision of 23 October 2007 (‘the contested decision’), the Second Board of Appeal of OHIM allowed the appeal and accordingly declared the registration of the Community trade mark in question invalid.

In essence, the Board of Appeal found, first, that the Cancellation Division was right to regard the mark at issue as ineligible for registration under Article 7(1)(b) of Regulation No 40/94 on the ground that its appearance does not depart significantly from the norms and customs of the relevant sector. Secondly, the Board decided that it was not necessary to consider whether Article 7(1)(c) of Regulation No 40/94 was applicable. Thirdly, the Board of Appeal found that the documents submitted by the applicant were insufficient to demonstrate that the mark at issue had acquired distinctiveness through use in connection with the goods concerned in the part of the European Community in which it had not ab initio had such distinctive character, in accordance with Article 7(3) and Article 51(2) of Regulation No 40/94 (now Article 52(2) of Regulation No 207/2009). Lastly, in view of that finding, the Board did not evaluate whether the applicant had provided sufficient proof of use of the mark at issue in respect of the United Kingdom, Belgium, France, Germany, Italy and the Netherlands and did not evaluate the evidential value of the consumer surveys submitted by the applicant.

 Forms of order sought

The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

Ludwig Schokolade contends that the Court should:

–        uphold the contested decision;

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

1.     The new expert report submitted by Ludwig Schokolade

By letter of 18 December 2008, the parties were informed that the date for the hearing in the present case had been set as 27 January 2009.

By letter of 22 December 2008, Ludwig Schokolade requested that the Court defer the hearing on the ground that it wished to submit a new expert report showing that the shape applied for should be refused registration under Article 7(1)(e)(i) of Regulation No 40/94 because it is a sign which consists exclusively of the shape which results from the nature of the goods themselves.

The expert report and its English translation, submitted by Ludwig Schokolade, were lodged at the Court Registry on 14 January 2009.

In its preliminary observations of 22 January 2009, the applicant disputed the admissibility of that expert report on the ground that it is a new plea in law introduced in the course of proceedings, which is prohibited by Article 48(2) of the Rules of Procedure of the Court of First Instance. Furthermore, relying on the judgment in Case C-16/06 P Éditions Albert René v OHIM [2008] ECR I-0000, paragraph 137, the applicant also argued that facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before the Court of First Instance.

OHIM also disputed the admissibility of the expert report at the hearing.

It must be borne in mind that it is apparent from Article 46(1)(d) in conjunction with Article 135 of the Rules of Procedure that the response of an intervener in a trade marks case must contain all the evidence he is relying on.

In the present case, Ludwig Schokolade did not submit the expert report in question as an Annex to its response. That report was lodged only a few days before the hearing, and the Court cannot accept an item of evidence submitted so belatedly. Furthermore, it must also be pointed out that that report was not submitted before the Board of Appeal and that Ludwig Schokolade did not in any case claim infringement of Article 7(1)(e)(i) of Regulation No 40/94 in its response.

It follows that the expert report submitted by Ludwig Schokolade will not be taken into account.

2.     Substance

In support of its action, the applicant relies on three pleas in law alleging infringement, respectively, of Article 7(1)(b) of Regulation No 40/94, of Articles 7(3) and 51(2) of that regulation, and of Articles 73 and/or 74(1) of that regulation (now Articles 75 and 76(1) of Regulation No 207/2009).

 The first plea: infringement of Article 7(1)(b) of Regulation No 40/94

 Arguments of the parties

The applicant submits that the Board of Appeal misread the evidence, thus infringing the provisions of Article 7(1)(b) of Regulation No 40/94. According to the applicant, the application of rounded ends to an elongated rectangular chocolate bar and the three arrows or chevrons on the top of the chocolate bar are features which significantly depart from the norms and customs of the relevant sector. It also maintains that the only examples submitted by Ludwig Schokolade showing such a combination of features are copies of the three-dimensional mark at issue. The Board of Appeal should thus have found that the mark applied for is distinctive.

OHIM and Ludwig Schokolade dispute the applicant’s arguments.

 Findings of the Court

Under Article 7(1)(b) of Regulation No 40/94 trade marks which are devoid of any distinctive character are not to be registered. Furthermore, Article 7(2) of that regulation (now Article 7(2) of Regulation No 207/2009) states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

According to consistent case-law, for a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the product in respect of which registration has been applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, paragraph 32; Case C-64/02 P OHIM v Erpo Möbelwerk [2004] ECR I-10031, paragraph 42; and Case C?144/06 P Henkel v OHIM [2007] ECR I-8109, paragraph 34).

Thus the signs referred to in Article 7(1)(b) of Regulation No 40/94 are signs which are regarded as incapable of performing such a function (Case T-79/00 Rewe-Zentral v OHIM (LITE) [2002] ECR II-705, paragraph 26).

Furthermore, the distinctive character of a trade mark must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of them by the relevant public (Proctor & Gamble v OHIM, paragraph 33; Case C-24/05 P Storck v OHIM [2006] ECR I-5677, paragraph 23; and Henkel v OHIM, paragraph 35).

According to the case-law, the criteria for assessing the distinctive character of three-dimensional trade marks, like that at issue in the present case, are no different from those applicable to other categories of trade mark. However, when those criteria are applied, account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (Case C?136/02 P Mag Instrument v OHIM [2004] ECR I-9165, paragraph 30; Storck v OHIM, paragraphs 24 and 25; and Henkel v OHIM, paragraph 36).

Furthermore, it is also settled case-law that the more closely the shape for which registration as a trade mark is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 (Joined Cases C?456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I?5089, paragraph 39). 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 40/94 (Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 31; Storck v OHIM, paragraph 26; and Case C-144/06 P Henkel v OHIM, paragraph 37).

Therefore, where a three-dimensional mark is constituted by the shape of the product for which registration is sought, the mere fact that that shape is a variant of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. It must always be determined whether such a mark permits the average consumer of that product, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical examination and without paying particular attention (Mag Instrument v OHIM, paragraph 32).

In the present case, it must be pointed out, first, that the parties do not dispute the Board of Appeal’s finding that the relevant public is the average consumer.

Secondly, as regards the allegedly distinctive characteristics of the shape in question, relied on by the applicant, it must be stated, first, that an elongated shape is almost intrinsic to a chocolate bar and does not therefore significantly depart from the norm and customs of the relevant sector. Furthermore, the word ‘bar’ itself suggests that the shape of the product it describes is elongated. It is a shape which comes naturally to the mind of the consumer of mass consumption goods such as the goods concerned (see, to that effect, Case T-396/92 Storck v OHIM (shape of a sweet) [2004] ECR II-3821, paragraphs 39 and 42).

Secondly, the applicant’s argument that ‘applying rounded ends to an elongated rectangular chocolate bar is in itself unusual in the sector’ must also be rejected. As stated by the intervener, which provides a number of examples in that regard, many chocolate bars available on the market display that combination of elements. Furthermore, the applicant itself admitted in the application and at the hearing that there are other chocolate bars on the market which have a shape similar to that of the mark applied for. The applicant has not however shown in what respect those other goods are merely copies of the mark applied for in the present case.

Lastly, as regards the three chevrons on the top of the shape at issue, it must be held that the Board of Appeal was correct to find, in paragraph 26 of the contested decision, that the average consumer of the category of goods concerned will perceive those chevrons, at the most, as decorative elements and not as a sign indicating the commercial origin of the product. The applicant has not established that the relevant consumer would pay particular attention to that characteristic or to the rounded ends to the point of perceiving them as an indication of the commercial origin of the product concerned. As stated by the Board of Appeal, the end user will usually pay more attention to the label on the product or its packaging and the name, image or graphic design displayed thereon than simply to the shape of the product. Furthermore, as the product in question is sold in opaque packaging the consumer will generally see its shape only after having removed that packaging.

Consequently, the Board of Appeal showed to the requisite legal standard that none of the characteristics of the shape of the mark at issue, taken alone or combined with the mark’s other characteristics, is distinctive. As the shape in question, taken as a whole, cannot be sufficiently distinguished from other shapes commonly used for chocolate bars, it does not permit the relevant public immediately and with certainty, without conducting an analytical examination and without paying particular attention, to distinguish the applicant’s chocolate bars from those with a different commercial origin. Accordingly, the shape applied for is itself devoid of any distinctive character in relation to the goods concerned.

It is apparent from all of the foregoing that the Board of Appeal did not infringe Article 7(1)(b) of Regulation No 40/94. Consequently, the first plea must be rejected as unfounded.

 The second plea: infringement of Articles 7(3) and 51(2) of Regulation No 40/94

The applicant maintains that the Board of Appeal made a certain number of errors in its application of Articles 7(3) and 51(2) of Regulation No 40/94. It puts forward four claims in support of its second plea.

 The first claim, relating to the geographical scope of the evidence submitted by the applicant

–       Arguments of the parties

The applicant submits that the Board of Appeal erred in requiring proof that the mark at issue was distinctive in each of the 15 Member States of the Community at the time, ‘on a country by country basis’, and regardless of variations in local market size, which may be justified in the case of a word mark facing an objection under Article 7(1)(c) of Regulation No 40/94, but is not justified in the case of a three-dimensional mark facing an objection under Article 7(1)(b) of that regulation.

The applicant maintains that, in the latter case, there is no reason to approach the question of acquired distinctiveness on a country by country or region by region basis, and no justification for precluding registration of a mark simply on the basis that it has not been shown that the mark has acquired distinctiveness through use within the territory of a particular Member State. It is sufficient that at least a significant proportion of the relevant consumers in the ‘single market … [for] chocolate bars … [in] the Community … taken as a whole’ identify the goods in question with the applicant because of the trade mark applied for.

The applicant maintains that the evidence which it submitted in respect of the United Kingdom, Belgium, France, Germany, Italy and the Netherlands, which represent around 85% of the total Community market, is ‘more than ample evidence’ to satisfy that criterion. It submits that the Board of Appeal erred in finding that those six Member States do not form a sufficiently substantial part of the Community to permit the applicant to invoke Article 7(3) of Regulation No 40/94 successfully.

Lastly, the applicant submits that, in considering the question of distinctive character acquired through use on a country by country or region by region basis, the Board of Appeal infringed the aim and purpose of the single market.

OHIM and Ludwig Schokolade dispute the applicant’s arguments.

–       Findings of the Court

Under Article 7(3) of Regulation No 40/94, the absolute grounds set out in Article 7(1)(b) to (d) of that regulation (Article 7(1)(d) is now Article 7(1)(d) of Regulation No 207/2009) do not preclude the registration of a trade mark if, in relation to the goods for which registration is sought, that mark has become distinctive in consequence of the use which has been made of it.

Likewise, Article 51(2) of Regulation No 40/94 provides that, ‘[w]here the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered’.

It is apparent from the case-law that the acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the goods or services concerned as originating from a particular undertaking because of the mark (Case T-399/02 Eurocermex v OHIM (shape of a beer bottle) [2004] ECR II-1391, paragraph 42). However, the circumstances in which the requirement related to the acquisition of distinctive character through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages (see, by analogy, Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 52, and Case C-299/99 Philips [2002] ECR I-5475, paragraphs 61 and 62).

It is also settled case-law that, in order to have the registration of a mark accepted under Article 7(3) of Regulation No 40/94, the distinctive character acquired in consequence of the use of that mark must be demonstrated in the part of the Community where it was, ab initio, devoid of any such character under Article 7(1)(b) to (d) of that regulation (Case C-25/05 P Storck v OHIM [2006] ECR I?5719, paragraph 83; Case T-91/99 Ford Motor v OHIM (OPTIONS) [2000] ECR II-1925, paragraphs 26 and 27; Case T-402/02 Storck v OHIM (shape of a sweet wrapper) [2004] ECR II-3849, paragraph 78; and judgment of 12 September 2007 in Case T-141/06 Glaverbel v OHIM (texture of a glass surface), not published in the ECR, paragraph 40).

In the present case, the Board of Appeal found, in paragraph 32 of the contested decision, that ‘[t]he mark applied for [had] been found to be non-distinctive in the entire Community, which at the filing date of the [applicant’s] trade mark, namely 7 May 1998, consisted of 15 Member States’. It is thus in the entire Community, consisting of the then 15 Member States, that the mark applied for must have acquired distinctive character through use in order to be registrable under Article 7(3) of Regulation No 40/94 (see, to that effect, Case C?25/05 P Storck v OHIM, paragraphs 81 to 86).

Accordingly, the Board of Appeal did not err in requiring evidence of distinctive character acquired through use in the 15 Member States which were part of the Community at the time when the trade mark application was filed.

The applicant’s arguments based on the difference between Article 7(1)(b) and Article 7(1)(c) of Regulation No 40/94 and on infringement of the aim of the single market cannot be accepted. Under Article 7(1)(b) of Regulation No 40/94, read in conjunction with Article 7(2) thereof, a mark must be refused registration if it is devoid of any distinctive character in part of the Community. The part of the Community referred to in Article 7(2) may be comprised of a single Member State (Case C-25/05 P Storck v OHIM, paragraphs 81 to 83; see also the Opinion of Advocate General Ruiz-Jarabo Colomer in that case, ECR I-5724, points 75 to 83). The Board of Appeal thus rightly examined the evidence concerning distinctive character acquired through use for each Member State separately (see, to that effect, Texture of a glass surface, paragraph 40).

The first claim must therefore be rejected.

 The second claim, relating to the alleged ‘distortion’ of the evidence submitted

–       Arguments of the parties

The applicant submits that, even if the Court were to hold that the Board of Appeal was right to require proof of distinctive character acquired through use in each of the 15 possibly relevant Member States, the evidence which it produced was sufficient for that purpose. It bases its argument principally on the results of consumer surveys carried out in the United Kingdom, Belgium, France, Germany, Italy and the Netherlands, examples of advertising used in five of those countries, statements from trade associations and members of the trade, consumer witness statements taken in the United Kingdom, Germany and the Netherlands in 2004, sales and advertising figures, and the dates on which the product sold under the BOUNTY trade mark was introduced in 14 Member States. The applicant also produced, as an Annex to the application, market share values in respect of the product concerned for the year 1998.

The applicant alleges in essence that the Board of Appeal based its decision on comparative ‘sales figures and advertising expenditure in relation to the population’ and failed to take account of evidence relating to the sizes of the different markets and to the long period over which the mark at issue had been used. The applicant relies on the market shares in table 3 of Annex A2 to the application to contend that the product sold under the BOUNTY trade mark has a significant share of the regional markets and that its market share across the six countries in which consumer surveys were undertaken (3.8%) is not dissimilar from its share of the total European market (3.57%). Accordingly, and taking into account the very long-standing use of the mark in question in those markets, the applicant submits that the Board of Appeal should have endorsed the Cancellation Division’s decision to extrapolate the results of consumer surveys in those six countries to the nine other countries of which the Community consisted at the time when the trade mark application was filed, namely, Austria, Denmark, Finland, Greece, Ireland, Luxembourg, Portugal, Spain and Sweden.

OHIM and Ludwig Schokolade dispute the applicant’s arguments.

–       Findings of the Court

It must be pointed out, first of all, that it is apparent from the case-law of the Court of Justice that, in determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings (Windsurfing Chiemsee, paragraph 49).

In that regard, it is necessary to take into consideration, inter alia, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; statements from chambers of commerce and industry or other trade and professional associations and opinion polls (Windsurfing Chiemsee, paragraph 51; and Philips, paragraph 60; see also, to that effect, Shape of a beer bottle, paragraph 44).

In the present case, in the first place, as was pointed out by the Board of Appeal in paragraph 34 of the contested decision, it should be noted that almost all of the evidence filed by the applicant concerns only six Member States, namely the United Kingdom, Belgium, France, Germany, Italy and the Netherlands. In respect of the other nine Member States which were part of the Community at the time when the trade mark application was filed, the applicant has provided only figures on sales, advertising expenditure and market shares. The results of the surveys carried out in the abovementioned six Member States and the witness statements taken in three of those States cannot be extrapolated to the other nine Member States on the sole basis of those figures.

The applicant bases its extrapolation mainly on table 3 of Annex A2 to the application, which summarises the market shares in 14 Member States, and on a table on page 5 of Annex A3 to the application, which summarises the rates of recognition of the chocolate bar sold under the BOUNTY trade mark in surveys carried out in Belgium, France, Germany, Italy and the Netherlands. The United Kingdom is not included in the second table, but the applicant states, in paragraph 6 of Annex A3, that the rate of recognition of the chocolate bar sold under the BOUNTY trade mark in the consumer survey it carried out in the United Kingdom was 70%.

It is clear from table 3 that the market shares of the product sold under the BOUNTY trade mark are not as uniform as the applicant claims. Although the product’s market share in the Netherlands is 10.42%, it is only 0.68% in Sweden and 0.24% in Finland. It must be pointed out that the Swedish market, measured in terms of total value in euro for all chocolate bars (third column of table 3 of Annex A2), is much larger than the Netherlands market (EUR 131 866 000 and EUR 78 500 000 respectively, despite the fact that Sweden has around 6 million fewer inhabitants). Furthermore, the market comprising Sweden, Finland and Denmark constitutes a larger share of the European market for chocolate bars than the Netherlands and Belgium combined (6.94% and 5.06% respectively).

The same applies when the French market is compared with the market comprising Sweden, Finland and Denmark. Those markets are approximately the same size (EUR 258 599 000 in respect of the Swedish, Finnish and Danish markets and EUR 256 979 000 in respect of France) but the market shares of the product sold under the BOUNTY trade mark are nevertheless very different (1.34% in respect of Sweden, Finland and Denmark and 5.98% in respect of France).

In addition, it should also be pointed out that the rates of recognition of the product concerned are also far from uniform. Thus, the rates of recognition in the table on page 5 of Annex A3 double as between Italy (where 44% of consumers had purchased chocolate in the previous month) and the Netherlands (82%). However, the Italian market is much larger than the Netherlands market when measured in terms of total value in euro for all chocolate bars (EUR 185 548 000 and EUR 78 500 000 respectively).

Furthermore, it should be borne in mind that, according to the judgment in Windsurfing Chiemsee, market share is only one factor to be taken into consideration in the context of a more overall assessment in respect of distinctive character acquired through use. It is true that the market shares provided in the present case show that the chocolate bar sold under the BOUNTY trade mark was sold on the markets in question, but they are not sufficient to prove that the shape at issue was itself used as a mark to designate the product concerned or that consumers would recognise its commercial origin in Austria, Denmark, Finland, Greece, Ireland, Luxembourg, Portugal, Spain and Sweden (see, to that effect, Shape of a sweet wrapper, paragraph 83, and Texture of a glass surface, paragraph 41).

Given that it is not possible to extrapolate the results of the surveys carried out in the six Member States on which the applicant bases its argument, it should have provided more evidence as regards the other nine States (see, to that effect, Texture of a glass surface, paragraph 41). As the Board of Appeal pointed out in paragraph 41 of the contested decision, ‘[n]o examples of use of the mark as applied for on packages, advertising or other promotional material, nor witness statements, declarations or market surveys, or any other further material has been provided for these Member States’.

In the second place, as regards the applicant’s arguments based on advertising figures, first, it must be stated that it is difficult to measure the relative significance of the applicant’s advertising investments in the absence of data which make it possible to imagine the volume of advertising in the product market in question (see, to that effect, Shape of a sweet wrapper, paragraph 84).

Secondly, it is likewise not possible, in the light of the table relating to advertising costs, which was produced by the applicant and appears on page 2 of Annex A3 to the application, to ascertain whether those costs were incurred exclusively to promote chocolate bars the shape of which is covered by the trade mark application at issue (see, to that effect, the judgment of 15 December 2005 in Case T-263/04 BIC v OHIM (Shape of an electronic lighter), not published in the ECR, paragraphs 71 to 73).

Lastly, it is apparent from that table that the advertising costs incurred were not very high in a large number of Member States and are missing for certain of those States. Thus, no figure as regards those costs was provided for the year 1998, which was however the year in which the trade mark application was filed at OHIM. Likewise, although the market for chocolate bars in Sweden is larger than that of the Netherlands, the applicant spent only USD 10 999 on the promotion of the product sold under the BOUNTY trade mark in that country in 1996. It spent barely USD 315 in Portugal in 1994 and has not provided any figures for the following years.

The Board of Appeal was therefore fully entitled to find, in paragraphs 36 to 38 of the contested decision, that the evidence adduced regarding the advertising and promotional investments in respect of the trade mark applied for was insufficient.

As regards, lastly, the applicant’s arguments based on the period of use of the mark applied for, it must be pointed out that the fact that the sign at issue has been used for a long time in certain Member States is not sufficient, as such, to show that the public targeted by the product perceives it as an indication of commercial origin (Texture of a glass surface, paragraph 42). In addition, it is apparent from Ludwig Schokolade’s response and the documents in the file that other undertakings have been marketing goods with a shape very similar to that of the mark applied for for at least as long as the applicant.

In addition, it must be stated that there is not necessarily a link between the period of use and the product’s market share. Accordingly, the chocolate bar sold under the BOUNTY trade mark has been marketed for more than 30 years in the Netherlands (since 1962), as in Sweden (since 1978), but the product’s market share in Sweden is far smaller than that given for the Netherlands.

In the light of the foregoing, the Board of Appeal was right to find that the evidence supplied by the applicant was insufficient to demonstrate that the mark applied for had acquired distinctiveness through use in the part of the Community in which it had not ab initio had such distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

Accordingly, the applicant’s second claim must be rejected.

 The third claim, relating to the alleged application of the wrong legal tests

–       Arguments of the parties

The applicant maintains that the Board of Appeal did not apply the correct legal tests in its assessment of the evidence in that it required evidence of particular steps taken to ‘educate the public’ (paragraph 32 of the contested decision) and considered that the absence of examples of packaging and advertising or promotional material for certain Member States did not support the finding that the mark had acquired distinctive character through use (paragraph 41 of the contested decision). According to the applicant, the Board of Appeal therefore erred in law and should have carried out an overall assessment of the evidence in accordance with the criteria laid down in Windsurfing Chiemsee.

OHIM disputes the applicant’s arguments.

–       Findings of the Court

Contrary to what the applicant maintains, it is not apparent from the contested decision that the Board of Appeal made the requirement of particular steps to educate the public an essential condition for acknowledging the acquisition of distinctive character through use. Paragraph 32 of the contested decision appears to be merely a reformulation of the principle that acquisition of distinctive character through use requires that at least a significant proportion of the relevant section of the public identify the product concerned as originating from a particular undertaking because of the mark. The use in that paragraph of the word ‘educated’ goes hand in hand with the words ‘exposure to the mark’ and must not be perceived as a new and independent condition.

Likewise, as regards paragraph 41 of the contested decision, the Board of Appeal merely described the kind of evidence which it would have been useful to produce in order to show that distinctive character had been acquired through use in Austria, Denmark, Finland, Greece, Ireland, Luxembourg, Portugal, Spain and Sweden. Furthermore, contrary to what the applicant appears to suggest, the Board of Appeal not only lamented the absence of examples of packaging or advertising material but also referred to the absence of ‘witness statements, declarations or market surveys, [and] any further material’ for those nine Member States.

Accordingly, the Board of Appeal did not apply the wrong legal tests and the applicant’s arguments under the third claim must be rejected.

 The fourth claim, relating to the absence of certain evidence

–       Arguments of the parties

Although it concedes that it should have provided certain packaging and advertising or promotional material in respect of the 15 Member States which were part of the Community at the time, the applicant submits that by refusing to rely on the evidence provided in respect of the six Member States referred to above in order to extrapolate that such material existed in the other nine Member States, the Board of Appeal ‘distorted the evidence before it and/or failed to make a proper assessment of the evidence as a whole’.

OHIM and Ludwig Schokolade dispute the applicant’s arguments.

–       Findings of the Court

It is clear that the fourth claim is based on reasoning which is almost identical to that put forward in the context of the second claim set out above in respect of extrapolation from data. The applicant seeks to extrapolate the existence of certain advertising material in the six Member States covered by its surveys to the other nine Member States which were part of the Community at the time. Consequently, the fourth claim must be rejected on the same grounds as those set out under the second claim.

Furthermore, the document produced as Annex A4 to the application must be disregarded on the ground that it was produced for the first time before the Court.

According to settled case-law, the purpose of an action before the Court is to review the legality of the decisions of the Boards of Appeal of OHIM within the meaning of Article 63 of Regulation No 40/94. It follows from that provision that facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the action brought before the Court. It also follows from that provision that the Court cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it because the legality of a decision of a Board of Appeal of OHIM must be assessed in the light of the information available to it when it adopted that decision (Éditions Albert René v OHIM, paragraphs 136 to 138). A document which was not produced during the administrative procedure before OHIM cannot therefore call into question the legality of the contested decision (Shape of an electronic lighter, paragraphs 71 to 73, and Shape of a beer bottle, paragraph 52).

That conclusion is not in any way inconsistent with Article 51(2) of Regulation No 40/94, which merely requires that the Board of Appeal take into account all the documents produced in the course of the examination proceedings before the OHIM examiner and the documents produced in the course of the invalidity proceedings. It is clear from the contested decision, in particular from paragraph 33 thereof, that the Board of Appeal complied with that obligation.

In the light of all the foregoing, it must be held that the Board of Appeal did not infringe Article 7(3) or Article 51(2) of Regulation No 40/94. The second plea must therefore be rejected in its entirety.

 The third plea: infringement of Article 73 and/or Article 74(1) of Regulation No 40/94

 Arguments of the parties

The applicant submits that, by relying on the absence of examples of packaging and advertising material for certain Member States, the Board of Appeal relied on a point which had not been raised either by OHIM or by Ludwig Schokolade and on which the applicant has not therefore had an opportunity to present comments or supplement its evidence. The Board of Appeal thus infringed Articles 73 and/or 74(1) of Regulation No 40/94 or otherwise denied the applicant a fair hearing.

OHIM and Ludwig Schokolade dispute the applicant’s arguments.

 Findings of the Court

Article 73 of Regulation No 40/94 provides that ‘[d]ecisions of [OHIM] shall state the reasons on which they are based [and] shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments’.

Article 74 of Regulation No 40/94 provides:

‘1. In proceedings before it [OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

2. [OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned.’

It is apparent from the case-law that there is infringement of the rights of the defence guaranteed by those provisions where the Board of Appeal bases its decision on reasons or evidence on which the interested party has not first had the opportunity to express its view (Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 37 to 44, and Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraphs 20 to 22).

It must be stated that that is not the case here. It is clear from the file that Ludwig Schokolade had already relied on the absence of evidence that distinctive character had been acquired through use in the whole of the relevant territory in its appeal before the Board of Appeal. The applicant therefore had the opportunity to adduce further evidence on that point in the course of the procedure before the Board of Appeal and did not do so. Contrary to what the applicant claims, the absence of examples of packaging or advertising material, witness statements, declarations or market surveys for 9 of the 15 relevant Member States is not a point which the parties had not raised previously.

Ludwig Schokolade correctly points out that the burden of proof rests on the applicant (see, to that effect, Case T-247/01 eCopy v OHIM (ECOPY) [2002] ECR II-5301, paragraphs 47 to 48). It must be stated that the applicant has not adduced the required evidence in support of its argument relating to infringement of its rights of defence.

Consequently, it must be held that the Board of Appeal did not infringe Articles 73 and 74 of Regulation No 40/94 and that the third plea must also be rejected.

Accordingly, the action must be dismissed in its entirety.

 Costs

Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.

On those grounds,

THE COURT OF FIRST INSTANCE (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Mars, Inc. to pay the costs.

Czúcz

Labucka

O’Higgins

Delivered in open court in Luxembourg on 8 July 2009.

[Signatures]