Judgment;Information — ECLI:EU:T:2026:185
Date: 2026-03-11
Language of the case: English
Court formation: Sixth Chamber
Procedure: Action for annulment

summary of the pleas in law relied on. It is clear from the case-law of the Court of Justice that the ‘summary of the pleas in law’, which must be stated in any application, as provided for by those articles, means that the application must specify the nature of the grounds on which it is based. Thus, in particular, it is necessary, in order for an action before the General Court to be admissible, that the basic matters of fact and law relied on be indicated, at least in summary form, coherently and intelligibly in the application itself. Whilst the body of the application may certainly be supported and supplemented on specific points by references to extracts from documents annexed thereto, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law which, in accordance with the abovementioned provisions, must appear in the application. In order to guarantee legal certainty and the sound administration of justice, the summary of the applicant’s pleas in law must be sufficiently clear and precise to enable the defendant to prepare its defence and the competent court to rule on the action. Thus, it is not for the General Court to seek and identify, in the annexes, or even in EUIPO’s administrative file, the pleas on which it may consider the action to be based. Similar requirements are called for where a submission is made in support of a plea in law (see judgment of 11 July 2019, Hauzenberger v EUIPO (TurboPerformance), T‑349/18, not published, EU:T:2019:495, paragraph 11 and the case-law cited). 12 Further, references to EUIPO’s administrative file may be taken into consideration only to the extent that it is possible to determine precisely which elements in that file support or complement pleas or arguments expressly set out by the applicant in the body of the pleadings (see judgment of 19 May 2021, Müller v EUIPO (TIER SHOP), T‑535/20, not published, EU:T:2021:283, paragraph 29 and the case-law cited). 13 The Court notes of its own motion, however, that the applicant has not identified which parts of the observations that it submitted before EUIPO would be capable, in its view, of supporting or completing its assertions before the Court, given that it merely makes a general reference to the administrative file, within the meaning of the case-law cited in paragraphs 11 and 12 above. Such a reference is therefore inadmissible. The first part of the single plea in law alleging, in essence, infringement of Article 7(1)(b) of Regulation 2017/1001 14 The applicant submits that the mark applied for does not describe a desirable characteristic of the goods at issue and, therefore, that it meets the minimum requirements for distinctiveness, even to a low degree, for the purposes of Article 7(1)(b) of Regulation 2017/1001. 15 EUIPO disputes the applicant’s arguments. 16 Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered. Article 7(2) of that regulation provides that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. 17 For a trade mark to have distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited). 18 The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, secondly, by reference to the relevant public’s perception of the mark (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited). 19 Signs which are devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001, are those which are incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services covered by that mark, thus enabling the consumer who acquired those goods or services 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 (see judgments of 15 September 2009, Wella v OHIM (TAME IT), T‑471/07, EU:T:2009:328, paragraph 14 and the case-law cited, and of 13 November 2024, DDCF v EUIPO (SUSTAINABLE BY DESIGN), T‑3/24, not published, EU:T:2024:811, paragraph 12 and the case-law cited). 20 As regards, in particular, marks consisting of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use (judgment of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraph 41). As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36 and the case-law cited, and of 28 April 2015, Volkswagen v OHIM (EXTRA), T‑216/14, not published, EU:T:2015:230, paragraph 17 and the case-law cited). 21 Furthermore, although all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, they can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public or setting off a cognitive process in the minds of that public (see judgment of 11 December 2024, Glashütter Uhrenbetrieb v EUIPO (Glashütte ORIGINAL), T‑1163/23, EU:T:2024:890, paragraph 37 and the case-law cited; see also, to that effect, judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57). 22 Thus, the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers, since it can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 45; of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 30; and of 13 May 2020, Global Brand Holdings v EUIPO (XOXO), T‑503/19, not published, EU:T:2020:183, paragraph 33). 23 It follows that a trade mark consisting of such signs or indications must be regarded as being devoid of any distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (see judgment of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraph 17 and the case-law cited). 24 For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicate to the consumer a characteristic of the good or service which, whilst not specific, comes from promotional or advertising information that the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or services (see judgments of 17 April 2008, Nordmilch v OHIM (Vitality), T‑294/06, not published, EU:T:2008:116, paragraph 23 and the case-law cited, and of 1 February 2023, Groschopp v EUIPO (Sustainability through Quality), T‑253/22, not published, EU:T:2023:29, paragraph 27 and the case-law cited; see also, to that effect, judgment of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 30 and the case-law cited). In addition, the mere fact that the semantic content of the mark applied for does not convey any information about the nature of the goods or services concerned is not sufficient to make that sign distinctive (judgments of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 31; of 19 January 2022, Estetica Group Iwona Michalak v EUIPO (PURE BEAUTY), T‑270/21, not published, EU:T:2022:12, paragraph 27; and of 15 March 2023, FA World Entertainment v EUIPO (FUCKING AWESOME), T‑178/22, not published, EU:T:2023:131, paragraph 46). 25 It is in the light of those considerations that the Court must examine whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 by finding that the mark applied for was devoid of any distinctive character having regard to the goods at issue. The relevant public and its level of attention 26 The Board of Appeal noted that the goods at issue were intended mainly for the general public, whose attention tended to be relatively low when it comes to promotional indications. It also noted that the mark applied for consisted of the English word ‘impress’ and, consequently, decided to rely on the perception of the English-speaking public of the European Union. Those assessments, which are not, moreover, disputed by the applicant, must be upheld. The meaning of the mark applied for 27 The Board of Appeal found, on the basis of the reference made by the examiner to the definition in the Collins English Dictionary, that the English word ‘impress’ meant ‘to make an impression on; have a strong, lasting, or favourable effect on’ and that ‘to “impress” someone is to make someone notice one’s person’. That finding, which is not, moreover, disputed by the applicant, must be upheld. The distinctive character of the mark applied for 28 After having pointed out the need for a specific assessment of the distinctive character of the mark applied for, that is to say, as regards the goods at issue, the Board of Appeal linked the meaning of the word ‘impress’ to the fact that one way to attract the attention of another person is by enhancing a person’s appearance by the application or use of those products, like make-up products. It therefore found that that word, consisting of a basic English verb, has a precise and obvious meaning and succinctly sends an unambiguous motivational or inspirational message encouraging consumers to find goods which will make an impression or have a strong, lasting or favourable effect on others. It added that that message is immediate, direct and clear, conveys a banal and self-explanatory message, and would not require any mental effort on the part of the relevant consumers to perceive it spontaneously as such, in the light of the properties of the goods at issue. It concluded from this that the word mark IMPRESS constitutes a banal promotional expression which extols the desired aim of impressing others and that it is probable that that public will perceive it as such. Thus, according to the Board of Appeal, the mark applied for, without any additional verbal or graphic element, was incapable of performing the essential function of a trade mark and, therefore, lacks any distinctive character. 29 The applicant acknowledges, in essence, the laudatory connotation of the word ‘impress’. However, it submits, referring to the judgment of 4 October 2001, Merz & Krell (C‑517/99, EU:C:2001:510), that the mark applied for has a distinctive character, at the very least to a low degree, since it is, in the applicant’s view, a laudatory term in a broad and unspecified sense which refers to a positive and vague connotation relating to the person of the purchaser or producer and not specifically to the desirable characteristics of the goods at issue. 30 EUIPO disputes the applicant’s arguments. 31 In the first place, as regards the judgment of 4 October 2001, Merz & Krell (C‑517/99, EU:C:2001:510), on which the applicant relies, the Board of Appeal was entitled to point out that that judgment, delivered in the context of a reference for a preliminary ruling from the Bundespatentgericht (Federal Patent Court, Germany), concerned the question as to the conditions under which indications constituting a mark could be regarded as having become customary in the current language or in the bona fide and established practices of the trade within the meaning of Article 3(1)(d) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), a provision which corresponds to Article 7(1)(d) of Regulation 2017/1001 (see, to that effect, judgment of 14 January 2016, International Gaming Projects v OHIM (BIG BINGO), T‑663/14, not published, EU:T:2016:5, paragraph 35). 32 Therefore, as the mark applied for in the present case is not a mark which consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade within the meaning of Article 7(1)(d) of Regulation 2017/1001, the examination carried out in the present case is different from that which was the subject of that judgment, since the issue in the present case is the refusal to register a mark devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, a provision which corresponds to Article 3(1)(b) and not to Article 3(1)(d) of Directive 89/104. 33 Accordingly, it is to no avail that the applicant argues that the Board of Appeal should have taken into account and applied the principles arising from the judgment of 4 October 2001, Merz & Krell (C‑517/99, EU:C:2001:510), as that judgment is not relevant to the present case. 34 In the second place, first of all, as the Board of Appeal correctly noted, the goods at issue, because of their inherent properties, enhance or improve the consumer’s appearance and attractiveness. In the light of those properties, the Board of Appeal did not therefore make an error of assessment when it found that the word ‘impress’, given its meaning, would be understood by the relevant public as the fact of making an impression or having a strong or lasting effect, by attracting the attention of another person by enhancing his or her appearance linked to the application or use of the goods at issue. 35 Next, it should be noted, as the Board of Appeal and EUIPO have, that the word ‘impress’ may, because of its obvious inherent meaning in the light of the characteristics of the goods at issue, be immediately and spontaneously understood by the relevant public as an unambiguous motivational or inspirational message encouraging that public to look for the goods at issue. In other words, the message thus conveyed, amounting to laudatory information, may be described as an indication of quality or incitement to find or purchase those goods. The mark applied for is accordingly laudatory for the sake of advertising, the purpose being to highlight the positive qualities of the goods or services for the presentation of which it is used (see, to that effect, judgment of 9 October 2018, De Longhi Benelux v EUIPO (COOKING CHEF GOURMET), T‑697/17, not published, EU:T:2018:661, paragraph 30 and the case-law cited). 36 Furthermore, while it is true, as the applicant submits, that the word ‘impress’ is a laudatory term which may refer, in accordance with a general positive connotation, to the person of the purchaser or of the producer, the fact remains that it cannot be excluded that the laudatory message that it conveys additionally and concomitantly refers to the desirable characteristics of the goods at issue. Those, after all, are intrinsically linked to the application and use made of them by the consumer and are, to that extent, responsible for the desired improvement of his or her appearance. In those circumstances, while the person of the purchaser and those products are indissociable in terms of the laudatory message conveyed by the word ‘impress’, the applicant cannot reasonably claim that that word refers vaguely to the person of the purchaser or of the producer without referring specifically to the goods at issue themselves. Further, it must be stated that, in accordance with the case-law referred to in paragraph 24 above, the fact that the word sign at issue conveys a promotional message, without specifying the particular characteristics of the goods at issue, is not, in itself, capable of conferring on it a distinctive character. 37 Lastly, the Board of Appeal was correct to find, in a complementary manner, that the mark applied for did not have, moreover, additional verbal or graphic elements and that it could not be considered by the relevant public to be arbitrary or fanciful such that it does not enable that public to perceive it other than in its obvious promotional sense and to memorise it easily and instantly as a distinctive mark for the goods at issue. 38 For all those reasons, the Board of Appeal did not make an error of assessment when it found that the semantic content of the mark applied for amounted to a mere ordinary promotional expression, the clear content of which extols the desired aim of making an impression and indicates to the consumer a characteristic of the goods at issue, and when it found that that mark constituted an incitement to purchase those goods and would most likely be perceived as such by the relevant public, without requiring an interpretive effort or further reflection on his or her part. 39 It follows that the Board of Appeal was justified in finding, in essence, that the mark applied for was incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods at issue and, consequently, of enabling the consumer, after having used those goods, to repeat the experience if it proved to be positive, or to avoid it if it proved to be negative, on the occasion of a subsequent purchase. 40 It follows from the foregoing, and in accordance in particular with the case-law referred to in paragraphs 23 and 24 above, that the Board of Appeal did not infringe Article 7(1)(b) of Regulation 2017/1001, contrary to what the applicant claims, when it found that the mark applied for was devoid of distinctive character within the meaning of that article. 41 Accordingly, the first part of the single plea in law must be rejected as unfounded. The second part of the single plea in law, alleging breach of the principles of legal certainty, equal treatment and sound administration 42 The applicant claims that the Board of Appeal did not sufficiently take into account, and did not provide relevant explanations in that regard, the registrations, previously filed with EUIPO as EU trade marks, of several signs comparable to the mark applied for, in accordance with a consistent and established registration practice. The applicant relies, in particular, on the earlier registration of an identical word mark IMPRESS, which it filed on 21 July 2011 for ‘completely identical and highly similar’ goods in Classes 3 and 8. It therefore submits that, in accordance with the principles of legal certainty, equal treatment and sound administration, the Board of Appeal should similarly have found that the mark applied for was distinctive and accepted its registration. 43 EUIPO disputes the applicant’s arguments. 44 As regards EUIPO’s previous registration practice, it must be noted that the mere fact that signs similar to the mark applied for have been registered does not support a finding, in the present case, that that mark has a distinctive character. 45 EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73). 46 Although, in the light of the principles of equal treatment and of sound administration, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality, such that there cannot be equality in an unlawful act, and a person who files an application for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed in his or her favour or for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Accordingly, such an examination must be undertaken in each individual case because the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77 and the case-law cited; judgments of 24 April 2012, Leifheit v OHIM (EcoPerfect), T‑328/11, not published, EU:T:2012:197, paragraph 61, and of 17 April 2024, Ergotopia v EUIPO (WellBack), T‑388/23, not published, EU:T:2024:242, paragraph 42). 47 Those considerations apply even if the sign whose registration is sought is composed in a manner identical to that of a mark in respect of which registration has already been approved and which refers to goods or services identical or similar to those in respect of which registration of the sign in question is sought (order of 12 December 2013, Getty Images (US) v OHIM, C‑70/13 P, not published, EU:C:2013:875, paragraph 45, and judgment of 13 November 2024, Administration of the State Border Guard Service of Ukraine v EUIPO (RUSSIAN WARSHIP, GO F**K YOURSELF), T‑82/24, EU:T:2024:821, paragraph 51). 48 Accordingly, the legality of the decisions of the Board of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of EUIPO which cannot, in any event, bind that judicature (see judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited; of 26 June 2019, Agencja Wydawnicza Technopol v EUIPO (200 PANORAMICZNYCH and Others), T‑117/18 to T‑121/18, EU:T:2019:447, paragraph 114 and the case-law cited; and of 15 March 2023, FUCKING AWESOME, T‑178/22, not published, EU:T:2023:131, paragraph 73 and the case-law cited). 49 In the present case, as is apparent from paragraph 39 above, the Board of Appeal correctly concluded, on the basis of a full and specific examination and taking into account the relevant circumstances of the case, that the mark applied for is caught by the ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001 with the result that the applicant cannot usefully rely, in order to invalidate that conclusion, on previous registration decisions of EUIPO or on a decision-making practice of that office that the Board of Appeal did not follow. 50 That is all the more so since the Board of Appeal stated, in the contested decision, that those earlier registrations, and in particular that of the earlier mark IMPRESS filed by the applicant on 21 July 2011 for identical goods, had been accepted in first-instance decisions that were not appealed, with the result that it had not had the opportunity to assess whether the earlier marks applied for could be registered and that it was not bound by those registrations of the first-instance adjudicating bodies of EUIPO (see, to that effect, judgment of 8 May 2024, The Not Company v EUIPO (NOT MILK), T‑320/23, not published, EU:T:2024:288, paragraph 83 and the case-law cited). 51 It follows that the second part of the single plea in law must be rejected as unfounded and that, consequently, that plea must be rejected in its entirety. The action must, accordingly, be dismissed in its entirety. Costs 52 Under Article 134(1) 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. 53 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing has been organised, it is appropriate to order each party to bear its own costs. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Kiss Nail Products, Inc. and the European Union Intellectual Property Office (EUIPO) each to bear their own costs. Škvařilová-Pelzl Nõmm Pezzuto Delivered in open court in Luxembourg on 11 March 2026. V. Di Bucci M. van der Woude Registrar President * Language of the case: English.