JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
13 July 2022 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark uni – Absolute grounds for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – Signs or indications which have become customary – Article 7(1)(d) of Regulation No 40/94 (now Article 7(1)(d) of Regulation 2017/1001))
In Case T‑369/21,
Unimax Stationery, established in Daman (India), represented by E Amoah, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Walicka, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Mitsubishi Pencil Co. Ltd, established in Tokyo (Japan), represented by A. Perani and G. Ghisletti, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli (Rapporteur), President, J. Schwarcz and C. Iliopoulos, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action based on Article 263 TFEU, the applicant, Unimax Stationery, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 April 2021 (Case R 1909/2020‑5) (‘the contested decision’).
Background to the dispute
2        On 19 May 2008, the intervener, Mitsubishi Pencil Co. Ltd, filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2107 L 154, p.1)).
3        Registration as a mark was sought for the following figurative sign:
4        The goods in respect of which registration was sought are in Class 16 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Writing instruments including correction pens’.
5        The trade mark application was published in Community Trade Marks Bulletin
No 2008/028 of 14 July 2008. The contested mark was registered on 8 January 2009 under No 6920615.
6        On 6 December 2018, the applicant filed an application for a declaration of invalidity of the contested mark on the basis of Article 51(1)(a) of Regulation No 40/94 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) and (d) of that regulation (now Article 7(1)(b) and (d) of Regulation 2017/1001).
7        By decision of 30 July 2020, the Cancellation Division of EUIPO dismissed the application for a declaration of invalidity.
8        On 29 September 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
9        By the contested decision, the Fifth Board of Appeal of EUIPO dismissed the appeal. First, it stated that it did not see any obvious or evident link between the meanings of the contested mark established by the applicant and the intrinsic characteristics of the goods at issue that could lead to a finding of a lack of distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. Secondly, it considered that the applicant had not submitted any argument or evidence in support of the ground based on Article 7(1)(d) of Regulation No 40/94.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO and the interveners contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
12      As a preliminary point, given the date on which the application for registration at issue was filed, namely 19 May 2008, which is determinative for the purposes of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
13      Consequently, in the present case, as regards the substantive rules, the references made by the applicant in the arguments raised to Article 7(1)(b) and (d) and to Article 59(1)(a) of Regulation 2017/1001 respectively must be understood as referring to Article 7(1)(b) and (d) and Article 51(1)(a) of Regulation No 40/94, the terms of which are identical.
14      Furthermore, since, according to settled case-law, the procedural rules are generally deemed to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain,
C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.
15      In support of its action, the applicant relies, in essence, on three pleas in law, the first alleging infringement of Article 7(1)(b) of Regulation No 40/94, the second alleging infringement of Article 7(1)(d) of that regulation and the third alleging errors in the assessment of the existence of a likelihood of confusion.
The first plea in law, alleging infringement of Article 7(1)(b) of Regulation No 40/94
16      In paragraph 34 of the contested decision, the Board of Appeal rejected as unfounded the applicant’s claim that the contested mark had been registered in breach of Article 7(1)(b) of Regulation No 40/94.
17      The applicant submits that the contested mark has no distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.
18      EUIPO and the interveners dispute the applicant’s arguments.
19      Under Article 7(1)(b) of Regulation 40/94, trade marks which are devoid of any distinctive character are not to be registered.
20      For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish those goods from those of other undertakings (judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33).
21      Signs that are devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation are incapable of performing the essential function of a trade mark, which is to identify the origin of the goods or services and so, on the occasion of a subsequent acquisition, enable the consumer who acquired the goods or services designated by the trade mark to make the same choice again if the experience proves to be positive, or to make a different choice if it proves to be negative (judgment of 9 October 2002, Glaverbel v OHIM (Glass-sheet surface), T‑36/01, EU:T:2002:245, paragraph 21).
22      That distinctive character must be assessed, first, by reference to the products or services in respect of which registration is sought, and, secondly, by reference to the relevant public’s perception of the mark (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35, and of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 31).
23      A finding that a mark has such distinctive character is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services it covers and to distinguish them from those of other undertakings (judgments of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 41, and of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 27).
24      It is in the light of those considerations that the arguments put forward by the applicant must be examined.
25      As a preliminary point, it should be noted, first, that the contested mark is a figurative mark composed of the term ‘uni’, written in bold, in lower-case black letters and, secondly, that the goods at issue are writing instruments, including correction pens (see paragraph 4 above).
26      As regards the meaning of the contested mark, it should be noted that, in paragraph 23 of the contested decision, the Board of Appeal stated that, as the applicant before it had submitted, that mark could have various meanings. It noted that the contested mark could be understood, in English, German and Spanish, as referring to the word ‘university’ and, in German and French, as referring to the words ‘monochromatic’ or ‘one colour’. It also noted that the term ‘uni’ could be a prefix denoting one thing, as in the words ‘unisex’ or ‘unilateral’.
The relevant public
27      In paragraph 21 of the contested decision, the Board of Appeal found, in essence, that the relevant public consisted of the general public, whose degree of attention was normal. Furthermore, it is apparent, in essence, from paragraph 23 of the contested decision that the Board of Appeal based its analysis on the perception of English-, German-, French- and Spanish-speaking consumers for whom the term ‘uni’ has a meaning.
28      The applicant does not expressly dispute those findings of the Board of Appeal, but does, however, state that the consumer does not pay particular attention when purchasing the goods in question. Even on the assumption that, by that statement, the applicant is disputing the Board of Appeal’s assessment as regards the general public’s level of attention, it should be borne in mind that, according to the case-law, the level of attention of the relevant public is not decisive for assessing whether a trade mark is caught by the ground for refusal set out in Article 7(1)(b) of Regulation No 40/94 (see, to that effect, judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 14 and the case-law cited).
The distinctive character of the contested mark
29      In paragraph 34 of the contested decision, the Board of Appeal stated that it saw no obvious or evident link between the meanings of the contested mark relied on by the applicant and the intrinsic characteristics of the goods at issue which could lead to a finding that the contested mark lacked distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.
30      The applicant complains that the Board of Appeal paid too little attention to the fact that the term ‘uni’ forming the contested mark is used as an abbreviation in many languages. It submits that a link can be established between the term ‘uni’ and a term descriptive of the goods at issue. According to the applicant, first, the word ‘university’, associated with the terms ‘learning’, ‘writing’, ‘teaching’ and ‘studying’, is linked to the goods at issue and, secondly, the word ‘unicolour’ may apply to almost all writing instruments or stationery.
31      EUIPO and the intervener dispute the applicant’s arguments.
32      As a preliminary point, first, it should be noted that a mark may be devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 for reasons other than the fact that it may be descriptive (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46). However, in the present case, the applicant merely claims, in essence, that the contested mark is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, because of its descriptive character. The applicant does not submit that there is a link of any kind other than the semantic link between the contested mark and the goods at issue.
33      Secondly, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that the term ‘uni’ as a prefix does not, when used on its own, provide any information about the goods at issue; an assessment which, moreover, nothing in the file is capable of calling into question. The applicant focuses its arguments on the Board of Appeal’s analysis of the contested mark in so far as it refers to the words ‘university’ and ‘unicolour’.
34      Accordingly, it is necessary to examine solely whether, as the applicant claims, there is a link between, on the one hand, the contested mark as an abbreviation of the words ‘university’ and ‘unicolour’ and, on the other hand, the characteristics of the goods in question.
–       The element ‘uni’ as an abbreviation of the word ‘university’
35      In paragraphs 26 and 27 of the contested decision, the Board of Appeal noted that there were no writing instruments specifically intended to be used only in universities. It found that there was no obvious or objective link between universities and the goods at issue and stated that the relevant public would have to make a mental effort in order to perceive a link between the word ‘university’ and the goods at issue. Accordingly, it concluded that the contested mark, as a reference to the word ‘university’, was able to perform its essential function of indicating the commercial origin of the goods at issue.
36      In the first place, inasmuch as the applicant claims that, contrary to what is stated by the Board of Appeal, it is immaterial that there are no writing instruments specifically designed for use in higher education, since the word ‘university’, associated with the terms ‘learning’, ‘writing’, ‘teaching’ and ‘studying’, is linked to the goods at issue, it must be pointed out that there is no obvious or objective link between the contested mark and the goods at issue.
37      To make such a link, the public likely to perceive the term ‘uni’ as an abbreviation of the word ‘university’ must, as the Board of Appeal indicates, make a mental effort involving several steps. Thus, that public must first identify, among the various uses of writing instruments, that they may be used for writing in the context of learning. Next, that public must reflect on the places where those goods may be used in connection with learning and identify, among those places, the university. Lastly, that public must also consider that the word ‘university’, in its abbreviated form, corresponds to the term ‘uni’.
38      Consequently, there is no sufficiently direct and specific link between the contested mark and the goods at issue that would enable the relevant public, immediately and without further thought, to perceive a reference to those goods.
39      In the second place, in so far as the applicant submits that the Board of Appeal did not pay sufficient attention to the fact that the contested mark may correspond to the abbreviation of the word ‘university’, when it had produced evidence in that regard and seeks, thereby, to claim that the Board of Appeal should have examined in greater detail any other links that might exist between the contested mark, as an abbreviation of the word ‘university’, and the goods at issue, it is appropriate to find as follows.
40      First, as is apparent from the foregoing reasoning, the Board of Appeal took into consideration, for the purposes of its assessment of the distinctive character of the contested mark, the fact that the word ‘uni’ may correspond to the abbreviation of the word ‘university’.
41      Secondly, an EU trade mark is considered valid until such time as it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration. Accordingly, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific matters that call into question the validity of the contested mark (see, to that effect, judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraphs 27 and 28).
42      Furthermore, in accordance with Article 95(1) of Regulation 2017/1001, EUIPO is to limit its examination, in invalidity proceedings, to the grounds and arguments submitted by the parties.
43      The applicant does not claim that the Board of Appeal failed to respond to one of the arguments it submitted before it. Nor is such an omission apparent from an examination of the administrative file.
44      Therefore, in the light of the arguments submitted before it by the applicant, it must be held that, when assessing the distinctive character of the contested mark, the Board of Appeal paid sufficient attention to the fact that the contested mark may correspond to the abbreviation of the word ‘university’.
45      Accordingly, the Board of Appeal was correct in finding that the contested mark, as an abbreviation of the word ‘university’, was able to indicate to the consumer the commercial origin of the goods at issue.
–       The element ‘uni’ as an abbreviation of the word ‘unicolore’
46      In paragraphs 28 to 30 of the contested decision, in essence, the Board of Appeal found that it was difficult to conclude that the French-speaking public would perceive the term ‘uni’ forming the contested mark, in so far as it means ‘unicolour’ (‘consisting of one colour’), as denoting a characteristic of the goods at issue, since that term is not used in the context of those goods but in a fashion and decoration context. The Board of Appeal drew the same conclusion as regards the German-speaking public, since the noun ‘Das Uni’ is also used in specific contexts and very rarely as a reference to one colour.
47      In the first place, it should be noted that, in order to challenge the Board of Appeal’s finding summarised in paragraph 46 above, the applicant merely claims that the word ‘unicolour’ may apply to almost every writing instrument or piece of stationery, such that it is linked to the goods at issue, without developing its arguments further.
48      In so doing, the applicant does not at all call into question the assessment on which the Board of Appeal based its reasoning that the term ‘uni’, in so far as it means ‘unicolour’, is not used, whether in French or in German, in the context of the goods at issue, which finding cannot be called into question. Nor does it submit that, if that term is not used currently in the context of the goods at issue, it is reasonable to anticipate that it will be used in the future. Indeed, the documents in the file do not establish such a likelihood.
49      Therefore, the applicant has failed to establish an error in the Board of Appeal’s reasoning which led it to conclude that it was difficult to perceive the term ‘uni', in so far as it means ‘unicolour’, as denoting one of the characteristics of the goods at issue unable to indicate the commercial origin of those goods.
50      In the second place, even if the applicant also claims that the Board of Appeal should have examined in greater detail any other links that might exist between the contested mark, in so far as it means ‘unicolour’, and the goods at issue, the finding in paragraph 43 above is also valid. The applicant does not claim that the Board of Appeal failed to respond to one of the arguments that it submitted before to it and nor is such an omission apparent from an examination of the administrative file.
51      Therefore, taking account of the arguments submitted to it by the applicant, it must be held that the Board of Appeal paid sufficient attention to the fact that the contested mark may mean ‘unicolour’ when assessing the distinctive character of that mark.
52      Accordingly, the Board of Appeal was, in essence, correct in finding that the contested mark, in so far as it means ‘unicolour’ was capable of indicating to the consumer the commercial origin of the goods at issue.
53      It follows from all the foregoing considerations that the first plea must be rejected as unfounded.
The second plea in law, alleging infringement of Article 7(1)(d) of Regulation No 40/94
54      In paragraph 35 of the contested decision, the Board of Appeal found that the applicant had not presented any argument or evidence in support of the ground alleging infringement of Article 7(1)(d) of Regulation No 40/94. Consequently, the Board of Appeal found that the application for a declaration of invalidity based on that provision was unfounded.
55      The applicant claims that, for the same reasons as those already set out in the first plea in law, the contested mark should not have been registered, in accordance with Article 7(1)(d) of Regulation No 40/94. According to the applicant, the Board of Appeal disregarded the fact that the contested mark consists exclusively of signs which have become customary, with the result that the trade mark is already excluded from registration under Article 7(1)(d) of Regulation No 40/94.
56      EUIPO and the intervener dispute the applicant’s arguments.
57      Without it being necessary to recall the case-law relating to Article 7(1)(d) of Regulation No 40/94, it is sufficient to note, in the present case, that it is apparent from the contested decision and from the administrative file that the applicant did not submit, before the adjudicating bodies of EUIPO, any argument or evidence in support of its application for a declaration of invalidity based on Article 7(1)(d) of Regulation No 40/94.
58      As noted in paragraphs 41 and 42 above, first, it is for the applicant to invoke before EUIPO the specific matters that call into question the validity of the contested mark and, secondly, EUIPO is to limit its examination to the grounds and arguments submitted by the parties.
59      Accordingly, the Board of Appeal was correct in finding that the application for a declaration of invalidity based on Article 7(1)(d) of Regulation No 40/94 had to be rejected as unfounded, given the lack of any argument in support of that application.
60      Furthermore, and consequently, the applicant’s argument that the customary nature of the contested mark stems from the link between its meaning and the goods at issue was raised for the first time before the General Court. It is therefore a new argument that must be disregarded as inadmissible (judgment of 18 April 2013, Peek & Cloppenburg v OHIM – Peek & Cloppenburg (Peek & Cloppenburg), T‑506/11, not published, EU:T:2013:197, paragraph 34).
61      Accordingly, the second plea in law must be rejected as, in part, unfounded and, in part, inadmissible.
The third plea in law, alleging errors in the assessment of a likelihood of confusion
62      The applicant submits that there is a likelihood of confusion on the part of the consumer as to the origin of the goods at issue. In particular, it criticises the Board of Appeal for having failed to take account of the fact that the global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. It adds that the Board of Appeal erred in its analysis of the visual and conceptual similarity and that it failed to examine the phonetic similarity.
63      EUIPO and the intervener dispute the applicant’s arguments.
64      In that regard, it must be noted that, in the contested decision, the Board of Appeal carried out neither a global assessment of a likelihood of confusion between the contested mark and any earlier mark, nor, as part of that, an examination of visual, conceptual and phonetic similarity, and was fully entitled not to do so.
65      As EUIPO states, the likelihood of confusion is not a relevant factor for the purposes of assessing the absolute grounds for refusal under Article 7(1)(b) and (d) of Regulation No 40/94. The applicant clearly confuses the application of the absolute grounds for refusal set out in Article 7 of Regulation No 40/94, put forward in the present proceedings, with that of the relative ground for refusal set out in Article 8(1)(b) of the same regulation.
66      Since the applicant’s third plea must also be rejected as unfounded, the action must be dismissed in its entirety.
Costs
67      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
68      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Unimax Stationery to pay the costs.
Marcoulli
Schwarcz
Iliopoulos
Delivered in open court in Luxembourg on 13 July 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.