JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
9 June 2021 (*)
(EU trade mark – Application for EU word mark SIENNA SELECTION – Absolute grounds for refusal – Descriptive character – No distinctive character – Name of a colour – Article 7(1)(b) and (c) of Regulation (EU) 2017/1001)
In Case T‑130/20,
Philip Morris Products SA, established in Neuchâtel (Switzerland), represented by L. Alonso Domingo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno and V. Ruzek, acting as Agents,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 18 December 2019 (Case R 1675/2019‑5), relating to an application for registration of the word sign SIENNA SELECTION as an EU trade mark,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias (Rapporteur) and T. Perišin, Judges,
Registrar: J. Pichon, administrator,
having regard to the application lodged at the Court Registry on 27 February 2020,
having regard to the response of EUIPO lodged at the Court Registry on 25 May 2020,
further to the hearing on 12 March 2021,
gives the following
Judgment
1        On 14 September 2018, the applicant, Philip Morris Products SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
2        Registration as a mark was sought for the word sign SIENNA SELECTION.
3        The goods in respect of which registration was sought are in Class 34 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:
–        Class 34: ‘Wired vaporizer for electronic cigarettes and electronic smoking devices; tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); smokers’ articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches; tobacco sticks, tobacco products for the purpose of being heated, electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; liquid nicotine solutions for use in electronic cigarettes; electronic smoking devices; electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; electronic devices for the inhalation of nicotine-containing aerosol; oral vaporising devices for smokers, tobacco products and tobacco substitutes; smoker’s articles for electronic cigarettes; parts and fittings for the aforesaid products included in Class 34; devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks; electronic rechargeable cigarette cases’.
4        By decision of 19 June 2019, the examiner refused registration of the mark applied for on the basis of Article 7(1)(b) and (c), read in conjunction with Article 7(2), of Regulation 2017/1001, in respect of all of the goods referred to above.
5        On 30 July 2019, the applicant filed a notice of appeal against the examiner’s decision, requesting that it be annulled in its entirety. The appeal was remitted, under reference R 1675/2019‑5, to the Fifth Board of Appeal, which dismissed the appeal by decision of 18 December 2019 (‘the contested decision’).
6        In the first place, as regards the application, in the present case, of Article 7(1)(c) of Regulation 2017/1001, the Board of Appeal found that, since the words comprising the mark applied for are in English, the relevant public is the English-speaking public in the European Union, namely the public in the Member States in which English is one of the official languages. The Board of Appeal also concluded that the level of attention of the relevant public, consisting of tobacco smokers, could, in the present case, vary from average to greater than average.
7        In that regard, the Board of Appeal also found, citing the judgment of 11 October 2011, Chestnut Medical Technologies v OHIM (PIPELINE) (T‑87/10, not published, EU:T:2011:582, paragraphs 27 and 28), that ‘due to their personal experience and interest in health issues related to smoking, the relevant public would more easily understand the descriptive connotations of the mark applied for’.
8        In the context of its analysis of the descriptive character of the mark applied for, and after setting out in detail the case-law and decision-making practice of EUIPO in relation to marks consisting of names of colours, the Board of Appeal stated that the word ‘sienna’ has two meanings: first, it refers to ‘a kind of ferruginous earth used as a pigment in painting, normally yellowish-brown in colour (raw sienna) or deep reddish-brown when roasted (burnt sienna)’ and, second, ‘a yellowish- or deep reddish-brown colour’. More specifically, the word ‘sienna’ in English is known as ‘a brownish paint pigment and as a girl’s name’. In addition, ‘as a colour name, it is not exotic – as might be “framboise” (fruit red or orange), for example’. Having regard to the goods at issue, the meaning of ‘sienna’ is ‘likely to be taken as an indication of colour’.
9        As regards the word element ‘selection’, the Board of Appeal found that it had two relevant meanings in the present case, namely, first, ‘the action of selecting or choosing out; also the fact of being selected or chosen’ and, second, ‘a particular choice; choice of a particular individual or individuals; [concretely,] the (person or) thing selected; a number of selected (persons or) things’. The Board of Appeal also found that that word can be used both as an indicator of quality for an entire set of products, in that products so labelled have been chosen ‘for their quality and/or above average characteristics’, or to refer to an assortment of goods of the same type which are sold together.
10      Taking those findings into account and considering that the examiner’s analysis that the mark applied for will be understood as ‘a range of products in a yellowish- or deep reddish-brown colour’ was not ‘unreasonable’, the Board of Appeal went on to examine the ‘commercial context in which the mark will be used’.
11      To that end, the Board of Appeal categorised the goods covered by the mark applied for into three categories: the first comprising ‘traditional products associated with tobacco’, the second ‘[smokers’] articles’ and the third ‘vapes/electronic cigarettes and heated tobacco products’.
12      Accordingly, starting its analysis with the second category identified above, namely ‘[smokers’] articles’, the Board of Appeal found that such goods would be likely to be marketed in different colours and, thus, ‘a consumer faced with [the mark applied for] will reasonably expect such items – an ashtray or cigarette case, for example – to be of that colour, or, perhaps, to form part of the range of sienna smoking products’. More specifically, the relevant public will see those items ‘as an extension of electronic or traditional smoking products – part of a collection’. In that regard, the Board of Appeal recalled that, according to the case-law, an objection under Article 7(1)(c) of Regulation 2017/1001 can apply even where the element or characteristic of the goods which is described by the mark applied for plays only a minor role in the consumer’s choice.
13      Next, as regards the other two categories of goods identified in paragraph 11 above, the Board of Appeal stated that ‘tobacco companies manipulate consumers’ perceptions of the taste and strength of cigarettes by changing the colour of the packaging on their products’. Thus, ‘traditionally, certain colours have been associated with fuller flavoured and stronger nicotine products (red and darker colours), and lighter taste and less nicotine (white and lighter colours)’. According to the contested decision, that trend appears to have continued with electronic smoking products.
14      The Board of Appeal concluded, on the basis of those findings, which it found to be corroborated by the evidence submitted by the Examination Division, that the applicant supplies ‘a range of products categorising the strength of “taste” (and presumably nicotine concentration) by colour’. In that context, ‘sienna’ represents a ‘full and intense tobacco blend’, which follows the normal market practice ‘in that darker/stronger colours indicate fuller flavoured and greater nicotine content’. In support of those findings, the Board of Appeal provided an image showing the range of HEETS products, that is to say, tobacco products marketed by the applicant which are designed to be heated, which cover four types of products, categorised according to their flavour: ‘amber’, ‘yellow’, ‘turquoise’ and ‘sienna’; the latter type of product corresponding to a ‘full and intense tobacco blend’.
15      The Board of Appeal also reproduced an image showing tobacco substitutes that are marketed in accordance with a ‘colour code’, which reflects a ‘similar policy’. More specifically, that image shows vials containing liquid nicotine solutions for use in electronic cigarettes which are categorised according to their nicotine concentration: ‘0mg white, 3mg blue, 6mg green, 9mg yellow, 12mg orange and 18mg red’. In order to show that ‘these examples are not exhaustive’, the Board of Appeal reproduced a final image representing various smokers’ articles in a variety of colours.
16      According to the contested decision, ‘colour will be taken as designating a quality in the goods, and thus is something consumers will look for in these products, and something that affects their choice’. The mark applied for will thus be taken to ‘refer to a choice that is available to the consumer as to the relevant products’.
17      Furthermore, the Board of Appeal rejected the applicant’s argument in so far as it was based on examples of registered marks containing the word ‘sienna’.
18      In the second place, the Board of Appeal recalled that, according to the case-law, a word mark which is descriptive of the characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation 2017/1001 is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of that provision. Therefore, in the present case, according to the Board of Appeal, the sign SIENNA SELECTION, as a ‘purely descriptive indication’ which ‘will be readily inferred by the relevant consumers’, is devoid, within the meaning of Article 7(1)(b) of Regulation 2017/1001, of the distinctive character necessary to make registration possible.
Forms of order sought
19      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
20      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
21      In its application, the applicant put forward two pleas in law, the first alleging an infringement of Article 7(1)(c) of Regulation 2017/1001, and the second alleging an infringement of Article 7(1)(b) of that regulation.
First plea in law, alleging an infringement of Article 7(1)(c) of Regulation 2017/1001
22      The first plea in law relied on by the applicant is divided into two complaints.
23      First, the applicant claims that the Board of Appeal did not properly analyse the relevant public’s perception of the mark applied for in so far as it found that that mark will be perceived as a reference to the colour of the goods concerned. More specifically, according to the applicant, consumers will not immediately perceive the word element ‘sienna’ as the name of a colour, since it is not a common colour name and has several meanings. The applicant submits that the Board of Appeal based its assessment on the incorrect principle that ‘consumers always look for a descriptive meaning first when looking at a sign’. Furthermore, it argues, there are no instances of common use of that word element or of the colour ‘sienna’ in association with the goods covered in the present case.
24      Moreover, according to the applicant, colour is not a relevant characteristic for the choice by consumers of those goods, particularly as regards the first of the three categories identified by the Board of Appeal. In that regard, the Board of Appeal restricted ‘the explanation of why [the mark applied for] [was] allegedly descriptive of the colour of the goods to only one of [those] three categories’. According to the applicant, if one were to follow the Board of Appeal’s reasoning, which is legally incorrect, any colour name could be descriptive of any kind of product and colour names could not be registered as marks.
25      Second, the applicant submits that the Board of Appeal did not properly analyse the perception of the mark applied for by the relevant public in that it found that that mark will be perceived as a reference to characteristics of the goods concerned, such as their taste intensity, flavour and nicotine level.
26      In that regard, according to the applicant, the mark applied for does not contain any direct descriptive message in relation to the goods at issue and it is therefore impossible ‘to infer any characteristic of [those] goods’, ‘without making the kind of complex mental elaboration made by the Board [of Appeal]’. If the application for registration had to be rejected because the sign applied for was descriptive according to ‘a common practice in the sector’, it should have been caught by the prohibition laid down in Article 7(1)(d) of Regulation 2017/1001, a provision which is not relevant in the present case, since SIENNA SELECTION is not a customary name in trade. Furthermore, the applicant claims that, as is apparent from paragraph 10 of the contested decision, the Board of Appeal erred in law in so far as its assessment that the sign applied for could ‘[have a descriptive meaning] “in the future”’ is liable to extend to ‘hypothetical (and therefore arbitrary) future meanings’ of that sign.
27      The applicant submits that, although the use of the name of a colour to refer to the nicotine flavour or nicotine content of a range of goods may be descriptive where ‘the correlation is already known by’ the relevant public, it is, on the contrary, incorrect to describe as descriptive ‘an original name which [potentially] resembles a colour not customarily used in the sector in question and therefore which requires the guidance and instruction by the specific competitor on the particular meaning attached to it’. Moreover, there is no need to leave the sign SIENNA SELECTION free to be used, in the public interest underlying the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001, since none of the applicant’s competitors ‘is in need of this particular expression to describe its products’. Lastly, according to the applicant, there is nothing to distinguish the present case from the examples of registered trade marks containing names of colours that are cited in the contested decision and, therefore, the contested decision is also discriminatory.
28      EUIPO maintains that the Board of Appeal correctly established the meaning of the mark applied for, having regard to the perception of the relevant public. EUIPO submits that the word ‘sienna’ is common and refers to, inter alia, the name of a colour and the relevant public will probably not be led to perceive it as designating its other meanings. It is well known that the colour in question is used in trade to describe a variety of goods. According to EUIPO, the Board of Appeal provided explanations for all of the goods covered by the mark applied for. More specifically, as regards traditional tobacco products and products related to electronic cigarettes, EUIPO confirms the Board of Appeal’s reasoning that colour is generally used in the relevant market to designate the levels of tar contained in tobacco products, which influence the taste and intensity of cigarettes and similar products. As regards ‘[smokers’] articles’, EUIPO submits that the consumer could reasonably expect those goods to be either of a ‘sienna’ colour or to form part of the ‘sienna’ smoking product range. That reasoning is consistent with EUIPO’s practice and the case-law of the General Court concerning the registration of trade marks containing names of colours. EUIPO argues that the contested decision is based on the ‘well-known fact’ that colour may constitute a characteristic of tobacco products because of the traditional practice of the industry concerned to use colours as ‘descriptors’, ‘[that is to say,] to communicate implicit messages about taste, strength, health impacts and quality of the cigarettes concerned’. EUIPO relies, in this regard, on two market research studies. By way of example, red or dark red generally denote more fully flavoured tobacco cigarettes and ‘brown is usually associated [with] cigars or small cigars’. Finally, EUIPO states that it is ‘very much interested in seeking the guidance of the General Court as to whether the conditions contemplated in [the judgment of 7 May 2019, Fissler v EUIPO (vita) (T‑423/18, EU:T:2019:291)] are fulfilled in the present case’.
29      As regards, lastly, the applicant’s claims relating to registered trade marks containing names of colours, EUIPO submits that the vast majority of the examples at issue relate to goods in classes other than Class 34, whereas the examples which cover goods of that class ‘correspond to the name of a colour that could hardly refer to a characteristic of tobacco goods’. The defendant also refers, in this regard, to the relevant case-law of the EU Courts, concluding that the Board of Appeal did not in any event infringe the principles of equal treatment, legality and sound administration.
Preliminary observations
30      Under Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, cannot be registered. Pursuant to Article 7(2) of that regulation, the provisions of Article 7(1) are to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
31      By prohibiting the registration of such signs and indications as EU trade marks, Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by everyone. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
32      Signs or indications which may serve in trade to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 2017/1001, regarded as incapable of performing the essential function of the trade mark, namely to identify the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or service designated by the mark 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 judgment of 25 June 2020, Off-White v EUIPO (OFF-WHITE), T‑133/19, not published, EU:T:2020:293, paragraph 20 and the case-law cited).
33      Additionally, as regards the absolute ground for refusal set out in Article 7(1)(c) of Regulation 2017/1001, a sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 21 and the case-law cited).
34      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 22 and the case-law cited).
35      It must also be recalled that, in order for EUIPO to refuse to register a trade mark under Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A word sign must therefore be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 23 and the case-law cited).
36      As regards, more specifically, marks consisting of names of colours, according to settled case-law, by using the terms ‘the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ in Article 7(1)(c) of Regulation 2017/1001, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (judgments of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 42, and of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 35).
37      It follows that the fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as being a description of one of those characteristics (judgments of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 43, and of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 36).
38      Furthermore, although it is irrelevant whether such a characteristic is commercially essential or ancillary, a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, must nevertheless be objective and inherent to the nature of that product or service and intrinsic and permanent with regard to that product or service (judgments of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 44, and of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 37).
39      The applicant’s arguments regarding the Board of Appeal’s assessment set out in the contested decision must be examined in the light of those considerations.
40      Furthermore, so far as concerns the relevant public in the light of whose perception the mark applied for should be assessed, it must be noted, at the outset, that the Board of Appeal’s findings on that point (see paragraph 6 above), which, moreover, are not disputed by the applicant, must be upheld.
Meaning of the word element ‘sienna’
41      The mark applied for consists of two word elements. The second of those word elements, namely the word element ‘selection’, will, according to the findings of the Board of Appeal (see paragraph 9 above) which are not disputed by the applicant and which must be upheld, be perceived by the relevant public as alluding to a certain number of selected goods. Therefore, in the context of the present case, it is necessary to examine the meaning of the word element ‘sienna’ and to determine whether that element is likely to be perceived as alluding to a characteristic of all the goods referred to by the word element ‘selection’.
42      The applicant disputes the Board of Appeal’s findings that the word element ‘sienna’, which can have several meanings, will be understood by the relevant public as being ‘an indication of colour’ (see paragraph 8 above) and submits that, in any event, it is a colour name which is neither common nor commonly used in association with the goods at issue in the present case.
43      In that regard, suffice it to note that, according to the case-law, a word sign must also be refused registration under Article 7(1)(c) of Regulation 2017/1001 if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, by analogy, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
44      In the present case, although the applicant claims that the word element ‘sienna’ cannot refer directly to a common colour, it does not dispute that one of the possible meanings of that word element is an indication of a yellowish- or deep reddish-brown colour. It therefore remains to be examined whether the word element ‘sienna’, by referring to the colour ‘sienna’, may be regarded as also referring to a characteristic of the goods covered by the mark applied for and, more specifically, whether, for that reason, the mark applied for enables the relevant public immediately to perceive, without further thought, such a characteristic, within the meaning of the case-law cited in paragraph 34 above.
45      In that regard, as has been stated in paragraph 11 above, the Board of Appeal categorised the goods covered by the application for registration into three categories in order to analyse the descriptive character of the mark applied for in respect of each of its categories, examined below.
–       The goods coming within the first and third categories identified by the Board of Appeal (‘Traditional products associated with tobacco’ and ‘Vapes/electronic cigarettes and heated tobacco products’)
46      According to the contested decision, the colour implied by the word element ‘sienna’ will be understood as designating a quality or characteristic of the goods concerned in the present case and, consequently, constitutes ‘something consumers will look for in these products, and something that affects their choice’ (see paragraph 16 above). On that point, it is apparent from the contested decision that the characteristic in question is not, as regards the goods referred to in the first and third categories, their colour per se, or indeed the colour of the raw material of some of them, namely tobacco. According to the Board of Appeal, and as EUIPO confirmed at the hearing, the relevant public will perceive the word element ‘sienna’ as meaning that the taste of the goods in question corresponds to that of a ‘full and intense tobacco blend’ (see paragraphs 13 and 14 above). On that point, the Board of Appeal cited examples of the applicant’s commercial practice as regards both the marketing of traditional tobacco products and the marketing of electronic cigarettes and related products.
47      Those findings of the Board of Appeal are based on the premiss that the use of ‘colour codes’ for the marketing of tobacco products, whether traditional or related to the use of electronic cigarettes, is a common practice in the tobacco industry and is therefore a commonly known fact. According to the contested decision, red and darker colours are associated with fuller flavoured and stronger nicotine-based products, whereas lighter colours are associated with goods which contain less nicotine and have a lighter taste (see paragraph 12 above).
48      It must, first of all, be pointed out that it cannot be ruled out that the flavour or taste of a product may be among the characteristics referred to in Article 7(1)(c) of Regulation 2017/1001. Therefore, a trade mark which contains elements capable of referring to the taste or flavour of goods such as those at issue in the present case may be regarded as descriptive (see, to that effect and by analogy, judgment of 18 January 2017, Wieromiejczyk v EUIPO (Tasty Puff), T‑64/16, not published, EU:T:2017:13, paragraph 35).
49      Next, according to the contested decision, certain colours are traditionally used by the tobacco industry to signify, inter alia, the taste, flavour and nicotine content of tobacco products and their substitutes. More specifically, cigarettes packaged in red packaging or in packaging with red elements are, in the eyes of the relevant public, expected to have a high nicotine content and, therefore, an intense flavour and taste. The same is true of white and, in general, light colours, which are expected to appear on packaging containing tobacco products or their substitutes which have a lighter taste and a lower nicotine content. As stated in paragraph 28 above, EUIPO relies before the Court on market research studies which, it claims, illustrate the contested decision in that regard.
50      Irrespective of whether EUIPO is entitled to rely on those studies for the first time before the Court, the reasoning set out in the contested decision cannot be upheld. Even following the logic advocated by EUIPO and taking the view, as it stated at the hearing, that the practice described above is a well-known fact, at least so far as concerns the relevant public, consisting of smokers and vapers, that practice concerns only the word elements ‘red’ and ‘white’ or also word elements which directly allude to those colours in particular. By contrast, and in any event, the existence of such a practice with regard to any other colour or also to all the shades of red or brown referred to in the contested decision (see paragraph 8 above) cannot be regarded as a well-known fact.
51      In particular, it must be held that, in the present case, the relevant public will not immediately and without further thought, within the meaning of the case-law cited in paragraph 34 above, perceive the degree of intensity of the taste or flavour of the goods concerned or of their nicotine content merely by reason of the fact that the mark applied for contains the word element ‘sienna’.
52      It cannot be ruled out that, given that the colour sienna corresponds to a natural pigment originating in, inter alia, the region of Siena (Italy), the colour indicated by the word element ‘sienna’ is liable to evoke, in the mind of the average consumer, a reference to earth and thus to evoke natural scents. Even following the logic of the contested decision and taking the view that the colour sienna is not ‘exotic’ (see paragraph 8 above) and that the word element ‘sienna’ may allude to a taste or scent as described, by way of example, above, the fact remains that the relevant public would not, on the basis of the word element ‘sienna’ alone, have specific information as to the intensity of taste or the nicotine content of the goods covered by the mark applied for.
53      More specifically, even if the view is taken that the practice of the tobacco industry, to which the contested decision refers, is a matter of common knowledge within the relevant public, it must be noted that, with the exception, as the case may be, of red or white (see paragraphs 49 and 50 above), that practice is not based on the use of specific colours but, rather, on a play of shades. Thus, within the same range of goods, those with a fuller taste are liable to be identified by darker colours, whereas those with a lighter taste are liable to be identified by lighter colours. It is, therefore, only by carrying out a comparison between the elements used to identify goods such as those covered in the present case and those used to identify the other goods from the same range of goods or the same manufacturer that the average consumer will, as the case may be, be likely to perceive some of the characteristics of those goods.
54      In the present case, as demonstrated by the examples cited by the Board of Appeal in the contested decision (see paragraphs 14 and 15 above), the average consumer would have to be aware of the whole of the ‘colour code’ applied to a range of goods such as the goods at issue in the present case in order to be able, as the case may be, to draw conclusions on the specific characteristics of the goods marked ‘sienna’ in terms of taste or nicotine content, especially since that word element cannot be regarded as referring solely to a reddish shade of brown, but also to a yellowish shade of that colour (see paragraph 8 above).
55      In the absence of such a ‘colour code’, the relevant public would not be able to form the view, in the abstract, that a certain colour, such as that at issue in the present case, is dark, thus alluding to tobacco products which are strong in taste or in nicotine content, or light, thereby alluding to tobacco products which are lighter in taste or in nicotine content. In particular, where, as in the present case, a shade of colour is concerned, its ‘dark’ or ‘light’ character is relative and depends on the other shades with which it is compared.
56      In the light of the foregoing, it must be held that the Board of Appeal erred in finding that, as a result of the practice used by the tobacco industry to identify goods such as those covered by the application at issue as described above, the relevant public would perceive the degree of taste intensity or nicotine content of the goods covered by the mark applied for ‘immediately [and] without further thought’ within the meaning of the case-law cited in paragraph 34 above. Therefore, it must be held that the Board of Appeal erred in finding that the mark applied for is descriptive of the goods in the first and third categories identified in the contested decision.
–       The goods in the second category identified by the Board of Appeal (‘[Smokers’] articles’)
57      As stated in paragraph 12 above, as regards the second category of goods identified in the contested decision, namely ‘[smokers’] articles’, the Board of Appeal found that the mark applied for is descriptive of those goods on the basis of two alternative grounds. Thus, it stated that the consumer will reasonably expect those goods, likely to be marketed in different colours, ‘to be of [a sienna] colour, or, perhaps, to form part of the range of sienna smoking products’.
58      As regards the first ground relied on, namely that the mark applied for is descriptive of the colour of the goods covered, it must be noted, at the outset, that the colour of a product may be one of the characteristics referred to in Article 7(1)(c) of Regulation 2017/1001, on condition that that colour constitutes a characteristic which is objective and inherent to the nature of that product, as well as being intrinsic and permanent for that product (see, to that effect, judgments of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 44, and of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 43).
59      It is, however, in no way apparent from the Board of Appeal’s findings that the colour designated by the word element ‘sienna’ is a characteristic which is objective and inherent to the nature of the goods at issue, as well as being intrinsic and permanent with regard to those goods, within the meaning of the case-law cited in paragraph 38 above. The mere fact that the goods at issue are liable to be available in that colour, just as they are liable to be available in other colours, is irrelevant, since it is not ‘reasonable’, within the meaning of the case-law referred to in paragraph 37 above, to believe that for that reason alone that colour, which, moreover, has no direct and immediate link with their nature, will immediately be recognised by the relevant public as a description of an intrinsic characteristic which is inherent to the nature of those goods (see, to that effect and by analogy, judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 45 and the case-law cited).
60      As regards the second ground relied on by the Board of Appeal, namely that the mark applied for would enable consumers to perceive that the goods in question belong to the SIENNA SELECTION range of goods, there is no reason to consider that the fact of merely belonging to a range of goods is one of the characteristics referred to in Article 7(1)(c) of Regulation 2017/1001. Such reasoning would lead to a pure and simple prohibition of the use of the same mark to identify both the goods primarily covered by the mark and derivative goods. The situation would be different if the fact that the goods belong to the SIENNA SELECTION range of goods could have been considered to refer to other characteristics of the goods concerned within the meaning of Article 7(1)(c) of Regulation 2017/1001. However, such a finding is in no way apparent from the contested decision and also cannot be regarded as following from the arguments and evidence submitted by EUIPO before the Court.
61      It must therefore be held that the Board of Appeal erred in finding that the mark applied for will be perceived by the relevant public as descriptive of the goods in the second category identified in the contested decision.
62      In the light of all of the foregoing considerations, the first plea in law relied on by the applicant must be upheld and, consequently, the contested decision must be annulled in so far as it is based on the application of Article 7(1)(c) of Regulation 2017/1001.
Second plea in law, alleging an infringement of Article 7(1)(b) of Regulation 2017/1001
63      According to the case-law, each of the absolute grounds for refusal of registration listed in Article 7(1) of Regulation 2017/1001 is independent of the others and requires separate examination, even though there is an obvious degree of overlap between their respective scopes. Furthermore, those grounds for refusal must be interpreted in the light of the public interest which underlies each of them (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 50 and the case-law cited).
64      It follows that the fact that the mark is not covered by one of those absolute grounds for refusal does not mean that it cannot be covered by another. In particular, it cannot therefore be concluded that a mark is not devoid of any distinctive character in relation to certain goods or services purely on the ground that it is not descriptive of them (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 51 and the case-law cited).
65      Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character cannot be registered. According to settled case-law, the marks covered by that provision are those which are regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue (see paragraph 32 above) (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 54 and the case-law cited).
66      The public interest underlying that provision concerns consumer protection by enabling the consumer, without any possibility of confusion, to distinguish the origin of the goods or services covered by the mark, in accordance with its essential function as an indication of origin, whereas the public interest underlying the rule set out in Article 7(1)(c) is focused on the protection of competitors against a risk of monopolisation by a single trader of indications which are descriptive of characteristics of such goods or services (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 52 and the case-law cited).
67      Accordingly, a mark which cannot be regarded as descriptive, as in the present case, is not, for that reason alone, distinctive. In such a case, consideration should also be given to whether the mark is not intrinsically devoid of any distinctive character, that is to say, it is necessary to determine whether it is capable of fulfilling the essential function of a trade mark, which is to guarantee to the consumer or end-user the origin of the goods or services covered by the mark by enabling him or her, without any possibility of confusion, to distinguish those goods or services from others which have another origin (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 53 and the case-law cited).
68      The distinctive character of the 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 perception that the relevant public, which consists of the consumers of those goods or services, has of that mark (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 55 and the case-law cited).
69      In the present case, as stated in paragraph 18 above, the Board of Appeal found, in paragraph 54 of the contested decision, that, because of its descriptive character, the sign of which the mark applied for consists is also devoid of any distinctive character with regard to the goods at issue, within the meaning of Article 7(1)(b) of Regulation 2017/1001. As the applicant points out, the contested decision does not contain any separate reasoning for the analysis of the prohibition laid down in Article 7(1)(b) of Regulation 2017/1001 and the conclusion relating thereto is based exclusively on the descriptive character attributed to the mark applied for in the context of the Board of Appeal’s analysis carried out in respect of Article 7(1)(c) of that regulation.
70      Consequently, in the light of the findings made in paragraph 62 above, it must be held that, inasmuch as the Board of Appeal merely deduced, from its supposedly descriptive character, that the mark applied for does not have any distinctive character, it must be held that that deduction is based on an erroneous premiss and is therefore unfounded (see, by analogy, judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 58 and the case-law cited).
71      The second plea in law must therefore be upheld and, accordingly, the contested decision must be annulled in its entirety.
Costs
72      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.
73      Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 December 2019 (Case R 1675/2019‑5);
2.      Orders EUIPO to bear its own costs and to pay the costs incurred by Philip Morris Products SA.
Costeira
Gratsias
Perišin
Delivered in open court in Luxembourg on 9 June 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.