JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
5 October 2022 (*)
(EU trade mark – Application for EU figurative mark representing black and white lines – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑502/21,
Philip Morris Products SA, established in Neuchâtel (Switzerland), represented by L. Alonso Domingo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Georgieva, E. Nicolás Gómez, M. Eberl and D. Hanf, acting as Agents,
defendant,
THE GENERAL COURT (Tenth Chamber),
composed, at the time of the deliberations, of A. Kornezov, President, K. Kowalik-Bańczyk (Rapporteur) and G. Hesse, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 9 June 2022,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Philip Morris Products SA, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 May 2021 (Case R 78/2021-5) (‘the contested decision’).
Background to the dispute
2        On 11 June 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for designated goods 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 corresponding to the following description: ‘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 18 November 2020, the examiner refused registration of the mark applied for on the basis of Article 7(1)(b) of 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).
5        On 14 January 2021, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. It found, inter alia, that that mark was incapable of being easily and instantly committed to memory by the relevant public and that the relevant public would not perceive it as being an indication of the commercial origin of the goods at issue, but as serving an aesthetic, ornamental or decorative purpose.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        In support of the action, the applicant raises, in essence, two pleas in law, alleging, first, infringement of Article 7(1)(b) of Regulation 2017/1001 and, second, failure to state reasons.
The first plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
10      The applicant submits that the mark applied for possesses distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, in so far as it is neither excessively simple, nor consists of a basic geometric shape. In addition, it claims that the Board of Appeal has not established that that mark will be perceived as displaying an ‘aesthetic or decorative finish’ and claims that the mark in question is capable of being easily committed to memory, on account of its originality. In that regard, it criticises the Board of Appeal for relying on case-law relating to three-dimensional marks.
11      Lastly, the applicant submits that the Board of Appeal failed to have regard to the notion of general interest underlying Article 7(1)(b) of Regulation 2017/1001, since competitors would not be affected by the registration of the mark applied for.
12      EUIPO disputes the applicant’s arguments.
13      According to Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.
14      For a mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, 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 (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited). The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, 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).
15      In that regard, in the first place, it should be noted that the applicant does not challenge the definition of the relevant public adopted by the Board of Appeal, according to which the relevant public for the purposes of the perception of the distinctive character of the contested mark is the general public of the European Union.
16      In the second place, it should be noted that the applicant rightly points out that the mark applied for does not represent either a basic geometric shape or an excessively simple shape.
17      In that regard, it should be borne in mind that a sign which is excessively simple and is constituted by a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (judgments of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22, and of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 26).
18      However, contrary to what the applicant maintains, it cannot be inferred from this that a mark is distinctive merely because it does not represent a basic geometric figure or an excessively simple shape. The mark must also have aspects which may be easily and instantly memorised by the relevant public and which would make it possible for those signs to be perceived immediately as an indication of the commercial origin of the goods it covers (see, to that effect, judgments of 29 September 2009, Representation of half a smiley smile, T‑139/08, EU:T:2009:364, paragraph 31, and of 15 December 2016, Novartis v EUIPO (Representation of a grey curve and representation of a green curve), T‑678/15 and T‑679/15, not published, EU:T:2016:749, paragraphs 40 and 41).
19      In the present case, it should be noted that the mark applied for represents a combination of black lines, some of which form an angle.
20      In that regard, first, it must be held that, given their simplicity, none of those black lines, taken individually, is likely to present aspects or communicate a message, which would be easily and instantly memorised by the relevant public, which, moreover, the applicant does not suggest.
21      Second, the applicant does indeed submit that, taken together, the black lines making up the mark applied for create, first, a contrasted effect and, second, an illusion of an ‘outer boundary line’ and an illusion of movement forwards. The applicant adds that the perception of that mark would be altered by the angle it is viewed from by the relevant public.
22      However, first of all, it should be noted that the contrasted effect alleged by the applicant results solely from the fact that the mark applied for is in black and white. Such a combination of colours is commonplace, with the result that it cannot, by itself, confer on that mark a characteristic likely to be perceived by the relevant public as an indication of the origin of the goods at issue.
23      Next, even if the mark applied for were capable of creating an illusion of movement or a boundary line, it must be pointed out that such an illusion is perceptible only after a detailed examination of that mark, with the result that that illusion does not constitute an aspect that can be easily and instantly memorised by the relevant public.
24      Lastly, it must be stated that the applicant has not adduced any evidence capable of establishing that the change in the perception of the mark applied for resulting from the change in the angle it is viewed from by the relevant public, assuming that that has been established, is such that it constitutes a characteristic likely to be perceived by the relevant public as an indication of the origin of the goods at issue.
25      Third, it should be noted that, contrary to what the applicant suggests, the mark applied for differs from the marks at issue in the cases which gave rise to the judgment of 15 December 2016, Representation of a grey curve and representation of a green curve (T‑678/15 and T‑679/15, not published, EU:T:2016:749). The Court noted in those cases that those marks were reminiscent of both the letter ‘c’ and a crescent moon, which were, moreover, stylised on account of the different shades of colour creating a play of light and shadow, the curves that constitute them being of varying thickness and those curves having a slight twist.
26      In those circumstances, it should be noted that the Board of Appeal correctly found that the mark applied for, considered as a whole, did not represent more than the sum of the lines of which it is composed. Since, as has been pointed out in paragraph 20 above, those lines are not likely to present aspects, or communicate a message, which would be easily and instantly memorised by the relevant public, it must be held, as the Board of Appeal did, that that mark will be perceived by the relevant public as having a decorative purpose.
27      In the third place, it should be borne in mind that, according to the case-law, the notion of general interest underlying Article 7(1)(b) of Regulation 2017/1001 is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him or her, without any possibility of confusion, to distinguish the product or service from others which have another origin (see judgment of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraph 56 and the case-law cited).
28      Consequently, it must be held that, contrary to what the applicant claims, it does not follow from the notion of general interest underlying Article 7(1)(b) of Regulation 2017/1001 that a mark must be regarded as distinctive solely on the ground that the registration of that mark is not liable to harm the competitors of the proprietor of that mark.
29      Therefore, it must be held that the Board of Appeal was right to find that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, notwithstanding the references, in the contested decision, to judgments relating to three-dimensional marks.
30      It follows that the applicant’s first plea in law must be rejected.
The second plea in law, alleging failure to state reasons
31      The applicant criticises the Board of Appeal for failing to explain, in the contested decision, why the mark applied for was devoid of any distinctive character when other marks which it had identified in the course of the administrative procedure could have been registered.
32      EUIPO disputes the applicant’s arguments.
33      In that regard, under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
34      In the present case, it is sufficient to note, as EUIPO did, that the Board of Appeal explained, in paragraphs 31 to 41 of the contested decision, that it was not bound by the decisions relied on by the applicant and that, in any event, those decisions concerned marks which were not comparable to the mark applied for.
35      Consequently, it should be noted that the contested decision discloses in a clear and unequivocal manner why the Board of Appeal considered that the mark applied for was caught by the ground for refusal under Article 7(1)(b) of Regulation 2017/1001, whereas other marks, identified by the applicant, could have been registered. It follows that sufficient reasons were given for the contested decision.
36      In those circumstances, the applicant’s second plea in law must be rejected and the action must therefore be dismissed in its entirety.
Costs
37      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Philip Morris Products SA to pay the costs.
Kornezov
Kowalik-Bańczyk
Hesse
Delivered in open court in Luxembourg on 5 October 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.