JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
13 November 2024 (*)
( EU trade mark – Application for EU word mark SUSTAINABLE BY DESIGN – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑3/24,
Delvaux design coordination et finance (DDCF), established in Etterbeek (Belgium), represented by M. Hartmann, S. Fröhlich and T. Ntinas, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,
Registrar: V. Di Bucci,
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 under Article 263 TFEU, the applicant, Delvaux design coordination et finance (DDCF), seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 October 2023 (Case R 1075/2023-2) (‘the contested decision’).
Background to the dispute
2        On 9 November 2022, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign SUSTAINABLE BY DESIGN.
3        The goods in respect of which registration was sought, following the amendment requested by the applicant and its acceptance of the suggested reformulation by EUIPO, are in Class 18 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: ‘Leather and imitation leather, goods made thereof, not included in other classes, namely bags, handbags, traveling bags and satchels, whips, harness and saddlery, sports bags, backpacks, toilet bags, not filled, clutch bags, document holders, attaché cases, key cases; traveling sets (leatherware); school bags; briefcases; briefcases leather or imitation leather bags; trunks, suitcases and small cases; change purses, money pouches and pocket wallets; garment bags; business card cases (leatherware); wallets and holders for credit cards (leatherware); shoulder straps (belts) and belly bands of leather; umbrellas, parasols and walking sticks’.
4        By decision of 28 April 2023, the examiner rejected the application for registration of that trade mark 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), read in conjunction with Article 7(2) of that regulation.
5        On 24 May 2023, 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 registration of the mark applied for should be refused on the basis of Article 7(1)(b) of Regulation 2017/1001.
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 incurred by EUIPO in the event that an oral hearing is convened.
Law
9        The applicant relies, in essence, on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. In particular, the applicant claims, first, that the Board of Appeal was incorrect in finding that the level of attention of the relevant public could be relatively low since the mark applied for was a promotional indication and, second, that the Board of Appeal was incorrect in finding that the mark applied for would be understood as a promotional message implying that the goods at issue were purposely made to be environmentally friendly.
10      Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered. Under Article 7(2) of that regulation, Article 7(1) thereof is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
11      The distinctive character of a trade mark within the meaning of Article 7(1)(b) of Regulation 2017/1001 means that that mark 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).
12      In that regard, it must be borne in mind that signs which are devoid of any distinctive character, which are referred to in Article 7(1)(b) of Regulation 2017/1001, are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services designated by the mark, thus enabling the consumer who acquired the goods or services to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgment of 27 February 2002, REWE-Zentral v OHIM (LITE), T‑79/00, EU:T:2002:42, paragraph 26; see, also, judgment of 3 September 2015, iNET24 Holding v OHIM (IDIRECT24), T‑225/14, not published, EU:T:2015:585, paragraph 43 and the case-law cited).
13      The distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation 2017/1001, must be assessed, first, by reference to the goods or services in respect of which registration has been sought 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).
14      A sign is not capable of performing the essential function of a mark and is, therefore, not distinctive within the meaning of Article 7(1)(b) of Regulation 2017/1001 when the association established between its semantic content and the goods and services at issue is sufficiently concrete and direct so as to enable the relevant public to identify those goods and services immediately (see, to that effect, judgments of 16 May 2013, Restoin v OHIM (EQUIPMENT), T‑356/11, not published, EU:T:2013:253, paragraph 42, and of 27 June 2013, International Engine Intellectual Property Company v OHIM (PURE POWER), T‑248/11, not published, EU:T:2013:333, paragraph 20 and the case-law cited).
15      As regards 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, registration of such marks is not excluded as such by virtue of such use (judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 35).
16      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 are nevertheless still capable of indicating to the consumer the commercial origin of the goods or services at issue. That can be the position, in particular, where those marks can have a number of meanings, constitute a play on words or be perceived as fanciful, surprising and unexpected and, in that way, be easily remembered, so that they are not merely an ordinary advertising message, but possess a certain originality or resonance, require at least some interpretation by the relevant public, or set off a cognitive process in the minds of the public concerned (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57, and of 1 February 2023, Groschopp v EUIPO (Sustainability through Quality), T‑253/22, not published, EU:T:2023:29, paragraph 25).
17      It is in the light of those considerations, having regard to the Board of Appeal’s assessment in the contested decision, that the applicant’s arguments must be examined.
18      In the first place, as regards the relevant public, the Board of Appeal observed, in paragraph 25 of the contested decision, that the goods at issue were intended for the public at large with, in principle, an average level of attention as well as for a professional public with, in principle, a high level of attention. The Board of Appeal further observed, in paragraph 28 of the contested decision, that since the mark applied for is composed of elements of the English language, the relevant public is the English-speaking public, including the public of Member States where English is an official language.
19      The applicant does not dispute those assessments of the Board of Appeal summarised in paragraph 18 above.
20      However, the applicant argues that the Board of Appeal found, incorrectly, in paragraph 26 of the contested decision, that the level of attention of the relevant public may be relatively low when it comes to promotional indications. In that regard, the applicant criticises the Board of Appeal for having found that the level of attention of the relevant public was one of the factors to be taken into account in order to determine whether a mark was an advertising slogan, so that the determination of that level of attention ought to have preceded, and not followed, the finding that a mark was an advertising slogan.
21      EUIPO disputes the applicant’s arguments.
22      In that regard, it should be noted that the applicant does not state what the consequence would be for the assessment of the distinctive character of the mark applied for if a higher level of attention than ‘[possibly] relatively low’ were to be applied by the Board of Appeal in paragraph 26 of the contested decision. On the contrary, the applicant seems to consider that a low level of attention would have a negative effect on the relevant public’s grasp of the mark applied for, which would, as a result, help to lend it distinctive character. Moreover, even if the applicant were, in reality, to claim that the Board of Appeal ought to have taken into account a higher level of attention in the light of the composition of the relevant public, it should be borne in mind that, according to the case-law, the higher degree of attention of the relevant specialist public does not necessarily mean that a weaker distinctive character of a sign is sufficient (see, to that effect, judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 48) and that the applicant has not explained why that could have been so in the present case.
23      Hence, the applicant’s argument relating to the determination of the level of attention of the relevant public cannot succeed.
24      In the second place, as regards the relevant public’s perception of the mark applied for in the light of the goods covered, the Board of Appeal observed that the term ‘sustainable’ meant ‘causing, or made in a way that causes, little or no damage to the environment and therefore able to continue for a long time’ and that that term was commonplace in the field of advertising and thus conferred an advertising character on the mark applied for. The Board of Appeal also observed that the expression ‘by design’ meant something that ‘someone [did] deliberately, rather than by accident’, and that it was a relatively common combination of words that would be understood immediately by the relevant English-speaking public in general. The Board of Appeal inferred therefrom that the mark applied for would be perceived by a significant portion of the relevant public as a promotional message, stating that the goods at issue were, in the words of the examiner, ‘purposely made to be environmentally friendly’ or, in other words, that they were designed to be sustainable. Such a message was, in the opinion of the Board of Appeal, unambiguous and evident, without any particular mental exertion required on the part of the relevant public. The Board of Appeal concluded that the mark applied for was devoid of distinctive character in relation to all the goods covered by it.
25      The applicant claims that, given its meaning, the mark applied for is not an advertising slogan, as the expression ‘sustainable by design’ or, at the very least, the expression ‘by design’ does not highlight the positive aspects of the goods concerned. Even if the mark applied for were to be perceived as an advertising slogan, the applicant takes the view that that does not suffice to establish that it is devoid of the minimum degree of distinctive character necessary in order to be registered, in the light of, inter alia, the several meanings that may be attributed to it, its fanciful and linguistically unusual character and the fact that the expression of which it consists is a play on words.
26      EUIPO disputes the applicant’s arguments.
27      It should be noted, first, that, as stated by the Board of Appeal in paragraph 31 of the contested decision, the term ‘sustainable’ has a specific meaning. According to the online Cambridge Dictionary, it refers to ‘causing, or made in a way that causes, little or no damage to the environment and therefore able to continue for a long time’. That is also the meaning attributed to that term by the case-law, which translates it by ‘durable’ in French (judgment of 1 February 2023, Groschopp v EUIPO (Sustainability through Quality), T‑253/22, not published, EU:T:2023:29, paragraph 34) and indicates that it refers, inter alia, to services which ‘contribute, in a general manner, to preventing long-term ecological damage’ (judgment of 16 October 2018, DNV GL v EUIPO (Sustainablel), T‑644/17, not published, EU:T:2018:684, paragraph 34).
28      Hence, contrary to the applicant’s assertions, the Court does not find that the term ‘sustainable’ is quite vague and has no specific meaning. In that regard, it should be noted that although the applicant argues that the term ‘sustainable’ has no ‘particular meaning’, it nevertheless recognises that that term means ‘that something [is] environmentally friendly’. As to the applicant’s statement to the effect that that term ‘could have different meanings’, the Court finds that the applicant has not managed to indicate what they might be. It has, moreover, been held that, when applied to services which concern the creation of sustainable strategies and operations aimed at reducing the impact on the environment, the term ‘sustainable’ suggests a clear and unequivocal meaning (judgment of 16 October 2018, Sustainablel, T‑644/17, not published, EU:T:2018:684, paragraph 34).
29      It should also be noted that the expression ‘by design’ has its own entry in the online Collins Dictionary. As observed by the Board of Appeal in paragraph 33 of the contested decision, that entry refers to ‘if something happens or is done by design, someone does it deliberately, rather than by accident’.
30      Second, it should be borne in mind, as observed in paragraph 16 above, that, according to the case-law, marks made up of signs or indications that are also used as advertising slogans may nevertheless still be capable of indicating to the consumer the commercial origin of the goods or services at issue, in particular where those marks can have a number of meanings, constitute a play on words or be perceived as fanciful, surprising and unexpected.
31      Relying on that case-law, the applicant submits that the expression ‘by design’, far from being a commonly used expression that will be understood immediately as meaning ‘deliberately’, as it was found to be by the Board of Appeal, instead is a sophisticated term in English. In that regard, the applicant submits that that expression may have another meaning than that attributed to it by the Board of Appeal.
32      In that regard, it must be borne in mind that the fact that the mark applied for has a number of meanings is a relevant factor which must be taken into consideration in the context of Article 7(1)(b) of Regulation 2017/1001 (judgment of 21 February 2024, Timothy Jacob Jensen Studios v EUIPO (DESIGNERS TRUST), T‑92/23, not published, EU:T:2024:107, paragraph 26).
33      However, the applicant’s assertion about the sophisticated nature of the expression ‘by design’ is not only unsubstantiated, it also stands in contradiction with the fact that that expression has its own entry both in the online Collins Dictionary, referred to in paragraph 29 above, and in the online Oxford English Dictionary and the online Cambridge Dictionary, which define it in the same way. The Board of Appeal was accordingly correct in finding, in paragraph 35 of the contested decision, that the combination of the two basic words ‘by’ and ‘design’ is a relatively common combination that will be understood by an English-speaking public.
34      Nor does it matter, as the applicant claims it does, that the term ‘design’ may refer not only to an intention or pattern about doing something, but also to a ‘plan’, so that the expression ‘by design’ can not only mean ‘intentionally’ but can also refer to a ‘plan or scheme conceived in the mind and intended for subsequent execution’. As observed by EUIPO, those two meanings are closely connected.
35      Lastly, the applicant’s assertion that the term ‘design’ may also refer to the ‘appearance’ of a good, with the result that the expression ‘by design’ may indicate that the goods at issue are, ‘by way of [their] appearance’, sustainable and environmentally friendly, cannot succeed. As the applicant itself observes, the goods covered by the mark applied for, including those made of leather, may not be sustainable due to their appearance or their shape. They may be so, in particular, because of their quality, be it the quality of the leather used or the quality of the manufacture of the bag, which will make that product more robust and long lasting. However, the quality of a bag must not be confused with its appearance or shape.
36      In that regard, the applicant may not successfully rely on Article 3(a) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), which defines the English-language term ‘design’, or its French-language equivalent ‘dessin ou modèle’ as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’. As observed by EUIPO, the relevant public, which is not made up of intellectual property legal professionals, is unlikely to perceive the term ‘design’ as referring to the definition set out in Regulation No 6/2002.
37      Relying once again on the case-law cited in paragraph 30 above, the applicant submits that the expression ‘sustainable by design’ constitutes a play on words. In that regard, it submits, in essence, that the term ‘design’ will be understood as referring to the appearance of the goods at issue and the expression ‘by design’ as indicating the intentional or deliberate nature of an action, so that the expression ‘sustainable by design’ will be perceived as meaning both that the goods at issue are environmentally friendly by their appearance and that they were purposely made to be environmentally friendly.
38      In that regard, suffice it to note that, as is apparent from paragraphs 35 and 36 above, the expression ‘by design’ will not be understood as referring to the appearance of the goods at issue because a good cannot be environmentally friendly by virtue of its appearance. Consequently, the mark applied for cannot be regarded as constituting a play on words.
39      Lastly, again with reference to the case-law cited in paragraph 30 above, the applicant submits that the expression ‘sustainable by design’ will be perceived as unexpected, or even fanciful. In that regard, it submits, inter alia, that that expression is not a common expression, particularly when it is used in relation to goods made of leather. In the applicant’s submission, the term ‘sustainable’ can be associated with virtually any existing goods or services and, for that reason, lacks any link, or at least any direct link, to the goods covered by the mark applied for, in particular goods made of leather.
40      In that regard, it should be noted that it has been held, in respect of backpacks in Class 18, that those goods could be made in a sustainable and environmentally friendly manner, as they could be manufactured using components that were not harmful to the environment, or be made using materials that were organic, recycled or more sustainable, or made using processes limiting the use or emission of chemical substances, thereby contributing to environmental conservation or, at least, having a more limited impact on the environment (judgment of 13 September 2023, Ecoalf Recycled Fabrics v EUIPO (BECAUSE THERE IS NO PLANET B), T‑324/22, not published EU:T:2023:536, paragraphs 51 and 52). The applicant itself has suggested that leather bags may be regarded as being environmentally friendly where, for example, they last longer than other goods, or where animals whose leather was used were treated in a particularly humane manner. Consequently, it cannot be held that the link between the expression ‘sustainable by design’ and the goods at issue, including goods made of leather, is not sufficiently concrete and direct for the purposes of the case-law referred to in paragraph 14 above. Thus, the applicant has not demonstrated that the expression ‘sustainable by design’ was unexpected, or even fanciful.
41      Third, the applicant is incorrect in arguing, in essence, against the point that the expression ‘sustainable by design’ may have a positive connotation, inter alia because such a connotation is not usually attributed to the expression ‘by design’, which refers to an action done willingly, an aspect which is relevant in determining whether the law has been broken.
42      In that regard, the Court notes that the applicant states expressly that it does not deny that the term ‘sustainable’ may have a positive connotation.
43      The Court also notes that, as observed by EUIPO, the applicant’s argument to the effect, in essence, that the expression ‘by design’ refers to an intention to commit an offence is not substantiated, since the applicant does not indicate the sources on which it relies to propose such a definition. Therefore, the expression ‘by design’ cannot be regarded as having a negative connotation. At the most, it could be regarded as having a neutral connotation.
44      Given the positive, undisputed connotation of the term ‘sustainable’, the mere fact that the expression ‘by design’ may have a neutral connotation does not suffice to establish that the mark applied for does not have a positive connotation.
45      Consequently, the applicant is incorrect in criticising the Board of Appeal for having found, without explanation, that the mark applied for was not promotional in nature. The applicant in fact relies solely on the lack of positive connotation of that mark. Yet, as has just been found in paragraph 44 above, it does have a positive connotation.
46      It follows from the foregoing that, as observed by the Board of Appeal in paragraphs 39 and 41 of the contested decision, the expression ‘sustainable by design’ will be perceived as conveying a laudatory message, indicating that the goods covered by the mark applied for were intentionally or purposely made to be environmentally friendly or sustainable.
47      Consequently, the Board of Appeal did not make an error of assessment in concluding, in paragraph 42 of the contested decision, that the mark applied for was inherently devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
48      The finding in paragraph 47 above cannot be called into question by the applicant’s argument that the Board of Appeal did not take account – or failed to take sufficient account – of the marks registered with EUIPO containing the terms ‘sustainable’ or ‘by design’, as well as of the fact that the word mark SUSTAINABLE BY DESIGN has been registered in France, the United Kingdom and the United States.
49      As regards the applicant’s argument alleging insufficient account taken of comparable marks registered with EUIPO, suffice it to recall that, in its review of legality, the General Court is not bound by EUIPO’s decision-making practice (see judgment of 7 September 2022, Völkl v EUIPO – Marker Dalbello Völkl (International) (Völkl), T‑155/21, not published, EU:T:2022:518, paragraph 32 and the case-law cited).
50      Consequently, the Board of Appeal was correct in finding, in paragraph 50 of the contested decision, that the applicant could not rely on EUIPO’s decision-making practice to invalidate its finding that the mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
51      As regards the applicant’s argument based on the fact that the mark SUSTAINABLE BY DESIGN has been registered in France and the United Kingdom, and twice in the United States, it must be borne in mind that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any national system and the legality of decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the Courts of the European Union (see judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58 and the case-law cited).
52      Accordingly, EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or indeed a third country, that a sign is registrable as a national trade mark (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47).
53      Consequently, the Board of Appeal was correct in finding, in paragraphs 47, 49 and 50 of the contested decision, that the fact that the mark applied for had been registered in France, the United Kingdom and the United States did not invalidate its finding that that mark was devoid of distinctive character.
54      It follows from the foregoing that the applicant’s single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, must be rejected. Consequently, the action must be dismissed.
Costs
55      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.
56      Even though the applicant has been unsuccessful, EUIPO contended that it should be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Delvaux design coordination et finance (DDCF) and the European Union Intellectual Property Office (EUIPO) each to bear its own costs.
Kowalik-Bańczyk
Buttigieg
Hesse
Delivered in open court in Luxembourg on 13 November 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.