ORDER OF THE GENERAL COURT (Third Chamber)
16 December 2022 (*)
(Action for annulment – EU trade mark – International registration designating the European Union – Word mark AIRFLOW – Absolute grounds for refusal – Lack of distinctive character – Descriptive character – Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law)
In Case T‑751/21,
EMS Electro Medical Systems GmbH, established in Munich (Germany), represented by K. Scheib and C. Schulte, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee and E. Nicolás Gómez, acting as Agents,
defendant,
THE GENERAL COURT (Third Chamber),
composed, at the time of the deliberations, of G. De Baere, President, K. Kecsmár and S. Kingston (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, EMS Electro Medical Systems GmbH, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 September 2021 (Case R 546/2021-4) (‘the contested decision’).
Background to the dispute
2        On 13 March 2020, the applicant designated the European Union in its international registration No 1 533 193 for the word mark AIRFLOW.
3        The goods and services for which protection in the European Union has been sought fall within Classes 3, 5, 10, 42 and 44, within the meaning 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. The goods in Class 10, after the limitation in the EUIPO proceedings, correspond to the following description: ‘Interdental brushes for dental treatment by a dentist; electric dental hygiene appliances; electric oral hygiene appliances for use by dentists [for medical purposes]’.
4        On 25 February 2021, the examiner refused protection for the international registration designating the European Union for ‘electric dental hygiene appliances; electric oral hygiene appliances used by dentists [for medical purposes]’, falling within Class 10, on the basis of Article 7(1)(b) and (c) 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        The examiner concluded that, for such goods, the sign had an obvious descriptive meaning and was also devoid of distinctive character, within the meaning of Article 7(1)(c) and (b) of Regulation 2017/1001, respectively.
6        On 25 March 2021, the applicant appealed to EUIPO against the examiner’s decision on the grounds that the term ‘airflow’ was neither descriptive nor devoid of distinctive character for the goods at issue referred to in paragraph 4 above.
7        By the contested decision, the Board of Appeal dismissed the appeal.
8        The Board of Appeal considered that the word sign AIRFLOW was descriptive of the goods at issue within the meaning of Article 7(1)(c) of Regulation 2017/1001.
9        Moreover, it considered that, since the word sign AIRFLOW was purely descriptive, it was also devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
Form of orders sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
13      In the present case, the Court considers itself sufficiently informed by the documents in the file and decides, pursuant to that article, to give a decision without taking further steps in the proceedings, even if a party has requested a hearing (see, to that effect, orders of 7 June 2016, Beele Engineering v EUIPO (WE CARE), T‑220/15, not published, EU:T:2016:346, paragraph 12 and the case-law cited, and of 13 September 2018, Gratis iҫ ve Dis Ticaret v EUIPO (gratis), T‑495/17 and T‑496/17, not published, EU:T:2018:554, paragraph 10).
14      In support of its action, the applicant invokes, in essence, four pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation 2017/1001, the second alleging infringement of Article 7(1)(b) of that regulation, the third alleging infringement of Article 94(1) of that regulation and the fourth alleging infringement of Article 95(1) of that regulation.
15      In that regard, as concerns the third and fourth pleas in law, alleging, respectively, a lack of reasoning and breach of the ‘principle of official investigation’, it must be noted that the applicant confuses Articles 75 and 76 of Regulation No 207/2009 with the equivalent provisions of Articles 94 and 95 of Regulation 2017/1001. The references made in the application to Article 75(1) and Article 76(1) of Regulation 2017/1001 should therefore be understood as referring to Article 94(1) and Article 95(1) of Regulation 2017/1001 respectively.
The first plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
16      The applicant claims that the Board of Appeal misinterpreted Article 7(1)(c) of Regulation 2017/1001 by considering the term ‘airflow’ to be descriptive of the goods at issue.
17      By the first complaint of the first plea in law, the applicant claims that the term ‘airflow’ refers in particular to a meaning indicating a breeze generated by the movement of an object. The applicant annexes to the application a further definition of the term ‘airflow’ from the Oxford Learners Dictionary, referring to it as being synonymous in particular with a breeze around moving aircraft or vehicles. The applicant submits that the term ‘airflow’ does not have the meaning attributed to it by the Board of Appeal, and that it can only refer to the creation of air as a result of the movement of an object.
18      By a second complaint, the applicant considers that the Board of Appeal wrongly found that consumers would immediately think, when confronted with the trade mark AIRFLOW in connection with the goods at issue, that the trade mark designates cleaning apparatuses which can clean teeth by means of a blast of air. The applicant submits that the goods at issue cannot be used to clean teeth with a flow of air alone, and that the addition of further components, such as water and cleaning agents, is necessary for the apparatus to perform its tooth cleaning function.
19      EUIPO contests those arguments.
20      Under Article 7(1)(c) of Regulation 2017/1001, registration is to be refused in respect of 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 provision of the service, or other characteristics thereof. According to Article 7(2) of that regulation, Article 7(1) is applicable even if the grounds for refusal exist only in one part of the European Union.
21      According to settled case-law, for a sign to be caught by the prohibition laid down by that provision, there must be a sufficiently direct and concrete relationship between the sign and the goods or services in question to enable the public concerned to perceive immediately, and without further reflection, a description of those goods or services, or of one of their characteristics (judgments of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25; of 12 May 2016, Chung-Yuan Chang v EUIPO – BSH Hausgeräte (AROMA), T‑749/14, not published, EU:T:2016:286, paragraph 23; and of 25 October 2018, Devin v EUIPO – Haskovo (DEVIN), T‑122/17, EU:T:2018:719, paragraph 18).
22      Furthermore, the descriptive character of a sign can be assessed only in relation, first, to the goods or services concerned and, secondly, to the understanding which the relevant public has of it (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
23      The choice made by the EU legislature of the term ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are only those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or services in respect of which registration is sought (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50).
24      As a preliminary point, with regard to the definition of the relevant public, the Board of Appeal considered that, since the mark applied for consisted of an English word, its descriptive character would be assessed in relation to the English-speaking public. It noted that ‘electric dental and oral hygiene appliances’ were explicitly intended for use by dentists and that ‘electric dental hygiene appliances’ could also be aimed at the general public. The applicant does not contest that definition.
25      In relation to the first complaint, the Board of Appeal considered that the term ‘airflow’ referred to a flow of air. It considered that the goods at issue could all be operated by means of an airflow and concluded that the mark would be immediately understood by the relevant public as describing their type and nature, namely that they produced an airflow. It found that the evidence adduced by the applicant showed that a flow of air was commonly used in dental cleaning apparatuses.
26      In that regard, the applicant attaches an additional definition of the term ‘airflow’ in order to demonstrate that there can be no link, direct or concrete, between that term and the goods at issue within the meaning of the case-law. The applicant relies on that definition, namely ‘a breeze flowing around moving aircraft or vehicles’, arguing that it would not enable the relevant public to perceive immediately, and without further reflection, a description of those goods or of any of their characteristics.
27      However, it must be noted that the applicant expressly admits in the application that the term ‘airflow’ can also be understood as a ‘stream of air’.
28      According to the case-law, a word sign must be refused registration, pursuant to Article 7(1)(c) of Regulation 2017/1001, if, in at least one of its potential meanings, it designates a characteristic of the goods or services concerned (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32, and of 12 May 2016, AROMA, T‑749/14, not published, EU:T:2016:286, paragraph 29).
29      It must therefore be held that the applicant’s argument that the term ‘airflow’ may have another meaning is manifestly irrelevant.
30      In addition, the applicant does not contest the Board of Appeal’s assessment that the goods at issue can be operated by means of a flow of air.
31      It follows that the applicant does not raise any argument such as to establish that the Board of Appeal erred in considering that the sign AIRFLOW would be immediately understood by the relevant public as describing the type and nature of the goods concerned, namely that they produce a flow of air.
32      With regard to the second complaint, the Board of Appeal considered that the fact that cleaning products and a jet of water had to be added to the flow of air in order for the apparatus to perform its function of cleaning teeth properly did not alter the descriptive meaning of the term ‘airflow’, which was easily understood as the flow of air used to apply those products evenly to the teeth. The Board of Appeal thus considered that there was a direct and objective link between the goods at issue and the descriptive meaning of the mark. Furthermore, it found that the mark was not an imaginary, invented or allusive expression from the perspective of the English-speaking consumer.
33      In that regard, the applicant claims that a flow of air alone cannot be regarded as sufficient to constitute tooth cleaning in the sense of the operation of the goods at issue. According to the applicant, air plays only a supplementary role in such a device and any moderately informed consumer would immediately recognise the need for additional cleaning products in order for the goods at issue to perform their cleaning function properly.
34      It suffices to note that the signs and indications referred to in Article 7(1)(c) of Regulation 2017/1001 are those which may serve, in normal use from the point of view of the target public, to designate, either directly or by reference to one of its essential characteristics, the product or service in respect of which registration is sought (judgments of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 39, and of 22 June 2005, PAPERLAB, T‑19/04, EU:T:2005:247, paragraph 24).
35      It follows that, as EUIPO submits, it is sufficient for the sign to designate a single characteristic of the goods at issue, namely that they are operated by means of a flow of air, for it to fall within the prohibition in Article 7(1)(c) of Regulation 2017/1001. Consequently, the applicant’s argument that a flow of air alone would not be sufficient to clean teeth is manifestly irrelevant. Therefore, the fact that cleaning products and a jet of water must be added to the flow of air in order for the device to perform its function of cleaning teeth properly does not alter the descriptive meaning of the term ‘airflow’.
36      As regards the applicant’s argument that the Board of Appeal did not indicate why the sign AIRFLOW is not an imaginary, invented or unusual expression, first, it is sufficient to point out that that sign consists of an English word which appears in dictionaries.
37      Secondly, it is apparent from the case-law that, for EUIPO to refuse registration on the basis of Article 7(1)(c) of Regulation 2017/1001, it is not necessary for the signs and indications making up the mark referred to in that article to be actually used, at the time of the application for registration, for purposes descriptive of goods or services such as those in respect of which the application is made or of the characteristics of those goods or services. It is sufficient, as the very wording of that provision indicates, that those signs and indications may be used for such purposes (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32). The applicant’s argument that the sign AIRFLOW is an unusual expression is therefore irrelevant.
38      In the light of all the foregoing, the applicant’s complaints challenging the Board of Appeal’s finding that the mark applied for was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 and, therefore, the first plea in law, must be rejected as manifestly unfounded.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
39      In the context of the second plea in law, the applicant claims that the Board of Appeal erred in its assessment of Article 7(1)(b) of Regulation 2017/1001 by finding that the mark AIRFLOW was devoid of distinctive character.
40      The applicant considers that the distinctive character of the verbal sign was not assessed by the Board of Appeal in accordance with the rules on grounds for refusal relating to the requirement of availability. In support of its argument, the applicant refers to the case-law of the Court of Justice which, in its view, suggests that it is for the Board of Appeal to verify that none of the grounds for refusal of registration apply to the trade mark at issue, and that the requirement of availability of a trade mark must be proved specifically for the goods and services for which protection under trade mark law is claimed. In that regard, the applicant submits that the contested decision fails to thoroughly examine the applicant’s arguments.
41      EUIPO contests the applicant’s arguments.
42      Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of distinctive character are to be refused registration. According to Article 7(2) of that regulation, Article 7(1) is applicable even if the grounds for refusal exist only in one part of the Union.
43      In that regard, it should be noted that, as is clear from Article 7(1) of Regulation 2017/1001, it is sufficient for one of the absolute grounds for refusal to apply for the sign not to be registered as an EU trade mark (see, to that effect, judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29).
44      Consequently, since, as is apparent from the examination of the first plea in law, the sign at issue is descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 and that ground alone justifies the refusal to register, it is not necessary to examine the merits of the plea alleging infringement of Article 7(1)(b) of that regulation (see, to that effect, judgment of 22 November 2018, Addiko Bank v EUIPO (STRAIGHTFORWARD BANKING), T‑9/18, not published, EU:T:2018:827, paragraph 38 and the case-law cited).
45      The second plea in law must therefore be rejected as inoperative.
The third plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001
46      By its third plea in law, the applicant alleges an inadequate statement of reasons for the contested decision in breach of Article 94(1) of Regulation 2017/1001.
47      First, the applicant complains that the Board of Appeal did not take sufficient account of its statements and the evidence submitted by it. Secondly, it complains that the Board of Appeal did not sufficiently address the protection afforded by earlier registrations of marks identical to the mark applied for in respect of identical goods. It claims that the Board of Appeal should have given more reasons explaining why it considered that, in the present case, the decisions previously adopted by the examiner in respect of those other trade marks of which it is the proprietor should not be followed.
48      EUIPO contests the applicant’s arguments.
49      Under the first sentence of Article 94(1) of Regulation 2017/1001, EUIPO’s decisions must be reasoned. That obligation has the same scope as that arising from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must show clearly and unequivocally the reasoning of the author of the act, without it being necessary for the statement of reasons to specify all the relevant matters of fact and law, since the question whether the statement of reasons for an act satisfies those requirements must, however, be assessed in the light not only of its wording but also of its context and of 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).
50      That obligation to state reasons has the dual purpose of enabling, first, the persons concerned to know the reasons for the measure taken in order to defend their rights and, secondly, the EU judicature to exercise its review of the legality of the decision (judgment of 19 May 2010, Zeta Europe v OHIM (Superleggera), T‑464/08, not published, EU:T:2010:212, paragraph 47; see also, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65).
51      However, the Boards of Appeal cannot be required to provide a statement of reasons which would exhaustively follow one by one all the arguments put forward by the parties before them. The statement of reasons may therefore be implicit, provided that it enables the parties concerned to know the reasons for which the decision of the Board of Appeal was adopted and the competent court to have sufficient information to carry out its review (judgments of 9 July 2008, Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 55, and of 11 October 2011, Chestnut Medical Technologies v OHIM (PIPELINE), T‑87/10, not published, EU:T:2011:582, paragraph 41).
52      In the first place, in the contested decision, the Board of Appeal set out a clear and comprehensible reasoning for the assessment of the descriptive character of the contested mark, namely the presentation of the relevant statutory provisions and case-law (paragraphs 16 to 28 of the contested decision), the determination of the relevant public (paragraphs 21 and 22 of the contested decision), and the detailed analysis of the relationship between the verbal sign and the goods at issue (paragraphs 22 to 26 of the contested decision). The Board of Appeal’s conclusions on the descriptive character of the contested mark are therefore amply supported by the reasoning leading up to those findings.
53      It is sufficient to note that, in accordance with the case-law cited in paragraph 51 above, the Board of Appeal was not required to respond to all of the applicant’s arguments. In that regard, it should also be noted that the applicant does not specify which of its statements the Board of Appeal did not adequately address.
54      In the second place, in the contested decision, the Board of Appeal held that the applicant’s reliance on its earlier registrations of the sign AIRFLOW for identical goods could not justify a different result.
55      First, in relation to trade marks accepted by EUIPO in the past, the Board of Appeal, relying on the case-law, indicated that the registrability of a sign as an EU trade mark should be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, including in the case of previously registered identical trade marks. It noted that, although the decisions of an examiner may reflect EUIPO practice, they are never binding on the Boards of Appeal. It added that, as EUIPO does not have discretion to refuse or accept a trade mark application, the principle of legality would require that in all cases ‘the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases’.
56      Secondly, with regard to the earlier national trade mark registrations of the sign AIRFLOW for goods in Class 10, the Board of Appeal noted the case-law according to which the EU trade mark system is an autonomous system, consisting of a set of objectives and rules which are specific to it, and self-sufficient, its application being independent of any national system. It concluded that the registrability of a sign as an EU trade mark should be assessed only on the basis of the relevant EU rules and that, therefore, EUIPO was not bound by a decision at the Member State level that the sign in question was registrable in that Member State or third country as a national trade mark.
57      It follows that the Board of Appeal sufficiently explained the reasons why it considered that the earlier registrations of the sign AIRFLOW were not capable of altering its assessment of the registrability of the mark applied for. The applicant does not explain which part of that reasoning is not comprehensible.
58      Furthermore, as EUIPO points out, the fact that the applicant does not share that assessment cannot constitute a breach of the duty to state reasons.
59      In so far as the applicant’s argument is to be understood as seeking to criticise the Board of Appeal for having failed to take account of previous registrations of the mark to the extent that those registrations could have led to a different conclusion, it should be noted that the decisions which EUIPO is required to take under Regulation 2017/1001 concerning the registration of a sign as an EU trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the Board of Appeal rightly considered that the legality of the decisions of the Boards of Appeal should be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of decision-making practice prior to those decisions (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
60      As can be seen from its reasoning above, the Board of Appeal took into account previous registrations and thus emphasised that decisions taken by an EUIPO examiner do not bind the Boards of Appeal.
61      It follows from the foregoing that the third plea in law must be rejected as manifestly unfounded.
The fourth plea in law, alleging infringement of Article 95(1) of Regulation 2017/1001
62      By its fourth plea in law, the applicant alleges infringement of Article 95(1) of Regulation 2017/1001 concerning the obligation to examine the relevant facts of its own motion. The applicant complains that the Board of Appeal infringed the ‘principle of official investigation’. It claims that the Board of Appeal did not rely on sufficient evidence to justify the refusal to register the trade mark applied for in respect of its descriptive character as well as in respect of the identical earlier registrations. It claims that the decision was based on mere presumptions.
63      EUIPO contests those arguments.
64      In so far as the applicant complains that the Board of Appeal failed to assess the facts relevant to the grounds for refusal of the mark concerning its descriptive character, it is sufficient to note that the Board of Appeal took into account the evidence adduced by the applicant concerning the descriptive character of the mark, in particular in paragraphs 9 and 25 of the contested decision. In any event, that evidence does not demonstrate descriptiveness, notwithstanding what the applicant claims.
65      Furthermore, it should be noted that it follows from the case-law cited in paragraph 37 above that, in order to refuse registration of a mark applied for on the basis of Article 7(1)(c) of Regulation 2017/1001, it is not necessary for the Board of Appeal to show that the sign at issue has actually been used for descriptive purposes.
66      Moreover, it should also be noted that it is apparent from the analysis of the third plea in law that the Board of Appeal also considered the earlier registrations raised by the applicant in paragraphs 29 to 31 of the contested decision.
67      In the light of all the foregoing considerations, the fourth plea in law must be rejected as manifestly unfounded and, consequently, the action as a whole must be dismissed as manifestly lacking any foundation in law.
Costs
68      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
69      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 (Third Chamber)
hereby orders:
1.      The action is dismissed;
2.      EMS Electro Medical Systems GmbH is ordered to pay the costs.
Luxembourg, 16 December 2022.
E. Coulon
G. De Baere
Registrar
President
*      Language of the case: English.