JUDGMENT OF THE GENERAL COURT (Third Chamber)
10 July 2024 (*)
(EU trade mark – Invalidity proceedings – EU word mark duch puszczy – Absolute ground for invalidity – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009 – Article 52(1)(a) of Regulation No 207/2009 – Article 95(2) of Regulation (EU) 2017/1001 – Article 16(2) of Delegated Regulation (EU) 2018/625)
In Case T‑473/23,
Bartex Bartol sp. z o.o. sp. k., established in Nowy Tomyśl (Poland), represented by A. Gierczak, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Grupa Chorten sp. z o.o., established in Białystok (Poland), represented by A. Brudnoch, lawyer,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl (Rapporteur) and D. Kukovec, 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, Bartex Bartol sp. z o.o. sp. k., seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 May 2023 (Case R 1450/2022-5) (‘the contested decision’).
Background to the dispute
2        On 2 February 2021, the intervener, Grupa Chorten sp. z o.o., filed with EUIPO an application for a declaration of invalidity of the EU trade mark that had been registered following an application filed on 18 July 2016 for the word sign duch puszczy.
3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 33 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 corresponded to the following description: ‘Alcoholic beverages (except beer)’.
4        The grounds relied on in support of the request for a declaration of invalidity were those laid down in Article 59(1)(a) 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(1)(b), (c), and (d) of the same regulation, and Article 59(1)(b) of that regulation.
5        On 7 June 2022, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
6        On 4 August 2022, the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
7        By the contested decision, the Board of Appeal upheld the appeal and granted the application for a declaration of invalidity. In the first place, it took the view that the evidence submitted by the intervener demonstrated that the expression ‘duch puszczy’ had been coined to designate ‘moonshine’ produced according to a traditional recipe in the Podlaskie (Podlasie) region (Poland) before the filing date and that the target consumer was familiar with the product and its name following the filing date. In addition, it took the view that since the goods covered by the contested mark were ‘alcoholic beverages (except beer)’ in Class 33, that expression was descriptive of the nature of the goods in question, namely a strong alcohol similar to a home-brewed one typical of that region. It therefore concluded that that mark afforded a link with those goods to such an extent that that nexus was sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) of Regulation No 207/2009. In the second place, it noted that, since that mark was descriptive of those goods on its filing date, it could not fulfil its function as an indicator of origin and, therefore, had to be declared invalid in accordance with Article 7(1)(b) of that regulation.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
9        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
10      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The applicable law ratione temporis
11      As a preliminary point, it must be noted that, in view of the date on which the application for registration in question was filed, namely 18 July 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
12      Accordingly, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the applicant and the intervener in their written pleadings to Article 7(1)(b) and (c) and Article 59(1)(a) of Regulation 2017/1001 must be understood as referring, respectively, to Article 7(1)(b) and (c) and Article 52(1)(a) of Regulation No 207/2009, which are identical in content.
13      Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001 and by the provisions of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1). Article 82(2) of Delegated Regulation 2018/625 provides that, subject to certain exceptions, its provisions are to apply from 1 October 2017. More specifically, the provisions relating to applications for a declaration of invalidity are to apply to applications made after that date or to proceedings the adversarial part of which has started after that date. The application for a declaration of invalidity was filed with EUIPO on 2 February 2021.
Substance
14      In support of the action, the applicant relies on five pleas in law alleging, first, infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) of that regulation, second, infringement of Article 52(1)(a) of that regulation, read in conjunction with Article 7(1)(b) of that regulation, third, infringement of Article 95(2) of Regulation 2017/1001 and of Article 54(1) of Decision No 2020-1 of 27 February 2020 of the Presidium of the Boards of Appeal on the Rules of Procedure before the Boards of Appeal (‘the Rules of Procedure of the Boards of Appeal’), fourth, infringement of Article 95(1) of Regulation 2017/1001, read in conjunction with Article 52 of the Rules of Procedure of the Boards of Appeal and Article 16(2) of Delegated Regulation 2018/625, and, fifth, infringement of Article 16(2) of Delegated Regulation 2018/625 and Article 52 of the Rules of Procedure of the Boards of Appeal.
15      The Court considers it appropriate to examine the third plea first, then the fourth and fifth pleas together, then the first plea and lastly the second plea.
The third plea in law, alleging infringement of Article 95(2) of Regulation 2017/1001 and of Article 54(1) of the Rules of Procedure of the Boards of Appeal
16      The applicant, in essence, criticises the Board of Appeal for taking into consideration, without providing any justification in accordance with Article 95(2) of Regulation 2017/1001 and Article 54(1) of the Rules of Procedure of the Boards of Appeal, items of evidence Nos 1 to 20 of the statement of grounds, which were submitted by the intervener for the first time before the Board of Appeal. In its view, accordingly, the Board of Appeal’s findings based on that evidence, set out in paragraphs 74 to 87 of the contested decision, must be rejected.
17      EUIPO and the intervener dispute the applicant’s arguments.
18      Article 95(2) of Regulation 2017/1001 provides that EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.
19      It follows from the wording of Article 95(2) of Regulation 2017/1001 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of that regulation, and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgment of 27 October 2021, Jiruš v EUIPO – Nile Clothing (Racing Syndicate), T‑356/20, not published, EU:T:2021:736, paragraph 23).
20      In stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43, and of 27 October 2021, Racing Syndicate, T‑356/20, not published, EU:T:2021:736, paragraph 24).
21      Furthermore, Article 27(4) of Delegated Regulation 2018/625 circumscribes the exercise of the discretion which is provided for in Article 95(2) of Regulation 2017/1001 as regards facts and evidence submitted for the first time before the Board of Appeal (judgment of 2 June 2021, Franz Schröder v EUIPO – RDS Design (MONTANA), T‑855/19, not published, EU:T:2021:310, paragraph 26). That provision reads as follows:
‘In accordance with Article 95(2) of Regulation [2017/1001], the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:
(a)      they are, on the face of it, likely to be relevant for the outcome of the case; and
(b)      they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’
22      It follows that it is for the Court to assess whether the Board of Appeal in fact exercised the broad discretion conferred on it for the purpose of deciding, in a reasoned manner and taking due account of all the relevant circumstances, whether it was necessary to take account of evidence adduced for the first time before it in order to deliver its decision (see judgment of 5 July 2017, Gamet v EUIPO – ‘Metal-Bud II’ Robert Gubała (Door handle), T‑306/16, not published, EU:T:2017:466, paragraph 18 and the case-law cited). It is also for the Court to review whether the Board of Appeal correctly exercised the discretion conferred on it by Article 95(2) of Regulation 2017/1001 (see, to that effect, judgment of 30 November 2022, ADS L. Kowalik, B. Włodarczyk v EUIPO – ESSAtech (Accessory for wireless remote controls), T‑612/21, not published, EU:T:2022:731, paragraph 34).
23      In the context of such a review, the Court had occasion to state that new evidence is characterised by the absence of a link with another previously submitted document and by its late submission, whereas additional or supplementary evidence is, on the other hand, evidence which supplements other evidence which has previously been submitted in due time (see judgment of 9 September 2020, Kludi v EUIPO – Adlon Brand (ADLON), T‑144/19, not published, EU:T:2020:404, paragraph 56 and the case-law cited).
24      In the present case, the Board of Appeal found, in essence, in paragraphs 71 to 73 of the contested decision, that items of evidence Nos 1 to 20 of the statement of grounds had been filed in response to the Cancellation Division’s finding that the intervener had not provided sufficient and solid evidence to show descriptiveness, non-distinctiveness and customary use of the contested sign on its date of filing. It therefore agreed to take them into consideration, in accordance with Article 95(2) of Regulation 2017/1001 and Article 27(4) of Delegated Regulation 2018/625.
25      First, it should be noted that the applicant does not dispute the relevance of items of evidence Nos 1 to 20 of the statement of grounds for the outcome of the dispute, but merely argues that the late submission of that evidence was not justified by a valid reason. It does not therefore dispute the first condition laid down in Article 27(4)(a) of Delegated Regulation 2018/625.
26      Second, in so far as the applicant submits that the Board of Appeal did not put forward any justification to take account of the new evidence in question, it is clear from paragraphs 72 and 73 of the contested decision that the Board of Appeal took the view that that evidence had been filed in order to contest the findings made by the first instance in the decision subject to appeal, in accordance with the second condition laid down in Article 27(4) of Delegated Regulation 2018/625.
27      It should be noted that items of evidence Nos 1 to 20 of the statement of grounds contain information capable of demonstrating the descriptiveness and customary nature of the use of the contested mark on its filing date, just like the evidence initially submitted to the Cancellation Division. That new evidence before the Board of Appeal therefore also helps to answer the question whether that mark was descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009. It follows that that evidence must be regarded as additional to the other evidence that had previously been submitted in due time, before the Cancellation Division, and that it supplements that initial evidence, in accordance with the case-law cited in paragraph 23 above.
28      Moreover, since the Cancellation Division criticised the evidence produced before it inter alia on the ground that it was insufficient to demonstrate the descriptiveness, non-distinctiveness and customary use of the contested sign on its filing date, the intervener was entitled to submit additional evidence before the Board of Appeal in order to respond to that criticism.
29      It follows that the Board of Appeal did not make a manifest error of assessment in finding, in essence, that the second condition laid down in Article 27(1)(b) of Delegated Regulation 2018/625 was satisfied.
30      In the light of the foregoing considerations, the Board of Appeal was right to take the view that the evidence submitted for the first time before it was admissible. The third plea in law must therefore be rejected as unfounded.
The fourth and fifth pleas in law, alleging infringement of Article 95(1) of Regulation 2017/1001 read in conjunction with Article 52 of the Rules of Procedure of the Boards of Appeal and Article 16(2) of Delegated Regulation 2018/625
31      The applicant submits that multiple pieces of evidence submitted by the intervener during the proceedings before EUIPO were in Polish, whereas the language of the proceedings was English. First, EUIPO neither invited the intervener to submit its observations on the admissibility of that evidence nor required that it be translated into the language of the proceedings within a specified time limit, in accordance with Article 52(1) and (2) of the Rules of Procedure of the Boards of Appeal. In addition, the Board of Appeal translated parts of the evidence in question of its own motion, which is not provided for by that regulation. The applicant submits that an equivalent service was not provided to it, thus resulting in unequal treatment. Lastly, the Board of Appeal merely translated random passages of the evidence which were, for the most part, capable of supporting its arguments and conveniently omitted to translate the passages which contradicted its arguments.
32      Second, the applicant submits that the Board of Appeal was wrong to reject, in the appeal proceedings, its plea that items of evidence that were not produced in the language of the proceedings could not be taken into consideration. It reiterates that the Board of Appeal should not have taken into consideration items of evidence Nos 2 to 9 and 11 to 15 of the application for a declaration of invalidity which had not been translated into the language of the proceedings. The same applies to items of evidence Nos 1 to 13, 15, 17, 19 and 20 of the statement of grounds. In its view, it follows that the Board of Appeal’s findings based on that evidence, set out in paragraphs 53 to 62 and 80 to 84 of the contested decision, must be rejected.
33      EUIPO and the intervener dispute the applicant’s arguments.
34      In the present case, items of evidence Nos 2 to 9 and 11 to 15 of the application for a declaration of invalidity and items of evidence Nos 1 to 13, 15, 17, 19 and 20 of the statement of grounds, disputed by the applicant, do not appear in the language of the proceedings, namely English, but rather in Polish.
35      Article 16 of Delegated Regulation 2018/625, entitled ‘Substantiation of an application for revocation or for a declaration of invalidity’, provides, in paragraph 2 thereof, that ‘evidence concerning the filing, registration or renewal of earlier rights or, where applicable, the content of the relevant national law, including evidence accessible online, as referred to in paragraph 1(b) and (c), shall be filed in the language of the proceedings or shall be accompanied by a translation into that language. The translation shall be submitted by the applicant of the applicant’s own motion within one month from the filing of such evidence. Any other evidence submitted by the applicant to substantiate the application … shall be subject to Article 24 of Implementing Regulation (EU) 2018/626.’
36      Article 24 of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), provides that, ‘unless otherwise provided for in this Regulation or in Delegated Regulation [2018/625], supporting documents to be used in written proceedings before [EUIPO] may be filed in any official language of the [European] Union. Where the language of such documents is not the language of the proceedings …, [EUIPO] may, of its own motion or upon reasoned request by the other party, require that a translation be supplied, within a period specified by it, in that language’.
37      Article 52 of the Rules of Procedure of the Boards of Appeal provides:
‘1. Where evidence pursuant to the first sentences of … [Article] 16(2) [of Delegated Regulation 2018/625] … is not submitted in the language of proceedings within the time limits referred to in said articles, the Registrar shall invite the appellant to submit its observations on the admissibility of said evidence within one month, indicating that the Board of Appeal shall not take the evidence in question into account in accordance with … [Article] 16(2) [of Delegated Regulation 2018/625].
2. In accordance with Article 24 [of Implementing Regulation 2018/626] …, the Board of Appeal may at the reasoned request of the other party or of its own motion require that the supporting documents other than the evidence mentioned in the foregoing paragraphs, is translated into the language of proceedings within a specified time limit’.
38      It is thus clear from the provisions cited in paragraphs 35 to 37 above that only evidence concerning the filing, registration or renewal of earlier rights or the content of the relevant national law must be filed in the language of the proceedings or be accompanied by a translation into that language. By contrast, all other evidence in support of an application for a declaration of invalidity is not subject to this requirement and may thus be filed in any official language of the European Union.
39      Items of evidence Nos 2 to 9 and 11 to 15 of the application for a declaration of invalidity and items of evidence Nos 1 to 13, 15, 17, 19 and 20 of the statement of grounds do not concern either the filing, registration or renewal of earlier rights or the content of the relevant national law. It follows that the intervener could submit that evidence in a language other than the language of the proceedings and that EUIPO was not required to invite the intervener to submit its observations on the admissibility of the evidence in question.
40      Furthermore, contrary to what the applicant claims, it is apparent from Article 24 of Implementing Regulation 2018/626 and Article 52(2) of the Rules of Procedure of the Boards of Appeal that, for evidence which does not concern either the filing, registration or renewal of earlier rights or the content of the relevant national law, as is the case here, EUIPO ‘may’, of its own motion or at the reasoned request of the other party, require a translation to be submitted in the language of the proceedings, but is in no way required to do so. Moreover, the applicant did not submit a reasoned request for the evidence in question to be translated into the language of the proceedings, but merely responded by stating, in the proceedings before EUIPO, that the evidence in question which had not been translated into the language of the proceedings should not be taken into consideration.
41      In any event, in its observations of 12 May 2021 in reply to the application for a declaration of invalidity and its observations of 17 December 2022 on the statement of grounds, the applicant commented on the relevance of the evidence accompanying the application for a declaration of invalidity and the intervener’s statement of grounds, including the evidence submitted in Polish, with the result that it was clearly in a position to understand the content of the evidence in question, particularly since the applicant is a Polish undertaking, as EUIPO pointed out. In those circumstances, the view cannot be taken that the lack of a translation of the evidence in question affected the exercise of the applicant’s rights of defence, contrary to what the applicant appears to claim (see, to that effect, judgment of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL), T‑686/19, not published, EU:T:2020:320, paragraph 85 and the case-law cited).
42      It thus follows from the foregoing considerations that the Board of Appeal did not err in taking into consideration the intervener’s evidence referred to in paragraph 34 above which had not been submitted in the language of the proceedings. The fourth and fifth pleas in law must therefore be rejected as unfounded.
The first plea in law, alleging infringement of Article 52(1)(a) of Regulation No 207/2009 read in conjunction with Article 7(1)(c) of that regulation
43      The applicant criticises, in essence, the Board of Appeal for finding that the contested mark had a sufficiently close link with the goods at issue and that it was descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009.
44      EUIPO and the intervener dispute the applicant’s arguments.
45      Pursuant to Article 52(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where that mark has been registered contrary to the provisions of Article 7 of that regulation.
46      Article 7(1)(c) of Regulation No 207/2009 provides that 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, must not be registered. Pursuant to Article 7(2) of that regulation, Article 7(1) applies even where the grounds for refusal obtain in only part of the European Union; that part may be restricted to a single Member State (see, to that effect, judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 83).
47      Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. 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 21 January 2015, Grundig Multimedia v OHIM (GentleCare), T‑188/14, not published, EU:T:2015:34, paragraph 18 and the case-law cited).
48      For a sign to fall within the scope of the prohibition in that provision, it must convey a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (see judgment of 19 April 2016, Spirig Pharma v EUIPO (Daylong), T‑261/15, not published, EU:T:2016:220, paragraph 19 and the case-law cited).
49      A sign’s descriptive character must be assessed, first, in relation to the perception which the public concerned has of that sign and, second, in relation to the goods or services covered by it (see judgment of 27 October 2016, Caffè Nero Group v EUIPO (CAFFÈ NERO), T‑37/16, not published, EU:T:2016:634, paragraph 20 and the case-law cited).
50      It is in the light of those considerations that it is appropriate to examine whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 in finding that the contested mark was descriptive of the goods at issue.
51      As a preliminary point, it should be borne in mind that the relevant date for the purpose of assessing an application for a declaration of invalidity based on Article 52(1)(a) of Regulation No 207/2009 is that of the filing of the application for registration of the contested mark (see, to that effect, orders of 23 April 2010, OHIM v Frosch Touristik, C‑332/09 P, not published, EU:C:2010:225, paragraphs 41 to 45 and the case-law cited, and of 4 October 2018, Safe Skies v EUIPO, C‑326/18 P, not published, EU:C:2018:800, paragraphs 5 and 6 and the case-law cited). The relevant date for assessing the descriptive character of the contested mark for the purposes of Article 7(1)(c) of that regulation is therefore the date on which the application for registration was filed, namely 18 July 2016, as the Board of Appeal stated in paragraph 98 of the contested decision.
52      First, it must be noted that the goods covered by the contested mark, namely ‘alcoholic beverages (except beer)’ in Class 33 are intended for the members of the general public who are allowed to consume alcoholic beverages (see, to that effect, judgment of 21 February 2024, Roethig López v EUIPO – William Grant & Sons Irish Brands (AMAZONIAN GIN COMPANY), T‑756/22, not published, EU:T:2024:101, paragraph 30). Furthermore, since that mark is composed of Polish words, it is necessary to examine the descriptive character of that contested mark in the light of the perception of the Polish-speaking part of the relevant public.
53      Second, the applicant criticises the Board of Appeal for taking into consideration evidence dated after the filing date of the contested mark and for having relied on presumptions. According to the applicant, evidence which potentially demonstrates that a mark was descriptive some years after it was filed should not be taken into consideration. Otherwise, that mark would be declared invalid on the basis of facts which occurred after its filing date, which would not be consistent with the purpose of Article 52(1)(a), read in conjunction with Article 7(1)(c), of Regulation No 207/2009.
54      It should be borne in mind that, although the only relevant date for the purposes of examining whether there are absolute grounds for invalidity is that of the filing of the application for registration, the case-law also allows material subsequent to that date to be taken into account if it enables conclusions to be drawn regarding the situation as it was on that date (order of 23 April 2010, OHIM v Frosch Touristik, C‑332/09 P, not published, EU:C:2010:225, paragraph 43, and judgment of 2 February 2022, Maternus v EUIPO – adp Gauselmann (WILD), T‑116/21, not published, EU:T:2022:47, paragraph 38).
55      In that regard, it is apparent from paragraphs 52 to 65 and 78 to 87 of the contested decision that the Board of Appeal relied on various sources both predating and postdating the filing date of the contested mark in order to determine the meaning of the expression ‘duch puszczy’. Indeed, the Board of Appeal noted that the intervener had submitted several items of evidence that predated that mark’s filing date, in particular an article entitled ‘Bimber o nazwie Duch puszczy – Podlaską Marką Roku’ dated 10 February 2009 and an article entitled ‘Duch puszczy, samogon z Podlasia’ dated 9 August 2013, which indicate that the expression refers to a homemade moonshine produced in the Podlaskie region. That evidence thus shows that that expression was not newly coined since it referred, a few years before that mark’s filing date, to a regional name for homemade spirit, as the Board of Appeal correctly pointed out. The evidence postdating that filing date, which dates from 2017 to 2021, corroborates that meaning and shows that it did not change between 2009 and 2021, with the result that it enables conclusions to be drawn regarding the situation as it was on that filing date.
56      In those circumstances, the Board of Appeal did not err in taking the view, in essence, in paragraphs 55 to 57 of the contested decision, that evidence postdating the filing date of the contested mark should be taken into account, and it in no way relied on presumptions in order to determine the meaning of the expression ‘duch puszczy’.
57      Third, the applicant claims that the expression ‘duch puszczy’ is not the name of a product, but a poetic expression. Contrary to what the Board of Appeal found, there is not ample evidence showing that the relevant public was familiar with the product and the name Duch puszczy on the filing date of the contested mark. In addition, the evidence produced by the intervener does not demonstrate that the abovementioned expression designates a ‘concrete’ type of alcohol that is usually home brewed, and a small group of inhabitants in the Podlaskie region is not capable of associating specific characteristics or qualities of a specific product with that expression. Lastly, the evidence in fact indicates that that expression is perceived as a trade mark and not as a generic name for a homemade spirit.
58      In the present case, it is apparent from the documents before the Court that the expression ‘duch puszczy’ literally means ‘spirit of the forest’. However, it is apparent from the numerous items of evidence produced by the intervener, in particular those cited by the Board of Appeal in paragraphs 53, 54 and 59 to 65 of the contested decision, that that expression entered Polish current parlance to refer to a homemade moonshine spirit produced in the Podlaskie region. That is borne out, inter alia, by the linguistic opinion of 25 February 2021 submitted by the intervener, which states that that expression may be understood both as a synonym for the Polish terms ‘bimber’ or ‘samogon’ which mean ‘moonshine spirit’, but also as designating a specific alcoholic beverage mainly produced in that region.
59      In addition, a several pieces of evidence, including the article entitled ‘Duch puszczy, samogon z Podlasia’ dated 9 August 2013 (which describes the alcoholic beverage ‘duch puszczy’ as ‘a very popular thing and famous in Poland’, ‘[something that] shows up at many parties’, ‘a local attraction’) or the extract from the website ‘https://podlaskie.tv/bimber-podlaski-duch-puszczy’ (which states that ‘moonshine is a specific drink’ and that, ‘in Podlasie, and perhaps throughout Poland, the most recognisable is Duch Puszczy’), confirm that, at the filing date of the contested mark, that meaning was not only known in the Podlaskie region, but also in the rest of Poland.
60      Moreover, the applicant has not put forward any specific argument capable of calling that evidence into question. It merely stated that the relevant public might ‘easily understand’ that the expression ‘duch puszczy’ is used as a trade mark, without, however, providing specific evidence capable of supporting that claim.
61      In addition, certain items of evidence, namely the article entitled ‘8 Must-Try Regional Alcoholic Drinks from Poland’ of 24 June 2019 and the article entitled ‘The Mythical Polish Moonshine That Apparently Leaves No Hangover’ of 22 January 2019, state that the beverage referred to as Duch puszczy is a strong alcohol that has been produced since the 19th century in the Podlaskie region and is most traditionally made from rye or yeast and has a taste similar to that of vodka. That is also confirmed by the extract from the website ‘www.bimber.info’, referred to in paragraph 84 of the contested decision, which refers to Duch puszczy as a ‘kind of moonshine produced in Podlasie’ and which refers to an old recipe using yeast and a cereal similar to rye. It follows that, contrary to what is claimed by the applicant, the expression ‘duch puszczy’ does indeed refer to a specific type of alcohol with concrete characteristics.
62      Lastly, it must be recalled that, in accordance with case-law, a sign with several possible meanings must be refused registration under Article 7(1)(c) of Regulation No 207/2009 if at least one of its possible meanings 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; of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 38; and of 3 September 2020, achtung! v EUIPO, C‑214/19 P, not published, EU:C:2020:632, paragraph 33). Thus, in so far as the expression ‘duch puszczy’ may refer to a home-brewed spirit typical of the Podlaskie region, the fact that it also means ‘the spirit of the forest’ or that it is a synonym for ‘moonshine’ is irrelevant, as the Board of Appeal stated in paragraphs 96 and 97 of the contested decision.
63      It follows from the foregoing considerations that the Board of Appeal was right to find, in paragraph 96 of the contested decision, that the contested mark conveyed obvious and direct information regarding the nature of the goods in question, namely it is a strong alcohol similar to a home-brewed one typical of the Podlaskie region, and was therefore caught by the ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009.
64      That finding cannot be called into question by the applicant’s other arguments.
65      In the first place, the applicant’s argument that the Board of Appeal failed to have regard to the judgment of 19 December 2019, Currency One v EUIPO – Cinkciarz.pl (CINKCIARZ) (T‑501/18, EU:T:2019:879), the facts of which are, in its view, comparable to those of the present case, in so far as, even if the expression ‘duch puszczy’ were to be understood as illegally produced alcohol, the use of that expression for alcoholic beverages produced and sold legally would constitute a mind game, given that the relevant public will not think, on seeing the applicant’s product designated by the contested mark, that illegally produced alcohol is being offered for sale, but will immediately perceive a name which distinguishes that product from others – precisely because of the contradiction between the sale of legal alcohol and the production of illegal moonshine – and it follows that that mark is not descriptive of the goods at issue, cannot succeed.
66      The Court notes that the circumstances of the judgment of 19 December 2019, CINKCIARZ (T‑501/18, EU:T:2019:879), are different from those in the present case. On the one hand, in paragraphs 46 to 55 of that judgment, the Court held that the Polish term ‘cinkciarz’, of which the mark at issue in that case was composed, had an exclusively pejorative connotation, given that it referred to a person who engaged in trafficking, fraud or acts regarded as dishonest in the context of clandestine currency exchange operations. The relevant public was aware of the fact that the services covered by that mark could not be illegal and clandestine currency exchange activities, with the result that that term, which constituted that mark and which designated such clandestine and illegal activities, could not serve, in normal usage from a customer’s point of view, to designate legal currency exchange services. That term could not therefore be descriptive of legal currency exchange services or of an entity providing such services.
67      On the other hand, in the present case, the expression ‘duch puszczy’ does not refer exclusively to illegally produced alcohol, but also to the home-brewed alcohol typical of the Podlaskie region which, moreover, it is now possible to purchase legally, as evidenced, inter alia, by the article entitled ‘Duch puszczy, samogon z Podlasia’ dated 9 August 2013 and by the article entitled ‘8 Must-Try Regional Alcoholic Drinks from Poland’ dated 24 June 2019. It follows that the applicant cannot validly rely in the present case on the judgment of 19 December 2019, CINKCIARZ (T‑501/18, EU:T:2019:879).
68      In the second place, the applicant’s argument that the Board of Appeal infringed the principle of legal certainty in so far as both the Urząd Patentowy RP (Polish Patent Office) and EUIPO had accepted the registration of marks identical or comparable to the contested mark for alcoholic beverages in the past and a judgment of the Wojewódzki Sąd Administracyjny w Warszawie (Regional Administrative Court, Warsaw, Poland) of 17 April 2023 had acknowledged, inter alia, that the expression ‘duch puszczy’ was not descriptive must also be rejected.
69      In that regard, it must first be recalled 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 No 207/2009, 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). 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 the sign in question  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).
70      Furthermore, even assuming that the situations are comparable or identical, it must also be noted that, according to settled case-law, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. Nonetheless, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 13 June 2014, K-Swiss v OHIM – Künzli SwissSchuh (Parallel stripes on a shoe), T‑85/13, not published, EU:T:2014:509, paragraph 46; see also, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77).
71      In the present case, the Board of Appeal concluded, after carrying out an overall assessment of the evidence produced by the intervener, that the contested mark was descriptive of the nature of the goods in question. That finding is sufficient in itself for it to be held that, as regards the goods at issue, the contested mark is caught by the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009. It follows that the applicant cannot reasonably rely, for the purposes of casting doubt on the conclusion reached by the Board of Appeal in the contested decision, on previous decisions of EUIPO (judgment of 12 May 2016, Atlas v EUIPO (EFEKT PERLENIA), T‑298/15, not published, EU:T:2016:288, paragraph 30; see also, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 78 and 79).
72      It follows from all of the foregoing that the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of Article 52(1)(a) of Regulation No 207/2009 read in conjunction with Article 7(1)(b) of that regulation
73      In so far as the applicant submits, by the second plea, that the contested mark is distinctive within the meaning of Article 7(1)(b) of Regulation No 207/2009, it must be borne in mind that, as is apparent from Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign not to be registrable as an EU trade mark (order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 27; see also judgment of 21 September 2017, InvoiceAuction B2B v EUIPO (INVOICE AUCTION), T‑789/16, not published, EU:T:2017:638, paragraph 49 and the case-law cited).
74      In the present case, since it has been found that the contested mark was descriptive of the goods at issue and that, consequently, it was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009, it is not necessary to rule on the second plea in law, alleging infringement of Article 7(1)(b) of that regulation.
75      Having regard to the foregoing, the action must be dismissed in its entirety.
Costs
76      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.
77      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Bartex Bartol sp. z o.o. sp. k. to bear its own costs and to pay those incurred by Grupa Chorten sp. z o.o.;
3.      Declares that the European Union Intellectual Property Office (EUIPO) is to bear its own costs.
Schalin
Škvařilová-Pelzl
Kukovec
Delivered in open court in Luxembourg on 10 July 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.