JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
5 February 2025 (*)
( EU trade mark – Application for an EU trade mark representing a horizontal red stripe on a silver fuselage – Position mark – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑195/24,
VistaJet ltd., established in Luqa (Malta), represented by J. Zecher, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, U. Öberg (Rapporteur) and E. Tichy‑Fisslberger, 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, VistaJet ltd., seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 January 2024 (Case R 1143/2023-1) (‘the contested decision’).
Background to the dispute
2        On 12 September 2022, the applicant filed an application for registration of an EU trade mark in respect of the following sign:
3        In the application for registration, the mark applied for was indicated as a ‘position mark’ and described as follows:
‘The mark consists of a horizontal red stripe on a silver fuselage. The [stripe] runs from the nose to the tail of an airplane through the middle of the fuselage, above the wings. The gradient aspect of the fuselage is intended to represent a silver, reflective surface. The matter represented by dotted lines is not part of the mark and serves only to show the position of the mark.’
4        The mark applied for covered services falling, following the limitation made during the proceedings before EUIPO, within Class 39 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding to the following description: ‘Air transport by means of private aircraft; transport of passengers and/or goods by air by means of private aircraft; private aircraft charter services; arranging of passenger transportation services for others by means of private aircraft charter services; private aircraft flight planning services’.
5        By decision of 15 May 2023, the examiner refused the application for registration of the mark referred to above 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), on the ground that it was devoid of distinctive character.
6        On 31 May 2023, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
7        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the sign in respect of which registration as an EU trade mark was sought was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs incurred in the proceedings before the Court and in the examination and appeal proceedings before EUIPO.
9        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
10      The applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, in that the Board of Appeal wrongly found that the mark applied for was devoid of any distinctive character in respect of the services in question.
11      In the context of this plea, the applicant submits that the Board of Appeal failed to have regard to the burden of proof incumbent on it, in accordance with Article 95(1) of Regulation 2017/1001. The Board of Appeal, in the applicant’s view, summarily rejected its arguments and has not sufficiently substantiated its own arguments as to the lack of distinctive character of the mark applied for in respect of the services in question. The Board of Appeal therefore also infringed the principle of sound administration. Moreover, the Board of Appeal erroneously disregarded the importance of the degree of attention of the relevant public and market practice, since that public is concerned with the brand image and appearance of the private aircraft which it charters. The Board of Appeal also artificially dissected the elements of the mark applied for instead of assessing it as a whole and wrongly relied on the case-law relating to simple geometric shapes, which is not applicable in the present case. Lastly, the applicant states that other marks similar to the mark applied for have been registered by EUIPO.
12      EUIPO disputes the applicant’s arguments.
13      According to Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.
14      For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods or services in respect of which registration has been applied for as originating from a particular undertaking and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 34, and of 11 July 2013, Think Schuhwerk v OHIM (Red shoelace end caps), T‑208/12, not published, EU:T:2013:376, paragraph 31).
15      That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35, and of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 25).
16      The mark applied for is a ‘position mark’. A position mark is characterised by the specific way in which the mark is placed or affixed on the goods (see, to that effect, judgment of 16 January 2019, Windspiel Manufaktur v EUIPO (Representation of the position of a bottle stopper), T‑489/17, not published, EU:T:2019:9, paragraph 22).
17      It should be noted that neither Regulation 2017/1001 nor Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) refers to ‘position marks’ as a specific category of marks. However, in so far as Article 4 of Regulation 2017/1001 does not contain an exhaustive list of signs capable of being EU trade marks, that circumstance is irrelevant to the registrability of ‘position marks’ (see judgment of 17 January, Deichmann v EUIPO – Munich (Representation of a cross on the side of a sports shoe), T‑68/16, EU:T:2018:7, paragraph 32 and the case-law cited). Pursuant to Article 3(3)(d) 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), position marks are to be represented by submitting a reproduction which appropriately identifies the position of the mark and its size or proportion with respect to the relevant goods.
18      It appears that ‘position marks’ are similar to the categories of figurative and three-dimensional marks, since they relate to the application of figurative or three-dimensional elements to the surface of a product. However, the classification of a ‘position mark’ as a figurative or three-dimensional mark, or as a specific category of marks, is irrelevant for the purpose of assessing its distinctive character (judgment of 15 June 2010, X Technology Swiss v OHIM (Orange colouring of the toe of a sock), T‑547/08, EU:T:2010:235, paragraphs 20 to 21).
19      Accordingly, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. Nevertheless, for the purpose of applying those criteria, the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of a word or figurative mark consisting of a sign which is unrelated to the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish the distinctiveness of such a three-dimensional mark than that of a word or figurative mark (see judgment of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 32 and the case-law cited).
20      That case-law, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product (see, to that effect, judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 29) or where the mark applied for is a sign consisting of a design applied to the surface of a product (see, to that effect, order of 28 June 2004, Glaverbel v OHIM, C‑445/02 P, EU:C:2004:393, paragraphs 22 to 24). In neither of those cases does the mark consist of a sign which is unrelated to the appearance of the products it denotes. That case-law is also applicable where only a part of the product designated is represented by a mark (see, to that effect, order of 13 September 2011, Wilfer v OHIM, C‑546/10 P, not published, EU:C:2011:574, paragraph 59, and judgment of 15 May 2014, Louis Vuitton Malletier v OHIM, C‑97/12 P, not published, EU:C:2014:324, paragraph 54). Lastly, that case-law has been applied to position marks (see, to that effect, judgment of 14 November 2019, Neoperl v EUIPO (Representation of four filled-in holes in a regular hole pattern), T‑669/18, not published, EU:T:2019:788, paragraph 31). Accordingly, the decisive element as regards the applicability of the case-law relating to three-dimensional marks that are indissociable from the appearance of the goods is not the categorisation of the sign in question as a ‘figurative’, ‘three-dimensional’ or ‘other’ sign, but rather the fact that it is indissociable from the appearance of the product designated (see, to that effect, judgment of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 36).
21      In the present case, first, it must be noted that the services covered by the mark applied for are transportation and private aircraft flight planning services, intended primarily for very rich members of the general public, the ‘ultra-wealthy’, who are likely to display a high level of attention, since the factors of safety, punctuality and reliability are all important for the services in question.
22      Second, it must be noted, as the Board of Appeal did, that the mark applied for will not be perceived by the relevant public as having a distinctive character.
23      As the Board of Appeal correctly stated, the mark applied for consists of a red line along the side of a silver aeroplane fuselage, which curves slightly as it follows the line of the fuselage and tapers to a thin point at the front end of the aeroplane.
24      However, a line, which is defined as a continuous set of points or an unbroken elongated line the extent of which is virtually reduced to the single dimension of length, is a simple geometric form, which is not, in itself, capable of conveying a message which consumers will be able to remember. That line and its colour red will be perceived by the relevant public as nothing more than banal decorative devices, as will the choice of a silver fuselage.
25      It is clear from settled case-law that a sign which is excessively simple and is constituted of a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (see, to that effect, judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraphs 72 and 74, and of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 26 and the case-law cited).
26      In any event, the fact that it could be argued that the mark applied for does not merely represent a basic geometrical figure does not suffice, as such, to support the view that it has the minimum distinctive character necessary for registration as an EU trade mark. There must also be certain characteristics of the sign which may be easily and instantly memorised by the relevant public and which would make it possible for the sign to be perceived immediately as an indication of the commercial origin of the goods and services in question (see, to that effect, judgment of 15 December 2016, Novartis v EUIPO (Representation of a grey curve and representation of a green curve), T‑678/15 and T‑679/15, not published, EU:T:2016:749, paragraphs 40 and 41 and the case-law cited).
27      It has also already been held that, whilst colours are capable of conveying certain associations of ideas and of arousing feelings, they possess little inherent capacity for communicating specific information. That is all the more the case since they are commonly and widely used, because of their appeal, in order to advertise and market goods and services without any specific message (see judgment of 6 September 2023, Groz-Beckert v EUIPO (Position of the colours white, red and dark green on cuboid packaging), T‑276/22, not published, EU:T:2023:497, paragraph 20 and the case-law cited; see also, by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 38).
28      In the present case, in the absence of elements capable of distinguishing it in such a way that it does not appear as a simple geometrical figure, the red line cannot fulfil an identifying function with respect to the services in question. The colour red is, by its very nature, highly visible and striking and is used primarily for decorative purposes, or to attract attention. Accordingly, it is, in itself, devoid of distinctive character. As for the silver fuselage, the Court considers that that colour does not particularly stand out from the colour white, which is traditionally used in the aviation sector.
29      The Court concludes that, taken as a whole, the mark applied for is excessively simple.
30      Accordingly, the Board of Appeal did not make an error of assessment in finding that the mark applied for did not have the minimum distinctive character sufficient to preclude application of the absolute ground for refusal provided for in Article 7(1)(b) of Regulation 2017/1001.
31      None of the applicant’s other arguments is capable of calling that finding into question.
32      In that regard, first of all, the applicant complains that the Board of Appeal infringed the rules governing the burden of proof, in that it summarily rejected the applicant’s arguments and did not sufficiently substantiate its claims.
33      In accordance with the first sentence of Article 95(1) of Regulation 2017/1001, in proceedings before it, EUIPO must examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, EUIPO is to be restricted in that examination to the facts, evidence and arguments provided by the parties and the relief sought.
34      Therefore, the principle of examination by EUIPO of its own motion laid down in Article 95(1) of Regulation 2017/1001 merely allows EUIPO to take into account facts which are not submitted to it by the parties to the registration procedure where, as in the present case, an absolute ground for refusal of registration is at issue (see, to that effect, judgment of 17 November 2021, Think Schuhwerk v EUIPO (Representation of red shoelace end caps), T‑298/19, not published, EU:T:2021:792, paragraph 70).
35      By contrast, it is for the applicant to provide sufficient evidence in support of its challenge, where it is challenging a refusal of registration by the examiner.
36      It follows from the foregoing that the Board of Appeal correctly examined the facts, with the result that it did not in any way infringe Article 95(1) of Regulation 2017/1001.
37      As regards the applicant’s arguments that the contested decision was unsubstantiated, the Court notes that the obligation to state reasons is an essential procedural requirement, which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect. It follows that objections and arguments intended to establish that the measure at issue is not well founded are irrelevant in the context of a plea alleging an inadequate statement of reasons or a lack of such a statement (see judgments of 30 May 2017, Safa Nicu Sepahan v Council, C‑45/15 P, EU:C:2017:402, paragraph 85 and the case-law cited, and of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 187 (not published) and the case-law cited).
38      However, it is clear that the applicant’s arguments relating to the summary and unsubstantiated nature of the contested decision are intended, in actual fact, to challenge the merits of the Board of Appeal’s assessment of the lack of distinctive character of the mark applied for. There is nothing to suggest that the applicant was not in a position to understand the reasons given in the contested decision and to challenge them before the Court. On the contrary, the reasons given in that decision are adequate in that they made it possible for the applicant to defend its rights, as is clear from the arguments in its action against that decision, and they enabled the Court to exercise its jurisdiction to review the legality of that decision, as is apparent from the analysis above.
39      Next, as regards the degree of attention of the relevant public, according to the case-law of the Court of Justice, the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist. In order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. However, that principle might be undermined if the distinctiveness threshold of a word sign depended generally on the degree of specialisation of the relevant public (see, to that effect, judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraphs 48 to 50 and the case-law cited).
40      In any event, it must be stated that the Board of Appeal took account of a relevant public likely to display a high level of attention. Moreover, there is nothing in the contested decision to suggest that the Board of Appeal, as the applicant claims, dismissed the importance of the relevant public and its level of attention.
41      Finally, the applicant complains that the Board of Appeal failed to examine the marks applied for as a whole, as is required by the case-law.
42      In order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the various features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82 and the case-law cited).
43      Contrary to what the applicant maintains, the Board of Appeal examined the various features of the mark applied for, taking into account, in particular, the perception by the relevant public of the colour red and of the silver fuselage, in order to find expressly that the combination of those elements had a decorative purpose. It is also apparent from all the grounds of the contested decision that the Board of Appeal examined that combination, as affixed to the goods to which the services in question relate, with the result that the specific positioning of the mark applied for was duly taken into account by the Board of Appeal.
44      It follows that the Board of Appeal did not fail to consider the overall impression given by the mark applied for when examining the perception of the relevant public. The arguments put forward by the applicant in that regard must therefore be rejected.
45      In the light of all the foregoing, it must be held that the applicant does not put forward any argument capable of calling into question the Board of Appeal’s findings that the combination of a red line affixed to a silver fuselage has a decorative purpose.
46      The Board of Appeal has therefore sufficiently demonstrated that, in the light of the overall impression given by the mark applied for, that mark was not capable of identifying the commercial origin of the services in question, so that it was, within the meaning of Article 7(1)(b) of Regulation 2017/1001, devoid of any distinctive character in respect of those services.
47      In so far as the applicant refers to previous decisions of the Boards of Appeal or of other bodies of EUIPO concerning the registration of trade marks, the Court recalls that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. In the light of those two principles, 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. However, 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 for 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 (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77 and the case-law cited).
48      In the present case, it is apparent from the foregoing that the Board of Appeal was entitled to find that the ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 applied to the application for registration. In those circumstances, the applicant cannot properly rely, for the purposes of invalidating that finding, on previous decisions of EUIPO.
49      Accordingly, the single plea alleging infringement of Article 7(1)(b) of Regulation 2017/1001 must be rejected as unfounded and, consequently, the action must be dismissed in its entirety.
Costs
50      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.
51      In the present case, 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 (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders VistaJet ltd. and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Costeira
Öberg
Tichy-Fisslberger
Delivered in open court in Luxembourg on 5 February 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.