JUDGMENT OF THE GENERAL COURT (First Chamber)
11 June 2025 (*)
( EU trade mark – International registration designating the European Union – Mark consisting in a combination of the colours blue and green – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 – Legal certainty – Equal treatment – Sound administration – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 )
In Case T‑38/24,
OMV AG, established in Vienna (Austria), represented by C. Schumacher and B. Kapeller‑Hirsch, lawyers,
applicant,
supported by
Marques, established in Leicester (United Kingdom), represented by R. Chalmers Hoynck van Papendrecht, A. Padial Martínez, J. Słupski and S. Fischoeder, lawyers,
and by
International Trademark Association (INTA), established in New York, New York (United States), represented by N. Parrotta, M. Perraki, Y. Øyehaug Opsvik and T. de Haan, lawyers,
interveners,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez, acting as Agent,
defendant,
THE GENERAL COURT (First Chamber),
composed of R. Mastroianni, President, T. Tóth (Rapporteur) and S.L. Kalėda, 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, OMV AG, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 November 2023 (Case R 798/2023-5) (‘the contested decision’).
Background to the dispute
2        On 27 January 2021, the applicant, claiming the priority of Austrian trade mark No 12685/2020, filed on 23 November 2020, submitted an application for international registration designating the European Union for a figurative sign representing the following combination of colours:
3        The mark applied for covered, inter alia, goods and services in Classes 1, 4, 35 and 37 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, corresponding, for each of those classes, to the following description:
–        Class 1: ‘Chemical preparations for use as additive to fuels for improving combustion; chemical additives to motor fuel; hydrogen’;
–        Class 4: ‘Fuels; non-chemical additives for fuels; illuminants; electrical energy; lubricants; industrial oil’;
–        Class 35:  ‘Retail services in relation to vehicle equipment, namely lubricants, brake fluid, chemical and non-chemical additives for fuels and lubricants, antifreeze, cleaning and fragrancing preparations; retail services in relation to vehicle parts, fuels, engine oils; wholesale and retail services in relation to chemical substances, chemical materials and chemical preparations, and natural elements for industrial or scientific use, hydrogen, fuels, chemical or non-chemical additives for fuels, illuminants, lubricants, industrial oil, hot water, medicinal and mineral water’;
–        Class 37: ‘Building, construction or demolition of facilities or installations for exploration, exploitation, processing, production, storage, transport or distribution of hydrocarbons, hydrogen, minerals, bitumen, fuels, illuminants, lubricants, industrial oil or energy; installation, cleaning, repair or maintenance of facilities or installations for exploration, exploitation, processing, production, storage, transport or distribution of hydrocarbons, hydrogen, minerals, bitumen, fuels, illuminants, lubricants, industrial oil or energy; refuelling of land vehicles; recharging services for electric vehicles; vehicle service stations [refuelling and maintenance]; automobile cleaning and car washing’.
4        By decision of 6 March 2023, the examiner rejected, in part, the application for international registration designating the European Union, in so far as it related to the goods and services included in the classes referred to in paragraph 3 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).
5        On 14 April 2023, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6        By the contested decision, the Board of Appeal dismissed the appeal on the basis of Article 7(1)(b) of Regulation 2017/1001. It held that the sign applied for could not convey a clear message to the relevant public in relation to the goods and services at issue, but rather could be perceived as a decorative element. Consequently, the Board of Appeal concluded that the mark applied for was devoid of distinctive character.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
9        The interveners, Marques and International Trademark Association (INTA), claim that the Court should:
–        annul the contested decision;
–        order them to bear their own costs.
Law
10      The applicant relies, in essence, on three pleas in law, alleging, first, infringement of Article 7(1)(b) of Regulation 2017/1001, second, infringement of the obligation to state reasons and, third, breach of the principles of legal certainty, equal treatment and sound administration.
11      It is necessary to analyse, in the first place, the second plea in law.
The second plea in law, alleging infringement of the obligation to state reasons
12      The applicant, supported by the interveners, claims that the contested decision is vitiated by insufficient reasoning on the ground, in essence, that the Board of Appeal based its reasoning on mere unsubstantiated allegations or refrained from giving any reasoning at all.
13      EUIPO disputes those arguments.
14      According to the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
15      The duty to state reasons in decisions 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 will 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 (see judgment of 20 February 2013, Langguth Erben v OHIM (MEDINET), T‑378/11, EU:T:2013:83, paragraph 15 and the case-law cited).
16      In the first place, the applicant complains that the Board of Appeal did not, on the one hand, examine and consider the systematic arrangement of the two-colour combination which constitutes the mark applied for or, on the other hand, give any reasoning for the assumed connotations of those colours or their combination.
17      However, it should be noted in that regard that it is apparent from paragraphs 24, 34, 46, 51 and 52 of the contested decision that the Board of Appeal in fact took into account the systematic arrangement of the colours concerned. Moreover, in paragraphs 24 and 25 of that decision, it cited Article 3(3)(f) of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), as well as the relevant case-law relating to colour combinations. Similarly, it is apparent from the wording of paragraphs 34, 35, 38, 39, 51, 55 and 56 of the contested decision that the Board of Appeal took into consideration that the mark applied for consisted of two particular colour tones, namely gentian blue (RAL 5010) and yellow green (RAL 6018). As regards the assumed connotations of the two colours in question and the ideas which their combination may convey, it is clear from paragraphs 37 to 40 of the contested decision that the Board of Appeal referred to settled case-law and to well-known facts in order to establish them.
18      In the second place, the applicant complains that the Board of Appeal did not take into account the market studies which it produced, which proved that the colour combinations in filling stations are generally distinctive.
19      However, such an argument cannot succeed. It is clear from paragraphs 18 to 21 of the contested decision that the Board of Appeal duly took into account those analyses, but that it considered that they were irrelevant for the purposes of assessing distinctive character under Article 7(1)(b) of Regulation 2017/1001. In paragraphs 41 and 42 of the contested decision, the Board of Appeal, on the other hand, considered that, on the basis of the examples cited by the examiner and an internet search of 3 November 2023, the colours green and blue or a combination of those colours were common and were used for other filling stations in the market concerned.
20      In the third place, the applicant maintains that the Board of Appeal did not give any reasons justifying that a driver could not appreciate the arrangement of colours on a filling station building when driving.
21      However, in that regard, it should be noted that, in paragraphs 51 to 53 of the contested decision, the Board of Appeal took into account various factors such as the long distance, the speed with which drivers approach filling stations or the poor visibility due to rain, fog or snow which may affect the appreciation and identification of the mark applied for. The Board of Appeal also added that, according to the expert opinion produced by the applicant, it was highly probably that the colour combination in question only gives a clear indication of the brand if the building itself was recognised as a filling station.
22      In the light of the foregoing, the applicant cannot argue that the contested decision is vitiated by an infringement of the obligation to state reasons and therefore the second plea in law must be rejected.
The first plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
23      In support of this plea, the applicant, supported by the interveners, disputes the Board of Appeal’s reasoning at the end of which it concluded that the mark applied for was devoid of distinctive character.
24      EUIPO disputes those arguments.
25      As a preliminary point, it should be borne in mind that, under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.
26      For a trade mark to possess distinctive character for the purposes of Article 7(1)() of Regulation 2017/1001, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
27      As regards the question whether colours or combinations of colours are capable of distinguishing the goods or services of one undertaking from those of other undertakings, it must be determined whether or not those colours or combinations of colours are capable of conveying precise information, particularly as regards the origin of a product or service (judgments of 28 January 2015, Enercon v OHIM (Gradation of five shades of the colour green), T‑655/13, not published, EU:T:2015:49, paragraph 24, and of 27 September 2018, Demp v EUIPO (Combination of the colours yellow and grey), T‑595/17, not published, EU:T:2018:609, paragraph 21; see also, by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 37).
28      In addition, in assessing the potential distinctiveness of a given colour or combination of colours as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought (see judgment of 27 September 2018, Combination of the colours yellow and grey, T‑595/17, not published, EU:T:2018:609, paragraph 24 and the case-law cited).
29      Moreover, it should be borne in mind that the distinctive character of a sign must be assessed, first, in relation to the goods or services for which registration of the sign has been sought and, second, in relation to the perception which the relevant public has of it (see judgment of 27 September 2018, Combination of the colours yellow and grey, T‑595/17, not published, EU:T:2018:609, paragraph 25 and the case-law cited).
30      In addition, it must be noted that, although Article 7(1)(b) of Regulation 2017/1001 does not differentiate according to types of signs, the fact remains that the relevant public’s perception is not necessarily the same in the case of a sign consisting of a colour or colour combination per se as it is in the case of a word or figurative mark consisting of a sign that bears no relation to the appearance of the goods that it identifies (see, to that effect, judgment of 20 July 2017, Basic Net v EUIPO (Representation of three vertical stripes), T‑612/15, not published, EU:T:2017:537, paragraph 20).
31      Therefore, for a colour combination such as the one at issue to be able to fulfil the function of identifying the commercial origin of the goods and services at issue, it must contain elements capable of distinguishing it from other colour combinations and of attracting the consumer’s attention (see, to that effect, judgment of 12 November 2008, GretagMacbeth v OHIM (Combination of 24 coloured squares), T‑400/07, not published, EU:T:2008:492, paragraph 45).
32      In the light of those considerations, it must be examined whether the Board of Appeal was right to consider, in the contested decision, that the mark applied for was devoid of distinctive character.
33      In the present case, the sign in respect of which registration has been sought consists of a systematic arrangement of two colours, namely gentian blue (RAL 5010) and yellow green (RAL 6018).
34      In the first place, the applicant complains that the Board of Appeal incorrectly applied the stricter criterion laid down in the case-law arising from the judgment of 6 May 2003, Libertel (C‑104/01, EU:C:2003:244), which is applicable only to single colour marks. In that regard, it maintains that, according to the EUIPO guidelines, a combination of colours must be registered as a trade mark unless there are very specific and substantiated reasons for refusal. It also submits that those guidelines describe specific cases in which registration of a colour combination may be refused after a careful and precise analysis of the goods and services at issue as well as of the situation in the market concerned.
35      In that regard, it must be stated that, in support of its allegations, the applicant in fact confines itself to pointing out the citations from the judgment of 6 May 2003, Libertel (C‑104/01, EU:C:2003:244), contained in the contested decision, calling into question their relevance for the assessment of the distinctive character of signs consisting of combinations of colours used in a systematic arrangement. However, it must be stated that the Board of Appeal was correct in referring to the case-law relating to colour combinations, in particular the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384, paragraphs 37 and 38).
36      It should also be noted that the EUIPO guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48). Therefore, the applicant’s arguments stated in paragraph 35 above must be rejected.
37      In the second place, the applicant complains that the Board of Appeal wrongly relied, against the mark applied for, which is a combination of two specific colour tones arranged in a very specific and distinctive manner, on the requirement not to unduly restrict the availability of the colours for competitors in the market concerned.
38      In that regard, on the one hand, it should be borne in mind that, although the risk of undermining the general interest in not unduly restricting the availability of colours varies according to the characteristics of each sign applied for, and even if that risk is generally lower in the case of a combination of colours with a systematic arrangement than in the case of a single colour, the fact remains that, in accordance with the case-law referred to in paragraph 29 above, it is necessary to take account of that general interest in assessing the distinctive character of a sign consisting of a single colour as well as of a sign consisting of a colour combination determined by a systematic arrangement. On the other hand, it should be noted that, as is apparent from the settled case-law referred to in paragraph 27 above, the fact that a sign for which registration as an EU trade mark is sought consists of a combination of colours used in a precise systematic arrangement associating those colours in a predetermined and uniform way is not sufficient to allow it to be registered as an EU trade mark. According to that case-law, in order for combinations of colours which are the subject of an application for registration of a trade mark, claimed in the abstract and without contours, to be able to constitute a trade mark, they must be able to satisfy the other conditions laid down, notably in Article 7 of Regulation 2017/1001. In particular, they must be capable of distinguishing the product or service covered by that sign as originating from a particular undertaking, and thus of distinguishing that product or service from those of other undertakings. Therefore, the applicant’s arguments referred to in paragraph 38 above must be rejected.
39      In the third place, the applicant claims, in essence, that the Board of Appeal wrongly concluded that the colours blue and green, including the gentian blue and yellow green tones, were commonly used and customary in the market concerned. First, it maintains that, since it is clear from the evidence provided that it is the only undertaking to use the combination of the two specific colours in question, the mark applied for is inherently distinctive. Second, it complains that the Board of Appeal relied on examples of colour combinations which were irrelevant, on the ground that the tones and arrangement of the colours displayed in those examples do not exactly correspond to those of the sign applied for. It adds that the examples contained in the contested decision confirm that various colours and colour combinations are used in the market concerned. The applicant also maintains that it is clear from the expert opinion and the market studies which it produced that, according to the practice of the market concerned, each filling-station operator adopts and has its own colour scheme for differentiating its filling stations, and therefore the colour combinations have an inherent distinctive character in the market concerned. In that regard, INTA refers to the sports shoe and automotive sectors, which use position marks to which consumers have become accustomed and which enable the commercial origin of the products to be identified.
40      First of all, it must be stated that the evidence produced by the applicant is not such as to demonstrate that consumers can identify blue and green colour tones used in different systematic arrangements in order to distinguish the goods and services at issue and, in particular, the different filling stations. Similarly, the evidence produced by the applicant cannot substantiate the fact that the relevant public can identify each filling-station operator merely by the colour scheme or code which it uses. In that sense, the expert opinion produced by the applicant merely confirms that consumers can rely on information relating to colours in order to identify the commercial origin of the goods and services only if they are already accustomed to associating those colours with a specific undertaking. As regards the market studies of November 2022 in Austria and of March 2023 in Hungary, Romania and Slovakia, it should be noted that the applicant cannot rely solely on the studies carried out in 2022 and 2023 in order to assess the inherent distinctive character of the mark applied for, which was registered as an international trade mark on 27 January 2021 (see, to that effect, judgment of 13 November 2024, Chiquita Brands v EUIPO – Compagnie financière de participation (Representation of a blue and yellow oval), T‑426/23, not published, EU:T:2024:807, paragraph 54).
41      Moreover, as regards the examples relied on in the contested decision, it must be stated that they are not irrelevant on the sole ground that they do not concern the same colour tone or combination as that of the mark applied for. As is clear from the examples and from the evidence produced showing colours used at other filling stations, the colours blue and green are commonly used, in various tones or in various arrangements, in the market concerned. The applicant’s argument that other colours are also used in the filling-station market and that it is the only undertaking which uses the specific two-colour combination in question is not capable of calling into question that finding. The mere fact that the tones and arrangement of the colours in the sign applied for are not exactly the same as those used in the market concerned does not make it possible to establish that the relevant public will perceive the mark applied for as an indication of the commercial origin of the goods or services at issue.
42      Therefore, the arguments put forward by the applicant and INTA referred to in paragraph 40 above must be rejected.
43      In the fourth place, the applicant also claims that the Board of Appeal made erroneous and unsubstantiated assessments regarding the alleged connotations of the colours blue and green, instead of examining the combination and systematic arrangement of the colours concerned. In that regard, it states that the Board of Appeal wrongly interpreted the colours blue and green as signifying ecology and environmental protection, without taking into account the other meanings that those colours may convey. Moreover, according to INTA, the assessments concerning those environmental connotations are relevant only in order to establish the descriptive character of a sign within the meaning of Article 7(1)(c) of Regulation 2017/1001, whereas the contested decision is based solely on Article 7(1)(b) of that regulation.
44      It should be borne in mind that, 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 individual 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).
45      In the present case, although it is apparent from paragraphs 37 to 40 of the contested decision that the Board of Appeal first examined the colours blue and green separately, the fact remains that it then carried out a global assessment of the distinctive character of the mark applied for. In particular, after examining the associations of ideas which those colours might convey, the Board of Appeal concluded, in paragraph 40 of the contested decision, that the two colours considered individually were devoid of distinctive character and that their combination did not confer any distinctive character on the mark applied for. Moreover, the Board of Appeal considered that there was nothing to indicate that the combination of those two colours could convey any message to consumers other than the reinforcement of their environmentally friendly connotation.
46      In the light of the foregoing, the Board of Appeal did not infer the lack of distinctive character of the mark applied for from the lack of such character in the elements of which it is composed, but took account of the overall impression produced by that mark.
47      As regards INTA’s line of argument that the Board of Appeal carried out assessments relevant to establishing the descriptive character of a sign, but not its distinctive character, it should be noted that the assessments carried out by the Board of Appeal on the connotations of the colours used in the mark applied for were relevant to establishing the relevant public’s perception of that mark and, in particular, to verifying whether that mark is capable of conveying specific information, in particular regarding the origin of the product or service, that is to say, of identifying the product or service covered by that sign as originating from a particular undertaking, and of distinguishing that product or service from those of other undertakings, in accordance with the case-law referred to in paragraph 27 above.
48      In that regard, it is apparent from paragraphs 37 and 39 of the contested decision that the Board of Appeal referred to the relevant case-law on the associations of ideas that the colour green, including its yellow green tone, may convey. As is clear from that case-law, the colour green is a basic colour representing ecology and environmental protection and which, therefore, may refer to the ecological characteristics of a product or service (see, to that effect, judgments of 11 April 2013, CBp Carbon Industries v OHIM (CARBON GREEN), T‑294/10, not published, EU:T:2013:165, paragraph 25; of 28 January 2015, Gradation of five shades of the colour green, T‑655/13, not published, EU:T:2015:49, paragraphs 39 and 40; and of 3 May 2017, Enercon v EUIPO – Gamesa Eólica (Blended shades of green), T‑36/16, not published, EU:T:2017:295, paragraph 46).
49      As regards the colour blue, it is apparent from paragraphs 37 and 38 of the contested decision that the Board of Appeal concluded that that colour was that of the ocean and the sky and that it was common knowledge that it was used to distinguish products that respect the environment.
50      However, it must be stated that, even though the colours blue and green may convey meanings not related to ecology or the environment, that does not alter the fact that the mark applied for is incapable of conveying specific information concerning the origin of the goods and services at issue, as is clear from paragraphs 41 to 43 above. Therefore, the arguments of the applicant and of INTA referred to in paragraph 44 above must be rejected.
51      In the fifth and last place, the applicant claims that a trade mark may fulfil various functions and that a mere potential for decorative use is not a sufficient ground for refusal. However, as is apparent, in particular, from paragraphs 41 to 43 above, that is not the only ground relied on by the Board of Appeal to support its finding relating to the lack of distinctive character of the mark applied for. The evidence produced by the applicant does not substantiate the fact that the mark applied for contained elements capable of distinguishing it from other colour combinations in the market concerned, within the meaning of the case-law referred to in paragraph 32 above. Therefore, the applicant’s argument must be rejected.
52      It follows from the foregoing that the Board of Appeal did not commit any error of assessment in considering that the mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
53      Therefore, the first plea in law must be rejected.
The third plea in law, alleging breach of the principles of legal certainty, equal treatment and sound administration
54      The applicant, supported by the interveners, complains that the Board of Appeal did not conduct a careful and precise analysis and did not present specific evidence or arguments to justify the refusal of registration, but applied an excessively strict standard relating to marks consisting of a single colour. In that regard, it maintains that the Board of Appeal did not examine the evidence, including the market studies, which it produced. In adopting that approach, the Board of Appeal’s decision did not comply with EUIPO guidelines and infringed the principles of legal certainty, equal treatment and sound administration. Moreover, the applicant claims that the contested decision was inconsistent with EUIPO’s previous decision-making practice, from which it is apparent that it had registered other marks comparable to the mark applied for. In taking that approach, the Board of Appeal adopted a contradictory and discriminatory practice with regard to marks consisting of a combination of colours in a systematic arrangement and thereby infringed the principles of equal treatment and sound administration.
55      EUIPO disputes those arguments.
56      As regards the similar marks cited by the applicant, it should be borne in mind that, according to settled case-law, the decisions concerning registration of a sign as an EU trade mark which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).
57      It is true that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, including the principles of equal treatment and of sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73). In the light of those principles, EUIPO must take into account the decisions which it has already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, since the application of those principles must be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as an EU trade mark cannot rely, to that person’s 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 an EU trade 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 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77).
58      In addition, as stated in paragraph 37 above, the EUIPO guidelines are not binding legal acts for the purpose of interpreting provisions of EU law.
59      In the present case, as is apparent from paragraphs 18, 20, 22, 41, 42, 49 and 50 above, the Board of Appeal, in support of the refusal to register the mark applied for, relied on the relevant case-law, well-known facts and arguments and specific evidence, namely, the examples cited by the examiner, an internet search carried out on 3 November 2023 and an expert opinion produced by the applicant. It also took into account the market studies produced by the applicant and explained the reason why they were irrelevant to the assessment of the inherent distinctive character of the mark applied for. Moreover, as is apparent from paragraph 53 above, the Board of Appeal was right to find that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001 and, accordingly, the applicant cannot properly rely, in order to cast doubt on that conclusion, on previous decisions of EUIPO, or on EUIPO’s guidelines for examination of EU trade marks or its learning materials.
60      In the light of all of the foregoing, the third plea in law must be rejected and, accordingly, the action dismissed in its entirety.
Costs
61      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.
62      Although the applicant has been unsuccessful, EUIPO has applied for the applicant to 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.
63      Since the interveners have not applied for costs against the applicant, they must be ordered to bear their own costs, in accordance with Article 138(3) of the Rules of Procedure.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Mastroianni
Tóth
Kalėda
Delivered in open court in Luxembourg on 11 June 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of case: English.