ORDER OF THE GENERAL COURT (Third Chamber)
22 July 2025 (*)
( EU trade mark – Invalidity proceedings – EU word mark RDME – Absolute ground for invalidity – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001 – Article 59(1)(a) of Regulation 2017/1001 – Action manifestly lacking any foundation in law )
In Case T‑512/24,
Oberon Fuels, Inc., established in Wilmington, Delaware (United States), represented by M. Körner and J. Wachinger, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Dimeta BV, established in Leiden (Netherlands),
THE GENERAL COURT (Third Chamber),
composed of P. Škvařilová-Pelzl, President, I. Nõmm (Rapporteur) and D. Kukovec, Judges,
Registrar: V. Di Bucci,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Oberon Fuels, Inc., seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 July 2024 (Case R 664/2024-2) (‘the contested decision’).
Background to the dispute
2        On 19 January 2023, the other party to the proceedings before the Board of Appeal, Dimeta BV, filed an application with EUIPO for a declaration of invalidity of the EU trade mark which had been registered following an application filed by the applicant on 15 May 2022, with a date of priority of 18 January 2022, for the word sign RDME.
3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought are in Class 4 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: ‘Biofuel; fuels; fuel for motor vehicles, namely, dimethyl ether; fuel for diesel engines, namely, dimethyl ether; fuel for blending with propane; energy carriers, namely, dimethyl ether (DME) as a hydrogen carrier; liquid fuels; fossil fuel substitutes, namely, biofuels; and fuels and biofuels blended with chemicals’.
4        The grounds relied on in support of the application for a declaration of invalidity were those set out 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) and (c) of that regulation.
5        On 30 January 2024, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 7(1)(c) and (b) of Regulation 2017/1001.
6        On 26 March 2024, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
7        By the contested decision, the Board of Appeal dismissed the appeal on two grounds. According to the Board of Appeal, first, the contested mark was registered even though it was descriptive of the goods at issue, given that a non-negligible part of the relevant public – that is, the part of the relevant public consisting of the specialist and English-speaking public – perceives the sign RDME as the abbreviation rDME for ‘renewable dimethyl ether’, which designates a renewable form of fuel. The Board of Appeal added that the fact that the contested mark contains an upper case ‘R’ instead of a lower-case ‘r’ did not alter the perception of the sign by the relevant public and inferred from this that the conditions for the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001 were satisfied. Second, the Board of Appeal found that the contested mark had been registered even though it was devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation as regards the goods at issue.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO 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 a hearing takes place.
Law
10      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
11      In the present case, the Court considers that it has sufficient information from the material in the file and decides, pursuant to that article, to rule without taking any further steps in the proceedings, notwithstanding that one of the parties has requested a hearing (order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraph 13).
12      The applicant relies on two pleas in law, alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with, first, Article 7(1)(c) of that regulation and, second, Article 7(1)(b) of that regulation.
The first plea, alleging infringement of Article 59(1)(a), read in conjunction with Article 7(1)(c) of Regulation 2017/1001
13      Pursuant to Article 59(1)(a) of Regulation 2017/1001, 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.
14      According to Article 7(1)(c) of Regulation 2017/1001, 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. Article 7(2) of that regulation provides that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
15      By prohibiting the registration as trade marks of the European Union of such signs or indications, Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely that signs or indications that are descriptive of the characteristics of goods or of services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
16      Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
17      For a sign to be caught by the prohibition in Article 7(1)(c) of Regulation 2017/1001, it must suggest a sufficiently direct and concrete link to the goods or services at issue to enable the relevant public immediately to perceive, without further thought, a description of the goods and the services at issue or of one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
18      A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
19      It should be borne in mind that, under the case-law, when considering whether the absolute grounds referred to in Article 7(1) of Regulation 2017/1001 preclude the registration of a mark or must give rise to a declaration that a previously registered mark is invalid, the adjudicating bodies of EUIPO must take the date of filing of the application for registration as the material date (see judgments of 21 November 2013, Heede v OHIM (Matrix-Energetics), T‑313/11, not published, EU:T:2013:603, paragraph 47 and the case-law cited, and of 8 May 2019, VI.TO. v EUIPO – Bottega (Shape of a golden bottle), T‑324/18, not published, EU:T:2019:297, paragraph 17 and the case-law cited). However, for the purposes of examining such an application for a declaration of invalidity, it is possible to take into account material which, although subsequent to that date, enables conclusions to be drawn regarding the situation as it stood at that time (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).
20      It is in the light of those considerations that it must be examined whether the Board of Appeal was right in finding that the contested mark was descriptive of the goods at issue, pursuant to Article 7(1)(c) of Regulation 2017/2001.
The relevant public
21      In paragraphs 23 to 27 of the contested decision, the Board of Appeal found that the goods at issue were aimed both at the general public and at professionals in the field of fuels, in particular renewable fuels. Furthermore, it focused on the perception of the English-speaking public in the European Union, because the abbreviation DME designates the English term ‘dimethyl ether’, whereas the abbreviation rDME designates the English expression ‘renewable dimethyl ether’.
22      Although the applicant does not dispute the merits of taking the English-speaking public into account, by contrast, it criticises the Board of Appeal for having included the professional public in the relevant public, arguing that the goods at issue are mainly aimed at the general public, given that the professional public purchases them only for private use. It follows that only the general public must be taken into account as the relevant public, whose level of attention is average at best.
23      EUIPO disputes the applicant’s arguments.
24      First, it must be stated that, with regard to the nature of the goods at issue, linked to different types of fuel, the merits of the Board of Appeal’s assessment, in paragraph 27 of the contested decision according to which the contested mark targeted both the general public and a professional public, cannot be called into question by the applicant’s mere unsubstantiated assertion that ‘the goods are primarily aimed at the general public who use and buy the corresponding energy carriers for vehicles’.
25      Second, it should be noted that the Board of Appeal was also right, in essence, in paragraphs 30, 41 and 46 of the contested decision, to rely on the specialised part of the relevant public, that is, the professional public.
26      It is sufficient that a non-negligible part of the relevant public, whether professionals or the general public, directly and immediately perceives the descriptive character of the contested mark in order for the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001 to apply (see, to that effect, judgment of 2 February 2022, WILD, T‑116/21, not published, EU:T:2022:47, paragraph 27 and the case-law cited).
27      The applicant has not adduced any factual evidence to support the conclusion that professionals constitute only a negligible part of the relevant public. On the contrary, while some of the goods covered by the contested mark, such as biofuels, fuels and liquid fuels (standard fuels for vehicles), target both the general public and professionals, others, such as dimethyl ether (DME) and fuels to be mixed with propane or other chemicals, may reasonably be considered to be mainly aimed at a professional public.
28      Third, as regards the applicant’s criticism of the level of attention of the relevant public, it is sufficient to point out that, according to the case-law, the level of attention of the relevant public is not decisive for the purpose of assessing whether the sign under examination is caught by the grounds for refusal set out in Article 7(1)(c) of Regulation 2017/1001 (see judgments of 10 February 2021, Biochange Group v EUIPO – mysuperbrand (medical beauty research), T‑98/20, not published, EU:T:2021:69, paragraph 46 and the case-law cited, and of 26 October 2022, Gameageventures v EUIPO (GAME TOURNAMENTS), T‑776/21, not published, EU:T:2022:673, paragraph 23 and the case-law cited).
The descriptive character of the contested mark in relation to the goods covered by it
29      In paragraph 46 of the contested decision, the Board of Appeal found that the contested mark was perceived by the professional part of the relevant public which understands English as a reference to the nature of all the goods, namely, that they can all be renewable fuels. In order to reach that conclusion, it noted, first, in paragraphs 30 and 32 of the contested decision, that it was not disputed between the parties
that the abbreviations DME and rDME were understood by the relevant public as meaning, respectively, ‘dimethyl ether’ and ‘renewable dimethyl ether’. Second, in paragraphs 31, 33 and 34 of the contested decision, it found that that understanding by the relevant public was, in any event, demonstrated to the requisite legal standard, on the relevant date, by the evidence submitted before the Cancellation Division. Third, in paragraphs 35 and 36 of the contested decision, the Board of Appeal rejected the applicant’s argument alleging that the presence of an upper case ‘R’ instead of a lower-case ‘r’ in the contested mark would alter its perception by the relevant public. Fourth and lastly, in paragraphs 37 to 43 of that decision, the Board of Appeal rejected the applicant’s arguments alleging that the evidence either referred to the applicant or to companies with which it had a business relationship or referred to territories outside the European Union, and that it was not possible to determine clearly to what extent the relevant public had been exposed to the information presented in that evidence.
30      The applicant submits that the evidence to which the Board of Appeal referred does not demonstrate that the group of capital letters ‘RDME’ is perceived by the relevant public as the abbreviation for ‘renewable dimethyl ether’ on the priority date of the contested mark. In that regard, first, the applicant states that it has maintained on several occasions that the general public would not understand the abbreviation DME as meaning ‘dimethyl ether’ and the abbreviation rDME as meaning ‘renewable dimethyl ether’. Second, the applicant submits that the evidence to which the Board of Appeal referred did not support its conclusion, either because it did not concern the public of the European Union, or because it fell within the sphere of the applicant itself, or because it post-dated the relevant date, or because it was undated. Third and lastly, the applicant complains that the Board of Appeal failed to take into account the presence of the capital letter ‘R’ at the beginning of the contested mark.
31      EUIPO disputes the applicant’s arguments.
32      In the first place, it should be noted that the applicant’s line of argument in so far as it is based on the premiss that the relevant public is limited solely to the general public is incorrect for the reasons set out in paragraphs 24 to 27 above.
33      In the second place, it should be noted that the applicant is wrong to challenge the relevance or the probative value of the evidence to which the Board of Appeal referred in the contested decision.
34      First, the Board of Appeal was entitled to take into account evidence from countries outside the European Union in the light of the global dimension of the fuel market, as the Board of Appeal rightly noted in paragraph 41 of the contested decision. Thus, it follows that it cannot be ruled out that the professional public in the European Union may be exposed to publications, advertisements or external offers from third countries. Therefore, if EUIPO were to disregard such evidence solely on the ground of its non-EU origin, it would risk undermining the attainment of the objective of public interest pursued by Article 7(1)(c) of Regulation 2017/1001, which requires that signs or indications which may serve, in trade, to designate the characteristics of the goods or services in respect of which registration is sought may be freely used by all (see, to that effect and by analogy, judgment of 21 January 2009, Hansgrohe v OHIM (AIRSHOWER), T‑307/07, not published, EU:T:2009:13, paragraph 31). In any event, as the Board of Appeal found in paragraph 34 of the contested decision, certain annexes, namely Annexes 3, 11 and 20 to the application for a declaration of invalidity, clearly refer to various sources originating in the EU in which the abbreviation rDME is used. More specifically, Annex 3 comes from a company established in the Netherlands, Annex 11 comes from the European Biogas Association and Annex 20 comes from the European Biogas Association and Liquid Gas Europe.
35      Second, as regards the complaint alleging that the Board of Appeal erred in taking into account evidence which was undated or post-dated the date of priority of the contested mark, it should be noted that, in so far as the applicant, at the time of its application for registration, asserted 18 January 2022 as the date of priority, that date must, under Article 36 of Regulation 2017/1001, be regarded as the date of filing of the trade mark application
and, therefore, as the material date within the meaning of the case-law cited in paragraph 19 above.
36      In that regard, it is sufficient to note that it is apparent from paragraphs 31 and 34 of the contested decision that the Board of Appeal, for the purposes of determining the meaning perceived by the relevant public of the abbreviations DME and rDME, took into account various sources, the majority of which predate the date of priority of the contested mark, namely Annexes 3, 9, 10, 11, 13, 16, 17 and 22 to the application for a declaration of invalidity. As regards, first of all, Annexes 9 and 10, the original publication date may be inferred from the URL address appearing in the footer of the printout. It follows that those documents refer, respectively, to publications dated 23 May 2021 and 11 February 2020. Next, as regards Annexes 11, 13, 16 and 22, the original publication date is clearly visible in the text from which it follows that those documents bear the dates of 3 June 2021, 17 September 2020, 14 December 2021 and 28 September 2020 respectively. Furthermore, as regards Annexes 3 and 17, their relevance can be inferred from the footnotes indicating approximately the period to which the results relate, namely, data from 2014 to 2019. The same is true of Annex 20, which, although it does not clearly indicate the date of publication, nevertheless refers to different sources dating from 2016 to 2022.
37      It must be held that Annexes 3, 9, 10, 11, 13, 16, 17 and 22 to the application for a declaration of invalidity in themselves provide sufficient evidence that the abbreviation rDME was used to designate the expression ‘renewable dimethyl ether’ on the relevant date. Thus, Annex 3 refers to a fact sheet entitled ‘Renewable DME’, issued by SHV Energy. That document describes ‘rDME’ and its multiple applications. Annexes 9 and 10 are printouts from the website ‘biofuelsdigest.com’ and highlight developments linked to the production of ‘rDME’. Annex 11 is an article of the European Biogas Association which also describes developments concerning investment in the production of ‘rDME’. Annex 13 is an article on the website ‘prnewswire.com’ on the investment in Oberon Fuels in order to market a product mixed with propane. Annex 16 consists of an article taken from the website ‘argusmedia.com’, which presents the plans of the main distributors of liquefied petroleum gas (LPG) for the production of ‘bio-LPG’, of ‘renewable LPG’ and of ‘rDME’. Annex 17 concerns a printout from the 2019 Annual Report of the World LPG Association, which deals with ‘DME’ and ‘rDME’ in the context of the LPG market. Annex 22 is a press release from the applicant’s webpage, which describes the developments and the advantages of ‘rDME’.
38      Third, as regards the applicant’s argument that the evidence originating from, or relating to, the applicant or related undertakings should not be taken into account, it should be borne in mind that, in the context of Article 7(1)(c) of Regulation 2017/1001, the relevance of such evidence does not depend on its origin, but on its capacity to contribute to the assessment of the way in which the relevant public perceives the contested mark (see, to that effect, judgment of 8 June 2005, Wilfer v OHMI (ROCKBASS), T‑315/03, EU:T:2005:211, paragraph 21). Such evidence shows that the applicant itself actively contributed to the understanding of the term ‘rDME’ as an abbreviation for renewable dimethyl ether. Consequently, the Board of Appeal did not make an error of law or of assessment in examining evidence originating from, or relating to, the applicant or related undertakings.
39      In the light of the foregoing considerations, the Board of Appeal was right in finding that there was sufficient evidence to show that it was reasonable to assume that the abbreviation rDME could actually be recognised by a non-negligible part of the relevant public, that is, professionals, as designating a type of fuel, namely renewable dimethyl ether.
40      In the third place, as EUIPO correctly observes, it is irrelevant, in that regard, that the contested mark is written starting with the capital letter ‘R’. According to the case‑law of the Court, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see judgment of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 39 and the case-law cited).
41      It follows that the Board of Appeal was right in finding that the contested mark had been registered in breach of Article 7(1)(c) of Regulation 2017/1001 in so far as it was descriptive of the goods at issue, since it was perceived by the professional public as a reference to a type of fuel rather than an indication of the commercial origin of the goods at issue.
42      Accordingly, the first plea in law must be rejected as manifestly lacking any foundation in law.
The second plea, alleging infringement of Article 59(1)(a), read in conjunction with Article 7(1(b) of Regulation 2017/1001
43      As regards the applicant’s second plea, it must be pointed out that, as is evident from Article 7(1) of Regulation No 2017/1001, it is sufficient that one of the absolute grounds for refusal applies in order for the sign not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).
44      Consequently, in so far as the Board of Appeal was right to find that the mark applied for had descriptive character pursuant to Article 7(1)(c) of Regulation 2017/1001, it is not necessary to examine the merits of the plea alleging infringement of Article 7(1)(b) of that regulation.
45      Accordingly, the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
46      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
47      Even though 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 has been organised, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby orders:
1.      The action is dismissed.
2.      Each party must bear its own costs.
Luxembourg, 22 July 2025.
V. Di Bucci
P. Škvařilová-Pelzl
Registrar
President
*      Language of the case: English.