JUDGMENT OF THE GENERAL COURT (Second Chamber)
9 March 2022 (*)
(EU trade mark – International registration designating the European Union – Word mark RUGGED – Absolute ground for refusal – No distinctive character acquired through use – Article 7(3) of Regulation (EC) No 207/2009 (now Article 7(3) of Regulation (EU) 2017/1001) – Competence of the Board of Appeal – Article 71 of Regulation 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001)
In Case T‑204/21,
Stryker Corp., established in Kalamazoo, Michigan (United States), represented by I. Fowler, I. Junkar and B. Worbes, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 26 January 2021 (Case R 370/2020‑5), relating to the international registration designating the European Union in respect of the word mark RUGGED,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin (Rapporteur) and P. Škvařilová-Pelzl, Judges,
Registrar: J. Pichon, administrator,
having regard to the application lodged at the Court Registry on 14 April 2021,
having regard to the response lodged at the Court Registry on 28 June 2021,
having regard to the written part of the procedure and further to the hearing on 29 November 2021,
gives the following
Judgment
Background to the dispute
1        On 1 September 2017, the applicant, Stryker Corp., putting forward a priority date of 8 March 2017, based on United States trade mark No 87363165, designated the European Union in its international registration. That registration was notified to the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2        The trade mark forming the subject matter of the international registration designating the European Union is the word mark RUGGED.
3        The goods for which registration was requested are in Classes 10 and 12 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 correspond, for each of those classes, to the following description:
–        Class 10: ‘Patient handling equipment, namely, wheeled medical patient transport devices in the nature of stretchers, cots and stair chairs for transporting patients on stairs; patient safety restraints for wheeled patient transport devices’;
–        Class 12: ‘Fastening systems especially adapted for use in a vehicle or aircraft, comprised of a track and a movable carriage with a coupler to secure medical stretchers and cots in a vehicle or aircraft’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 200/2017 of 20 October 2017.
5        On 10 November 2017, the examiner notified an ex officio provisional total refusal of protection in accordance with Article 193 of Regulation 2017/1001, stating that the mark applied for was descriptive and devoid of distinctive character within the meaning of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009 (now Article 7(1)(b) and (c) and Article 7(2) of Regulation 2017/1001).
6        By letter of 7 May 2018, the applicant submitted its observations on the examiner’s objections and requested, in the alternative, to be allowed to adduce evidence that the mark applied for had acquired distinctive character through use, in accordance with Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001).
7        By decision of 20 June 2018, the examiner rejected the application to register the mark applied for, on the basis of Article 7(1)(b) and (c), read with Article 7(2), of Regulation No 207/2009.
8        On 20 August 2018, the applicant filed a notice of appeal with EUIPO, registered as Case R 1627/2018-5, on the basis of Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
9        By decision of 26 November 2018 (‘the first decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, it observed that, since the mark applied for consisted of an English word, account should be taken of the public in the English-speaking territory of the European Union for the assessment of its eligibility for protection, namely at least the United Kingdom, Ireland and Malta. As the word ‘rugged’ of which the mark applied for consists can mean ‘strong and designed to last a long time, even if treated roughly’, the Board of Appeal concluded that the English-speaking public of the United Kingdom, Ireland and Malta would understand the mark applied for as describing the quality of the goods to which it related and listed in paragraph 3 above. It therefore upheld the examiner’s decision and considered that the mark applied for was descriptive and devoid of distinctive character within the meaning of Article 7(1)(b) and (c), read with Article 7(2) of Regulation No 207/2009.
10      The first decision was not the subject of an action before the General Court.
11      On 9 April 2019, the examiner informed the applicant that the first decision had become final and that he would take a decision pursuant to Article 7(3) of Regulation No 207/2009 only and invited the applicant, in that regard, to submit evidence that the mark applied for had obtained distinctive character through use.
12      By decision of 16 December 2019, the examiner rejected the application for registration of the mark applied for, on the basis of Article 7(3) of Regulation No 207/2009. He considered, in particular, that the applicant had not adduced sufficient evidence that the mark applied for had acquired distinctive character through use in the United Kingdom, Ireland and Malta.
13      On 14 February 2020, the applicant filed an appeal with EUIPO, registered as Case R 370/2020‑5, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision of 16 December 2019.
14      By a communication of 14 August 2020, the Board of Appeal informed the applicant that, in the light of the goods in question, the relevant public was a professional public in the medical sector with a better knowledge and understanding of English than the general public. It concluded that the majority of the professional public of the whole European Union would understand the meaning of the term ‘rugged’ as referring to one of the characteristics of the goods covered by the mark applied for and, therefore, that the applicant had to show that the mark applied for had acquired distinctive character through use in the whole of the European Union. The applicant was requested to comment on that communication.
15      By letter of 19 October 2020, the applicant submitted its comments on the Board of Appeal’s communication and claimed that it was not required to adduce evidence that the mark applied for had acquired distinctive character through use in the whole of the European Union, on the ground that it was not for the Board of Appeal to redefine the relevant territory in the course of those proceedings, as that issue, having already been settled by the first decision, had become final.
16      By decision of 26 January 2021 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, it observed that the applicant’s assertion that the scope of procedure R 370/2020‑5 was limited exclusively to the question whether the trade mark RUGGED had become distinctive within the meaning of Article 7(3) of Regulation No 207/2009 in the United Kingdom, Ireland and Malta was unfounded. In the second place, it found that the applicant had not shown that the mark applied for had acquired distinctive character throughout the European Union.
Forms of order sought
17      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
18      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
19      As a preliminary point, it should be observed that, given the date on which the application for registration at issue was filed, namely 1 September 2017, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). 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 present dispute is governed by the procedural provisions of Regulation 2017/1001.
20      Accordingly, in the present case, as regards the substantive rules, the references to Article 7(3) of Regulation 2017/1001 by the Board of Appeal in the contested decision and by the parties to the proceedings in their written submissions must be understood as referring to Article 7(3) of Regulation No 207/2009, the content of which is identical.
21      In support of its action, the applicant puts forward three pleas. The first plea alleges infringement of Article 71(1) of Regulation 2017/1001, in that the Board of Appeal exceeded the limits of its competence. The second plea alleges infringement of Article 7(3) of Regulation No 207/2009, in that the Board of Appeal erred in finding that the evidence that the mark applied for had acquired distinctive character through use was insufficient. The third plea alleges infringement of Article 94(1) of Regulation 2017/1001, in that the Board of Appeal failed to state the reasons on which the contested decision is based.
The first plea: infringement of Article 71(1) of Regulation 2017/1001
22      In the context of the first plea, the applicant maintains, in essence, that, since the first decision had become final, EUIPO was not competent to examine absolute grounds for refusal within the meaning of Article 7(1)(b) and (c) of Regulation 2017/1001 and, therefore, to redefine the relevant territory in the course of the present proceedings, which relate solely to Article 7(3) of that regulation. In that regard, it does not follow clearly and unequivocally from the first decision that where it was stated that account had to be taken of the ‘public of the English-speaking territory of the European Union, namely, at least in the United Kingdom, Ireland and Malta’, that meant that the relevant territory had not been thoroughly and exhaustively defined.
23      Moreover, in the light of the limits to the principle of functional continuity between the various bodies of EUIPO, it was not for EUIPO to re-examine the distinctive character of the mark applied for within the meaning of Article 7(1)(b) and (c) of Regulation 2017/1001. That follows clearly from the judgment of 6 February 2013, Maharishi Foundation v OHIM (TRANSCENDENTAL MEDITATION) (T‑412/11, not published, EU:T:2013:62, paragraph 24). In the view of the applicant, by proceeding in that manner in the contested decision, EUIPO breached the principle of reformatio in pejus.
24      EUIPO disputes the applicant’s arguments.
25      First, in the light of the legal and factual circumstances of the present case, the examination of the substance of the first plea requires an examination of the extent to which the relevant territory must be identified for the purpose of examining Article 7(1)(b) and (c) of Regulation No 207/2009 and Article 7(3) of that regulation.
26      In that regard, as regards the assessment of the existence of absolute grounds for refusal within the meaning of Article 7(1) of Regulation No 207/2009, it is apparent from the wording of Article 7(2) of Regulation 2017/1001 that a sign must be refused registration even if the grounds of non-registrability obtain in only part of the European Union (judgment of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 41).
27      It follows that, in order to refuse registration of a sign as provided for in Article 7(1)(b) and (c) of Regulation No 207/2009, it is not necessary to identify all of the relevant territory in which those grounds took effect, since it is sufficient to observe that those grounds exist in only part of the European Union.
28      As regards the acquisition by a mark of distinctive character following the use which has been made of it, within the meaning of Article 7(3) of Regulation No 207/2009, it must be pointed out that the absolute grounds for refusal set out in Article 7(1)(b) to (d) of that regulation do not preclude the registration of a mark if that mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
29      In addition, it is apparent from the unitary character of the EU trade mark that, in order to be accepted for registration, a sign must possess distinctive character, inherent or acquired through use, throughout the European Union (judgments of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 68, and of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a brown and beige chequerboard pattern), T‑359/12, EU:T:2015:215, paragraph 86).
30      In that regard, the Court has previously held that a sign may be registered as an EU trade mark under Article 7(3) of Regulation No 207/2009 only if evidence is provided that it has acquired, in consequence of the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character for the purposes of paragraph 1(b) of that article (see judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 75 and the case-law cited).
31      It follows that, unlike the examination of Article 7(1)(b) and (c) of Regulation No 207/2009, the examination of Article 7(3) of that regulation requires identification of the part of the European Union in which the sign was, ab initio, devoid of such character and therefore requires identification of the whole of the relevant territory in which one of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation No 207/2009 took effect.
32      Second, it is necessary to examine whether, as the applicant argues, in the present case it would be contrary to the principle of functional continuity of the bodies of EUIPO, as provided for in Article 71(2) of Regulation 2017/1001, to re-examine the relevant territory established in the first decision under Article 7(1)(b) and (c) of Regulation No 207/2009, in the context of the examination of Article 7(3) of that regulation.
33      Under Article 71(2), if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.
34      It follows, according to the applicant, that the Board of Appeal, in the contested decision, was bound by the ratio decidendi of the first decision and relies in that regard on the judgment of 6 February 2013, TRANSCENDENTAL MEDITATION (T‑412/11, not published, EU:T:2013:62, paragraph 24).
35      However, in the present case that judgment is not decisive.
36      In that case, the Board of Appeal had examined both Article 7(1)(b) and (c) of Regulation No 207/2009 and Article 7(3) of that regulation before remitting the case back to first instance for an examination with regard to acquired distinctive character. The Board of Appeal, having to examine Article 7(3) of Regulation No 207/2009, had determined precisely the territorial scope of the evidence of the acquired distinctive character of the mark applied for, an assessment which, as the Court had pointed out, was binding on the examiner.
37      In the present case, in the first decision, the Board of Appeal was not asked to examine Article 7(3) of Regulation No 207/2009, but only Article 7(1)(b) and (c) of that regulation. The Board of Appeal was therefore not required to identify the whole of the relevant territory.
38      In addition, even if the assessment made in the first decision were binding on the Board of Appeal in the contested decision, it cannot be required that that also applies to such assessment being incomplete.
39      As is apparent from paragraphs 26 to 31 above, the logic of Article 7(1)(b) and (c) of Regulation No 207/2009 and Article 7(3) of that regulation militates in favour of it not being possible to criticise the Board of Appeal, when it examines only Article 7(1) of Regulation No 207/2009, for not making a precise definition of the relevant territory and, therefore, that that assessment may be made in the context of the examination of Article 7(3) of that regulation.
40      If the territory in respect of which the grounds for refusal under Article 7(1)(b) and (c) of Regulation No 207/2009 is not fully identified and should the Board of Appeal be prevented from being able to supplement its examination of the territory when it examines Article 7(3) of Regulation No 207/2009, it would follow that a mark could be registered even though it were, ab initio, devoid of distinctive character in other parts of the European Union. That would amount to failing to have regard to the practical effect of that provision.
41      Thirdly, since those considerations prevail over any alleged breach of the principle of legal certainty, it is necessary to determine whether, in the present case, the analysis of the relevant territory carried out in the first decision was incomplete.
42      It is apparent from paragraph 16 of the first decision that it was found, as regards the relevant public, that ‘the mark applied for consist[ed] of an English word [and that] account [was to be] taken of the public in the English-speaking territory of the European Union, namely, at least in the United Kingdom, Ireland and Malta, for the assessment of its eligibility for protection’.
43      In that regard, while it is true that the Board of Appeal referred in the first decision to the ‘English-speaking territory of the European Union’, which refers, as the applicant correctly states, only to countries whose official language is English, it does not thereby follow that the Board of Appeal did not intend to consider that the relevant territory might extend beyond those three countries.
44      As is apparent from paragraphs 26 and 27 above, the Board of Appeal was not required in the first decision to identify all of the territory on which the absolute grounds for refusal as provided for in Article 7(1)(b) and (c) of Regulation No 207/2009 took effect and, moreover, it rejected the registration of the mark applied for on the basis of those provisions and Article 7(2) of that regulation. In addition, it must be pointed out that the decisive question when examining those provisions is to identify whether the relevant public may understand the meaning of a mark in relation to the goods to which it relates. In that regard, it is apparent from the case-law that, where the absolute grounds for refusal relied on by the examiner and the Board of Appeal relate to the meaning of the sign for which registration is sought in a language of the European Union, the relevant public to be taken into account in their assessment is the part of the relevant public, within the European Union, which will understand that meaning (see, to that effect, judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 17 and the case-law cited).
45      Accordingly, the Board of Appeal referred to the English-speaking territory of the European Union solely for the relevant public’s understanding of English in that territory, and did so for reasons of procedural economy. Moreover, the expression ‘at the very least’ makes sense only in that context in so far as all the English-speaking countries of the European Union have already been mentioned.
46      It is well known that English is understood and spoken elsewhere than in the countries of which it is the official language. Since the mark applied for consists of an English word, the Board of Appeal was entitled to find, as it duly set out its reasoning in paragraphs 27 to 30 of the contested decision, that, even if the first decision referred only to the public in the English-speaking territory of the European Union, account could also be taken of the public of the rest of the European Union which had a good understanding of English and therefore that the analysis of the relevant territory in the first decision was not exhaustive.
47      Thus, it must be held that the Board of Appeal was justified, in the contested decision, in following the analysis of the relevant territory undertaken in the first decision and did not exceed the limits of its competence in finding that it was necessary to take into account the relevant professional public throughout the European Union which had a better knowledge and understanding of English and, more particularly, the relevant professional public of the Scandinavian countries and of the Netherlands.
48      The fact that the first decision had become final is therefore irrelevant in that regard.
49      Furthermore, as regards the principle of the prohibition of reformatio in pejus raised by the applicant, even if such a principle could be relied on in proceedings for review of the legality of a decision of a Board of Appeal of EUIPO, it must be stated that, in dismissing the applicant’s appeal, the Board of Appeal maintained in force the examiner’s decision of 16 December 2019. Therefore, in so far as the contested decision did not uphold the applicant’s claim, the applicant is not, following that decision, in a less favourable legal position than before the action was brought (judgment of 8 May 2018, Luxottica Group v EUIPO – Chen (BeyBeni), T‑721/16, not published, EU:T:2018:264, paragraph 27).
50      The first plea must therefore be rejected.
The second plea: infringement of Article 7(3) of Regulation No 207/2009
51      In the first place, the applicant submits that, in so far as the first decision, which has become final, found that the mark applied for had no distinctive character solely in the United Kingdom, Ireland and Malta, the Board of Appeal infringed Article 7(3) of Regulation No 207/2009 in taking the view that the applicant had not adduced sufficient evidence establishing distinctive character acquired through use of the mark applied for in the whole of the European Union.
52      In the second place, the applicant disputes the Board of Appeal’s finding that the relevant professional public in the whole of the European Union has a thorough knowledge of English and necessarily understands the word ‘rugged’. In that regard, in the applicant’s view, what is involved is not a basic English word and, since it is not a term commonly used in the medical profession or forming part of its vocabulary, the Board of Appeal was not entitled to find, unless it was to commit an error, that the relevant public would understand the meaning of the mark applied for solely on the ground that it refers to qualities which may be of interest to professionals in that field.
53      EUIPO disputes the applicant’s arguments.
54      In the first place, as regards the applicant’s argument that the Board of Appeal, in the contested decision, infringed Article 7(3) of Regulation No 207/2009 in taking the view that it was necessary to prove that that mark applied for acquired distinctive character for the whole of the European Union, it must be stated that that argument is, in essence, identical to the argument put forward in relation to the first plea. Therefore, that argument must be rejected for the same reasons as set out in relation to the first plea.
55      In the second place, as regards the applicant’s argument that the relevant public which is not part of the United Kingdom, Ireland and Malta could not understand the meaning of the term ‘rugged’, it must be pointed out that the Board of Appeal was entitled to find that the relevant public was a professional public in the medical sector and, more specifically, in the patient safety field.
56      In addition, as the applicant observed when it brought its appeal against the decision of 16 December 2019, English is very often used in commercial communications and is well known to lay people in the European Union. In that regard, it is also apparent from the case-law that the professional public is in a position to understand certain English terms which may form part of professional vocabulary (see, to that effect, judgment of 29 March 2012, Kaltenbach Defence Voigt v OHIM (3D eXam), T‑242/11, not published, EU:T:2012:179, paragraph 26).
57      It must therefore be found, as the Board of Appeal did, that, since the relevant professional public, which has in-depth medical expertise and knowledge in patient safety matters, has a specific and practical interest in goods with characteristics of solidity, robustness or durability, that public may understand English vocabulary describing or indicating those characteristics (see, to that effect, judgment of 31 January 2019, DeepMind Technologies v EUIPO (STREAMS), T‑97/18, not published, EU:T:2019:43, paragraphs 30 to 38).
58      In so far as it is apparent from paragraph 9 above and from paragraph 57 of the contested decision that the word ‘rugged’, which constitutes the mark applied for, had a sufficiently clear and unequivocal meaning in English in relation to the goods at issue, the Board of Appeal could reasonably conclude that the meaning of the sign RUGGED, in relation to the goods at issue, would be perceived by the majority of the relevant professional public in the whole of the European Union.
59      Consequently, the second plea, alleging infringement of Article 7(3) of Regulation No 207/2009, must be rejected.
The third plea: infringement of Article 94(1) of Regulation 2017/1001
60      The applicant maintains that, in the first place, the Board of Appeal did not provide sufficient reasons, in the contested decision, as to how the mark applied for would be perceived as descriptive and devoid of distinctive character in the whole of the European Union. Nor did it explain why the evidence relating to the United Kingdom, Ireland and Malta, which it did not even examine, is not sufficient to prove acquired distinctive character for the purpose of Article 7(3) of Regulation No 207/2009. In the second place, the applicant maintains that by requiring at an advanced stage of the proceedings that the applicant adduce evidence of acquired distinctive character in 25 additional countries without allowing it time to produce that evidence, the Board of Appeal infringed the second sentence of Article 94(1) of Regulation 2017/1001. Contrary to what the Board of Appeal maintains in the contested decision, the communication of 14 August 2020 did not invite the applicant to produce other evidence nor did it indicate that the decision to extend the territorial scope of the evidence of acquired distinctive character to the whole of the European Union had become final.
61      EUIPO disputes the applicant’s arguments.
62      Under 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 the obligation following 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, 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 of a measure 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. The purpose of that obligation, which also follows from Article 41(2) of the Charter of Fundamental Rights of the European Union, is, first, to enable interested parties to know the purported justification for the measure taken so as to enable them to protect their rights and, second, to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question (see, to that effect, judgment of 28 June 2018, EUIPO v Puma,
C‑564/16 P, EU:C:2018:509, paragraphs 64 and 65 and the case-law cited).
63      In addition, the obligation to state reasons is an essential procedural requirement, as distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. 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, the latter 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. It follows that objections and arguments intended to establish that a measure is not well founded are irrelevant in the context of a plea alleging that the statement of reasons is lacking or inadequate (see judgment of 19 September 2018, Volkswagen v EUIPO – Paalupaikka (MAIN AUTO WHEELS), T‑623/16, not published, EU:T:2018:561, paragraph 71 and the case-law cited).
64      First of all, as regards the applicant’s argument that the Board of Appeal did not provide an adequate statement of the reasons why the mark applied for would be perceived as descriptive and devoid of distinctive character in the whole of the European Union, it must be held that it is apparent from paragraphs 52 and 55 to 59 above that the statement of reasons in the contested decision concerning the territorial scope of the proof of acquired distinctive character of the mark applied for is clear and unequivocal and is sufficient to enable the applicant to understand the Board of Appeal’s reasoning and to challenge it and to enable the Courts of the European Union to exercise their power of review. Therefore, it cannot be maintained that that reasoning is insufficient.
65      Next, as regards the applicant’s argument that the Board of Appeal did not explain how the evidence relating to the acquired distinctive character of the mark applied for in the United Kingdom, Ireland and Malta was not sufficient to prove that that mark had acquired distinctive character, it should be noted that the Board of Appeal stated, in paragraph 71 of the contested decision, that, as a matter of procedural economy, it would begin the examination of the acquired distinctive character claimed for the whole of the European Union with the exception of the United Kingdom and Ireland. In so far as the applicant had to prove that the mark applied for had acquired distinctive character for the whole of the European Union and in so far as, for the Scandinavian countries, the Board of Appeal found that there was insufficient evidence, the Board of Appeal was entitled to reject the applicant’s claim based on Article 7(3) of Regulation No 207/2009, there being no need to examine the evidence relating to the United Kingdom, Ireland and Malta.
66      Lastly, as regards an alleged infringement of the applicant’s right to be heard, it must be pointed out that, under the second sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.
67      In that regard, it must be noted that it is apparent from the communication from the Board of Appeal of 14 August 2020 that the Board of Appeal informed the applicant that ‘[the applicant had to] show that the [mark] … [had] acquired distinctive character in the whole EU’ and that ‘[it was] requested to comment on [that] communication’. Contrary to the applicant’s assertions, that communication therefore implied that it was to produce other evidence and enabled the Board of Appeal to give a ruling on the assessment of the extent of the evidence of distinctive character acquired by the mark applied for.
68      In addition, it must be stated that the applicant understood that it had to submit other evidence since, by letter of 8 October 2020 addressed to the Board of Appeal, it stated, in particular, in response to the communication of 14 August 2020, that it wished to supplement its evidence in order to prove the distinctive character acquired by the mark applied for and required, for that purpose, an additional period of two months, which was granted to it by notification from the Board of Appeal of 14 October 2020. That additional period also allowed it sufficient time to submit additional evidence in response to the communication of 14 August 2020.
69      It follows from the foregoing that the Board of Appeal did not infringe Article 94(1) of Regulation 2017/1001.
70      Consequently, the applicant’s third plea must be rejected and, consequently, the action must be dismissed in its entirety, there being no need to rule on the applicant’s complaint, raised at the hearing, that Annex B.1 attached to EUIPO’s response is inadmissible as a new item of evidence.
Costs
71      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Stryker Corp. is to pay the costs.
Tomljenović
Schalin
Škvařilová-Pelzl
Delivered in open court in Luxembourg on 9 March 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.