JUDGMENT OF THE GENERAL COURT (Third Chamber)
6 October 2021 (*)
(EU trade mark – Invalidity proceedings – Application for an EU figurative mark representing a lobster – Absolute grounds for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – No descriptive character – Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001) – Right to be heard – Article 94 of Regulation 2017/1001)
In Case T‑254/20,
Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’, established in Kiev (Ukraine), represented by I. Lukauskienė, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard‑Monguiral and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
PAO Moscow Confectionery Factory ‘Krasnyj Octyabr’, established in Moscow (Russia), represented by M. Geitz and J. Stock, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 4 March 2020 (Case R 1916/2019‑4), relating to invalidity proceedings between Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’ and PAO Moscow Confectionery Factory ‘Krasnyj Octyabr’,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, G. De Baere and G. Steinfatt (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the application lodged at the Court Registry on 5 May 2020, and the statement of modification lodged at the Court Registry on 22 June 2020,
having regard to the response of EUIPO lodged at the Court Registry on 21 July 2020,
having regard to the response of the intervener lodged at the Court Registry on 9 July 2020,
further to the hearing on 6 July 2021, at which the applicant was not present,
gives the following
Judgment
Background to the dispute
1        On 18 October 2016, the intervener, PAO Moscow Confectionery Factory ‘Krasnyj Octyabr’, filed an application for registration of an EU trade mark with 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        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Class 30 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 to the following description: ‘Almond confectionery; boiled confectionery; cachou [confectionery], other than for pharmaceutical purposes; chocolate confectionery; chocolate confectionery containing pralines; chocolate confectionery products; chocolate decorations for confectionery items; chocolate flavoured confectionery; chocolate for confectionery and bread; Christmas trees (confectionery for decorating-); clear gums [confectionery]; coated nuts [confectionery]; confectionery; confectionery bars; confectionery chocolate products; confectionery containing jelly; confectionery containing jam; confectionery having liquid spirit fillings; confectionery having liquid fruit fillings; confectionery having wine fillings; confectionery ices; confectionery in frozen form; confectionery in liquid form; confectionery in the form of tablets; confectionery items coated with chocolate; confectionery items formed from chocolate; confectionery made of sugar; confectionery (non-medicated-); confectionery products (non-medicated-); crystal sugar pieces [confectionery]; dairy confectionery; dragees [non-medicated confectionery]; flavoured sugar confectionery; bread; pastries; ices; flour confectionery; fondants [confectionery]; frozen yoghurt [confectionery ices]; fruit drops [confectionery]; frozen yogurt [confectionery ices]; fruit jellies [confectionery]; ice confectionery; ice confectionery in the form of lollipops; ice cream confectionery; iced confectionery (non-medicated-); liquorice [confectionery]; liquorice flavoured confectionery; lollipops [confectionery]; lozenges [confectionery]; lozenges [non-medicated confectionery]; mallows [confectionery]; marshmallow confectionery; mint flavoured confectionery (non-medicated-); non-medicated chocolate confectionery; non-medicated confectionery containing milk; non-medicated confectionery in jelly form; non-medicated confectionery candy; non-medicated confectionery containing chocolate; non-medicated confectionery having a milk flavour; non-medicated confectionery having toffee fillings; non-medicated confectionery in the form of lozenges; non-medicated confectionery in the shape of eggs; non-medicated confectionery for use as part of a calorie controlled diet; non-medicated flour confectionery; non-medicated flour confectionery coated with chocolate; non-medicated flour confectionery coated with imitation chocolate; non-medicated flour confectionery containing imitation chocolate; non-medicated mint confectionery; non-medicated sugar confectionery; nut confectionery; orange based confectionery; pastilles [confectionery]; peanut butter confectionery chips; peanut confectionery; peppermint for confectionery; peppermint pastilles [confectionery], other than for medicinal use; potato flour confectionery; prepared desserts [confectionery]; rock [confectionery]; sherbet [confectionery]; sherbets [confectionery]; snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; snack foods consisting principally of confectionery; stick liquorice [confectionery]; sweets (non-medicated-) in the nature of sugar confectionery; truffles [confectionery]; truffles (rum-) [confectionery]; wafers; pastries; caramels [candy]; sweetmeats [candy]; chocolate; pralines; pralines made of chocolate; chocolate wafers; chocolate caramel wafers; bean-jam filled wafers [monaka]; rolled wafers [biscuits]; cocoa; marzipan; chocolate beverages; coffee.’
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2017/129 of 11 July 2017. The contested mark was registered on 7 July 2017 under number 15948185.
5        On 10 November 2017, the applicant, Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’, filed an application for a declaration of invalidity against that mark in respect of all the goods listed in paragraph 3 above. That application was based on the grounds set out in Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation.
6        By decision of 28 June 2019, EUIPO’s Cancellation Division rejected the application for a declaration of invalidity in its entirety.
7        On 28 August 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
8        By decision of 4 March 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
9        In the first place, the Board of Appeal found that the applicant had based its application for a declaration of invalidity solely on the absolute grounds referred to in Article 7(1)(b) and (c) of Regulation 2017/1001. Therefore, the arguments and evidence submitted in order to establish that the contested mark was devoid of any distinctive character because of its common and long-lasting use are irrelevant.
10      In the second place, the Board of Appeal found that the date on which the descriptiveness and lack of distinctive character of the contested mark had to be assessed was 18 October 2016, corresponding to the date on which the application for registration of the contested mark was filed (‘the relevant date’). Accordingly, the Board of Appeal took the view that the evidence submitted in order to prove use of the concept of a lobster in Russia, and subsequently in the Union of Soviet Socialist Republics (USSR) and its satellite countries, dating from the 19th century or the period between 1922 and 1991, was irrelevant because there was no additional evidence establishing the link between the perception of the relevant public during that period and its perception at the relevant date. There is no evidence that the relevant public recognised the contested mark. The perception of that public in the course of the last century, influenced by the historical, political and economic circumstances of that period, differs from its perception at the relevant date.
11      In the third place, the Board of Appeal found that, in the absence of a word element in the contested mark, the assessment had to be based on the relevant public throughout the European Union, with the result that it endorsed the Cancellation Division’s finding that the evidence produced by the applicant relating to Russia, Ukraine and Belarus did not concern any of the relevant territories. Furthermore, the question whether candies bearing the contested mark are produced in a Member State, in this case Poland, is irrelevant. All that matters, in the context of the examination carried out by the Board of Appeal in relation to the absolute grounds referred to in Article 7(1)(b) and (c) of Regulation 2017/1001, is whether those goods were placed on the market in the European Union.
12      In the fourth place, the Board of Appeal examined the ground based on the descriptive character of the contested mark.
13      In its view, there is nothing to prevent the consumer from perceiving that mark as an indicator of commercial origin since it does not depict a simple geometrical shape, it does not correspond to the appearance of the goods in question and it does not allude to their composition or taste. In the absence of any meaning, that mark cannot serve to describe a characteristic of the goods at issue.
14      The advertising material and photographs of confectionery submitted by the applicant provide no information on the knowledge and perception of the contested mark by the relevant public. The mere fact that the representation of a red lobster is used by certain producers does not automatically mean that the contested mark is descriptive and devoid of distinctive character. There is also a possibility that third parties using the representation of a red lobster infringe the intellectual property rights of the proprietor of the contested mark.
15      In the fifth place, the Board of Appeal examined the ground based on the lack of distinctive character of the contested mark. In particular, it held that, first, the relevant public will not perceive a descriptive meaning in the mark in relation to the goods at issue and, second, there was no reason to consider that that mark was devoid of distinctive character simply because it consisted of a simple representation of a red lobster.
16      In the sixth place, as regards the applicant’s statements on the possible likelihood of confusion with the proprietors of earlier national marks containing the representation of a red lobster, the Board of Appeal stated that the present case did not concern that issue.
17      In the seventh place, the Board of Appeal rejected, pursuant to Article 27(4)(b) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), the evidence produced for the first time before it, while stating that it had no bearing on the outcome of the present case.
18      Lastly, the Board of Appeal concluded that, since the contested mark was unusual and unrelated to the goods in question, it had inherent distinctiveness and was devoid of any descriptive character for all the goods at issue.
Forms of order sought
19      The applicant claims that the Court should:
–        annul the contested decision and uphold the action for cancellation of the registration of the contested mark;
–        order EUIPO to pay the costs.
20      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the modification of the applicant’s first head of claim
21      In its statement of modification of the form of order sought, the applicant not only seeks the annulment of the contested decision, that claim being already included in the application, but also asks the Court to uphold the action for cancellation of the contested mark’s registration.
22      Pursuant to Article 86(1) of the Rules of Procedure of the General Court, where a measure the annulment of which is sought is replaced or amended by another measure with the same subject matter, the applicant may, before the oral part of the procedure is closed, or before the decision of the General Court to rule without an oral part of the procedure, modify the application to take account of that new factor.
23      As an exception to the principle of unalterability of proceedings, Article 86 must be interpreted strictly (judgment of 20 September 2018, Spain v Commission, C‑114/17 P, EU:C:2018:753, paragraph 54).
24      Since the applicant does not refer to any replacement or amendment of the contested decision, the modification of its first head of claim is inadmissible.
Substance
25      In support of its action, the applicant relies on six pleas in law, alleging:
–        first, misapplication of Article 94(1) of Regulation 2017/1001 and infringement of the right to be heard on the ground that EUIPO did not base its decision on the facts relied on and the evidence which it produced;
–        second, misapplication of Article 95(2) of Regulation 2017/1001 and infringement of the right to be heard on the ground that EUIPO did not take into account the evidence submitted for the first time before it;
–        third, misapplication of Article 7(2) of Regulation 2017/1001;
–        fourth, misapplication of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) thereof, and infringement of the right to be heard and of Article 94(1), Article 95(2) and Article 7(2) of that regulation, regarding the assessment of descriptive character;
–        fifth, misapplication of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) of that regulation, and infringement of the right to be heard and of Article 94(1), Article 95(2) and Article 7(2) of that regulation, regarding the assessment of distinctive character;
–        sixth, misapplication of Article 59(3) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation, on the ground that EUIPO did not analyse the list of goods covered by the contested mark.
Preliminary observations
26      It must be stated at the outset that, in view of the date on which the application for registration at issue was filed, namely 18 October 2016, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation (EC) No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21) (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
27      Furthermore, since, 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 case is governed by the procedural provisions of Regulation 2017/1001.
28      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 7(1)(b), (c) and (d) and (2) of Regulation 2017/1001 and to Article 59(1)(a) and (3) of that regulation must be understood as referring to, respectively, Article 7(1)(b), (c) and (d) and (2) of Regulation No 207/2009 and Article 52(1)(a) and (3) of that regulation, which are identical in content.
The first plea in law, alleging misapplication of Article 94(1) of Regulation 2017/1001 and infringement of the right to be heard
29      According to the applicant, the Board of Appeal infringed its right to be heard on the ground that it did not take account of some of the evidence that the applicant had submitted or it had misinterpreted it. Furthermore, the Board of Appeal based its decision on facts not supported by the evidence.
30      In the first place, the applicant claims that the Board of Appeal was wrong not to take into account evidence predating the date on which the contested mark was filed.
31      First, the assertion in paragraph 19 of the contested decision that there was no evidence of the relevant public’s recognition of the contested mark, even in Lithuania or in post-communist countries which are current Member States of the European Union, is incorrect and is based on a lack of analysis, or an incomplete, or even an isolated analysis, of the evidence and arguments submitted by the applicant even though they support one another and must be assessed in their entirety.
32      Second, the Board of Appeal wrongly held, in paragraph 18 of the contested decision, that the evidence in Annexes A.4 to A.14 to the application was, in the absence of additional evidence proving the link between the perception of the relevant public during the past period and its perception at the relevant date, irrelevant for the assessment of the present case. That evidence was supplemented by other evidence which concerned the use of the image of a red lobster after the dissolution of the USSR, namely by the documents in Annexes A.15 to A.23 and A.27 to A.29 to the application. The Board of Appeal did not analyse its arguments in so far as concerns the value of that evidence, the relationship between the different items of evidence and the impact of the facts set out therein.
33      Third, since the USSR included the territories of Lithuania, Latvia and Estonia, the Board of Appeal was wrong to approve, in paragraph 21 of the contested decision, the Cancellation Division’s finding that the evidence relating to Russia, Ukraine and Belarus, in Annexes A.4 to A.14 and A.18 to the application, did not concern any relevant territory. The facts relating to the Soviet era, established for the territory of the USSR, should be treated as applying throughout that territory, including the three Baltic States. In the present case, the past use, in the USSR, of the image of a red lobster is significant since it continued until the date on which the application for the contested mark was filed in the Baltic States. Thus, the Board of Appeal incorrectly disregarded the evidence proving the presence of the image of a red lobster on the market in the relevant territories at the filing date of the contested mark in Annexes A.15 to A.23 and A.27 to A.29 to the application.
34      In the second place, first, the Board of Appeal did not analyse all the evidence relating to the use of that image by the relevant public, even in Lithuania or in post-communist countries which are current Member States of the European Union, included in Annexes A.15 to A.23 and A.27 to A.29 to the application.
35      Second, the fact that the Board of Appeal commented on the irrelevance of production for the purpose of export outside the European Union, even though there was no evidence submitted in that regard, constitutes a separate infringement of Article 94(1) of Regulation 2017/1001.
36      In the third place, the applicant submits that the Board of Appeal did not carefully examine the documents in Annexes A.27 to A.29 to the application, submitted for the first time before it. First, although it was drawn up after the date on which the contested mark was filed, the survey in Annex A.27 to the application provides evidence relating to the perception of the image of a red lobster at that date. Second, even if company A, whose statement on the sale of candies appears in Annex A.28 to the application, is established in Kazakhstan, its goods are sold in many Member States, so that that statement also provides information relating to the facts existing on the filing date of the application for registration of the contested mark and in the relevant territory. Third, the Board of Appeal’s findings that the elements in Annex A.29 to the application were personal views on the national registrations and were of no relevance, since the EU trade mark regime is an autonomous system, are contradictory. EUIPO required proof of the consumer’s perception on the filing date of the contested mark and in the relevant territory. Poland is the relevant territory and the facts set out in that evidence relate to the filing date of the application for the contested mark. That evidence must therefore be taken into account.
37      EUIPO and the intervener dispute the applicant’s arguments.
38      In that connection, under the second sentence of Article 94(1) of Regulation 2017/1001, EUIPO decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision enshrines the general principle of protection of the rights of the defence in the law of trade marks. That principle includes the right to be heard, which is set out in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union. In accordance with that principle, any person who has been adversely affected by a decision of a public authority must have been afforded the opportunity effectively to make known his or her views before the adoption of that decision (see, to that effect, judgments of 23 October 1974, Transocean Marine Paint Association v Commission, 17/74, EU:C:1974:106, paragraph 15, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 21; see also judgment of 28 May 2020, Lozano Arana and Others v EUIPO – Coltejer (LIBERTADOR), T‑564/19, not published, EU:T:2020:228, paragraph 26 and the case-law cited).
39      That right extends to all the factual and legal material which forms the basis of the decision, but not to the final position which the authority intends to adopt. That right does not in addition require that, before taking a final position on the assessment of the evidence submitted by a party, the Board of Appeal of EUIPO must offer that party a further opportunity to comment on that evidence (see judgment of 10 March 2021, PUMA v EUIPO – CAMäleon (PUMA-System), T‑71/20, not published, EU:T:2021:121, paragraph 34).
40      Moreover, in order for the undertakings’ submission of views to be effective it is necessary only that they have been submitted in good time so that EUIPO may take cognisance of them and assess, with all the requisite attention, their relevance for the content of the measure being adopted (see judgment of 1 June 2016, Grupo Bimbo v EUIPO (shape of a bar with four circles), T‑240/15, not published, EU:T:2016:327, paragraph 62 and the case-law cited).
41      In the present case, it is apparent from the applicant’s arguments set out in paragraphs 29 to 33, 35 and 36 above that it disputes, in actual fact, the merits of the Board of Appeal’s assessment of the evidence and arguments which it put forward, and not the fact that it was not given the opportunity to submit its point of view to EUIPO in good time so that EUIPO could take cognisance of it and, with all the requisite attention, assess the relevance of that evidence to the content of the contested decision, or even a failure to take that evidence and those arguments into account. Moreover, the claim in paragraph 34 above that the Board of Appeal failed to analyse part of the evidence in Annexes A.15 to A.23 and A.27 to A.29 to the application is unsubstantiated. The burden of proving the unlawfulness of the contested decision lies with the applicant. In particular, it is not for the Court to seek and identify in the annexes, or even in EUIPO’s administrative file, the pleas and arguments on which it may consider the action to be based (see, to that effect, judgments of 5 October 2017, Versace 19.69 Abbigliamento Sportivo v EUIPO – Gianni Versace (VERSACE 19.69 ABBIGLIAMENTO SPORTIVO), T‑336/16, not published, EU:T:2017:691, paragraph 34, and of 11 July 2019, Hauzenberger v EUIPO (TurboPerformance), T‑349/18, not published, EU:T:2019:495, paragraph 11). Consequently, the applicant has not succeeded in showing that the Board of Appeal failed to put it in a position in which it could effectively make known its views on matters of fact or of law on which the contested decision is based.
42      In any event, it is apparent from the contested decision that the applicant was able to submit its point of view in good time so that EUIPO could take cognisance of it and, with all the requisite attention, assess its relevance to the content of the contested decision, and indeed that the Board of Appeal took into account all the evidence submitted by the applicant.
43      Thus, in the first place, it is apparent, inter alia, from paragraphs 17 to 19 of the contested decision that the Board of Appeal considered, in essence, that the evidence submitted in order to demonstrate the asserted use of the concept of a lobster in Russia, and subsequently in the USSR and its satellite countries, by various manufacturers, including the applicant, for candies, included in Annexes A.4 to A.14 to the application and relating to the 19th century or the Soviet era, had no probative value as a result of the lack of additional evidence establishing the link between the perception of the relevant public during those periods and its perception at the relevant date. In so doing, the Board of Appeal also inevitably carried out a global and joint assessment of the documents in those annexes and those submitted in Annexes A.15 to A.23 to the application, which postdate the filing date of the contested mark.
44      In the second place, the Board of Appeal found, in paragraph 21 of the contested decision, that the evidence which did not relate to any of the relevant territories, namely that in Annexes A.4 to A.15 and A.18 to the application, had no probative value in the present case.
45      In the third place, in paragraph 32 of the contested decision, the Board of Appeal found, inter alia, that the advertising material and the photographs of confectionery in Annexes A.15 to A.18, A.22 and A.23 to the application provided no information on knowledge and perception of the contested mark by the relevant public, with the result that they had only a low probative value. It also found that the mere fact that the representation of a red lobster is used by certain producers did not automatically mean that the contested mark is descriptive and devoid of distinctive character. Such an assessment would not have been possible if those documents had not been taken into account as a whole.
46      In the fourth place, in paragraphs 40 to 42 of the contested decision, the Board of Appeal examined in particular the impact of the national registrations in Annexes A.19 to A.21 to the application on the distinctive character or descriptiveness of the contested mark.
47      Lastly, in paragraphs 43 to 45 of the contested decision, the Board of Appeal set out the reasons why it considered that the documents in Annexes A.27 to A.29 to the application were inadmissible and, in any event, had no bearing on its analysis.
48      Moreover, the applicant stated before EUIPO that, although the origin of some of the candies with the image of a red lobster, photographs of which are included in Annex A.15 to the application, was Poland, they were nevertheless sold outside the European Union.
49      The first plea in law must therefore be rejected.
The second plea in law, alleging misapplication of Article 95(2) of Regulation 2017/1001 and infringement of the right to be heard
50      By the second plea in law, the applicant submits, in essence, that the Board of Appeal erred in disregarding the evidence which had been submitted for the first time before it, namely the documents in Annexes A.27 to A.29 to the application. Referring in particular to paragraphs 42 to 44, 49, 57 and 58 of the judgment of 13 March 2007, OHIM v Kaul (C‑29/05 P, EU:C:2007:162), it submits that the Board of Appeal should have taken account of new evidence when examining the appeal, in particular since that evidence was submitted at the beginning of the appeal, allowing the other party to the proceedings to file observations in that regard. In its view, that is confirmed by Article 27(4)(b) of Delegated Regulation 2018/625. In the present case, that evidence, first, is relevant to the outcome of the appeal, in that it supplements the arguments which it raised and the evidence which it submitted, in due time, before the Cancellation Division, and, second, challenges the latter’s findings. Moreover, it follows from the judgment of 28 September 2016, European Food v EUIPO – Société des produits Nestlé (FITNESS) (T‑476/15, EU:T:2016:568, paragraph 66), that, in invalidity proceedings, the Board of Appeal errs in law in holding that the evidence produced for the first time before it is not to be taken into consideration because of its late submission. Consequently, by failing to take that evidence into account, the Board of Appeal infringed Article 95(2) of Regulation 2017/1001.
51      EUIPO and the intervener dispute the applicant’s arguments.
52      Article 95(2) of Regulation 2017/1001 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
53      It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation 2017/1001 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see judgment of 5 February 2020, Globalia Corporación Empresarial v EUIPO – Touring Club Italiano (TC Touring Club), T‑44/19, not published, EU:T:2020:31, paragraph 37 and the case-law cited).
54      In stating that EUIPO ‘may’ decide to disregard such evidence, Article 95(2) of Regulation 2017/1001 grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see judgment of 5 February 2020, TC Touring Club, T‑44/19, not published, EU:T:2020:31, paragraph 38 and the case-law cited).
55      The possibility for the Board of Appeal to take into account evidence submitted for the first time before it, pursuant to Article 95(2) of Regulation 2017/1001, is governed by Delegated Regulation 2018/625.
56      Article 27(4) of Delegated Regulation 2018/625 provides:
‘In accordance with Article 95(2) of Regulation … 2017/1001, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:
(a)      are, on the face of it, likely to be relevant for the outcome of the case; and
(b)      they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’
57      It is for the party submitting evidence for the first time before the Board of Appeal to explain before it to what extent that submission satisfies the conditions laid down in Article 27(4) of Delegated Regulation 2018/625.
58      That conclusion is supported by the case-law relating to the legislation preceding the adoption of Delegated Regulation 2018/625.
59      The Court of Justice has pointed out that it was always possible to submit evidence in time for the first time before the Board of Appeal in so far as that evidence was intended to challenge the reasons given by the Cancellation Division in the contested decision. That evidence is, therefore, either evidence supplementary to that submitted in the proceedings before the Cancellation Division or evidence on a new matter which could not be raised during those proceedings. However, it is for the party presenting that evidence to justify why that evidence is being submitted at that stage of the proceedings and demonstrate that submission during the proceedings before the Cancellation Division was impossible (see judgment of 10 October 2019, Société des Produits Nestlé v EUIPO – European Food (FITNESS), T‑536/18, not published, EU:T:2019:737, paragraph 43; see, to that effect, judgment of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraphs 42 and 43).
60      In the present case, it must be stated, as the Board of Appeal did in paragraph 44 of the contested decision, that the applicant has not in any way substantiated before it the reasons why the evidence in Annexes A.27 to A.29 to the application was submitted for the first time before it. In addition, the applicant has not demonstrated why it was impossible to make such a submission before the Cancellation Division. Moreover, it does not claim to have put forward valid reasons before the Board of Appeal in that regard.
61      Therefore, without it being necessary to examine the considerations set out in paragraph 45 of the contested decision, relating to the prima facie irrelevance of that evidence, the Board of Appeal cannot be criticised for having disregarded it in the remainder of its analysis.
62      Accordingly, the second plea in law must be rejected.
The third plea in law, alleging infringement of Article 7(2) of Regulation No 207/2009
63      By the third plea in law, the applicant claims, in essence, that the Board of Appeal, by requesting evidence of the lack of distinctive character or existence of the descriptive character of the contested mark throughout the European Union, infringed Article 7(2) of Regulation No 207/2009 and breached the principle of the unitary character of EU trade marks. The Board of Appeal erred in finding, in paragraph 27 of the contested decision, that, in the case of non-word marks, the relevant territory comprises the entire territory of the European Union. The applicant claims that, for the purposes of applying a ground set out in Article 7(1) of Regulation No 207/2009, it is sufficient that that ground exists in at least one Member State. In the judgments and decisions cited in paragraph 20 of the contested decision, the concept of the entire territory of the European Union is applied for the purposes of assessing acquired distinctiveness for the purposes of Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001), but not in order to assess the lack of distinctive character or the existence of descriptive character. Consequently, the evidence proving the descriptive and non-distinctive use of the image of a red lobster for the goods in Class 30 in Lithuania, Latvia or Poland is sufficient to render the contested mark invalid.
64      EUIPO and the intervener dispute the applicant’s arguments.
65      It must be held that the present plea is based on a misreading of the contested decision.
66      It is apparent from paragraphs 20 and 27 of the contested decision that the Board of Appeal found that, in the case of non-word marks, such as that in the present case, the relevant territory included the entire territory of the European Union. In so doing, the Board of Appeal did not in any way require the applicant to prove that, in all the Member States, the contested mark was devoid of distinctive character or was descriptive. Rather, it took the view that the public, in the light of which it was necessary to examine the grounds relied on by the applicant, was likely to be located, due to the purely figurative nature of the contested mark, throughout the European Union. Thus, in its assessment, the Board of Appeal merely verified whether those grounds applied in at least one Member State. That is clear from paragraph 21 of the contested decision, according to which ‘the Cancellation Division correctly concluded that part of the evidence submitted … does not cover any of the relevant territories …’.
67      That finding is consistent with the case-law according to which Article 7(2) of Regulation No 207/2009 must be interpreted as meaning that a mark must be refused registration if it is covered by one of the grounds for refusal laid down in Article 7(1) of that regulation in part of the European Union. Such a part may comprise a single Member State (see judgment of 20 September 2011, Couture Tech v OHIM (Representation of the Soviet coat of arms), T‑232/10, EU:T:2011:498, paragraph 22 and the case-law cited).
68      Accordingly, the third plea in law must be rejected.
The fourth plea in law, alleging misapplication of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof, and infringement of the right to be heard and of Article 94(1) and Article 95(2) of Regulation 2017/1001, and Article 7(2) of Regulation No 207/2009
69      In the first place, the applicant claims, first, that the reasoning in the contested decision is mainly based on the shape of the goods, although it did not rely on that ground. Consequently, the Board of Appeal’s findings in paragraphs 29 and 30 of the contested decision that, in essence, the contested mark does not show a simple geometric shape nor does it take the shape of the goods themselves are irrelevant. Furthermore, the shape or appearance of the product constitutes another absolute ground for refusal, referred to in Article 7(1)(e) of Regulation No 207/2009 (now Article 7(1)(e) of Regulation 2017/1001), which does not apply in the present case.
70      Second, the Board of Appeal relied, in paragraph 31 of the contested decision, on the differences in taste between, on the one hand, seafood, and, on the other hand, candies, confectionery, bread, pastry, coffee and chocolate beverages. Taste was not the ground on which the application for a declaration of invalidity was based. Furthermore, the finding in the same paragraph that lobster is a type of seafood which does not correspond to the composition or taste of the goods at issue was based on the survey produced by the intervener. According to the intervener, the representation of the mark is recognised by 94% of respondents in Lithuania as being fish and seafood products. However, in the applicant’s view, that survey was carried out incorrectly, in that the questions set out therein are leading questions.
71      In the second place, according to the applicant, it is apparent from Article 7(1)(c) of Regulation No 207/2009 that it is not necessary for the mark to indicate or describe the goods which it designates, or to resemble them, for it to be descriptive, but that it is sufficient that it has a sufficiently direct and concrete relationship with the goods concerned. Such a relationship is established taking into account the presence of the mark in the market in a way which serves to indicate the characteristics of the goods rather than to identify their commercial origin. As is apparent from the first and second pleas, the Board of Appeal failed to analyse, or misinterpreted, the evidence which it submitted.
72      In the applicant’s opinion, as a result of the failure to have regard to the evidence which it submitted showing that the consumer accepted the image of a red lobster as an indication of a type of caramel, the Board of Appeal, in essence, found that the contested mark did not convey any clear message which the relevant public could understand as being a description of the goods at issue.
73      In particular, the mark Rakovye Shejki, which is understood by Russian-speaking consumers as ‘red lobsters necks’, has been used continuously in various compositions since the 19th century, as is apparent from Annex A.5 to the application. The use of the word element Rakovye Shejki combined with the image of a red lobster on wrapping paper by various confectionery manufacturers in the USSR, including the applicant, during the period 1925-1989, was demonstrated by the applicant by means of the evidence in Annexes A.6 to A.14 to the application. The territories of Russia, Belarus and Ukraine have a link with the relevant territories since that evidence refers to the time of the USSR, and Lithuania, Latvia, Bulgaria and Poland had close links with those countries because of a common economy. The goods were sold throughout the USSR and those related countries.
74      The applicant claims that it submitted sufficient evidence to demonstrate use of the image of a red lobster in the relevant territory at the relevant date.
75      First of all, it submitted (i) extracts, in Annexes A.15 to A.18 to the application, from websites showing the use of the image of a red lobster in various styles for confectionery goods in Poland, Lithuania, Latvia and Ukraine and, (ii) lists of Polish trade mark registrations, set out in Annexes A.19 and A.21 to the application, which include the image of a red lobster for the goods in Class 30 and, accordingly, no single applicant for registration may claim to have exclusive rights in respect of such an image for those goods. That claim is supported by the document in Annex A.29 to the application. That image has also been used since 1994 for goods produced by Polish companies B – whose labels are registered as trade marks (Annexes A.15, A.19 and A.21) – and C. Consequently, the statement in paragraph 32 of the contested decision that it is also possible for third parties using the representation of a red lobster to infringe the intellectual property rights of the proprietor of the mark is illogical since the contested mark postdates each of the registrations mentioned.
76      Next, the applicant submitted evidence relating to the use of the image of a red lobster by Lithuanian company D, its registration in 1998 and its new application for registration in 2018 (Annexes A.20, A.22 and A.23). The owner of the main retail chain in Lithuania, company E, confirmed that from 1 August 2013 to 1 July 2018 it sold more than 255 435 kilograms of candies wrapped in paper with the image of a red lobster.
77      Finally, the Board of Appeal was wrong not to take account of the statement of company A of Kazakhstan, in Annex A.28 to the application, which uses the image of a red lobster for the caramels that it sells in various Member States.
78      Consequently, the Board of Appeal’s findings that the marketing presentations and photographs of confectionery, containing the representation of a red lobster, appearing in Annexes A.15 to A.18, A.22 and A.23 to the application, do not provide any information on the knowledge and perception of the contested mark by the relevant public, with the result that they have little probative value for the present case, are contradicted by the evidence which it has submitted, which establishes that the use of that representation is not an isolated fact. The descriptive character of that mark is also confirmed by the results of the survey in Annex A.27 to the application.
79      In the third place, the Board of Appeal misinterpreted its arguments by finding, first, that it had maintained that the contested mark was devoid of any distinctive character on account of its common and long-lasting use and, second, that it had not relied on the absolute ground for refusal laid down in Article 7(1)(d) of Regulation No 207/2009 in the application for a declaration of invalidity. The applicant has referred to the long-lasting use of the image of a red lobster by the different producers as serving to designate the kind of goods, which amounts to the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009.
80      EUIPO and the intervener dispute the applicant’s arguments.
81      The survey in Annex A.27 to the application, the statement of company A in Annex A.28 to the application and the explanations provided in respect of Annexes A.27 to A.29 to the application must be rejected from the outset since the applicant has not demonstrated, as has been noted in paragraphs 60 and 61 above, that the Board of Appeal erred in law in finding that that evidence should not be taken into consideration because it was submitted out of time.
82      Similarly, as is apparent from paragraphs 38 to 48 above, the Board of Appeal did not infringe the applicant’s right to be heard, with the result that the arguments relating to that alleged infringement raised in the context of the fourth plea, and which add nothing to those set out in the first plea in law, must be rejected.
83      According to Article 7(1)(c) of Regulation No 207/2009, 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, are not to be registered. Article 7(2) of Regulation No 207/2009 states that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
84      Signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquires the goods or services designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 15 March 2018, SSP Europe v EUIPO (SECURE DATA SPACE), T‑205/17, not published, EU:T:2018:150, paragraph 12 and the case-law cited).
85      That provision covers signs and indications which may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (see judgment of 24 April 2018, Senetic v EUIPO – HP Hewlett Packard Group (hp), T‑207/17, not published, EU:T:2018:215, paragraph 21 and the case-law cited).
86      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (see judgment of 15 March 2018, SECURE DATA SPACE, T‑205/17, not published, EU:T:2018:150, paragraph 11 and the case‑law cited).
87      It follows that, in order for a sign to be caught by the prohibition set out in the abovementioned provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services at issue or one of their characteristics (see judgment of 24 February 2021, Liga Nacional de Fútbol Profesional v EUIPO (El Clasico), T‑809/19, not published, EU:T:2021:100, paragraph 32 and the case-law cited).
88      Accordingly, 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 persons have of it, on the other (see judgment of 24 February 2021, El Clasico, T‑809/19, not published, EU:C:2021:100, paragraph 33 and the case-law cited).
89      The present plea must be examined in the light of those considerations.
90      In the first place, the considerations set out by the Board of Appeal in paragraphs 29 to 31 of the contested decision, which concern, inter alia, the respective shape, composition and taste of the seafood and the goods at issue, have, in essence, no objective other than to indicate that, having regard to the intrinsic characteristics of the contested mark, there was as a matter of course nothing to prevent it from being perceived by the relevant public as an indicator of the commercial origin of the goods at issue. The Board of Appeal’s dismissal of the appeal is based essentially on the other paragraphs in which the arguments raised by the applicant are rejected.
91      It is also apparent from paragraphs 3, 9 and 38 of the contested decision that the applicant submitted, first, before the Cancellation Division, an objection raised by the examiner against the registration of the contested mark that the graphic representation of a red lobster would be perceived as the shape of the goods at issue, an objection which the examiner subsequently withdrew, and, second, before the Board of Appeal, that that mark was not very stylised. Paragraphs 4 and 10 of the contested decision show, for their part, that the intervener submitted, inter alia, before the two instances of EUIPO that the shape of a red lobster was unusual and unrelated to the goods themselves. Therefore, the Board of Appeal cannot be criticised for having responded to those arguments in the contested decision. In any event, in invalidity proceedings, EUIPO cannot be prevented, in particular in view of the elements put forward by the party challenging the validity of the mark at issue, from relying, not only on those arguments and any evidence produced by that party in its application for a declaration of invalidity, but also on well-known facts observed by EUIPO in the context of the invalidity proceedings (see judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 24 and the case-law cited).
92      Moreover, the conclusions in paragraphs 29 to 31 of the contested decision are not vitiated by any error. First of all, as is stated in paragraph 25 of the contested decision, the goods in Class 30 in respect of which the contested mark was registered consist of various types of candies and confectionery, bread, pastries, coffee and chocolate beverages. As stated in paragraph 26 of the contested decision, those goods are different types of foodstuffs intended for everyday consumption or general use The applicant has not contested the finding in paragraph 26 of the contested decision that the relevant public is composed of average consumers who are deemed to be reasonably well informed and reasonably observant. That public, in the light of which it is necessary to examine the grounds reliedon by the applicant, including that based on the descriptive character of the contested mark, is likely to be found, due to the purely figurative character of that mark, throughout the European Union (see paragraph 66 above). The contested mark, which consists of the image of a lobster facing to the left, in dark red, light red, white and black, will be perceived by the relevant public as a stylised and realistic representation of that crustacean. The Board of Appeal was correct in finding that lobster was a type of seafood which did not correspond to the composition or taste of the goods at issue and there was as a matter of course nothing to prevent consumers from perceiving its image as an indication of the origin of those goods. Moreover, the applicant’s argument based on the incorrect and inappropriate way in which the survey submitted by the intervener, mentioned in paragraph 31 of the contested decision, was carried out must be rejected as irrelevant, since it concerns a ground of that decision which was included for the sake of completeness (see, to that effect, judgment of 30 April 2013, Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, not published, EU:T:2013:225, paragraph 28). The results of that survey merely supported the finding at the beginning of that paragraph of the contested decision that ‘the figurative element of the contested mark does not convey any clear message that the relevant public could understand as a description of the goods at issue [; a] lobster is a type of seafood which is completely different from the composition or taste of the contested goods’.
93      In the second place, as regards the applicant’s claim that, in essence, the contested mark is descriptive, since the relevant public perceived it on its filing date as an indication of a type of caramel or candy, it should be recalled that, according to case‑law, for the adjudicating bodies of EUIPO, the date on which the application for registration of the mark was filed is the relevant date for the assessment of whether the absolute grounds referred to in Article 7(1) of Regulation No 207/2009 preclude the registration of a mark or must result in a previously registered mark being declared invalid (see judgment 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).
94      However, that situation does not preclude the adjudicating bodies of EUIPO from taking into consideration, where appropriate, evidence which, although subsequent to the date of filing the application, enables conclusions to be drawn with regard to the situation as it was on that date (see judgment of 21 November 2013, Heede v OHIM (Matrix-Energetics), T‑313/11, not published, EU:T:2013:603, paragraph 49 and the case-law cited).
95      The same is true, by analogy, of the documents predating the application for registration. In that regard, it follows from the case-law relating to proof of the reputation of an earlier mark that, whereas that reputation must be established on the filing date of the mark applied for, it cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (see judgment of 9 September 2020, Kludi v EUIPO – Adlon Brand (ADLON), T‑144/19, not published, EU:T:2020:404, paragraph 126 and the case-law cited). The descriptive character on which the applicant relies may also vary over time.
96      In the first place_the Board of Appeal was correct, in paragraphs 18, 19 and 21 of the contested decision, to consider that there were two reasons why the evidence in Annexes A.4 to A.14 to the application lacked any probative value.
97      First, they relate to the time of the USSR, which was dissolved in 1991, that is to say, 25 years before the relevant date. Society in the three Baltic States, which have since become independent States, have a market economy and are Member States of the European Union, has changed considerably since then. None of the other items of evidence has shown that there is a link between the perception of the contested mark by the relevant public during the past period and its perception at the relevant date. The same considerations apply mutatis mutandis to Poland, which was in the past a member of the Council for Mutual Economic Assistance (Comecon).
98      Second, the evidence in Annexes A.4 to A.14 to the application does not concern the relevant territory, but relates to Russia, Ukraine and Belarus. There is nothing to show that the goods in question were actually sold and known under that mark during the imperial or Soviet era in the three Baltic States or Poland. While the applicant claims, in essence, that the goods produced in an area of the USSR were automatically marketed throughout the entire USSR, or even within Comecon, it does not adduce any evidence to substantiate that argument. Although it is clear from the article extracts produced in Annexes A.4 to A.6 to the application, the documents relating to various confectionery in Annexes A.7 to A.13 to the application and the extract from a document of 31 May 1966 concerning the approval of the price scale for confectionery, included in Annex A.14 to the application, that the candies named ‘Rakovye Shejki’ were manufactured and sold in Russia, Ukraine and Belarus, all former republics of the USSR, which also included the three Baltic States, it does not follow, by contrast, that they were also sold in those Baltic States or Poland. Nor does it follow either that, on the date of the application for registration of the contested mark, the average consumer of one of those three Baltic States or Poland perceived the image of a red lobster immediately, without further thought, as a description of a type of candy or one of its characteristics. Having regard to the fact that the applicant has not established a link between those documents and the perception of the relevant public on 18 October 2016, they do not enable conclusions to be drawn with regard to the situation as it was on that date in the relevant territory.
99      In the second place, the Board of Appeal was also correct in finding, in paragraph 21 of the contested decision, that the document in Annex A.18 to the application and certain documents in Annex A.15 to the application were also not capable of supporting the applicant’s claims, since they did not relate to the relevant territory. First_the undated photograph in Annex A.18 to the application depicting candies wrapped in paper bearing, inter alia, the image of a red lobster concerns, according to the applicant, its own goods, as sold in Ukraine. In addition, it sets out therein its own opinion on the ‘lobster tails’ candies. Second, the printouts of the www.21food.com, www.polartcenter.com and www.babciafoods.com websites, included in Annex A.15 to the application, do not illustrate the sale of candies the packaging of which bears the image of a lobster in a Member State of the European Union, but in China and the United States. Moreover, the applicant stated before EUIPO that, while the origin of some of the candies bearing the image of a red lobster, the photographs of which are included in Annex A.15 to the application, was Poland, they were nonetheless sold outside the European Union (see paragraph 48 above).
100    In the third place, the other documents in Annexes A.15 and A.16 to the application consist of extracts from websites and an advertising newspaper which seek to illustrate the use of the image of a lobster in Poland and Lithuania for caramels and candies. It follows that various candies, in different wrappers bearing different representations of a lobster, whether or not accompanied by a word element, were sold on the Polish and Lithuanian markets in July 2017. However, those documents do not provide any information on the knowledge and perception of the contested mark by the relevant public or even any evidence from which it may be concluded that the relevant public considered, at the relevant date, that the image of a lobster designated a specific type of candy, when faced, at the time of its purchases, with a very wide variety of those goods, marketed in very different wrappers, which is, moreover, apparent from those annexes. For that reason, those documents are not capable of establishing a link between the perception of the relevant public during the past period (Annexes A.4 to A.14 to the application) and the period concerned.
101    The same is true of company E’s statement, according to which more than 255 435 kilograms of Veželiai candies were sold in its shops in Lithuania between 1 August 2013 and 1 July 2018, and of the extract from the advertising journal showing that a lobster appears on the wrapping of those candies (Annexes A.22 and A.23 to the application). Those annexes also do not provide any information on the knowledge and perception of the contested mark by the relevant public, as the Board of Appeal correctly found in paragraph 32 of the contested decision, nor do they show that the relevant public associated the contested mark with a specific type of candy.
102    The applicant has also not established a link between the undated picture of the wrapping paper produced in Annex A.17 to the application and the perception of the consumer of the contested mark on the relevant date.
103    In the fourth place, the applicant’s line of argument is contradictory. Whereas it maintains that it did not base its application for a declaration of invalidity on a specific shape, composition or taste, it claims, by contrast, that consumers recognised, at the date of the application for registration of the contested mark, the image of a lobster as an indication of a specific type of candy (hard). In any event, it must be found, as observed by EUIPO, that the evidence provided by the applicant demonstrates the existence of several types of caramels or candies the packaging of which contains the image of a lobster. They differ in their composition, garnishingand colour. That fact, having regard in particular to the existence on the markets in question of a wide range of caramels or candies on which that image does not appear, precludes the possibility that consumers will clearly consider, at the date of application for registration of the contested mark, that image to be an indication of a specific type of caramel or candy. Moreover, the applicant has not established which type of caramel or candy consumers were supposed to associate with that mark.
104    In the fifth place, as regards the national lists of registrations in Annexes A.19 to A.21 to the application, the Board of Appeal was correct in pointing out, in paragraph 40 of the contested decision, that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it since it applies independently of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO and, if appropriate, the courts of the European Union are not bound by a decision given in a Member State that the sign in question is or is not registrable as a national mark. That is so even if such a decision was adopted under harmonised national legislation (see, to that effect, judgments of 16 June 2015, Gako Konietzko v OHIM (Shape of a cylindrical container in red and white), T‑654/13, not published, EU:T:2015:381, paragraph 46, and of 9 March 2017, Marsh v EUIPO (ClaimsExcellence), T‑308/16, not published, EU:T:2017:154, paragraph 50). Furthermore, the applicant has not shown that the registration of a national mark similar to the contested mark for the goods at issue could have consequences on the descriptiveness of that mark. It does not explain to what extent the relevant public might have considered, at the relevant date, on account of, first, those registrations and, second, the past and contemporaneous use of the image of a lobster, that the image in question designated a specific type of candy.
105    In the sixth place, the applicant’s claim that the Board of Appeal failed to carry out a globalexamination of the evidence which it submitted cannot succeed. The Board of Appeal carried out precisely such a global examination. It found, in paragraphs 18, 19 and 21 of the contested decision, that none of the more recent evidence concerning the relevant territories, set out in Annexes A.15 to A.23 to the application, was capable of establishing a link between the historical evidence which, moreover, related to Russia, Ukraine and Belarus, and the perception of the relevant public on the relevant date, which it substantiated in the subsequent paragraphs of the contested decision. Furthermore, the applicant, which was required to establish clearly and intelligibly the relationship between the various items of evidence, has not shown how the assessment which it expected the Board of Appeal to carry out differs practically from that which the Board of Appeal actually carried out.
106    In the light of the foregoing, the applicant has not shown that the contested mark enabled the relevant public at the relevant date to establish immediately and without further reflection a specific and direct relationship between that mark and the goods concerned.
107    Therefore, the fourth plea in law must be rejected.
The fifth plea in law, alleging misapplication of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) of that regulation, and infringement of the right to be heard and of Article 94(1) and Article 95(2) of Regulation 2017/1001, and of Article 7(2) thereof
108    In the first place, the applicant submits that, according to the EUIPO Guidelines for examination of the distinctiveness of purely figurative marks, it is possible that, even if the figurative element does not represent the goods and services at issue, it may retain a direct link with the characteristics of those goods and services, with the result that, except where the mark is sufficiently stylised, it will be regarded as devoid of distinctive character. Consequently, the fact that the contested mark consists of the image of a red lobster, whereas the goods that it designates are different confectionery products, is not sufficient to rule out the non-distinctive character of that mark, since it is not particularly stylised.
109    In the second place, the applicant submits that, where the mark is descriptive, it is also devoid of any distinctive character. In its view, even if the image of a red lobster does not represent any of the goods in Class 30, it does not have distinctive character for any of the goods at issue because of its long-lasting use by different undertakings in a descriptive manner.
110    In the third place, the applicant submits that, by referring to only part of the evidence, namely the registrations in Poland and Lithuania referred to in Annexes A.19 to A.21 to the application, the Board of Appeal misinterpreted its arguments. The existence of several registered marks including the representation of a red lobster does not prove, having regard to the autonomous system of EU trade marks, that that image, considered separately, is distinctive. Consequently, the fact that several registrations contain, inter alia, the image of a red lobster and that different producers used wrapping paper including such an image for a century prior to and at the relevant date confirms that the contested mark is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
111    EUIPO and the intervener dispute the applicant’s arguments.
112    In so far as the applicant seeks, by the arguments set out in paragraph 110 above to demonstrate, inter alia, an infringement of the right to be heard, they must be rejected from the outset. It is apparent from paragraphs 38 to 48 above that the Board of Appeal did not infringe that right, since the arguments in question raised in the context of the fifth plea in law add nothing to those set out in the first plea.
113    According to Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.
114    The marks referred to in that provision are those which are regarded as incapable of performing the essential function of a trade mark, namely, that of identifying the commercial origin of the goods at issue, thus enabling the consumer who acquired them to make the same choice, when making a subsequent acquisition, if the experience has proved positive, or to make another choice, if it has proved negative (judgments of 26 September 2017, Waldhausen v EUIPO (Representation of the silhouette of a horse’s head), T‑717/16, not published, EU:T:2017:667, paragraph 17 and the case-law cited).
115    Pursuant to the case-law, the distinctive character of a mark must be assessed, first, by reference to the goods in respect of which registration of the mark is sought and, second, by reference to the perception which the relevant public, composed of the average consumer of those goods, has of those goods (see judgment of 26 September 2017, Representation of the silhouette of a horse’s head, T‑717/16, not published, EU:T:2017:667, paragraph 18 and the case‑law cited).
116    A minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 inapplicable (see judgment of 26 September 2017, Representation of the silhouette of a horse's head, T‑717/16, not published, EU:T:2017:667, paragraph 19 and the case‑law cited).
117    The finding that a mark has distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark would enable the relevant public to identify the origin of the goods which it covers and to distinguish them from those of other undertakings (see judgment of 4 April 2019, Stada Arzneimittel v EUIPO (Representation of two facing arches), T‑804/17, not published, EU:T:2019:218, paragraph 19 and the case-law cited).
118    It is in the light of those considerations that it is necessary to examine whether the applicant has demonstrated that the Board of Appeal’s finding that the contested mark is not devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 is vitiated by error.
119    In the first place, as regards the shape of the contested mark, it has been held that a sign which is excessively simple and composed of a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (see judgment of 23 September 2020, PE Digital v EUIPO – Spark Networks Services (ElitePartner), T‑36/19, not published, EU:T:2020:425, paragraph 71 and the case-law cited). In the present case, the contested mark, which is purely figurative and lacking any word element, consists of the image of a lobster facing to the left, in dark red, light red, white and black, which will be perceived by the relevant public as a stylised and realistic representation of that crustacean (see paragraph 92 above). Therefore, the Board of Appeal was right to conclude, in paragraph 29 of the contested decision, that that mark does not represent a simple geometric shape.
120    In the second place, 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). To the extent that the decisions which the Boards of Appeal of EUIPO are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union (see, to that effect, judgment of 19 January 2012, OHIM v Nike International, C‑53/11 P, EU:C:2012:27, paragraph 57). In any event, the situation covered in the applicant’s reference differs from that at issue in the present case. In the examples given in the EUIPO Guidelines, the images refer to the origin of the raw material of the goods concerned or to its source (image of a vine leaf in relation to wine or of a cow in relation to dairy products). That is not the case here, where the image of the lobster has no direct link with the characteristics of the goods at issue. Not only is the contested mark sufficiently stylised, but the applicant has also not succeeded in establishing a direct link between the representation of a red lobster and the characteristics of the goods at issue.
121    Consequently, as the Board of Appeal found in paragraph 30 of the contested decision, there is no reason not to regard the contested mark as an indication of the commercial origin of the goods in question.
122    In the third place, since the applicant has not demonstrated the descriptive character of the contested mark, its argument that the lack of distinctive character derives from its long-lasting use in a descriptive manner (see paragraph 109 above) cannot succeed.
123    In the fourth place, contrary to what the applicant appears to claim (see paragraph 110 above), the Board of Appeal did not consider that the existence of several registered marks which include the image of a red lobster shows that that image, considered separately, was distinctive. It merely noted, in paragraph 40 of the contested decision, that it did not see, based on the applicant’s arguments, how a national registration would render a mark devoid of distinctive character, since, first, those registrations show rather that the national authorities in question took the view that that mark clearly had distinctive character and, second, the EU trade mark regime is, according to settled case-law, an autonomous system, since its application is independent of any national system and EUIPO is not bound by decisions adopted in a Member State.
124    In the fifth place, the applicant on whom the burden of proof falls merely claimed that the lack of distinctive character of the contested mark was also apparent from the trade mark registrations in Poland and Lithuania (Annexes A.19 to A.21 to the application) containing the image of a lobster, and from the use of some of them, or even from the image of a lobster without it necessarily being registered as a mark, in trade for caramels or candies (Annexes A.15, A.16, A.22 and A.23 to the application). However, the applicant has not set out the reasons why that fact might be sufficient to deprive the contested mark of any distinctive character which it would have enjoyed as a matter of course, since the relevance of the documents relating to the period predating the dissolution of the USSR and those which do not concern the relevant territory in order to demonstrate the perception of the image of a red lobster on the relevant date, in particular in Poland and in Lithuania, has already been ruled out at the end of the analysis of the fourth plea in law. The evidence put forward by the applicant is not sufficient to demonstrate the degree to which that use would have created a perception that the image of a lobster is not or is no longer distinctive for those goods. It is clear from the case‑law that a minimum degree of distinctive character is sufficient for the prohibition in Article 7(1)(b) of Regulation No 207/2009 not to apply.
125    In any event, first, as the Board of Appeal correctly stated in paragraphs 13 and 33 of the contested decision, the legislature laid down in Article 7(1)(d) of Regulation No 207/2009 an absolute ground for invalidity which prevents the registration as an EU trade mark of marks which consist exclusively of signs or indications which have become customary in current language or in the bona fide and established practices of the trade. However, the applicant has not relied on that ground for invalidity.
126    Second, the existence of earlier national registrations, or even the use of a sign in the course of trade of more than mere local significance, constitute relative grounds for invalidity, in accordance with Article 8 of Regulation No 207/2009, which the applicant has not relied on either, as the Board of Appeal found in paragraph 41 of the contested decision.
127    Third, it is apparent from the case-law relating to the application of Article 8(1)(b) of Regulation No 207/2009 in the light of marks containing a figurative element (see, to that effect, judgment of 21 February 2013, Seven for all mankind v Seven, C‑655/11 P, not published, EU:C:2013:94, paragraph 49) that, in order for the existence of other marks containing that element to weaken its distinctive character within the mark applied for, the person who relies on it must demonstrate significant similarities as regards not only the presence of that element in earlier marks, but also the position, typeface, ornamental presentation, any special font of a particular letter of that word, and, if that be the case, the presence of verbal or figurative additional elements before or after that word or number. Furthermore, the marks at issue must refer to the same goods and services. Assuming that that case-law is applicable, by analogy, in the context of the application of Article 7(1)(b) of Regulation No 207/2009 in respect of a purely figurative sign, such as the contested mark, it must be held, first of all, that the applicant has not raised any arguments relating to the similarity between that mark and the earlier marks on which it relies. It is not for the Court to assume the role of the applicant. That is all the more true given that, of the 13 marks submitted, none is purely figurative and five of them do not even include the image of a lobster. Moreover, the applicant itself admits that Annexes A.15 and A.16 to the application illustrate the use of a red lobster ‘in various styles’. Next, the list of Polish marks, taken from the TM View database, merely lists the classes of goods for which they are registered. As regards, in particular, undertakings F and B whose products appear in Annex A.15 to the application, there is nothing in the file to show that their marks, set out in Annexes A.19 and A.21 to the application, are actually registered for the goods in question. Furthermore, three documents in Annex A.15 do not concern the relevant territory. In general, none of the documents submitted, considered in isolation or together with the others, including those in Annex A.22 to the application, provides information as to the knowledge and perception of the contested mark at the relevant date by the relevant public.
128    In the light of the foregoing, the applicant has not shown that at that date the contested mark was devoid of any distinctive character.
129    Accordingly, the fifth plea in law must be rejected.
The sixth plea in law, alleging misapplication of Article 52(3) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) and (c) of that regulation
130    By the sixth plea in law, the applicant submits, in essence, that it is apparent from paragraphs 25 and 26 of the contested decision that the goods at issue, consisting of various types of candies and confectionery, bread, pastry, coffee and chocolate beverages, are different types of foodstuffs intended for everyday use and are aimed mainly at average consumers. According to the applicant, even if the application for a declaration of invalidity was filed against all the goods designated by the contested mark, the Board of Appeal should have analysed the goods identified by categories and according to their nature. Since distinctive character must be assessed by reference to the goods or services in respect of which registration has been applied for and by reference to their perception by the relevant public, in the event that it is held that the contested trade mark is not descriptive or is devoid of any distinctive character in respect of some of the goods, forming the sub-category of flour confectionery, the Board of Appeal could nevertheless have upheld the appeal in respect of the other goods, on the basis of Article 52(3) of Regulation 207/2009.
131    EUIPO and the intervener dispute the applicant’s arguments.
132    In that regard, although it would have been desirable for the applicant to develop its arguments further, it maintains unequivocally that it is criticising the fact that the Board of Appeal did not expressly analyse all the goods at issue category by category. Accordingly, EUIPO’s plea of inadmissibility alleging that the sixth plea in law lacks clarity must be rejected.
133    It is apparent from Article 52(3) of Regulation No 207/2009 that if the ground for invalidity exists in respect of only some of the goods or services for which the EU trade mark is registered, the trade mark may be declared invalid in respect of those goods or services only.
134    According to settled case-law, in accordance with Article 95(1) of Regulation 2017/1001, when examining absolute grounds for refusal, such as that concerning lack of inherent distinctive character, EUIPO examiners and, on appeal, the Boards of Appeal of EUIPO are required to examine the facts of their own motion in order to determine whether the mark for which registration is sought comes within one of the absolute grounds for refusal set out in Article 7 of that regulation. It follows that the competent bodies of EUIPO may be led to base their decisions on facts which have not been invoked by the applicant (see, to that effect, judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 21 and the case-law cited).
135    In invalidity proceedings, however, the Board of Appeal cannot be required to carry out afresh the examination conducted at the time of registration by the competent EUIPO bodies, of their own motion, of the relevant facts. It follows from the provisions of Articles 59 and 62 of Regulation 2017/1001 that the EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the review carried out by EUIPO in the examination of an application for registration (see judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 22 and the case-law cited).
136    By virtue of that presumption of validity, EUIPO’s obligation, under Article 95(1) of Regulation 2017/1001, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by the examiners and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. In invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call its validity into question. Thus, pursuant to the last sentence of Article 95(1) of Regulation 2017/1001, which consolidates the Court’s previous case-law (judgment of 24 October 2019, Rubik’s Brand v EUIPO – Simba Toys (Shape of a cube with surfaces having a grid structure), T‑601/17, not published, EU:T:2019:765, paragraph 82), in the context of invalidity proceedings under Article 59 of that regulation, EUIPO is to limit its examination to the grounds and arguments submitted by the parties (see judgment of 10 June 2020, Device of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 23 and the case-law cited).
137    In the present case, while the applicant claims, in the context of that plea, that the Board of Appeal could have declared the contested mark invalid at least in respect of the goods other than caramels or candies, it is sufficient to note that it did not specify before the Court which parts of its pleadings before EUIPO contained arguments specific to the lack of distinctive character or the existence of descriptive character of the contested mark with regard to those other goods. Given that the burden of proving the unlawfulness of the contested decision rests on the applicant, it is not for the Court to seek and identify in the annexes, or even in EUIPO’s administrative file, the grounds or arguments on which it may consider the action to be based.
138    The only goods to which the applicant refers in its arguments at all stages of the proceedings being caramels or candies, it cannot legitimately claim that the Board of Appeal did not analyse, pursuant to the assessment of the absolute grounds for refusal referred to in Article 7(1)(b) and (c) of Regulation No 207/2009, the other goods referred to in its application for a declaration of invalidity.
139    It follows that the sixth plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
140    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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’ to pay the costs.
Collins
De Baere
Steinfatt
Delivered in open court in Luxembourg on 6 October 2021.
E. Coulon
A. M. Collins
Registrar
President
* Language of the case: English.