JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
9 December 2020 (*)
(EU trade mark – Invalidity proceedings – EU word mark Promed – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EU) 2017/1001))
In Case T‑30/20,
Promed GmbH kosmetische Erzeugnisse, established in Farchant (Germany), represented by B. Sorg, B. Reinisch and C. Raßmann, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, V. Ruzek and S. Hanne, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Centrumelektroniki sp.j., established in Tarnowskie Góry (Poland), represented by M. Kondrat, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 November 2019 (Case R 614/2019‑5), relating to invalidity proceedings between Centrumelektroniki and Promed kosmetische Erzeugnisse,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias (Rapporteur) and M. Kancheva, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 20 January 2020,
having regard to the response of EUIPO lodged at the Court Registry on 27 March 2020,
having regard to the response of the intervener lodged at the Court Registry on 24 March 2020,
further to the hearing on 1 October 2020,
gives the following
Judgment
Background to the dispute
1        On 7 August 2007, the applicant, Promed GmbH kosmetische Erzeugnisse, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended and 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)), claiming a right of priority on 18 April 2007 on the basis of a German mark bearing the number 30 725 306.
2        Registration as a mark was sought for the word sign Promed.
3        The goods for which registration was sought fall within Classes 5, 9 and 10 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 5: ‘Test strips for medical purposes’;
–        Class 9: ‘Apparatus for measuring body temperature and functions’;
–        Class 10: ‘Surgical, medical, dental and veterinary instruments and apparatus, in particular pain therapy apparatus, electrodes for electric therapy apparatus, orthopaedic articles, in particular orthopaedic shoes and shoe inserts, ankle bandages, body bandages; orthopaedic stockings; insulin pens; foot massagers, massage apparatus; apparatus for radiotherapy, in particular heat and light therapy’.
4        The trade mark application was published in Community Trade Marks Bulletin
No 5/2008, of 4 February 2008, and the contested mark was registered on 16 September 2008 under No 6206718 in respect of the goods referred to in paragraph 3 of the present judgment.
5        On 10 August 2017, the intervener, Centrumelektroniki sp.j., filed an application for a declaration of invalidity of the contested mark on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) and (c) of that regulation (now Article 7(1)(b) and (c) of Regulation 2017/1001).
6        By decision of 22 February 2019, the Cancellation Division partially upheld the application for a declaration of invalidity and declared the contested mark invalid for the goods in Classes 5, 9 and 10, referred to in paragraph 3 of the present judgment.
7        On 19 March 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 in so far as it had upheld the application for a declaration of invalidity.
8        By decision of 7 November 2019 (‘the contested decision’), the Board of Appeal dismissed the appeal. In particular, first, the Board of Appeal found that the purpose of the application for a declaration of invalidity at issue, as regards the goods covered, had to be assessed not only in the light of the form completed by the applicant for a declaration of invalidity but also by taking into account the statement of grounds for invalidity. According to the Board of Appeal, it follows that the application for a declaration of invalidity covered all the goods in Classes 5, 9 and 10 covered by the contested mark, for which the Cancellation Division had upheld that application.
9        Second, having regard to the nature of the goods referred to in paragraph 3 of the present judgment, the Board of Appeal defined the relevant public as consisting of health sector professionals and English-speaking end consumers to whom those goods are directed.
10      Third, the Board of Appeal pointed out that, in English, the term ‘pro’ means ‘professional’ and was thus used for purely laudatory purposes in the marketing of goods and services to emphasise their quality. In addition, the abbreviated term ‘med’ is commonly used in English to refer to medicine or a medicinal product. The proprietor of the contested mark did not dispute those well-known facts. Thus, according to the Board of Appeal, the combination of those terms is immediately understood by the relevant public as an indication of the nature of the goods concerned as medical products meeting the highest standards of quality and reliability. The Board of Appeal claims that it is therefore a purely promotional term encouraging the relevant public to purchase the medical products referred to in paragraph 3 above, without revealing any element capable of constituting an indication of the commercial origin of the products. For those reasons, the Board of Appeal concluded that the contested mark was devoid of distinctive character and, as such, fell within the scope of Article 59(1)(a) of Regulation 2017/1001 and Article 7(1)(b) of that regulation.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision and the decision of the Cancellation Division;
–        alter the contested decision with a view to reimbursement of the appeal fees;
–        order EUIPO to pay the costs of the proceedings before the Cancellation Division and the Court, including those of the intervener.
12      EUIPO contends that the Court should:
–        dismiss the action as in part inadmissible and in part unfounded;
–        order the applicant to pay the costs.
13      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs of the proceedings before the Court and the Board of Appeal.
Law
14      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 95(1) of Regulation 2017/1001, read in conjunction with Article 59(1)(a) and Article 7(1)(b) of that regulation and, second, infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) of that regulation.
15      In view of the date of priority of the contested mark, namely 18 April 2007, which, in accordance with Articles 34(1), 36, 52 and 59(1)(a) of Regulation 2017/1001, must be regarded as the date on which the application for registration in question was filed, which is decisive for the identification of the applicable substantive law for the purposes of examining an application for invalidity, the present case is governed by the substantive provisions of Regulation No 40/94 (see, to that effect, 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).
16      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 pleadings to the provisions of Regulation 2017/1001 should be understood as relating to the identical provisions of Regulation No 40/94.
17      Moreover, in so far as, according to settled case-law, procedural rules are generally deemed 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), any procedural question is governed by Regulation 2017/1001, which was in force at the time when the contested decision was adopted.
18      Accordingly, the pleas in law raised by the applicant in support of its action must be interpreted as alleging, first, infringement of Article 95(1) of Regulation 2017/1001, read in conjunction with Article 51(1)(a) and Article 7(1)(b) of Regulation No 40/94 and, second, infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of the latter regulation.
Admissibility of certain heads of claim
19      EUIPO disputes the admissibility of the action in so far as, first, the applicant seeks both the annulment and the alteration of the contested decision, second, it requests the annulment of the Cancellation Division’s decision and, third, it claims that EUIPO should be ordered to bear the costs of the proceedings before that division and the costs of the intervener before the Court.
20      In that regard, first of all, according to Article 72(3) of Regulation 2017/1001, ‘the General Court shall have jurisdiction to annul or to alter the contested decision’. It follows that, contrary to what is argued by EUIPO, a request for alteration within the meaning of that provision may be made in an ancillary manner to an application for annulment of a decision of the Board of Appeal. Furthermore, and above all, a request for alteration of the contested decision for the purposes of reimbursement of the appeal fee paid to EUIPO in accordance with Article 68(1) of Regulation 2017/1001 in fact constitutes an application for an order requiring EUIPO to reimburse that fee under Article 190(2) of the Rules of Procedure of the General Court. According to the latter provision, ‘costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal shall be regarded as recoverable costs’. The costs in question include the appeal fee, so that the applicant’s request (see paragraph 9, second indent, above) is to be understood as being made under Article 190(2) of the Rules of Procedure.
21      By contrast, Article 190(2) of the Rules of Procedure does not provide that the costs incurred for the purposes of the proceedings before the Cancellation Division are recoverable; therefore the applicant’s request concerning those costs (see paragraph 9, third indent, above) is inadmissible (see, to that effect, judgment of 24 September 2019, Volvo Trademark v EUIPO – Paalupaikka (V V-WHEELS), T‑356/18, EU:T:2019:690, paragraph 67).
22      Next, the applicant’s claim that the Court should annul the decision of the Cancellation Division of 22 February 2019 (see paragraph 9, first indent, above) must be understood as asking the Court, in essence, to take the decision which the Board of Appeal should, in its view, have taken when it heard the appeal, namely to annul the decision of the Cancellation Division in so far as it had partially upheld the application for a declaration of invalidity. In that respect, according to the second sentence of Article 71(1) of Regulation 2017/1001, the Board of Appeal may annul the decision under appeal and exercise any power within the competence of the department which was responsible for the decision appealed; in the present case, to decide on the application for a declaration of invalidity in question and to reject it. This is one of the measures that may be taken by the General Court by virtue of its power of reversal, enshrined in Article 72(3) of Regulation 2017/1001 (see, to that effect, judgment of 4 May 2017, Kasztantowicz v EUIPO – Gbb Group (GEOTEK), T‑97/16, not published, EU:T:2017:298, paragraph 17 and the case-law cited). It follows that, contrary to what EUIPO submits, that request is admissible.
23      Lastly, the applicant’s request that EUIPO be ordered to pay the intervener’s costs is examined in paragraph 61 below.
The first plea in law, alleging infringement of Article 95(1) of Regulation 2017/1001, read in conjunction with Article 51(1)(a) and Article 7(1)(b) of Regulation No 40/94
24      The applicant notes that, according to the form commencing the contested application for a declaration of invalidity, completed by the intervener, the application in question covered only the goods in Classes 9 and 10 referred to in paragraph 3 above, with the exception of the goods in Class 5, in respect of which the contested mark was also declared invalid. According to the applicant, the statement of reasons for the application for a declaration of invalidity cannot extend the list of goods covered by the application, even where, as in the present case, it contains a reference to the number of the class concerned without mentioning the goods in that class covered by the mark whose invalidity is sought.
25      Furthermore, the applicant claims that the intervener failed to invoke, before the adjudicating bodies of EUIPO, any evidence capable of supporting the application for a declaration of invalidity. According to the applicant, the evidence submitted either does not relate to the relevant date for the assessment of the distinctive character of the contested mark, or is not in the language of the case or is irrelevant. The applicant argues that the Board of Appeal also departed from the position it had adopted in the past in the context of the procedure for the registration of a mark which is almost identical to the contested mark. Therefore, according to the applicant, by considering that the application for a declaration of invalidity at issue also covered the goods in Class 5 covered by the contested mark and by declaring the contested mark invalid, the Board of Appeal infringed Article 95(1) of Regulation 2017/1001, according to which, 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.
26      EUIPO and the intervener dispute the merits of those complaints.
27      It must be recalled that, in order to determine the grounds on which an application for a declaration of invalidity is based, it is necessary to examine all of the application, especially in light of the detailed statement of reasons in support of it (judgment of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 26).
28      In the present case, admittedly, in the form introducing the application for a declaration of invalidity, the intervener defined the scope of that application as covering the goods covered by the contested mark in Classes 9 and 10. However, it follows from the conclusions that the intervener made in the statement of grounds for the application for a declaration of invalidity that the intervener requested that the contested mark also be declared invalid for the goods in Class 5, in respect of which the application was also upheld. In addition, the intervener expressly formulated grounds for invalidity with respect to the goods covered by the contested mark and falling within Class 5 in several points in that statement of grounds.
29      It follows that, contrary to the applicant’s contention, the Board of Appeal was right in finding that the Cancellation Division had not ruled outside the scope of the application for a declaration of invalidity.
30      Moreover, as regards the other arguments relied on by the applicant in support of this plea in law (see paragraph 23 above), it should be recalled that the Board of Appeal may state reasons for its decisions by reference to well-known facts (see, to that effect, judgment of 13 April 2011, Smart Technologies v OHIM (WIR MACHEN DAS BESONDERE EINFACH), T‑523/09, not published, EU:T:2011:175, paragraph 41). The meaning of a word which is both common among members of the relevant public and appears in generally accessible sources constitutes such a fact (see, to that effect, judgment of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T‑363/10, not published, EU:T:2011:662, paragraph 31).
31      In the present case, it must be noted, first, that, as is apparent both from the application form for the declaration of invalidity and from the statement of grounds for that application brought before the Cancellation Division, the intervener based it both on the descriptive character of the contested mark within the meaning of Article 7(1)(c) of Regulation No 207/2009 and on the lack of distinctive character of that mark within the meaning of Article 7(1)(b) of that regulation – substantive rules which are identical to the corresponding rules of Regulation No 40/94.
32      Second, as is apparent from paragraphs 36 to 38 of the contested decision, the Board of Appeal based its conclusion on considerations relating to the meaning of the terms making up the contested mark, which are well-known elements which, moreover, appear in a reference dictionary, which it rightly described as well-known facts. In that context, the applicant cannot validly call into question the legality of the contested decision by criticising the Board of Appeal for having taken that meaning into account in order to justify its conclusion that the contested mark was not distinctive, despite the fact that the intervener had not expressly invoked the meaning in question. It also follows that the applicant’s argument according to which the intervener failed to invoke, before the adjudicating bodies of EUIPO, evidence that could support the application for a declaration of invalidity (see paragraph 23 above) is inoperative.
33      Furthermore, as the applicant itself submits in paragraph 34 of the application, the question whether the meaning of the terms making up the contested mark deprives that mark of distinctive character must be analysed in the context of the second plea in law. The same applies to the argument that it is allegedly impossible to justify the conclusion reached in the contested decision on the basis of the information submitted by the applicant before the Board of Appeal and to the alleged contradiction between the contested decision, on the one hand, and an earlier decision of the Board of Appeal adopted in the context of the proceedings for registration of a mark which is virtually identical to the contested mark, on the other.
34      The first plea in law must therefore be rejected.
The second plea in law, alleging infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation
35      The applicant argues, first, that the Board of Appeal’s finding was not based on an overall analysis of the contested mark but only on an analysis of each of its components taken in isolation. According to the applicant, an overall analysis would have led the Board of Appeal to conclude that, in particular for non-medical goods, the contested mark is a fanciful combination of the term ‘pro’ and the abbreviation ‘med’. Furthermore, the applicant submits that the contested decision does not contain any evidence capable of showing that the promotional significance of the contested mark precludes it from being distinctive.
36      According to the applicant, some of the goods covered by the contested mark, such as massage products, orthopaedic products, radiotherapy apparatuses and apparatuses for measuring body temperature and functions, are not medical in nature but fall within the wellness sector. Consequently, the Board of Appeal, first, erroneously defined the relevant public and, second, vitiated the contested decision by an inadequate statement of reasons.
37      Finally, the applicant submits that Board of Appeal has no reason to take a different approach from the one it took in its decision of 25 January 2017 in Case R 1634/2016‑4, concerning the registration of the mark promed, registered under number 12 885 489. Thus, the contested mark, which has been in use for many years, cannot legitimately be regarded as devoid of distinctive character.
38      EUIPO and the intervener contest the merits of this plea.
39      According to Article 7(1)(b) of Regulation No 40/94, trade marks which are devoid of any distinctive character are not to be registered. Article 7(2) of that regulation states that Article 7(1) is to apply notwithstanding the fact that the grounds of non-registrability obtain in only part of the European Union.
40      According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 40/94 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 or services at issue, thus enabling the consumer who acquired them 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. A minimum degree of distinctive character is, however, sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 40/94 inapplicable (see judgment of 25 April 2013, Bayerische Motoren Werke v OHIM (ECO PRO), T‑145/12, not published, EU:T:2013:220, paragraphs 15 and 16 and the case-law cited).
41      The distinctive character of a sign must be assessed, first, by reference to the goods or services in respect of which the application for registration has been made and, second, by reference to the relevant public’s perception of the sign (see judgment of 25 April 2013, ECO PRO, T‑145/12, not published, EU:T:2013:220, paragraph 17 and the case-law cited).
42      In that context, although it is true that the descriptive signs referred to in Article 7(1)(c) of Regulation No 40/94 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation, the fact remains that a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) for reasons other than the fact that it may be descriptive (see judgment of 25 April 2013, ECO PRO, T‑145/12, not published, EU:T:2013:220, paragraph 18 and the case-law cited).
43      There is thus a measure of overlap between the scope of Article 7(1)(b) of Regulation No 40/94 and the scope of Article 7(1)(c) of that regulation, Article 7(1)(b) nevertheless being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (see judgment of 25 April 2013, ECO PRO, T‑145/12, not published, EU:T:2013:220, paragraph 19 and the case-law cited).
44      Where, in the field to which the trade mark relates, the relevant public perceives a sign as providing details of the type of goods which it designates and not as indicating the origin of those goods, the mark does not meet the conditions laid down by Article 7(1)(b) of Regulation No 40/94 (see judgment of 25 April 2013, ECO PRO, T‑145/12, not published, EU:T:2013:220, paragraph 20 and the case-law cited). In that regard, a mark must allow the relevant public to distinguish the products covered by that mark from those of other undertakings without paying particular attention, so that the distinctiveness threshold necessary for registration of a mark cannot depend on the public’s level of attention (judgment of 14 February 2019, Bayer Intellectual Property v EUIPO (Representation of a heart), T‑123/18, EU:T:2019:95, paragraph 17).
45      What has to be determined therefore is whether the association established by the Board of Appeal between the semantic content of the sign for which registration was sought, on the one hand, and the goods concerned, on the other, is sufficiently concrete and direct to prove that that sign enables the relevant public to identify certain characteristics of those goods immediately.
46      In that regard, in the case of a sign comprising two word elements which have been combined to form a word, distinctiveness may, in part, be examined in relation to each of its terms or elements, considered separately, but must, in any event, depend on an appraisal of the whole which they comprise. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character (see judgment of 25 April 2013, ECO PRO, T‑145/12, not published, EU:T:2013:220, paragraph 24 and the case-law cited).
47      In the present case, as is apparent from paragraphs 36 to 46 of the contested decision, the Board of Appeal observed that the contested mark consists of the terms ‘pro’ and ‘med’, which are used by the relevant public, consisting of medical professionals and average English-speaking consumers, to refer to the concepts of ‘professional’ and ‘medical’ respectively. According to the Board of Appeal, the combination of those terms, in their abbreviated form, is immediately understood by the vast majority of the relevant public as highlighting the medical characteristics of professional quality and reliability of the goods covered by the contested mark. Since that type of word combination is very common in English, the contested mark, taken as a whole, fulfils only a purely promotional function which emphasises the correct and responsible nature of the consumer’s choice without indicating the commercial origin of the goods in question.
48      It follows that, as is apparent from paragraphs 42, 43 and 45 of the contested decision, and contrary to what is claimed by the applicant, the Board of Appeal examined the contested mark as a whole and did not confine itself to an examination of the elements of which it is composed, taken separately.
49      It must be noted that, first, the word element ‘pro’ may be laudatory for the sake of advertising, the purpose of this being to highlight the positive qualities of the goods or services for the presentation of which that element is used, and, second, it is commonly used in trade for the presentation of all kinds of goods and services. That word element is perceived by the English-speaking public in the sense of ‘professional’ or ‘favourable, positive or supportive’ (see, to that effect, judgments of 25 April 2013, ECO PRO, T‑145/12, not published, EU:T:2013:220, paragraph 27 and the case-law cited, and of 16 May 2017, Marsh v EUIPO (LegalPro), T‑472/16, not published, EU:T:2017:341, paragraph 27 and the case-law cited), without that perception depending on the element in question being placed at the beginning or end of the mark. It follows that the Board of Appeal did not make an error of assessment in considering that the relevant public attributed to it the meaning denoting a product or service of excellent quality and reliability.
50      Thus, contrary to what the applicant claims, the Board of Appeal set out the reasons demonstrating the promotional character of the term ‘pro’.
51      Nor did the Board of Appeal err in finding that, in view of its meaning, the term ‘med’ is immediately perceived as designating goods of a medical nature and purpose.
52      The combination of a term designating a characteristic of the goods concerned, such as the term ‘med’, with one or more laudatory terms, such as the term ‘pro’, does not mean that the mark applied for, considered as a whole, is greater than the sum of its parts (see, to that effect, judgment of 20 November 2002, Bosch v OHIM (Kit Pro and Kit Super Pro), T‑79/01 and T‑86/01, EU:T:2002:279, paragraphs 29 and 30).
53      Thus, contrary to what the applicant claims, the Board of Appeal was right to find, in paragraphs 45 and 46 of the contested decision, that the contested mark, viewed as a whole, had a purely promotional character.
54      Moreover, contrary to what is claimed by the applicant, all the goods covered by the contested mark, including the goods referred to in paragraph 36 above, are by their very nature intended for medical use or, at the very least, capable of being used for such purposes, namely to provide information on the state of health, independently of a prior diagnosis of illness, or to form part of a therapy.
55      It follows that the applicant’s claims that the Board of Appeal incorrectly defined the relevant public on account of the non-medical nature of the goods covered by the contested mark and vitiated its decision by a failure to state reasons or a lack of adequate reasons in that regard must also be rejected.
56      As regards the reference to the decision of the Board of Appeal of 25 January 2017 in Case R 1634/2016‑4 concerning registration of the mark promed, registered under No 12 885 489 in respect of goods and services in Classes 5, 7, 8, 9, 10, 11, 14, 16, 24, 41 and 44, it must be noted that, in any event, the decisions which the Boards of Appeal of EUIPO are called on to take concerning registration of a sign as an EU trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of the regulation on the EU trade mark, as interpreted by the European Union Courts, and not on the basis of EUIPO’s previous decision-making practice (judgment of 31 January 2019, DeepMind Technologies v EUIPO (STREAMS), T‑97/18, not published, EU:T:2019:43, paragraph 53).
57      Therefore, the fact that the contested mark is virtually identical to a mark in respect of which EUIPO has already approved registration as an EU trade mark, even if the latter refers to goods or services identical or similar to those covered by the contested mark, is not a sufficient ground, in itself, for the Court to annul the contested decision (see order of 12 December 2013, Getty Images (US) v OHIM, C‑70/13 P, not published, EU:C:2013:875, paragraph 45 and the case-law cited).
58      It follows from the foregoing that the public will perceive the semantic content of the contested mark as providing information on certain characteristics of the goods concerned and not as indicating their commercial origin. Therefore, the contested mark is necessarily devoid of any distinctive character with regard to those goods, within the meaning of Article 7(1)(b) of Regulation No 40/94.
59      As regards the argument based on the contested mark being used for many years, which would exclude the possibility of considering it to be devoid of distinctive character (see paragraph 35 above), the applicant made it clear at the hearing that, by that argument, it did not intend to plead infringement of Article 59(2) of Regulation 2017/1001. It follows that that argument has no independent scope and that it cannot call into question the findings set out in paragraphs 45 to 56 above.
60      Consequently, the second plea in law must be rejected, and the action dismissed in its entirety.
Costs
61      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. It follows that, if the action is dismissed and the intervener contends that the applicant should be ordered to pay the costs, it is for the applicant and not EUIPO to pay the intervener’s costs. Since the applicant has been unsuccessful, it must be ordered to pay the costs of the present proceedings, in accordance with the forms of order sought by EUIPO and the intervener. Moreover, as regards the costs incurred by the intervener before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Promed GmbH kosmetische Erzeugnisse to pay the costs.
Costeira
Gratsias
Kancheva
Delivered in open court in Luxembourg on 9 December 2020.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.