JUDGMENT OF THE GENERAL COURT (First Chamber)
5 June 2019
(*)
(EU trade mark — Application for the EU word mark Biolatte — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T–229/18,
Biolatte Oy, established in Turku (Finland), represented by J. Ikonen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 6 February 2018 (Case R 351/2017-1), relating to an application for registration of the word sign Biolatte as an EU trade mark,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, P. Nihoul (Rapporteur) and J. Svenningsen, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 April 2018,
having regard to the response lodged at the Court Registry on 1 August 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 17 August 2016, the applicant, Biolatte Oy, 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        The mark in respect of which registration was sought is the word sign Biolatte.
3        The goods in respect of which registration was sought are in Class 5 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, following the restriction made during the proceedings before EUIPO, to the following description: ‘Dietary supplements; Dietary supplements for humans; Enzyme dietary supplements; Probiotic supplements; Digestive enzymes; Dietary supplements for animals’.
4        By decision of 23 January 2017, the examiner rejected the application for registration of the mark Biolatte on the basis of Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001), on the ground that it was descriptive, and on that of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001), on the ground that it was devoid of distinctive character.
5        On 15 February 2017, the applicant filed an appeal against the examiner’s decision under Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001).
6        By decision of 6 February 2018 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal and upheld the refusal to register the mark, on the basis of Article 7(1)(b) of Regulation No 207/2009, on the ground that it had no distinctive character.
7        The Board of Appeal stated in the contested decision that the existence of distinctive character had to be examined in the light of the public composed of consumers in the European Union and, in particular, of those who, within that public, speak Italian, since it was in the perception of those speakers that the mark may lack distinctive character.
8        Next, the Board of Appeal found that the sign applied for was devoid of any distinctive character because those consumers could easily distinguish the terms ‘bio’ and ‘latte’, perceiving the first as a banal prefix and the second as having a clear link with the goods in question and would immediately understand that sign as a reference to the content and the positive effect of those goods.
9        The Board of Appeal noted in the contested decision that, according to the applicant, the sign applied for had acquired market recognition within the EU market, but found that no evidence relating to the Italian-speaking part of the relevant public had been submitted in support of that assertion, as a consequence of which the Board of Appeal could not take it into account in that decision.
Procedure and forms of order sought
10      By application lodged at the Court Registry on 4 April 2018, the applicant brought the present action.
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order the registration of the word mark Biolatte.
12      EUIPO contends that the Court should:
–        reject the application for registration;
–        reject the applicant’s second head of claim as inadmissible;
–        order the applicant to pay the costs.
Law
Admissibility
The applicant’s second head of claim
13      By its second head of claim, the applicant asks the Court to order the registration of the mark applied for.
14      According to Article 72(6) of Regulation 2017/1001, EUIPO is required to take the necessary
measures to comply with the judgment by which the Courts of the European Union rule on a decision of the Board of Appeal in the context of an action brought on the basis of Article 72(5) of Regulation 2017/1001.
15      In the light of that provision, it is not for the Court to issue directions to EUIPO; rather, it is for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (judgments of 27 September 2006, Telefónica v OHIM — Branch (emergia), T‑172/04, not published, EU:T:2006:278, paragraph 23, and of 30 November 2015, Hong Kong Group v OHIM — WE Brand (W E), T‑718/14, not published, ET:2015:916, paragraph 16).
16      Consequently, as EUIPO submits, the applicant’s request that the Court order EUIPO to proceed to registration of the mark applied for must be rejected as inadmissible (see, to that effect, order of 1 March 2007, Ikos v EUIPO (AEGYPTISCHE ERDE), T‑76/16, not published, EU:T:2017:140, paragraph 14).
The first head of claim submitted by EUIPO
17      By its first head of claim, EUIPO contends that the application for registration should be dismissed.
18      Called upon to rule on the admissibility of that head of claim, EUIPO, in the context of a response to a measure of organisation of procedure, stated that the wording used in the response was due, in its view, to a clerical error and that it was necessary to understand that head of claim as seeking dismissal of the action.
19      Taking note of that reply, the Court considers it appropriate to examine the substance of the arguments put forward by the applicant, in order to determine whether those arguments must, as that the applicant claims, lead to the annulment of the contested decision, without it being necessary to rule on the reclassification proposed by EUIPO.
Substance
20      By its first head of claim, the applicant seeks annulment of the contested decision. In support of its request, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, submitting, in essence, that, contrary to what the Board of Appeal found, the mark applied for has the distinctive character required for its registration.
21      In response, EUIPO develops a line of argument in support of the lawfulness of the contested decision.
The relevant public
22      As a preliminary point, it must be noted that, in the contested decision the Board of Appeal stated that: (i) the existence of distinctive character had to be examined from the point of view of the general public, for which the goods covered by the mark applied for were intended; (ii) in view of the health-related purpose of the goods, that public displayed a high level of attention when choosing between different goods in the category concerned, and (iii) the relevant public was that of the European Union and, in particular, the Italian-speaking public within the European Union.
23      In that regard, it should be noted that the case
file corroborates the Board of Appeal’s assessment that the relevant public consists of the general public, which means that that assessment must be upheld.
24      The same applies to the level of attention displayed
by the relevant public, a high level being confirmed by the case-law, concerning that type of consumer, for that category of goods, which concerns health (see, to that effect, judgments of 23 January 2014, Sunrider v OHIM — Nannerl (SUN FRESH), T‑221/12, not published, EU:T:2014:25, paragraph 64, and of 26 November 2015, Bionecs v OHIM — Fidia farmaceutici (BIONECS), T‑262/14, not published, EU:T:2015:888, paragraph 17).
25      As regards the relevant territory, it must be recalled that, since the mark applied for is intended to be used throughout the European Union, it must have distinctive character throughout the territory of European Union. Thus, in accordance with Article 7(2) of Regulation
2017/1001, registration must be refused where there is no distinctive character in a part of the territory of the European Union. The Board of Appeal was therefore right, in its assessment, to concentrate its attention, within that territory, on Italy because, given the Italian-sounding words making up the sign applied for, it was in the perception of the Italian-speakers that the mark may not be primarily distinctive (see, to that effect, judgment of 3 May 2018, Council v EUIPO — Raizers (RAISE), T‑463/17, not published, EU:T:2018:249, paragraphs 49 and 50 and the case-law cited).
The goods in question
26      In paragraph 15 of the contested decision, the Board of Appeal stated that the goods marketed by the applicant were dietary supplements, namely those ingested by consumers with a view to correcting nutritional deficiencies, and that, according to the applicant, those dietary supplements were mainly composed of lactic acid.
27      The Board of Appeal then found, in paragraph 15 of the contested decision, that any consumer
interested in the applicant’s dietary supplements would immediately establish a connection between the terms ‘latte’ and ‘acido lattico’, which is the main component of the supplements, and that, consequently, the term ‘latte’ was inherently devoid of any distinctive character, since it did not indicate the commercial or industrial origin of the goods in question but merely informed consumers of their content.
28      The Board of Appeal concluded, in paragraph 17 of the contested decision, that a mark in which a banal prefix, ‘bio’, is simply added to a term, ‘latte’, which is immediately associated with the main ingredient of the goods in question, ‘acido lattico’, does not enable the consumer to distinguish between the applicant’s dietary supplements and supplements which have a different commercial or industrial origin. According to the Board of Appeal, that mark would immediately be understood as a reference to the content of the goods and their positive effects on health.
29      In that regard, it must be noted that, under Article 7(1)(b) of Regulation
2017/1001, trade marks which are devoid of any distinctive character must not be registered.
30      According to the case-law,
the existence of distinctive character, for the purposes of Article 7(1)(b) of Regulation 2017/1001, means that the mark which has a distinctive character makes it possible to identify the goods in respect of which registration was applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings. It is in those circumstances that it is capable of fulfilling the essential function of a trade mark (see, to that effect, judgment of 24 June 2014, Unister v OHIM (Ab in den Urlaub), T‑273/12, not published, EU:T:2014:568, paragraph 14).
31      That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (see judgment of 13 December 2018, Multifit v EUIPO (MULTIFIT), T‑98/18, not published, EU:T:2018:936, paragraph 14 and the case-law cited).
32      However, it is apparent from the findings of the Board of Appeal, set out in paragraphs 26 to 28 of the present judgment, that it assessed the existence of distinctive character, not in relation to all the goods in the application for registration, but in relation to those which were actually marketed by the applicant, which the latter described as being ‘primarily lactic acid bacteria’.
33      In those circumstances, it must be held that the Board of Appeal erred in law in its assessment of the distinctive character of the sign at issue.
34      According to the case-law, that error cannot, however, result in the annulment of the contested decision, save where that error could have had a decisive effect on the contested decision, in so far as it concerns the distinctive character of the sign at issue (see, to that effect, judgment of 9 March 2012, Colas v OHIM — García-Teresa Gárate and Bouffard Vicente (BASE-SEAL), T–172/10, not published, EU:T:2012:119, paragraph 50).
35      It is therefore necessary to assess whether, notwithstanding the error of law which it has made, the Board of Appeal was entitled to find that the sign Biolatte was devoid of distinctive character.
The distinctive character of the mark applied for
36      By the contested decision, the Board of Appeal refused registration in respect of all of the goods covered by the application on account of the lack of distinctive character of the sign at issue.
37      By its single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, the applicant submits that the mark applied for has distinctive character within the meaning of that provision.
38      EUIPO disputes the applicant’s arguments.
39      In the present case, the plea put forward by the applicant is based on four complaints.
–       First complaint: meaning of the sign at issue
40      By its first complaint, the applicant submits that the general Italian-speaking public will understand the sign Biolatte as consisting of two terms which indicate: (i) that the goods concern contain probiotics, which corresponds to the term ‘bio’, and; (ii) the origin of the goods, by incorporating, within the sign, the name of their founder, Mr Delatte, which corresponds to the term ‘latte’.
41      In that regard, it must be noted that, in accordance with the case-law referred to in paragraph 31 of the present judgment, the sign at issue must be examined taking into account the perception of the relevant public — in the present case the Italian-speaking part of that public — the history of that sign or the perception of it by the applicant being immaterial.
42      Furthermore, it must be pointed out that, according to the case-law, although the public normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, they will break it down into word elements which, for them, have a specific meaning or which resemble words known to them. It has also been stated in the case-law that it was possible for that public to break down a word sign even if only one of the elements making up the sign is familiar to it (judgment of 19 September 2012, TeamBank v OHIM — Fercredit Servizi Finanziari (f@ir Credit), T‑220/11, not published, EU:T:2012:444, paragraph 38).
43      In the first place, as regards the element ‘latte’, it must be stated that, contrary to what the applicant claims, it has not been established that the relevant public will perceive it as a reference to the surname of the inventor of the goods in question, namely Mr Delatte.
44      Apart from the fact that the element ‘latte’ corresponds only partially to that name, there is nothing in the case to suggest that the person concerned is particularly well known within the European Union.
45      That is all the more true as regards the Italian-speaking part of the relevant public, since the goods sold by the applicant are not, according to the applicant itself, marketed in Italy, and the applicant does not, moreover, claim that Mr Delatte has links with Italy.
46      By contrast, for the Italian-speaking part of the relevant public, the term ‘latte’ is commonly used to designate a foodstuff consumed on a daily basis in many households, namely milk.
47      In the second place, it should be noted that, in all likelihood, the other element in the sign at issue, namely the term ‘bio’, will be perceived by the Italian-speaking part of the relevant public, as stated by the Board of Appeal, as being an abbreviation of the adjective ‘organic’, ‘biologico’ in Italian.
48      According to the case-law, the use of the word element ‘bio’ as a prefix or suffix has acquired a highly suggestive
connotation, which may be perceived in different ways according to the product offered for sale, but which, in general, refers to the idea of environmental protection, the use of natural materials or even ecological manufacturing processes (judgment of 10 September 2015, Laverana v OHIM (BIO INGRÉDIENTS VÉGÉTAUX PROPRE FABRICATION), T‑30/14, not published, EU:T:2015:622, paragraph 20).
49      Moreover, according to Article 2(c) of Council Regulation (EC) No 834/2007 of 28 June 2007 on organic production and labelling of organic products and repealing Regulation (EEC) No 2092/91 (OJ 2007 L 189, p.1), the term ‘organic’ describes products coming from or related to organic production. It is apparent from recital 1 of that regulation that that term relates to concepts such as respect for the environment, biodiversity and products produced from natural substances and processes. Article 23(1) of that regulation states that that definition also covers diminutives such as, inter alia, in Italian, ‘bio’.
50      The applicant submits that the term ‘bio’ appeared in European legislation in 2007 to designate organic products, in the present case following the adoption of Regulation No 834/2007, referred to in paragraph 49 of the present judgment. According to the applicant, since it was adopted after Biolatte’s products had already been put on the market, the use of the prefix ‘bio’ in the legislative context of the European Union cannot be used as an argument capable of ruling out the distinctive character of the sign at issue.
51      In that regard, it must be noted that Regulation No 834/2007 was adopted before the application for registration at issue, which, according to the documents before the Court, was made on 17 August 2016.
52      According to the case-law, the distinctive character of a sign must be assessed, as EUIPO has pointed out, in the light of the circumstances at the date of application for registration (see, to that effect, judgment of 11 December 2013, Smartbook v OHIM (SMARTBOOK), T‑123/12, not published, EU:T:2013:636, paragraph 48).
53      Moreover, it should be noted that, in any event, the prefix ‘bio’ was already commonly used before the adoption of Regulation No 834/2007, to designate the production process described in paragraphs 48 to 49 of the present judgment. Consequently, the adoption of that regulation cannot be used to determine when that term began to be perceived, by the relevant public, as having a particular meaning.
54      On the basis of those considerations, the first complaint raised by the applicant must be rejected.
–       Second complaint: absence of any link between, on the one hand, the sign at issue and, on the other hand, milk or an organic lactic ingredient
55      By its second complaint, the applicant submits that the sign Biolatte is not associated, in the mind of the Italian-speaking part of the relevant public, with milk or a particular lactic ingredient, which are, in both cases, obtained at the end of an organic production process.
56      In the first place, the applicant maintains that the sign at issue is not used, or known, in Italian, as being an abbreviation referring to organic milk which translates to ‘latte organico’ and not ‘biolatte’.
57      In that regard, it must be stated that, contrary to the applicant’s assertion, there are combinations of words in Italian that are intended to indicate that some substances have been manufactured using an organic process, without the term ‘organico’ being used, but with the term ‘bio’ placed before the name of those substances. Thus, as EUIPO stated, there are a number of compound words
in Italian which follow that phrasal model, and which consist of a combination based on such parameters, such as, for example, the words ‘bioalimento’, ‘bioarchitettura’, ‘biocarburante’
and ‘biocombustible’.
58      To the same effect, it may be noted that, as stated in paragraph 49 of the present judgment, Regulation No 834/2007 uses the word ‘biologico’ and its diminutive ‘bio’ in Italian to describe goods derived from organic production.
59      In the second place, the applicant claims that, in the sign at issue, the terms ‘bio’ and ‘latte’ are combined in an uncommon way, and, consequently, the result is syntactically unusual, which accentuates its distinctive character. In support of that argument, it must be borne in mind that, according to the case-law, any difference between a combination of words and the terms used in the common parlance of the relevant class of consumers is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark (see, to that effect, judgment of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 40).
60      In that regard, it should be noted that the case which gave rise to the judgment relied on by the applicant in support of its argument is notably different from the case which is the subject matter of the present judgment. In the judgment cited by the applicant the sign at issue, namely the sign Baby-dry, consisted of two parts which were used conversely. In English, the adjective is not normally behind the noun to which it relates, but rather before it. Given that it consists of an adjective, ‘dry’, following a noun, ‘baby’, the sign is, according to the case-law, original in nature, and therefore distinctive (see, to that effect, judgment of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraphs 43 and 44).
61      By contrast, the term ‘bio’ is commonly placed, in the languages of the European Union and, in particular, in Italian, before the term which designates the substance, the manufacture of which is achieved by means of the organic production process in question, such as in the examples mentioned in paragraph 57
of the present judgment. That is also the case
here, where, as is usual in the commercial and advertising context, the prefix ‘bio’ is added at the start of a descriptive element (see, to that effect, judgment of 10 September 2015, BIO INGRÉDIENTS VÉGÉTAUX PROPRE FABRICATION, T‑30/14, not published, EU:T:2015:622, paragraph 20). In those circumstances, in the present case there can be no question
of an original construction which, for that reason, would confer on the sign the distinctive character required for registration.
62      On that basis, it must be held, as EUIPO submits, first, that, in the case at issue, there is no syntactically unusual juxtaposition in the combination of the elements ‘bio’ and ‘latte’ and that those elements will be understood by the Italian-speaking part of the relevant public as referring to: for the first element, the ‘organic’ production process and, as regards the second element, to the foodstuff ‘milk’ which is commonly consumed in households.
63      For those reasons, the applicant’s second claim must be rejected.
–       Third complaint: lack of descriptive character of the sign at issue in relation to the designated goods
64      By its third complaint, the applicant challenges the assertion made in the contested decision that the sign at issue is devoid of any distinctive character in respect of the goods designated in the application for registration. According to the applicant, even if it could be descriptive of goods in Classes 29 to 32, which include beverages such as milk, the sign Biolatte could not have such a character for the categories of goods designated in the application for registration.
65      In that regard, it should be noted that, as EUIPO states, the argument put forward by the applicant consists of calling into question the descriptive character of the sign at issue, that is to say, its ability to describe the content of the goods covered by that sign.
66      The question raised in the present case is different in so far as it involves determining whether the sign applied for is distinctive, in other words, whether it is likely to be perceived by the relevant public as providing a clear identification of the commercial or industrial origin of the goods.
67      In response to that argument, which had already been raised before it, the Board of Appeal found, in the contested decision, that, for the reasons set out in paragraphs 55 to 62 of the present judgment, the Italian-speaking part of the relevant public would establish a link between, on the one hand, the sign at issue, namely Biolatte, and, on the other hand, milk, which translates into ‘latte’ in Italian. Next, the Board of Appeal pointed out that, in its view, there was, moreover, a link between ‘latte’ and the substance called ‘acido lattico’. On the basis of those factors, it found that the sign Biolatte would not be perceived by the Italian-speaking part of the relevant public as indicating the commercial or industrial origin of the goods in question, but, in practice, would convey information to that public concerning the content of the goods in question, namely the fact that those products contained lactic acid.
68      That conclusion must be upheld for the following reasons.
69      First of all, it can be confirmed that the relevant public will associate the terms ‘latte’ and ‘acido lattico’ because they share a lexical root, namely, the root which corresponds to the letters ‘latt’, that association being made all the more likely because that root is part of many words which designate products that contain milk or milk-based products (see, by analogy, judgment of 12 July 2012, medi v OHIM (medi), T‑470/09, not published, EU:T:2012:369, paragraph 25).
70      Next, the relationship between the terms ‘latte’ and ‘acido lattico’ is not limited to the genealogy of the words, but indicates, in fact, an organic relationship, given that, in terms of its content, lactic acid is closely associated with milk. Lactic acid is obtained by transforming lactose,
the latter being, for its part, a chemical substance found mainly in milk. In practice, lactose is transformed by bacteria into lactic acid, which can then be used to manufacture various types of products, such as different kinds of dietary supplements.
71      That reasoning is disputed by the applicant, according to which there can be no link, in the mind of the relevant public, between, on the one hand, milk products and, on the other, the goods covered by the mark applied for.
72      In that regard, it should be noted that, as the applicant points out, milk and dietary supplements cannot be confused: the first being a foodstuff which is regularly consumed in households, while dietary supplements are consumed, in principle, on a less frequent basis for a specific purpose, namely for the purpose of offsetting what is perceived as a shortfall in one’s diet.
73      However, the question raised here does not concern, in general, the relationship between milk and dietary supplements, but the type of association that the Italian-speaking part of the relevant public is likely to make between the sign Biolatte and the goods designated by the mark applied for, in order to determine whether that sign is distinctive.
74      In that regard, it must be borne in mind, first, that, as stated in paragraphs 69 to 70 of the present judgment, there is a lexical and organic link between milk and lactic acid and, secondly, that the latter may be a component of the goods designated by the mark applied for.
75      On the basis of those factors, it can be confirmed, as was done by the Board of Appeal, that the Italian-speaking part of the relevant public will establish a link which is informative in nature between the sign Biolatte and the goods in question.
76      As the Board of Appeal pointed out, the relevant public, which, in the present case, has been defined as being observant and circumspect, may consider, on the basis of the factors set out above, in particular, the use of the term ‘Biolatte’ to designate the goods in question, that all or part of those products include milk or nutritional substances obtained from milk — including lactic acid.
77      Where a sign provides the relevant public with information regarding the content of the goods in question, it does not indicate their commercial or industrial origin and cannot therefore be regarded as being distinctive.
78      According to the applicant, dairy products and dietary supplements are sold in different establishments or, at the very least, are found on different shelves where they are offered for sale by the same traders. In the applicant’s view, that particular feature precludes the existence of an
association, in the mind of the relevant public, between those two types of goods.
79      In that regard, it is sufficient to note that: (i) the sale of products in different places does not preclude an association from being made by the Italian-speaking part of the relevant public between those goods and; (ii) ‘Biolatte’ must be understood as having informative content.
80      That is particularly so in the present case, where, on account of the importance of milk as part of
everyday life
in households, the word which designates it is necessarily salient in the mind of the Italian-speaking part of the relevant public, and, consequently, that term is likely to be easily associated, by that public, with all sorts of substances which are not necessarily presented for sale in the immediate vicinity of that product.
81      The applicant further points out that, in becoming trade marks, some words have been disconnected from their original meaning. Thus, the sign Apple has been registered as a trade mark to designate electronic goods whereas it normally refers to apples. To the same effect, the sign Diesel has been used to refer to clothing although it is normally associated with a type of fuel. As those two examples show, in marketing practice there is a mechanism whereby words are used (in the present case ‘latte’) to designate things which do not have an objective link
to
those words.
82      In that regard, it must be noted that the situation in the present case is different from that at issue in those examples.
83      As the applicant acknowledges, the words composing the marks, which it refers to as examples, have no connection with the goods they designate in their use as a trade mark. Thus, Apple does not, by nature, designate electronic products and Diesel does not, in principle, refer to clothing.
84      However, in the present case, as has been established in paragraphs 69 to 76 of the present judgment, the relationship between, on the one hand, the sign Biolatte and, on the other, the goods in question
is one which is informative in nature.
85      Thus, it is incorrect to claim, as the applicant does, that the mark applied for can be compared to signs which are used as a trade mark in respect of goods which are not connected to the original meaning of those signs.
86      From the considerations set out in paragraphs 68 to 85 of the present judgment, it is apparent that the Board of Appeal was right to
conclude, having regard to the goods designated by the mark applied for, that the sign Biolatte is devoid of
distinctive character for the Italian-speaking part of the relevant public, on the ground that that part of the public would understand that sign as containing a reference to the content or nature of the goods in question, which may contain lactic acid.
87      Where, in the field covered by a mark, the relevant public perceives a sign as providing information on the content or the nature of the goods or services in question, that sign falls within the scope of Article 7(1)(b) of Regulation 2017/1001 (see, to that effect, judgment of 29 April 2010,
Kerma v OHIM (BIOPIETRA), T‑586/08, not published, EU:T:2010:171, paragraph 22 and the case-law cited).
88      Consequently, the applicant’s third complaint must be dismissed.
–       Fourth complaint: the recognition acquired by the mark and the use made of it
89      By its fourth complaint, the applicant submits that the distinctive character of the mark applied for must be assessed on the basis of the reputation which that mark has acquired, the use which has been made of it and the public interest. Moreover, as the applicant is a reputable undertaking which markets quality products, it is in the public interest to enable it to pursue the marketing of the goods in question under the trade mark applied for.
90      In that regard, it should be noted that, the applicant does not indicate, in
its line of argument, either which specific ground of the contested decision it is challenging by that
complaint or what unlawfulness, in its view, vitiates that decision, in the light of the reputation allegedly acquired by the mark applied for, the use which has been made of that mark and the public interest.
91      Thus, the applicant’s fourth complaint does not satisfy the requirements of clarity and precision in order for it to be declared admissible under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court in accordance with the first paragraph of Article 53 of that statute, and Article 177(1)(d) of the Rules of Procedure of the General Court.
92      In any event, that argument must be rejected on the merits if it were to be assumed that, by putting it forward, the applicant intended to criticise the Board of Appeal for not recognising, pursuant to Article 7(3) of Regulation 2017/1001, that the sign Biolatte had acquired distinctive character through use.
93      In order to be accepted for registration, a sign must have distinctive character throughout the European Union, that requirement arising from the principle of the unitary character of the EU trade mark and being essential for the sign to be capable of performing the function of an EU trade mark in economic life. Therefore, in order for a trade mark to be registered under Article 7(3) of Regulation 2017/1001, the distinctive character acquired through use must be shown for the entire territory in which the mark at issue was devoid of any such character (see, to that effect, judgments of 30 March 2000, Ford Motor v OHIM (OPTIONS), T‑91/99, EU:T:2000:95, paragraphs 23 to 27, and of 16 March 2016, Työhönvalmennus Valma v OHIM (Shape of game chest containing wooden blocks), T‑363/15, not published, EU:T:2016:149, paragraph 35).
94      In the present case, the territory in which the sign Biolatte is devoid of any distinctive character is Italy, as the Board of Appeal noted and
as was stated in response to the first three complaints submitted by the applicant, because it is in that country that the sign, on account of it being Italian-sounding, can be interpreted as referring to the content of the goods in question.
95      However, the applicant did not submit any evidence before EUIPO that would lead to the conclusion that the Italian public was exposed to the mark at issue.
96      The documents lodged by the applicant, in the context of the application for registration lodged with EUIPO, consist of: (i) a brochure in English showing the range of Biolatte products; (ii) two advertisements for Biolatte products drawn up in Lithuanian and an advertisement for those products in Finnish; (iii) promotional material in Finnish introducing Biolatte products into Finland in 2003 and; (iv) screenshots of the applicant’s internet sites (‘www.biolatte.com’ in English, ‘www.biolatte.fi’ in Finnish and ‘www.biolatte.es’ in English) and screenshots of the internet sites of its sub-contracting parties (‘www.biotheca.ee’ in Estonian and ‘www.omnicareexpress.com’ in French).
97      Given that those documents do not concern Italy, it cannot be considered that the applicant has established that the sign Biolatte had been used in that Member State, or that it had acquired –– as regards the Italian-speaking part of the relevant public –– as a result of such hypothetical use, a distinctive character capable of compensating for the lack of distinctive character that the sign presents in respect of that part of the relevant public.
98      In those circumstances the fourth complaint must be dismissed.
The consequences of the error made by the Board of Appeal
99      In paragraph 33 of the present judgment, it was found that the Board of Appeal had erred in law in examining the distinctive character of the sign at issue in the light of the goods marketed by the applicant and not in the light of all the goods which appeared in the application for registration.
100    In the light of all the foregoing considerations, it must be held that the sign Biolatte will be understood by the Italian-speaking part of the relevant public as containing information relating to the content or nature of the goods designated by the mark applied for, which may contain lactic acid.
101    However, the fact that a sign is devoid of any distinctive character in relation to only some of the goods or services within a category listed as such in the application for registration does not preclude that application from being refused, given that, in the opposite situation, nothing would preclude its proprietor from using it also for the goods or services of the category in respect of which its registration is sought, for which it is not distinctive (see, to that effect, judgment of 15 May 2014, Louis Vuitton Malletier v OHIM, C‑97/12 P, not published, EU:C:2014:324, paragraph 94 and the case-law cited).
102    It follows that the error made by the Board of Appeal did not decisively influence the contested decision, that decision being justified to the requisite legal standard.
103    In those circumstances, since the applicant’s arguments have been rejected in their entirety, the action must be dismissed.
Costs
104    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
105    Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Biolatte Oy to pay the costs.
Pelikánová
Nihoul
Svenningsen
Delivered in open court in Luxembourg on 5 June 2019.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.