ORDER OF THE GENERAL COURT (Eighth Chamber)
26 February 2024 (*)
(EU trade mark – Invalidity proceedings – Figurative EU mark MATE MATE – Absolute ground for invalidity – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law)
In Case T‑505/23,
Thomas Henry GmbH,
established in Berlin (Germany), represented by O. Spieker, D. Mienert, J. Si-Ha Selbmann and K. Uzman, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Shanghai Chengzhi Enterprise Service Center, established in Shanghai (China),
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere (Rapporteur) and D. Petrlík, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Thomas Henry GmbH, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2023 (Case R 2364/2022-4) (‘the contested decision’).
Background to the dispute
2        On 5 July 2019, the applicant obtained from EUIPO the registration, following an application submitted on 14 February 2019, of the following figurative mark (‘the contested mark’), registered under Number 18022875:
3        The goods in respect of which the contested mark was registered are in, inter alia, Class 32 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: ‘Beers; mineral water [beverages]; aerated water; fruit drinks; juices; syrups for making beverages; preparations for making beverages; non-alcoholic beverages; non-alcoholic beverages, in particular being based on mate; cola; caffeinated beverages; energy drinks containing caffeine; energy drinks; energy drinks [not for medical purposes]; fermented non-alcoholic beverages’.
4        On 13 September 2021, Shanghai Chengzhi Enterprise Service Center filed an application for a declaration of invalidity of the contested mark with EUIPO in respect of all the goods referred to in paragraph 3 above, under Article 59(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 7(1)(b), (c) and (g) and Article 7(2) of that regulation.
5        By decision of 30 September 2022, the Cancellation Division upheld the application for a declaration of invalidity in respect of all the goods referred to in paragraph 3 above.
6        On 29 November 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7        By the contested decision, the Board of Appeal dismissed the appeal. It held that, for the German-speaking and Spanish-speaking public, the contested mark was descriptive of the goods in Class 32 referred to in paragraph 3 above for the purposes of Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
9        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs if a hearing is convened.
Law
10      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
11      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give a decision without taking any further steps in the proceedings, notwithstanding that one of the parties has requested a hearing (order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraph 13).
12      In support of its action, the applicant raises, in essence, three pleas, alleging, first, failure to suspend proceedings, second, infringement of the obligation to state reasons and, third, infringement of Article 7(1)(c) of Regulation 2017/1001.
The first plea in law, alleging failure to suspend proceedings
13      The applicant states that it argued before the Board of Appeal that a decision of EUIPO, relating to another mark of which it is the proprietor, concerned the interpretation of the term ‘mate’, was currently the subject of an action before the Court and was liable to be annulled. The Board of Appeal’s refusal to suspend the proceedings constitutes a ‘misuse of authority’ and is unsubstantiated.
14      As the Board of Appeal stated in the contested decision, the applicant refers to the proceedings relating to the application for the EU word mark MATE MATE, which was the subject of the decision of the First Board of Appeal of 12 May 2022 (Case R 406/2021-1). The action brought by the applicant against that decision was dismissed by the Court in its order of 31 March 2023, Thomas Henry v EUIPO (MATE MATE) (T‑482/22, not published, EU:T:2023:185).
15      In the contested decision, the Board of Appeal observed that the Cancellation Division had examined the descriptive character of the contested mark in the light of the particular circumstances of the case, not merely on the basis of the decision of the First Board of Appeal in Case R 406/2021-1. It added that, since the Court had confirmed that decision in its order of 31 March 2023, MATE MATE (T‑482/22, not published, EU:T:2023:185), there was no need to suspend the proceedings.
16      It follows that, on the date when the contested decision was adopted, the ground for suspension relied on by the applicant was no longer valid and the Board of Appeal gave sufficient reasons for refusing to suspend the proceedings.
17      Accordingly, the first plea must be rejected as being manifestly unfounded.
18      Moreover, in the application, the applicant requested suspension of the present proceedings on the same ground.
19      By decision of 17 October 2023, the President of the Eighth Chamber refused that request for suspension. It is sufficient to point out that, by order of 11 October 2023, Thomas Henry v EUIPO (C‑342/23 P, not published, EU:C:2023:761), the Court of Justice did not allow the applicant’s appeal against the order of 31 March 2023, MATE MATE (T‑482/22, not published, EU:T:2023:185), to proceed and, therefore, the decision of the First Board of Appeal in Case R 406/2021-1 became final.
The second plea in law, alleging infringement of the obligation to state reasons
20      In accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
21      In the first place, the applicant submits that the Board of Appeal did not state clearly whether, in order to assess the descriptive character of the contested mark, it had conducted its analysis in relation to the relevant time, that is, the date when the application for registration of that mark was lodged, nor did it state whether its interpretation of the word ‘mate’ pertained to that date or to a subsequent date. The Board of Appeal therefore did not show that the contested mark was descriptive at the relevant time.
22      It is sufficient to note that that argument is manifestly unfounded. In the contested decision, the Board of Appeal stated that the relevant time for the purpose of assessing the descriptive character of the contested mark was the date on which the application for registration was lodged, that is, 14 February 2019. It also found that the contested mark was descriptive on the date on which the application for registration was lodged. The applicant does not put forward any evidence which could lead to the assumption that the Board of Appeal conducted its assessment of the descriptive character of the contested mark in relation to a different date.
23      In any event, that argument is also ineffective in so far as the applicant does not claim that the meaning of the word ‘mate’ evolved over time and that the assessment of the descriptive character of the contested mark is different depending on the date taken into account.
24      In the second place, the applicant recalls that, regarding the assessment of an absolute ground for refusal, a general statement of reasons is possible only in respect of goods forming a sufficiently homogeneous category. It submits that the Board of Appeal did not explain why the goods in question formed a homogeneous group, while the description of some of those goods does not state that they contain yerba mate, but other ingredients such as caffeine. The reasons given for the homogeneity of the group of goods in question which do not contain yerba mate are not sufficient.
25      In the contested decision, the Board of Appeal considered that, with regard to the ‘non-alcoholic beverages, in particular being based on mate’, given the express reference to mate, the contested mark was clearly descriptive. It observed that, because of their nature, all the other goods in question, as beverages or preparations for making beverages, may also contain mate as an ingredient. It stated that, since mate has a high caffeine content, it is also suitable as an energy drink or as a caffeine base for some of the goods in question. It also noted that mate is a popular flavour for various beverages and that, for example, mate is mixed with alcoholic or non-alcoholic craft beer, which is popular and in demand for its euphoric, antioxidant and invigorating effects.
26      It must be recalled that, according to the case-law, first, the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services for which registration of a mark is sought and, second, that the decision by which the competent authority refuses registration of a mark must, in principle, state reasons in respect of each of those goods or services. However, as regards that last requirement, the competent authority may use only general reasoning for all of the goods and services concerned where the same ground for refusal is given for a category or group of goods or services. Such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 29 to 31 and the case-law cited).
27      In addition, the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant for the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 33).
28      The Board of Appeal’s reasoning is sufficient to understand that the goods in question, except for those whose description states expressly that they contain mate, constitute a homogeneous group defined according to common characteristics relevant for the analysis of the descriptive character of the contested mark, that is, that they are beverages or preparations for making beverages liable to contain mate as an ingredient.
29      In addition, contrary to what the applicant appears to claim, the determination of a homogeneous category of goods must not be carried out only in relation to the description of the goods in respect of which the contested mark has been registered. Accordingly, in order to determine common characteristics of the goods in question, the fact that the description of some of those goods does not specify that they contain mate is irrelevant.
30      Accordingly, the second plea must be rejected as being manifestly unfounded.
The third plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
31      The applicant submits that the Board of Appeal erred in finding that the contested mark was, for the purposes of Article 7(1)(c) of Regulation 2017/1001, descriptive of the goods in question.
32      Article 7(1)(c) of Regulation 2017/1001 provides that 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. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
33      For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, 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 in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
34      The distinctiveness of a sign may only be assessed, first, in relation to the goods or services concerned and, second, in relation to the understanding of the sign by the relevant public (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
35      In the contested decision, the Board of Appeal held that the relevant public consisted of the German-speaking and Spanish-speaking general public, given that the repeated word element ‘mate’ had a meaning for that public. The applicant does not dispute that assessment.
36      In the contested decision, the Board of Appeal observed that the contested mark consisted of the word elements ‘mate’ and ‘mate’, placed on two lines and stylised in bold black lettering, surrounded by a stylised label with two small stars, one above and one below the word elements. It stated that the word ‘mate’ was a German and Spanish term and that, according to a German dictionary, it designated, inter alia, ‘a tea prepared from the toasted, caffeine leaves of the Mateplant’ and, according to a Spanish dictionary, ‘infusion from yerba-mate, which is normally taken on its own and is occasionally accompanied by medical or aromatic herbs’. It considered that those meanings of the word ‘mate’ were ordinary and unambiguous.
37      It observed that the applicant did not call those meanings into question and found that the word ‘mate’ would be understood by the German-speaking or Spanish-speaking public as referring to mate, namely a kind of tea or infusion prepared with yerba mate or an ingredient used in the preparation of certain drinks.
38      The Board of Appeal considered that, given the clear meaning of the repeated word element ‘mate’, the contested mark, in relation to the goods in question – which are all beer, non-alcoholic beverages and energy drinks – was understood as referring to the fact that those goods are either yerba mate (a kind of tea or infusion prepared with yerba mate) or yerba mate based (yerba mate being used as an ingredient in the preparation of all those beverages and energy drinks).
39      The Board of Appeal found that the contested mark was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 in respect of all the goods in question, as it designated one of their characteristics, namely that they were mate or contained mate as an ingredient. It observed that that message is plain, direct and explicit, describing the kind of goods in question. It added that the combination of the repeated word element ‘mate’ and the stylisation of the sign did not create an impression sufficiently far removed from the impression that would be created by the word elements separately.
40      The applicant’s arguments are manifestly not capable of calling into question the Board of Appeal’s assessment.
41      First, the applicant submits that the Board of Appeal failed to take account of the syntactic and semantic nuances created by the sign MATE MATE. The word ‘mate’ has several meanings in various languages, English in particular, and its repetition creates an original and identifiable sign.
42      In that regard, it must be borne in mind that, according to the case-law, a word sign must be refused registration under Article 7(1)(c) of Regulation 2017/1001 if at least one of its possible meanings designates a characteristic of the goods or services in question (see order of 31 March 2023, MATE MATE, T‑482/22, not published, EU:T:2023:185, paragraph 21 and the case-law cited).
43      As the Court has previously held, inasmuch as the applicant does not dispute that the word ‘mate’ may designate, in German and in Spanish, an ingredient derived from a yerba mate infusion used in preparing beverages, its arguments that that word could have other meanings are ineffective (order of 31 March 2023, MATE MATE, T‑482/22, not published, EU:T:2023:185, paragraph 22).
44      In addition, the Court observed that the word sign MATE MATE did not contain any original or unusual grammatical structures which allows it to be perceived in any other way than a mere repetition of the same word or to be understood as having a particular meaning or constituting a play on words. Inasmuch as the relevant German-speaking or Spanish-speaking public understands the word ‘mate’ in relation to the goods and services in question as meaning ‘mate’, the sign applied for will be understood as a mere repetition of that word (order of 31 March 2023, MATE MATE, T‑482/22, not published, EU:T:2023:185, paragraph 30).
45      Second, the applicant maintains that the Board of Appeal has not sufficiently demonstrated that the word ‘mate’ will be understood as meaning that the goods in question are either yerba mate or contain yerba mate. According to the applicant, the Board of Appeal ignored its argument that the goods in question, save for ‘non-alcoholic beverages, in particular being based on mate’, have no connection to the yerba mate plant or any other tea plant. It submits that the sign MATE MATE does not describe clearly and directly the kind, that is, the nature itself, of the goods in question, or their quality, meaning superior quality. The fact that the sign is, at most, suitable to describe the essential characteristics of the goods in question in a vague and abstract manner is not sufficient to render it descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001.
46      The Court has previously held that the word sign MATE MATE will be understood immediately by the relevant public as referring to mate, that is, a kind of tea or infusion prepared with yerba mate or an ingredient for the preparation of certain beverages (order of 31 March 2023, MATE MATE, T‑482/22, not published, EU:T:2023:185, paragraph 46).
47      The applicant does not dispute that mate is an ingredient which may be used in the composition of certain beverages.
48      In that connection, as EUIPO observes, the applicant’s argument that certain goods contain caffeine, not mate, must be rejected, in so far as it is common knowledge that yerba mate contains caffeine.
49      The Board of Appeal was therefore correct to find that, in relation to the goods in question, the word element ‘mate mate’ contained a plain and explicit message, that is, that those goods were beverages or preparations for making beverages containing mate as an ingredient.
50      Contrary to the applicant’s claim, it is not necessary, in order for a sign to be considered descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001, for it to designate the nature itself or quality of the goods in question. It is sufficient that the relevant public perceives it immediately and without further thought as describing one of the characteristics of the goods (order of 31 March 2023, MATE MATE, T‑482/22, not published, EU:T:2023:185, paragraph 47), that is, that the goods are beverages containing or liable to contain mate.
51      Moreover, in so far as the applicant criticises the Board of Appeal for having disregarded that the description of the goods in Class 32 in respect of which the contested mark was registered, save for ‘non-alcoholic beverages, in particular being based on mate’, does not specify that they contain mate and that the contested mark cannot therefore be descriptive of a characteristic of those goods, the Court observes that the contested mark was registered in respect of categories of beverages or preparations for making beverages, defined broadly and which may include beverages containing mate.
52      In that respect, it is sufficient to recall that, according to settled case-law, the finding that a mark has descriptive character applies not only to goods for which it is directly descriptive, but also to the more general category to which those goods belong in the absence of a suitable restriction of the trade mark by the applicant (see judgment of 21 November 2018, PepsiCo v EUIPO – Intersnack Group (Exxtra Deep), T‑82/17, EU:T:2018:814, paragraph 43 and the case-law cited). Moreover, the fact that a sign is descriptive for only some of the goods and services within a category listed as such in the application for registration does not preclude that sign being refused registration. If in such a case the sign in question was registered as an EU trade mark for the category covered, nothing would prevent its proprietor from using the mark also for goods and services in that category for which it is descriptive (see judgment of 22 June 2017, Biogena Naturprodukte v EUIPO (ZUM wohl), T‑236/16, EU:T:2017:416, paragraph 58 and the case-law cited).
53      Third, the applicant submits that the Board of Appeal failed to take sufficient account of the graphic elements of the contested mark. It is of the view that the graphic design of the contested mark is sufficiently original not to be merely ornamental. It states that the word elements are placed on two lines and in a specific typeface, that the shape of the sign depicts a star and evokes a military insignia, that, due to its horizontal and vertical axial symmetry, the sign gives a structured impression and that the resulting illusion is of a three-dimensional sign.
54      In the contested decision, the Board of Appeal observed that the stylisation of the word elements ‘mate mate’ was minimal and simple, that the shape of the surrounding label was merely decorative and commonplace and that the stars above and below the verbal elements were ornamental. It considered that the combination of the repeated word element ‘mate’ and the stylisation of the sign did not create an impression sufficiently far removed from the impression that would be created by the word elements separately. It concluded that the relevant public will immediately and without intellectual effort recognise in the contested mark a reference to the mate plant and thus a characteristic of beer, non-alcoholic beverages and energy drinks.
55      As regards marks composed of several word and figurative elements, it must be borne in mind that, in order to assess the descriptive character of a composite mark, not only must the various elements of which it is composed be examined but also the mark as a whole, so that such an assessment must be based on the overall perception of that trade mark by the relevant public (see judgment of 5 November 2019, APEDA v EUIPO – Burraq Travel & Tours General Tourism Office (SIR BASMATI RICE), T‑361/18, not published, EU:T:2019:777, paragraph 36 and the case-law cited; see also, to that effect, judgment of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraphs 41 and 42).
56      It is apparent from the contested decision that, contrary to the applicant’s claim, the Board of Appeal took account of the graphic depiction of the contested mark in its assessment of its descriptive character.
57      Moreover, the applicant merely claims that the graphic elements of the contested mark are original and contribute to the distinctive character of the contested mark. However, it does not raise any argument to establish that the graphic elements are such as to give rise to uncertainty regarding the meaning of the word element ‘mate mate’ or to divert the relevant public’s perception from its message, which is descriptive of the goods in question.
58      Fourth, the applicant criticises, in essence, the Board of Appeal for having failed to take account of another registered EU mark, which indicates that the contested mark is capable of being registered.
59      In that regard, the Board of Appeal noted that the applicant had referred to the figurative EU mark MATE MATE Authentic Flavour, registered in 2017, stating that, first, the fact that the mark had been registered did not prevent it from being subsequently declared invalid and, second, it contained other figurative elements, which are not present in the contested mark. It also recalled that, in any event, according to the case-law, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU Courts, not on the basis of previous decision-making practice, and that it was not bound by decisions of lower-ranking adjudicating bodies of EUIPO.
60      It is sufficient to state that the applicant does not raise any argument to call into question that assessment of the Board of Appeal and that it does not explain how that other mark is relevant for the assessment of the descriptive character of the contested mark.
61      Accordingly, the third plea must be rejected as being manifestly unfounded.
62      It follows from all of the foregoing that the action must be dismissed as manifestly lacking any foundation in law.
Costs
63      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.
64      Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was convened, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Each party shall bear its own costs.
Luxembourg, 26 February 2024.
V. Di Bucci
A. Kornezov
Registrar
President
*      Language of the case: English.