JUDGMENT OF THE GENERAL COURT (First Chamber)
12 June 2018 (*)
(EU trade mark — Application for the EU figurative mark Blue — Absolute ground for refusal — Descriptive character — No distinctive character — Article 7(1)(c) and (2) of Regulation (EC) No 207/2009 (now Article 7(1)(c) and (2) of Regulation (EU) 2017/1001) — Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001))
In Case T‑375/17,
Klaudia Patricia Fenyves, residing in Hevesvezekény (Hungary), represented by I. Monteiro Alves, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 27 March 2017 (Case R 1974/2016-5), relating to an application for registration of the figurative sign Blue as an EU trade mark,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius and U. Öberg (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 June 2017,
having regard to the response lodged at the Court Registry on 5 October 2017,
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 31 March 2016 the applicant, Ms Klaudia Patricia Fenvyes, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Classes 32, 35 and 41 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:
–        Class 32: ‘Soft drinks; Non-alcoholic beverages’;
–        Class 35: ‘Advertising’;
–        Class 41: ‘Entertainment services; Organising events for entertainment purposes; Organisation of shows; Music concerts’.
4        By decision of 1 September 2016, the examiner rejected the application for registration of the mark applied for, on the basis of Article 7(1)(b) and (c), read in conjunction with Article 7(2) of Regulation No 207/2009 (now, respectively, Article 7(1)(b) and (c) and Article 7(2) of Regulation 2017/1001), for the goods in Class 32.
5        On 31 October 2016 the applicant filed a notice of appeal against that decision with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).
6        On 9 December 2016 the scope of the list of goods in Class 32 was restricted, at the applicant’s request, to ‘Soft drinks and non-alcoholic beverages, with the exception of energy drinks and isotonic sports drinks’.
7        By decision of 27 March 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First, it confirmed that the sign applied for was descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation, having regard to its sufficiently close link with the goods in Class 32. In that regard, the Board first of all found that the relevant public consists of average consumers, who are reasonably well informed, observant and circumspect, in the English-speaking territory of the European Union. Next, it stated that the word element ‘blue’ of the mark applied for is a basic English word, conveying a clear and distinct concept from the point of view of the relevant public. Since the blue colour of ‘soft drinks and non-alcoholic beverages’ cannot be regarded as an insignificant characteristic of those goods, and colours are important for consumer choice, the Board of Appeal decided that it was objectively necessary to maintain the availability of the descriptive word ‘blue’. The Board of Appeal added that the consumer would perceive the sign applied for as a mere immediate and direct reference to one of the characteristics of the goods concerned, namely as indicating that the drinks in question are blue. Second, the Board of Appeal considered that the mark applied for is inherently devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. The Board took the view, in particular, after recalling the descriptive character of the word element ‘blue’, that the figurative elements of the mark applied for are banal and commonplace, with the result that they are not sufficient to divert the consumer’s attention from the descriptive meaning of the sign, nor are they likely to leave a lasting impression of the mark in the mind of the consumer. The Board of Appeal concluded that the sign applied for is not perceived as an indication of the commercial origin of the goods and is therefore devoid of any distinctive character.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        refer the trade mark application back to EUIPO to proceed to registration;
–        order EUIPO to pay the costs, including those incurred in the proceedings conducted before the Board of Appeal.
9        EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
10      In support of its action, the applicant relies, in essence, on two pleas in law:
first, infringement of Article 7(1)(c), read in conjunction with Article 7(2) of Regulation No 207/2009, and, second, infringement of Article 7(1)(b) of Regulation No 207/2009.
First plea: infringement of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 7(2) of Regulation No 207/2009
11      The applicant submits, in essence, that the Board of Appeal was wrong to consider the word element of the mark applied for as descriptive and its figurative elements, in particular the typeface, the colour blue, the white contour and the diagonal position of the letters of the word element, as banal and commonplace.
12      EUIPO disputes the applicant’s arguments.
13      Article 7(1)(c) of Regulation No 207/2009 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.
14      Moreover, signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to make the same choice, when making a subsequent acquisition, if the experience has proved positive, or to make another choice, if it has proved negative (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30; see, also, judgment of 12 June 2007, MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, not published, EU:T:2007:172, paragraph 27 and the case-law cited).
15      It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, 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 judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16 and the case-law cited).
16      The issue whether a sign is descriptive may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (see judgment of 7 June 2005, Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 26 and the case-law cited).
17      Those considerations must guide the Court in its examination of the applicant’s argument that the mark applied for is not descriptive.
The relevant public
18      As regards the relevant public, it should be noted that the applicant does not dispute the Board of Appeal’s finding in paragraphs 16 and 17 of the contested decision, that the relevant public is the general public in the English-speaking territory of the European Union, since the word element of the mark applied for is an English word. It follows from Article 7(2) of Regulation No 207/2009 that the registration of a mark must be refused even if the absolute grounds for refusal exist only in part of the European Union. That finding of the Board of Appeal must be endorsed.
19      On the other hand, the applicant disputes the Board of Appeal’s finding, in paragraph 19 of the contested decision, that the word sign ‘blue’ is immediately understood by the relevant public as a reference to the colour blue. The applicant submits that, contrary to what is stated in the contested decision, the relevant public is not composed of average consumers who are unobservant or unaware, but of consumers who are reasonably well informed, observant and circumspect.
20      However, as rightly pointed out by EUIPO, the Board of Appeal expressly concluded, in paragraph 16 of the contested decision, that the level of attention of the relevant public is that of the average consumer, reasonably well informed, observant and circumspect.
21      Consequently, the applicant’s arguments in that regard must be rejected.
Whether the mark applied for is descriptive
22      At the outset, it should be borne in mind that, according to settled case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31, and of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 62).
23      In the present case, it should be noted that the contested sign is composed of the word element ‘blue’ and a number of figurative elements, namely the typeface, the colour blue with a white contour and the diagonal position of the letters of the word element.
24      As regards the word element ‘blue’, having established that it is a basic English word, conveying a clear and distinct concept from the point of view of the relevant public, the Board of Appeal took the view, in paragraph 19 of the contested decision, that the relevant consumer will, immediately and without any mental effort, understand the content of the mark as referring to the colour blue.
25      The Board of Appeal added that it is well known, in the ‘soft drinks and non-alcoholic beverages’ sector covered in Class 32, to distinguish beverages on the basis of a specific colour, so that the word ‘blue’ is descriptive of a non-negligible characteristic of the goods in question. The Board of Appeal continued by recalling, in paragraph 22 of the contested decision, the need to preserve the availability of a descriptive word such as ‘blue’, so that other undertakings can use it to describe their soft drinks and alcohol-free beverages, even where that element describes a minor characteristic of those goods.
26      The applicant submits that there is no such thing as a blue drink, or any flavour that can be associated with the colour blue, so that consumers will not perceive the contested sign as describing a characteristic of soft drinks and non-alcoholic beverages. The applicant relies on examples in the EUIPO guidelines (such as ‘blue’ for cheese and ‘green’ for tea) in order to argue that descriptive colour names that cannot be registered designate a specific kind of product corresponding to that colour, which is not the case here. In support of its argument, the applicant submits that the element ‘blue’ was registered as an EU word mark under number 014397764.
27      EUIPO disputes the applicant’s arguments. According to EUIPO, the research carried out by the examiner on the internet reinforces the finding that the colour blue is a non-negligible feature of soft drinks and non-alcoholic beverages and can be associated with a particular flavour. As regards the registration of the word mark Blue under number 014397764, EUIPO points out, in essence, that the legality of decisions must be assessed on the basis of Regulation No 207/2009, and that no person may rely, in support of his claim, on an unlawful act committed in favour of a third party.
28      First, it must be borne in mind that, in order for EUIPO to refuse registration under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use, at the time of the application for registration, in order to describe goods or services such as those in relation to which the application is filed, or characteristics of those goods or services. It is sufficient, as the very wording of that provision indicates, that such signs and indications might be used for such purposes. A word sign must therefore be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32; see, also, judgment of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 20 and the case-law cited, and, by analogy, judgments of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 97, and of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 38).
29      It is therefore necessary to consider, on the basis of a given meaning of the word sign at issue, whether, from the viewpoint of the target public, there is a sufficiently direct and specific relationship between the word element ‘blue’ and the goods in Class 32 ‘Soft drinks and non-alcoholic beverages, with the exception of energy drinks and isotonic sports drinks’ in respect of which registration was sought (see, to that effect, judgment of 12 June 2007, LOKTHREAD, T‑339/05, not published, EU:T:2007:172, paragraph 42 and the case-law cited).
30      First of all, as regards the meaning of the word element ‘blue’, it is clear that that word will naturally be understood by the English-speaking public of the European Union, immediately and without further thought, as referring to the colour blue.
31      Next, as regards the nature of the relationship between the sign at issue and the goods in question, it is common knowledge that terms referring to a colour may be used in order to designate goods in the beverages sector, including non-alcoholic beverages (see, to that effect, judgment of 28 April 2016, Gervais Danone v EUIPO — Mahou (B’lue), T‑803/14, not published, EU:T:2016:251, paragraph 28).
32      As EUIPO correctly states, it is not unknown that manufacturers, in order to increase their commercial success, distinguish their beverages on the basis of their colour and that there are many examples of blue-coloured drinks, and consequently that colour may reasonably be perceived as a significant characteristic of the goods in question, that is likely to be important in consumer choice.
33      Therefore, the word element ‘blue’ is descriptive in so far as such a reference to the colour blue refers to the visual aspect of the goods in Class 32 covered by the mark applied for.
34      Second, it must be assessed whether the figurative elements of the mark applied for, namely the typeface, colours and position of the letters of the word element, change, from the point of view of the relevant public, the meaning of the mark applied for in relation to the goods concerned (see, to that effect, judgment of 10 September 2015, Laverana v OHIM (BIO PROTEINREICHER PFLANZENKOMPLEX AUS EIGENER HERSTELLUNG), T‑571/14, not published, EU:T:2015:626, paragraph 20). Therefore, it is necessary to examine whether, from the perspective of reasonably attentive average consumers, the effect of those figurative elements is that the mark applied for can diverge from the mere perception of the word element used and, accordingly, that its descriptive character can be called into question (see, to that effect, judgment of 12 May 2016, GRE v EUIPO (Mark1), T‑32/15, EU:T:2016:287, paragraph 35 and the case-law cited).
35      In the present case, the figurative elements, as such, have no element that is visually eye-catching or likely to be remembered by the relevant public. As rightly pointed out by the Board of Appeal, the figurative elements do not divert the consumer’s attention from the descriptive element of the mark applied for, but on the contrary, amplify that descriptive character by using the colour blue.
36      It must be pointed out that the slightly rounded typeface and the diagonal letters of the word element are not likely to draw the relevant public’s attention, while the colours used, the blue and the white contour, are ordinary colours.
37      Therefore, the figurative elements of the mark applied for are not, due to the typeface, or the colours, or the diagonal position, particularly complex and are not able to offset or modify the descriptive character of the word element of the mark applied for in relation to the goods covered by that mark. The Board of Appeal thus correctly took the view that the graphic representation of the mark applied for is not sufficient to distract the relevant public from the descriptive message conveyed by that word element.
38      Registration of the word mark Blue under number 014397764 and the various examples referred to by the applicant in support of its arguments cannot call that conclusion into question.
39      It should be noted that, in the light of the principles of equal treatment and of sound administration, it has indeed been held that EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74).
40      However, those principles must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else or himself (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76).
41      Moreover, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77).
42      In the present case, the examination set out in paragraphs 30 to 37 above showed that, first, the word element ‘blue’ in the mark applied for is descriptive in so far as it refers to the visual aspect of the goods in Class 32 covered by the mark applied for and, second, the figurative elements do not distract the public’s attention from the descriptive message conveyed by that word element.
43      Consequently, it is appropriate to uphold the Board of Appeal’s conclusion that, as regards soft drinks and alcohol-free beverages, the contested mark is descriptive.
Second plea: infringement of Article 7(1)(b) of Regulation No 207/2009
44      The applicant claims, in essence, that the Board of Appeal was wrong to hold that the mark applied for was devoid of any distinctive character for the purpose of Article 7(1)(b) of Regulation No 207/2009.
45      As is evident from Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal applies in order for the sign not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).
46      In the present case, it is apparent from the examination carried out in paragraphs 28 to 43 above that the sign submitted for registration is descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009 and that that ground alone justifies refusal of the contested registration, with the result that there is no need, in any event, to examine the merits of the plea alleging breach of Article 7(1)(b) of that regulation (see, to that effect, order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28).
47      The second plea must therefore be rejected and consequently the action must be dismissed in its entirety.
Costs
48      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.
49      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Ms Klaudia Patricia Fenyves to pay the costs.
Pelikánová
Valančius
Öberg
Delivered in open court in Luxembourg on 12 June 2018.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.