JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
5 March 2025 (*)
( EU trade mark – International registration designating the European Union – Figurative mark EAST INDIES GIN – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001 )
In Case T‑73/24,
Victor Waskito Purwana, residing in Petojo Utara (Indonesia), represented by N. Scholz-Recht, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,
defendant,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse (Rapporteur) and I. Dimitrakopoulos, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the withdrawal by the applicant of his request for a hearing 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
1        By his action under Article 263 TFEU, the applicant, Mr Victor Waskito Purwana, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 November 2023 (Case R 1927/2023-2) (‘the contested decision’).
Background to the dispute
2        On 21 October 2022, the applicant obtained from the International Bureau of the World Intellectual Property Organization (WIPO) international registration No 1 709 139 designating the European Union in respect of the following figurative sign:
3        The goods in respect of which protection in the European Union was sought are in Class 33 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: ‘Alcoholic beverages; distilled alcoholic beverages; whisky; brandy; vodka; rum; gin; liqueurs; wine; white wines; sake; alcoholic cider and alcoholic cocktail mixes (except beer)’.
4        On 26 January 2023, EUIPO received notification of the international registration at issue, pursuant to the fourth sentence of Article 3(4) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22), as amended on 12 November 2007.
5        On 1 March 2023, the EUIPO examiner issued a notification of provisional refusal of registration of the mark applied for.
6        By decision of 13 July 2023, following observations on the provisional refusal submitted by the applicant on 14 April 2023, the examiner refused registration of the mark applied for, pursuant to Article 7(1)(b), (c) and (g) 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(2) of that regulation.
7        On 11 September 2023, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
8        By the contested decision, the Board of Appeal dismissed the appeal on the ground that registration of the mark applied for fell within the scope of the prohibition laid down in Article 7(1)(c) and (g) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. First, according to the Board of Appeal, there was a sufficiently direct and specific relationship between the mark applied for and the goods at issue for the English-speaking public to perceive that mark as descriptive of the geographical origin of those goods. Second, in the Board of Appeal’s view, that mark was partially deceptive.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs incurred by the applicant.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
Law
11      The applicant relies on two pleas in law, the first alleging infringement of Article 7(1)(c) and Article 7(2) of Regulation 2017/1001, read in conjunction with Article 95(1) of that regulation, and the second alleging infringement of Article 7(1)(g) of Regulation 2017/1001, read in conjunction with Article 95(1) of that regulation.
The first plea in law, alleging infringement of Article 7(1)(c) and Article 7(2) of Regulation 2017/1001, read in conjunction with Article 95(1) of that regulation
12      Under Article 7(1)(c) of Regulation 2017/1001, 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. Pursuant to 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.
13      Those signs or indications 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 which it designates (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
14      In order for a sign to fall within the scope of 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 or services which it designates to enable the relevant public immediately to perceive, without further thought, a description of the goods and services or of 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).
15      A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
16      It is in the light of those considerations that the applicant’s line of argument must be examined, having regard to the Board of Appeal’s assessment in the contested decision.
17      In the contested decision, the Board of Appeal noted that the relevant public consisted of the general public and that it would limit its examination to the perception of the mark applied for by the Irish and Maltese public. According to the Board of Appeal, that mark fell within the scope of the prohibition laid down in Article 7(1)(c) and Article 7(2) of Regulation 2017/1001. In that regard, it stated that the relevant public would understand the word element of the mark, namely the expression ‘east indies gin’, to mean ‘gin coming from the Malay Archipelago, gin being a strong colourless alcoholic drink made from grain and juniper berries’. Having noted that that expression was not syntactically unusual and contained no element of fancifulness, the Board of Appeal concluded that the mark applied for would be perceived as descriptive of the geographical origin of the goods at issue, namely the Malay Archipelago. Furthermore, according to the Board of Appeal, the figurative elements of that mark did not deprive it of its descriptive nature, since, first, the rather standard typeface used did not deviate substantially from the typefaces usually found on the alcoholic drinks market and, second, the additional figurative elements would be perceived as mere decorative elements.
18      By his first plea in law, the applicant submits that the Board of Appeal erred in finding that the mark applied for was descriptive.
19      The applicant complains that the Board of Appeal did not rely on any facts or evidence in order to find that the font and style of lettering used for the mark applied for did not confer on that mark the necessary minimum degree of distinctive character and that the other figurative elements of that mark would be perceived as mere decorative elements. Therefore, according to the applicant, either the contested decision is based on facts the accuracy of which has not been expressly established, which constitutes an infringement of Article 95(1) of Regulation 2017/1001, or that decision is based on well-known facts, which are inaccurate.
20      In that regard, the applicant produces in Annex A.5 to the application photographs of four bottles of gin marketed in the territory of the European Union. According to the applicant, first, the labels of three of those bottles contain figurative elements resembling berries, leaves and twigs of juniper. Those figurative elements differ significantly from those of the mark applied for, which rather resemble feathers. Therefore, it is possible that the relevant public is accustomed to seeing stylised botanical objects on gin bottles as mere decorative elements. The relevant public would therefore perceive the feathers of the mark applied for differently. Second, in the applicant’s view, all the marks reproduced in Annex A.5 to the application use a standard font or scripted lettering, whereas the mark applied for evokes a text printed on an old printing press and contains spikes and wave-shaped horizontal elements. Lastly, the applicant points out that, for goods other than gin covered by the mark applied for, the word ‘gin’ has no descriptive meaning. He infers from this that the Board of Appeal did not consider that the expression ‘east indies gin’ was descriptive of those other goods and, consequently, that the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001.
21      EUIPO disputes the applicant’s line of argument.
22      As a preliminary point, first, it should be noted that the applicant’s assertion that the Board of Appeal found that the mark applied for was descriptive as regards gin, but not as regards the other goods covered by that mark, is based on a misreading of the contested decision.
23      It must be noted that the Board of Appeal found, in paragraph 28 of the contested decision, that the word element ‘east indies gin’ was descriptive of the geographical origin of the ‘goods’ in general, and not only of gin. It must also be noted that, in paragraph 29 of the contested decision, the Board of Appeal stated that the relationship between the mark applied for and ‘the goods in question’ was sufficiently direct and specific for that mark to be perceived as providing information on the geographical origin of the ‘goods’ as a whole. Lastly, it must be noted that, while, in paragraphs 40, 41 and 42 of the contested decision, the Board of Appeal took the view that the mark applied for conveyed a ‘partially deceptive’ message and had a ‘partially deceptive’ meaning, it nevertheless found that that message and that meaning were ‘descriptive’, without limiting the scope of that finding.
24      It follows from the foregoing that the refusal to register the mark applied for pursuant to Article 7(1)(c) of Regulation 2017/1001 extended to all of the goods covered by that mark.
25      Second, it should be pointed out that the applicant does not dispute either the Board of Appeal’s finding, in paragraphs 26 and 27 of the contested decision, that the relevant public consisted of the general public, or the Board of Appeal’s decision to limit its examination to the perception of the mark applied for by the Irish and Maltese public.
26      Nor, as EUIPO submits, does the applicant dispute the Board of Appeal’s finding, set out in paragraphs 28 and 29 of the contested decision, that the word element of the mark applied for, namely the expression ‘east indies gin’, would be understood as meaning ‘gin coming from the Malay Archipelago, gin being a strong colourless alcoholic drink made from grain and juniper berries’ and as providing information that the goods at issue come from the Malay Archipelago.
27      Lastly, the applicant does not dispute that the declaration of conflict with Article 7(1)(c) of Regulation 2017/1001 extended to all the goods covered by the mark applied for.
28      By contrast, the applicant disputes the Board of Appeal’s findings, set out in paragraphs 38 and 39 of the contested decision, that, first, the font and the style of lettering of the mark applied for were rather standard and did not confer on it the necessary minimum distinctive character and, second, the other figurative elements of that mark, namely the elements which, according to the applicant, resemble feathers, would be perceived simply as decorative elements.
29      In that regard, it should be noted, first, that if, as the applicant submits, the fonts used for the marks produced in Annex A.5 to the application are standard fonts, the same is true of the font used for the mark applied for. Neither the shape of the letters of that mark nor their colour, black on a white background, are particularly eye-catching. Furthermore, the small spikes added to the lettering and the small waves replacing the horizontal bar of the letters ‘e’ and ‘a’ remain discreet and, therefore, the stylisation of lettering of the mark applied for is only slight.
30      Accordingly, without it being necessary to rule on the admissibility of Annex A.5 to the application, which is disputed by EUIPO, it must be held that the applicant has not shown that the Board of Appeal erred in finding, in paragraphs 38 and 39 of the contested decision, that the typeface used for the mark applied for was rather standard and did not deviate substantially from that usually used for alcoholic beverages.
31      Second, it must be pointed out that the applicant cannot usefully rely on the photographs of gin bottles set out in Annex A.5 to the application in order to show that the relevant public associates the representation of botanical objects, in particular berries, leaves and twigs of juniper, with gin and perceives those objects as mere decorative elements. Without it being necessary, here either, to rule on the admissibility of Annex A.5 to the application, it is sufficient to note that that fact, even if it were established, does not show that the figurative elements of the mark applied for will not also be perceived as mere decorative elements.
32      Furthermore, as regards the mark applied for, the figurative elements placed above, to the right and to the left of the word ‘gin’ appear to be not feathers but abstract patterns, that is to say, spirals, curving lines, volutes or arabesques. Moreover, the applicant does not assert that those figurative elements are feathers, but simply states that they ‘rather resemble’ feathers, thus confirming the difficulty of associating the elements at issue with a known natural element and, consequently, of memorising them.
33      Accordingly, the applicant has not established that the Board of Appeal erred in finding, in paragraph 39 of the contested decision, that the figurative elements which, in his view, rather resemble feathers, would be perceived as mere decorative elements and that they had, at most, a very minor level of distinctive character, if any.
34      Furthermore, in so far as the applicant alleges, in essence, an infringement of Article 95(1) of Regulation 2017/1001, it must be noted that, under that provision, EUIPO examiners and, on appeal, the Boards of Appeal of EUIPO are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration. It follows that they may be led to base their decisions on facts which have not been alleged by the applicant for the mark (judgment of 19 April 2007, OHIM v Celltech, C‑273/05 P, EU:C:2007:224, paragraph 38).
35      It follows from paragraphs 29 to 33 above that the applicant has not established that the Board of Appeal relied on incorrect facts.
36      The first plea in law must therefore be rejected.
37      Since the Board of Appeal stated, in paragraph 44 of the contested decision, that it would not examine whether the mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, the applicant’s argument that, if the Court were to find that that decision is also based on that absolute ground for refusal, that mark should be regarded as distinctive, for the reasons put forward in support of the first plea in law, must be rejected as ineffective.
The second plea in law, alleging infringement of Article 7(1)(g) of Regulation 2017/1001, read in conjunction with Article 95(1) of that regulation
38      By his second plea in law, the applicant submits that, in finding that the mark applied for was deceptive, the Board of Appeal infringed Article 7(1)(g) of Regulation 2017/1001, read in conjunction with Article 95(1) of that regulation.
39      EUIPO disputes the applicant’s line of argument.
40      In that regard, it must be pointed out that, in accordance with settled case-law, it follows from Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed therein applies in order for the sign not to be registrable as an EU trade mark (see, to that effect, 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).
41      Accordingly, since it follows from the examination of the first plea in law that the Board of Appeal correctly found that the mark applied for was descriptive of all the goods covered by that mark, within the meaning of Article 7(1)(c) of Regulation 2017/1001, it is not necessary to examine whether the Board of Appeal infringed Article 7(1)(g) of that regulation. It follows that it is also not necessary to examine the applicant’s argument that, by not relying on any facts or evidence in order to find that the mark applied for was deceptive, the Board of Appeal infringed Article 95(1) of Regulation 2017/1001.
42      In the light of the foregoing, the action must be dismissed in its entirety.
Costs
43      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.
44      Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Mr Victor Waskito Purwana and the European Union Intellectual Property Office (EUIPO) each to bear their own costs.
Kowalik-Bańczyk
Hesse
Dimitrakopoulos
Delivered in open court in Luxembourg on 5 March 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.