JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 March 2024 (*)
(EU trade mark – Invalidity proceedings – EU trade mark consisting in a shade of orange – Absolute ground for invalidity – Graphic representation that is sufficiently clear and precise – Article 4 and Article 7(1)(a) of Regulation (EC) No 40/94 (now Article 4 and Article 7(1)(a) of Regulation (EU) 2017/1001) – Distinctive character acquired through use – Article 7(1)(b) and (3) of Regulation No 40/94 (now Article 7(1)(b) and (3) of Regulation 2017/1001))
In Case T‑652/22,
Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by M. Kefferpütz, K. Wagner and A. Wrage, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
MHCS, established in Épernay (France), represented by O. Vrins, B. Raus and N. Clarembeaux, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, P. Zilgalvis (Rapporteur) and E. Tichy‑Fisslberger, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 20 September 2023,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Lidl Stiftung & Co. KG, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 August 2022 (Case R 118/2022‑4) (‘the contested decision’).
Background to the dispute
2        On 12 February 1998, SA Veuve Clicquot Ponsardin, the predecessor in law to the intervener, MHCS, filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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)).
3        The trade mark in respect of which registration was sought was referred to as a figurative mark in the application form, which stated under the heading ‘Colour claimed’ that ‘protection [was] claimed for the colour orange for which the scientific definition [was] as follows: trichromatic coordinates / colour characteristics: x 0.520, y 0.428 – diffuse reflectance 42.3% – dominant wavelength 586.5 mm – excitation purity 0.860 – colorimetric purity: 0.894’. That trade mark was depicted as follows:
4        The goods in respect of which registration of the trade mark was sought were 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: ‘Champagne wines’.
5        By decision of 20 January 2000, the examiner dismissed the EU trade mark application on the ground that it was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 (now Article 7(1)(b) of Regulation 2017/1001). The examiner stated that the trade mark was not a colour mark per se, but a figurative mark in colour and that, if the subject of the application was a colour, the box ‘other’ should have been ticked on the application form instead of the ‘figurative mark’ box.
6        By decision of 20 November 2002 (Case R 246/2000‑2), the Second Board of Appeal stated that the standard application form had to be interpreted as referring to an application seeking protection for a colour mark, even though the box for a figurative mark had been ticked. It annulled the examiner’s decision of 20 January 2000 and remitted the case to the examiner to determine whether the trade mark had acquired a distinctive character through use in accordance with Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation 2017/1001).
7        By decision of 19 December 2003, the examiner, who referred to the trade mark in respect of which registration was sought as having been filed ‘in the form of a colour per se’, dismissed the application on the ground that it had not been established that a distinctive character had been acquired through use in accordance with Article 7(3) of Regulation No 40/94.
8        By decision of 26 April 2006 (Case R 148/2004‑2), the Second Board of Appeal annulled the examiner’s decision of 19 December 2003 and concluded that it had been demonstrated that a distinctive character had been acquired through use in respect of Champagne wines.
9        The trade mark application was published in Community Trade Marks Bulletin No 37/2006 of 11 September 2006 and the mark was registered on 23 March 2007 under number 747949.
10      On 16 March 2010, the mark at issue was assigned to the intervener.
11      A first application for a declaration of invalidity of the mark at issue was filed by a third party on the basis of Article 52(1) of Regulation No 207/2009. That application was dismissed by the Cancellation Division’s decision of 25 February 2015 on the ground, inter alia, that that mark had acquired distinctive character through use in the relevant territory. That decision became final.
12      A second application for a declaration of invalidity of the mark at issue was filed by the applicant, on 3 November 2015, on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(a) and (b) of Regulation No 207/2009 (now Article 7(1)(a) and (b) of Regulation 2017/1001).
13      By decision of 12 November 2018, the Cancellation Division dismissed the applicant’s application for a declaration of invalidity. First, it took the view that, despite the fact that the mark at issue had been filed and registered as a ‘figurative mark’, the parties had not disputed that it was a colour mark per se, as the Board of Appeal had recognised in its decisions of 20 November 2002 and 26 April 2006. Secondly, it considered that the requirements of Article 4 of Regulation No 40/94 had been met on the grounds that that mark’s depiction was immediately understandable and that the description made it possible for third parties to acquire precise knowledge of the sign for which protection had been sought. Thirdly, it took the view that a distinctive character acquired through use of that mark had been established on the date on which the application for registration was filed in the territory of 15 Member States, namely Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden and the United Kingdom.
14      On 6 December 2018, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision of 12 November 2018.
15      By decision of 24 February 2020 (Case R 2392/2018‑1), the First Board of Appeal annulled the Cancellation Division’s decision of 12 November 2018 and remitted the case to it.
16      In the first place, the Board of Appeal examined the category of mark designated by the mark at issue. In that regard, it stated that that category could not be the subject of an agreement between the parties and that the information on such a category in the application form was not ambiguous. In its view, that mark could be considered, according to its depiction, only as a figurative mark claiming a specific colour. In the second place, it noted that the amendment in the classification of a trade mark was such as to influence the analysis of its distinctive character. In the third place, after having recalled that EUIPO’s decisions may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their observations, it took the view that it was necessary to annul the Cancellation Division’s decision of 12 November 2018 and remit the case to it for reconsideration, in order to allow the parties to adapt their observations to take account of its interpretation and to ensure that the rights of the defence were respected.
17      By application lodged at the Registry of the General Court on 11 May 2020, the intervener brought an action against the decision of the First Board of Appeal of 24 February 2020.
18      By judgment of 15 September 2021, MHCS v EUIPO – Lidl Stiftung (Shade of the colour orange) (T‑274/20, not published, EU:T:2021:592), the Court annulled the decision of the First Board of Appeal of 24 February 2020 on the ground that that Board of Appeal had exceeded its jurisdiction, in breach of the last sentence of Article 95(1) of Regulation 2017/1001, read in conjunction with Article 27(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1). It concluded, inter alia, that the question of the nature of the mark at issue was not an argument or plea submitted by the parties, nor did it concern a relevant fact or essential procedural requirement, that the Second Board of Appeal had already ruled on the question of that nature in the context of the registration procedure, and that the EUIPO department responsible for the register had wrongly failed to rectify the registration of the mark at issue as ‘another mark’ or as a ‘colour mark’ instead of a ‘figurative mark’.
19      A third application for a declaration of invalidity of the mark at issue was filed, on 5 November 2021, by Lidl Digital International GmbH & Co. KG, a subsidiary of the applicant, in the light of the inconsistencies in the application form.
20      Following the judgment of 15 September 2021, Shade of the colour orange (T‑274/20, not published, EU:T:2021:592), EUIPO rectified, on 14 January 2022, the error made in the register by indicating that the mark at issue was registered as a colour mark.
21      By the contested decision, the Fourth Board of Appeal dismissed the appeal before EUIPO against the Cancellation Division’s decision of 12 November 2018. In essence, it took the view, first, that the mark at issue complied with the requirements of Article 4 of Regulation No 40/94 and, secondly, that the evidence submitted by the intervener demonstrated that a significant proportion of the relevant public was, at the time of the application for registration of that trade mark, accustomed to the shade of orange as protected by that mark and that, therefore, there was no doubt that the mark at issue had become distinctive through use made of it within the meaning of Article 7(3) of that regulation at the time that trade mark was filed.
Forms of order sought
22      The applicant claims, in essence, that the Court should:
–        annul the contested decision and declare the mark at issue invalid;
–        in the alternative, refer the case back to the Board of Appeal for reconsideration;
–        order EUIPO and the intervener to bear their own costs and order EUIPO to pay the costs incurred by it, including those incurred before EUIPO.
23      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs in case a hearing is convened.
24      The intervener contends, in essence, that the Court should:
–        dismiss the application;
–        order the applicant and EUIPO to bear their own costs and order the applicant to pay the costs incurred by the intervener;
–        in the alternative, if the Court were to annul the contested decision, refer the case back to the Board of Appeal to further pursue
the proceedings.
Law
The admissibility of certain items of evidence submitted by the applicant
25      EUIPO and the intervener argue that the applicant submitted certain items of evidence for the first time before the Court and that, for that reason, they are inadmissible. According to EUIPO, the evidence in question is that in Annexes A.7 to A.9 to the application, whereas the intervener refers to Annexes A.6.a to A.10 to the application.
26      When questioned at the hearing, the applicant, while maintaining that it had produced documents in connection with those already submitted during the administrative procedure before EUIPO, admitted that certain annexes may have been submitted for the first time before the Court.
27      In this respect, it must be borne in mind that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
28      Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of that evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ submissions may not alter the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
29      As regards, first, Annexes A.7 to A.9 to the application, these are screenshots of bottles of Champagne wines from various brands, dated between 1993 and 1995. That evidence was not part of the administrative file before the Board of Appeal and is therefore inadmissible in accordance with the case-law cited in paragraphs 27 and 28 above.
30      As regards, secondly, Annex A.10 the application, which contains a screenshot of a bottle of Veuve Clicquot Champagne wine from 1964, that evidence was not part of the administrative file before the Board of Appeal and is therefore inadmissible in accordance with the case-law cited in paragraphs 27 and 28 above.
31      Thirdly, with regard to Annexes A.6.a and A.6.b to the application, namely the letter of 21 April 2006 to EUIPO in French and its English translation, by which the intervener’s predecessor in title stated, at the request of the Second Board of Appeal, that the closest Pantone reference for the colour shade of the mark at issue was 137 C, it should be noted that that letter was submitted by the intervener itself before the Board of Appeal and is thus included in the administrative file before the Board of Appeal. Furthermore, it is reproduced in paragraph 11 of the contested decision and, moreover, mentioned in paragraphs 10 and 68 thereof. In those circumstances, those items of evidence were not produced for the first time before the Court and are therefore admissible.
The merits of the pleas
32      Given the date on which the application for registration at issue was filed, namely 12 February 1998, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Moreover, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001 and of Delegated Regulation 2018/625.
33      Consequently, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 4, Article 7(1)(a) and (b) and (3) and Article 59(1)(a) of Regulation 2017/1001 must be understood as referring to Article 4, Article 7(1)(a) and (b) and (3) and Article 51(1)(a) of Regulation No 40/94, which are identical in content.
34      In support of the action, the applicant formally relies on 10 pleas in law, 5 for each of the grounds of invalidity relied on during the administrative procedure before EUIPO, namely Article 4 of Regulation No 40/94 and Article 7(1)(b) and (3) thereof. Since the applicant has grouped its pleas by grounds of invalidity, it must be held that the applicant raises, in essence, two pleas, each of which consists of five parts.
The first plea in law, alleging infringement of Article 4 of Regulation No 40/94
35      It is appropriate to begin by examining the first, third and fourth parts of the first plea together.
–       The first, third and fourth parts of the first plea
36      By the first part of the first plea, the applicant submits that the description of the mark at issue, that is to say, the scientific definition, does not comply with the conditions laid down in Article 4 of Regulation No 40/94 and in the judgment of 12 December 2002, Sieckmann (C‑273/00, ‘the judgment in Sieckmann’, EU:C:2002:748). In that regard, it states that that definition, first, is not self-contained as it does not refer to the allegedly applicable 2° trichromatic system of the 1931 International Commission on Illumination (CIE); secondly, is not easily accessible in that an expert has to be instructed because an economic operator lacks knowledge in the field of colorimetry; and, thirdly, is not intelligible inasmuch as economic operators do not understand the scientific definition. The applicant considers that there is an essential difference between the definition at issue and the Pantone, RAL or HKS colour codes, because that definition merely gives an ‘instruction how to approximate the allegedly described colour’.
37      Furthermore, according to the applicant, the Board of Appeal did not offer any reason capable of justifying the assertion that the ‘scientific definition’ was comparable to Pantone, RAL or HKS codes, thus infringing Article 94 of Regulation 2017/1001.
38      In the third part of the first plea, the applicant contests the Board of Appeal’s finding that the addition of the ‘scientific definition’ was superfluous and, therefore, not decisive for the grounds for invalidity invoked. In the applicant’s view, although the addition of a description of the trade mark is optional, since the proprietor of the mark at issue decided to make such an addition, it does form part of that mark. In that regard, it refers to the judgment of 19 June 2019, adidas v EUIPO – Shoe Branding Europe (Representation of three parallel stripes) (T‑307/17, EU:T:2019:427). It submits that, since, in accordance with that case-law, the description must be considered together with the graphic representation, there must be a correspondence between the description of the mark and its graphic representation. However, the same scientific definition is also included in the description of French trade mark 1597323, the graphic representation of which differs notably from that produced in this case.
39      By the fourth part of the first plea, the applicant contests the Board of Appeal’s finding that the graphic representation of the mark at issue in itself meets the requirements of Article 4 of Regulation No 40/94 and, in particular, that Board of Appeal’s finding that the electronic sample by which that mark is reproduced meets those requirements. It refers, in that regard, to paragraph 31 of the judgment of 6 May 2003, Libertel (C‑104/01, ‘the judgment in Libertel’, EU:C:2003:244), from which it is apparent that a mere sample of a colour did not meet the requirements of the judgment in Sieckmann. In its view, an electronic registry cannot overcome the lack of durability and, in any event, is never clear and precise. Furthermore, an electronic representation is not objective if it requires that the claimed colour shade be displayed reliably and always in the same way. The colour shade can be altered during the scanning process, and the colouring of scanned copies does not correspond identically to that of the original. Thus, even though the registry might be durable, it is not objective. However, the Board of Appeal did not address those deficiencies in the contested decision.
40      The applicant also submits that a mere sample lacks clarity and precision and that the user is unable to identify the exact shade of the colour on that basis. That sample must therefore be combined with a description in words, as the Court of Justice found in the judgment in Libertel.
41      EUIPO and the intervener dispute the applicant’s claims.
42      In accordance with Article 7(1)(a) of Regulation No 40/94, signs which do not conform to the requirements of Article 4 of that regulation are not to be registered as EU trade marks.
43      Article 4 of Regulation No 40/94 provides that an EU trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
44      As regards Article 2 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which corresponds in essence to Article 4 of Regulation No 40/94, the Court of Justice held that a graphic representation, for the purposes of that provision, must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. In order to fulfil its function, the graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (the judgment in Sieckmann, paragraphs 47 to 55). These, in particular, are the criteria
to which the applicant refers.
45      As regards colour marks, the Court of Justice held that the verbal description of a colour, in so far as it is composed of words which themselves are made up of letters, does constitute a graphic representation of the colour. However, the question whether a verbal description of a colour satisfies the conditions of the judgment in Sieckmann must be evaluated in the light of the circumstances of each individual case. It concluded that a sample of a colour, combined with a description in words of that colour, may therefore constitute a graphic representation within the meaning of Article 2 of Directive 89/104, provided that the description is clear, precise, self-contained, easily accessible, intelligible and objective (the judgment in Libertel, paragraphs 34 to 36).
46      In the present case, the application for registration of the mark at issue included a colour sample, as reproduced in paragraph 3 above and in paragraph 1 of the contested decision, and the following description, contained in the same paragraphs: ‘protection is claimed for the colour orange for which the scientific definition is as follows: trichromatic coordinates / colour characteristics: x 0.520, y 0.428 – diffuse reflectance 42.3% – dominant wavelength 586.5 mm – excitation purity 0.860 – colorimetric purity: 0.894’.
47      In that regard, the Board of Appeal found, in paragraph 66 of the contested decision, that the electronic sample by which the mark at issue was reproduced by itself met the requirements of Article 4 of Regulation No 40/94. It added that that way of representation of the colour orange for which protection is claimed as described was without any doubt clear, precise, self-contained, easily accessible, intelligible, durable and objective in the best possible way. In paragraph 67 of that decision, it also stated that the further addition of the description in words of the colour and the scientific CIE definition only further clarified what is already sufficiently defined but would, in itself, also satisfy the abovementioned requirements and, thus, certainly in combination with that electronic sample.
48      It should be noted that, by the fourth part of the first plea, the applicant submits that the colour sample at issue does not meet the requirements of Article 4 of Regulation No 40/94 or those of the judgment in Sieckmann. By the first part, it submits that the description and scientific definition do not meet the same requirements. Lastly, by the third part, it submits that the description must be examined in conjunction with the graphic representation and that there must be a correspondence between the two.
49      In the first place, it is necessary to examine whether the colour sample at issue met the requirements of Article 4 of Regulation No 40/94 and those of the judgment in Sieckmann.
50      As regards colour samples, the Court of Justice noted that they could deteriorate with time. There may therefore be certain media on which it is possible to reproduce a colour in permanent form. However, with other media, including paper, the exact shade of the colour cannot be protected from the effects of the passage of time. In those cases, the filing of a sample of a colour does not possess the durability required by Article 2 of Directive 89/104 (see the judgment in Libertel, paragraphs 31 and 32 and the case-law cited).
51      It is apparent from a combined reading of paragraphs 15, 31 and 32 of the judgment in Libertel that the Court of Justice’s findings that a colour sample does not possess the durability required by Article 2 of Directive 89/104 are formulated with regard to such a sample on paper. In the present case, the colour sample at issue is digital, and that digital medium makes it possible to record a colour in a permanent form, as noted, inter alia,
by the Board of Appeal, which found that that sample by itself met the requirements of Article 4 of Regulation No 40/94.
52      Similarly, the applicant’s arguments that the colour sample at issue does not fulfil the criterion of durability are purely hypothetical and speculative and call into question EUIPO’s register as a whole, as EUIPO and the intervener have submitted.
53      Moreover, it should be noted that the Court of Justice’s only criticism in the judgment in Libertel against a colour sample on paper concerned its durability. Consequently, the applicant’s other claims that the graphic representation of the mark at issue did not fulfil the criteria of the judgment in Sieckmann, in particular those of clarity and precision, cannot succeed.
54      It follows that the Board of Appeal did not make an error of assessment in finding that the colour sample at issue by itself met the requirements of Article 4 of Regulation No 40/94.
55      As regards, in the second place, the arguments based on the need for a correspondence between the description and the scientific definition, it is apparent from the case-law that, where the application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation (see judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 37 and the case-law cited).
56      Similarly, it is apparent from the judgment to which the applicant refers that Rule 3(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) provides that the application for registration ‘may contain a description of the mark’. Therefore, if a description is included in the application for registration, that description must be considered together with the graphic representation (see judgment of 19 June 2019, Representation of three parallel stripes, T‑307/17, EU:T:2019:427, paragraph 31 and the case-law cited).
57      However, in the present case, it must be stated, first, that the description of the mark at issue was indeed taken into account by the Board of Appeal (see paragraph 67 of the contested decision). Secondly, it must be pointed out, as observed by the intervener, that although the applicant submits that the scientific definition of the CIE satisfies neither the criteria of the judgment in Sieckmann nor those of Article 4 of Regulation No 40/94, it has not claimed that there is a contradiction between the colour sample at issue and the description containing the scientific definition of the CIE. When questioned on that point at the hearing, the applicant argued that the actual demonstration of the contradiction was not the subject
matter of the present proceedings.
58      Thus, since, in the present case, the requirements of Article 4 of Regulation No 40/94, as set out by the judgment in Sieckmann, are met by the colour sample at issue (see paragraph 54 above) and are not contradicted by the description provided and the scientific definition that was indeed taken into account together (see paragraph 57 above), it is not necessary to examine whether the description of the mark at issue and the scientific definition of the CIE satisfy the criteria of that article and that judgment. According to the case-law cited in paragraphs 55 and 56 above, there is no requirement that the description of the mark, when included in the application form, must by itself satisfy the criteria of the article.
59      In those circumstances, the Board of Appeal’s findings in paragraph 67 of the contested decision that the description in itself also meets the requirements of Article 4 of Regulation No 40/94 are made for the sake of completeness. Arguments directed against grounds included in a decision purely for the sake of completeness are, however, ineffective (see, to that effect, judgment of 26 March 2020, Muratbey Gida v EUIPO (Shape of a braided cheese), T‑570/19, not published, EU:T:2020:127, paragraph 43 and the case-law cited).
60      As regards the applicant’s argument that the colour sample at issue does not correspond to that of the French trade mark described by the same scientific definition, it should be borne in mind that the EU trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (judgment of 12 December 2013, Rivella International v OHIM, C‑445/12 P, EU:C:2013:826, paragraph 48).
61      The applicant’s complaint that the statement of reasons was inadequate should, in any event, be rejected. The obligation to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if they set out the facts and the legal considerations having decisive importance in the context of the decision (judgment of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19). In the present case, even if the considerations that the CIE definition in itself meets the requirements of Article 4 of Regulation No 40/94 are incorrect, it can be understood from those considerations that the Board of Appeal treated that definition as being comparable to Pantone, RAL and HKS codes, following the line of argument put forward by the intervener.
62      Therefore, the first, third and fourth parts of the first plea must be dismissed.
–       The second part of the first plea
63      The applicant contests the lawfulness of the Board of Appeal’s finding, in paragraph 68 of the contested decision, that the proprietor of the mark at issue specified that the closest Pantone reference to the colour shade applied for was 137 C. In that regard, it submits that those clarifications do not follow from the application for registration and argues that the subject matter of a trade mark cannot be specified by reference to external information. It refers in particular to paragraph 52 of the judgment in Sieckmann. In its view, a communication to the Board of Appeal is an external circumstance
that is neither part of the application for registration, nor the registration published within the trademark registry.
64      EUIPO and the intervener dispute the applicant’s arguments.
65      In the present case, it should be noted that the Board of Appeal referred, in paragraph 68 of the contested decision, to the decision of the Second Board of Appeal of 20 November 2002, from which it was apparent that, following its application, the proprietor of the mark at issue had specified that the closest Pantone reference to the colour shade applied for was 137 C. It is apparent from that paragraph that that Board of Appeal had clearly not considered it necessary to add that clarification to the application, finding, in essence, that the mark at issue complied with Article 4 of Regulation No 40/94.
66      Although the contested decision states that the intervener’s predecessor in title had communicated the reference to the closest Pantone code, namely 137 C, it is clear from the contested decision that that information was mentioned for information purposes, as obiter dictum, and was intended to explain why EUIPO, from the time of filing of the application for registration of the mark at issue, considered that that mark met the requirements of Article 4 of Regulation No 40/94, without it being necessary to add a reference to the Pantone code that was communicated. The second part of the first plea must therefore be rejected as ineffective.
67      Even if the Board of Appeal did set out such considerations, they were necessarily set out for the sake of completeness. Arguments directed against grounds included in a decision purely for the sake of completeness are ineffective in accordance with the case-law cited in paragraph 59 above.
68      The second part of the first plea must therefore be rejected as ineffective.
–       The fifth part of the first plea
69      The applicant states that the Board of Appeal had concluded that accepting the ground for invalidity relied on would be against the legitimate expectations set by EUIPO and the assurances given by the Boards of Appeal. It contests the relevance of that reason and argues, in that regard, that the question of the compliance of the scientific definition with Article 4 of Regulation No 40/94 has not been the subject matter of prior decisions and that such reasoning would contravene the purpose of invalidity proceedings, which grant any third party the possibility of having a trade mark registration reviewed.
70      EUIPO and the intervener dispute the applicant’s arguments.
71      In the present case, the Board of Appeal stated, in paragraph 70 of the contested decision, that it considered, like the other adjudicating bodies of EUIPO, that the mark at issue had been filed in accordance with the requirements of Article 4 of Regulation No 40/94 and that any decision to the contrary (for which there was, in any event, no ground at all) would go completely against the legitimate expectations set by EUIPO and the assurances given by the Boards of Appeal, which were completely legal and well founded.
72      In that regard, it must be held that the considerations disputed by the applicant constitute a ground included for the sake of completeness in the finding that the mark at issue was filed in accordance with Article 4 of Regulation No 40/94. As has already been pointed out, in paragraph 59 above, arguments directed against grounds included in a decision purely for the sake of completeness are ineffective. Accordingly, the fifth part of the first plea must be rejected.
73      In the light of all of the foregoing considerations, the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 7(3) of Regulation No 40/94
74      The applicant submits that the Board of Appeal was right to find that the mark at issue was devoid of any distinctive character, but that it adopted legally incorrect reasoning in holding that that mark had acquired distinctive character through use. That plea is divided into five parts.
–       Preliminary observations
75      It is common ground that, in the present case, the mark at issue is devoid of any inherent distinctive character. Similarly, as a preliminary point, it should be noted that, in the present case, the Board of Appeal examined whether distinctive character had been acquired prior to the filing of the mark at issue, that is to say on 12 February 1998, without ruling on whether that character had been acquired between the registration of that mark and the filing of the application for a declaration of invalidity (see paragraph 81 of the contested decision).
76      According to Article 51(2) of Regulation No 40/94, where an EU trade mark has been registered in breach of, inter alia, Article 7(1)(b) thereof, which provides that trade marks which are devoid of any inherent distinctive character are not to be registered, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. Under Article 7(3) of Regulation No 40/94, paragraph 1(b) of that article does not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
77      The acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking because of the mark (see judgment of 20 November 2019, Rezon v EUIPO (imot.bg), T‑101/19, not published, EU:T:2019:793, paragraph 46 and the case-law cited).
78      The burden of proving the distinctive character acquired through use, pursuant to Article 51(2) of Regulation No 40/94 and Article 7(3) thereof, rests with the proprietor of the mark at issue (see, to that effect, judgment of 4 April 2019, Stada Arzneimittel v EUIPO (Representation of two facing arches), T‑804/17, not published, EU:T:2019:218, paragraph 49 and the case-law cited).
79      Thus, in proceedings for a declaration of invalidity of a mark on absolute grounds for refusal, the proprietor of that mark is required to prove either that that mark had acquired distinctive character owing to the use that had been made of it prior to the date of filing the application for registration, or that it had acquired such character owing to the use that had been made of it between the date of its registration and the date of the application for a declaration of invalidity (see, to that effect, judgment of 15 December 2016, Mondelez UK Holdings & Services v EUIPO – Société des produits Nestlé (Shape of a chocolate bar), T‑112/13, not published, EU:T:2016:735, paragraph 117 and the case-law cited).
80      According to the case-law, in order to determine whether a mark has acquired distinctive character through the use that has been made of it, the competent authority must carry out an examination by reference to the actual situation and make an overall assessment of the evidence that that mark has come to identify the goods or services concerned as originating from a particular undertaking (see judgment of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 40 and the case-law cited).
81      In order to determine whether a mark has acquired distinctive character through use, account must be taken, inter alia, of the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls (see judgment of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a grey chequerboard pattern), T‑360/12, not published, EU:T:2015:214, paragraph 90 and the case-law cited).
82      As regards the geographical scope of the proof of distinctive character acquired through use, it should be recalled that a sign may be registered as an EU trade mark under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, in consequence of the use that has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). It follows that, with regard to a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (see judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 75 and 76 and the case-law cited).
83      In that regard, the Court of Justice has stated that it would be unreasonable to require proof of such acquisition for each individual Member State (see, to that effect, judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 62).
84      In that context, a distinction must be made between, first, the facts to be proved, namely the acquisition of distinctive character through use by a sign that is devoid of inherent distinctive character, and, secondly, the means of proving such facts. No provision of Regulation No 40/94 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State (judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 79 and 80).
85      Thus, it is possible that evidence provided to establish that a particular sign has acquired distinctive character through use is relevant with regard to several Member States, or even to the whole of the European Union. In particular, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has sufficient knowledge of the products and services that are present on the national market of the second (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 80 to 82).
86      Although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 40/94, a mark that is, ab initio, devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must nevertheless be capable of demonstrating acquisition thereof throughout the Member States of the European Union. Indeed, in the case of a mark that does not have inherent distinctive character throughout the European Union, the distinctive character acquired through use of that mark must be shown throughout that territory, and not only in a substantial part or the majority of the territory of the European Union, and consequently, although such proof may be produced globally for all the Member States concerned or separately for different Member States or groups of Member States, it is not, however, sufficient that the party with the burden of providing such evidence merely produces evidence of such acquisition that does not cover part of the European Union, even a part consisting of only one Member State (see judgment of 19 October 2022, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern II), T‑275/21, not published, EU:T:2022:654, paragraph 28 and the case-law cited).
87      Lastly, it must be noted that the burden of proof imposed on the proprietor of the contested mark of demonstrating distinctive character acquired through the use of that mark must not be unreasonable. That requirement forms part of the general principles of EU law and, in particular, of the right to good administration, also enshrined in Article 41 of the Charter of Fundamental Rights of the European Union (see judgment of 19 October 2022, Representation of a chequerboard pattern II, T‑275/21, not published, EU:T:2022:654, paragraph 31 and the case-law cited).
88      It is in the light of those considerations that the Court must examine the five parts of the second plea in law. It is appropriate to begin by examining the fifth part.
–       The fifth part of the second plea, relating to the sufficiency of the evidence as regards Ireland, Greece, Luxembourg and Portugal
89      By the fifth part of the second plea, the applicant submits that the evidence relating to Ireland, Greece, Luxembourg and Portugal was particularly limited and insufficient to demonstrate that the mark at issue had acquired distinctive character through use.
90      The applicant submits that the Board of Appeal engaged in an inadmissible extrapolation when, in paragraph 101 of the contested decision, it inferred from the decisions of the national courts in which distinctive character was found to have been acquired in the case of Belgium and France that there was no sound reason to depart from those considerations as regards the remaining public of the European Union, since the intensity of use is comparable in those territories. That extrapolation is incompatible with case-law of the Court of Justice, namely the judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services
(C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596). In addition, the applicant questions the relevance of some of the evidence produced by the intervener and of that Board of Appeal’s considerations in that regard, namely Exhibits II.D.14, II.B.18, II.D.1 and II.B.19.
91      With regard, in particular, to Portugal, the applicant argues that the Board of Appeal found that distinctive character had been acquired on the basis of some advertising examples, a multilingual international brochure and the long-standing marketing of Veuve Clicquot Champagne wines, the first shipment of which dated back to 1864. However, first, it was already held that neither sales figures nor advertising materials were sufficient to establish acquired distinctive character. Secondly, the applicant states that the orange-coloured label was not used prior to 1877 and that the consistent use of the same shade of orange cannot be presumed, as is apparent from an image of a bottle from 1964 showing a golden label.
92      As for Greece, the applicant notes that the Board of Appeal relied on a first shipment in 1845, prior to the alleged label change, and acknowledgement by King Constantine of Greece, who cannot be regarded as representing the public at large. In addition, the annual promotion budget of approximately EUR 12 000 is very limited.
93      With regard to Ireland, the evidence taken into account by the Board of Appeal is clearly insufficient. For instance, a first shipment in 1788 was made prior to the alleged label change and the article about a get-together between the Australian, Irish and English bar associations in 1987 is irrelevant as far as concerns the colour orange. As for the 1999 articles, one concerning the presentation of the ‘Veuve Clicquot Business Women Award’
and the other concerning the ‘Veuve Clicquot Halloween’ party, those events relate to only specific circles of the relevant public and the colour orange is not unusual for a Halloween party.
94      In the case of Luxembourg, the applicant submits that the Board of Appeal considered, in essence, that that country is part of Belgium and the Netherlands despite the language difference and that it was irrelevant because it has only 424 000 inhabitants. According to the applicant, that reasoning is not sound and cannot support a finding of distinctive character acquired through use.
95      EUIPO argues that it cannot be claimed that the Board of Appeal based its finding on an erroneous extrapolation of national decisions. In that regard, it contends that paragraph 101 of the contested decision must not be read in isolation but in conjunction with the preceding assessment (in paragraphs 90 to 100 of that decision) and that that paragraph
merely clarifies that the national decisions confirm the findings of the Board of Appeal’s examination of the evidence produced by the intervener.
96      As to the insufficiency of the evidence concerning the four countries mentioned by the applicant, EUIPO argues that that evidence was explicitly and exhaustively examined in paragraphs 123 to 142 of the contested decision. The applicant points out single perceived shortcomings in certain pieces of evidence in isolation, but fails to undertake a global assessment of that evidence, and therefore its arguments are insufficient to challenge the lawfulness of the Board of Appeal’s global assessment of the evidence.
97      The intervener observes that the applicant has not disputed the evidence in quantitative terms concerning 11 Member States. As regards the national decisions cited by the Board of Appeal, it argues that the Board of Appeal did not engage in extrapolation, but had rather referred to those decisions so as to approve considerations of the Cancellation Division in Case 8666 C. Furthermore, notwithstanding the approval of the Cancellation Division’s considerations, the Board of Appeal also set out its assessment of the evidence throughout the contested decision.
98      With regard to the relevance of specific evidence, the intervener submits that the applicant simply objects to separate and specific considerations regardless of any overall context and does not criticise the Board of Appeal’s overall assessment. In its opinion, the Board of Appeal made a correct overall assessment from a quantitative point of view regarding Ireland, Greece, Luxembourg and Portugal. The applicant’s claims stem from a misreading of the contested decision.
99      As a preliminary point, it must be recalled that the evidence submitted must make it possible to show that the mark has become such as to identify the goods concerned as originating from a particular undertaking, and accordingly to distinguish them from goods of other undertakings. In assessing the distinctive character of a mark in respect of which registration has been sought, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 9 September 2020, Glaxo Group v EUIPO (Shade of the colour purple), T‑187/19, not published, EU:T:2020:405, paragraph 93 and the case-law cited).
100    However, certain elements are considered to be of greater probative value than others. In particular, sales figures and advertising material can be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by surveys or market studies as well as by statements from professional bodies or statements from the specialised public (see judgment of 9 September 2020, Shade of the colour purple, T‑187/19, not published, EU:T:2020:405, paragraph 94 and the case-law cited).
101    Moreover, it is apparent from the case-law that proof of distinctive character acquired through use cannot be furnished by the mere production of sales volumes and advertising material. Likewise, the mere fact that the sign has been used in the European Union for some time is also not sufficient to show that the public targeted by the goods in question perceives it as an indication of commercial origin (see judgment of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 72 and the case-law cited).
102    It follows that direct evidence is necessary in order to demonstrate that a mark has acquired distinctive character through use. Thus, it is necessary to examine whether the evidence submitted by the intervener, as described in paragraphs 86 to 89 of the contested decision, constitutes direct evidence.
103    In that regard, the Board of Appeal stated, in paragraph 90 of the contested decision, that it had carefully reviewed the extensive evidence filed and confirmed –
in line with the Cancellation Division’s decision and the previous decisions (referred to in paragraphs 8 and 11 above), which were based on part of the same evidence that the intervener produced in the administrative procedure in the present case – that the acquired distinctive character of the mark at issue has been proved. Similarly, in paragraph 142 of that decision, it stated that the global examination of the evidence allowed the conclusion that the relevant public had come to identify the goods bearing that mark as originating from the intervener. It added that, completely in line with EUIPO’s previous decisions based on the same, although less extensive, evidence, there was no doubt as to the acquired distinctive character of the mark at issue pursuant to Article 7(3) of Regulation No 40/94 at the time of filing on 12 February 1998.
104    In particular, the Board of Appeal, in paragraphs 92 to 140 of the contested decision, reached the conclusion that, first, the evidence produced showed use of the mark at issue, that is to say, of the same shade of colour as registered, secondly, the evidence as such qualitatively allowed the conclusion that the mark at issue will be perceived as a mark and, thirdly, that the evidence was quantitatively sufficient, in particular, for Ireland, Greece, Luxembourg and Portugal. In that regard, it should be noted that the Board of Appeal carried out an assessment of the evidence intended to demonstrate the acquisition of distinctive character through use by country only in respect of Ireland, Greece, Luxembourg and Portugal (see paragraphs 132 to 135 of the contested decision).
105    Furthermore, it must be pointed out that the Board of Appeal’s assessments, taken as a whole, emphasise the particularly rich and prestigious history of the Veuve Clicquot Champagne wines brand, the fact that the ‘famous orange label’ has been used since 1877, the reputation of the word mark with which the mark at issue is used, the significant market share held by the mark at issue in the various Member States and the considerable advertising efforts. Similarly, the Board of Appeal stated, in particular, in paragraph 99 of the contested decision, that the evidence shows that the orange colour on the Veuve Clicquot Champagne wines acts as an eye-catcher in the first place: even when glimpsed from afar, it would stand out immediately. Moreover, in paragraph 100 of that decision, it found, as did the Cancellation Division in Case 8666 C, that the intervener had proved that the relevant public attributed to that colour the function of identifying those wines, since it had been exposed for a long time to advertisements, slogans, press articles, books and events where that particular colour had been brought to the fore as a ‘rallying sign to the mark’.
106    As regards direct evidence within the meaning of the case-law cited in paragraph 100 above, it should be noted that the file contains, first, certain statements, including those from the Comité interprofessionnel du vin de Champagne (CIVC) as Exhibit II.E.2.
107    In that regard, it must be pointed out that the two statements from the CIVC, dated 2003 and 2014 respectively, maintain, as the Board of Appeal noted, that the proprietor of the mark at issue was the only producer of Champagne wines to use the shade of orange in question. Such assertions are insufficient to demonstrate that the relevant public perceives the mark at issue as a trade mark and, a fortiori, to infer from that evidence that that mark has acquired distinctive character through use. Thus, those statements, in the light of their content, are merely potentially supporting evidence as the applicant submitted, in essence, at the hearing.
108    As regards the other statements submitted by the intervener, they came from its employees, so they cannot be regarded as credible direct evidence. In that regard, it is apparent from the case-law that a statement, within the meaning of Article 97(1)(f) of Regulation 2017/1001, drawn up by one of the employees of the party concerned can be given evidential value only if it is supported by other evidence (see judgment of 7 September 2022, 6Minutes Media v EUIPO – ad pepper media International (ad pepper the e-advertising network), T‑521/21, not published, EU:T:2022:520, paragraph 100 and the case-law cited). Consequently, that evidence could possibly support direct evidence of the acquisition of distinctive character through use of the mark at issue.
109    Secondly, the file contains decisions of national courts that may be regarded as direct evidence within the meaning of the case-law cited in paragraph 100 above. In that regard, the Board of Appeal found, in paragraph 101 of the contested decision, that the national courts in France and in Belgium and the Community trade mark court in Brussels (Belgium) clearly acknowledged how consumers perceived the shade of the colour orange affixed to the Champagne wine bottle and that there was no sound reason to depart from those considerations as regards the public of the other Member States in which the intensity of use was comparable.
110    The applicant disputes the Board of Appeal’s extrapolation from those decisions of the national courts. EUIPO, for its part, contends that the Board of Appeal’s findings, set out in paragraph 101 of the contested decision, must not be read in isolation, but in conjunction with the preceding assessments, and that they merely clarify that the national decisions confirm the findings of the Board of Appeal’s examination of the evidence in the file.
111    In that regard, it should be borne in mind that, in accordance with the case-law cited in paragraph 85 above, it is possible that evidence of acquisition of distinctive character through use, by a particular sign, is relevant with regard to several Member States, or even to the whole of the European Union. In particular, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has sufficient knowledge of the products and services that are present on the national market of the second (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 80 to 82). However, in the present case, the contested decision, with the exception of paragraph 135 thereof, relating to the demonstration of the acquisition of distinctive character in Luxembourg, does not contain other considerations explaining how the findings of the national courts referred to in paragraph 101 of the contested decision (see paragraph 109 above) are relevant for the other Member States, with the result that that extrapolation is, in any event, insufficiently reasoned.
112    As regards the intervener’s argument, raised at the hearing, that the Tribunal de Commerce Francophone de Bruxelles (Brussels Commercial Court (French-speaking), Belgium), which is an EU trade mark court within the meaning of Article 123 of Regulation 2017/1001, acknowledged that the mark at issue had acquired distinctive character through use, it should be noted that that court did indeed find that ‘the intensive use that [had] been made of the composite sign [had] therefore enabled the colour as such to acquire distinctive character’. The fact remains that, given that the case on which the Tribunal de Commerce Francophone de Bruxelles (Brussels Commercial Court (French-speaking)) ruled concerned two colour marks, one from Benelux and the other from the European Union, it is not certain that the court was referring to the EU trade mark. Similarly, a fortiori, it is not stated what the territorial scope of that conclusion is. Accordingly, it cannot be held that the findings of the Tribunal de Commerce Francophone de Bruxelles (Brussels Commercial Court (French-speaking)) apply to the entire territory of the European Union.
113    It follows that the evidence, assessed in paragraphs 107 to 112 above, is either only supporting evidence or does not relate to all the Member States and, in particular, Greece and Portugal, in respect of which the applicant claimed, inter alia, that the evidence submitted by the intervener was particularly insufficient. The evidence relating to those two countries should be examined.
114    As regards, in the first place, the evidence concerning several countries that the Board of Appeal examined when assessing the acquisition of distinctive character in, inter alia, Greece and Portugal, the Board of Appeal assessed, in paragraphs 126 to 130 of the contested decision, Exhibits II.D.1 (read together with Exhibits II.E.1 and II.E.5), II.D.14, II.B.18 and II.B.19.
115    In that regard, it must be pointed out, first, that Exhibits II.D.1 and II.D.14 contain information on sales of Veuve Clicquot Champagne wines and on the market shares of SA Veuve Clicquot Ponsardin. However, in the light of the case-law cited in paragraph 100 above, and of paragraph 95 of the judgment of 26 October 2022, Lemken v EUIPO (Shade of sky blue) (T‑621/21, not published, EU:T:2022:676), such evidence cannot be regarded as direct evidence of the acquisition of distinctive character through use.
116    Next, Exhibit II.B.18, which is a statement from the former manager of SA Veuve Clicquot Ponsardin, contains information on the promotional budget for the relevant Member States during the period from 1994 to 1997, including for Greece and Portugal. However, that item of evidence does not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
117    Last, Exhibit II.B.19, consisting of the last pages of different issues of the magazine Veuve Clicquot Ponsardin published between 1995 and 1999, contains information relating to distribution in Greece and Portugal. The fact remains that that item of evidence does not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
118    In the second place, as regards Portugal in particular, the Board of Appeal referred, in paragraph 132 of the contested decision, to the following evidence.
119    First, as regards Exhibit II.D.13, the Board of Appeal found that it showed from when SA Veuve Clicquot Ponsardin had entered the market in Portugal. In that regard, it must be noted that that item of evidence is a letter, dated 1864, addressed to the intervener’s predecessor in title confirming the shipment of 20 cases of Champagne wine to Mr Richard Knowles in Lisbon (Portugal). It must be noted that it demonstrates only that 20 cases of Veuve Clicquot Champagne wines were sent to Portugal in 1864.
120    Secondly, as regards Exhibit II.D.5, the Board of Appeal found that it showed how SA Veuve Clicquot Ponsardin established itself in a small new developing market, showing considerable market shares. It should be noted that that evidence contains an overview of the sales volumes and market shares of Veuve Clicquot Champagne wines for Portugal during the period from 1965 to 1973 and from 1976 to 1978. The fact remains that that item of evidence does not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
121    Thirdly, as regards Exhibit II.D.6, the Board of Appeal stated that that document showed that sales in 1992 had almost multiplied by 10, which is illustrated in detail in the intervener’s response. It must be held that that item of evidence consisting in an overview of sales volumes in Portugal from 1991 to 1993 does not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
122    Fourthly, as regards Exhibit II.B.5, that item of evidence, according to the Board of Appeal, shows the allocation of a promotional budget for Portugal for 1988. It must be pointed out that that item of evidence consists of correspondence dated 7 January 1988 between the intervener’s predecessor in law and the distributor in Portugal concerning the promotional budget for Portugal in 1988. The fact remains that it does not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
123    Fifthly, as regards Exhibit II.B.7, the Board of Appeal noted that the correspondence dated 14 February 1986 between the intervener’s predecessor in law and the distributor in Portugal concerned ‘intensifying the promotion of the Grande Dame’ with gift boxes and luxury cases that, as shown by the other items of evidence in the file, were generally made in the shade of orange as protected by the mark at issue. However, that correspondence relating to the making of gift boxes and luxury cases in the colour at issue does not directly demonstrate that the mark at issue has become
such as to identify Veuve Clicquot Champagne wines as originating from a particular undertaking.
124    Sixthly, as regards Exhibit II.B.15, the Board of Appeal noted that it consisted of the Portuguese version of the brochure entitled The Essentials from SA Veuve Clicquot Ponsardin dating from 1990, an image of which was included in the intervener’s response before it at page 87, showing the packaging of Veuve Clicquot Champagne wines bearing the inscription ‘a viuva’. It must be stated that, at most, that item of evidence attests to the use of the mark at issue in Portugal, but does not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
125    Seventhly, as regards Exhibit II.B.6, corresponding to examples of advertising in Portuguese magazines and Exhibit II.B.22, corresponding to printouts of websites concerning the magazines Olá Semanário and Distribuiçao Hoje, the Board of Appeal stated that they were ‘examples of advertising in Portuguese magazines’, adding that the orange label was prominently depicted. In that regard, it must be noted that they are promotional articles, which appeared in Portuguese magazines, mentioning Veuve Clicquot Champagne wines in particular and highlighting the bottles of that undertaking. Those articles show at most that the bottles of such wines bearing the mark at issue were offered for sale in Portugal in 1992.
126    Eighthly, it is also necessary to examine Exhibit II.B.21, referred to by the Board of Appeal in relation to the acquisition of distinctive character in Ireland in paragraph 134 of the contested decision. It is an album containing images of the ‘Veuve Clicquot Halloween’ parties in 1999. The Board of Appeal noted that that item of evidence contained images of parties organised in Ireland and Portugal with the colour orange as the dominant theme. In its view, the album submitted confirms that the parties had taken place in the previous five years and that the colour orange was not only the colour of Halloween, but also of the celebrated ‘Veuve Clicquot’ label. It is true that that evidence attests to the existence of a promotional event taking place, inter alia, in Portugal where the colour at issue is given pride of place. However, those images do not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
127    In the third place, as regards Greece in particular, the Board of Appeal relied, in paragraph 133 of the contested decision, on the following items of evidence.
128    First, as regards Exhibit II.D.9, relating to the first shipment of 75 bottles of Veuve Clicquot Champagne wines to Greece in 1845, ordered by the Greek consul in Amsterdam (Netherlands), the Board of Appeal found that that item of evidence shows when SA Veuve Clicquot Ponsardin entered the Greek market. However, as the Board of Appeal also stated, it is uncertain whether those bottles were orange-labelled. Moreover, such a shipment of bottles to Greece does not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
129    Secondly, according to the Board of Appeal, Exhibit II.D.10, corresponding to the recognition in 1964 by the King Constantin of Greece of the fact that SA Veuve Clicquot Ponsardin was a royal purveyor to the court showed how highly regarded Veuve Clicquot Champagne wines were at the time. However, even if that item of evidence could be highly relevant to prove the reputation of the mark at issue, it is not directly relevant as regards proof of the acquisition of distinctive character through use of that mark.
130    Thirdly, as regards Exhibit I.D.7, corresponding to an overview of sales of Veuve Clicquot Champagne wines in Greece in 1991 and 1992, the Board of Appeal found that that item of evidence confirmed the dominance of the orange label for the ‘Brut’ variant and showed considerable sales. However, the sales volumes, however high, do not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
131    Fourthly, as regards Exhibit II.D.8, containing correspondence dated February and June 1998 and relating to outstanding invoices in Greece, the Board of Appeal noted that the amounts on those invoices showed that the sales were considerable. The fact remains that the sales volumes, being capable only of supporting the direct evidence, do not directly show that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
132    Fifthly, as regards Exhibit II.B.8, containing correspondence between the intervener’s predecessor in law and the distributor in Greece concerning the point of sale material and the promotional budget for 1997, the Board of Appeal found that the overview of the point of sale offered showed the code that could be linked to the world catalogue submitted as Exhibit II.G.6. However, it must be pointed out that that item of evidence is capable of demonstrating only that the intervener’s promotional items were offered in Greece and not that the mark at issue has become such as to identify the Champagne wines concerned as originating from a particular undertaking.
133    Sixthly, it must be noted that Exhibit II.B.9 concerns examples of advertising or coverage of Veuve Clicquot Champagne wines in Greek magazines or newspapers making reference to the year 1995. However, that promotion does not directly indicate that the mark at issue has become
such as to identify the Champagne wines concerned as originating from a particular undertaking.
134    In the light of the foregoing considerations, it must be held that the evidence relating to Greece and Portugal on which the Board of Appeal relied is not direct evidence of the acquisition of distinctive character through use within the meaning of the case-law cited in paragraph 100 above and, assessed as a whole, is not capable of demonstrating that the public targeted by the goods at issue perceives the mark at issue as an indication of the commercial origin in those territories. It should be added that EUIPO acknowledged, at the hearing, that none of the direct evidence that it had identified concerned Greece.
135    Moreover, at the hearing, the intervener submitted that journalists and writers are observers who, spontaneously, reflect the relevant public’s perception, with the result that their publications should be regarded as direct evidence within the meaning of the case-law cited in paragraph 100 above. EUIPO also argued that
evidence giving information as to how that public may perceive the sign should be considered as direct evidence. Thus, it argued, in essence, that the press articles had to be regarded as such evidence.
136    In that regard, it must be pointed out that, although it cannot be ruled out that press articles or other publications may be regarded as direct evidence within the meaning of the case-law cited in paragraph 100 above, that evidence must nevertheless actually contain indications that the mark in question has become
such as to identify the goods concerned as originating from a particular undertaking on the territory concerned.
137    Furthermore, it must be borne in mind that the only relevant criterion for assessing the evidence produced is its credibility. Thus, in order to assess the probative value of a document, regard should be had first and foremost to the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (see judgment of 9 September 2020, Shade of the colour purple, T‑187/19, not published, EU:T:2020:405, paragraph 92 and the case-law cited). As regards the various publications, it is necessary, in particular, to consider whether it is an informative article or a promotional publication.
138    In the present case, as regards the items of evidence concerning Greece and Portugal, the newspaper extracts submitted by the intervener do not relate to the perception of the mark at issue by the public of those countries, as is apparent from the considerations set out in paragraphs 119 to 133 above. As regards the Veuve Clicquot Ponsardin promotional magazines, they cannot, in any event, be regarded as objective evidence since they originate from the intervener.
139    Consequently, in the absence of direct evidence within the meaning of the case-law cited in paragraph 100 above for Greece and Portugal, the Board of Appeal could not, on the basis of the evidence that it analysed, reach the conclusion that the acquisition of distinctive character through use had been demonstrated to the requisite legal standard as regards those two countries. In accordance with the case-law cited in paragraph 86 above, although proof of acquisition of distinctive character through use may be adduced globally for all the Member States concerned or separately for different Member States or groups of Member States, it is not sufficient that the person with whom the burden of proof lies merely produces evidence of such acquisition that does not cover part of the European Union, even if that part consists of a single Member State.
140    In those circumstances, the Board of Appeal’s finding that the mark at issue had acquired distinctive character through use at the time of filing is vitiated by an error of assessment. Consequently, the fifth part of the second plea must be upheld and the contested decision annulled, without it being necessary to examine the other arguments put forward by the applicant, in particular those put forward in the context of the other parts of the second plea.
141    As regards the second part of the applicant’s first head of claim, requesting the Court to declare the mark at issue invalid, it asks, in essence, that the Court exercise its power to alter decisions in order to declare the mark at issue invalid, thereby adopting the decision that the Board of Appeal should have taken when the action was brought before it.
142    In this respect, it should be recalled that the power of the Court to alter decisions pursuant to Article 72(3) of Regulation 2017/1001, must, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
143    In the present case, the conditions for the exercise of the Court’s power to alter the contested decision are not met. In particular, the Board of Appeal did not examine the question whether the earlier trade mark had acquired distinctive character through use between its registration and the filing of the application for a declaration of invalidity (see paragraph 75 above and the case-law cited in paragraph 79 above), with the result that the Court is not in a position to determine the decision that the Board of Appeal was required to take. Consequently, the request for alteration must be refused.
144    As regards the applicant’s second head of claim, submitted in the alternative, by which the applicant requests that the case be remitted to the Board of Appeal for reconsideration, and the intervener’s third head of claim, also submitted in the alternative, by which the intervener requests, in the event of annulment of the contested decision, that the present case be remitted to the Board of Appeal to further pursue the proceedings, it is sufficient to recall that, according to settled case-law, in an action before the EU judicature against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the EU judicature.
Costs
145    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.
146    EUIPO and the intervener have been unsuccessful in the main in the present case. However, the applicant requested that only EUIPO be ordered to pay the costs incurred by it, including during the administrative proceedings. In those circumstances, EUIPO must, in addition to bearing its own costs, pay those incurred by the applicant. The intervener must bear its own costs.
147    As regards the applicant’s request that EUIPO also be ordered to pay the costs incurred by the applicant in the proceedings before the Board of Appeal, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are regarded as recoverable costs. Consequently, EUIPO must also be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 August 2022 (Case R 118/2022‑4);
2.      Dismisses the action as to the remainder;
3.      Orders EUIPO, in addition to bearing its own costs, to pay those incurred by Lidl Stiftung & Co. KG, including those incurred before the Board of Appeal;
4.      Declares that MHCS is to bear its own costs.
Costeira
Zilgalvis
Tichy-Fisslberger
Delivered in open court in Luxembourg on 6 March 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.