JUDGMENT OF THE GENERAL COURT (Third Chamber)
2 June 2021 (*)
(EU trade mark – Invalidity proceedings – International registration designating the European Union – Figurative mark MONTANA – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) – Right to be heard – Article 94(1) of Regulation 2017/1001 – Examination of the facts by EUIPO of its own motion – Admission of evidence submitted for the first time before the Board of Appeal – Article 95(1) and (2) of Regulation 2017/1001)
In Case T‑855/19,
Franz Schröder GmbH & Co. KG, established in Delbrück (Germany), represented by L. Pechan and N. Fangmann, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
RDS Design ApS, established in Allerød (Denmark), represented by J. Viinberg, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 October 2019 (Case R 1006/2019‑4), relating to invalidity proceedings between Franz Schröder and RDS Design,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, V. Kreuschitz and G. De Baere (Rapporteur), Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 17 December 2019,
having regard to the response of EUIPO lodged at the Court Registry on 6 March 2020,
having regard to the response of the intervener lodged at the Court Registry on 7 March 2020,
having regard to the written questions put to the parties by the Court and their replies to those questions, which were lodged at the Court Registry on 5 and 16 October 2020,
having regard to the decision of 22 October 2020 joining Cases T‑854/19 to T‑856/19 for the purposes of the oral part of the procedure,
further to the hearing on 26 November 2020,
gives the following
Judgment
Background to the dispute
1        On 19 March 2014, RDS Montana Gruppen Invest ApS, the predecessor in law to the intervener, RDS Design ApS, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1211278 in respect of the figurative mark reproduced below. That international registration designated the European Union. The mark in respect of which the international registration was granted is the following figurative sign:
2        On 31 July 2014, EUIPO received notification of the international registration of the mark at issue in respect of goods which are in, inter alia, Class 20 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: ‘Furniture; furniture for storage; racks (furniture) and rack systems (furniture); furniture adapted for loudspeakers; furniture with built-in loudspeakers; furniture designed for the integration of loudspeakers’.
3        On 12 December 2017, the applicant, Franz Schröder GmbH & Co. KG, filed with EUIPO, under Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 59(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), an application for a declaration that the contested mark was invalid on the ground that that mark had been registered in breach of Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001).
4        By decision of 9 April 2019, the Cancellation Division of EUIPO upheld the application for a declaration of invalidity on the basis of Article 7(1)(c) of Regulation 2017/1001, finding that the contested mark was a descriptive indication of the geographical origin of the contested goods.
5        On 10 May 2019, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision.
6        By decision of 14 October 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO annulled the Cancellation Division’s decision and rejected the application for a declaration of invalidity.
7        In the first place, the Board of Appeal stated that it intended to take into account all the evidence which the parties had submitted before it, although it stressed that the evidence filed by the intervener was not determinant for the outcome of the proceedings. It pointed out that it was not precluded from examining of its own motion whether the absolute ground which the applicant had relied on in support of its application for a declaration of invalidity was present.
8        In the second place, the Board of Appeal assessed whether the contested mark was descriptive. It found that the term ‘montana’ was not perceived by the relevant public, which consisted both of average consumers and of specialists or professionals in the European Union, as designating the geographical origin of the goods at issue, namely, in essence, furniture in Class 20.
9        In that regard, it pointed out, first, that the evidence provided by the applicant did not show that the contested sign was capable of being perceived by the relevant public as a reference to the state of Montana (United States). Secondly, it stated that the landscape of that state was very varied, with the result that it could not be concluded that the relevant public would associate Montana with forests. Thirdly, the Board of Appeal pointed out that it was not obvious that the relevant public would associate Montana with the manufacturing of lumber or of furniture. Fourthly, the Board of Appeal took the view that the term ‘montana’ did not relate to a commercially essential characteristic of the goods at issue and that Montana was not associated with any general favourable response which was capable of leading the relevant public to expect that those goods would be manufactured in that state or from raw materials that came from that state.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        uphold the application for a declaration of invalidity and declare the contested mark invalid in respect of the goods at issue;
–        order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.
11      At the hearing, the applicant declared that it was withdrawing its second head of claim, formal note of which was taken in the minutes of the hearing.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
13      The intervener contends that the Court should dismiss the action.
Law
14      It must be pointed out at the outset that, given the date on which the application for the international registration designating the European Union was filed, namely 19 March 2014, 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 207/2009 (see, to that effect and by analogy, 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), which the applicant and the intervener moreover admitted in reply to a written question put by the Court. Consequently, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the applicant and the intervener in their written pleadings to Article 7(1)(c) of Regulation 2017/1001 must be understood as referring to Article 7(1)(c) of Regulation No 207/2009, the wording of which is identical to that of Article 7(1)(c) of Regulation 2017/1001.
15      Furthermore, 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; judgments of 7 November 2018, O’Brien, C‑432/17, EU:C:2018:879, paragraph 26, and of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, not published, EU:T:2020:492, paragraph 17), the procedural rules applicable to the proceedings before the Board of Appeal were those laid down in Regulation 2017/1001, in particular in Article 95(1) and (2) of that regulation, and those laid down in 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), as EUIPO admitted in reply to a written question put by the Court.
16      In support of its action, the applicant puts forward three pleas in law, alleging, first, infringement of Article 95(1) and (2) of Regulation 2017/1001, secondly, infringement of Article 94(1) of Regulation 2017/1001 and, thirdly, infringement of Article 7(1)(c) of Regulation No 207/2009.
The first plea, alleging infringement of Article 95(1) and (2) of Regulation 2017/1001
17      By the first plea, the applicant complains that the Board of Appeal, in essence, first, accepted, under Article 95(2) of Regulation 2017/1001, evidence submitted belatedly by the intervener and, secondly, examined certain facts of its own motion contrary to Article 95(1) of Regulation 2017/1001. The first plea can therefore be divided into two separate complaints, alleging infringement of the abovementioned two provisions.
The first complaint in the first plea, alleging infringement of Article 95(2) of Regulation 2017/1001
18      The applicant submits that the Board of Appeal infringed Article 95(2) of Regulation 2017/1001. It claims that the evidence which the intervener submitted before the Board of Appeal was inadmissible because it had not been submitted in due time.
19      In that regard, it maintains that the intervener did not submit certain facts or evidence in the course of the proceeding before the Cancellation Division. It argues that all the documents which the intervener submitted before the Board of Appeal could have been placed on the file at first instance, since the facts submitted were not new.
20      Moreover, the applicant submits that the intervener did not, for the purposes of Article 27(4)(b) of Regulation 2018/625, provide valid reasons to justify the late submission of those documents.
21      Furthermore, it argues that the reasoning which led the Board of Appeal to take into account the evidence that the intervener had submitted belatedly, reasoning which was based on the public-interest aim pursued by the absolute ground laid down in Article 7(1)(c) of Regulation No 207/2009, is incorrect.
22      EUIPO and the intervener dispute the applicant’s arguments.
23      According to Article 95(2) of Regulation 2017/1001, EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.
24      It follows from the wording of Article 95(2) of Regulation 2017/1001 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of that regulation, and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42; of 19 April 2018, EUIPO v Group, C‑478/16 P, not published, EU:C:2018:268, paragraph 34; and of 21 March 2019, Pan v EUIPO – Entertainment One UK (TOBBIA), T‑777/17, not published, EU:T:2019:180, paragraph 21).
25      In stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, Article 95(2) of Regulation 2017/1001 grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43; of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 56; and of 21 March 2019, TOBBIA, T‑777/17, not published, EU:T:2019:180, paragraph 22).
26      Furthermore, Article 27(4) of Regulation 2018/625 circumscribes the exercise of the discretion which is provided for in Article 95(2) of Regulation 2017/1001 as regards facts and evidence submitted for the first time before the Board of Appeal. That provision reads as follows:
‘In accordance with Article 95(2) of Regulation [2017/1001], the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:
(a)      they are, on the face of it, likely to be relevant for the outcome of the case; and
(b)      they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’
27      In the present case, in the context of its appeal before the Board of Appeal against the decision of the Cancellation Division, which had upheld the applicant’s application for a declaration of invalidity, the intervener submitted a statement of grounds for its appeal and annexes. It is common ground between the parties that those annexes contain evidence which the intervener submitted for the first time before the Board of Appeal. The applicant claimed, in the observations in reply which it submitted to the Board of Appeal, that those annexes were inadmissible. However, it disputed that evidence by, in turn, submitting evidence in conjunction with those observations. In paragraph 13 of the contested decision, the Board of Appeal stated, in essence, that it would allow all the evidence which the parties had submitted for the first time before it by exercising its discretion pursuant to Article 95(2) of Regulation 2017/1001 in that regard.
28      However, as the applicant submits, the Board of Appeal did not apply Article 27(4) of Regulation 2018/625 and did not ascertain whether the two requirements laid down in that provision were satisfied before allowing the evidence submitted for the first time before it, in particular that submitted by the intervener. It did not examine, first, whether it was, on the face of it, relevant with regard to the case or, secondly, whether there were any valid reasons which had led to its late submission, even though the intervener, as it confirmed at the hearing, had submitted observations in due time before the Cancellation Division and its appeal sought to dispute that Cancellation Division’s decision.
29      It must, however, be stated that, according to settled case-law, a procedural irregularity will entail the annulment of a decision in whole or in part only if it is shown that in the absence of such irregularity the contested decision might have been substantively different (see judgment of 11 March 2020, Commission v Gmina Miasto Gdynia and Port Lotniczy Gdynia Kosakowo, C‑56/18 P, EU:C:2020:192, paragraph 80 and the case-law cited; judgments of 28 September 2016, European Food v EUIPO – Société des produits Nestlé (FITNESS), T‑476/15, EU:T:2016:568, paragraph 67, and of 26 June 2019, Agencja Wydawnicza Technopol v EUIPO (200 PANORAMICZNYCH and Others), T‑117/18 to T‑121/18, EU:T:2019:447, paragraph 121).
30      However, even assuming that the Board of Appeal ought not, following the analysis provided for in Article 27(4) of Regulation 2018/625, to have allowed the evidence submitted before it by the intervener, it has not been established that the contested decision might have been substantively different.
31      In that regard, it is sufficient to point out that, at the end of paragraph 13 of the contested decision, the Board of Appeal expressly stated that the evidence filed by the intervener was not ‘determining for the outcome of the proceedings’. In the contested decision, the Board of Appeal did not make any references to the annexes to the statement of grounds for the appeal which had been submitted by the intervener.
32      In reply to a written question put by the Court, the applicant submitted that the Board of Appeal relied, in a decisive manner, on the intervener’s arguments by ‘replacing’ the evidence submitted by the intervener by its own findings. However, it is necessary to distinguish between the arguments put forward by the intervener and the evidence which it submitted. Any taking into account, by the Board of Appeal, of the arguments put forward by the intervener is not capable of showing that that Board of Appeal accorded decisive weight to the evidence which the intervener had submitted belatedly. Furthermore, in arguing that the Board of Appeal made factual findings on its own initiative, the applicant is, in actual fact, submitting that the Board of Appeal carried out an examination of relevant facts of its own motion. That issue relates to the second complaint in the first plea, which is examined below.
33      In those circumstances, the first complaint, alleging infringement of Article 95(2) of Regulation 2017/1001, must be rejected.
The second complaint in the first plea, alleging infringement of Article 95(1) of Regulation 2017/1001
34      The applicant submits that, according to Article 95(1) of Regulation 2017/1001, in invalidity proceedings based on absolute grounds for invalidity, EUIPO is to limit its examination to the grounds and arguments submitted by the parties. It argues that an EU trade mark which has been registered enjoys a presumption of validity and it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call its validity into question.
35      The applicant therefore submits that the Board of Appeal was not entitled to rely on its own factual findings. It argues that, in the contested decision, the Board of Appeal relied on ‘additional facts’ which the parties had not pleaded.
36      According to the applicant, those facts concern, first, the population of the state of Montana (paragraph 29 of the contested decision), secondly, the popularity of other tourist destinations such as the states of California or Florida (paragraph 31 of the contested decision), thirdly, the reference to terms related to the word ‘montana’ in certain European languages and the association of that word with the Swiss municipality of Crans-Montana (paragraphs 32 and 33 of the contested decision), fourthly, the percentage of forests in the United States and in certain Member States of the European Union (paragraphs 42 and 43 of the contested decision) and, fifthly, information from the Encyclopaedia Britannica relating to the vegetation of Montana and to its economy (paragraphs 40, 51 and 52 of the contested decision).
37      EUIPO and the intervener dispute the applicant’s arguments.
38      According to settled case-law, under Article 95(1) of Regulation 2017/1001, when examining absolute grounds for refusal, 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 in respect of which registration is sought comes under one of the absolute grounds for refusal of registration set out in Article 7 of that regulation. It follows that the competent bodies of EUIPO may be led to base their decisions on facts which have not been put forward by the applicant for the mark (see, to that effect, judgments of 29 March 2019, All Star v EUIPO – Carrefour Hypermarchés (Shape of a shoe sole), T‑611/17, not published, EU:T:2019:210, paragraph 43, and of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 21).
39      However, in invalidity proceedings based on an absolute ground for refusal, the Board of Appeal cannot be required to carry out afresh the examination of the relevant facts which the competent EUIPO bodies conducted, of their own motion, at the time of registration. It follows from the provisions of Articles 59 and 62 of Regulation 2017/1001 that the EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration (see, to that effect, judgments of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 44, and of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 22).
40      By virtue of that presumption of validity, EUIPO’s obligation, under the first sentence of Article 95(1) of Regulation 2017/1001, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by the examiners and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. In invalidity proceedings based on an absolute ground for refusal, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question. Thus, the second sentence of Article 95(1) of Regulation 2017/1001, which consolidates the Court’s previous case-law (judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraph 28), provides that, in invalidity proceedings pursuant to Article 59 of that regulation, EUIPO is to limit its examination to the grounds and arguments submitted by the parties (see judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 23 and the case-law cited).
41      However, while the presumption of validity of the registration restricts EUIPO’s obligation to examine the relevant facts, it does not, however, preclude it, in particular as regards the matters put forward by the party challenging the validity of the contested mark, from relying on well-known facts (see, to that effect, judgments of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 46, and of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 24).
42      Furthermore, although, in invalidity proceedings based on an absolute ground for refusal, EUIPO is to limit its examination to the grounds and arguments submitted by the parties, that does not, however, preclude the Board of Appeal, in its own examination of the facts, arguments and evidence submitted by the applicant for a declaration of invalidity, from reaching a different conclusion from that proposed by the latter (see, to that effect, judgment of 24 October 2019, Rubik’s Brand v EUIPO – Simba Toys (Shape of a cube with surfaces having a grid structure), T‑601/17, not published, EU:T:2019:765, paragraph 82). In that regard, it follows from Article 71(1) of Regulation 2017/1001 that, through the effect of the appeal brought before it, the Board of Appeal may exercise any power within the competence of the department that was responsible for the contested decision and is therefore called upon, in this respect, to conduct a new, full examination as to the merits of the appeal, in terms of both law and fact (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 57; of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 97; and of 28 March 2019, Robert Bosch v EUIPO (Simply.Connected.), T‑251/17 and T‑252/17, EU:T:2019:202, paragraph 27).
43      In the present case, it is common ground that the dispute is part of invalidity proceedings based on an absolute ground for invalidity. The Board of Appeal was thus required to carry out an examination which was limited to the grounds and arguments of the parties, without prejudice to the possibility of taking well-known facts into account.
44      However, it cannot be held that the Board of Appeal failed to observe the limits of its examination, in breach of Article 95(1) of Regulation 2017/1001.
45      It is important to point out that the Board of Appeal examined only whether the absolute ground which the applicant had specifically relied on was capable of resulting in the invalidity of the contested mark.
46      In that regard, the Board of Appeal’s statement, in paragraph 12 of the contested decision, that it could, ‘ex officio, examine the presence of the absolute ground in question’, must be interpreted as meaning that the Board of Appeal considered that it was able to examine whether the contested mark was descriptive of the geographical origin of the goods at issue, since the applicant had specifically relied on that absolute ground for refusal in its application for a declaration of invalidity. Although the use of the term ‘ex officio’ gives rise to confusion, the Board of Appeal expressly stated that it was going to examine the possible presence of that ground alone.
47      Furthermore, by the contested decision, the Board of Appeal found that the figurative mark MONTANA had been validly registered, thus confirming its validity.
48      Consequently, in accordance with the case-law cited in paragraph 40 above, the Board of Appeal did not examine of its own motion relevant facts which might have led it to apply other absolute grounds for refusal that were capable of calling into question the validity of the contested mark.
49      Furthermore, the applicant cannot maintain that the Board of Appeal, in its assessment of the absolute ground in question, examined certain ‘additional facts’ of its own motion (see paragraphs 35 and 36 above).
50      It must be pointed out that the findings of the Board of Appeal which have been set out in paragraph 36 above are part of its assessment of the matters put forward by the applicant in support of its application for a declaration of invalidity and of its assessment of the grounds for the Cancellation Division’s decision. They seek to put into perspective the facts, evidence and arguments which the applicant had put forward in its application for a declaration of invalidity and which the Board of Appeal regarded as inaccurate or insufficiently conclusive and to refute the findings which the Cancellation Division had reached in upholding the application for a declaration of invalidity.
51      In particular, the finding set out in paragraph 29 of the contested decision regarding the ranking of Montana as 44th out of the 50 US states in terms of population is part of the analysis of the matters which the applicant had submitted in its application for a declaration of invalidity and in its observations before the Board of Appeal. In them, the applicant submitted that Montana is known to the relevant public because, in spite of its small population, it is the fourth largest state in the United States.
52      The finding in paragraph 31 of the contested decision regarding the popularity of tourist destinations other than Montana is part of the analysis of the argument connected with tourism in Montana, an argument which the applicant had referred to in its application for a declaration of invalidity and in the observations it submitted before the Board of Appeal and which the Board of Appeal put into perspective by comparing that state to other tourist destinations that are more popular with the relevant public, like the states of California or Florida.
53      The findings in paragraphs 32 and 33 of the contested decision, relating to the facts that terms similar to the term ‘montana’, designating a mountain, exist in certain languages of the European Union and that the relevant public may associate the term ‘montana’ with the Swiss ski resort of Crans-Montana which is closer to that public, are part of the analysis of the argument that the relevant public will understand the term ‘montana’ as referring necessarily to the US state. In particular, the applicant submitted that, although the term ‘montana’ could designate a mountain in Spanish, that did not give any indication as to its meaning in the other languages of the European Union.
54      By the findings in paragraphs 40 and 42 to 44 of the contested decision, relating to the vegetation in Montana and to the percentage of forests covering the territories of the United States and of certain Member States of the European Union, the Board of Appeal sought to show that, contrary to what the applicant had submitted in its application for a declaration of invalidity and what the Cancellation Division had found, Montana was not, as a matter of common knowledge, known for its natural environment characterised by wooded areas.
55      Lastly, the purpose of the findings in paragraphs 50 to 52 of the contested decision, concerning the economy of Montana, was to put into perspective the relative importance of forestry in Montana which the applicant had relied on in its application for a declaration of invalidity and in the observations it submitted before the Board of Appeal, after pointing out that none of the applicant’s evidence showed that the relevant public would associate Montana with the wood or furniture industry.
56      It follows that, in accordance with the case-law referred to in paragraph 42 above, the Board of Appeal’s findings show only that it conducted a new, full examination as to the merits of the appeal, in terms of both law and fact, at the end of which it reached a different conclusion from that sought by the applicant.
57      It follows from the foregoing that the second complaint in the first plea must be rejected and that, consequently, the first plea must be rejected in its entirety.
The second plea, alleging infringement of Article 94(1) of Regulation 2017/1001
58      The applicant submits that the Board of Appeal based its decision on factual considerations on which the applicant was unable to submit observations, in breach of Article 94(1) of Regulation 2017/1001. It argues that, even if the Board of Appeal were entitled to conduct an examination of the facts of its own motion, it should first have heard the parties regarding those facts. It thus claims that the Board of Appeal infringed its right to be heard, which is enshrined in Article 41 of the Charter of Fundamental Rights of the European Union.
59      The applicant states that, if it had had the opportunity to submit its observations on the facts presented by the Board of Appeal, it would have submitted before it the evidence which it is now including as annexes to its application.
60      Furthermore, the applicant submits that the Board of Appeal infringed its obligation to state reasons pursuant to Article 94(1) of Regulation 2017/1001 by not responding to its arguments relating to the rejection of applications for registration of the sign Montana in many countries, such as Switzerland or Russia, on the ground that it designates a geographical location.
61      EUIPO and the intervener dispute the applicant’s arguments.
62      The second sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.
63      That provision constitutes a specific application of the general principle of respect for the rights of the defence, which is guaranteed, furthermore, by Article 41(2)(a) of the Charter of Fundamental Rights, according to which a person whose interests are affected by a decision of a public authority must be given the opportunity effectively to make his or her point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision (see, to that effect, judgments of 16 July 2015, Roland v OHIM – Louboutin (Nuance of red on the sole of a shoe), T‑631/14, not published, EU:T:2015:521, paragraph 20, and of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 72).
64      It must be pointed out at the outset that ‘the facts presented by the Board [of Appeal]’ regarding which the applicant claims not to have been heard correspond, as it stated at the hearing, to the findings identified in paragraph 36 above. The applicant submits, in essence, that, since the Board of Appeal examined the facts of its own motion, it was not heard regarding those facts.
65      However, as has been pointed out in paragraph 56 above, the findings in question are not the result of an examination of relevant facts by the Board of Appeal of its own motion, but are the result of a new, full examination as to the merits of the appeal at the end of which that Board of Appeal concluded that there was no likely association, by the relevant public, of the contested mark with Montana and that there was no likely association, by the relevant public, of Montana with forests or with the furniture industry. As the intervener correctly points out, the right to be heard extends to all the factual and legal material which forms the basis for the decision, but not to the final position which the authority intends to adopt (see judgment of 3 February 2017, Kessel medintim v EUIPO – Janssen-Cilag (Premeno), T‑509/15, not published, EU:T:2017:60, paragraph 22 and the case-law cited; judgment of 13 May 2020, Clatronic International v EUIPO (PROFI CARE), T‑5/19, not published, EU:T:2020:191, paragraph 102).
66      Furthermore, it is clear from the file relating to the proceedings before EUIPO that, during the administrative proceedings before the Board of Appeal, the parties debated the matters on which the findings identified in paragraph 36 above are based.
67      In particular, as is apparent from paragraph 6 of the contested decision, in the statement of grounds for the appeal, the intervener had put forward arguments relating to, among other things, the facts that the term ‘montana’ was not sufficiently linked to the US state and was used, in particular, to designate a ‘mountain’, both in English and in Spanish, that Montana was not densely populated and had no well-known cities, that it evoked farming and mining rather than wood and that it was also scarcely forested compared with the rest of the United States or, for example Germany, and, lastly, that it was not widely associated with furniture, relying in that regard on information regarding wood and furniture production in the economy of Montana.
68      As is already apparent from paragraph 7 of the contested decision, as well as from paragraphs 51 to 55 above, the applicant filed observations on the statement of grounds for the appeal, in which it was able to dispute the intervener’s arguments by submitting, inter alia, that the term ‘montana’ refers to the US state and that a similar term is not used in the majority of languages of the European Union to designate a mountain, that that state is large in terms of its territory in spite of its small population, that 12 million tourists visited it in 2018 and that the manufacturing sector of wood and furniture was the most important in Montana.
69      Moreover, the applicant was able to submit along with its observations annexes containing additional evidence, evidence which the Board of Appeal decided to place on the file (see paragraph 27 above) and which it did not categorise as not being determinant for the outcome of the proceedings, contrary to that submitted by the intervener.
70      Consequently, it cannot be held that the applicant’s right to be heard has been infringed in the present case.
71      It must also be pointed out that, in the context of that second plea, the applicant stated that if it had had the opportunity to submit its observations on the findings identified in paragraph 36 above, it would have provided before the Board of Appeal additional evidence, which it has included in Annexes A.5 to A.12 to the application. However, it is clear from the foregoing that the applicant was in a position to provide all the relevant arguments and evidence during the proceedings before the Board of Appeal.
72      Lastly, in so far as the applicant complains that the Board of Appeal’s reasoning was insufficient, it must be borne in mind that the first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. However, the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and legal considerations having decisive importance in the context of the decision (judgment of 21 March 2019, TOBBIA, T‑777/17, not published, EU:T:2019:180, paragraph 30; see, also, judgment of 19 December 2019, Karlovarské minerální vody v EUIPO – Aguas de San Martín de Veri (VERITEA), T‑28/19, not published, EU:T:2019:870, paragraph 24 and the case-law cited). Consequently, the fact that the Board of Appeal did not rule on the applicant’s argument relating to the rejection of applications for registration of the mark MONTANA in many countries, such as Switzerland and Russia, is not capable of vitiating the contested decision by a failure to state reasons, since the Board of Appeal, in any event, set out the facts and legal considerations having decisive importance in the context of the decision, a point which the applicant does not dispute.
73      It follows that the second plea must be rejected.
The third plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
74      The applicant submits that the Board of Appeal erred in finding that the relevant public would not consider the figurative mark MONTANA to be indicative of the geographical origin of the contested goods.
75      The applicant disputes the Board of Appeal’s finding that the relevant public is not likely to associate the contested mark with Montana.
76      According to the applicant, at least a significant part of the relevant public knows, as a matter of common knowledge, the US state of Montana. It submits, in that regard, that the number of inhabitants and the size of the cities in that state are irrelevant criteria in assessing that knowledge. Furthermore, it argues that consumers in the European Union are unlikely to associate the term ‘montana’ with the municipality of Crans-Montana in Switzerland and that there is no evidence that they are more aware of places in their vicinity. Moreover, it claims that the fact that a geographical indication designates different places does not preclude it from being recognised as descriptive. In addition, the applicant submits that the Board of Appeal’s finding that consumers in the European Union will equate the term ‘montana’ with that of ‘mountain’ is incorrect.
77      The applicant also disputes the Board of Appeal’s finding that the relevant public is not likely to associate Montana with the contested goods.
78      It submits that there is a presumption that the names of countries, regions and major cities constitute indications designating the geographical origin of the goods. Moreover, it claims that it has shown that there are companies specialising in the manufacturing and distribution of furniture which is exported to Europe. In that latter regard, it argues that it is not necessary to prove that such exports are significant. Furthermore, the applicant observes that many craftsmen and companies have an interest in using the term ‘montana’, a point which it claims is borne out by the introduction of the certification system ‘made in Montana’. In addition, the applicant submits that Montana is a place which is suitable as the seat of companies engaged in the manufacturing and distribution of furniture. It argues that it cannot be held that such an economic development in that state is unlikely from the point of view of the relevant public, because of the geographical characteristics of the place.
79      The applicant also submits that Montana conveys an image of large natural, wild, mountainous and forested areas with housing consisting of log cabins or log houses which contain wooden furniture. It argues that the term ‘montana’ is therefore capable of giving rise to a favourable response on the part of consumers, which influences their tastes.
80      EUIPO and the intervener dispute the applicant’s arguments.
81      It must be borne in mind that, as regards signs or indications which may serve to designate the geographical origin of the categories of goods or the place of performance of the categories of services in respect of which registration of the mark is sought, especially geographical names, it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods or services concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods or services with a place that may give rise to a favourable response (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 26; of 6 September 2018, Bundesverband Souvenir – Geschenke – Ehrenpreise v EUIPO, C‑488/16 P, EU:C:2018:673, paragraph 37; and of 25 October 2018, Devin v EUIPO – Haskovo (DEVIN), T‑122/17, EU:T:2018:719, paragraph 20).
82      First, the registration of geographical names as EU trade marks where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with those goods or services in the mind of the relevant public, is excluded as, secondly, is the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods or services concerned (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 29 and 30; of 15 October 2003, Nordmilch v OHIM (OLDENBURGER), T‑295/01, EU:T:2003:267, paragraph 31; and of 25 October 2018, DEVIN, T‑122/17, EU:T:2018:719, paragraph 21).
83      However, it must be pointed out that, in principle, Article 7(1)(c) of Regulation No 207/2009 does not preclude the registration of geographical names which are unknown to the relevant public – or at least unknown as the designation of a geographical location – or of names in respect of which, because of the type of place they designate, the relevant public is unlikely to believe that the category of goods or services concerned originates there or was conceived of there (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 33; of 6 September 2018, Bundesverband Souvenir – Geschenke – Ehrenpreise v EUIPO, C‑488/16 P, EU:C:2018:673, paragraph 39; and of 25 October 2018, DEVIN, T‑122/17, EU:T:2018:719, paragraph 22).
84      Whether a sign is descriptive can be assessed only, first, by reference to the goods or services concerned and, secondly, by reference to the understanding which the relevant public has of it (judgments of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37, and of 25 October 2018, DEVIN, T‑122/17, EU:T:2018:719, paragraph 23).
85      In making that assessment EUIPO must examine whether the geographical name is known to the relevant public as the designation of a place and whether the name in question suggests a current association, in the mind of the relevant public, with the category of goods or services in question, or whether it is reasonable to assume that such a name may, in the view of that public, designate the geographical origin of that category of goods or services. In making that assessment, particular consideration should be given to the relevant public’s degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned (see, to that effect, judgments of 25 October 2005, Cloppenburg, T‑379/03, EU:T:2005:373, paragraph 38, and of 25 October 2018, DEVIN, T‑122/17, EU:T:2018:719, paragraph 24).
86      It is in the light of those principles that the applicant’s third plea must be examined.
87      It must be stated at the outset that the applicant does not dispute the Board of Appeal’s definition of the relevant public in paragraph 24 of the contested decision, according to which that public consists, in essence, both of members of the general public and of specialists or professionals in the European Union, who pay particular attention when purchasing the goods at issue.
88      By contrast, the applicant disputes the reasoning of the Board of Appeal which led it to find that the relevant public, when faced with the contested mark, would not be likely to associate that sign with the US state of Montana or to perceive that geographical name as an indication of the origin of the goods covered by the contested mark, goods with regard to which it must be borne in mind that they correspond, in essence, to furniture in Class 20 (see paragraph 2 above).
89      In the first place, it must be pointed out that, in paragraphs 29 to 35 of the contested decision, the Board of Appeal found that the contested mark would probably not be perceived by the relevant public as a reference to Montana. In particular, it took the view that although it was the fourth largest state in the United States, it ranked only as 44th out of the 50 US states in terms of population and was little known to the relevant public. In that regard, it pointed out that other states such as California and Florida were more popular tourist destinations than Montana, particularly because that state did not have any cities to which the relevant public would be likely to go for city trips. Furthermore, according to the Board of Appeal, it was not evident that the relevant public would associate the term ‘montana’ with the US state, since that term referred to a mountain in a number of languages of the European Union or to a place which was closer to that public, such as the Swiss municipality of Crans-Montana.
90      The applicant’s arguments are not capable of calling the Board of Appeal’s assessment into question.
91      First, contrary to what the applicant claims, in order to find that that state was not particularly well known to the relevant public, the Board of Appeal pertinently referred to Montana’s relatively small number of inhabitants in relation to its size and to the fact that it did not have any large cities which were liable to make it popular.
92      Secondly, as regards the argument that it is irrelevant to find that the term ‘montana’ could mean ‘mountain’ in certain languages of the European Union or designate other places, it must be pointed out that it is admittedly true that the fact that a mark may have several meanings does not preclude the application of the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgments of 9 March 2010, Euro-Information v OHIM (EURO AUTOMATIC CASH), T‑15/09, not published, EU:T:2010:80, paragraph 39; of 6 October 2017, Karelia v EUIPO (KARELIA), T‑878/16, not published, EU:T:2017:702, paragraph 37; and of 26 June 2019, 200 PANORAMICZNYCH and Others, T‑117/18 to T‑121/18, EU:T:2019:447, paragraph 36).
93      However, by those findings, the Board of Appeal did not intend to find that the term ‘montana’ did not designate the geographical name of Montana, since it had itself pointed out, in paragraph 28 of the contested decision, that the term ‘montana’ could refer to the US state. By relying on the abovementioned findings, the Board of Appeal simply intended to qualify the degree of knowledge of the state of Montana which the Cancellation Division had initially found to exist. That approach is consistent with the case-law referred to in paragraph 85 above according to which EUIPO must, in examining whether the sign at issue is descriptive, assess the relevant public’s degree of familiarity with the geographical name in question.
94      In any event, it must be pointed out that the relevant public’s knowledge of the geographical location in question is only one of the factors to be taken into consideration in assessing whether the contested sign is descriptive. It is apparent from the case-law that, even if the relevant public knows a geographical location, it does not automatically follow that the sign may serve, in trade, to designate geographical origin. In order to examine whether the conditions for application of the ground for refusal of registration at issue have been satisfied, it is necessary to take into account all the relevant circumstances, such as the nature of the goods or services designated, the greater or lesser reputation, especially within the economic sector involved, of the geographical location in question and the relevant public’s greater or lesser familiarity with it, the customs obtaining in the area of activity concerned and the question of to what extent the geographical origin of the goods or services at issue may be relevant, in the view of the relevant public, to the assessment of the quality or other characteristics of the goods or services concerned (judgments of 25 October 2005, Cloppenburg, T‑379/03, EU:T:2005:373, paragraph 49, and of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 30).
95      In the second place, it must be pointed out that, in paragraphs 36 to 59 of the contested decision, the Board of Appeal found that the relevant public was unlikely to perceive a link between Montana and the category of goods at issue. In particular, the Board of Appeal stated that the landscape of Montana was very varied, with the result that it could not be concluded that the relevant public would associate that state with forests. It added that the forest coverage of Montana was lower than that of other states of the United States and of other Member States of the European Union. Furthermore, it found that the evidence provided by the applicant did not show the possible knowledge, on the part of the relevant public, of the presence of furniture- or lumber-related activities in Montana or show that those were activities that might be significant or relevant in that state. It also pointed out that the fact that the goods at issue were exported to Member States of the European Union did not mean that the relevant public would be acquainted with activities relating to wood processing and furniture in Montana, since, moreover, those exports were not significant.
96      The applicant’s arguments are not capable of calling the Board of Appeal’s assessment into question.
97      First of all, the argument that there is a presumption that the names of countries, regions and major cities constitute indications designating the geographical origin of the goods and services is not supported by the case-law and cannot therefore be accepted. On the contrary, as has been pointed out in paragraph 94 above, it does not automatically follow from the relevant public’s knowledge of a geographical location that the geographical name in question may serve, in trade, to designate origin.
98      Next, in so far as the applicant claims to have proved that forestry is important in Montana’s economy and that that state has a significant furniture-related business sector, it is sufficient to point out that the Board of Appeal found, in essence, in paragraphs 50 to 53 of the contested decision, that the evidence put forward by the applicant in that regard was not sufficiently conclusive.
99      Furthermore, the Board of Appeal found, in essence, in paragraphs 54 to 56 of the contested decision, that, although there were companies which manufactured furniture in Montana, the fact remained that the applicant had not proved that the furniture sector was important in that state’s economy or that it gave rise to numerous exports to the European Union which were capable of proving that the relevant public recognised the state of Montana as a well-known furniture-production site. In so doing, the Board of Appeal did not, contrary to what the applicant submits, require a quantitative threshold with regard to exports of the goods concerned, but ascertained whether the applicant had proved that the relevant public was reasonably likely to perceive a sufficiently direct and specific link between the geographical name of the state of Montana and the category of goods at issue.
100    Furthermore, the introduction of the certification system ‘made in Montana’ is irrelevant given that, as the Board of Appeal rightly pointed out, that certification is an internal United States qualification and is not exclusively used in the furniture sector.
101    Lastly, the applicant’s argument that it is not unlikely, from the point of view of the relevant public, that the furniture sector will develop in Montana, since it is a place that is suitable for the manufacturing and distribution of the goods at issue, is irrelevant. It is sufficient to point out that the Board of Appeal did not, in order to find that the contested mark was not descriptive, rely on the fact that the type of geographical location in question precluded the relevant public from associating the goods at issue with Montana (see paragraph 83 above).
102    In the third place, in paragraphs 60 to 71 of the contested decision, the Board of Appeal also found that it could not be accepted that the association of the contested sign with Montana could designate a commercially essential characteristic of the goods covered by that sign. It found that the location in which furniture was manufactured was usually irrelevant. It also found that Montana was not associated with any general favourable response.
103    The applicant’s arguments are not capable of calling the Board of Appeal’s assessment into question.
104    The applicant confines itself to submitting that the term ‘montana’ gives rise to a favourable response on the part of consumers, since the state of Montana conveys an image of large natural, forested areas. However, even if an image of large natural areas could be conveyed by the term ‘montana’, the fact remains that the origin of Montana is not, with regard to the goods concerned, an indication of quality which leads consumers to prefer those goods, as the Board of Appeal correctly found in paragraphs 65 and 69 of the contested decision. The Board of Appeal did not therefore err in pointing out that the relevant public would not expect that those goods would be manufactured in Montana or from raw materials that come from that state.
105    The applicant’s mere assertion that furniture is a category of goods in respect of which the place of origin is important for the relevant public cannot suffice to call that finding into question. Furthermore, the Board of Appeal could validly take the view, without being contradicted in that respect by the applicant, that a furniture producer is likely to use wood of different origins depending on the type of wood required.
106    It follows from the foregoing that the third plea cannot be upheld.
107    Consequently, the action must be dismissed in its entirety.
Costs
108    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.
109    Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO.
110    Since the intervener has not applied for the applicant to be ordered to pay the costs, it must be held that it is to bear its own costs, in accordance with Article 138(3) of the Rules of Procedure.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Franz Schröder GmbH & Co. KG to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);
3.      Orders RDS Design ApS to bear its own costs.
Collins
Kreuschitz
De Baere
Delivered in open court in Luxembourg on 2 June 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.