JUDGMENT OF THE GENERAL COURT (Third Chamber)
11 October 2023 (*)
(EU trade mark – International registration designating the European Union – Figurative mark THE GOOD GUMS – Absolute grounds for refusal – No distinctive character – Descriptive character – Article 7(1)(b) and (c) of Regulation (EU) 2017/1001)
In Case T‑87/23,
Biogena GmbH & Co. KG, established in Salzburg (Austria), represented by I. Schiffer, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Manea and T. Klee, acting as Agents,
defendant,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, I. Nõmm (Rapporteur) and D. Kukovec, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Biogena GmbH & Co. KG., seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2022 (Case R 1690/2022-4) (‘the contested decision’).
Background to the dispute
2        On 30 August 2021, the applicant obtained from the International Bureau of the World Intellectual Property Organization (WIPO) the international registration designating the European Union and bearing the number 1632678 in respect of the figurative mark reproduced below:
3        That international registration was notified to EUIPO pursuant to 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).
4        The goods for which protection of international registration was sought are in Classes 5, 29 and 30 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.
5        On 24 January 2022, the examiner issued a decision provisionally refusing to register the mark applied for in respect of ‘gums for medical purposes’ in Class 5 and ‘gum sweets (non-medicated); gum sweets’ in Class 30 (‘the goods in question’), in so far as the application for registration conflicted, with regard to them, with the provisions of Article 7(1)(b) and (c) and Article 7(2) of Regulation 2017/1001.
6        By decision of 30 June 2022, following the observations submitted by the applicant, the examiner confirmed the refusal to register the mark applied for in respect of the goods in question.
7        On 30 August 2022, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
8        By the contested decision, the Board of Appeal dismissed the appeal. More particularly, it found that the application for registration conflicted with the absolute grounds referred to in Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
9        In essence, the Board of Appeal found that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001 for the general English-speaking public of the European Union, in so far as it would be perceived to mean ‘high quality sweets that you can chew’ and, accordingly, that it was descriptive of the characteristics of gums for medical purposes in Class 5 and of gum sweets (non-medicated) and gum sweets in Class 30. It further noted that that finding was sufficient to refuse registration of the mark applied for and, in any event, that, due to its descriptive character, the mark applied for was necessarily devoid of any distinctive character in respect of those goods within the meaning of Article 7(1)(b) of that regulation.
Forms of order sought
10      The applicant claims that the General Court should:
–        annul the contested decision;
–        grant the international registration No 1632678 in respect of all the goods applied for;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is to be held.
Law
The jurisdiction of the Court to hear the head of claim by which the Court is requested to issue directions
12      EUIPO maintains that the applicant’s second head of claim is similar to an application for the Court to issue directions to it.
13      It is indeed clear that, to the extent that, by its second head of claim, the applicant asks the Court to grant registration of the mark applied for, it must be regarded as asking the Court to order EUIPO to proceed with the registration of the mark applied for (see, to that effect, judgment of 16 May 2017, Metronia v EUIPO – Zitro IP (TRIPLE O NADA), T‑159/16, not published, EU:T:2017:340, paragraphs 14 and 16).
14      In that regard, it should be borne in mind that, in the context of the review based on Article 263 TFEU, the Court does not have jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited).
15      It follows that the applicant’s second head of claim, by which it asks, in essence, the Court to issue directions to EUIPO, must be rejected since it is brought before a court which does not have jurisdiction to hear it.
Substance
16      In support of its action, the applicant puts forward, in essence, a single plea alleging infringement of Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
17      At the outset, as regards the assessment of the merits of the application by the Board of Appeal of Article 7(1)(b) of Regulation 2017/1001, it should be noted that, in paragraphs 28 to 30 of the contested decision, the Board of Appeal correctly found, first, that the descriptive character of the mark applied for, for the purposes of Article 7(1)(c) of that regulation, was sufficient to refuse its registration and, second, that, in any event, the lack of distinctive character of that mark was inferred from the descriptive character of the goods in question, in application of the case-law according to which the descriptive signs referred to in Article 7(1)(c) of Regulation 2017/1001 are also devoid of any distinctive character within the meaning of Article 7(1)(b) thereof (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46).
18      It is therefore sufficient to ascertain whether the Board of Appeal correctly applied Article 7(1)(c) of Regulation 2017/1001 in finding that the mark applied for was descriptive of the goods in question for the general English-speaking public of the European Union.
19      In the first place, the applicant alleges that the Board of Appeal incorrectly found that the expression constituting the word element of the sign applied for was descriptive of the goods in question. First, the expression ‘the good gums’ does not only have a descriptive meaning in English, since the word ‘gums’ has several meanings. Secondly, the applicant claims that that expression will be understood as a fanciful advertising slogan conveying no information about the goods in question and states that more than 4 400 registered marks contain the word ‘good’. Thirdly, the applicant claims, on the one hand, that the use of the word ‘good’ does not convey any information about the quality of the goods in question and, on the other, that the mark applied for has been registered for those products in English-speaking countries. In the second place, in essence, the applicant maintains that the lack of descriptive character of the mark applied for also results from its distinctive character, relating both to the spelling of its word element and the representation of a stylised bear. In that regard, it highlights the fact that more than 2 500 marks which include the representation of a stylised bear have been registered, including a significant number for gums for medical purposes and gum sweets. In the third place, it alleges that the Board of Appeal found that the relevant public had only an average level of attention when purchasing the goods in question, even though the goods concerned are, in particular, goods for medical purposes, requiring a higher level of information from health specialists.
20      EUIPO, which disputes the applicant’s arguments, maintains that the plea must be rejected.
21      Article 7(1)(c) of Regulation 2017/1001 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Under Article 7(2) thereof, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
22      Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the product or service (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
23      A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
24      Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 2017/1001, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, thus enabling the consumer who acquires the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 2 May 2012, Universal Display v OHIM (UniversalPHOLED), T‑435/11, not published, EU:T:2012:210, paragraph 15; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
25      It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16 and the case-law cited).
26      The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court of Justice has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation 2017/1001 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50). Thus, it is irrelevant whether such a characteristic is commercially essential or merely ancillary (see, by analogy, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 102); a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, must nevertheless be objective and inherent to the nature of the product or service in question (see, to that effect, judgment of 6 September 2018, Bundesverband Souvenir – Geschenke – Ehrenpreise v EUIPO, C‑488/16 P, EU:C:2018:673, paragraph 44).
27      Furthermore, for a trade mark consisting of a neologism or a word produced by a combination of elements to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so. However, a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of the characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to those goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of those parts. In that regard, an analysis of the term in question from the point of view of the relevant lexical and grammatical rules is also relevant (see judgment of 14 June 2017, LG Electronics v EUIPO (Second Display), T‑659/16, not published, EU:T:2017:387, paragraph 20 and the case-law cited).
28      In the light of the principles set out above, it is appropriate to examine whether, as submitted by the applicant, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 in finding that the mark applied for had a descriptive character of the goods in question.
29      In the first place, as regards the relevant public in relation to which the absolute ground for refusal must be assessed, it was without committing an error of assessment that the Board of Appeal found, without being challenged by the applicant, in paragraphs 15 and 16 of the contested decision, that, first, the goods in question were intended for the general public and that, second, since the word element of the sign constituting the mark applied for was composed of English words, the English-speaking part of the European Union had to be taken into account.
30      The applicant, however, disputes the Board of Appeal’s assessment, appearing in paragraph 15 of the contested decision, that the level of attention of the relevant public with regard to ‘gums for medical purposes’ in Class 5 was average.
31      Such a criticism cannot be accepted. It has already been noted that, with regard to commonly used goods in Class 5, sold without a prescription and intended for all consumers, there was no reason to expect an enhanced level of attention from the relevant public (see, to that effect, judgment of 13 September 2016, Paglieri Sell System v EUIPO (APOTEKE), T‑563/15, not published, EU:T:2016:467, paragraph 29). It is clear that this is the case in the present case, at least for a substantial part of the ‘gums for medical purposes’.
32      In the second place, it should be noted that it was also without committing an error of assessment that the Board of Appeal found, in paragraph 18 of the contested decision, that, as regards the goods in question, the expression ‘the good gums’, constituting the word element of the mark applied for, would be understood to mean ‘high quality sweets that you can chew’.
33      The Board of Appeal correctly found, in essence, in paragraphs 19 to 21 of the contested decision that, as regards the goods in question, the word ‘gums’ was capable of being understood as meaning ‘chewing gum’, the use of the adjective ‘good’ in relation to them referring to their quality.
34      In that regard, the fact that the word ‘gums’ may have different meanings is irrelevant, since it follows from settled case-law that a word sign must therefore be refused registration pursuant to Article 7(1)(c) of Regulation 2017/1001 if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32, and of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 38).
35      Likewise, the applicant is also wrong to maintain, in essence, that the use of the term ‘good’ implies that the mark applied for is similar to a fanciful advertising slogan conveying no information about the goods in question. The combination of the terms ‘good’ and ‘gums’ is not unusual or fanciful and is not likely to convey a meaning different from that resulting from their grammatically correct combination, namely a reference to the supposed quality of the goods in question.
36      In the third place, it should be noted that that perception of the word element of the mark applied for, far from being contradicted by its figurative elements, is reinforced by them.
37      Admittedly, as regards composite marks made up of various word and figurative elements, it should be borne in mind that, in order to assess the descriptive character of a composite mark, it is necessary not only to examine the various elements of which the mark is composed but also the mark as a whole, with the result that that assessment must be based on the overall perception of that mark by the relevant public (judgments of 14 July 2017, Klassisk investment v EUIPO (CLASSIC FINE FOODS), T‑194/16, not published, EU:T:2017:498, paragraph 23, and of 5 November 2019, APEDA v EUIPO – Burraq Travel & Tours General Tourism Office (SIR BASMATI RICE), T‑361/18, not published, EU:T:2019:777, paragraph 36).
38      Furthermore, a graphic style, even if it has a certain particularity, cannot be considered to be a distinctive figurative element unless it is capable of making an immediate and lasting impression on the relevant public allowing it to distinguish the goods of the applicant’s figurative mark from those of other suppliers on the market. This is particularly not the case if the graphic style used remains largely common in the eyes of the relevant public or if the figurative element only has the function of highlighting the information conveyed by the word elements (see order of 15 October 2020, Lotto24 v EUIPO (LOTTO24), T‑38/20, not published, EU:T:2020:496, paragraph 28 and the case-law cited).
39      First, it must, however, be stated that the layout and the graphic style of the word element of the mark applied for, namely white letters on a black background arranged on three lines, cannot be regarded as capable of making an immediate and lasting impression on the relevant public allowing it to distinguish the goods of the applicant of the figurative mark from those of other suppliers on the market within the meaning of the case-law referred to in paragraph 40 above, as noted, in essence, by the Board of Appeal in paragraph 22 of the contested decision.
40      Secondly and chiefly, as noted, in essence, by the Board of Appeal in paragraph 25 of the contested decision, the figurative element of the mark applied for, namely a teddy bear, repeats without any form of noticeable originality one of the forms used for marketing the goods in question. Thus, the figurative element of the mark applied for only reinforces the reference to sweets already induced by its word element.
41      In the fourth place, and as a consequence, the Board of Appeal correctly found, in paragraph 27 of the contested decision, that the sign applied for had a sufficiently direct and specific relationship with the goods in question, in application of the case-law referred in paragraph 26 above, for it to be considered descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001.
42      In the fifth place, it should be noted that that finding as to the descriptive character of the mark applied for is not invalidated by the fact alleged by the applicant that it would have been admitted for registration in the United States and in the United Kingdom.
43      First, the provisions that appear under Chapter XIII of Regulation 2017/1001 do not lay down any obligation for EUIPO to recognise decisions on the registration of an international mark taken in third countries (see judgment of 17 January 2019, Ecolab USA v EUIPO (SOLIDPOWER), T‑40/18, not published, EU:T:2019:18, paragraph 47). Second, the EU trade mark system is an autonomous system with its own set of rules and pursued objectives peculiar to it; it applies independently of any national system (see judgment of 6 June 2018, Apcoa Parking Holdings v EUIPO, C‑32/17 P, not published, EU:C:2018:396, paragraph 31 and the case-law cited). Thus, whether a sign is registrable as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or in a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word mark in question originated (see judgments of 30 September 2015, Ecolab USA v OHIM (GREASECUTTER), T‑610/13, not published, EU:T:2015:737, paragraph 41 and the case-law cited, and of 13 July 2017, Ecolab USA v EUIPO (ECOLAB), T‑150/16, not published, EU:T:2017:490, paragraph 43 and the case-law cited).
44      In the sixth place, that finding is also not invalidated by the fact that allegedly similar signs were the subject of a registration.
45      According to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of those boards (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; of 27 June 2017, Jiménez Gasalla v
EUIPO (B2B SOLUTIONS), T‑685/16, not published, EU:T:2017:438, paragraph 39; and of 26 September 2017, Waldhausen v EUIPO (Representation of the silhouette of a horse’s head), T‑717/16, not published, EU:T:2017:667, paragraph 56).
46      It also follows from settled case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law (judgments of 27 June 2017, B2B SOLUTIONS, T‑685/16, not published, EU:T:2017:438, paragraph 40, and of 26 September 2017, Representation of the silhouette of a horse’s head, T‑717/16, not published, EU:T:2017:667, paragraph 58). Thus, it is true that, with regard to the principles of equal treatment, legal certainty and good administration, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not (judgments of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL), T‑290/15, not published, EU:T:2016:651, paragraph 67, and of 20 July 2017, Windfinder R&L v EUIPO (Windfinder), T‑395/16, not published, EU:T:2017:530, paragraph 71). Nevertheless, the way in which those principles are applied must be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as an EU trade mark cannot rely on a possibly unlawful act to his or her advantage or to the benefit of someone else in order to secure an identical decision (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 68 and the case-law cited).
47      Moreover, for reasons, indeed, of legal certainty and of good administration, the examination of any application for registration must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case because the registration of a sign as an EU mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments of 15 September 2017, sheepworld v EUIPO (Beste Mama), T‑422/16, not published, EU:T:2017:606, paragraph 46, and of 26 September 2017, Representation of the silhouette of a horse’s head, T‑717/16, not published, EU:T:2017:667, paragraph 59).
48      In the present case, first, it is apparent from the assessment made in paragraphs 31 to 43 above that the Board of Appeal correctly found, on the basis of a full examination which took account of the perception of the relevant public, that the application for an EU trade mark submitted by the applicant was caught by one of the grounds for refusal set out in Article 7(1) of Regulation 2017/1001. Second, it should be noted that the registered marks relied on by the applicant are very clearly different from the mark applied for.
49      In the light of all of the foregoing, the Board of Appeal correctly found that the mark applied for had been registered in breach of Article 7(1)(c) of Regulation 2017/1001 and, for the reasons set out in paragraph 17 above, of Article 7(1)(b) of that regulation, and dismissed the action brought against the examiner’s decision. It is therefore necessary to reject the single plea put forward by the applicant.
50      This action must therefore be dismissed.
Costs
51      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.
52      Although the applicant has been unsuccessful, EUIPO only applied for the latter to be ordered to pay the costs if the parties were summoned to a hearing. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Schalin
Nõmm
Kukovec
Delivered in open court in Luxembourg on 11 October 2023.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.