JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
15 February 2023 (*)
(EU trade mark – Application for European Union word mark BAMBU – Absolute grounds for refusal – Descriptive character – Article 7(1)(b) and (c) of Regulation (EU) 2017/1001)
In Case T‑82/22,
Bambu Sales, Inc., established in Secaucus, New Jersey (United States), represented by T. Stein, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl and T. Frydendahl, acting as Agents,
defendant,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg (Rapporteur) and B. Ricziová, Judges,
Registrar: E. Coulon,
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 based on Article 263 TFEU, the applicant, Bambu Sales, Inc., seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 December 2021 (Case R 1702/2020-1) (‘the contested decision’).
Background to the dispute
2        On 9 August 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign BAMBU.
3        The mark applied for covered goods in, inter alia, following the restriction made during the proceedings before EUIPO, Class 34 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.
4        By decision of 18 June 2020, the examiner rejected, in part, the application for registration of that mark on the basis of Article 7(1)(b) and (c), and (2) 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). The examiner concluded that the mark applied for was descriptive, given that it indicated to the relevant public the characteristics of certain goods, namely that they were wholly or partly made from bamboo or contained parts or elements of bamboo, and that it was therefore devoid of any distinctive character.
5        On 18 August 2020, the applicant lodged an appeal with EUIPO against the examiner’s decision. That action was limited to the following goods (‘the goods at issue’):
‘Vaporizers for the ingestion and inhalation of tobacco and other herbal matter; electronic smoking vaporizers, namely, electronic cigarettes, and electronic smoking vaporizers for use as an alternative to traditional cigarettes; smoker's vaporizer pipe cartridge sold empty; cigar cutters; cigar humidifiers; electric cigarettes; electric cigars; electronic cigarettes; electronic cigarette refill cartridges sold empty; electronic cigars; hookah parts, namely, hoses; humidors; liquefied gas cylinders for cigarette lighters; matches; paraffin matches; pipe pouches; safety matches; smoker's articles, namely, metal pocket-sized receptacles with lids for cigarette butts; smoking pipe cleaners; sulfur matches; tobacco pipe cleaners; tobacco pouches; tobacco tins; yellow phosphorus matches.’
6        By the contested decision, the Board of Appeal upheld the examiner’s decision and dismissed the appeal on the ground that the mark applied for was descriptive, and therefore devoid of any distinctive character, in respect of all of the goods at issue, given that it contained obvious and direct information relating to the characteristics of the goods at issue and was caught by 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.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001 and, secondly, infringement of Article 7(1)(b) of that regulation.
The first plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
10      The applicant submits that the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 on the ground that it found that the mark applied for established a sufficiently close link with the goods at issue and that the registration of that mark would therefore be contrary to the public interest which underlies that provision.
11      EUIPO disputes the applicant’s arguments. Referring to paragraphs 6 and 7 of its response to the contested decision, EUIPO takes the view that the Board of Appeal was entitled to conclude that the term ‘bambu’, which refers to a widely used material, not only had the same meaning in the four languages understood by the relevant public, but was used in the total and partial manufacture of the goods at issue. Consequently, EUIPO takes the view that the mark applied for is descriptive of those goods.
12      According to Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, are not to be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
13      Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
14      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 relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
15      A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
16      By prohibiting the registration as trade marks of such signs and indications, Article 7(1)(c) of Regulation No 2017/1001 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
17      It should be borne in mind that, by using the terms ‘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’ in Article 7(1)(c) of Regulation 2017/1001, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited).
18      The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 2017/1001 are merely those which serve to designate a property, easily recognisable by the relevant public, of the goods or the services in respect of which registration is sought. Therefore, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 32).
19      Furthermore, although it is irrelevant whether such a characteristic is commercially essential or ancillary, a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, must nevertheless be objective and inherent to the nature of that product or service and intrinsic and permanent with regard to that product or service (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 44 and the case-law cited).
20      The first plea in law must be examined in the light of those considerations.
21      In the present case, the Board of Appeal found that the relevant public consisted of Italian-, Spanish-, Portuguese- and Swedish-speaking smokers in the territory of the European Union. That definition of the relevant public is not contested by the applicant.
22      As regards the meaning of the single word element making up the mark applied for, the Board of Appeal found, in paragraph 24 of the contested decision, that it would be understood by the relevant public as referring to ‘bamboo’, namely a genus of giant-grasses, numerous species of which are common throughout the tropics and the stems of which are used as a stick or as material That meaning is not contested by the applicant.
23      By contrast, according to the applicant, the Board of Appeal erred in finding that, having regard to the widespread use of bamboo in raw and processed form, the mark applied for would be perceived by the relevant public as being descriptive of the goods at issue given that it contained obvious and direct information relating to the characteristics of the goods at issue, namely that they were adorned with bamboo or were wholly or partly made from that material. It submits that, from the point of view of the relevant public, there is no sufficiently direct and specific relationship between the mark applied for and the goods at issue or any of their characteristics. In that regard, the applicant submits that, in the absence of such a relationship, the mere fact that those goods may be made from bamboo is not, in itself, sufficient to bring the mark applied for within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001.
24      In that regard, it must be borne in mind that, first of all, according to the case-law, in order for EUIPO to refuse to register a trade mark under Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 26 March 2019, Parfümerie Akzente v EUIPO (GlamHair), T‑787/17, not published, EU:T:2019:192, paragraph 32 and the case-law cited). Therefore, contrary to what the applicant claims, the Board of Appeal could, in order to assess the descriptive character of the mark applied for, rely, without committing an error, on the question of whether, having regard to the fact that more and more goods are being designed using bamboo, the relevant public would perceive the mark applied for, which is composed of a word element referring to that material, as being descriptive of the goods at issue or not.
25      First, as regards humidors and cigar humidifiers, it must be stated, as the applicant submits, that they are made from wood. The applicant states that a particular type of wood, namely cedar, is normally used and that bamboo is not naturally associated with humidors. However, it must be stated that, since that part of the goods at issue may be wholly or partly made from wood, that material from which those goods are made constitutes an objective characteristic which is inherent to the nature of those goods and is intrinsic and permanent with regard to those goods, in accordance with the case-law referred to in paragraph 19 above. Consequently, bamboo, which may be used as a substitute for wood, will constitute, as a manufacturing material, a property of that part of the goods at issue which is easily recognisable to the relevant public. The Board of Appeal was therefore right to conclude that the relevant public would establish a sufficiently direct and specific relationship between the material from which those goods are made, namely bamboo as a substitute for wood, and the term ‘bambu’ making up the mark applied for. Such reasoning also applies to pipe pouches and tobacco tins, in respect of which bamboo, as a substitute for wood, may be used wholly or partly in their manufacture and will therefore be immediately perceived, without further thought, as a characteristic of those goods by the relevant public.
26      Secondly, as regards matches, paraffin matches, safety matches, sulphur matches and yellow phosphorus matches, it must be stated that they are also made from wood, which absorbs the fire retardant in the lower part of the match in order to avoid any burns. In that regard, the applicant states that porous wood is normally used and that bamboo does not fall into that category. However, it is not disputed that matches may be made from bamboo which, apart from the porous character, has, as a substitute for the wood, the same properties as wood normally used in the manufacture of matches, namely, a flammable property so that the match can, by friction of one of its ends, ignite. Consequently, the raw material, namely bamboo, constitutes an objective characteristic which is inherent to the nature of that part of the goods at issue, and intrinsic and permanent with regard to those goods, within the meaning of the case-law cited in paragraph 19 above. It must therefore be held that the relevant public will establish a direct and specific relationship between matches, paraffin matches, safety matches, sulphur matches and yellow phosphorus matches, which are capable of being made from bamboo, and the mark applied for consisting of a word element referring to that material.
27      Thirdly, as regards tobacco pouches, it should be noted, as the applicant submits, that they are pouches, designed using flexible material such as leather or fabric, intended to contain, transport and preserve tobacco. Nevertheless, it must be noted, as the Board of Appeal stated in paragraph 27 of the contested decision, that bamboo may, in a processed form such as bamboo fibre or bamboo leather, be used as a fabric or textile. Consequently, the material, from which that part of the goods at issue is partly or wholly made, will be perceived as an easily recognisable property of those goods by the relevant public, contrary to what the applicant claims. The relevant public will therefore be able to establish a sufficiently direct and specific relationship between the bamboo fibre or bamboo leather and the mark applied for.
28      Consequently, the Board of Appeal was entitled to find that the mark applied for was descriptive of cigar humidifiers, humidors, pipe pouches, tobacco pouches, tobacco tins, matches, paraffin matches, safety matches, sulphur matches and yellow phosphorus matches. The first plea cannot therefore be upheld in so far as it concerns those goods at issue.
29      By contrast, as regards the other goods at issue, it must be observed that the Board of Appeal’s assessment concerning the descriptive character of the mark applied for is incorrect.
30      It is true that, first, as regards vaporisers for the ingestion and inhalation of tobacco and other herbal matter; electronic smoking vaporisers, namely, electronic cigarettes, and electronic smoking vaporisers for use as an alternative to traditional cigarettes; smoker’s vaporiser pipe cartridge sold empty; electric cigarettes; electric cigars; electronic cigarettes; electronic cigarette refill cartridges sold empty; and electronic cigars, bamboo may, admittedly, be partly used in the manufacture of those goods, namely for the tips of vaporisers and electronic and electric cigarettes or the edges of their cartridges which may be designed in or adorned with bamboo. However, it must be stated that, in so doing, the bamboo cannot be regarded as constituting an intrinsic characteristic which is inherent to the nature of the goods mentioned. For that part of the goods at issue, the bamboo has a purely random and incidental aspect which only some of the goods may have and which does not, in any event, have any direct and immediate relationship with their nature. Such goods are available in a multitude of materials, among them bamboo, which is not more prevalent than the others.
31      Furthermore, as the applicant points out, the relevant public cannot, immediately and without further thought, perceive that the goods referred to in paragraph 30 above are partly made from bamboo, since they are generally designed in other materials. In order to establish such a relationship between the goods at issue as such, which are not usually made from bamboo, and bamboo, the relevant public will have to go through multiple stages of reflection, namely to consider the specific circumstances of the use of bamboo as a manufacturing material and to question the properties of that material in relation to the characteristics of the goods at issue. Consequently, the material from which the goods in question are partly made, referred to in paragraph 30 above, does not constitute an easily recognisable characteristic of those goods as such. The mark applied for cannot therefore be understood by the relevant public as a descriptive indication of a characteristic of those goods.
32      As regards, secondly, cigar cutters, smoker’s articles, namely metal pocket-sized receptacles with lids for cigarette butts, liquefied gas cylinders for cigarette lighters, tobacco pipe cleaners, smoking pipe cleaners and hookah parts, namely, hoses, it must be stated that bamboo, in any form, is not in any way, wholly or partly, used in the manufacture of those goods in so far as they are designed in metal, synthetic materials such as silicone or absorbing materials such as cotton or viscose. Consequently, the relevant public will not be able to establish a sufficiently direct and specific relationship between the material in which those goods are made and the mark applied for. The Board of Appeal was therefore incorrect to conclude that the mark applied for was descriptive of those goods.
33      It follows from the foregoing that the first plea must be upheld, alleging infringement of Article 7(1)(c) of Regulation 2017/1001, in so far as it concerns the following goods: vaporisers for the ingestion and inhalation of tobacco and other herbal matter; electronic smoking vaporisers, namely electronic cigarettes, and electronic smoking vaporisers for use as an alternative to traditional cigarettes; smoker’s vaporiser pipe cartridge sold empty; cigar cutters; electric cigarettes; electric cigars; electronic cigarettes; electronic cigarette refill cartridges sold empty; electronic cigars; hookah parts, namely hoses; liquefied gas cylinders for cigarette lighters; smoker’s articles, namely metal pocket-sized receptacles with lids for cigarette butts; smoking pipe cleaners; tobacco pipe cleaners. It must be rejected as to the remainder.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 2017/1001
34      The applicant submits that the Board of Appeal erred in finding that the mark applied for was caught by the absolute ground referred to in Article 7(1)(b) of Regulation 2017/1001 on the basis that it was descriptive within the meaning of Article 7(1)(c) of that regulation.
35      EUIPO did not raise any arguments in its response. However, in paragraphs 45 and 46 of the contested decision, the Board of Appeal stated that since the mark applied for was a descriptive indication of the goods at issue, it had to be concluded that it lacked distinctive character.
36      According to settled case-law, it is evident from the wording of Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as an EU trade mark (see judgment of 9 March 2022, Telefónica Germany v EUIPO (LOOP), T‑132/21, not published, EU:T:2022:124, paragraph 109 and the case-law cited).
37      In the first place, as is apparent from paragraphs 26 to 28 above, the Board of Appeal was correct to find that the mark applied for was descriptive of cigar humidifiers, humidors, pipe pouches, tobacco pouches, tobacco tins, matches, paraffin matches, safety matches, sulphur matches and yellow phosphorus matches. Consequently, in so far as 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) of that regulation (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46), there is no need to examine, in respect of those goods, the merits of the second plea alleging infringement of Article 7(1)(b) of Regulation 2017/1001, which must be rejected (see judgment of 14 July 2021, Aldi v EUIPO (Cachet), T‑622/20, not published, EU:T:2021:446, paragraph 34 and the case-law cited).
38      In the second place, as regards the goods at issue, referred to in paragraphs 30 to 32 above, the Board of Appeal erred in finding that the mark applied for had a descriptive character.
39      Accordingly, in so far as the only reason why the Board of Appeal found, in paragraph 46 of the contested decision, that the mark applied for was devoid of distinctive character lay in its descriptive character, it is also necessary to invalidate the Board of Appeal’s finding that the mark applied for is devoid of distinctive character in respect of the goods at issue referred to in paragraphs 30 to 32 above.
40      Therefore, the second plea must be upheld as regards the goods at issue referred to in paragraphs 30 to 32 above.
41      In the light of all the foregoing considerations, the contested decision must be annulled in so far as it concerns the goods at issue, referred to in paragraphs 30 to 32 above, and the action must be dismissed as to the remainder.
Costs
42      Pursuant to Article 134(3) of the Rules of Procedure of the General Court, the parties are to bear their own costs where each party succeeds on some and fails on other heads.
43      In the present case, since the applicant and EUIPO have each succeeded on some of their heads of claim and failed on others, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 December 2021 (Case R 1702/2020-1) in so far as it concerns the following goods: vaporisers for the ingestion and inhalation of tobacco and other herbal matter; electronic smoking vaporisers, namely electronic cigarettes, and electronic smoking vaporisers for use as an alternative to traditional cigarettes; smoker’s vaporiser pipe cartridge sold empty; cigar cutters; electric cigarettes; electric cigars; electronic cigarettes; electronic cigarette refill cartridges sold empty; electronic cigars; hookah parts, namely hoses; liquefied gas cylinders for cigarette lighters; smoker’s articles, namely metal pocket-sized receptacles with lids for cigarette butts; smoking pipe cleaners; tobacco pipe cleaners;
2.      Dismisses the action as to the remainder;
3.      Orders Bambu Sales, Inc. and EUIPO to bear their own costs.
Kowalik-Bańczyk
Buttigieg
Ricziová
Delivered in open court in Luxembourg on 15 February 2023.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.