JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
11 April 2019 (*)
(EU trade mark — Invalidity proceedings — European Union figurative mark Bio proof ADAPTA — Declaration of invalidity by the Board of Appeal — Absolute grounds for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2007/1001) — No distinctive character acquired by use — Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001) — Infringement of the right to be heard — Obligation to state reasons — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) — Evidence submitted for the first time before the Court)
In Case T‑224/17,
Adapta Color, SL, established in Peñiscola (Spain), represented by G. Macías Bonilla, by G. Marín Raigal and by E. Armero Lavie, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, A. Söder and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Coatings Foreign IP Co. LLC, established in Wilmington, Delaware (United States), represented by A. Rajendra, Solicitor, and by S. Malynicz QC,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 6 February 2017 (Case R 2521/2015-5), relating to invalidity proceedings between Coatings Foreign IP and Adapta Color.
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, D. Spielmann (Rapporteur) and Z. Csehi, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 19 April 2017,
having regard to the response of EUIPO lodged at the Court Registry on 25 September 2017,
having regard to the response of the intervener lodged at the Court Registry on 18 September 2017,
having regard to the decision of the President of the Sixth Chamber of 24 April 2018 joining Cases T‑223/17 to T‑226/17 for the purposes of the oral part of the procedure,
further to the hearing on 17 September 2018,
gives the following
Judgment
Background to the dispute
1        On 29 April 2005, the applicant, the company Adapta Color SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p.1) (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p.1)), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which Community registration was sought are in Classes 1, 2 and 39 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 for each of those classes:
–        Class 1: ‘Chemicals used in industry, namely solvents for varnishes, salts for colouring metal, colour-preparing and brightening chemicals for industrial purposes, decolorants, chemicals for preparing and staining enamels, opacifiers for enamel’;
–        Class 2: ‘Paints, in particular antibacterial paints in powder form, varnishes, dyes, lacquers; binding preparations, siccatives and thinners, all being additives for paints, varnishes and lacquers; paints in powder form; preservatives against rust and against deterioration of wood; anti-rust preparations (similar to paint); colorants; mordants; raw natural resins; metals in foil and in powder form for painters, printers and artists’;
–        Class 39: ‘Distribution, transport and storage of paints, varnishes, enamels, colorants and anti-rust preparations’.
4        The trade mark application was published in Community Trade Marks Bulletin No 47/2005 of 21 November 2005 and the mark was registered on 2 June 2006.
5        On 25 March 2014, the intervener, Coatings Foreign IP Co. LLC, filed an application for declaration of invalidity in respect of that trade mark, in accordance with Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation (EU) 2017/1001), read in conjunction with Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001).
6        By decision of 23 October 2015, the Cancellation Division of EUIPO rejected the application for a declaration of invalidity in its entirety, finding that the contested mark was neither descriptive of the goods and services in respect of which it had been registered nor devoid of distinctive character.
7        On 17 December 2015, the intervener lodged an appeal with EUIPO in accordance with Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001) against that decision of the Cancellation Division.
8        By decision of 6 February 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO annulled the decision of the Cancellation Division. As regards the relevant public, it found that the goods listed in Class 1 and the services listed in Class 39 were intended mainly for professional users, whereas the goods listed in Class 2 might be intended both for professional consumers and for general consumers whose level of interest was quite high. On considering the Spanish public and referring also to the Romanian and Portuguese-speaking public, it took the view that the contested sign, considered as a whole, was descriptive of the goods and services in question within the meaning of Article 7(1)(c) of Regulation (EC) No 207/2009. Furthermore, the Board of Appeal found that the contested sign was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. Since the applicant claimed that its trade mark had acquired a distinctive character through its use in the market, the Board of Appeal examined the evidence provided to demonstrate this, which in essence was identical to that summarised in decision R 2522/2015-5, and concluded that it did not prove that the contested sign had acquired a distinctive character through its use on the market.
9        The Board of Appeal therefore declared the contested EU trade mark to be invalid.
Forms of order sought
10      Following the oral hearing, the applicant requests the Court to:
–        annul the contested decision;
–        order EUIPO and, as the case may be, the intervener to pay the costs.
11      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility of the documents produced for the first time before the Court
12      EUIPO and the intervener raise a plea of inadmissibility with regard to annexes A 9 to A 12 on the ground that they have been submitted for the first time before the Court. Annex A 9 contains a study concerning the knowledge and use of English words in the powder coating sector and the interpretation of the mark ADAPTA POWDER COATINGS in Spain and other countries; Annex A 10 concerns registrations of trade marks containing the words ‘bio pruf’ or ‘bio proof’ in Brazil and the United States; Annex A 11 contains an economic study carried out in 2017 on the market shares and reputation of the mark containing the word ‘adapta’ and Annex A 12 contains the applicant’s trade mark registrations in relation to the mark ADAPTA.
13      It is not disputed by the parties that those annexes were not produced before the Board of Appeal of EUIPO.
14      The purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, within the meaning of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), with the result that it is not the Court’s function to review the facts in the light of evidence adduced for the first time before it (judgment of 23 January 2018, Wenger v EUIPO — Swissgear (SWISSGEAR), T‑869/16, not published, EU:T:2018:23, paragraph 21).
15      Consequently, those annexes, in so far as they relate to the Spanish-speaking public, at issue during the administrative procedure, cannot be taken into consideration in the context of the present action and must therefore be rejected as inadmissible.
16      The applicant claims that the production of those annexes responds to the need to refute the arguments put forward, for the first time, in the contested decision concerning the Romanian and Portuguese public.
17      In so far as those annexes specifically concern the Romanian and Portuguese public, it should be noted that they relate to factual elements referred to in the contested decision and which therefore fall within the factual framework of the proceedings before the Board of Appeal (see, to that effect and by analogy, judgment of 8 December 2005, Castellblanch
v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 17 and 20). They are therefore admissible to that extent.
18      For its part, the intervener maintains that Annex A 7 to the application is also inadmissible.
19      The applicant claims that it is justified in producing Annex A 7, given the reasoning provided in respect of the Romanian and Portuguese public that was introduced for the first time by the Board of Appeal of EUIPO and in respect of which, therefore, it has previously been unable to comment.
20      It should be noted that Annex A 7 identifies various EU trade marks containing the word ‘adapta’ taken from the EUIPO database.
21      In that regard, it must be borne in mind that facts which EUIPO had to take into account of its own motion may be put forward for the first time before the Court. EUIPO must, when examining an application for registration of an EU trade mark, take into account decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (see judgment of 23 January 2018, SWISSGEAR, T‑869/16, not published, EU:T:2018:23, paragraph 25 and the case-law cited).
22      According to that case-law, it is for EUIPO to examine of its own motion whether it has adopted decisions concerning similar applications for registration, with the result that a party is entitled to submit for the first time before the Court extracts from EUIPO’s register of trade marks which, according to that party, relate to similar marks. Furthermore, such extracts are not evidence in the strict sense, but relate to EUIPO’s decision-making practice, inasmuch as they partially explain how that practice is applied. A party has the right to refer to EUIPO’s practice in support of a plea alleging that the Board of Appeal infringed a provision of Regulation No 207/2009 (judgment of 23 January 2018,
SWISSGEAR, T‑869/16, not published, EU:T:2018:23, paragraph 26).
23      It follows that Annex A 7 to the application is admissible and that Annexes A 9 to A 12 should be declared inadmissible in so far as they concern the Spanish-speaking public.
Substance
24      In support of its action, the applicant puts forward four pleas in law. The first alleges infringement of Articles 75 and 76 of Regulation No 207/2009. The second plea alleges infringement of the general principles of legal certainty, equality of treatment and sound administration. The third alleges infringement of Article 52(1)(a) and of Article 7(1)(b) and (c) of Regulation No 207/2009 and the fourth infringement of Article 7(3) of that regulation.
First plea, alleging infringement of Articles 75 and 76 of Regulation No 207/2009
25      The first plea can be subdivided into two parts, one based on the right to be heard and the other alleging a failure to state reasons.
–       Infringement of the right to be heard in relation to the Portuguese and Romanian public
26      The applicant claims, as regards the contested decision, that the Board of Appeal based its finding that the contested mark was devoid of distinctive character on considerations relating to the Portuguese and Romanian public, when those considerations had never been put forward by the parties and it had not been given the opportunity to defend its position in that regard. The subject matter of the dispute was altered by this, in breach of Articles 75 and 76 of Regulation (EC) No 207/2009.
27      EUIPO and the intervener dispute those arguments.
28      Under the second sentence of Article 75 of Regulation No 207/2009, 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. The general principle of protection of the right to defend oneself is enshrined in the law of trade marks by that provision. That principle includes the right to be heard which is enshrined in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union. In accordance with that principle, any person who has been adversely affected by a decision of a public authority must have been afforded the opportunity effectively to make known his views before the adoption of that decision. The right to be heard extends to all the matters of fact or of law which form the basis for that decision, but not to the final position which the public authority intends to adopt (see judgment of 23 September 2015, Mechadyne International v OHIM (FlexValve), T‑588/14, not published, EU:T:2015:676, paragraphs 12 and 13 and the case-law cited).
29      Furthermore, pursuant to the second sentence of Article 76(1) of Regulation No 207/2009, in the version applicable at the date of the contested decision, in proceedings concerning absolute grounds for refusal of registration, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.
30      In the present case, it is apparent from the contested decision that the Board of Appeal indicated that the relevant public consisted, for goods and services in Classes 1 and 39, of the professional public with a higher than average level of attention and, in relation to the goods in Class 2, professionals and the general public with a high attention level. Furthermore, having noted that the contested mark was composed of English and Spanish words, it considered that the analysis had to be undertaken ‘in reference to English and Spanish (to which can be added Portuguese and Romanian)’.
31      It thus mentioned, on several occasions, the Portuguese and Romanian public or territory, whereas it appears from the information in the file that the parties had not previously referred to this. It is apparent from the written pleadings lodged by the parties during the administrative procedure that they refer to the English and Spanish-speaking public in the European Union.
32      As the applicant submits, the fact that it was not heard on that issue constitutes a procedural irregularity (see, by analogy, judgment of 13 December 2016, Guiral Broto
v EUIPO — Gastro & Soul (CAFE DEL SOL), T‑549/15, not published, EU:T:2016:719, paragraph 31).
33      Nevertheless, such an irregularity can vitiate the administrative procedure only if it is shown that, had it not been for that irregularity, the outcome of the procedure might have been different (see, to that effect, judgments of 15 July 2015, Australian Gold
v OHIM — Effect Management & Holding (HOT), T‑611/13, EU:T:2015:492, paragraph 18, and of 13 December 2016, CAFE DEL SOL, T‑549/15, not published, EU:T:2016:719, paragraph 32).
34      In the present case, it is apparent from the contested decision that the Board of Appeal’s assessment focuses on the descriptive and non-distinctive character with regard to the Spanish public and, as EUIPO and the intervener indicate, the reference to the Portuguese and Romanian public is not decisive and did not feature significantly in the contested decision.
35      Therefore, as EUIPO and the intervener indicate, it is not established that the Board of Appeal could have adopted a different solution if it had overlooked the Portuguese and Romanian public, which is merely in addition to the Spanish public, the only decisive public in the present case.
36      It follows that the Board of Appeal committed a procedural irregularity and that account should not be taken of the considerations in the contested decision relating to the Portuguese and Romanian public, there being no need, at this stage, to find that that decision should be annulled.
–       Breach of the obligation to state reasons
37      The applicant submits that the contested decision is vitiated by a failure to state reasons in several respects.
38      It should be recalled that, under the first sentence of Article 75 of Regulation No 207/2009, decisions of EUIPO must state the reasons on which they are based. It is settled case-law that that obligation has the same scope as that laid down in the second paragraph of Article 296 TFEU and that the statement of reasons required by that provision must disclose in a clear and unequivocal manner the reasoning followed by the body which adopted the measure in question. The duty to state the reasons on which decisions of EUIPO are based has a twofold objective: to enable the persons concerned to ascertain the reasons for the measure so that they can defend their rights, and to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision (see judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 64 and 65, and of 23 September 2015, FlexValve, T‑588/14, not published, EU:T:2015:676, paragraph 57).
39      Whether the statement of reasons for a decision satisfies those requirements is a matter to be assessed by reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see judgment of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 20 and the case-law cited).
40      Finally, it should be pointed out that a claim that there is no, or only an inadequate, statement of reasons constitutes a plea of infringement of an essential procedural requirement, which, as such, is different from a plea that the grounds of the decision are inaccurate, the latter plea being a matter to be reviewed by the Court when it examines the substance of that decision (see, to that effect, judgments of 2 April 1998, Commission
v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraph 67, and of 23 September 2015, FlexValve, T‑588/14, not published, EU:T:2015:676, paragraph 59).
41      First, in the light of paragraph 36 above, the Court must reject as ineffective the applicant’s argument concerning breach of the obligation to state reasons as regards the Portuguese public and Romanian public.
42      Secondly, the applicant submits that the statement of reasons for the contested decision is contradictory, since it acknowledges the low level of knowledge of English in Spain while at the same time basing the lack of distinctive character of the contested mark on the knowledge of specialised professionals of the words ‘bio proof’.
43      However, as EUIPO states, there is no contradiction in finding that the general public in Spain does not have a good knowledge of English but that, on the other hand, the specialised public in that territory would understand the words in question, namely an adaptable biological protection. The fact that the Board of Appeal refers to the decision of 15 December 2009 (Case R 777/2008-4) concerning another English word does not alter that conclusion.
44      Moreover, according to the applicant, the evidence produced by the intervener and relied on by the Board of Appeal is not relevant, as it concerns countries outside the European Union and relates to periods subsequent to the application for registration or the registration of the contested mark.
45      That argument concerns the validity of the reasoning and will be examined below in the third plea (see paragraphs 73 to 90 below).
46      Finally, the applicant claims that the contested decision is vitiated by a failure to state reasons on the ground that it merely stated that all the products analysed had a more or less direct link with painting without distinguishing between each category of products, which it contests on the basis of the registration of marks including the words ‘bio proof’, in particular in Brazil and the US.
47      According to the case-law, first, the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought and, secondly, the decision by which the competent authority refuses registration of a mark must, in principle, state reasons in respect of each of those goods or services (judgments of 15 February 2007, BVBA Management, Training en Consultancy, C‑239/05, EU:C:2007:99, paragraph 34, and of 17 May 2017, EUIPO
v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 29).
48      However, as regards that last requirement, the Court has stated that the competent authority could use only general reasoning for all of the goods and services concerned where the same ground for refusal was given for a category or group of goods or services (judgments of 15 February 2007, BVBA Management, Training en Consultancy, C‑239/05, EU:C:2007:99, paragraph 37, and of 17 May 2017, EUIPO
v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30).
49      The Court then made clear that such a power extended only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services, which is assessed on the facts (see, to that effect, judgments of 17 May 2017, EUIPO
v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 31 to 34, and of 16 May 2013, Restoin v OHIM (EQUIPMENT), T‑356/11, not published, EU:T:2013:253, paragraph 18).
50      In the present case, it is apparent from the contested decision that the Board of Appeal took account of the different categories of goods and services in question. In the context of the definition of the goods and services concerned, it thus pointed out, class by class, the goods and services concerned, making the link with the meaning of the contested mark. In the context of its analysis of the descriptive character, it then referred generally to those goods concerned to find that consumers will tend to read the contested mark as a reference to a type of treatment or painting or coating system that can withstand specific species responsible for potential biological contamination (moulds, bacteria, etc.), which prevents (i.e. ‘protects’ against) that type of contamination and adapts to the biological hazards to which it may be exposed. It found that the association would be directly obvious and that that finding would also apply to the services included in Class 39 intended for distribution, transport and storage of such goods. It thus held that the mark at issue will be understood, in relation to all of those goods and services, as a descriptive reference to the characteristics of those goods and services.
51      In that regard, it certainly used general reasoning without applying its analysis to each of the goods and services concerned. However, as EUIPO states, both the chemicals referred to in Class 1, and the paints, preparations and other goods in Class 2 and the services of distribution, transport and storage of paints and other goods referred to in Class 39 concern the field of paints, coatings, adaptable materials, adaptable industrial applications and associated services.
52      To that extent, the goods and services in question have a sufficiently direct and specific link to each other within the meaning of the case-law cited in paragraphs 48 and 49 above and all the factual and legal considerations which constitute the grounds of the decision in question can be applied without distinction to each of the goods and services concerned.
53      It follows that the statement of reasons for the contested decision, although comprehensive, is sufficient in the present case and does not defeat the purpose of the duty to state reasons, under the first sentence of Article 75 of Regulation No 207/2009, which is to permit judicial review of a decision refusing or cancelling the registration of an EU trade mark.
54      It follows from all the foregoing that the applicant’s arguments relating to the statement of reasons for the contested decision must be rejected as must, accordingly, the first plea in its entirety.
The second plea, alleging infringement of the general principles of legal certainty, equal treatment and sound administration
55      The applicant claims that the Board of Appeal should have taken account of national registrations of trade marks containing the word ‘adapta’ or the word ‘bio-prof” or the equivalent covering goods which were identical or similar to those covered by the contested mark. It should also have taken account of prior European registrations and indeed of its own past decision-making practice.
56      EUIPO and the intervener dispute those arguments.
57      It should be pointed out that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration and, as indicated in paragraph 21 above, must take account of the decisions already taken in respect of similar applications (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol
v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 and 74).
58      However, the way in which those principles are applied must be consistent with respect for the principle of legality. Consequently, a person who applies for registration of a sign as an EU trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed in his favour or in favour of a third party (see judgment of 23 April 2018, Genomic Health
v EUIPO (ONCOTYPE DX GENOMIC PROSTATE SCORE), T‑354/17, not published, EU:T:2018:212, paragraph 47 and the case-law cited). Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. 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 (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 to 77).
59      In the present case, it is apparent from the contested decision that the Board of Appeal took into account the Spanish trade mark registrations containing the element ‘adapta’. However, it found that the relevant goods in the present case were not included in the specification of a large part of those marks and that many of them consisted of other word or figurative elements. It added that the circumstances surrounding their registration were not known and could not therefore be decisive in the present case. The Board of Appeal made the same observations regarding certain European Union trade marks relied on by the applicant.
60      Accordingly, the applicant’s assertion that the Board of Appeal did not take into account those national and European registrations must be rejected as being incorrect. The fact that the Board of Appeal did not reach the conclusion desired by the applicant does not mean that it failed to take account of the registrations relied on. In accordance with the case-law cited in paragraph 58 above, the earlier decisions by the Boards of Appeal cannot be considered as giving rise to legitimate expectations (see, to that effect, judgment of 23 April 2018, EUIPO ONCOTYPE DX GENOMIC PROSTATE SCORE, T‑354/17, not published, EU:T:2018:212, paragraph 51 and the case-law cited).
61      Furthermore, as regards the various EU trade marks containing the word ‘adapta’ and the words ‘bio prof’ or ‘bio-pruf’ mentioned in Annex A 7 to the application, it must be held that it was correct that EUIPO did not examine them of its own motion. Indeed, as EUIPO states, on the one hand, certain marks do not concern the classes of goods and services in question in the present case and, secondly, they relate to different words or figurative elements. For example, the bioproof mark, for which the applicant had filed an opposition, was registered but for goods in Class 5. It is true that the marks bio-pruf and bio-pruf treated have been registered for goods in Class 1 as in the present case. However, in accordance with the case-law cited in paragraph 58 above, the examination must be undertaken in each individual case to ascertain whether the sign at issue is caught by a ground for refusal. The fact of not having applied the same approach in the present case is not in itself a breach of the general principles invoked. The same applies to the decisions of the Board of Appeal mentioned in Annex A 8 to the application.
62      It follows that none of the principles invoked by the applicant has been infringed in the present case and therefore the second plea must be rejected.
The third plea in law, alleging infringement of Article 52(1)(a) and of Article 7(1)(b) and (c) of Regulation No 207/2009
63      The applicant contests the assessment of the Board of Appeal, which found that the contested trade mark is descriptive and devoid of any distinctive character.
64      EUIPO and the intervener dispute the applicant’s arguments.
65      Under Article 52(1)(a) of Regulation No 207/2009, the invalidity of an EU trade mark is to be declared, on application to EUIPO, where the EU trade mark has been registered contrary to the provisions of Article 7 of that regulation.
66      It is apparent from Article 7(1)(c) of Regulation No 207/2009, 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. Moreover, Article 7(2) of that Regulation provides that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
67      According to case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31, and of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 12).
68      Furthermore, signs or indications which may serve, in trade, to designate the characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, in order thereby to enable the consumer who purchases the goods or services designated by the mark to make the same choice again, on the occasion of a subsequent purchase, if it is a positive experience, or to make a different choice, if it is a negative one (judgment of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 13; see also, to that effect, judgment of 23 October 2003, OHIM
v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
69      It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned to immediately perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgments of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 14 and the case-law cited, and of 27 February 2015, Universal Utility International
v OHIM (Greenworld), T‑106/14, not published, EU:T:2015:123, paragraph 16 and the case-law cited).
70      It must also be borne in mind that the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 27 February 2015, Greenworld, T‑106/14, not published, EU:T:2015:123, paragraph 19).
71      It was therefore for the Board of Appeal to examine, on the basis of a given meaning of the contested trade mark, whether, at the relevant date, there was, from the point of view of the relevant public, a sufficiently direct and specific relationship between the contested mark and the characteristics of the categories of services for which registration had been sought, within the meaning of Article 7(1)(c) of Regulation No 207/2009.
72      The applicant’s arguments must be examined in the light of those principles.
73      First, the applicant claims that the application for a declaration of invalidity was granted by reference to languages and to a public which are not relevant. It adds that the Board of Appeal referred to the Romanian public, whereas the accession of Romania only took place on 1 January 2007.
74      As stated in paragraphs 30 to 36 above, the reference to the Portuguese and Romanian public made by the Board of Appeal cannot be taken into consideration in the present case.
75      It is therefore appropriate to examine the assessment of the Board of Appeal without taking into account the elements relating to the Portuguese and Romanian public.
76      As regards the relevant public, it should be noted that the contested decision refers essentially to Spanish consumers whose level of attention is higher than average, either because they are professionals for the goods and services included in Classes 1 and 39, or because they are DIY amateurs or enthusiasts whose level of attention is high.
77      The contested mark is composed, first of the Spanish word ‘adapta’ meaning ‘adapt’ and, secondly, of the group of two English words ‘bio proof’. The word ‘bio’ is a well-known abbreviation of the word biological, which refers to ‘life’ or ‘living organisms’, while the word ‘proof’, in the present context, refers directly to being ‘proof of something, resistant to something’.
78      As the applicant submits, the relevant public is therefore English-speaking and Spanish-speaking consumers.
79      As regards the level of attention of the relevant public in the present case, the applicant merely asserts that it does not share the assessment of the Board of Appeal.
80      However, as is apparent from the contested decision, it must be held that the goods in Class 1 and the services in Class 39 are intended solely for use in industrial applications and therefore for professionals. In addition, although the goods included in Class 2 may also be addressed to the general public, the latter will nevertheless display a high level of attention.
81      Having regard to the goods and services concerned, the Board of Appeal’s assessment concerning the level of attention of the relevant public, which varied from average to high, must therefore be upheld.
82      Secondly, the applicant claims that the Board of Appeal wrongly relied on evidence produced by the intervener and decisions which are irrelevant because they relate to periods subsequent to the date of the application for registration of the contested mark.
83      In that regard, the relevant date for the purpose of examining, in the context of an application for a declaration of invalidity based on Article 52(1)(a) of Regulation No 207/2009, the compliance of an EU trade mark with Article 7 of that regulation is the date of filing of the application for registration. The fact that the case-law allows subsequent material to be taken into account, far from weakening that interpretation of Article 52(1)(a) of Regulation No 207/2009, reinforces it, since that taking into account is only possible where that material relates to the situation at the date of filing of the trade mark application (see, to that effect, order of 5 October 2004, Alcon
v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 40 and 41; judgments of 6 March 2014, Pi-Design and Others
v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraphs 59 and 60; and of 11 May 2017, Bammer
v EUIPO — mydays (MÄNNERSPIELPLATZ), T‑372/16, not published, EU:T:2017:331, paragraph 24 and the case-law cited).
84      In the present case, the application for registration was lodged on 29 April 2005. That is precisely the date taken into account in the contested decision. Whereas, in paragraph 11 of the contested decision, the date of 12 September 2005 is mentioned as a result of an error accepted by EUIPO at the hearing before the General Court, the Board of Appeal expressly stated, in paragraph 11, that the situation had to be assessed on the date of the application for registration.
85      In that context, the applicant submits that the Board of Appeal could not rely, on the one hand, on evidence produced by the intervener during the administrative procedure to demonstrate the understanding by professionals in Spain of the words used in the contested mark and, on the other, on judgments and on the decision of the Board of Appeal of 15 December 2009 (Case R 777/2008-4) cited in the contested decision, subsequent to the filing date of the application for registration of the contested mark.
86      It should be noted that the evidence produced by the intervener, referred to by the applicant, consisted in particular of a printout from the applicant’s website showing its business values in English, a printout of the Wikipedia entry establishing the meaning in English and the industrial characteristics of BIOFOULING and brochures concerning the products of businesses with activities in the paint industry or that distribute the products presented in the European Union, some of which include the word ‘bio’.
87      However, while it is true that that evidence dates from 2014 and is therefore subsequent to the relevant date, it must be noted that it is not mentioned in the statement of reasons for the contested decision. Therefore, the applicant’s argument in that regard is ineffective.
88      It is also true that the Board of Appeal relied on the abovementioned decision of 15 December 2009 and on judgments also subsequent to the date of filing the application for registration of the mark at issue.
89      However, that decision of the Board of Appeal of 15 December 2009, which concerned the likelihood of confusion between the mark CYNIA COATING, for which the application for registration dated from 2006, and the national and international mark CIN COATINGS, was referred to by the Board of Appeal to illustrate the fact that professional users in the paint industry were familiar with basic English words in the sector and to substantiate the high level of attention of the relevant public in the present case. It is therefore an element which, although subsequent to the date of filing of the application for registration, could enable it to draw conclusions on the situation as it stood on that date and could therefore, without error of law, be taken into consideration pursuant to the abovementioned case-law (paragraph 83 above). Indeed, as EUIPO submits, this is particularly the case for documents evidencing the meaning of words in a certain language and their understanding by the relevant public, namely, in the present case, Spanish professional consumers of the goods and services covered by the contested mark. Moreover, there is nothing to indicate that the meaning of the words ‘bio’, ‘proof’ and ‘adapta’ have changed after the filing date of the contested mark. As regards the judgments of the General Court, they are cited only as case-law and not as evidence.
90       The Board of Appeal did not therefore err in law in that regard.
91      Thirdly, the applicant submits that the words of the contested mark are not descriptive for any reference public mentioned in the contested decision, and not even for the English-speaking public.
92      On the question of whether the Spanish-speaking public understands the group of English words ‘bio proof’, the Board of Appeal stated that the relevant consumers included specialists who understand those words and that it is also highly likely that those words will be known by specialists in the industrial sector in most European countries. The Board of Appeal referred to its abovementioned decision of 15 December 2009 to substantiate the fact that professional users in the paint industry were familiar with the basic English words in the sector. It pointed out that, although the expression ‘bio proof adapta’ was not entirely grammatically correct, the deviation from the correct grammar was not sufficient to render the words non-descriptive.
93      That assessment must be endorsed, since the relevant public consists of industry specialists and well-informed consumers and those words are directly linked to the area in which they are active. As the Board of Appeal noted, the combination of the words ‘bio’ and ‘proof’ clearly refers to the notion of resistance to biological risks or hazards. The mark Bio proof ADAPTA taken as a whole thus makes direct reference, in a way that is obvious to the relevant public, to goods in Classes 1 and 2 that have the characteristic and purpose of being adaptable to the biological hazards to which they are likely to be exposed, thus providing protection against those hazards. Those words also indicate what is the purpose of the services in Class 39, namely the transport, distribution and storage of those goods. The word ‘bio’ is, in particular, frequently used for goods in general, which the Cancellation Division has itself noted. The combination of the word elements thus contains the sum of the meanings lent by them and, as the Board of Appeal found, the relevant public will be able to understand the meaning of them, without resorting to particularly complex reasoning.
94      Furthermore, as the Board of Appeal noted, even if the expression as a whole is not quite grammatically correct, it is nevertheless understandable and common in the advertising sector.
95      Therefore, the Board of Appeal rightly held that the contested mark was descriptive of the goods and services in question in the eyes of the relevant Spanish public.
96      It is true that, as the applicant submits, the Board of Appeal did not take into account the English public. However, since the mark was considered descriptive for the Spanish-speaking public, it is all the more so for the English-speaking public, which will undoubtedly understand the expression ‘bio proof adapta’. The group of two English words ‘bio proof’ will be understood by the English-speaking public and the word ‘adapta’ is easily understood by that public, who will associate it with the English verb ‘to adapt’. The fact put forward by the applicant, that there are ADAPTA marks in the United Kingdom, does not invalidate that finding. It must be held that, independently of the admissibility of such an argument before the General Court, the reference to the existence of such marks, without any clarification of the context in which they were registered, does not demonstrate that that word is devoid of meaning in the present case for the English-speaking public.
97      The contested mark is, therefore, a fortiori descriptive with regard to the English-speaking public.
98      Finally, fourthly, the applicant claims that the graphic and structural elements confer sufficient distinctive character on the contested mark and it refers to the national and European registrations cited in the second plea.
99      As regards marks composed of several word and figurative elements, it must be borne in mind that, in order to assess the descriptive character of a compound mark, not only must the various elements of which it is composed be examined but also the mark as a whole, so that such an assessment must be based on the overall perception of that trade mark by the relevant public. The mere fact that each of those elements, considered separately, is descriptive does not preclude that their combination may be devoid of such character (see, to that effect, judgments of 8 May 2008, Eurohypo
v OHIM, C‑304/06 P, EU:C:2008:261, paragraphs 41 and 42, and of 14 July 2017, Klassisk investment
v EUIPO (CLASSIC FINE FOODS), T‑194/16, not published, EU:T:2017:498, paragraph 23).
100    In the present case, however, as EUIPO and the intervener indicate, the figurative element, consisting of a rectangular frame, two simple arches facing each other, a general white and green background and the word ‘adapta’, in a larger blue font, consists of simple and purely decorative forms. The word element dominates the contested mark and the Board of Appeal, which took due account of that figurative element, was therefore right to find that it would not prevent the direct and specific perception of the factual meaning arising from the words of the contested trade mark. While the existence of an additional figurative element can change the perception of the mark taken as a whole, that is not the case here and the attention of the relevant public is not diverted from the clear descriptive message conveyed by the word elements.
101    The Board of Appeal committed no error, therefore, in finding that, from the point of view of the relevant public, there was a sufficiently direct and specific relationship between the contested mark taken as a whole, on the one hand, and the goods and services for which registration was declared invalid, on the other, and that it considered the contested trade mark to be descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009.
102    Since, under Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal applies for the trade mark applied for to be ineligible for registration as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 9 July 2008, Coffee Store v OHIM (THE COFFEE STORE), T‑323/05, not published, EU:T:2008:265, paragraph 49), it is not necessary to examine the arguments alleging infringement of Article 7(1)(b) of that regulation.
103    The third plea in law must therefore be rejected in its entirety.
The fourth plea, alleging infringement of Article 7(3) of Regulation No 207/2009
104    The applicant refers to documentation which relates to the period after the registration and before lodging of the application for a declaration of invalidity and which it submitted to the Cancellation Division in support of the distinctive character of the contested mark having been acquired through use. That evidence, it is claimed, adequately demonstrates use of the contested mark during the relevant period and allows a conclusion to be drawn that the goods and services in question are linked to it as regards specific commercial origin.
105    EUIPO and the intervener dispute those arguments.
106    Under Article 7(3) of Regulation No 207/2009, Article 7(1)(b) and (c) thereof do not apply if the mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
107    Furthermore, under Article 52(2) of Regulation No 207/2009 (now Article 59(2) of Regulation 2017/1001), where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b) to (d) of that regulation, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it was registered.
108    It must be held that the applicant’s plea, even if it explicitly refers only to an infringement of Article 7(3) of Regulation No 207/2009, which concerns in particular the registration of marks which are in themselves descriptive and not distinctive, but which have acquired distinctive character through use on the date of the application for their registration, also refers to an infringement of Article 52(2) of that regulation, applicable to invalidity proceedings as in the present case, as stated by EUIPO.
109    According to settled case-law, in order to be able to benefit from Article 52(2) of Regulation No 207/2009, the mark in respect of which a declaration of invalidity is sought must have acquired a distinctive character between the date of its registration and that of the application for a declaration of invalidity. It is for the proprietor of the mark to produce appropriate and sufficient evidence to show that the mark has acquired a distinctive character (order of 2 December 2009, Powerserv Personalservice v OHIM, C‑553/08 P, EU:C:2009:745, paragraph 91; judgment of 21 April 2015, Louis Vuitton Malletier
v OHIM — Nanu-Nana (Representation of a brown and beige checkerboard pattern), T‑359/12, EU:T:2015:215, paragraph 70 and the case-law cited).
110    The matters capable of demonstrating that the mark has come to identify the product or service concerned as originating from a given undertaking must be assessed globally. In the context of that assessment, the following factors may be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 49 and 51, and of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 31). If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identifies the goods or services as originating from a particular undertaking because of the mark, it must be concluded that the requirement laid down in Article 7(3) of Regulation No 207/2009 is satisfied (see judgment of 26 March 2015, Bateaux mouches
v OHIM (BATEAUX MOUCHES), T‑72/14, not published, EU:T:2015:194, paragraph 65 and the case-law cited).
111    It is also apparent from the case-law that proof of distinctive character acquired through use cannot be furnished by isolated data such as the mere production of sales volumes in respect of the goods or services concerned and advertising material. Likewise, the mere fact that the sign has been used in the European Union for some time is also not sufficient to show that the public targeted by the goods in question perceives it as an indication of commercial origin (see, to that effect, judgments of 12 September 2007, Glaverbel v OHIM (Texture of a glass surface), T‑141/06, not published, EU:T:2007:273, paragraphs 41 and 42, and of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting)
T‑411/14, EU:T:2016:94, paragraph 72).
112    In that regard, the acquisition of distinctive character through use must be shown by ‘use of the mark as a trade mark’, that is to say the use of the mark for the purposes of the identification by the relevant class of persons of the goods or services covered by the mark as originating from a given undertaking (see, to that effect and by analogy, judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraphs 26 and 29).
113    It is in the light of those considerations that the arguments submitted by the applicant should be assessed.
114    In the present case, the contested decision states that the applicant produced a large amount of evidence during the administrative procedure which is, in essence, identical to that produced in parallel proceedings and was fully summarised in decision R 2522/2015-5, which was the subject of the action in Case T‑223/17. The Board of Appeal therefore considered it appropriate to refer to it, which is not contested by the applicant.
115    It should be recalled that the evidence must relate to the period between 29 April 2005, the date of the application for registration of the contested mark, and 25 March 2014, the date of the application for a declaration of invalidity, and must relate to the Spanish territory.
116    First, the evidence produced, referred to in the contested decision, concerns affidavits by a representative of the applicant establishing the total revenue within the European Union for the contested mark and advertising expenditure incurred from 2008 to 2013 as well as accounting documents, invoices, part of which concerns Spain, advertising and promotional material concerning Spain in particular, specialised magazines and certificates relating to knowledge of the ADAPTA marks.
117    In the present case, the Board of Appeal considered that the extent of sales estimated on the basis of those data, in sectors with a market value of several million, or even billions, was very small and that the probative value of those sales was far too insignificant for it to be possible to claim acquired distinctiveness as a result of its reputation on the market.
118    In so doing, the Board of Appeal, despite the succinct nature of its reasoning by virtue of the reference to its reasoning in Decision R 2522/2015-5, which was the subject of the action in T‑223/17, did not err. The sales figures for the applicant’s goods and the publicity costs which it incurred are not sufficient, in the absence of information relating to the market share which they represent in respect of both the global market for the goods and services in question and the global amount of advertising costs in that market in the relevant territory, to show that the contested mark has acquired distinctive character as a result of the use which has been made of it (see, to that effect, judgments of 22 June 2006, Storck
v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 79, and of 30 November 2017, Hanso Holding
v EUIPO (REAL), T‑798/16, not published, EU:T:2017:854, paragraph 49). These are the applicant’s internal data which, although they may constitute secondary evidence to be evaluated together with the other evidence, do not, as such, prove distinctive character acquired through use of the contested trade mark.
119    The applicant states in its application that the total percentage of sales made in Spain since 2004 under the contested trade mark ranges from 14.18% to 16.42%. That argument is unsubstantiated, however. In that regard, the applicant has produced only the documents listed by the Board of Appeal, none of which make it possible to determine the market share held by the contested mark.
120    Secondly, the applicant has produced statements from various sources. However, they only prove the fact that the applicant was advertised in specialised publications, but add little weight to the assertion that the contested mark in the present case enjoyed a reputation with the relevant public. That evidence does not make it possible to demonstrate that the contested trade mark serves to identify in Spain the goods and services concerned as originating from a specific undertaking and thus of distinguishing those goods and services from those of other undertakings.
121    Thirdly, the applicant refers to newspaper articles, specialist publications and other brochures and catalogues.
122    However the evidence produced was not sufficient to demonstrate that the contested mark enjoyed a reputation for the goods and services in question. Indeed, that evidence, even if some of it concerns the word ‘adapta’, remains insufficient to establish the actual perception of the contested mark consisting of the group of words ‘bio proof adapta’.
123    Having regard to all of the foregoing and in view of all the evidence produced, it must be concluded that the Board of Appeal did not err in finding that the applicant had failed to demonstrate that the contested mark had acquired distinctive character in Spain through its use, within the meaning of Article 7(3) of Regulation No 207/2009.
124    Consequently, the fourth plea in law must be rejected, as must, therefore, the action as a whole.
Costs
125    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
126    Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Adapta Color, SL to pay the costs.
Berardis
Spielmann
Csehi
Delivered in open court in Luxembourg on 11 April 2019.
E. Coulon
G. Berardis
Registrar
President
Table of contents
Background to the dispute
Forms of order sought
Law
Admissibility of the documents produced for the first time before the Court
Substance
First plea, alleging infringement of Articles 75 and 76 of Regulation No 207/2009
– Infringement of the right to be heard in relation to the Portuguese and Romanian public
– Breach of the obligation to state reasons
The second plea, alleging infringement of the general principles of legal certainty, equal treatment and sound administration
The third plea in law, alleging infringement of Article 52(1)(a) and of Article 7(1)(b) and (c) of Regulation No 207/2009
The fourth plea, alleging infringement of Article 7(3) of Regulation No 207/2009
Costs
*      Language of the case: English.