JUDGMENT OF THE GENERAL COURT (First Chamber)
25 January 2023 (*)
(EU trade mark – Invalidity proceedings – EU word mark KARR – Absolute ground for invalidity – Article 7(1)(c) and Article 51(1)(a) of Regulation (EC) No 40/94 (now Article 7(1)(c) and Article 59(1)(a) of Regulation (EU) 2017/1001)
In Case T‑352/22,
De Dietrich Process Systems GmbH, established in Mainz (Germany), represented by M. Körner, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl and T. Klee, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Koch-Glitsch LP, established in Wichita, Kansas (United States),
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, R. Mastroianni and T. Tóth (Rapporteur), 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 under Article 263 TFEU, the applicant, De Dietrich Process Systems GmbH, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 April 2022 (Case R 1105/2021-1) (‘the contested decision’).
Background to the dispute
2        On 12 March 2020, the applicant filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 26 April 2004 for the word sign KARR.
3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 7 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: ‘Liquid-liquid extraction columns’.
4        The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 59(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 7(1)(b) and (c) of that regulation.
5        On 29 April 2021, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation, and cancelled the contested mark.
6        On 23 June 2021, Koch-Glitsch LP filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7        By the contested decision, the Board of Appeal upheld the appeal, annulled the Cancellation Division’s decision and rejected the application for a declaration of invalidity. In essence, after stating that the relevant public consisted of professionals in the chemical, petroleum, pharmaceutical, food, biotech and hydrometallurgy industry (‘industry professionals’), it found that the evidence produced by the applicant was insufficient to prove that the term ‘karr’ was perceived by that public as describing the characteristics of liquid-liquid extraction columns at the time of the application for registration of the contested mark. According to the Board of Appeal, the mere use in scientific publications and documents relating to patents of the name of the inventor of a particular liquid-liquid extraction column is not sufficient to establish a descriptive meaning. Furthermore, it pointed out that, as A.E. Karr’s invention was made in 1959 and the ‘Karr column’ or ‘Karr contactor’ appeared to be only one among several types of pulsating columns available, there was also no indication that the term ‘karr’ will be needed in the future to designate the characteristics of liquid-liquid extraction columns. The Board of Appeal concluded that the applicant had not proved the existence of absolute grounds for refusal within the meaning of Article 7(1)(b) and (c) of Regulation 2017/1001.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
9        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
10      As a preliminary point, it should be noted that, having regard to the date on which the application for registration at issue was filed, namely 26 April 2004, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (see, to that effect and by analogy, judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
11      Consequently, in the present case, as regards the substantive rules, the references to Article 59(1)(a) and Article 7(1)(b) and (c) of Regulation 2017/1001 made by the Board of Appeal in the contested decision, and by the parties in their arguments, must be understood as referring to Article 51(1)(a) and Article 7(1)(b) and (c) of Regulation No 40/94, the wording of which is identical.
12      Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
13      In support of its action, the applicant raises two pleas in law, alleging, first, infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c) of that regulation and, secondly, infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation.
14      In support of the first plea, the applicant submits that the Board of Appeal erred in finding that the contested mark was not descriptive of the goods at issue, within the meaning of Article 7(1)(c) of Regulation No 40/94.
15      EUIPO disputes the applicant’s arguments.
16      As a preliminary point, it should be noted, first, that Article 51(1)(a) of Regulation No 40/94 provides that an EU trade mark is to be declared invalid where it has been registered contrary to the provisions of Article 7 of that regulation and, secondly, that the only relevant date for the purposes of the examination of an application for a declaration of invalidity based on Article 51(1)(a) of that regulation is the date of filing of the application for the contested mark.
17      Article 7(1)(c) of Regulation No 40/94 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 time of production of the goods or of rendering of the service, or other characteristics of those goods or service are not to be registered.
18      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 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 17).
19      As regards the definition of the relevant public, the Board of Appeal found, in paragraph 25 of the contested decision, that the goods at issue were aimed solely at industry professionals.
20      The applicant disputes that assessment. Like the Cancellation Division, it submits that, in addition to industry professionals, the relevant public consists of scientists and researchers.
21      EUIPO disputes the applicant’s argument, contending that, first, it has produced only a few scientific articles without specifying whether scientists in the field of liquid-liquid extraction understood the term ‘karr’ and, secondly, it has not established that the public to whom those articles were directed was the same as the public for whom the goods at issue are intended.
22      It is apparent from the case-law that the definition of the relevant public is linked to an examination of the intended purchasers of the goods concerned, because it is in relation to those purchasers that the mark must perform its essential function (judgment of 29 September 2010, CNH Global v OHIM (Combination of the colours red, black and grey for a tractor), T‑378/07, EU:T:2010:413, paragraph 38).
23      In that regard, it should be noted that it is common ground between the parties that liquid-liquid extraction columns in Class 7 are intended for industry professionals. However, as both the Cancellation Division and the applicant have rightly pointed out, liquid-liquid extraction is likely to be carried out in chemical laboratories, usually by means of an extraction column. These are very specific pieces of apparatus used by highly qualified laboratory chemists and by scientists and researchers. That is, moreover, borne out by the Wikipedia article concerning liquid-liquid extraction which was produced by Koch-Glitsch before the adjudicating bodies of EUIPO, from which it is apparent that that method of extraction is a basic technique used in chemical laboratories. Thus, it must be held that liquid-liquid extraction columns are also intended for scientists and researchers.
24      It follows that, for the purposes of assessing the descriptive character of the contested mark, the public to be taken into consideration consists of industry professionals and scientists and researchers.
25      Therefore, the Board of Appeal erred in excluding scientists and researchers from the relevant public. That error means that the Board of Appeal necessarily failed to assess the descriptive character of the contested mark in relation to the perception of that part of the relevant public.
26      Accordingly, the Court does not have all the information necessary to determine whether the Board of Appeal’s assessment in the contested decision was well founded. It cannot be ruled out that the examination of the merits of the arguments and of the evidence submitted by the applicant during the proceedings before EUIPO, as regards the descriptive character of the contested mark, might have led the Board of Appeal to adopt a decision with a different content to that of the contested decision if it had taken account of the perception of that mark by researchers and scientists.
27      It should be borne in mind that the jurisdiction conferred on the General Court by Article 72(3) of Regulation 2017/1001 does not confer on it the power to substitute itself for the Board of Appeal in undertaking a factual assessment that the Board of Appeal failed to carry out (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 71 and 72).
28      Consequently, the first plea in law must be upheld and, accordingly, the contested decision must be annulled, without there being any need to rule on the second plea in law.
Costs
29      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.
30      Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 April 2022 (Case R 1105/2021-1);
2.      Orders EUIPO to bear the costs.
Spielmann
Mastroianni
Tóth
Delivered in open court in Luxembourg on 25 January 2023.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.