JUDGMENT OF THE GENERAL COURT (Third Chamber)
9 March 2022 (*)
(EU trade mark – Invalidity proceedings – EU word mark SO…? – Absolute grounds for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – Lack of descriptive character – Article 7(1)(c) of Regulation No 40/94 (now Article 7(1)(c) of Regulation 2017/1001))
In Case T‑197/21,
Lea Nature Services, established in Périgny (France), represented by F. Drageon, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Debonair Trading Internacional Lda, established in Funchal (Portugal), represented by J. Quirin and J.‑P. Jacquey, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 11 February 2021 (Case R 1234/2020‑4), relating to invalidity proceedings between Lea Nature Services and Debonair Trading Internacional,
THE GENERAL COURT (Third Chamber),
composed of G. De Baere (Rapporteur), President, G. Steinfatt and K. Kecsmár, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 12 April 2021,
having regard to the response of EUIPO lodged at the Court Registry on 2 July 2021,
having regard to the response of the intervener lodged at the Court Registry on 26 July 2021,
having regard to the change in the composition of the Chambers of the General Court,
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
Background to the dispute
1        On 26 February 2001, pursuant to an application lodged on 7 March 1997, the predecessor in title of the intervener, Debonair Trading Internacional Lda, obtained from the European Union Intellectual Property Office (EUIPO) registration, under number 485078, of the EU word mark SO…?.
2        The goods in respect of which registration was sought are, in particular in Class 3 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Toilet preparations; preparations for the care of the skin, scalp and the body; suntanning preparations; preparations for reinforcing and strengthening nails; preparations for use in the shower and the bath; toilet soaps; preparations for toning the body; all being non-medicated; perfumes; fragrances; aftershaves, milks, oils, creams, gels, powders and lotions; shaving foams; cosmetics; eau de cologne; toilet waters; essential oils; shampoos; conditioners; hair lotions; preparations for the hair; hair styling products; anti-perspirants; deodorants for personal use; dentifrices’.
3        On 28 May 2019, the applicant, Lea Nature Services, filed an application with EUIPO for a declaration of invalidity of the contested mark pursuant to 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, inter alia, Article 7(1)(b) and (c) and Article 7(2) of that regulation.
4        By decision of 20 April 2020, the Cancellation Division rejected the application for a declaration of invalidity.
5        On 16 June 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
6        By decision of 11 February 2021 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the contested mark had inherent distinctive character and was not descriptive for the purposes of Article 7(1)(b) and (c) of Regulation 2017/1001.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
9        The intervener contends that the Court should:
–        uphold the contested decision;
–        order the applicant to pay the costs.
Law
10      As a preliminary point, as regards, first, the intervener’s first head of claim, given that ‘upholding’ the contested decision is tantamount to dismissing the action, that head of claim should be understood as requesting, in essence, that the action be dismissed (judgments of 5 February 2016, Kicktipp v OHIM – Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 19 (not published), and of 24 September 2019, Roxtec v EUIPO – Wallmax (Representation of a black square containing seven concentric blue circles), T‑261/18, EU:T:2019:674, paragraph 16).
11      As regards, secondly, the substantive law applicable to the proceedings, in view of the date of submission of the application for registration at issue, that is to say, 7 March 1997, which is decisive for the purpose 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, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 2 June 2021, Franz Schröder v EUIPO – RDS Design (MONTANA), T‑854/19, EU:T:2021:309, paragraph 14 (not published) and the case-law cited). Accordingly, with regard to the substantive rules, the references made by the Board of Appeal, in the contested decision, and by the applicant and the intervener, in their pleadings, to Article 7(1)(b) and (c) and Article 7(2) of Regulation 2017/1001 must be understood as referring to Article 7(1)(b) and (c) and Article 7(2) of Regulation No 40/94, the content of which is identical.
12      In support of the action, the applicant raises two pleas in law, alleging (i) infringement of Article 7(1)(b) of Regulation No 40/94 and (ii) infringement of Article 7(1)(c) of that regulation.
The first plea in law, alleging infringement of Article 7(1)(b) of Regulation No 40/94
13      The applicant submits that the Board of Appeal erred in finding that the contested mark had inherent distinctive character.
14      First, in its view, the three full stops and the question mark in the contested mark are not distinctive and are merely designed to attract consumers’ attention.
15      As regards the word ‘so’, it may be understood as meaning ‘to such a great extent’, ‘extremely’ or ‘very much’, irrespective of whether it is followed by other words or not. That word is mainly used to emphasise the quality of the goods covered by the contested mark. Consequently, the word ‘so’ will only be understood as a promotional laudatory message indicating that the goods covered have qualities superior to those of other goods on the market. It does not therefore make it possible to identify the commercial origin of those goods.
16      The applicant further states that the punctuation marks mean that the word ‘so’ must be supplemented by one or more words, in particular adjectives. Moreover, the intervener uses the contested mark by associating it with other words.
17      Secondly, the applicant submits that, in earlier decisions, EUIPO has already refused registration of EU trade marks containing the word ‘so’ and covering, inter alia, cosmetics in Class 3 as being devoid of any distinctive character. It also refers to four decisions of EUIPO concerning the signs SMARTER, TOP, EXTRA and PLUS. By those decisions, the applicant states that EUIPO refused to register those signs on the ground of their lack of distinctiveness.
18      Thirdly, it submits that the word ‘so’ is very often used in advertising in order to attract consumers’ attention to emphasise the quality of cosmetics. In support of its argument, the applicant provides, as an annex to the application, extracts from websites intended for the European market and seeking to demonstrate that the word ‘so’ is frequently used to designate cosmetics. Therefore, the use of that laudatory word does not make it possible to identify the origin of the goods in relation to those of another undertaking.
19      EUIPO and the intervener dispute the applicant’s arguments.
20      Under Article 51(1)(a) of Regulation No 40/94, an EU trade mark is to be declared invalid, inter alia on application to EUIPO, where it has been registered contrary to the provisions of Article 7 of that regulation.
21      Article 7(1)(b) of Regulation No 40/94 provides that trade marks which are devoid of any distinctive character are not to be registered. Article 7(2) of that regulation states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
22      For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited, and of 14 July 2021, Guerlain v EUIPO (Shape of an oblong, tapered and cylindrical lipstick), T‑488/20, EU:T:2021:443, paragraph 15 (not published)).
23      The distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation No 40/94 must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, secondly, by reference to the perception of the relevant public (see judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited, and of 14 July 2021, Shape of an oblong, tapered and cylindrical lipstick, T‑488/20, EU:T:2021:443, paragraph 16 (not published)).
24      In order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgments of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82 and the case-law cited, and of 25 November 2020, Brasserie St Avold v EUIPO (Shape of a dark bottle), T‑862/19, EU:T:2020:561, paragraph 34).
25      As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 35, and of 7 September 2017, VM v EUIPO – DAT Vermögensmanagement (Vermögensmanufaktur), T‑374/15, EU:T:2017:589, paragraph 99 (not published)).
26      In that regard, all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, but can still be capable of indicating to the consumer the commercial origin of the goods or services concerned. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57, and of 8 July 2020, Dinamo v EUIPO (Favorit), T‑729/19, not published, EU:T:2020:314, paragraph 26).
27      In the light of those considerations, it must be examined whether the Board of Appeal was entitled to find that the contested mark was not devoid of distinctive character.
28      As the Board of Appeal noted in paragraph 23 of the contested decision, the contested mark consists of a word sign composed of the word ‘so’ followed by three full stops and a question mark.
29      As regards the definition of the relevant public and its level of attention, the applicant does not call into question the assessment made by the Board of Appeal in paragraph 22 of the contested decision that the goods covered by the contested mark, in Class 3, as reproduced in paragraph 2 above, are aimed at the public at large, whose level of attention is average.
30      Nor does it dispute the fact that the Board of Appeal assessed the absolute ground for refusal by taking into account the English-speaking part of the relevant public in the light of the English word ‘so’, which, moreover, is consistent with Article 7(2) of Regulation No 40/94.
31      By contrast, the applicant disputes the assessment made by the Board of Appeal of the inherent distinctive character of the sign.
32      As regards, in the first place, the word ‘so’, the applicant submits that it means ‘to such a great extent’, ‘extremely’ or ‘very much’, and that its role is only to emphasise the quality of the goods concerned.
33      However, the Board of Appeal correctly noted, in paragraph 24 of the contested decision, that the word ‘so’ could have several meanings depending on the context in which it was used and depending on whether it was used as an adverb or as a conjunction. In that regard, the Board of Appeal provided examples to support the various meanings and uses of the word ‘so’.
34      It is sufficient to note that the applicant’s argument is based on only one of the meanings of the word ‘so’ to which the Board of Appeal draws attention, namely that in which that word, in the adverbial use, may be used to highlight the word or wording following it. The applicant does not dispute the other meanings of that word set out by the Board of Appeal and does not explain why those other meanings should not be taken into account for assessing the distinctive character of the sign.
35      Given that the word ‘so’ may have various meanings and not only that seeking to emphasise the word or wording following it, the applicant cannot claim that it will only be understood by the relevant public as conveying a laudatory message which praises the goods concerned.
36      In particular, as noted by the Board of Appeal in paragraph 27 of the contested decision, without being contradicted by the applicant, it cannot be ruled out that the relevant public will perceive the word ‘so’ as a conjunction meaning ‘therefore’ or ‘and then’. That meaning does not give the word ‘so’ any laudatory connotation.
37      Furthermore, it should be noted that, in the meaning favoured by the applicant, for the word ‘so’ to be understood as seeking to emphasise the quality of the goods, it is necessary that the word or wording following it indicates a quality, which is, however, not the case here.
38      In that regard, the applicant’s assertion, which is, moreover, unsubstantiated, that the word ‘so’ plays a role of emphasising a quality, even if it is used alone or followed by punctuation marks, is incorrect. As noted by the intervener, it is only when accompanied by an adjective that the word ‘so’ can be perceived as an adverb seeking to emphasise a quality, as in the example ‘so pretty’, referred to by the Board of Appeal in paragraph 24 of the contested decision. Moreover, if the word ‘so’ were followed by a word designating not a quality, but a defect, it could not have a laudatory function, seeking to highlight the quality of the goods, as the Board of Appeal correctly stated in paragraph 27 of the contested decision.
39      The applicant therefore wrongly claims that the word ‘so’ will be perceived only as a laudatory indication.
40      As regards, in the second place, the punctuation marks, namely the three full stops followed by a question mark, the applicant submits that they are not distinctive and that they merely reinforce the laudatory function of the word ‘so’ preceding them.
41      However, first, the applicant’s argument that typographical symbols are not distinctive and cannot be used to indicate the origin of the goods is irrelevant. In paragraph 27 of the contested decision, the Board of Appeal found that, regardless of whether punctuation marks alone may or may not bear distinctive character, the full stops and the question mark of the sign at issue had to be taken into account in the perception of the sign as a whole in so far as they added semantic content to that sign. It therefore did not rule on their own distinctive character, but merely noted that they played a role in the overall impression created by the contested mark.
42      That assessment is consistent with the case-law according to which, as regards a trade mark comprising words and typographical signs, distinctiveness may, in part, be examined in relation to each of its terms or elements, considered separately, but must, in any event, depend on an appraisal of the whole which they comprise. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character (see, to that effect, judgments of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 28, and of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 56).
43      Next, the Board of Appeal did not err in finding, in paragraph 27 of the contested decision, that those signs added semantic content to the sign as a whole. It should be noted, as observed by EUIPO, that the three full stops create a certain suspense and the question mark at the end of the sign raises a question. The punctuation marks therefore induce the relevant public to ask themselves what the word ‘so’ means and what it refers to. To answer this, and to give any meaning at all to the sign, interpretation is required of the relevant public.
44      Lastly, the applicant cannot infer from the mere presence of punctuation marks after the word ‘so’ that that word will necessarily be supplemented by an adjective. As is apparent from the previous paragraph, it is sufficient to note that the possibility that the word ‘so’ may be followed by another word is a matter of free interpretation by the relevant public. Furthermore, it cannot be ruled out that the relevant public will perceive in the word ‘so’ a conjunction meaning ‘therefore’ or ‘and then’. In such an interpretation, the word ‘so’ is not generally supplemented by an adjective.
45      Accordingly, the applicant wrongly claims that the punctuation marks reinforce the laudatory nature of the word ‘so’.
46      It follows that it is not possible to attribute a clear meaning to the word ‘so’ and that the punctuation marks lead consumers to ask themselves what that word means and to what it refers. The contested mark therefore requires at least some interpretation and sets off a cognitive process in the minds of the relevant public within the meaning of the case-law referred to in paragraph 26 above, with the result that it is capable of indicating to the consumer the commercial origin of the goods or services concerned. The applicant has not succeeded in showing that that mark will be perceived as a mere laudatory message seeking to emphasise the quality of the goods.
47      The other arguments put forward by the applicant cannot call that finding into question.
48      First, the applicant claims that the intervener uses the contested mark by associating it with another word, to describe in a positive way the characteristics of its goods. However, in addition to the fact that the applicant’s assertion is not substantiated in any way, it should be noted that the Board of Appeal correctly assessed the distinctive character of the contested mark, as registered. The possible use of the contested mark by the intervener by associating it with other words is therefore irrelevant. Moreover, that argument merely confirms the analysis set out in paragraph 35 above that the word ‘so’ may be used to highlight a quality only if it is followed by another word describing that quality.
49      Secondly, the applicant submits that the Board of Appeal has already refused registration of EU trade marks containing the word ‘so’ and covering, inter alia, cosmetics in Class 3 as being devoid of distinctive character.
50      However, it should be noted that the marks relied on by the applicant in support of its argument the registration of which was allegedly refused by EUIPO all contain the word ‘so’ accompanied by one or more further word(s). Accordingly, no relevant analogy may be drawn from this for the present case, since the contested mark contains the single word ‘so’ followed by punctuation marks.
51      Furthermore, the applicant does not dispute the Board of Appeal’s assessment, set out in paragraph 28 of the contested decision, that the Board of Appeal of EUIPO acknowledged, in decisions relating to other proceedings, that the English word ‘so’ either alone or followed by punctuation marks did not provide any factual information and did not convey any conceptual meaning, that it possessed, as such, inherent distinctive character and that, depending on the context, it could be understood as meaning ‘therefore’.
52      Accordingly, the applicant’s argument that, in essence, the contested decision is inconsistent with EUIPO’s previous decision-making practice must be rejected.
53      In any event, it should be borne in mind that, in the light of the principles of equal treatment and sound administration, while EUIPO must, in examining an application for registration of an EU trade mark, take into consideration the decisions made previously on similar applications, those principles must, nonetheless, be consistent with respect for legality and, consequently, it is necessary in particular, for reasons of legal certainty and, more specifically, sound administration, that the examination of any application for registration must be stringent and full and be conducted in each individual case, in order to prevent trade marks from being improperly registered (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77, and order of 11 September 2014, Think Schuhwerk v OHIM, C‑521/13 P, EU:C:2014:2222, paragraph 57).
54      It should also be borne in mind that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are led to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of EUIPO’s previous decision-making practice (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 9 December 2020, Promed v EUIPO – Centrumelektroniki (Promed), T‑30/20, not published, EU:T:2020:599, paragraph 56).
55      Thirdly, the applicant relies on four decisions of EUIPO in which registration of EU trade marks SMARTER, TOP, EXTRA and PLUS was refused because of the lack of distinctive character of those marks. In that regard, it is sufficient to note, as observed by EUIPO and the intervener, that the signs which were the subject of those decisions are not comparable to the contested mark and that the applicant does not, in any way, explain the argument which it draws from the reference to those decisions.
56      Fourthly, the argument that the word ‘so’ is often used in advertising to emphasise the quality of cosmetics does not prove that the contested mark is devoid of distinctive character. Furthermore, it should be noted, as observed by EUIPO and the intervener, that the examples provided by the applicant all relate to the use of the word ‘so’ followed by another word. Those examples are therefore not relevant to the present case.
57      It follows from the foregoing that the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 7(1)(c) of Regulation No 40/94
58      The applicant submits that the Board of Appeal erred in finding that the contested mark was not descriptive of the goods covered.
59      The word ‘so’ is descriptive of the quality of the goods since it is a laudatory word. In that regard, the punctuation marks indicate that the sentence has not been completed and that it must be supplemented by another word. Those punctuation marks also demonstrate the intervener’s intention to use the word ‘so’ by associating it with other words.
60      EUIPO and the intervener dispute the applicant’s arguments.
61      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 the 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. 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.
62      For a sign to fall within the scope of the prohibition in Article 7(1)(c) of Regulation No 40/94, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of 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 13 May 2020, SolNova v EUIPO – Canina Pharma (BIO-INSECT Shocker), T‑86/19, EU:T:2020:199, paragraph 35 and the case-law cited).
63      In the present case, it is sufficient to note that the applicant does not put forward any argument seeking to show that the contested mark suggests a sufficiently direct and concrete link to the goods in question, within the meaning of the case-law cited in the previous paragraph.
64      Furthermore, it is apparent from the first plea above that the contested mark cannot be regarded as a mere indication of the quality of the goods.
65      Accordingly, the applicant has not succeeded in showing that the contested mark is descriptive. It follows that the second plea in law must be rejected and therefore the action must be dismissed in its entirety.
Costs
66      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. 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 (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Lea Nature Services to pay the costs.
De Baere
Steinfatt
Kecsmár
Delivered in open court in Luxembourg on 9 March 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.