ORDER OF THE GENERAL COURT (Eighth Chamber)
13 February 2025 (*)
( EU trade mark – Application for a three-dimensional EU trade mark – Shape of a cleaning capsule – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law )
In Case T‑360/24,
Reckitt Benckiser Finish BV, established in Amsterdam (Netherlands), represented by J.-C. Rebling, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,
defendant,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere (Rapporteur) and D. Petrlík, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Reckitt Benckiser Finish BV, seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 May 2024 (Case R 2562/2023-4) (‘the contested decision’).
Background to the dispute
2        On 6 December 2022, the applicant filed an application for registration of an EU trade mark in respect of the following three-dimensional sign:
3        The goods in respect of which registration was sought are in Class 3 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: ‘Dishwashing preparations; dishwashing detergents; bleaching preparations and other substances for dishwashing; dishwasher cleaner, freshener and deodorizer; rinse agents for machine dishwashers; drying agents for machine dishwashers; detergents for dishwashing in solid, fluid or gel form; polishing preparations for kitchen and glassware; cleaning, polishing, scouring and abrasive preparations for dishwashing; decalcifying and descaling preparations for domestic use; stain removing preparations.’
4        By decision of 6 November 2023, the examiner rejected the application for registration of that mark in respect of all the goods referred to in paragraph 3 above, on the basis of Article 7(1)(b) 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).
5        On 21 December 2023, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the sign applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 and referred the case back to the examiner for the purposes of examining the applicant’s subsidiary claim of distinctiveness acquired through use of the mark applied for, based on Article 7(3) thereof.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs if a hearing is convened.
Law
9        Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
10      In the present case, the Court considers that it has been sufficiently informed by the documents in the file and decides, pursuant to that article, to give judgment without taking further steps in the proceedings.
11      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001.
12      For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, 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. That distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (see judgments of 29 Avril 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraphs 34 and 35 and the case-law cited, and of 23 May 2007, Procter & Gamble v OHIM (Square white tablets with coloured floral design), T‑241/05, T‑262/05 to T‑264/05, T‑346/05, T‑347/05 and T‑29/06 to T‑31/06, EU:T:2007:151, paragraph 41 and the case-law cited).
13      The criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. For the purpose of applying those criteria, the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see judgments of 29 Avril 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 38 and the case-law cited, and of 23 May 2007, Square white tablets with coloured floral design, T‑241/05, T‑262/05 to T‑264/05, T‑346/05, T‑347/05 and T‑29/06 to T‑31/06, EU:T:2007:151, paragraph 43 and the case-law cited).
14      In those circumstances, the more closely the shape for which registration as a mark is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001. Only a trade mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of that provision (see judgments of 29 Avril 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 39 and the case-law cited, and of 23 May 2007, Square white tablets with coloured floral design, T‑241/05, T‑262/05 to T‑264/05, T‑346/05, T‑347/05 and T‑29/06 to T‑31/06, EU:T:2007:151, paragraph 44 and the case-law cited).
15      In the contested decision, the Board of Appeal observed that the sign applied for consisted of a shape mark which represented the external appearance of the goods at issue, namely their shape, made up of segments that were depicted in white, blue and red. It found that the sign merely represented a variant of the various shapes of cleaning capsules or pods available on the market. In that regard, it stated that the examiner had provided images that all showed cleaning products with a similar number of segments demarcated by shape and colour in order to demonstrate that the configuration of the sign applied for did not constitute a significant departure from the norms and customs of the sector.
16      The Board of Appeal stated in particular that the red circular shape did not confer distinctive character on the sign applied for overall. It found that it constituted a non-distinctive geometric shape coupled with other non-distinctive geometric shapes and that it would be perceived as being part of a standard cleaning capsule containing different active ingredients or functional components, and not as a distinctive element. It observed that those capsules with balls were already present in the sector, such that the consumer would not perceive any positive reference as to origin of the goods at issue, as was illustrated by some of the other examples given by the examiner. It added that the red ball was simply a part of the capsule and not a distinctive element, the colour or shape of which could confer distinctiveness on an otherwise non-distinctive product shape.
17      The Board of Appeal found that the overall impression produced by the sign applied for was that of a cleaning capsule whose configuration would be perceived as standard, merely showing different segments, corresponding to the different active ingredients necessary for the purposes explicitly identified in the specification of the products and represented in different or contrasting colours and simple shapes, which served the functional purpose of identifying those active ingredients of the product in a decorative way, not their commercial origin. It found that the sign applied for would be perceived as a combination of presentational features constituting the shape of the goods at issue, with nothing unusual in its configuration such as would make it stand out from other capsule shapes available on the market for those same goods or enable the relevant public to memorise it easily and instantly as a distinctive trade mark for the goods at issue. It concluded that the sign applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
18      It must be held that the applicant does not put forward any argument capable of challenging the findings made by the Board of Appeal. In particular, it does not dispute that the sign applied for is the shape of a cleaning capsule which does not depart from the shapes of cleaning capsules that are widely available on the market.
19      The applicant confines itself to submitting that the Board of Appeal erred in finding that the red ball element of the sign applied for was non-distinctive and was not capable of rendering the sign as a whole distinctive.
20      First, it argues that owing to its size, colour contrast and position, the red ball device element is clearly visible and is thus distinctive.
21      It suffices to observe that, in so far as the applicant does not dispute that the red ball in the sign applied for will be perceived as being part of a cleaning capsule, having the purpose of identifying one of its active ingredients, and that cleaning capsules featuring a ball are already present in the sector, it cannot reasonably claim that the mere fact that that ball is clearly visible is such as to enable the consumer to perceive the sign applied for as an indication of the commercial origin of the goods at issue and thus to confer distinctive character on that sign.
22      Second, the applicant also submits that EUIPO has accepted applications for the registration of EU figurative marks representing a red ball, which would imply that those marks have a minimum degree of distinctiveness.
23      In that regard, it suffices to observe that, according to settled case-law, the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (see judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited, and of 13 December 2018, Knauf v EUIPO (upgrade your personality), T‑102/18, EU:T:2018:932, paragraph 33 and the case-law cited).
24      Furthermore, it is apparent from settled case-law that it would be contrary to the function of the Boards of Appeal as a review body, as defined in Articles 66 to 71 of Regulation 2017/1001, for them to be bound by the decisions of lower-ranking adjudicating bodies of EUIPO (see judgments of 25 November 2020, Kerangus v EUIPO (ΑΠΛΑ!), T‑882/19, not published, EU:T:2020:558, paragraph 70 and the case-law cited, and of 19 May 2021, Steinel v EUIPO (GluePro), T‑256/20, not published, EU:T:2021:279, paragraph 53 and the case-law cited).
25      It follows that the single plea in law and, therefore, the action in its entirety must be dismissed as manifestly lacking any foundation in law.
Costs
26      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.
27      Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was convened, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Each party shall bear its own costs.
Luxembourg, 13 February 2025.
V. Di Bucci
A. Kornezov
Registrar
President
*      Language of the case: English.