JUDGMENT OF THE GENERAL COURT (First Chamber)
8 May 2024 (*)
(EU trade mark – International registration designating the European Union – Figurative mark CERTIFIED – Absolute grounds for refusal – Descriptive character – No distinctive character – Article 7(1)(b) and (c) of Regulation (EU) 2017/1001)
In Case T‑436/23,
Daimler Truck AG, established in Leinfelden-Echterdingen (Germany), represented by P. Kohl, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, M. Brkan (Rapporteur) and T. Tóth, Judges,
Registrar: V. Di Bucci,
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, Daimler Truck AG, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 May 2023 (Case R 2533/2022-1) (‘the contested decision’).
Background to the dispute
2        On 26 October 2021, Daimler AG, the predecessor in law to the applicant, designated the European Union in its international registration of the following figurative mark:
3        The goods and services in respect of which protection of the international registration was sought are in Classes 12, 35, 36 and 37 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, for each of those classes, to the following description:
–        Class 12: ‘Motor vehicles and their parts (included in this class)’;
–        Class 35: ‘Retail and wholesale services in connection with vehicles’;
–        Class 36: ‘Insurance; financial services’;
–        Class 37: ‘Repair, maintenance, servicing, care and cleaning of motor vehicles’.
4        By decision of 16 November 2022, the examiner refused registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above, on the basis of Article 7(1)(b) and (c) 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(2) of that regulation.
5        On 20 December 2022, 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 mark applied for was descriptive and devoid of any distinctive character within the meaning of Article 7(1)(b) and (c) of Regulation 2017/1001. In particular, it found that that mark consisted of a word element that was descriptive and a figurative element that was devoid of any distinctive character, so that the relevant public would not perceive that mark as an indication of a particular commercial origin of the goods and services in question, but as a laudatory term that was descriptive of a positive and desirable characteristic of those goods and services.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        grant protection to the international registration designating the European Union;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
Law
The Court’s jurisdiction to deal with the applicant’s second head of claim
9        As regards the second head of claim, it should be noted that it requests that the Court order EUIPO to grant protection to the mark applied for.
10      In that regard, it is sufficient to recall that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited).
11      It follows that the second head of claim must be rejected on the ground of lack of jurisdiction.
Substance
12      The applicant relies on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001, and, second, infringement of Article 7(1)(b) of that regulation.
The first plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
13      In support of its first plea, the applicant puts forward, in essence, two complaints. In the first place, it submits that the figurative element of the mark applied for confers on that mark, in itself, distinctive character. In the second place, it claims that that mark cannot prevent its competitors from using the descriptive word element contained in it, so that there is no public interest, connected in particular with the need to keep the trade mark available, precluding its protection.
14      EUIPO disputes the applicant’s arguments.
15      Article 7(1)(c) of Regulation 2017/1001 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 the goods or service are not to be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
16      Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
17      For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
18      A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
19      In the present case, the Board of Appeal found that the relevant public consisted of the English-speaking general public of the European Union, with a high level of attention, which the applicant does not dispute.
20      As regards the mark applied for, it should be noted that it consists of a black rectangular figurative element, placed diagonally and surrounded by a ribbed border, inside which is the word element ‘certified’ in large white characters. In the background, there is also a dotted rectangular shape that evokes the shadow cast by the main shape.
21      In that regard, the applicant does not dispute the Board of Appeal’s assessment that the English word element ‘certified’ means ‘holding or guaranteed by a certificate’, ‘endorsed or guaranteed’, or ‘having earned a certification’ and ‘genuine, authentic’.
22      The applicant also does not put forward any arguments to refute the Board of Appeal’s findings that the relevant English-speaking public will immediately perceive the laudatory message conveyed by the word ‘certified’ as descriptive of the high quality of the goods and services at issue, which fall within the motor vehicle sector, and, accordingly, that that public will consider that those goods and services are certified for their high quality or that they have been approved as authentic by the undertaking which markets them, by a vehicle manufacturer or by an association of car manufacturers.
23      It is in the light of those considerations that the applicant’s complaints must be examined.
–       The first complaint, relating to the distinctive character of the figurative element of the mark applied for
24      The Board of Appeal found that, irrespective of how the figurative element would be seen by the relevant public as possibly representing a stamp or tyre prints, that element of the mark applied for would be perceived as reinforcing the content conveyed by the word element ‘certified’. Thus, even though the figurative element would not necessarily be perceived as merely ornamental, it remained the case that it would not be capable, according to the Board of Appeal, of diverting the relevant public’s attention from the clearly descriptive and laudatory message conveyed by the word element. Accordingly, the Board of Appeal concluded that the mark applied for was the sum of a descriptive word element and a figurative element which, albeit noticeable, was devoid of distinctive character, and that it therefore had a sufficiently close link with the goods and services at issue.
25      The applicant submits that the stylisation and graphic features of the figurative element are sufficiently distinctive for the mark applied for to constitute an indication of the origin of the goods and services at issue.
26      In that regard, in order to conclude that the mark applied for is distinctive, the applicant refers, first, to examples of distinctive figurative elements in the EUIPO Guidelines and the Common Practice relating to figurative marks containing descriptive words and, second, to the judgments of the Court relating to figurative elements that are devoid of distinctive character that were cited by the Board of Appeal.
27      The applicant claims that the figurative element of the mark applied for occupies a larger and more dominant position than the word element, and that its representation goes beyond an everyday graphic and is the result of a creative process. It adds that the figurative element does not reinforce the content conveyed by the word element, because the relevant public has no reason to interpret the figurative motifs as tyre prints.
28      EUIPO disputes the applicant’s arguments.
29      According to settled case-law, for the purpose of assessing the descriptive character of the sign at issue, the decisive question is whether, from the point of view of the relevant public, the figurative elements change the meaning of the mark applied for in relation to the goods and services concerned. If the word element of a mark is descriptive, the mark is, as a whole, descriptive if the graphic elements of that mark do not divert the relevant public’s attention from the descriptive message conveyed by the word element (see judgments of 3 October 2019, LegalCareers v EUIPO (LEGALCAREERS), T‑686/18, not published, EU:T:2019:722, paragraph 42 and the case-law cited, and of 25 January 2023, Scania CV v EUIPO (V8), T‑320/22, not published, EU:T:2023:21, paragraph 31 and the case-law cited).
30      First, as noted in paragraph 22 above, the applicant does not dispute the descriptive character of the word element ‘certified’, in so far as the relevant public will consider, without any effort, that the goods and services at issue are certified for their high quality or have been approved as authentic by the proprietor of the mark applied for or by a third party.
31      Second, it should be noted that a graphic style, even if it has some specific feature, may be regarded as a distinctive figurative element only if it is capable of conveying an immediate and lasting impression which members of the relevant public may retain in a way that makes it possible for them to distinguish the goods of the applicant for the figurative mark from those of the other providers on the market. That is not the case, inter alia, where the graphic style used is a largely common one in the eyes of the relevant public or where the figurative element is only there to highlight the information conveyed by the word elements (see judgments of 9 April 2019, Zitro IP v EUIPO (PICK & WIN MULTISLOT), T‑277/18, not published, EU:T:2019:230, paragraph 38 and the case-law cited, and of 11 October 2023, Biogena v EUIPO (THE GOOD GUMS), T‑87/23, not published, EU:T:2023:617, paragraph 38 and the case-law cited).
32      In the present case, contrary to what the applicant claims, neither the size of the figurative element nor its rectangular shape, its ribbed border or the three-dimensional impression produced by it can constitute a stylisation or graphic design that is sufficiently original to confer distinctive character on that element or to be able to divert the relevant public’s attention from the word element ‘certified’ and from the descriptive and laudatory message conveyed by the latter in relation to the goods and services at issue. Thus, the figurative element, as described in paragraph 20 above, merely reinforces the content conveyed by the word element of the mark applied for, irrespective of whether or not the relevant public will see it as representing tyre prints.
33      Third, as regards the references to the EUIPO Guidelines, which refer to the Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words, adopted by the European Trade Mark and Design Network on 2 October 2015, it should be recalled that those texts are not binding legal acts for the purpose of interpreting provisions of EU law (see, to that effect, judgments of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48, and of 2 December 2020, BSH Hausgeräte v EUIPO (Home Connect), T‑152/20, not published, EU:T:2020:584, paragraph 73 and the case-law cited).
34      In any event, it must be held, as observed by EUIPO, that the examples of distinctive figurative elements cited by the applicant contain elements, such as a pyramid, a hexagon or a leaf, that are different from the one at issue in the present case. Therefore, those examples of signs are not comparable to the mark applied for. The same is true of the examples of figurative elements that are devoid of distinctive character taken from the judgments of the Court cited by the applicant.
35      Furthermore, the applicant merely stated in that regard that, in view of the examples of distinctive figurative elements to which it referred, the mark applied for had to be regarded as distinctive, given that it is more complex and imaginative than those examples, whereas that is not the case here.
36      In the light of the foregoing, the first complaint relating to the distinctive character of the figurative element of the mark applied for must be rejected.
–       The second complaint, relating to the need to keep the mark applied for available
37      The applicant submits that, in so far as the protection of the mark applied for is limited to the specific graphic representation thereof, that mark cannot prevent its competitors from using the word element contained therein for descriptive purposes. Thus, according to the applicant, there is no public interest, connected in particular with the need to keep the trade mark available, precluding its protection.
38      EUIPO disputes the applicant’s arguments.
39      It should be borne in mind that Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision therefore prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
40      It is also apparent from the case-law that it is the application of Article 7(1)(c) of Regulation 2017/1001 that makes it possible to ascertain whether there is a need to keep the mark applied for available in respect of the goods and services covered by the application for registration (judgment of 19 May 2021, Müller v EUIPO (TIER SHOP), T‑535/20, not published, EU:T:2021:283, paragraph 80).
41      In the present case, as is apparent from paragraph 36 above, the figurative element contained in the mark applied for, although noticeable, is devoid of distinctive character and will not divert the relevant public’s attention from the descriptive message conveyed by the word element ‘certified’. Furthermore, the interest in a sign being available is not a criterion for differentiating the degree of distinctive character required for registration of an EU trade mark (judgment of 24 September 2019, Daimler v EUIPO (ROAD EFFICIENCY), T‑749/18, not published, EU:T:2019:688, paragraph 43). Therefore, the mark applied for will not be perceived as an indication of the origin of the goods and services in question, within the meaning of the case-law cited in paragraph 16 above.
42      Consequently, the second complaint, relating to the need to keep the mark applied for available, must also be rejected.
43      In the light of the foregoing, the Board of Appeal was therefore correct in finding that the mark applied for, consisting of a word element that was descriptive and a figurative element that was devoid of any distinctive character, had a sufficiently close link with the goods and services at issue to fall within the scope of Article 7(1)(c) of Regulation 2017/1001.
44      It follows that the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
45      The applicant reiterates, in essence, its argument that the mark applied for is not directly descriptive of the goods and services in respect of which registration is sought, because its figurative elements are sufficient to confer on that a mark distinctive character that makes it possible to distinguish those goods and services from those of other undertakings.
46      EUIPO disputes the applicant’s arguments.
47      Since Article 7(1) of Regulation 2017/1001 makes it clear that, for a sign to be ineligible for registration as an EU trade mark, it is sufficient that one of the absolute grounds for refusal listed in that provision applies, it is not necessary to examine the merits of the second plea in law relied on by the applicant, alleging infringement of Article 7(1)(b) of that regulation, given that the first plea in law, alleging infringement of Article 7(1)(c) of that regulation, has been rejected.
48      In the light of all of the foregoing, the action must be dismissed in its entirety.
Costs
49      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.
50      Even though the applicant has been unsuccessful, EUIPO contended that it should be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders each party to bear its own costs.
Spielmann
Brkan
Tóth
Delivered in open court in Luxembourg on 8 May 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.