JUDGMENT OF THE GENERAL COURT (Second Chamber)
14 September 2022 (*)
(EU trade mark – Application for the EU word mark BLACK IRISH – Absolute grounds for refusal – No distinctive character – Descriptiveness – Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 – Equal treatment – Obligation to state reasons – Article 94(1) of Regulation 2017/1001)
In Case T‑498/21,
Lotion LLC, established in Woodland Hills, California (United States), represented by A. Deutsch, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee and D. Hanf, acting as Agents,
defendant,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin and I. Nõmm (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 21 March 2022,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Lotion LLC, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 June 2021 (Case R 199/2021-5) (‘the contested decision’).
Background to the dispute
2        On 29 January 2020, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to 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).
3        Registration as a mark was sought for the word sign BLACK IRISH.
4        The goods in respect of which registration was sought are in, inter alia, Classes 30, 32 and 33 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 30: ‘Hot chocolate and frozen hot chocolate; coffees, teas’;
–        Class 32: ‘Beer, ale, lager, stout and porter’;
–        Class 33: ‘Alcoholic coffee-based beverages containing whisky, cream-based liqueurs and/or poteen; alcoholic chocolate-based beverages containing whisky, cream-based liqueurs and/or poteen; alcoholic beverages, containing milk, chocolate milk, oat milk, coconut milk, almond milk, soy milk, nut milk, rice milk, or lactose-free milk and also containing whisky, cream-based liqueurs and/or poteen; spirits being whisky, cream-based liqueurs and/or poteen; alcoholic beverages containing whisky, cream-based liqueurs and/or poteen; all the aforesaid being or containing whisky, complying with the specifications of the protected geographical indication Irish Whiskey/Uisce Beatha Eireannach/Irish Whisky; all the aforesaid being or containing cream-based liqueurs, complying with the specifications of the protected geographical indication Irish Cream; all the aforesaid being or containing poteen, complying with the specifications of the protected geographical indication Irish Poteen/Irish Poitín; alcoholic coffee-based beverages not being or containing whisky, cream-based liqueurs or poteen; alcoholic chocolate-based beverages not containing whisky, cream-based liqueurs or poteen; alcoholic beverages, except beer, not containing whisky, cream-based liqueurs or poteen and containing milk, chocolate milk, oat milk, coconut milk, almond milk, soy milk, nut milk, rice milk or lactose-free milk; spirits and liqueurs not being or containing whiskey, cream-based liqueurs or poteen; alcoholic beverages, except beer, not being or containing whisky, cream-based liqueurs or poteen’.
5        By decision of 30 November 2020, the examiner partially rejected the application for registration of that mark on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. The goods in respect of which the application for registration was rejected are those in Classes 30, 32 and 33 which have been referred to in paragraph 4 above.
6        On 1 February 2021, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
7        By the contested decision, the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal.
8        First, the Board of Appeal stated that it was necessary to take into account the English-speaking part of the public in the European Union and that, in the light of the goods, which were aimed mainly at the general public, the level of attention of that public would be average. Secondly, it took the view that the word elements ‘black’ and ‘irish’ could be defined as found in dictionaries, that the sign as a whole had, inter alia, the meaning of ‘something that is very dark or black and Irish’ and that that meaning was clear and straightforward for English-speaking consumers in the European Union. Thirdly, it found that there was a sufficiently direct and specific relationship between the sign and the goods in Classes 30, 32 and 33 which have been referred to in paragraph 4 above. According to the Board of Appeal, the sign as a whole was descriptive in relation to all of the goods at issue as it simply informed the relevant public about their colour and geographical origin. Fourthly, it stated that it was not bound by a decision which had been adopted in a Member State authorising the registration of the sign BLACK IRISH as a national trade mark or by the decision of the Examination Division which had authorised the registration of an identical word mark in respect of goods in Class 33 which were identical to those in respect of which registration was sought in the present case.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        allow the registration of the mark applied for;
–        order EUIPO to pay the costs, including those incurred in the proceedings before the Board of Appeal.
10      EUIPO contends that the Court should:
–        reject as inadmissible the claim that the registration of the mark applied for should be allowed;
–        dismiss the action;
–        order the applicant to pay the costs.
Law
11      In support of its action, the applicant relies, in essence, on four pleas in law, alleging infringement, first, of Article 7(1)(c) of Regulation 2017/1001, secondly, of Article 7(1)(b) of that regulation, thirdly, of Article 94 of that regulation and, fourthly, of the principles of equal treatment and of sound administration.
The first plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
12      In the context of the first plea, the applicant alleges, in essence, that the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 in finding that the mark applied for was descriptive with regard to the goods which have been referred to in paragraph 4 above.
13      EUIPO disputes the applicant’s arguments.
14      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 must not 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.
15      According to the case-law, Article 7(1)(c) of Regulation 2017/1001 prevents the signs or 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 which is in the public interest, namely that such signs or indications may be freely used by all (judgments of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 27, and of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 12; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).
16      Furthermore, 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 link between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (judgment of 21 April 2021, Hell Energy Magyarország v EUIPO (HELL), T‑323/20, not published, EU:T:2021:205, paragraph 24, and order of 9 July 2021, Kozhuvchanka uvoz-izvoz Kavadarci v EUIPO (NASHE MAKEDONSKO PILSNER BEER MACEDONIAN PREMIUM BEER), T‑357/20, not published, EU:T:2021:467, paragraph 22).
17      Consequently, whether a sign is descriptive can be assessed only, first, by reference to the goods or services concerned and, secondly, by reference to the understanding which the relevant public has of it (see order of 31 May 2021, König Ludwig International v EUIPO (Royal Bavarian Beer), T‑332/20, not published, EU:T:2021:304, paragraph 37 and the case-law cited).
18      It is in the light of those considerations that it must be examined whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001.
19      In the first place, as regards the relevant public, the Board of Appeal found that, since the mark applied for consisted of English words, it was necessary to take into account the English-speaking part of the public in the European Union, which also included the Scandinavian countries, Cyprus, the Netherlands and Finland. It also found that, since the goods covered by the mark applied for were aimed mainly at the general public, the level of attention of that public would be average. Those findings, which the applicant has not called into question, must be upheld.
20      In the second place, it is necessary to examine whether the Board of Appeal correctly analysed the meaning of the mark applied for, both as regards the words of which it consists and the whole which it constitutes.
21      In that regard, it must be borne in mind, as regards marks consisting of a number of word elements, that the issue of whether or not they are descriptive may be assessed, in part, in relation to each of those elements, taken separately, but must, in any event, also be established in relation to the whole which they comprise. A mark consisting of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or of those services, for the purposes of Article 7(1)(c) of Regulation 2017/1001, unless there is a perceptible difference between the mark applied for and the mere sum of its parts. That presupposes that, because of the unusual nature of the combination of its constituent elements in relation to the goods or services, the mark applied for creates an impression which is sufficiently far removed from that produced by the mere combination of indications arising from those elements. Accordingly, since the relevant public will perceive the mark applied for as a whole, it is any descriptiveness of the mark as a whole, and not of the various elements of that mark considered separately, which is important (see, to that effect, judgment of 9 September 2020, Daw v EUIPO (SOS Innenfarbe), T‑625/19, not published, EU:T:2020:398, paragraph 31).
22      In the present case, it must be stated that the mark applied for consists of the English words ‘black’ and ‘irish’.
23      Referring to a well-known English-language dictionary, the Board of Appeal stated, first, that the term ‘black’ is defined in that dictionary as ‘something that is of the darkest colour there is’ or, in American English, as ‘very dark’ or as ‘the opposite to white’. Secondly, it stated that the word ‘irish’ is defined in that dictionary as ‘belonging or relating to Ireland, or its people, language or culture’ or as referring to the whole of Ireland and sometimes only to the Republic of Ireland. The applicant does not dispute the definitions of those terms, as set out by the Board of Appeal. The contested decision must be upheld in that regard.
24      As regards the word elements ‘black’ and ‘irish’ taken together, the Board of Appeal found that they meant, for at least a significant part of the relevant public, ‘something that is very dark or black and Irish’ and that that meaning was clear and straightforward for English-speaking consumers in the European Union. It found that, assessed in the specific context of the goods which have been referred to in paragraph 4 above, the sign at issue simply informed the relevant public about their colour and geographical origin.
25      The applicant disputes that analysis. It submits that, in the sign perceived as a whole, the element ‘black’ will be understood as an adjective which qualifies the noun ‘irish’, that the latter will be perceived as denoting either the Irish language or, collectively, the people of Ireland and that the expression ‘black irish’ will not therefore have any meaning in either of the two cases or, consequently, any meaning in relation to the goods which have been referred to in paragraph 4 above.
26      First, it must be stated that the Board of Appeal did not make any error of assessment in finding that, perceived as a whole, the sign BLACK IRISH means, at least for a significant part of the relevant public, ‘something that is very dark or black and Irish’. It must be pointed out that that sign is simply a combination of two descriptive elements which does not creates an impression that is sufficiently far removed from that produced by the mere combination of its constituent elements to be more than the sum of its parts.
27      Contrary to what the applicant, in essence, submits, the juxtaposition of two adjectives is not unusual in the light of the lexical rules of the English language (see, to that effect, judgments of 20 September 2007, Imagination Technologies v OHIM (PURE DIGITAL), T‑461/04, not published, EU:T:2007:294, paragraph 34, and of 10 June 2008, Novartis v OHIM (BLUE SOFT), T‑330/06, not published, EU:T:2008:185, paragraph 46).
28      Consequently, contrary to what the applicant claims, the relevant public will not automatically and only take the view that the element ‘black’ is an adjective which qualifies the noun ‘irish’, but will also be capable of understanding those word elements as two adjectives. What is more, the juxtaposition of the word elements ‘black’ and ‘irish’ is not particularly original or imaginative.
29      It follows that, even if part of the relevant public were also to understand the word sign at issue as a sign comprising the adjective ‘black’ which qualifies the noun ‘irish’ meaning the ‘Irish language’ or the ‘people of Ireland’, that would be insufficient to call into question the Board of Appeal’s findings as regards the other meaning of the sign at issue which was mentioned in paragraph 25 of the contested decision and has been referred to in paragraph 24 above.
30      It must be borne in mind in that regard that, for a word sign to be refused registration, it is sufficient that at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgments of 25 June 2020, Off-White v EUIPO (OFF-WHITE), T‑133/19, not published, EU:T:2020:293, paragraph 23, and of 9 June 2021, Philip Morris Products v EUIPO (SIENNA SELECTION), T‑130/20, not published, EU:T:2021:341, paragraphs 35 and 43).
31      That is why it is important, secondly, to continue the analysis of the merits of the contested decision by examining whether the Board of Appeal’s findings as regards the descriptiveness of the sign at issue in relation to some of the goods covered by the trade mark application, namely those which have been referred to in paragraph 4 above, are vitiated by errors of assessment.
32      According to the case-law, for the purpose of applying Article 7(1)(c) of Regulation 2017/1001, it is necessary to consider, on the basis of the relevant meaning of the word sign at issue, whether, from the viewpoint of the public concerned, there is a sufficiently direct and specific link between the sign and the goods or services in respect of which registration is sought (judgment of 6 November 2007, RheinfelsQuellen H. Hövelmann v OHIM (VOM URSPRUNG HER VOLLKOMMEN), T‑28/06, EU:T:2007:330, paragraph 31).
The goods in Class 30
33      As regards the goods in Class 30, the Board of Appeal’s finding that the sign BLACK IRISH is descriptive of those goods must be upheld. As regards hot chocolate and frozen hot chocolate, the relevant public may perceive the sign at issue as providing information regarding their dark colour and the high percentage of cocoa and as providing the information that those goods are produced in Ireland. With regard to teas, that sign may be understood as referring to a variety of teas – black teas – which have been blended in Ireland. As regards coffees, the sign BLACK IRISH indicates that the coffees have been roasted in Ireland and that they do not contain milk, sugar or any other substance.
The goods in Class 32
34      As regards the ‘beer, ale, lager, stout and porter’ in Class 32 covered by the mark applied for, the Board of Appeal was right in finding that the sign BLACK IRISH was descriptive. That sign may be understood as indicating the very dark or black colour of those beverages and as meaning that those different types of beers have been brewed in Ireland. In that regard, it must be stated, as the Board of Appeal appropriately pointed out, that consumers in the European Union are accustomed to the fact that the colour of certain types of Irish beers is very black.
The goods in Class 33
35      As regards the goods in Class 33 covered by the mark applied for, the Board of Appeal did not make any error of assessment in finding that the sign at issue will be perceived as merely providing information about the very dark colour of the alcoholic beverages, which are expressly coffee- or chocolate-based – namely ‘[a]lcoholic coffee-based beverages containing whisky, cream-based liqueurs and/or poteen’, ‘alcoholic chocolate-based beverages containing whisky, cream-based liqueurs and/or poteen’, ‘alcoholic coffee-based beverages not being or containing whisky, cream-based liqueurs or poteen’ and ‘alcoholic chocolate-based beverages not containing whisky, cream-based liqueurs or poteen’ – and as an indication that those goods have been produced in Ireland.
36      The Board of Appeal also did not make any error of assessment in finding that the sign at issue was descriptive in relation to the other ‘alcoholic beverages’ in Class 33 covered by the mark applied for which have been referred to in paragraph 4 above.
37      It is necessary to uphold the finding that the alcoholic beverages – which have been referred to in paragraph 4 above – containing whisky, cream-based liqueurs and/or poteen, those containing, in addition to those beverages, also milk, those not containing whisky, cream-based liqueurs or poteen, but containing milk, and those not being or containing whisky, cream-based liqueurs or poteen represent a broad category of alcoholic beverages including, inter alia, those which are coffee- and/or chocolate-based. In this respect, it must be acknowledged that the relevant public may perceive the sign in question as indicating that the beverages at issue are very dark in colour and have been produced in Ireland.
38      In that context, the Board of Appeal’s assessment relating to the cream liqueur based on Irish whiskey which is contained in some of the beverages, namely that that cream liqueur is often mixed with Irish coffee and that the colour of the beverage under the whipped cream is therefore very dark, must be upheld. The same is true of a beverage containing the colourless distilled Irish beverage ‘Irish Poteen/Poitín’, since the latter is perfectly capable of being mixed with coffee and therefore of being very dark.
39      As regards the spirits and liqueurs which are or which contain whisky, cream-based liqueurs and/or poteen, it must be pointed out, as did the Board of Appeal, that they may be flavoured, coloured and mixed with other spirit drinks or even prepared with foodstuffs during the production process. The same is true of the spirits and liqueurs which do not contain whisky, cream-based liqueurs or poteen. They may, at the end of the production process, have a very dark colour on account of their being prepared with foodstuffs such as, for example, berries (blackcurrants or blackberries) or being mixed with liquids such as coffee or chocolate. It is therefore evident that the sign BLACK IRISH will be capable of being understood by the relevant consumer as an indication of the very dark colour of the alcoholic beverage and as information that it has been produced in Ireland, with the result that that colour will actually be recognised by the relevant public as a description of an intrinsic characteristic which is inherent to the nature of those goods and not merely as one of the possible colour variations which they may have.
40      As is apparent from paragraphs 35 to 39 above and contrary to what the applicant claims, the Board of Appeal did not simply assume that the colour black in relation to the alcoholic beverages in Class 33 which have been referred to in paragraph 4 above constituted a characteristic of those goods, but specifically stated that those beverages, for example mixed with liquids such as coffee or chocolate or prepared with certain foodstuffs during the production process, could be black or very dark in colour.
41      At this stage, it is important to point out that the merits of the Board of Appeal’s assessment are confirmed by the case-law.
42      First, in the context of a case relating to an application for registration of the figurative mark Blue in respect of non-alcoholic beverages, the Court held that it was common knowledge that terms referring to a colour could be used in order to designate goods in the beverages sector, including non-alcoholic beverages. It took the view that it was not unknown for manufacturers, in order to increase their commercial success, to distinguish their beverages on the basis of their colour and that there were many examples of blue-coloured drinks, and consequently that colour could reasonably be perceived as a significant characteristic of the goods in question, which was likely to be important in the choices of consumers (see, to that effect, judgment of 12 June 2018, Fenyves v EUIPO (Blue), T‑375/17, not published, EU:T:2018:340, paragraphs 31 and 32 and the case-law cited). Such reasoning applies in the present case. There are many examples of very dark-coloured or even black beverages and that colour may reasonably be perceived as a significant characteristic of the goods in question.
43      Secondly, the contested decision is consistent with the approach adopted by the Court in the judgment of 25 June 2020, OFF-WHITE (T‑133/19, not published, EU:T:2020:293). The Court stated, in that judgment, that a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, must be objective and inherent to the nature of the product or service and intrinsic and permanent with regard to that product or service. It pointed out that it cannot be ruled out a priori that the colour of a product may be one of the characteristics referred to in Article 7(1)(c) of Regulation 2017/1001 (judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraphs 37 and 43).
44      As is stated by EUIPO, the assessment of whether the colour of a product is a characteristic of that product will depend on the circumstances of the case, namely the colour described by the sign at issue, the nature of the goods at issue, and the specific manner in which reference is made to the colour in question.
45      First of all, it must be pointed out that the goods at issue are beverages. As has been stated in paragraph 42 above, that is a sector in which it is common knowledge that goods may be designated by terms referring to a colour.
46      Next, it must be pointed out that the colour concerned, which is very dark or black, is not particularly original in the beverages sector because there are many examples of beverages which have that characteristic.
47      Furthermore, the findings on which the Board of Appeal based its conclusion, as set out in paragraphs 33 to 39 above, namely that the colour designated by the word element ‘black’ will be understood as information regarding the chocolate content, as an indication of the colour of the coffee and of the lack of any additional substance in that coffee, as a type of tea (black tea) or even as an indication of the very dark colour of the alcoholic beverages – in particular because of the presence of coffee or chocolate in those beverages or because they are prepared using foodstuffs – show that the term ‘black’ refers to a characteristic which is objective and inherent to the nature of the goods at issue and intrinsic and permanent with regard to those goods.
48      Lastly, as is stated by EUIPO, the manner in which reference is made to the colour ‘black’, namely in combination with another descriptive adjective, makes it more likely that the relevant public will perceive that element as a descriptive indication of the colour of the relevant goods.
49      In view of the foregoing, the Board of Appeal did not make any error of assessment in finding that the sign BLACK IRISH designates a characteristic of the goods which have been referred to in paragraph 4 above and that, from the perspective of a significant part of the English-speaking public, it is descriptive of those goods for the purposes of Article 7(1)(c) of Regulation 2017/1001.
50      Those findings cannot be called into question by any of the applicant’s arguments.
51      First, the applicant argues to no avail that the English term ‘black’ is not synonymous with ‘dark’, that the two words are not interchangeable, that they have different meanings and that it would therefore be a misuse of language to describe dark-coloured whiskey as ‘black’. As was stated by the Board of Appeal, it is clear from a well-known English dictionary that the adjective ‘black’ also means ‘very dark’ in American English. In that regard, it must be acknowledged that the relevant public in the Scandinavian countries, the Netherlands and Finland has a basic understanding both of British English and of American English. Consumers in those Member States are accustomed, from the youngest age, to seeing films and television series which are produced in the United States and are broadcast in their original language. It is also important to point out that the term ‘black’ is not part of technical language, but that it has a meaning for a wide public (see, to that effect and by analogy, judgment of 15 December 2010, Bianchin v OHIM – Grotto (GASOLINE), T‑380/09, not published, EU:T:2010:521, paragraph 41).
52      Secondly, the argument alleging that there is no category of alcohol known as ‘black whisky’ or ‘black vodka’ must be rejected. The descriptiveness of the sign BLACK IRISH is not contingent on the pre-existence of categories such as those referred to by the applicant, but must be assessed in concreto. The reasoning in paragraphs 33 to 39 above shows to the requisite legal standard that the sign at issue will be understood as describing a characteristic of the goods covered by the application for registration.
53      Thirdly and lastly, the argument that alcoholic beverages containing milk are not likely to be black or ‘very dark’ in colour cannot succeed. It must be acknowledged, as stated by the Board of Appeal, that some of the goods containing milk may contain chocolate milk and that it cannot be ruled out that beverages containing a small amount of milk may, in any event, be very dark. In the same way, the finding that an alcoholic beverage containing ‘Irish Poteen/Poitín’, namely a colourless distilled Irish beverage, may also be very dark, since it is perfectly capable of being mixed with a darker liquid, must be upheld.
54      It follows from all of the foregoing that the first plea must be rejected as unfounded.
The second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
55      The applicant observes that the Board of Appeal found that the mark applied for lacked distinctive character solely on the basis of the incorrect assessment that the mark at issue is descriptive of the goods covered by the application for registration. It thus submits that the decision must also be annulled on that ground.
56      EUIPO disputes that plea.
57      A sign which, in relation to the goods or services for which its registration as a mark is applied for, is, for the purposes of Article 7(1)(c) of Regulation 2017/1001, descriptive, is – save where Article 7(3) applies – devoid of any distinctive character as regards those goods or services (see judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 33 and the case-law cited, and of 23 September 2015, Mechadyne International v OHIM (FlexValve), T‑588/14, not published, EU:T:2015:676, paragraph 78 and the case-law cited).
58      It follows from the response given to the first plea that the Board of Appeal was right in finding that the mark applied for was descriptive of the goods which have been referred to in paragraph 4 above and is therefore caught by the ground for refusal of registration set out in Article 7(1)(c) of Regulation 2017/1001. Furthermore, the applicant has not claimed or shown that the sign applied for had become distinctive in relation to the goods at issue as a consequence of the use which has been made of it, with the result that Article 7(3) of Regulation 2017/1001 does not apply.
59      Consequently, the Board of Appeal did not err in law in finding that the mark applied for lacked any distinctive character, with the result that the plea alleging infringement of Article 7(1)(b) of Regulation 2017/1001 must be rejected.
The third plea, alleging infringement of Article 94 of Regulation 2017/1001
60      The applicant claims that the Board of Appeal did not provide an adequate statement of reasons for the contested decision, in particular since it did not examine the applicant’s criticism relating to the references from websites which had been referred to by the examiner and did not properly deal with the applicant’s submissions concerning the meaning, reference, grammar and understanding of the sign BLACK IRISH as a whole.
61      EUIPO disputes the applicant’s arguments.
62      First of all, it must be borne in mind that Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. According to the case-law, that obligation has the same scope as that laid down in the second paragraph of Article 296 TFEU and its purpose is, first, to allow those concerned to know the reasons for the measure adopted so as to enable them to defend their rights and, secondly, to enable the Court to exercise its power to review the legality of the decision (judgment of 19 May 2021, Müller v EUIPO (TIER SHOP), T‑535/20, not published, EU:T:2021:283, paragraph 36). It is not, however, necessary for the reasoning to go into all the relevant facts and points of law. The question whether the statement of reasons for a decision satisfies those requirements must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (judgment of 29 February 1996, Commission v Council, C‑122/94, EU:C:1996:68, paragraph 29).
63      Next, it must be pointed out that the obligation to state reasons is an essential procedural requirement, which must be distinguished from the question whether the reasoning is correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect. It follows that objections and arguments intended to establish that a measure is not well founded are irrelevant in the context of a plea in law alleging an inadequate statement of reasons or a lack of such a statement (see judgment of 19 September 2018, Volkswagen v EUIPO – Paalupaikka (MAIN AUTO WHEELS), T‑623/16, not published, EU:T:2018:561, paragraph 71 and the case-law cited).
64      Lastly, it must be borne in mind that the requirement to state reasons must be assessed according to the circumstances of each case, in particular the content of the measure in question and the nature of the reasons given, which means that it is not always necessary for an express view to be adopted on all the matters put forward or requested by the persons concerned (see, to that effect, judgments of 30 March 2000, VBA v Florimex and Others, C‑265/97 P, EU:C:2000:170, paragraph 93; of 30 November 2000, Industrie des poudres sphériques v Commission, T‑5/97, EU:T:2000:278, paragraph 199; and of 9 December 2010, Tresplain Investments v OHIM – Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 46).
65      In the present case, it must be stated that the Board of Appeal did not rely on the references from websites to justify its finding, but on the ordinary meaning of the words ‘black’ and ‘irish’ read separately and on the perception of the words taken together. Consequently, it cannot be maintained that there has been any failure on its part to state reasons on account of an alleged failure to reply to the arguments which the applicant had put forward relating to those references from websites.
66      It is also apparent from the examination of the first plea that the reasoning set out in the contested decision enabled the applicant to understand the contested decision and to challenge it as regards its substance. The fact that the applicant does not agree with the substantive analysis carried out by the Board of Appeal in the contested decision, in particular the Board of Appeal’s assessment as regards the relevant public’s perception of the sign at issue as a whole, does not, in accordance with the case-law cited in paragraph 63 above, constitute a failure to state reasons.
67      Furthermore, it follows from the case-law referred to in paragraph 64 above that it was not necessary for the Board of Appeal to adopt an express view on all the matters put forward by the applicant – including the argument that a consumer who requests a ‘black Irish’ in an English-speaking sales outlet for the goods covered by the mark applied for would not be understood. Consequently, since, as has been stated in paragraph 66 above, the contested decision makes it possible for the Board of Appeal’s reasoning to be understood, the statement of reasons in the contested decision satisfies the requirements which have been referred to in paragraphs 62 to 64 above.
68      The third plea must therefore be rejected.
The fourth plea, alleging infringement of the principles of equal treatment and of sound administration
69      The applicant claims that the Board of Appeal infringed the principles of equal treatment and of sound administration in so far as it did not take into account the existence of the earlier EU word mark Black Irish, registered under the number 13873096, and the United Kingdom word mark Black Irish, registered under the number 3462110, which cover goods that are in part identical.
70      EUIPO disputes the applicant’s arguments.
71      First, it must be stated that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any national system and the legality of decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the Courts of the European Union (see judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58 and the case-law cited). Accordingly, EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision adopted in a Member State finding a sign to be registrable as a national trade mark (judgment of 27 January 2021, Eggy Food v EUIPO (EGGY FOOD), T‑287/20, not published, EU:T:2021:46, paragraph 52).
72      Consequently, the Board of Appeal did not infringe the principles of equal treatment and of sound administration by stating that, in spite of the existence of the United Kingdom trade mark, the absolute grounds for refusal in Article 7(1)(b) and (c) of Regulation 2017/1001 precluded the registration of the sign at issue.
73      Secondly, as regards the registration previously made by EUIPO, it is settled case-law that neither the Board of Appeal nor the Court can be bound by the decisions adopted by the examiner. In particular, it would be contrary to the Board of Appeal’s task as a review body, as defined in recital 30 and Articles 66 to 71 of Regulation 2017/1001, for its competence to be limited to complying with the decisions of the first-instance adjudicating bodies of EUIPO (see, to that effect, judgments of 28 June 2017, Colgate-Palmolive v EUIPO (AROMASENSATIONS), T‑479/16, not published, EU:T:2017:441, paragraph 42, and of 8 May 2019, Battelle Memorial Institute v EUIPO (HEATCOAT), T‑469/18, not published, EU:T:2019:302, paragraph 52).
74      Furthermore, it is also settled case-law that the legality of decisions of the Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the Courts of the European Union, and not on the basis of EUIPO’s previous decision-making practice, which cannot, in any event, bind those Courts (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and of 10 September 2015, Laverana v OHIM (BIO PROTEINREICHER PFLANZENKOMPLEX AUS EIGENER HERSTELLUNG), T‑571/14, not published, EU:T:2015:626, paragraph 22).
75      It is true 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. In the light of those two principles, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. However, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. 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 a 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 (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77, and of 14 December 2018, Dermatest v EUIPO (ORIGINAL excellent dermatest), T‑803/17, not published, EU:T:2018:973, paragraph 59).
76      The considerations set out in paragraph 75 above apply even if the sign in respect of which registration as an EU trade mark is sought is composed in a manner identical to that of a mark in respect of which EUIPO has already approved registration as an EU trade mark and which relates to goods or services identical or similar to those in respect of which registration of the sign in question is sought (see judgment of 13 May 2020, Global Brand Holdings v EUIPO (XOXO), T‑503/19, not published, EU:T:2020:183, paragraph 59 and the case-law cited).
77      In the present case, the Court holds that the Board of Appeal was right in finding, as a result of a stringent and full examination, that the mark applied for is caught by the ground for refusal laid down in Article 7(1)(b) and (c) of Regulation 2017/1001. It is thus to no avail that the applicant has relied, for the purposes of invalidating that finding, on an earlier registration on the part of EUIPO.
78      Consequently, the fourth plea must be rejected as unfounded.
79      In the light of the foregoing considerations, the action must be dismissed in its entirety. In that regard, the proper administration of justice and procedural economy dictate, in the present case, that the admissibility of the second head of claim requesting that the Court allow the registration of the mark applied for must not be examined. The dismissal of the action brought against the contested decision means by definition that the mark applied for cannot be registered.
Costs
80      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 form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Lotion LLC to pay the costs.
Tomljenović
Schalin
Nõmm
Delivered in open court in Luxembourg on 14 September 2022.
E. Coulon
A. Marcoulli
Registrar
President
*      Language of the case: English.