ORDER OF THE GENERAL COURT (Sixth Chamber)
15 April 2024 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark FLOW FILTER – Absolute grounds for refusal – Distinctive character – Lack of descriptive character – Lack of customary character – Article 7(1)(b), (c) and (d) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law)
In Case T‑20/23,
Japan Tobacco, Inc., established in Tokyo (Japan), represented by J.L. Gracia Albero and E. Cebollero González, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Dunhill Tobacco of London Ltd, established in London (United Kingdom), represented by I. Fowler, I. Junkar and B. Worbes, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, P. Zilgalvis and E. Tichy-Fisslberger, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the order of 21 November 2023, Japan Tobacco v EUIPO – Dunhill Tobacco of London (FLOW FILTER) (T‑20/23, not published, EU:T:2023:753), by which the General Court dismissed the intervener’s cross-claim as inadmissible,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Japan Tobacco, Inc., seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 October 2022 (Case R 1774/2021-5) (‘the contested decision’).
Background to the dispute
2        On 12 May 2020, the applicant filed an application with EUIPO for a declaration of invalidity of the EU trade mark which had been registered further to an application filed on 18 December 2018 by the intervener, Dunhill Tobacco of London Ltd, in respect of the following figurative sign:
3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought are in Class 34 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: ‘Cigarettes; tobacco, raw or manufactured; roll your own tobacco; pipe tobacco; tobacco products; tobacco substitutes (not for medical purposes); cigars; cigarillos; cigarette lighters; cigar lighters; matches; smokers’ articles; cigarette paper; cigarette tubes; cigarette filters; pocket apparatus for rolling cigarettes; hand held machines for injecting tobacco into paper tubes; electronic cigarettes; liquids for electronic cigarettes; tobacco products for the purpose of being heated’.
4        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 59(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 7(1)(b), (c) and (d) of that regulation.
5        On 15 September 2021, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
6        On 15 October 2021, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
7        By the contested decision, the Board of Appeal dismissed the action on the ground that there was no evidence that the contested mark had been registered in breach of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b), (c) and (d) of that regulation.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs of the present proceedings and order the intervener to pay the costs of the proceedings before the Cancellation Division and the Board of Appeal.
9        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
10      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
11      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.
12      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to Article 126 of the Rules of Procedure, to give a decision without taking further steps in the proceedings.
13      In support of its action, the applicant relies on three pleas in law, alleging (i) infringement of Article 7(1)(c) of Regulation 2017/1001, (ii) infringement of Article 7(1)(b) of that regulation, and (iii) infringement of Article 7(1)(d) of that regulation.
14      As a preliminary point, under Article 59(1)(a) of Regulation 2017/1001, an EU trade mark is to be declared invalid, in particular on application to EUIPO, where it has been registered contrary to the provisions of Article 7 of that regulation.
15      An EU trade mark is considered valid until such time as it has been declared invalid by EUIPO following invalidity proceedings. The contested mark therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration. Accordingly, it is for the person who has filed the application for a declaration of invalidity to place before EUIPO the specific facts which call the validity of the contested mark into question (see judgment of 23 September 2020, Clouds Sky v EUIPO – The Cloud Networks (Wi-Fi Powered by The Cloud), T‑738/19, not published, EU:T:2020:441, paragraph 36 and the case-law cited).
16      Each of the grounds for refusal to register listed in Article 7(1) of Regulation 2017/1001 is independent of the others and calls for separate examination (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 45 and the case-law cited).
First plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
17      The applicant submits, in essence, that the Board of Appeal erred in finding in the contested decision that the contested mark was not descriptive of the goods covered by it at the time of filing the application for registration at issue.
18      EUIPO and the intervener dispute the applicant’s claim.
19      As a preliminary point, it must be recalled that, under Article 7(1)(c) of Regulation 2017/1001, 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.
20      Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 September 2020, Wi-Fi Powered by The Cloud, T‑738/19, not published, EU:T:2020:441, paragraph 30 and the case-law cited).
21      It follows that, 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 at issue to enable the public concerned immediately to perceive, without further thought, a description of the goods or services or one of their characteristics (see judgment of 23 September 2020, Wi-Fi Powered by The Cloud, T‑738/19, not published, EU:T:2020:441, paragraph 31 and the case-law cited).
22      Accordingly, descriptive character must be assessed, first, by reference to the goods and services in respect of which registration was sought and, secondly, by reference to the perception of the relevant public (see judgment of 23 September 2020, Wi-Fi Powered by The Cloud, T‑738/19, not published, EU:T:2020:441, paragraph 32 and the case-law cited).
23      It is in the light of those principles that the present plea should be considered.
The relevant public
24      It must be held that the Board of Appeal was right to find, in paragraph 42 of the contested decision, that the relevant public, in relation to the goods at issue, consisted of the general public made up of smokers with a high level of attention due to their brand loyalty.
25      Furthermore, since the contested mark is composed of English words, the Board of Appeal was correct in considering, in paragraph 40 of the contested decision, that its descriptive character had to be assessed with respect to the English-speaking part of the European Union, namely Ireland and Malta, where English is an official language. It also added that it should be borne in mind that in the Scandinavian countries, the Netherlands and Finland, a basic understanding of English was a well-known fact. According to the Board of Appeal, the same also applied to Cyprus, where English was the only official language until 1960 and continues to be spoken by a significant part of the population. In addition, under Article 7(2) of Regulation 2017/1001, it is sufficient that a ground for refusal obtains in part of the European Union. Thus, the Board of Appeal’s approach of focusing its assessment on the English-speaking part of the European Union, which is the most capable of recognising the words making up the word element of the contested mark, cannot be criticised.
26      Those findings of the Board of Appeal are not, moreover, disputed by the applicant.
The descriptive character of the contested mark
27      First, the applicant submits that the Board of Appeal wrongly considered that the decisions of 7 December 2020, No 43623 C, of 25 November 2020, No 43644 C, and of 19 November 2020, No 43624 C, of the Cancellation Division of EUIPO were not applicable. Secondly, according to the applicant, the Board of Appeal incorrectly found that the evidence submitted in enclosure 2 of the file was not sufficient to conclude that the figurative element of the contested mark was descriptive at the date of filing of that mark. That evidence shows that the intersection included in that figurative element depicts two of the most common filter finishes on the market. Thirdly, the Board of Appeal wrongly found that the contested mark, taken as a whole, was not descriptive of the characteristics of the goods at issue at the date of its filing. The word elements ‘flow filter’ of the contested mark ‘would clearly lead consumers to perceive [the contested mark’s figurative element] as a descriptive image of a filter with a cross section’.
28      EUIPO and the intervener dispute the applicant’s arguments.
29      As a preliminary point, it should be observed, as the Board of Appeal did in paragraph 44 of the contested decision, that the contested mark is composed, in essence, of the word elements ‘flow’ and ‘filter’, written in upper case, and of a bluish grey figurative element, comprising two circular lines in the middle of which there is a graphic element in the form of a stylised lower-case letter ‘f’. That graphic element occupies a large part of the contested mark and is larger than the word elements.
–       The incorrect assessment of EUIPO’s previous decisions
30      In that regard, suffice it to note that, first, the decisions which the Boards of Appeal of EUIPO are called on 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 those decisions 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, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
31      Secondly, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, including the principle of equal treatment and the principle of sound administration. In the light of those principles, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, since the way in which those principles are applied must be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as an EU trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed to 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 an EU trade 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 (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77).
32      It should be observed, as the Board of Appeal did in paragraph 49 of the contested decision, that the factual situations in the cases which gave rise to the EUIPO decisions relied on by the applicant differ from the factual situation in the present case, since, in those decisions, the figurative element of the trade marks concerned was not as complex as the figurative element of the contested mark. Contrary to what the applicant claims, the figurative element of those marks depicted a simple circular geometric shape, whereas the figurative element of the contested mark comprises, as pointed out in paragraph 29 above, two circular lines in the middle of which there is a graphic element depicting a stylised lower-case letter ‘f’. Furthermore, unlike the figurative elements of the trade marks concerned, the figurative element of the contested mark occupies a large part of that mark and is larger than the word elements of which it is composed.
33      It follows that the Board of Appeal was right to find that the descriptive character of the contested mark could not be demonstrated by those decisions.
–       The incorrect assessment of the descriptive character of the figurative element of the contested mark
34      In support of its claim regarding the descriptive character of the figurative element of the contested mark, the applicant provided screenshots of cigarette filters taken from the internet.
35      The applicant criticises the Board of Appeal for finding, in essence, in paragraph 52 of the contested decision, that the images submitted did not describe any objective, inherent, intrinsic or permanent characteristic of a tobacco product.
36      In that regard, it should be recalled that the purpose of invalidity proceedings is, inter alia, to enable EUIPO to review the validity of the registration of a mark and to adopt, where necessary, a position which it should have adopted of its own motion during the registration procedure, in accordance with Article 42(1) of Regulation 2017/1001 (judgment of 30 May 2013, ultra air v OHIM – Donaldson Filtration Deutschland (ultrafilter international), T‑396/11, EU:T:2013:284, paragraph 20).
37      Although most of the screenshots provided show circular cigarette filters intersected by a line on dates subsequent to the date of filing of the application for registration of the contested mark, which occurred on 18 December 2018 (‘the relevant date’), none of them shows a graphic element in the form of a stylised lower-case letter ‘f’, as in the contested mark.
38      In those circumstances, the Board of Appeal rightly pointed out, in paragraph 52 of the contested decision, that the evidence adduced did not contain a single image of a filter tip comprising a specific circular device with a stylised lower-case letter ‘f’ that cuts the inner ring and merges with the outer ring, as in the contested mark.
39      Moreover, as EUIPO correctly states, the screenshots provided by the applicant all post-date the relevant date. In fact, they date from December 2020, February 2021 and January 2022.
40      Accordingly, even assuming, as the applicant asserts, that, at the date of filing of the application for registration, the figurative element of the contested mark was a descriptive depiction of a cigarette filter and that the relevant public would have immediately perceived it as such, without further thought, such an assertion cannot be considered to have been duly proven on the basis of the evidence adduced.
41      It follows that the applicant has not demonstrated that there was, at the date of filing of the application for registration of the contested mark, a sufficiently direct and specific link between its figurative element and the goods in respect of which that mark was registered, to enable the relevant public immediately to perceive, without further thought, a description of those goods or one of their characteristics within the meaning of the case-law cited in paragraph 21 above.
The incorrect assessment of the descriptive character of the contested mark
42      In the present case, it should be noted from the outset that the descriptive character of the contested mark, as claimed by the applicant, is based on its figurative element and its descriptive depiction of a cigarette filter. The applicant submits in its written pleadings that the word elements ‘flow filter’ of that mark would dispel any ambiguity as to the descriptive perception of the figurative element and would clearly lead consumers to perceive that element as a descriptive image of a filter with a cross section.
43      However, the Court has found in paragraphs 40 and 41 above that the evidence adduced by the applicant did not serve to prove that the figurative element of the contested mark was, at the date of filing of the application for registration of that mark, a descriptive depiction of a cigarette filter and that the relevant public would have immediately perceived it as such, without further thought.
44      Accordingly, since no evidence of the descriptive character of the figurative element of the contested mark was adduced and since the alleged descriptive character of the contested mark was based on its figurative element, the applicant cannot validly criticise the Board of Appeal for considering that the evidence submitted did not make it possible to establish the descriptive character of that mark, at the date of filing of the application for that mark, in particular as regards its figurative element.
45      In the light of all of the foregoing, the Board of Appeal did not err in finding that the evidence submitted by the applicant did not make it possible to establish the alleged descriptive character of the contested mark as a whole at the date of filing of the application for registration of that mark and that, consequently, the contested mark could not be regarded as falling within the scope of the prohibition laid down by Article 7(1)(c) of Regulation 2017/1001.
46      The first plea in law must therefore be rejected as manifestly unfounded.
Second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
47      The applicant argues, in essence, that contrary to the finding made by the Board of Appeal, the figurative element of the contested mark is not distinctive. First, as is apparent from the evidence submitted, that figurative element would be perceived by the relevant public as a descriptive depiction of a cigarette filter. Secondly, in view of its banal or purely decorative nature, it is not such as to divert the relevant public’s attention from the clear descriptive message conveyed by the word elements of that mark.
48      EUIPO and the intervener dispute the applicant’s arguments.
49      In that regard, suffice it to recall that, in accordance with the case-law cited in paragraph 15 above, it is for the person who has filed the application for a declaration of invalidity to place before EUIPO the specific facts which call the validity of the contested mark into question.
50      First, the Court has found in paragraph 41 above that the evidence adduced by the applicant did not serve to prove that the figurative element of the contested mark was, at the date of filing of the application for registration of that mark, a descriptive depiction of a cigarette filter and that the relevant public would have immediately perceived it as such, without further thought.
51      In those circumstances, in so far as the applicant has not duly proven the descriptive character of the figurative element of the contested mark, the Board of Appeal did not err in not finding that the figurative element lacked distinctive character on account of its descriptive character.
52      Secondly, although the applicant pleads the banality of the figurative element of the contested mark in the sector of the goods concerned at the relevant date, the Court has observed in paragraph 37 above that, whereas most of the items of evidence submitted showed circular cigarette filters intersected by a line on dates subsequent to the relevant date, none showed, on any view, a graphic element in the form of a stylised lower-case letter ‘f’, as in that mark.
53      Furthermore, in so far as the applicant submits that the Board of Appeal should have found that the figurative element of the contested mark did not have sufficient inherent distinctiveness to divert the relevant public’s attention from the clear descriptive message conveyed by the word elements of that mark, it must be borne in mind, in that regard, that, contrary to what the applicant appears to suggest, the registration of a sign as an EU trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings (judgment of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 41). In particular, a minimum degree of distinctive character is sufficient to preclude the application of the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 (see order of 12 February 2021, sprd.net v EUIPO – Shirtlabor (I love), T‑19/20, not published, EU:T:2021:89, paragraph 27 and the case-law cited).
54      In the present case, it should be observed, as the Board of Appeal did in paragraphs 65 and 66 of the contested decision, that the figurative element of the contested mark, consisting of a stylised lower-case letter ‘f’ in the middle of two circular lines on a bluish grey background, departs significantly from the simple and basic geometric form of a circle or the way in which single letters are generally presented. The lower-case letter ‘f’ in the middle of those two circular lines has a sufficiently fanciful and original stylisation, endowing that element with a minimum degree of distinctive character in order to fulfil the function of a trade mark.
55      The figurative element of the contested mark is also visually striking owing to its large size and position at the beginning of the mark. That element occupies a large part of the contested mark and is larger than the word elements.
56      Consequently, in the light of its stylisation and substantial position in the contested mark, the figurative element of that mark is capable of diverting the relevant public’s attention from the word elements of which it is composed, with the result that it is, as a whole, distinctive.
57      That finding cannot be invalidated by the case-law relied on by the applicant, according to which the more closely the shape for which registration is sought as a trade mark 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 (see judgments of 29 April 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 11 June 2009, Baldesberger v OHIM (Shape of tweezers), T‑78/08, not published, EU:T:2009:199, paragraph 24 and the case-law cited). In that regard, suffice it to recall that the Court has found in paragraph 37 above that the evidence adduced by the applicant did not serve to prove that, on the relevant date, the figurative element of the contested mark was banal in the sector of the goods concerned.
58      In the light of all of the foregoing, the Board of Appeal did not err in finding that the evidence submitted by the applicant did not make it possible to establish the alleged lack of distinctive character of the contested mark as a whole at the date of filing of the application for registration of that mark and that, consequently, the contested mark could not be regarded as falling within the scope of the prohibition laid down by Article 7(1)(b) of Regulation 2017/1001.
59      The second plea in law must therefore be rejected as manifestly unfounded.
Third plea in law, alleging infringement of Article 7(1)(d) of Regulation 2017/1001
60      The applicant submits, in essence, that the contested mark consisted exclusively, at the date of filing of the application for registration of that mark, of elements which had become customary in the current language or in the bona fide and established practices of the trade in the sector of the goods concerned.
61      EUIPO and the intervener dispute the applicant’s arguments.
62      As a preliminary point, it should be recalled that Article 7(1)(d) of Regulation 2017/1001 prohibits the registration of trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
63      That provision must be interpreted as precluding registration of a trade mark only where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought (see judgment of 16 March 2006, Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN), T‑322/03, EU:T:2006:87, paragraph 49 and the case-law cited).
64      Thus, signs or indications constituting a trade mark which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that mark are not capable of distinguishing the goods or services of one undertaking from those of other undertakings and do not therefore fulfil the essential function of a trade mark (see judgment of 16 March 2006, WEISSE SEITEN, T‑322/03, EU:T:2006:87, paragraph 52 and the case-law cited).
65      Whether a mark is customary can only be assessed by reference, first, to the goods or services in respect of which registration is sought, even though the provision in question does not explicitly refer to those goods or services, and, secondly, to the relevant public’s perception of the mark (see judgment of 16 March 2006, WEISSE SEITEN, T‑322/03, EU:T:2006:87, paragraph 49 and the case-law cited).
66      It should also be borne in mind that, in accordance with the case-law cited in paragraph 15 above, it is for the person who has filed the application for a declaration of invalidity to place before EUIPO the specific facts which call the validity of the contested mark into question.
67      In the present case, it has been held, in paragraph 56 above, that the figurative element of the contested mark is capable, in the light of its stylisation and substantial position in that mark, of diverting the relevant public’s attention from the mark’s word elements, with the result that the contested mark is, as a whole, distinctive.
68      The Court has observed in paragraph 37 above that whereas most of the items of evidence submitted by the applicant showed circular cigarette filters intersected by a line on dates subsequent to the relevant date, none showed, on any view, a graphic element in the form of a stylised lower-case letter ‘f’, as in the contested mark.
69      It follows that, although the applicant claims that the contested mark as a whole was customary at the date of filing of the application for registration of that mark, it has not shown that, at that date, the contested mark consisted exclusively of elements which had become customary in the current language or in the bona fide and established practices of the trade to designate the goods in respect of which it had been registered.
70      Accordingly, the Board of Appeal did not err in finding that the evidence submitted by the applicant did not make it possible to establish the alleged customary character of the contested mark as a whole at the date of filing of the application for registration of that mark and that, consequently, the contested mark could not be regarded as falling within the scope of the prohibition laid down by Article 7(1)(d) of Regulation 2017/1001.
71      The third plea in law must therefore be rejected as manifestly unfounded.
72      In the light of all of the foregoing, the action must be dismissed as manifestly lacking any foundation in law.
Costs
73      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.
74      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter.
75      By contrast, since EUIPO has requested that the applicant be ordered to pay the costs only in the event that a hearing is convened, EUIPO must be ordered to bear its own costs, since no hearing was held.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Japan Tobacco, Inc. shall bear its own costs and pay those incurred by Dunhill Tobacco of London Ltd.
3.      The European Union Intellectual Property Office (EUIPO) shall bear its own costs.
Luxembourg, 15 April 2024.
V. Di Bucci
M.J. Costeira
Registrar
President
*      Language of the case: English.