JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
14 July 2021 (*)
(EU trade mark – International registration designating the European Union – Word mark Everlasting Comfort – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001)
In Case T‑562/20,
Upper Echelon Products LLC, established in Austin, Texas (United States), represented by M. Izquierdo Blanco, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,
defendant,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 14 July 2020 (Case R 952/2020-1) relating to the international registration designating the European Union in respect of the word mark Everlasting Comfort,
THE GENERAL COURT (Ninth Chamber),
composed of M. J. Costeira, President, B. Berke and T. Perišin (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 September 2020,
having regard to the response lodged at the Court Registry on 15 December 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 25 July 2019, the applicant, Upper Echelon Products LLC, obtained from the World Intellectual Property Organisation (WIPO) international registration designating the European Union, under number 1429637, of the word mark Everlasting Comfort.
2        On 26 September 2019, the European Union Intellectual Property Office (EUIPO) received notification of the international registration of the mark at issue, 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). The EU trade mark is considered to have been applied for on 2 October 2019.
3        The goods in respect of which registration of the mark was sought are in Classes 10 and 24 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 10: ‘Orthopaedic seat cushions; back supports for medical purposes’;
–        Class 24: ‘Cushion covers; pillow covers; pillow protector’.
4        By decision of 20 March 2020, the examiner rejected the application for registration of that mark, basing the rejection on Article 7(1)(b) and (c) of Regulation 2017/1001.
5        On 18 May 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
6        By decision of 14 July 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. First, as regards the relevant public, it found that, in relation to the goods in Class 24, given their nature and purpose, they were aimed at the general public, who would display a normal level of attention. As regards the goods in Class 10, it observed that they have a health-related nature and purpose and that, therefore, the relevant public’s degree of attention was likely to be higher than average. In that regard, it stated that high attentiveness on the relevant public’s part does not imply that a sign is less subject to any absolute grounds for refusal and that it could, in fact, be quite the contrary. In addition, since the mark applied for is composed of English words, it noted that account must be taken of the public in the English-speaking territory of the European Union, namely at least Ireland, Malta and the United Kingdom, before adding that an obstacle pertaining to the English-speaking public of the European Union was considered sufficient for a trade mark application to be rejected.
7        Secondly, as regards the descriptive character of the sign applied for, the Board of Appeal observed that the constituent elements of the mark applied for had the following meanings, which were not contested by the applicant: ‘Everlasting’ means ‘lasting forever or a very long time’ and ‘comfort’ means ‘a state of physical ease and freedom from pain or constraint’. It found that the examiner was entitled to conclude that the relevant English-speaking consumer would understand that sign as descriptive information that the aim of the goods covered in Classes 10 and 24 was to relieve pain and provide customers with a state of physical ease that would last forever or for a very long time, and that, when faced with that sign affixed to those goods, the relevant public would merely perceive it, without any further reflection or mental steps, as indicating the quality, intended purpose and desirable characteristics of those goods. It concluded that the expression ‘everlasting comfort’ was descriptive of the goods at issue for the purposes of Article 7(1)(c) of Regulation 2017/1001.
8        In that regard, the Board of Appeal also noted that the expression ‘everlasting comfort’ was not unusual and did not require any mental steps in order to be understood. In response to the argument that the combination of the words ‘everlasting’ and ‘comfort’ had acquired an ‘independent meaning of its own’, the Board of Appeal countered that the applicant had not explained what kind of new and distinct impression the mark applied for conveyed that would be sufficiently far removed from the characteristics of the goods in question. It found that the combination of the words ‘everlasting’ and ‘comfort’ did not create an impression sufficiently far removed from that produced by the mere combination of meanings conveyed by its constituent elements. In the absence of any perceptible difference between the expression ‘everlasting comfort’ and the mere sum of its parts, the Board of Appeal noted that a mark, such as that at issue, consisting of an expression composed 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 services for the purposes of Article 7(1)(c) of Regulation 2017/1001. It stated that, having regard to the goods covered, the sign applied for constituted a banal expression which the relevant public would not need to analyse with an additional mental step in order for it to be understood. It concluded that the examiner had not erred in finding that the mark applied for conveyed obvious and direct information regarding the quality and intended purpose of the goods at issue and that the link between the sign Everlasting Comfort and the goods covered in Classes 10 and 24 was sufficiently close for the sign to fall within the scope of the prohibition laid down in that article.
9        Thirdly, as regards the lack of distinctive character of the mark applied for, the Board of Appeal found that the mark applied for conveyed an informative message about the desirable characteristics of the goods at issue, namely that they contributed to eliminating pain and gave a state of physical ease that would last a very long time. It found that that mark therefore did not enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned and that it was incapable of performing the essential function of a mark since it merely transmitted an unambiguous message about the positive characteristics of such goods, which would encourage customers to choose them. It concluded that, as an indication whose descriptive meaning could easily be understood by the trade circles targeted, that mark was also devoid of any distinctive character in relation to the goods in question and that, accordingly, the application also had to be refused under Article 7(1)(b) of Regulation 2017/1001.
10      Fourthly, as regards the earlier registrations relied on by the applicant, the Board of Appeal noted, in essence, that they were irrelevant in the light of the Board’s circumscribed powers, the principle of legality and, as regards registrations in third countries, the autonomy of the EU trade mark system. It added that, where marks are in fact registered contra legem, there is a mechanism for dealing with such cases, namely cancellation proceedings. In any event, it stated that it had taken account of those earlier registrations but had concluded that they could not justify registration of the mark applied for, on the above grounds.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        grant the application for registration of the mark in respect of all the goods covered;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Admissibility
Admissibility of the applicant’s second head of claim
13      EUIPO disputes the admissibility of the applicant’s second head of claim requesting that the Court grant the application for registration of the mark in respect of all the goods covered.
14      The applicant’s second head of claim may be understood as seeking to have the Court alter the contested decision, so that the mark applied for is registered (see, to that effect, judgment of 18 July 2017, Alfonso Egüed v EUIPO – Jackson Family Farms (BYRON), T‑45/16, EU:T:2017:518, paragraph 18).
15      In that regard, it should be noted that a head of claim requesting that the Court alter the decision of a Board of Appeal of EUIPO, in accordance with Article 72(3) of Regulation 2017/1001, by adopting the decision that the Board of Appeal should have taken, is admissible. However, the competent bodies of EUIPO do not adopt formal decisions recording the registration of an EU trade mark which might be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of an application that it register an EU trade mark. In those circumstances, it is similarly not for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect (see judgment of 8 July 2020, Artur Florêncio & Filhos, Affsports v EUIPO – Anadeco Gestion (sflooring), T‑533/19, not published, EU:T:2020:323, paragraph 17 and the case-law cited).
16      Accordingly, the applicant’s second head of claim, in which it essentially asks the Court to amend the contested decision and grant its trade mark application must be rejected as inadmissible.
Admissibility of Annex A.5 to the application
17      EUIPO disputes the admissibility of Annex A.5 to the application, entitled ‘Catalogue and images of the products found on the website https://upperechelonproducts.com/collections/all’.
18      It must be noted that this is a new document, which was never submitted before EUIPO during the administrative procedure and which was therefore produced for the first time before the Court.
19      That document, produced for the first time before the Court, cannot be taken into account. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Thus, the abovementioned document must be excluded, without it being necessary to assess its probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHMI – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
20      Accordingly, Annex A.5 produced by the applicant must be rejected as inadmissible.
Substance
21      In support of its action, the applicant raises, in essence, two pleas in law, alleging, first, infringement of Article 75 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) and, secondly, infringement of Article 7(1)(c) of that regulation. In the light of the applicable law ratione temporis, those two pleas must be regarded as alleging, first, infringement of Article 94 of Regulation 2017/1001 and, secondly, infringement of Article 7(1)(c) of that regulation, the content of which is identical.
22      The Court considers it appropriate to begin by examining the second plea.
The second plea, alleging infringement of Article 7(1)(c) of Regulation2017/1001
23      The applicant claims that the Board of Appeal erred in finding that the mark applied for was descriptive of the characteristics of the goods covered, within the meaning of Article 7(1)(c) of Regulation 2017/1001.
24      The applicant submits that the Board of Appeal based its analysis on an erroneous and contradictory premiss in so far as it stated that a normal degree of attention would be displayed by consumers in relation to the relevant goods in Class 24 (namely ‘cushion covers; pillow covers; pillow protector’), with no further explanation, development or justification other than ‘the nature and purpose’ of those goods, even though it then found that those goods also contributed to ergonomic or orthopaedic purposes. In establishing the nature and purpose of the goods, the Board of Appeal ignored the fact that, although the trade mark is used for goods in Class 10, which aim to improve health, the particular goods in Class 24 consisting in ‘covers and protectors’ could never be described with the concepts ‘everlasting’ or ‘comfort’ since their nature and purpose is to protect what they cover, acting as a sleeve or cover, and not to provide comfort, well-being or luxury.
25      The applicant further claims that the Board of Appeal’s assertion that understanding the mark applied for, Everlasting Comfort, does not require any mental effort on the part of the consumer in respect of the goods covered is also incorrect, since the consumer will not perceive that mark as a characteristic of those goods, but as a play on words, which, for an attentive and insightful consumer, is sufficiently far removed from the impression created by the inherent meaning of the words constituting that mark. According to the applicant, the mark at issue should not be analysed in the light of its word elements, considered separately, but should rather be regarded as a composite whole that has acquired its own independent meaning.
26      EUIPO disputes the applicant’s arguments.
27      Pursuant to 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.
28      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).
29      By prohibiting the registration of such signs and indications as EU trade marks, 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 everyone. 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 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
30      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).
31      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).
32      The applicant’s arguments must be examined in the light of those considerations.
The relevant public
33      The applicant does not dispute the Board of Appeal’s finding that the sign applied for is composed of English words and that, accordingly, the examination of absolute grounds for refusal must be carried out by reference to the English-speaking public of the European Union. Nor does it dispute the finding that the consumer of the relevant goods in Class 10 displays a high or above-average level of attention in view of the nature and purpose of those goods in relation to health. There is no reason to call into question those findings, which are not vitiated by any errors.
34      By contrast, the applicant disputes the Board of Appeal’s finding, in paragraph 22 of the contested decision, that the relevant public will display a normal degree of attention with regard to the goods covered in Class 24, namely ‘cushion covers; pillow covers; pillow protector’, given their nature and purpose. According to the applicant, the public’s level of attention will be high due to the fact that those goods are also used for orthopaedic and medical/therapeutic purposes.
35      It must be held that that argument is unfounded, given that the relevant goods in Class 24 consist of ‘cushion covers; pillow covers; pillow protector’ as a general indication and are therefore not limited to a specific subcategory of such goods intended for orthopaedic and medical/therapeutic use.
36      In that regard, it should be noted that, in relation to pillows in Class 20 and various items of bedding in Class 24, in particular bed sheets and quilted covers, the General Court has previously held that, having regard to the nature of those goods, which were aimed at the general public, the relevant public consisted of average consumers of those goods, who were reasonably well informed and reasonably observant and circumspect (judgment of 25 September 2014, Ted-Invest v OHIM – Scandia Down (sensi scandia), T‑516/12, not published, EU:T:2014:811, paragraph 17). That is also the case, in the present case, with the relevant goods in Class 24.
37      In any event, as the Board of Appeal rightly noted in paragraph 23 of the contested decision, high attentiveness on the relevant public’s part does not imply that a sign is less subject to any absolute grounds for refusal. In fact, the opposite may be true and, therefore, the applicant’s argument is inoperative. According to the case-law, it may be that professional training and experience will allow the relevant public more easily to understand the descriptive connotations of the mark applied for (judgment of 11 October 2011, Chestnut Medical Technologies v OHIM (PIPELINE), T‑87/10, not published, EU:T:2011:582, paragraph 28). Thus, the fact that the relevant public has specialist knowledge or displays a high level of attention does not increase the probability that a sign will be perceived as non-descriptive or as distinctive, but may rather favour a finding that the sign has a descriptive or non-distinctive character.
38      Furthermore, it is apparent from the case-law that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the level of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist. The principle deriving from settled case-law, namely that, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered, might be undermined if the distinctiveness threshold of a sign depended generally on the degree of specialisation of the relevant public (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraphs 48 to 50 and the case-law cited). The same is true of the assessment of the descriptiveness of a sign (judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 14).
39      The applicant’s argument relating to the level of attention of the relevant public is therefore unfounded and, in any event, ineffective.
The meaning of the sign applied for
40      The applicant does not dispute the Board of Appeal’s findings, in paragraph 30 of the contested decision, concerning the meaning of the terms ‘everlasting’ and ‘comfort’, based on dictionary definitions and confirming the examiner’s findings. It is therefore common ground that the word ‘everlasting’ means ‘lasting forever or a very long time’ and that the word ‘comfort’ refers to ‘a state of physical ease and freedom from pain or constraint’.
41      By contrast, the applicant criticises the Board of Appeal for having found, in paragraph 31 of the contested decision, in accordance with the examiner, that the relevant English-speaking consumer will understand the sign applied for as descriptive information that the aim of the goods covered is to relieve pain and provide customers with a state of physical ease that will last forever or for a very long time. It asserts that the consumer will not perceive the sign applied for as describing a characteristic of the goods covered, but rather as a play on words, which is sufficiently far removed from the impression created by the inherent meaning of the words constituting that mark and has acquired its own independent meaning.
42      In that regard, it must be stated that the applicant merely asserts that the sign applied for constitutes a play on words, without providing any evidence to substantiate that assertion and without providing any reasoning as to why it considers that the Board of Appeal’s analysis, confirming that of the examiner, is incorrect. In particular, the applicant fails to explain what type of distinct impression may be produced by the combination of the two words ‘everlasting’ and ‘comfort’, and how that impression is sufficiently far removed from that produced by the mere juxtaposition of those two words, the meaning of which is not disputed.
43      Furthermore, that assertion by the applicant cannot be accepted since, as the Board of Appeal noted in paragraphs 41 and 42 of the contested decision, the sign applied for is hardly unusual or striking, particularly grammatically. The expression ‘everlasting comfort’ is composed of an adjective and an English noun which are easily recognisable by the English-speaking public, especially as they form an intelligible expression complying with the rules of English grammar.
44      The applicant is also wrong to claim that the Board of Appeal did not explain the reasons why it had rejected that assertion. In paragraph 28 of the contested decision, the Board of Appeal explicitly noted, first, the general rule, recognised by settled case-law, according to which the mere combination of elements, each of which is descriptive of characteristics of the goods in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 7(1)(c) of Regulation 2017/1001 and, secondly, that such a combination may not be descriptive, but only upon the condition that it creates an impression which is sufficiently far removed from that produced by the mere combination of those elements (see, to that effect and by analogy, judgments of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraphs 39 to 41, and of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraphs 29 to 37). That condition is not satisfied in the present case.
45      The applicant’s arguments relating to the meaning of the sign applied for are therefore unfounded.
The link between the sign applied for and the goods covered
46      The applicant claims that the Board of Appeal’s examination was not carried out in relation to the goods in respect of which registration was sought. According to the applicant, the relevant, attentive and insightful consumers will not immediately establish a link between the sign applied for and the goods covered. In particular, the goods in Class 24 cannot be described by the mark applied for since their nature and purpose are, in essence, to protect what they cover and not to provide comfort.
47      The applicant’s submission in that respect cannot be accepted.
48      It must be held, as found by the Board of Appeal in paragraphs 31 and 33 of the contested decision, that the relevant English-speaking consumer will understand the sign applied for as descriptive information that ‘orthopaedic seat cushions; back supports for medical purposes’ in Class 10 and ‘cushion covers; pillow covers; pillow protector’ in Class 24 aim to relieve pain and provide customers with a state of physical ease that will last forever or for a very long time, which will be construed as being a desirable feature of the goods in question. In that regard, it should be noted that the purpose of protection (of the items they cover) of those goods in Class 24, relied on by the applicant, does not undermine the purpose of comfort of the pillows and cushions thus covered and protected, which will be perceived by the relevant public, but rather reinforces it.
49      It must be noted that there is nothing in the application capable of calling into question that analysis of the Board of Appeal, or, therefore, the finding of a sufficiently direct and specific link between the mark applied for and the goods concerned, enabling the relevant public to perceive, immediately and without further thought, a description of the quality, intended purpose and desirable characteristics of those goods.
50      Accordingly, it must be concluded that the relevant English-speaking consumer will perceive the sign applied for, immediately and without intellectual effort, as describing the characteristics of the goods covered, in particular their intended purpose of providing comfort and being long lasting.
51      It should also be noted, as observed by EUIPO, that that conclusion applies irrespective of whether the relevant public displays a normal or high level of attention. The applicant’s argument that the relevant consumer is attentive and insightful is ineffective, as has already been pointed out in paragraphs 35 to 39 above.
52      Consequently, the Board of Appeal was right to find, in paragraphs 34 and 46 of the contested decision, that the sign applied for was descriptive of all the goods covered, within the meaning of Article 7(1)(c) of Regulation 2017/1001.
53      The applicant’s arguments relating to the link between the sign applied for and the goods covered are therefore unfounded.
The earlier registrations
54      The applicant relies on 14 EU trade marks whose main element is or includes the word ‘everlast’ or ‘everlasting’, as well as a number of marks containing the word ‘confort’ (with the letter ‘n’). All those marks were considered to be sufficiently distinctive to cover goods in Class 10 or 24. The applicant claims that the sign applied for should be regarded as being as distinctive as, or even more distinctive than, those earlier registrations. Furthermore, registration of the mark applied for was granted in the United States of America and Canada, where English is the main language.
55      In that regard, having recalled the autonomy of the EU trade mark system, as regards registrations in Member States and third countries, the Board of Appeal was fully entitled to state, in essence, that those earlier registrations of EU trade marks, even though they were taken into account by the Board, were irrelevant in the light of its circumscribed powers and the principle of legality.
56      It should be borne in mind that the decisions concerning the registration of a sign as an EU trade mark which EUIPO takes under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of EUIPO or a State (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 31 January 2019, DeepMind Technologies v EUIPO (STREAMS), T‑97/18, not published, EU:T:2019:43, paragraph 53 and the case-law cited).
57      Moreover, since the application by EUIPO of the principles of equal treatment and sound administration must be reconciled with respect for the principle of legality, a person who files an application for registration of a sign as an EU trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73, 75 and 76).
58      In the present case, as is apparent from paragraphs 23 to 53 above, the Board of Appeal was right to find that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001 and, accordingly, the applicant cannot successfully rely, in order to invalidate that conclusion, on previous decisions of EUIPO or, a fortiori, of offices of Member States or third countries.
59      In addition, it should be noted, as observed by the Board of Appeal in paragraph 65 of the contested decision, that, if it were established that one of the EU trade marks relied on by the applicant had been registered in breach of Regulation 2017/1001, it could, pursuant to Article 59(1)(a) of that regulation and where appropriate, be declared invalid upon application to EUIPO or by way of counterclaim in infringement proceedings (see, to that effect, judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 38).
60      It follows that the applicant’s arguments relating to the various earlier registrations are unfounded.
61      The second plea must therefore be rejected.
The first plea in law, alleging breach of the obligation to state reasons laid down in Article 94 of Regulation2017/1001
62      The applicant claims that the contested decision is vitiated by a failure to state reasons in relation to a number of its findings and even contradicts itself. In the first place, in so far as the Board of Appeal did not analyse the consumer’s level of attention in relation to the relevant goods in Class 24, namely ‘cushion covers; pillow covers; pillow protector’, on the basis that the consumer will pay a normal degree of attention, without providing any explanation, development or justification other than their ‘nature and purpose’ (see paragraph 22 of the contested decision), which were not examined. According to the applicant, it is clear that, in order to reach such a conclusion, it is necessary first to examine the nature and purpose of those goods. In the second place, the Board of Appeal, in stating that those goods ‘also contribute to ergonomic or orthopaedic purposes’ (see paragraph 32 of the contested decision) in order to justify the existence of a sufficiently direct and specific relationship between the expression ‘everlasting comfort’ and the goods in question, included an ‘invented example’, which was contradicted by its first unsubstantiated assertion that the goods in question are goods of normal and habitual use.
63      In addition to claiming that the assessments in the contested decision are contradictory, the applicant also submits that, as a consequence, it is not in a position to contradict those findings of the Board of Appeal because they are not sufficiently developed or substantiated as regards the nature and purpose of the relevant goods in Class 24, namely ‘cushion covers; pillow covers; pillow protector’. It adds that, if the Board had included a line of arguments, the applicant could have provided a catalogue and images of the goods on its website https://upperechelonproducts.com/collections/all, in order to show that the nature of those ‘covers’ is to be used for orthopaedic and medical/therapeutic goods such as ‘orthopaedic seat cushions; back supports for medical purposes’ visible in Annex A.5 and that, accordingly, the degree of attention of the public must be considered to be high, meaning that the public will be much more attentive to the play on words or suggestive slogan of the mark applied for. The applicant claims it could also have shown that those covers cannot in any way provide comfort or avoid or mitigate pain.
64      EUIPO disputes the applicant’s arguments.
65      The first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question of whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question. That obligation, which also stems from Article 41(2) of the Charter of Fundamental Rights of the European Union, has the dual purpose of enabling interested parties to know the purported justification for the measure taken so as to be able to defend their rights and of enabling the Courts of the European Union to exercise their jurisdiction to review the legality of the decision in question (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 64 and 65 and the case-law cited).
66      Furthermore, the obligation to state reasons is an essential procedural requirement, as distinct from the question of whether the reasons given are 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, the latter 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 ground of appeal 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 case-law cited).
67      In the present case, it must be noted that it is apparent from the examination of the second plea that the reasoning set out in the contested decision enabled the applicant to understand the contested decision and to challenge it on its merits, in particular as regards the level of attention of the relevant public (see paragraphs 24, 25, 34, 41 and 46 above). The fact that the applicant does not agree with the substantive analysis of the Board of Appeal in the contested decision does not constitute a failure to state reasons, in accordance with the case-law cited in paragraph 66 above.
68      Moreover, since the Board of Appeal essentially confirmed in full the reasoning of the examiner, which the applicant had already challenged before that Board, the applicant’s claim that it was deprived of the opportunity to comment on the Board of Appeal’s reasoning cannot succeed. In any event, Annex A.5 to the application, produced for the first time before the Court, cannot be relied on in support of the present plea, since it has been held to be inadmissible.
69      The first plea in law must therefore be dismissed.
70      In the light of all the foregoing considerations, the action must be dismissed in its entirety.
Costs
71      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.
72      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Upper Echelon Products LLC to pay the costs.
Costeira
Berke
Perišin
Delivered in open court in Luxembourg on 14 July 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.