JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

12 December 2019 (*)

(EU trade mark — Application for a three-dimensional EU trade mark — Shape of a flower — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EU) 2017/1001 — Rights of the defence — Obligation to state reasons)

In Case T‑747/18,

Refan Bulgaria OOD, established in Trud (Bulgaria), represented by A. Ivanova, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė, acting as Agent,

defendant,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 6 September 2018 (Case R 2518/2017-1), regarding an application for registration of a three-dimensional sign consisting of the shape of a flower as an EU trade mark,

THE GENERAL COURT (Seventh Chamber),

composed of R. da Silva Passos, President, V. Valančius and I. Reine (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 20 December 2018,

having regard to the response lodged at the Court Registry on 8 April 2019,

having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Seventh Chamber,

having regard to the fact that no request for a hearing was submitted by the parties within 3 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 4 April 2017, the applicant, Refan Bulgaria OOD, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).

2        Registration as a mark was sought for the three-dimensional sign reproduced below:

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3        The goods in respect of which registration was sought are in Classes 3 to 5 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 3: ‘Soap products; dentifrices; toilet water; eau de Cologne; nail varnish; soap; bath soap; beauty soap; cakes of toilet soap; perfumed soaps; non-medicated soaps; soaps for personal use; toilet soap; cosmetic soaps; scented soaps; sponges impregnated with soaps; essential oils and aromatic extracts; toiletries; cleaning and fragrancing preparations; abrasives’;

–        Class 4: ‘Candles; paraffin; perfumed candles; tealights; floating candles; candles for lighting; votive candles; special occasion candles; aromatherapy fragrance candles; candles for absorbing smoke’;

–        Class 5: ‘Medicated soap; disinfectant soap; antibacterial soap’.

4        On 21 April 2017, EUIPO’s examiner raised objections to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above, except for the goods ‘Dentifrices; toilet water; eau de Cologne; nail varnish; essential oils and aromatic extracts; abrasives’ in Class 3 and the goods ‘Paraffin’ in Class 4. According to the examiner, with the exception of the abovementioned goods, the goods covered by the mark applied for were caught by the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001).

5        By decision of 29 September 2017, on the basis of Article 7(1)(b) of Regulation No 207/2009, the examiner refused registration of the mark applied for in respect of the following goods:

–        Class 3: ‘Soap products; soap; bath soap; beauty soap; cakes of toilet soap; perfumed soaps; non-medicated soaps; soaps for personal use; toilet soap; cosmetic soaps; scented soaps; sponges impregnated with soaps; toiletries; cleaning and fragrancing preparations’;

–        Class 4: ‘Candles; perfumed candles; tealights; floating candles; candles for lighting; votive candles; special occasion candles; aromatherapy fragrance candles; candles for absorbing smoke’;

–        Class 5: ‘Medicated soap; disinfectant soap; antibacterial soap’.

6        On 23 November 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision. On 29 January 2018, it filed a statement of grounds for its appeal.

7        On 4 July 2018, the First Board of Appeal sent a communication to the applicant. By that communication, the Board of Appeal reiterated the examiner’s doubts with regard to the mark applied for so far as the absolute ground for refusal laid down by Article 7(1)(b) of Regulation 2017/1001 was concerned. Furthermore, it stated that the mark applied for was also caught by the absolute ground for refusal laid down by Article 7(1)(c) of that regulation.

8        By letter of 6 August 2018, the applicant replied to that communication.

9        By decision of 6 September 2018 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.

10      In the first place, the Board of Appeal stated that the appeal before it was confined to the goods in respect of which the examiner had refused registration of the mark applied for.

11      In the second place, the Board of Appeal found that the goods covered by the mark applied for were aimed at the general public and also at specialists, in particular as regards the goods in Class 5. With regard to the goods in Class 3, the Board of Appeal found that the relevant public was the public in general, which was deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, according to the Board of Appeal, consumers tended to be attentive when acquiring body care products.

12      In the third place, the Board of Appeal found that the mark applied for, which represented a flower and symbolised the fragrance of the goods concerned, was descriptive since the fragrance was an essential characteristic of those goods.

13      In the fourth place, in its examination of the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal pointed out that the shape of the mark applied for did not diverge from normal commercial practice and had no distinctive character.

14      In the fifth place, it rejected the applicant’s arguments relating to EUIPO’s previous decision-making practice.

15      By decision of 13 March 2019, the Board of Appeal adopted a corrigendum to the contested decision on the ground that, contrary to what had been stated in that decision, the goods ‘abrasives’ had been accepted for registration by the examiner unlike the ‘cleaning and fragrancing preparations’, in respect of which registration had been refused. Consequently, paragraph 3 of the contested decision was corrected to that effect.

 Forms of order sought

16      The applicant claims that the Court should:

–        annul the contested decision;

–        allow the application for registration in its entirety or, at least, in part, as regard the goods in relation to which no obstacle to registration exists.

17      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

18      In support of its action the applicant puts forward three pleas in law, alleging, first, in essence, infringement of the applicant’s rights of defence, secondly, infringement of Article 7(1)(c) of Regulation 2017/1001 and, thirdly, infringement of Article 7(1)(b) of that regulation.

 The first plea, alleging infringement of the applicant’s rights of defence

19      The applicant submits that the absolute ground for refusal based on Article 7(1)(c) of Regulation 2017/1001 was invoked for the first time in the contested decision. It maintains that, consequently, it did not have the chance to develop its defence in that regard. Furthermore, it submits that, since the Board of Appeal found that that absolute ground for refusal existed, the case should have been remitted to the examiner so that the examiner could adopt a new decision.

20      EUIPO disputes the applicant’s arguments.

21      In the first place, it must be pointed out that it is apparent from Article 45(3) of Regulation 2017/1001 and from Article 27(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), that the Board of Appeal has the right to re-open the examination of absolute grounds of refusal on its own initiative at any time before registration, where appropriate, including the right to raise a ground for refusal of the application for registration of the trade mark which has not already been invoked in the decision subject to appeal.

22      Consequently, contrary to what the applicant submits, the Board of Appeal was, in the present case, entitled to raise the descriptiveness of the mark applied for, in spite of the lack of any observations on the part of the examiner regarding that absolute ground for refusal, and did not have to remit the case to the examiner in order for her to adopt a new decision.

23      In the second place, it is necessary to examine whether, by relying on the descriptiveness of the mark applied for, the Board of Appeal infringed the applicant’s rights of defence in that the applicant claims that it did not have the chance to develop its defence with regard to the absolute ground for refusal based on Article 7(1)(c) of Regulation 2017/1001.

24      In that regard, it must be borne in mind that observance of the rights of the defence is a general principle of EU law, guaranteed, furthermore, by Article 41(2)(a) of the Charter of Fundamental Rights of the European Union, by virtue of which a person whose interests are appreciably affected by a decision addressed to him by a public authority must be given the opportunity effectively to make his point of view known (see judgments of 19 April 2005, Success-Marketing v OHIM — Chipita (PAN & CO), T‑380/02 and T‑128/03, EU:T:2005:133, paragraph 94 and the case-law cited, and of 1 February 2017, Gómez Echevarría v EUIPO — M and M Direct (wax by Yuli’s), T‑19/15, not published, EU:T:2017:46, paragraph 27 and the case-law cited).

25      In the context of EU trade mark law, that general principle, according to which decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments, is enshrined in Article 94(1) of Regulation 2017/1001. In so far as Article 70(2) of Regulation 2017/1001 lays down the right of parties to be heard on the observations, facts and evidence put forward before the Board of Appeal, that article also enshrines, in EU trade mark law, the general principle of protection of the rights of the defence (see, to that effect, judgments of 19 April 2005, PAN & CO, T‑380/02 and T‑128/03, EU:T:2005:133, paragraph 95, and of 1 February 2017, wax by Yuli’s, T‑19/15, not published, EU:T:2017:46, paragraph 26).

26      The fact remains that, in the present case, as has been stated in paragraph 7 above, on 4 July 2018, the First Board of Appeal sent a communication to the applicant in which it informed it that the mark applied for was also caught by the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001. In its response of 6 August 2018 to that communication, the applicant had the chance to express a view on the descriptiveness of the mark applied for and it submitted that the mark applied for was not descriptive.

27      It follows that the applicant had the opportunity in front of the Board of Appeal, before the contested decision was adopted, effectively to make its point of view known regarding the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001. The applicant cannot therefore validly claim that there has been infringement of its rights of defence.

28      Consequently, the first plea in law must be rejected.

 The second plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001

29      The present plea is based on four complaints, alleging, first, a failure to state reasons as regards some of the goods covered by the mark applied for, secondly, failure to determine the territory concerned in relation to the relevant public, thirdly, an error of assessment regarding the descriptiveness of the mark applied for and, fourthly, that the Board of Appeal departed from EUIPO’s decision-making practice.

30      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 services, or other characteristics of the goods or services must not be registered.

31      It must be pointed out that Article 7(1)(c) of that regulation does not distinguish between word marks and figurative or three-dimensional marks (judgment of 14 December 2011, Vuitton Malletier v OHIM — Friis Group International (Representation of a locking device), T‑237/10, not published, EU:T:2011:741, paragraph 97).

32      According to the case-law, Article 7(1)(c) of Regulation 2017/1001 prevents the signs or indications to which it refers 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 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31; 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).

33      Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, under Article 7(1)(c) of Regulation 2017/1001, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 13).

34      It must also be borne in mind that the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 17). Consequently, 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 public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (judgments of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16; of 18 November 2015, Research Engineering & Manufacturing v OHIM — Nedschroef Holding (TRILOBULAR), T‑558/14, not published, EU:T:2015:858, paragraph 17, and of 12 April 2016, Choice v EUIPO (Choice chocolate & ice cream), T‑361/15, not published, EU:T:2016:214, paragraph 15).

35      It is in the light of those principles that the second plea in law put forward in the present action must be examined.

 The first complaint, alleging a failure to state reasons as regards some of the goods concerned

36      The Board of Appeal stated, in paragraph 18 of the contested decision, that the refused goods ‘are, in general terms, cosmetic soaps and scented candles. With regard to all of those goods, the fragrance is one of the most important characteristics for the relevant consumers’. In paragraph 22 of the contested decision, the Board of Appeal also explained that ‘[so] far as concerns the goods examined, the relevant consumer will perceive the shape of the flower as a symbol of the fragrance of the product’. It added that ‘the fragrance is an essential characteristic of the goods concerned and it is sufficient that the shape applied for indicates that characteristic for it to be considered to be descriptive’.

37      The applicant complains that the Board of Appeal did not, with regard to any goods other than soap and candles, in particular, with regard to the goods ‘toiletries’ and ‘abrasives’ in Class 3 and all the goods concerned in Class 5, state the reasons for its refusal to register the mark applied for.

38      EUIPO disputes the applicant’s arguments.

39      In that regard, it must be borne in mind that, pursuant to Article 94(1) of Regulation 2017/1001, 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 (see judgment of 19 June 2018, Karl Storz v EUIPO (3D), T‑413/17, not published, EU:T:2018:356, paragraph 36 and the case-law cited).

40      It must be pointed out, first, that the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought and, secondly, that the decision by which the competent authority refuses registration of a mark must, in principle, state reasons in respect of each of those goods or services (order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 37, and judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 29).

41      However, as regards the latter requirement, where the same ground of refusal is given for a category or group of goods or services, the reasoning may be general for all of the goods or services concerned (judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30, and of 19 June 2018, 3D, T‑413/17, not published, EU:T:2018:356, paragraph 37).

42      Nevertheless, such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services. The mere fact that the goods or services concerned are in the same class of the Nice Agreement is not sufficient for a finding that such homogeneity exists, as those classes often contain a large variety of goods or services which are not necessarily interlinked in a sufficiently direct and specific way (judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 31, and of 19 June 2018, 3D, T‑413/17, not published, EU:T:2018:356, paragraph 38).

43      In order to determine whether the goods and services covered by an application for registration of an EU trade mark are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogeneous categories or groups, for the purposes of the case-law cited in paragraph 42 above, account must be taken of the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question of whether or not the mark concerned by the application for registration comes under one of the absolute grounds for refusal (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 32).

44      Lastly, the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant for the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 33).

45      In the present case, it must be stated that the goods ‘Abrasives’ were not covered by the appeal before the Board of Appeal. As has been stated in paragraph 15 above, by rectification of 13 March 2019, the contested decision was corrected so as to exclude the goods ‘Abrasives’ from the refusal of registration. Consequently, the complaint alleging a failure to state reasons is ineffective in so far as it concerns those goods.

46      By contrast, as a result of the corrigendum of 13 March 2019, the goods ‘cleaning and fragrancing preparations’ had to be included within the scope of the appeal before the Board of Appeal since registration of the mark applied for had been refused in respect of those goods. In that regard, it must be stated that, first, the abovementioned corrigendum only corrects a manifest oversight in accordance with Article 102(1) of Regulation 2017/1001, without affecting the substance of the contested decision, and that, secondly, in paragraph 22 of the application, the applicant states that ‘there is no argumentation of the refusal for all goods for which the trade mark is rejected’. It can therefore be held that, even though the applicant did not refer to a failure to state reasons in the contested decision regarding, specifically, the goods ‘Cleaning and fragrancing preparations’, it in actual fact also took issue with the absence of reasoning regarding those goods.

47      In paragraph 22 of the contested decision, the Board of Appeal found that, as regards the goods examined, the relevant public would perceive the shape of the flower as a symbol of the fragrance of the product. Furthermore, in paragraph 10 of the contested decision, the Board of Appeal stated that the appeal was confined to the goods in respect of which the examiner had refused to register the mark applied for. It follows that, by referring to the goods examined, the Board of Appeal referred to the goods which were relevant for the purposes of the appeal proceedings before it. Consequently, it ruled on the descriptiveness of all the goods concerned in respect of which the examiner had refused registration, including the goods ‘Toiletries’ and, in view of the corrigendum to the contested decision, the goods ‘Cleaning and fragrancing preparations’ in Class 3, and also all the goods concerned in Class 5.

48      It is also necessary to examine, in order to reply to the complaint described in paragraph 37 above, whether the ‘toiletries’ and ‘cleaning and fragrancing preparations’ and all the goods in Class 5 are linked in a sufficiently direct and specific way to the other goods covered by the appeal before the Board of Appeal, to the point where they form a sufficiently homogeneous category or group of goods for the purposes of the statement of reasons for the contested decision, as set out in paragraphs 18 and 22 of that decision.

49      In that regard, it must be stated that ‘toiletries’ include personal hygiene goods (see, to that effect, judgment of 15 March 2012, Cadila Healthcare v OHIM — Novartis (ZYDUS), T‑288/08, not published, EU:T:2012:124, paragraph 44). ‘Toiletries’ are not only products intended for washing, but are, more generally, daily body care or beauty products (see, to that effect, judgment of 13 June 2019, Pielczyk v EUIPO — Thalgo TCH (DERMÆPIL SUGAR EPIL SYSTEM), T‑398/18, not published, EU:T:2019:415, paragraph 94).

50      Consequently, it must be held, as observed by EUIPO, that ‘toiletries’ include soaps, by definition intended for washing, and daily body care or beauty products which may have a fragrance. The applicant does not dispute that a fragrance is a characteristic of soaps or that the contested decision contains reasoning as regards those goods. It follows that the Board of Appeal did not fail to state the reasons for its decision as regards ‘toiletries’, which include soaps and form, in the present case, in the light of the presence of a fragrance, a sufficiently homogeneous category or group of goods with soaps and candles.

51      The same is true as regards ‘cleaning and fragrancing preparations’ since those goods may also be characterised by a fragrance, as is apparent from the word ‘fragrancing’. Consequently, in the present case, those goods form, in that regard, a sufficiently homogeneous category or group of goods with soaps and candles.

52      That finding is not, moreover, called into question by the fact that those goods may also include items with regard to which a fragrance is irrelevant. According to settled case-law, the fact that a sign is descriptive in relation to only some of the goods or services within a category listed as such in the application for registration does not preclude that sign being refused registration where the applicant does not confine his application to the goods in respect of which the sign is not descriptive. If the mark applied for were to be registered, there would be nothing to preclude the applicant from also using it for the goods covered by the registration in respect of which it is descriptive (see, to that effect, judgments of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 92, and of 9 September 2010, Nadine Trautwein Rolf Trautwein v OHIM (Hunter), T‑505/08, not published, EU:T:2010:378, paragraph 44).

53      The goods in Class 5, namely ‘medicated soap; disinfectant soap; antibacterial soap’, are also included in the category of ‘soap’ and their specific nature does not preclude them from having a fragrance. Consequently, as has been stated in paragraph 50 above, the contested decision does not fail to state reasons in relation to the goods relating to soaps and, therefore, to the goods concerned in Class 5.

54      Accordingly, it must be held that the Board of Appeal could, without infringing its obligation to state reasons, carry out an overall examination covering all the goods concerned on account of the fragrance which characterises them and could therefore formulate a single conclusion based on the descriptiveness of all those goods. It follows that the contested decision is not vitiated by a failure to state reasons in that regard.

55      The first complaint must therefore be rejected.

 The second complaint, alleging failure to determine the territory concerned

56      The Board of Appeal found that the relevant public consisted of the general public and of specialists who are reasonably well informed and reasonably observant and circumspect.

57      The applicant submits, in that regard, that the Board of Appeal did not indicate the territory concerned and that it is not apparent from the contested decision whether or not what is involved here is the relevant public in the whole of the European Union.

58      EUIPO has not submitted any specific arguments in that regard.

59      In the present case, it is true that, in the contested decision, the Board of Appeal did not expressly rule on the relevant territory to be taken into account in its analysis of whether the mark applied for was descriptive.

60      However, Article 7(2) of Regulation 2017/1001 provides that paragraph 1 of that provision is to apply notwithstanding that the grounds of non-registrability, which include the descriptiveness of a sign, obtain in only part of the Union. It follows that, except in specific circumstances, the analysis of the absolute grounds for refusal relates to the territory of the whole of the European Union.

61      Furthermore, it must be pointed out that, as regards marks other than word marks, such as that under consideration in this case, it must be assumed that the assessment of descriptiveness will be the same throughout the European Union, unless there are specific indicia to the contrary (see, by analogy, judgment of 16 March 2016, Työhönvalmennus Valma v OHIM (Shape of a toy box containing wooden blocks), T‑363/15, not published, EU:T:2016:149, paragraph 37). Since, in the present case, it is not apparent from the case file that that is so, it must be held that the territory concerned in the contested decision is that of the whole of the European Union.

62      Consequently, the second complaint must be rejected.

 The third complaint, alleging an error of assessment regarding the descriptiveness of the mark applied for

63      As regards the descriptiveness of the mark applied for, the Board of Appeal found that the relevant public would perceive the flower-shaped mark applied for as a symbol of the fragrance of the goods concerned, which is an essential characteristic of those goods. Furthermore, the Board of Appeal stated that, pursuant to Article 7(1)(c) of Regulation 2017/1001, registration of the mark applied for had to be refused if one of the possible meanings of that mark designated a characteristic of the goods concerned.

64      The applicant submits that the mark applied for represents a flower, the specific type of which is not, however, defined. It maintains that the fragrance, if there is any particular fragrance with which the mark applied for is associated, is not defined. It argues that, in such a case, in which the type of flower represented is not defined, the relevant public cannot expect a particular fragrance. The applicant submits that, in order to conclude that the mark applied for is descriptive, the Board of Appeal had to establish the characteristic described by that mark, namely the particular fragrance of the goods concerned. It adds that the mark applied for does not describe the fragrance of the goods, but has decorative purposes.

65      EUIPO disputes the applicant’s arguments.

66      In the present case, the parties agree that the mark applied for is a three-dimensional representation of a flower. It is true that the mark applied for does not specify the type of flower which it represents. However, the applicant does not dispute that a flower is also characterised by its fragrance.

67      In that context, it must be stated, as observed by EUIPO, that, in spite of the lack of precision regarding the type of flower represented by the mark applied for, the relevant public will perceive that mark in association with the goods covered by that mark, as indicating the presence of the scent of a flower. The relevant public will see it either as the representation of a specific flower, and will associate the goods concerned with that flower’s fragrance, or as an image of an undefined flower, connected, in such a case, with a floral fragrance.

68      Moreover, it must be borne in mind that, according to settled case-law, in order for EUIPO to refuse registration on the basis of the ground set out in Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications composing the mark actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed or in a way that is descriptive of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 31 May 2016, Warimex v EUIPO (STONE), T‑454/14, not published, EU:T:2016:325, paragraph 83 and the case-law cited). It follows that, in the present case, even though the goods concerned do not necessarily have the fragrance of a very specific flower, such as a rose, those goods may be used with such a fragrance, which is sufficient for registration of the mark applied for to be refused on the basis of Article 7(1)(c) of Regulation 2017/1001. Furthermore, such a possible use is apparent from the example that the Board of Appeal gave in paragraph 20 of the contested decision, which shows that the applicant uses the shape of the mark applied for soaps with a rose fragrance. The applicant has not disputed that use.

69      In addition, the applicant has not disputed that goods such as candles and soaps can generally be characterised by a floral fragrance. It has not therefore called into question the Board of Appeal’s finding that the fragrance constitutes a characteristic of those goods. On the contrary, in its statement of grounds for its appeal before the Board of Appeal, the applicant stated that, with regard to soaps, all flowers and especially those which are characterised by a fragrance are usually reproduced and associated with those goods. That also applies to the goods concerned in Class 5 irrespective of the fact that they are medicated, disinfectant and antibacterial soaps, which does not preclude them from having a fragrance like all other soaps.

70      Furthermore, as regards ‘toiletries’, as has been stated in paragraphs 49 and 50 above, those goods do not include only products intended for washing, but are, more generally, daily body care or beauty products. Consequently, those goods cover soaps as well as daily body care or beauty products which may have a fragrance.

71      As regards ‘Cleaning and fragrancing preparations’, it is apparent from the wording of those goods, in particular from the word ‘fragrancing’, that the fragrance is an essential characteristic of those goods on the basis of which the consumer will make his choice.

72      Consequently, in the light of the foregoing, it must be held that the Board of Appeal did not err in finding that the mark applied for was descriptive of the goods concerned.

73      That finding cannot be called into question by the applicant’s argument that the mark applied for does not describe the fragrance of the goods, but has decorative purposes. In accordance with the case-law cited in paragraph 68 above, any decorative nature which the mark applied for might have does not preclude it from also designating another characteristic of the goods concerned, namely their fragrance. Furthermore, it is apparent from Article 7(1)(c) of Regulation 2017/1001 that whether the characteristic described is essential is irrelevant for the purposes of the application of that provision (see, to that effect, judgment of 19 April 2016, Spirig Pharma v EUIPO (Daylong), T‑261/15, not published, EU:T:2016:220, paragraph 46).

74      It follows that the third complaint in the present plea must be rejected.

 The fourth complaint, based on EUIPO’s decision-making practice

75      The applicant submits that, both at EU level and at national level, marks similar to the mark applied for have already been registered and that the rejection of its application for registration puts it in an unequal position on the market.

76      EUIPO disputes the applicant’s arguments.

77      In that regard, it must be borne in mind that, in accordance with well-established case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and sound administration, EUIPO must 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, the way in which those principles are applied must, however, be consistent with respect for the principle of legality. 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 or annulled. Accordingly, such an 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 (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77 and the case-law cited).

78      In the present case, the applicant refers to registered EU trade marks without, however, explaining their relevance regarding the descriptiveness of the mark applied for or explaining whether they are three-dimensional marks. Furthermore, it must be stated that those earlier marks on which the applicant relies, notwithstanding some similarities, are different from the mark applied for. However, since the Board of Appeal is required to analyse each individual case in the light of its particular circumstances, the applicant cannot take advantage of the earlier registration of such marks, which are different from the mark applied for, to support the conclusion that, in the present case, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 (see, to that effect, judgment of 12 March 2019, Perry Ellis International Group v EUIPO (PRO PLAYER), T‑220/16, not published, EU:T:2019:159, paragraph 41).

79      As regards the earlier national registrations relied on by the applicant, it must be borne in mind that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State that a similar sign, or even the same sign, is registrable as a national trade mark. That is so even if such a decision was adopted under harmonised national legislation (see, to that effect, judgment of 14 December 2018, Inforsacom Logicalis v EUIPO (Business and technology working as one), T‑7/18, not published, EU:T:2018:974, paragraph 45).

80      Moreover, as is apparent from paragraphs 66 to 72 above, the Board of Appeal was right in finding that the mark applied for was caught by the ground of refusal laid down in Article 7(1)(c) of Regulation 2017/1001. Accordingly, the registration as EU trade marks of signs that have certain similarities to the mark applied for by the applicant is not capable of invalidating that finding (see, to that effect, order of 7 July 2011, MPDV Mikrolab v OHIM, C‑536/10 P, not published, EU:C:2011:469, paragraph 46).

81      In view of the foregoing, the fourth complaint in the second plea must be rejected, without it being necessary to examine its admissibility, which EUIPO disputes.

82      Consequently, since all the complaints put forward by the applicant in the context of the second plea have been rejected, that plea must be rejected.

 The third plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001

83      The applicant submits that the mark applied for is not devoid of any distinctive character.

84      EUIPO disputes the applicant’s arguments.

85      It must be pointed out that, as is clear from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal applies for the sign not to be registrable as an EU trade mark (judgment of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).

86      Accordingly, since, as is apparent from paragraph 72 above, the Board of Appeal was right in finding that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, there is no need, in the present case, to consider the merits of the third plea, alleging infringement of Article 7(1)(b) of that regulation (see, to that effect, order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28).

87      Consequently, in the light of the foregoing considerations, the action must be dismissed in its entirety without it being necessary to rule on the admissibility of the second head of claim, by which the applicant requests that the Court allow the application for registration of the mark applied for.

 Costs

88      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 bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1.      Dismisses the action;


2.      Orders Refan Bulgaria OOD to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).


Da Silva Passos

Valančius

Reine

Delivered in open court in Luxembourg on 12 December 2019.


E. Coulon

 

      R. da Silva Passos

Registrar

 

President


*      Language of the case: English.