JUDGMENT OF THE GENERAL COURT (First Chamber)
18 October 2016 (*)
(EU trade mark — Application for European Union word mark BRAUWELT — Absolute grounds for refusal — Descriptive character — No distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 — Distinctive character acquired through use — Article 7(3) of Regulation No 207/2009 — Right to be heard — Obligation to state reasons — Article 75 of Regulation No 207/2009)
In Case T‑56/15,
Raimund Schmitt Verpachtungsgesellschaft mbH & Co. KG, established in Nuremberg (Germany), represented by M. Höfler, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Schifko, acting as Agent,
defendant,
ACTION against the decision of the Fourth Board of Appeal of EUIPO of 4 December 2014 (Case R 1121/2014-4), concerning an application for registration of the word sign BRAUWELT as a European Union trade mark,
THE GENERAL COURT (First Chamber),
composed, at the time of the deliberation, of H. Kanninen, President, I. Pelikánová (Rapporteur) and E. Buttigieg, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 2 February 2015,
having regard to the response lodged at the Court Registry on 21 April 2015,
having regard to the reply lodged at the Court Registry on 6 July 2015,
having regard to the fact that no request for a hearing was submitted by the main 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 2 August 2013, the applicant, Raimund Schmitt Verpachtungsgesellschaft mbH & Co. KG, 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).
2 The European Union trade mark in respect of which registration was sought is the word sign BRAUWELT.
3 The goods and services for which registration was sought fall within Classes 9, 16, 32, 35, 38, 41, 42 and 43 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 9: ‘Computer programs and software, in particular application programs (applications, downloadable); data carriers (registered or not)’;
– Class 16: ‘Brochures; magazines; catalogues; books, including in the form of collections of loose-leaf sheets’;
– Class 32: ‘Beer; malt extracts for making beer’;
– Class 35: ‘Organisation of trade fairs and exhibitions in the field of brewing, beverages and food for business and promotional purposes; documentation services for commercial use; address marketing; collection and provision of information on the internet, including marketing and distribution information; organisation and running of fairs, including in electronic form’;
– Class 38: ‘Providing access to information on the internet; providing access to computer programs and applications (application software) on the internet; providing internet portals on behalf of third parties; providing access to information on the internet; compilation, provision and transmission of messages on the internet; providing access to databases; providing access to software, data, images, audio and/or video information on the internet; electronic billboard service’;
– Class 41: ‘Organisation and running of seminars and workshops, including in electronic form; sporting and cultural activities; organisation and running of musical, cultural, tourist and other recreational events; information about entertainment and recreational events; training; entertainment; publishing services, including online publication of electronic books and magazines and writing and publishing of texts; online offers, including information in the food and beverages sectors (food education)’;
– Class 42: ‘Design and development of software, including application programs; providing platforms on the internet; providing an electronic business platform on the internet’;
– Class 43: ‘Restaurant services’.
4 By decision of 14 March 2014, the examiner refused registration for all the goods and services at issue, on the ground that the mark was descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009 and did not have distinctive character within the meaning of Article 7(1)(b) of that regulation.
5 On 24 April 2014, the applicant filed a notice of appeal against the examiner’s decision with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009.
6 By decision of 4 December 2014 (‘the decision appealed against’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In the first place, it found that since the mark sought was made up of German words, the relevant public was made up of end consumers and German and Austrian professionals. In the second place, it found that the mark sought meant ‘brewers’ world’ or ‘world of brewing’ and described, for German-speaking consumers, a sales location or wide-ranging offer of goods and services in connection with brewing. In the third place, it took the view that, depending on the goods and services covered, the mark sought referred to their purpose or thematic focus, or their place of sale or performance. It found that all the goods and services covered by the mark sought could form part of a wide-ranging offer of information and services on a brewery- or brewing-related theme. The Board of Appeal inferred therefrom that the mark sought was descriptive of the type or purpose of the goods and services covered within the meaning of Article 7(1)(c) of Regulation No 207/2009. In the fourth place, the Board of Appeal found that, in so far as the mark sought was descriptive, it lacked distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. In the fifth place, the Board of Appeal found that the evidence adduced by the applicant was insufficient to prove distinctive character acquired through use of the mark sought within the meaning of Article 7(3) of Regulation No 207/2009.
Forms of order sought
7 The applicant claims that the Court should:
– annul the decision appealed against;
– amend the decision appealed against in such a way that the mark sought may be registered for the goods and services claimed;
– in the alternative, amend the decision appealed against so that the mark sought is registered for the goods ‘magazines specialised in the field of brewing’;
– order EUIPO to pay the costs.
8 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
1. Admissibility of the second and third heads of claim
9 EUIPO submits that the second and third heads of claim of the application are inadmissible in so far as they ask the Court to issue an injunction against it.
10 The applicant disputes EUIPO’s arguments on the grounds, first, that the second head of claim is an admissible request for amendment and, second, that the third head of claim is a conditional restriction on the list of the goods and services covered by the mark sought.
11 As a preliminary point, it should be noted that, irrespective of the fact that it is based on a conditional restriction on the list of the goods and services covered by the mark sought, the third head of claim, like the second one, amounts to a request for amendment aimed at having the Court register the mark.
12 In that regard, it is true that the Court has jurisdiction under Article 65(3) of Regulation No 207/2009 to alter Board of Appeal decisions. That jurisdiction to alter decisions operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation No 207/2009, which means that the admissibility of a request for amendment must be assessed in the light of the powers conferred on that Board of Appeal (order of 30 June 2009, Securvita v OHIM (Natur-Aktien-Index), T‑285/08, EU:T:2009:230, paragraphs 14 and 15).
13 However, although registration of an EU trade mark is a consequence of a finding that the conditions laid down in Article 45 of Regulation No 207/2009 have been met, the departments of EUIPO responsible for registration of EU trade marks do not, in that respect, adopt any formal decision which might be the subject of an appeal. Accordingly, a Board of Appeal that may, under Article 64(1) of Regulation No 207/2009, either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further treatment, 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, to that effect, order of 30 June 2009, Natur-Aktien-Index, T‑285/08, EU:T:2009:230, paragraphs 16 to 23).
14 In the light of the foregoing, the second and third heads of claim must be rejected as inadmissible.
2. The evidence adduced for the first time before the Court
15 EUIPO disputes the admissibility of Annexes K.24 to K.30 and K.33 to the application on the ground that they were produced for the first time before the Court, without having been included in the case file before EUIPO.
16 According to settled case-law, the purpose of actions brought before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 65 of Regulation No 207/2009; it is not therefore the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, Annexes K.24 to K.30 and K.33 to the application must be excluded, without its being necessary to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
3. Substance
17 The applicant puts forward three pleas in support of its action: (i) infringement of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 75 of that regulation; (ii) infringement of Article 7(1)(b) of Regulation No 207/2009; and (iii) infringement of Article 7(3) of Regulation No 207/2009, read in conjunction with Article 75 of that regulation.
The first plea: infringement of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 75 of that regulation
18 The applicant criticises the Board of Appeal for having infringed the obligation to state reasons, for having found, incorrectly, that the mark sought had descriptive character for all the goods and services covered and for having infringed its right to be heard.
Infringement of the obligation to state reasons
19 The applicant submits that the Board of Appeal infringed the obligation to state reasons in failing to consider whether the mark sought was descriptive for each good and each service listed in the registration application and in making a general reference to all the goods covered in each of the classes.
20 EUIPO contests the merits of the applicant’s arguments.
21 According to the case-law, where registration of a mark is sought in respect of various goods or services, the Board of Appeal must determine specifically that none of the grounds for refusal of registration listed in Article 7(1) of Regulation No 207/2009 applies to the mark in question, in relation to each of those goods or services claimed, and may reach conclusions which differ depending upon the goods or services in question. Therefore, when refusing registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated (see judgment of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 27 and the case-law cited).
22 However, where the same ground for refusal is given for a category or group of goods or services, the Board of Appeal may limit itself to using general reasoning for all of the goods or services concerned, provided that all the factual and legal considerations constituting the grounds of the decision in question, first, explain adequately the reasoning followed by the Board of Appeal for each of the goods and services belonging to that category and, second, can be applied without distinction to each of the goods or services concerned. The mere fact that the goods and services in question are in the same class under the Nice Agreement is not sufficient for that purpose (see, to that effect, judgment of 2 April 2009, ULTIMATE FIGHTING CHAMPIONSHIP, T‑118/06, EU:T:2009:100, paragraphs 27 and 28 and the case-law cited).
23 In paragraph 16 of the decision appealed against, the Board of Appeal referred to ‘computer programs’, that includes ‘software’, and to ‘data carriers’, in Class 9, and to ‘brochures’, ‘magazines’, ‘catalogues’ and ‘books’, in Class 16. In paragraph 17 of the decision appealed against, the examination was directed at ‘beers’ and ‘malt extracts’, in Class 32, and ‘restaurant services’, in Class 43. In paragraph 18 of the decision appealed against, the Board of Appeal divided the services in Class 35 into two subcategories: marketing and organisation of trade fairs. In paragraph 19 of the decision appealed against, the reasoning relating to the services in Classes 38 and 42 concerns three subcategories: (i) providing portals, (ii) providing access to information, computer programs and databases and (iii) relevant programming services. Lastly, in paragraph 20 of the decision appealed against, the Board of Appeal distinguished four subcategories from among the services in Class 41: basic training and further training, sporting and cultural activities, entertainment and publishing services.
24 In examining the descriptive character of the mark sought by categories of goods and services, the relevance of which is not disputed by the applicant, the Board of Appeal acted in accordance with the rules referred to in paragraphs 21 and 22 above.
25 Consequently, the present plea must be rejected.
The descriptive character of the mark sought in the light of the goods and services covered
26 The applicant submits that the Board of Appeal found, incorrectly, that the mark sought was descriptive of the goods and services covered for the purposes of Article 7(1)(c) of Regulation No 207/2009.
27 EUIPO contests the merits of the applicant’s arguments.
28 Under Article 7(1)(c) of Regulation No 207/2009, 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.
29 According to the case-law, Article 7(1)(c) of Regulation No 207/2009 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 (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).
30 Furthermore, signs or indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
31 The signs and indications referred to in Article 7(l)(c) of Regulation No 207/2009 are thus only those which may serve in normal usage, from the point of view of the relevant public, to designate, either directly or by reference to one of their essential characteristics, goods or services in respect of which registration is sought (judgment of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 39).
32 It follows that, in order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further reflection, a description of the goods and services in question or one of their characteristics (judgment of 14 June 2007, Europig v OHIM (EUROPIG), T‑207/06, EU:T:2007:179, paragraph 27).
33 However, if a mark consisting of a neologism or of a word produced by a combination of elements is to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so (judgment of 12 January 2005, Wieland-Werke v OHIM (SnTEM, SnPUR, SnMIX), T‑367/02 to T‑369/02, EU:T:2005:3, paragraph 31; see also, by analogy, judgments of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 96; and of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 37).
34 A trade mark consisting of a neologism or a word 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 No 207/2009, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that regard, an analysis of the term in question from the point of view of the relevant lexical and grammatical rules is also relevant (judgment of 12 January 2005, SnTEM, SnPUR, SnMIX, T‑367/02 to T‑369/02, EU:T:2005:3, paragraph 32; see also, by analogy, judgments of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 104, and of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 43).
35 In the present case, the applicant does not dispute the Board of Appeal’s findings that the goods and services referred to by the mark sought are intended for end consumers and trade professionals, nor that it is appropriate to take into consideration the German-speaking public in Germany and Austria, since the mark sought is made up of German words. As those findings are not vitiated by any error, they must be taken into account.
36 However, the applicant does dispute the Board of Appeal’s findings as to the significance of the mark sought and its descriptive character. The applicant adds that the Board of Appeal ought to have taken account of the earlier registrations of the word sign Brauwelt of which it is the proprietor and other registrations and decisions relating to signs which are identical or similar.
– The significance of the mark sought
37 In the first place, as regards the element ‘brau’, the applicant submits that, contrary to what was held in the examiner’s decision, the Duden online dictionary does not establish that that element is a word formation element; nor is that element found as such in other reference works. Similarly, the only results gleaned from searches on German-language internet search engines concern the word ‘brau’, the surname Brau or the use of the element ‘brau’ as a trade mark or name.
38 In any event, the applicant submits that even if the element ‘brau’ is in fact a word formation element, on its own, it is isolated, weak and lacking in specific significance, since the interpretation according to which it refers to brewing activity in general is overly vague.
39 In paragraph 13 of the decision appealed against, the Board of Appeal found that the element ‘brau’ was a word formation element which, in word associations, referred to brewing activity. In support of that finding, it provided a number of examples of composite words containing the element ‘brau’, taken from the list of the goods covered by the mark sought, evidence adduced by the applicant before it and the Duden online dictionary.
40 Those examples do in fact show that, when faced with the presence of the element ‘brau’ used in a composite word, the relevant public will construe it as referring to brewing activity, which implies that the Board of Appeal’s assessment is correct.
41 That conclusion is not affected by the applicant’s arguments. First of all, although the applicant submits that the element ‘brau’ is not found as such in reference works, contrary to what the examiner found, it does not dispute per se the existence and interpretation of the composite words referred to by the Board of Appeal. Furthermore, the elements put forward by the applicant concerning the results of searches on German-language internet search engines concern the use of the element ‘brau’ alone, rather than in a composite word, such as the term ‘brauwelt’ at issue in the present case.
42 Second, contrary to the applicant’s assertions, the Board of Appeal’s interpretation of the element ‘brau’ has a specific semantic content, as brewing is a specific sphere of human activity.
43 In the light of the foregoing, the Board of Appeal’s assessment of the significance of the element ‘brau’ must be upheld.
44 In the second place, the applicant submits that the element ‘welt’ is not synonymous with sales location. Similarly, and contrary to what the examiner found, the element ‘welt’ does not refer to a brewing location, as Brauwelt is not a place.
45 The Board of Appeal found, in paragraph 14 of the decision appealed against, that the word element ‘welt’ referred literally to a sphere or self-contained environment and that it was often used to refer to sales locations having a wide assortment or range of goods and services available in a specific field, as connoted by the corresponding term in English, ‘world’.
46 Whilst the Board of Appeal based its finding that the term ‘welt’ was commonly used to refer to a sales location on references to decisions of the General Court and EUIPO, the applicant, by contrast, did not put forward any argument or specific evidence whatsoever in support of its contentions.
47 Moreover, the applicant’s argument that the relevant public will not construe the element ‘welt’ as referring to a brewing location is ineffective, as the Board of Appeal did not incorporate the examiner’s finding to that effect in its decision.
48 In those circumstances, the Board of Appeal’s assessment of the significance of the element ‘welt’ must be upheld.
49 In the third place, regarding the overall significance of the mark sought, the applicant argues that the Board of Appeal’s assessment on this point was insufficient. It reiterates its line of argument regarding the fact that the element ‘brau’, read alone, lacks specific semantic content, with the result that, in German, it will always have to be accompanied by another element refining its meaning. Since the element ‘welt’ has no specific significance in the context of brewing either, the expression ‘brauwelt’ is a completely indeterminate term, unusual and original term. The significances endorsed by the Board of Appeal are extremely vague.
50 In paragraph 15 of the decision appealed against, the Board of Appeal stated that the expression ‘brauwelt’, considered as a whole, meant ‘brewers’ world’ or ‘world of brewing’ and referred to a sales location or a wide-ranging offer of goods and services linked to brewing activity.
51 Thus, contrary to the applicant’s assertions, the Board of Appeal did examine the overall significance of the mark sought. Nor is its examination vitiated by any error of assessment or called into question by any of the applicant’s arguments.
52 It should be noted that the mark sought consists in a simple juxtaposition, in accordance with German rules of syntax and grammar, of two elements, each of which has a specific semantic content; the lack of reference to the expression ‘brauwelt’ in reference works is irrelevant in that regard (see, to that effect and by analogy, judgment of 12 January 2000, DKV v OHIM (COMPANYLINE), T‑19/99, EU:T:2000:4, paragraph 26).
53 Moreover, the combination of those two elements does not amount to more than the sum of its parts and is a neologism having a given overall significance, conveying the idea of a wide business offering linked to the field of brewing.
54 In those circumstances, the Board of Appeal’s finding concerning the overall significance of the mark sought must be upheld.
– The link between the mark sought and the goods and services covered
55 The applicant submits that the mark sought is not descriptive of the goods and services covered.
56 EUIPO contests the merits of the applicant’s arguments.
57 As a preliminary point, the applicant submits that the element ‘brau’ does not refer to a good, a service, or a characteristic of either one. As for the element ‘welt’, in the sense of a ‘sales location’ or ‘range of goods on offer’, it is not capable of describing the goods and services covered, particularly not business services in Class 35, especially since the element ‘brau’ does not identify the specific good or service being offered. In those circumstances, according to the applicant, the mark sought is too vague for there to be a sufficiently direct or specific link, as required by Article 7(1)(c) of Regulation No 207/2009.
58 That preliminary argument cannot be accepted. As evidenced by the discussion in paragraphs 37 to 54 above, viewed from an overall perspective, the mark sought refers to a sales location or a wide-ranging offer of goods and services related to brewing activity. Therefore, as the Board of Appeal found, in essence, in paragraphs 15 and 21 of the decision appealed against, from a general point of view, the mark sought is liable to convey an indication about the thematic subject matter of a good or service, its nature and its place of sale or performance.
59 As to the question whether such indications are actually descriptive of the goods and services covered in the present case by the mark sought, the applicant puts forward a series of arguments.
60 First, it submits that, contrary to what the Board of Appeal found, there is no ‘world of brewing’ in the sense of a thematic subject matter of the goods in Classes 9 and 16. It adds that the data and data carriers, in Class 9 and, by extension, the goods in Class 16 are not generally referred to by their content.
61 The Board of Appeal found, in paragraph 16 of the decision appealed against, that the mark sought referred to the thematic subject matter, being ‘the world of brewing’, of the ‘computer programs’ and ‘data carriers’, in Class 9, and also of ‘brochures’, ‘magazines’, ‘catalogues’ and ‘books’, in Class 16.
62 That assessment is correct, given that, contrary to the applicant’s assertions, the subject matter of the goods and services in Classes 9 and 16 may be brewing activity. In particular, contrary to the applicant’s assertions, when the mark sought is affixed to ‘data carriers’, by its nature it informs the relevant public immediately of an essential characteristic of those goods, namely their thematic subject matter (see, by analogy, judgment of 17 September 2008, Prana Haus v OHIM (PRANAHAUS), T‑226/07, not published, EU:T:2008:381, paragraph 33). Moreover, frequently the title of a book, catalogue or brochure and the name of magazines refer to the thematic content of those publications, and both consumers and professionals will choose to consult publications mainly on the basis of their content or subject matter (see, to that effect, judgment of 23 September 2015, Reed Exhibitions v OHIM (INFOSECURITY), T‑633/13, not published, EU:T:2015:674, paragraph 54).
63 Secondly, regarding goods in Class 32 and services in Class 43, the applicant submits that, contrary to what the examiner found, the mark sought is not liable to be perceived as referring to the brewing location, given brewers’ uses of trade marks.
64 In paragraph 17 of the decision appealed against, the Board of Appeal found that the mark sought was understood by the relevant public as referring to a place of sale or performance in which beer and malt extracts in Class 32 or restaurant services in Class 43 were on offer.
65 That assessment is not vitiated by any error. Nor is it based on an interpretation to the effect that the mark sought refers to the beer’s brewing location, with the result that the argument set out in paragraph 63 above is ineffective.
66 Thirdly, regarding the services in Class 35, the applicant submits that the Board of Appeal, first of all, acknowledges that it is not common to refer to them according to their thematic focus and, second, nevertheless argues that the relevant public will perceive the mark sought as an indication of the theme of the fair or exhibition being organised. It submits that, in reality, trade marks for fairs are often allusive and not very distinctive, without thereby being descriptive.
67 The Board of Appeal found, in paragraph 18 of the decision appealed against, that the mark sought referred to the theme of the services at issue, being the fact that the fairs or exhibitions related to the field of brewing and that the marketing services were intended specifically for breweries. It added that, even if perhaps it was not common to refer to the services in question by their thematic subject matter, the relevant public was capable of understanding that reference directly when faced with the mark sought.
68 Those findings are not contradictory, contrary to what the applicant suggests. As is apparent from paragraph 67 above, the Board of Appeal did not state categorically that it was unusual to refer to the services in Class 35 by their thematic subject matter; it merely acknowledged that this was a possibility, before going on to state that it had no bearing on the relevant public’s perception.
69 The Board of Appeal’s assessment is, moreover, correct. Although it is of course possible that the marks referring to specialised fairs and exhibitions are often allusive without being descriptive, that is not so in the case of the mark sought, which informs the relevant public straightforwardly that the fair or exhibition concerns the field of brewing. As to the marketing services, the applicant does not dispute the finding — unvitiated by any error — to the effect that they may refer specifically to breweries, so that the relevant public is liable to perceive the mark sought as referring to their subject matter.
70 Fourthly, regarding the services in Classes 38 and 42, the applicant submits that they are of a technical nature, so that the mark sought is not descriptive of them but, on the contrary, is quite original, adding that the Board of Appeal confused the name of an internet portal with the technical services offered to third parties for the operation of that type of portal, covered by the mark sought.
71 The Board of Appeal found, in paragraph 19 of the decision appealed against, that the services in Classes 38 and 42 formed three groups relating to the provision of portals, providing access to information, computer programs and databases and the corresponding programming services. It found that the mark sought referred to the fact that the services in question were intended for portals having brewing as their subject matter or concerned access to brewing-related information.
72 That assessment is correct, as the mark sought is in fact liable to be perceived by the relevant public as referring to the theme of portals or information relating to the services in question. Moreover, the reasons stated by the Board of Appeal do not indicate that, in its assessment, it confused the technical services necessary for the operation of an internet portal having brewing as its subject matter with the name of the portal itself.
73 Fifthly, regarding the services in Class 41, the applicant disputes the descriptive character of the mark sought with regards to ‘sporting activities’ and ‘the organisation and running of recreational musical events’.
74 Regarding ‘sporting activities’, the Board of Appeal was correct in finding, in paragraph 20 of the decision appealed against, that brewing was steeped in tradition and was of cultural importance in Germany and Austria, giving rise to numerous celebrations comprising sporting aspects, such as beer barrel rolling contests.
75 It is true, as essentially pointed out by the applicant, that the activities in question are not very widespread sporting disciplines and do include a significant entertainment component. However, the concept of sporting activity is not in any way incompatible with the idea of entertainment. Furthermore, the activities in question are competitive in nature and call for a physical effort on the part of the participants, with the result that the Board of Appeal made no error of assessment in categorising them as ‘sporting activities’.
76 As regards ‘the organisation and running of recreational musical events’, contrary to the applicant’s assertions — who fails to substantiate its assertion with any specific arguments — the Board of Appeal was correct in finding, in paragraph 20 of the decision appealed against, that the events in question could be related to the world of brewing, with the result that the mark sought was liable to be perceived by the relevant public as referring to that characteristic.
– Consideration of earlier registrations and decisions
77 The applicant submits that the Board of Appeal failed to take account of earlier registrations of the word sign Brauwelt of which it is the proprietor. It observes that, in so far as those registrations prevent third parties from using that sign, the requirement to maintain availability, underlying the absolute grounds for refusal provided for in Article 7(1)(c) of Regulation No 207/2009, is not applicable in the present case.
78 The applicant further observes that it is apparent from the Second Board of Appeal’s decision of 22 November 2005 (Case R 137/2005-2) that the sign ‘Brauwelt’ is not descriptive of the services in Classes 35, 41 and 42 which are identical or similar to those at issue in the present case.
79 Lastly, the applicant relies on numerous registrations of signs which are identical or similar to the mark sought on which it relied before the Board of Appeal.
80 EUIPO contests the merits of the applicant’s arguments.
81 The Court of Justice has held that, in the light of the principles of equal treatment and sound administration, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 and 74).
82 Nonetheless, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, the person who seeks registration of a sign as an EU trade mark cannot rely, to his own benefit, on any unlawful act committed in the past in order to obtain an identical decision. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 to 77).
83 In those circumstances, given the outcome of the examination set out in paragraphs 28 to 76 above to the effect that the Board of Appeal was correct in finding that the mark sought was descriptive of all the goods and services covered for the purposes of Article 7(1)(c) of Regulation No 207/2009, the applicant cannot rely on the earlier registrations and decisions to which it has referred.
84 In the light of all the foregoing, the complaint directed at the lack of descriptive character of the mark sought in the light of the goods and services covered must be rejected.
Infringement of the applicant’s right to be heard
85 The applicant submits that the Board of Appeal infringed its right to be heard in referring for the first time in the decision appealed against to the fact that ‘brau’ was a word formation element and that the barrel rolling contest was an example of a sporting activity linked to the world of brewing.
86 According to the second sentence of Article 75 of Regulation No 207/2009, which lays down the general principle of protection of the rights of the defence in trade mark law, including the right to be heard, decisions of EUIPO can be based only on grounds on which the parties have been able to state their position.
87 In the present case, regarding the applicant’s first argument, although the examiner did not explicitly refer to the fact that the word ‘brau’ was a word formation element, it nevertheless considered that the relevant public would understand the significance of that element inasmuch as it was familiar with words and expressions containing it. The examiner thus did in fact refer to the function of the element ‘brau’ as a word formation element and the applicant was in a position to be able to understand that argument, given that it disputed both its merits and its relevance before the Board of Appeal.
88 Regarding the second argument, although it is true that the examiner did not refer to the barrel rolling contest in its decision, as observed by EUIPO, the Board of Appeal’s reference to it was merely by way of example in order to illustrate the general finding that the mark sought could be perceived as referring to the fact that the ‘sporting activities’ in Class 41 were linked to brewing and were therefore descriptive of those services for the purposes of Article 7(1)(c) of Regulation No 207/2009. As that finding was taken from the examiner’s decision, there are no grounds for holding that this part of the decision appealed against is based on a ground on which the applicant had no opportunity to state its position.
89 In those circumstances, the plea alleging infringement of the applicant’s right to be heard must be rejected.
90 In the light of all the foregoing the first plea must be rejected.
The second plea: infringement of Article 7(1)(b) of Regulation No 207/2009
91 The applicant criticises the Board of Appeal for having inferred from the descriptive character of the mark sought that it lacked distinctive character, without having conducted a separate examination of the application of Article 7(1)(b) of Regulation No 207/2009 and without having given a statement of reasons for the application of that provision in the light of the various goods and services covered by the mark sought in isolation.
92 It must be borne in mind that, according to settled case-law, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) of that regulation (see judgments of 8 July 2004, Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS), T‑289/02, EU:T:2004:227, paragraph 24 and the case-law cited, and 1 February 2013, Ferrari v OHIM (PERLE’), T‑104/11, not published, EU:T:2013:51, paragraph 32 and the case-law cited).
93 As the Board of Appeal found, correctly, that the mark BRAUWELT was descriptive of the goods and services in question within the meaning of Article 7(1)(c) of Regulation No 207/2009, it could infer, on the basis of that case-law, that registration also had to be refused on the basis of Article 7(1)(b) of that same regulation, without its being necessary to provide a fuller statement of reasons on the point.
94 Accordingly, the second plea in law must be rejected as unfounded.
The third plea: infringement of Article 7(3) of Regulation No 207/2009, read in conjunction with Article 75 of that regulation
95 First, the applicant submits that the Board of Appeal infringed its right to be heard, enshrined in Article 75 of Regulation No 207/2009, in not giving it the opportunity to make submissions on the Board’s finding that it had submitted insufficient evidence to establish that distinctive character had been acquired through use for the purposes of Article 7(3) of Regulation No 207/2009.
96 Secondly, the Board of Appeal failed to explain, to the requisite legal standard, its refusal to apply Article 7(3) of Regulation No 207/2009 in respect of specialised magazines, seminars, information services, technical services and the other goods and services not referred to in the decision appealed against.
97 Thirdly, the Board of Appeal infringed Article 7(3) of Regulation No 207/2009 in finding that the acquisition of distinctive character for specialised magazines, exhibition catalogues, organisation of trade fairs and beer had not been established.
98 In that connection, should its principal claim not be upheld, the applicant further submits in the alternative that it seeks registration of the mark sought on the basis of acquisition of distinctive character through use for the ‘specialised magazines in the field of brewing’ and that it withdraws its trade mark application for those goods and services in respect of which the sign Brauwelt is not eligible for protection.
99 EUIPO contests the merits of the applicant’s arguments.
100 Before addressing the applicant’s three complaints, it is appropriate to examine first the purpose of the dispute as regards the application of Article 7(3) of Regulation No 207/2009, in the light of the procedure before the Board of Appeal and the applicant’s statements summarised in paragraph 98 above.
The subject matter of the dispute
101 In the first place, as regards the scope of the claim of acquisition of distinctive character through use and, therefore, the subject matter of the third plea, it should be noted that, in the introductory part of Part V of the statement setting out the grounds of the appeal before the Board of Appeal, the applicant referred summarily to the acquisition of distinctive character by the mark sought as such.
102 Nonetheless, the applicant then explicitly claimed distinctive character solely with regard to specialised magazines, information services, seminars and books. It also pointed to ‘extensive use’ of the mark sought in respect of exhibition catalogues, organisation of trade fairs and exhibitions, beer and the use of brewing-related internet sites. It did submit that, by virtue of that use, the mark sought had become ‘known’, but did not explicitly categorise the legal consequences to be inferred from that knowledge.
103 In paragraph 7 of the decision appealed against, the Board of Appeal stated that the distinctive character acquired through use had been claimed for specialised magazines, information services, seminars and books. Moreover, notwithstanding the lack of express claim, it also evaluated the acquisition of distinctive character through use with regards to exhibition catalogues, organisation of trade fairs and exhibitions and beer.
104 In those circumstances, it is necessary only to examine the applicant’s complaints directed at the third plea with regards to the goods and services corresponding to the categories referred to in paragraph 103 above. The application of Article 7(3) of Regulation No 207/2009 in respect of those goods and services that were not covered by an explicit or implicit claim of distinctive character acquired through use was not part of the subject matter of the proceedings before the Board of Appeal and, therefore, of the decision appealed against.
105 In particular, contrary to the applicant’s assertions, the subject matter of the third plea in the dispute does not include technical services in the field of telecommunications and IT in Classes 38 and 42. Not only have those services not been the subject of a specific claim of distinctive character acquired through use, nor do the arguments and evidence proffered by the applicant before the Board of Appeal refer to an implicit claim, given that inter alia the only aspect in any way related to telecommunications and IT, namely the operation of internet sites by the applicant, forms part of providing information services and not technical services.
106 In the second place, it is apparent from the statement setting out the grounds of appeal before the Board of Appeal that the applicant claimed and intended to prove distinctive character acquired through use for the subcategory of ‘specialised magazines’, rather than for the broader category of magazines, included in the list of goods and services covered by the mark sought.
107 It must be borne in mind in that regard that, under Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal set out in Article 7(1)(b) to (d) of that regulation do not preclude registration of a trade mark if the trade mark has become distinctive in relation to the goods or services for which registration is requested.
108 Consequently, in principle, acquisition of distinctive character through use must be proven for the entire category of goods or services covered by the relevant ground of refusal, as enumerated in the list of goods and services covered by the mark sought, and not in relation to a subcategory.
109 The foregoing rule is without prejudice to Article 43(1) of Regulation No 207/2009, under which a trade mark applicant may at any time withdraw its application for an EU trade mark or restrict the list of goods or services included.
110 In the present case, whilst the applicant explicitly claimed distinctive character acquired through use for the subcategory ‘specialised magazines’, there is nothing in the case file before this Court, including the statement of grounds setting out the grounds of the appeal before the Board of Appeal, indicating that by that same gesture it was likewise restricting the category ‘magazines’ included in the list of goods and services covered by the mark sought.
111 Consequently, the Board of Appeal was correct in finding in paragraph 27 of the decision appealed against that distinctive character acquired through use had to be proven for the category ‘magazines’.
112 In the third place, regarding the restriction, put forward in the alternative, of the category ‘magazines’ to ‘specialised magazines in the field of brewing’ and the conditional withdrawal of the trade mark application for those goods and services in respect of which the sign Brauwelt is not eligible for protection, put forward by the applicant before the Court, it should be noted that, on their wording, those statements form part of the third head of claim. As that head of claim is inadmissible for the reasons set out in paragraphs 11 to 14 above, those claims have become moot.
113 In any event, even if the restriction of the category ‘magazines’ is part of the first head of claim, it must be borne in mind that a restriction in accordance with Article 43(1) of Regulation No 207/2009 effected subsequently to the adoption of the decision appealed against may be taken into consideration by the Court where the applicant for the trade mark confines itself strictly to reducing the subject matter of the dispute by withdrawing certain categories of goods or services from the list of goods and services covered in the trade mark application. Where, on the other hand, that restriction leads to a change in the subject matter of the dispute, in that it results in the introduction of new elements which had not been submitted for examination by the Board of Appeal for the purposes of the adoption of the decision appealed against, it may not, in principle, be taken into account by the Court. Such is the case inter alia where the restriction of the goods and services consists in specifications capable of influencing the determination of the target public and of changing, consequently, the factual context presented before the Board of Appeal (see, to that effect, judgment of 27 February 2008, Citigroup v OHIM — Link Interchange Network (WORLDLINK), T‑325/04, not published, EU:T:2008:51, paragraphs 26 and 27).
114 In the present case, the restriction effected by the applicant consists in the specification of the category ‘magazines’ through the addition of the clarification ‘specialised in the field of brewing’. That specification influences the definition of the relevant public, as it tends to exclude the general public from that field, thereby changing the facts as presented before the Board of Appeal. It may not, therefore, be taken into consideration by the Court.
115 As to the conditional withdrawal of the trade mark application for the other categories of goods and services, the viability of that request is explicitly contingent on the outcome of the appraisal of the merits of the action, so that it does not affect the scope of the dispute before the Court. Accordingly, it cannot be taken into account by the Court.
Infringement of the applicant’s right to be heard
116 The applicant submits that, in so far as distinctive character acquired through use under Article 7(3) of Regulation No 207/2009 may be relied on for the first time before the Board of Appeal, the stage at which it claimed the benefit of that provision cannot work against it. The applicant accordingly takes the view that the Board of Appeal ought to have either extended it to the alleged insufficiency of the evidence submitted or referred the case back to the examiner for a ruling on the evidence at first instance. In ruling directly on the application of Article 7(3) of Regulation No 207/2009, the Board of Appeal thus infringed the applicant’s right to be heard enshrined in Article 75 of that regulation, thereby depriving it of the benefit of an instance.
117 EUIPO contests the merits of the applicant’s arguments.
118 In the first place, regarding the question whether the Board of Appeal was required to refer the case back to the examiner, it is true that there is no provision of Regulation No 207/2009 precluding distinctive character of the mark sought acquired through use for the purposes of Article 7(3) of that regulation from being claimed for the first time before the Board of Appeal, in reaction to the examiner’s decision that the mark in question is intrinsically covered by one of the absolute grounds of refusal laid down in Article 7(1)(b) to (d) of that regulation.
119 Nevertheless, under Article 64(1) of Regulation No 207/2009, following the examination as to the merits of the appeal, the Board of Appeal is to decide on the appeal and may, in doing so, exercise any power within the competence of the department which was responsible for the decision appealed against. It follows from that provision that, through the effect of the appeal against an examiner’s decision refusing registration, the Board of Appeal may carry out a new, full examination of the merits of the application for registration, in terms of both law and fact (judgment of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 21). Consequently, the Board of Appeal has jurisdiction inter alia to rule on a claim of distinctive character of the mark sought acquired through use for the purposes of Article 7(3) of Regulation No 207/2009.
120 The Board of Appeal does not lose that jurisdiction merely because the trade mark applicant has opted to claim distinctive character acquired through use for the first time at the stage of appeal proceedings. In such a case, the loss of an instance, criticised in the present case by the applicant, arises solely because of the trade mark applicant’s own conduct, not because of any infringement of its procedural rights due to the actions of EUIPO departments.
121 Consequently, the conclusion is that the Board of Appeal was not required to refer the case back before the examiner.
122 In the second place, regarding the question whether the Board of Appeal had to hear the applicant’s arguments concerning the insufficient evidence adduced by it, it was observed in paragraph 86 above that the second sentence of Article 75 of Regulation No 207/2009 lays down, for trade mark law, the general principle of protection of the rights of the defence, including the right to be heard.
123 However, that right does not require that, before taking a final position on the assessment of the evidence submitted by a party, the Board of Appeal of EUIPO must offer that party a further opportunity to comment on that evidence (see judgment of 19 January 2012, OHIM v Nike International, C‑53/11 P, EU:C:2012:27, paragraph 53 and the case-law cited).
124 Therefore, the Board of Appeal was not required either to inform the applicant that it considered the arguments and evidence presented by it to be insufficient, or to offer it an opportunity to submit fresh observations and adduce further evidence.
125 The applicant is, moreover, incorrect in submitting that the Board of Appeal was required to hear its views beforehand if it intended to include a new ground of refusal under Article 7(3) of Regulation No 207/2009 in the decision appealed against. That provision, the application of which must be claimed by the trade mark applicant, is not an absolute ground of refusal but, on the contrary, an exception to those grounds set out in Article 7(1)(b) to (d) of that regulation.
126 In the light of the foregoing, the plea alleging infringement of the applicant’s right to be heard must be rejected.
Infringement of the obligation to state reasons
127 First, given the findings in paragraphs 101 to 105 above regarding the scope of the claim of acquisition of distinctive character through use, it is not necessary to examine the complaint alleging infringement of the obligation to state reasons in respect of goods and services other than those corresponding to the categories referred to in paragraph 103 above, including as regards technical services.
128 Secondly, contrary to the applicant’s assertions, in paragraphs 26 to 28 of the decision appealed against, the Board of Appeal examined the use of the mark sought for the specialised magazine Brauwelt, as evidenced by the evidence adduced on that point, including that magazine’s sales figures. Consequently, the conclusion is that the Board of Appeal did not infringe the obligation to state reasons in respect of the category ‘magazines’.
129 Thirdly, in the statement of grounds setting out the grounds of the appeal before the Board of Appeal, the applicant submits that, in so far as the magazines served to convey information in various fields, acquisition of distinctive character through use in the light of the ‘magazines’ also extended to information services, books and seminars. That assertion by the applicant was reproduced in the summary of its arguments, set out in paragraph 7 of the decision appealed against. In those circumstances, the reasons given by the Board of Appeal in paragraphs 26 to 28 of the decision appealed against as regards the category ‘magazines’ is applicable, implicitly but necessarily, to information services, books and seminars, especially because paragraph 27 of the decision appealed against refers not only to the goods but also to the services covered.
130 It is true that the applicant substantiated the claim of acquisition of distinctive character in respect of information services, books and seminars through additional evidence, consisting in the affidavit from M. S. (‘the affidavit’) concerning inter alia the publication of books and the operation of internet sites dedicated to the field of brewing, and also a promotional prospectus for a seminar on the same field organised by it (‘the prospectus’).
131 That being so, the affidavit and the prospectus are relied on as evidence adduced by the applicant in paragraph 6 of the decision appealed against, which implies that they were taken into account by the Board of Appeal in its assessment. In those circumstances, the conclusion is that the reasons given by the Board of Appeal in paragraphs 26 to 28 of the decision appealed against also apply to the evidence intended to establish acquisition of distinctive character through use for information services, books and seminars.
132 Consequently, the complaint alleging breach of the obligation to state reasons must be rejected.
Proof of acquisition of distinctive character through use
133 Article 7(3) of Regulation No 207/2009 provides that the absolute grounds for refusal referred to in Article 7(1)(b) to (d) thereof do not preclude the registration of a trade mark if it has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
134 It is apparent from the case-law that the acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the goods or services concerned as originating from a particular undertaking because of the mark (see judgment of 29 April 2004, Eurocermex v OHIM (Shape of a bottle of beer), T‑399/02, EU:T:2004:120, paragraph 42 and the case-law cited).
135 In the present case, in order to substantiate the claim of acquisition of distinctive character through use, the applicant submitted the following evidence to the Board of Appeal:
– a corporate-led survey conducted on 200 professionals in the German and Austrian brewery sectors (‘the survey’);
– the affidavit;
– an article about the magazine Brauwelt, taken from the online encyclopedia ‘Wikipedia’;
– a copy of the magazine Brauwelt;
– extracts from publications about the ‘drinktec’ exhibition;
– photos of an exhibition stand;
– the final report of the ‘drinktec’ exhibition and an extract from the internet site of the ‘BrauBeviale’ exhibition;
– a promotional prospectus for a seminar on brewing;
– beer bottle labels.
136 In paragraphs 26 to 29 of the decision appealed against, the Board of Appeal found that that evidence was insufficient to prove that the mark sought had acquired distinctive character through use in respect of goods and services for which such distinctive character had been claimed.
137 In the first place, in order to dispute that assessment, the applicant claims acquisition of distinctive character through use of the mark sought for the magazine Brauwelt, as established by the survey, the affidavit, the article taken from the online encyclopedia ‘Wikipedia’ and the copy of that magazine.
138 It was held in paragraph 111 above that the Board of Appeal was correct in finding that distinctive character acquired through use had to be proven for the category ‘magazines’. In so far as that category of goods is directed at both professionals and the general public, the relevant public in relation to whom proof of acquisition of distinctive character had to be provided includes both those groups of consumers, as found by the Board of Appeal in paragraph 27 of the decision appealed against.
139 Moreover, as correctly observed by the Board of Appeal, in so far as the magazine Brauwelt published by the applicant is a specialised magazine, the evidence adduced by the applicant demonstrates only use and perception of the mark sought by a professional public — a point, moreover, not disputed by the applicant.
140 In the second place, in so far as the applicant claims acquisition of distinctive character for information services, seminars and books on the basis of use of the mark sought for specialised magazines, the reasons given by the Board of Appeal in paragraphs 26 to 28 of the decision appealed against and referred to in paragraphs 138 and 139 above, to the effect that that use has been established only with respect to part of the relevant public, are also applicable. Like the magazines, the three aforementioned categories of goods and services are capable of being directed at a specialised public and the general public.
141 The same consideration holds true for the other evidence adduced by the applicant relating to the three relevant categories of goods and services. First of all, even if the statements about the operation of internet sites in the affidavit concern the category of information services, they do not establish that the sites in question are visited or known to a significant proportion of the general public. Next, it is apparent from the information in the promotional prospectus that the seminar organised by the applicant was intended for a specialised public, including operators of small and medium-sized breweries. Lastly, as evidenced by the affidavit, the books published by the applicant under the mark sought are specialised books and, therefore, not intended for the general public.
142 In the third place, regarding the exhibition catalogues and organisation of trade fairs and exhibitions, the applicant disputes the Board of Appeal’s refusal to take account of the affidavit, which states that it publishes the catalogue of the ‘BrauBeviale’ and ‘drinktec’ exhibitions, the extracts of two publications about the ‘drinktec’ exhibition and the photos of an exhibition stand in order to recognise acquisition of distinctive character through use of the mark sought.
143 In that regard, first of all it should be noted that the affidavit originates from a person who is linked professionally to the applicant, with the result that, on its own, it is not sufficient proof of acquisition through use of distinctive character of the mark sought (see, by analogy, judgment of 15 December 2005, BIC v OHIM (Shape of a lighter), T‑262/04, EU:T:2005:463, paragraph 79). Moreover, since the other evidence adduced by the applicant is unrelated to the ‘BrauBeviale’ exhibition, the applicant’s alleged publication of catalogues for that exhibition cannot be taken into consideration.
144 Next, regarding the publications about the ‘drinktec’ exhibition, the applicant criticises the Board of Appeal’s finding that the reference to ‘in cooperation’, on their flyleaf, does not identify the link between it and the organiser of that exhibition. Moreover, contrary to the applicant’s assertions, there are no grounds for finding that the relevant public will interpret that reference as meaning that the applicant has been associated with the organisation of the exhibition in question and the publication of its catalogue, given that the extracts presented do not contain any statement to that effect. On the contrary, the publication’s legal notices about the ‘drinktec 2013’ exhibition clearly show that it is a special supplement to the magazine Brauwelt, published by the applicant on the occasion of that exhibition. Thus, the publications about the ‘drinktec’ exhibition do not show that the applicant is in charge of the organisation of the exhibition or that it published and distributed a catalogue, independent of that magazine, on that occasion.
145 Lastly, contrary to the applicant’s assertions, the Board of Appeal was correct in finding that the photos of an exhibition stand produced by the applicant do not prove use of the mark sought for the exhibition catalogues and organisation of trade fairs and exhibitions, but, at the most, for specialised magazines and specialised publishing services. The stand in question does not show anything establishing that it belongs to the organiser of the exhibition or that it serves to distribute the organiser’s catalogues. The exhibitor is, however, clearly identified as a ‘specialised publisher’ and the stand includes space dedicated to ‘subscription services’.
146 In the fourth place, as regards beer, the applicant disputes the Board of Appeal’s finding that the beer bottle labels produced by it suggest that they were promotional gifts and that, in any event, the sales figures achieved through beer sales were not proven. The applicant takes the view that the labels in question prove that it has been present on the market for 150 years, with the result that it is quite well known. It adds that beer sales are not necessary to prove distinctive character acquired through use for that good.
147 It is apparent from the affidavit provided by the applicant itself that the beer in question was brewed on two occasions, in a total quantity of 1 350 bottles, so that it could be offered to clients on the occasion of the 150th anniversary of the magazine Brauwelt. Yet, as found by the Board of Appeal, such use of the mark sought comes within promotion activities for that magazine rather than use as part of beer marketing and is, in any event, insufficient to prove that the mark sought has acquired distinctive character for that good among a significant proportion of the relevant public.
148 Given the foregoing, the Board of Appeal was correct in finding that the applicant had not proven acquisition of distinctive character by the mark sought for the purposes of Article 7(3) of Regulation No 207/2009.
149 Consequently, the third plea must be rejected and the action must be dismissed in its entirety.
Costs
150 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. As the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Raimund Schmitt Verpachtungsgesellschaft mbH & Co. KG to pay the costs.
Kanninen | Pelikánová | Buttigieg |
Delivered in open court in Luxembourg on 18 October 2016.
[Signatures]
Table of contents
Background to the dispute
Forms of order sought
Law
1. Admissibility of the second and third heads of claim
2. The evidence adduced for the first time before the Court
3. Substance
The first plea: infringement of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 75 of that regulation
Infringement of the obligation to state reasons
The descriptive character of the mark sought in the light of the goods and services covered
– The significance of the mark sought
– The link between the mark sought and the goods and services covered
– Consideration of earlier registrations and decisions
Infringement of the applicant’s right to be heard
The second plea: infringement of Article 7(1)(b) of Regulation No 207/2009
The third plea: infringement of Article 7(3) of Regulation No 207/2009, read in conjunction with Article 75 of that regulation
The subject matter of the dispute
Infringement of the applicant’s right to be heard
Infringement of the obligation to state reasons
Proof of acquisition of distinctive character through use
Costs