JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
5 October 2022 (*)
(EU trade mark – Application for EU word mark TOGETHER. FORWARD. – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑500/21,
Philip Morris Products SA, established in Neuchâtel (Switzerland), represented by L. Alonso Domingo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez, M. Eberl and D. Hanf, acting as Agents,
defendant,
THE GENERAL COURT (Tenth Chamber),
composed, at the time of the deliberations, of A. Kornezov, President, K. Kowalik-Bańczyk (Rapporteur) and G. Hesse, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 9 June 2022,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Philip Morris Products SA, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2021 (Case R 417/2021-5) (‘the contested decision’).
Background to the dispute
2 On 12 August 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign TOGETHER. FORWARD.
3 The mark applied for designated goods in Class 34 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding to the following description: ‘Wired vaporizer for electronic cigarettes and electronic smoking devices; tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); smokers’ articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches; tobacco sticks, tobacco products for the purpose of being heated, electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; liquid nicotine solutions for use in electronic cigarettes; electronic smoking devices; electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; electronic devices for the inhalation of nicotine-containing aerosol; oral vaporising devices for smokers, tobacco products and tobacco substitutes; smoker’s articles for electronic cigarettes; parts and fittings for the aforesaid products included in class 34; devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks; electronic rechargeable cigarette cases’.
4 By decision of 4 January 2021, the examiner refused registration of the mark applied for on the basis of Article 7(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
5 On 3 March 2021, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. It found, inter alia, that that mark would be understood by the relevant public as a promotional expression and not as an indication of the origin of the goods at issue.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
8 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
9 In support of the action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001. More specifically, the applicant submits that, given its ambiguity and its originality, the mark applied for constitutes a ‘resonant’ slogan capable of indicating the commercial origin of the goods at issue.
10 EUIPO contests the applicant’s arguments.
11 It should be borne in mind that, in accordance with Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered. Pursuant to Article 7(2) of that regulation, the provisions of Article 7(1) are to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
12 For a mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited). That character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public, (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
13 In that regard, in the first place, it should be noted that the applicant does not challenge the definition of the relevant public adopted by the Board of Appeal, according to which the relevant public for the purposes of the perception of the distinctive character of the mark applied for is the English-speaking part of the general public in the European Union.
14 In the second place, it should be borne in mind, as the applicant correctly submits, that, as regards the assessment of the distinctive character of marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, it is not appropriate to apply to them, in accordance with the case-law, stricter criteria than those applicable to other signs (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36 and the case-law cited, and of 25 May 2016, U-R LAB v EUIPO (THE DINING EXPERIENCE), T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 47).
15 However, it is apparent from the case‑law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 37 and the case-law cited, and of 25 May 2016, THE DINING EXPERIENCE, T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 47).
16 It also follows from the case-law that all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, and can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57 and the case-law cited, and of 25 May 2016, THE DINING EXPERIENCE, T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 48).
17 In the present case, it should be noted that the Board of Appeal found, first, that the words ‘together’ and ‘forward’ were common in English and meant respectively, on the one hand, ‘with cooperation and interchange between constituent elements, members, etc.’ or ‘considered collectively or jointly’, and, on the other hand, ‘directed or moving ahead’ or ‘of or relating to the future or favouring change; progressive’. The Board of Appeal inferred from this that the mark applied for would be understood by the relevant public as meaning ‘jointly progressing’. Consequently, it found that that mark would be perceived as an advertising slogan praising the goods at issue.
18 In that regard, first, the applicant does not dispute the fact that the mark applied for will be perceived as an advertising slogan whose purpose is to promote the goods at issue. Nevertheless, it maintains that that mark means ‘Collectively (or Jointly). Moving Ahead.’ and that the relevant public could interpret that meaning in different ways following a ‘mental effort’, like, for example, the word mark Vorsprung durch Technik at issue in the case giving rise to the judgment of 21 January 2010, Audi v OHIM (C‑398/08 P, EU:C:2010:29).
19 However, it should be noted that the applicant does not specify to what extent the fact that the mark applied for would be understood by the relevant public as meaning ‘Collectively. Moving Ahead.’ rather than ‘jointly progressing’ is such as to call into question the Board of Appeal’s assessment of the distinctive character of that mark. Furthermore, in view of the proximity of those two meanings, it cannot be inferred that that mark, which is composed of two common English words, does not convey a simple, clear and unequivocal message.
20 Furthermore, it should also be noted that, contrary to what the applicant suggests, the mark applied for differs from the word mark Vorsprung durch Technik at issue in the case which gave rise to the judgment of 21 January 2010, Audi v OHIM (C‑398/08 P, EU:C:2010:29). In that judgment, the Court of Justice noted that the General Court had held that that mark could constitute a play on words and be perceived as imaginative, surprising or unexpected, which is not the case here. It had also pointed out that that mark showed a certain originality and resonance and that at least a measure of interpretation would be required in order to perceive a possible promotional message.
21 Consequently, it must be held, as the Board of Appeal did, that the meaning of the mark applied for is not such as to confer any particular originality or resonance on it, to require at least some interpretation or to trigger a cognitive process, notwithstanding the fact, relied on by the applicant, that that mark does not contain any verb and that the word ‘together’ is positioned before the word ‘forward’.
22 Nor is that conclusion called into question by the applicant’s claim that an interpretative effort would be required on the part of the relevant public in order to be able to infer from the meaning of ‘Collectively. Moving Ahead.’ that the goods at issue were, specifically, respectful of the health of the consumers of those goods. As EUIPO maintains, in essence, that fact is not such as to call into question the fact that that meaning will, on its own, be perceived without any effort by that public.
23 Second, the applicant maintains that the Board of Appeal has not established that the goods at issue belonged to a category of goods which was sufficiently homogeneous to consider that the mark applied for was not distinctive with regard to all of those goods. It infers from this that the Board of Appeal had not established that the mark applied for was not distinctive with regard, in particular, to the goods ‘raw tobacco, tobacco tins, cigarette cases and ashtrays, pocket apparatus for rolling cigarettes, lighters, matches, devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks, or electronic rechargeable cigarette cases’.
24 In that regard, it should be borne in mind that EUIPO may carry out a global assessment in respect of all the goods or services concerned where the same ground for refusal is given for a category or group of goods or services, provided that those goods and services 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 (see, to that effect, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 30 and 31).
25 In the present case, first, the Board of Appeal found that all the goods at issue were interlinked in a sufficiently direct and specific way with smokers’ articles. It must be held that the goods identified by the applicant do in fact have such a link with those articles.
26 Second, it should be noted that the applicant does not dispute the fact that the mark applied for will be perceived as an advertising slogan by the relevant public, including as regards the goods which it has identified. Furthermore, although the applicant asserts that the relevant public will perceive a different meaning in relation specifically to those goods from the one found in the contested decision, the applicant nevertheless does not state what that other meaning is.
27 In those circumstances, it must be stated that the Board of Appeal was right to find that the mark applied for was not distinctive within the meaning of Article 7(1)(b) of Regulation 2017/1001.
28 It follows that the applicant’s single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
29 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1. Dismisses the action;
2. Orders Philip Morris Products SA to pay the costs.
Kornezov | Kowalik-Bańczyk | Hesse |
Delivered in open court in Luxembourg on 5 October 2022.
E. Coulon | | M. van der Woude |