JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
22 March 2023 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark casa – Absolute ground for invalidity – No distinctive character – Descriptive character – Article 7(1)(b) and (c) of Regulation (EC) No 40/94 (now Article 7(1)(b) and (c) of Regulation (EU) 2017/1001) – No distinctive character acquired through use – Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation 2017/1001))
In Case T‑650/21,
Casa International, established in Olen (Belgium), represented by F. Cornette and T. Poels-Ryckeboer, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Doherty and E. Markakis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Interstyle BV, established in Utrecht (Netherlands), represented by A. Verbeek, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M. J. Costeira, President, P. Zilgalvis (Rapporteur) and E. Tichy-Fisslberger, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 24 November 2022, in which the intervener did not participate,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, Casa International, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 July 2021 (Case R 1280/2020-2) (‘the contested decision’).
Background to the dispute
2 On 22 January 2003, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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)).
3 Registration as a mark was sought for the figurative sign reproduced below, in respect of which the colours green and white were claimed:
4 The goods and services in respect of which registration was sought are in Classes 4, 16, 20, 21, 24 and 35 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 4: ‘Candles, wicks (lighting)’;
– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationery; adhesives for stationery or household purposes; artists’ materials; brushes; typewriters and office requisites (except furniture); plastic materials for packing (not included in other classes); plastic materials for packing (not included in other classes); printing types’;
– Class 20: ‘Furniture, mirrors and picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics’;
– Class 21: ‘Household or kitchen utensils and containers (not of precious metal or coated therewith or silver-plated); combs and sponges; hair for brushes; brush-making materials; materials for cleaning purposes; steelwool; unworked or semiworked glass (except glass used in buildings); articles of glass, porcelain or earthenware not included in other classes’;
– Class 24: ‘Textile fabrics and products not included in other classes; bed blankets; bedding; table covers; curtains; household linens’;
– Class 35: ‘Wholesale and retail trading in furniture, decorative articles, domestic goods and household products’.
5 The trade mark application was published in Community Trade Marks Bulletin No 33/2004 of 16 August 2004. That mark was registered on 13 April 2007 under number 3017662.
6 On 22 March 2019, the intervener, Interstyle BV, filed an application with EUIPO for a declaration that the mark referred to in paragraph 3 above was invalid pursuant to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation, in respect of all the goods and services covered by that mark.
7 By decision of 8 May 2020, the Cancellation Division upheld the application for a declaration of invalidity by annulling the contested mark in its entirety.
8 On 23 June 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
9 By the contested decision, the Board of Appeal dismissed the appeal. In essence, the Board of Appeal found that, for Spanish-, Italian- and Portuguese-speaking consumers, the contested mark was descriptive of the goods and services which it covered and was therefore devoid of distinctive character as regards those goods and services. In particular, it considered that the element ‘casa’ will be immediately perceived by the relevant consumers as indicating the intended purpose and the category of the goods covered by the contested mark, namely that they are goods to be used for the house.
10 As regards distinctive character acquired through use, the Board of Appeal found, in essence, that the applicant did not show that the contested mark had, in respect of the goods and services at issue, acquired distinctive character among the relevant consumers in Spain, Italy and Portugal. It stated that evidence of such character was lacking for those three Member States and in particular for Italy.
Forms of order sought
11 The applicant claims, in essence, that the Court should:
– annul the contested decision;
– order EUIPO and the intervener to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should dismiss the action.
Law
Admissibility of certain annexes to the application and to the intervener’s response
14 EUIPO contends that the printouts of the market survey corresponding to Annexes A.8 to A.12 to the application were submitted for the first time before the Court and are therefore inadmissible. Similarly, it argues that the declarations signed by the applicant’s communications director, included as Annexes A.13 to A.15 to the application, are inadmissible for the same reason.
15 It must be stated that the documents submitted in Annexes A.8 to A.10 to the application, corresponding to printouts of pages from websites containing information relating to the experts behind the market surveys produced by the applicant and to the company which conducted the online surveys, as well as the documents submitted in Annexes A.11 and A.12 corresponding to the questions put to the participants in those surveys, are not in the administrative case file and, therefore, were submitted for the first time before the Court. The same applies as regards Annexes A.13 to A.15 to the application, corresponding to the declarations made by the applicant’s communications director concerning the presence of the mark in Spain, Italy and Portugal.
16 In that regard, it should be borne in mind that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of that regulation, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
17 It is true that the annexes to the application referred to in paragraph 15 above were not submitted during the administrative procedure.
18 However, as regards Annexes A.11 and A.12 to the application, it should be noted, as is apparent from paragraph 111 of the contested decision, that the Board of Appeal consulted the link in the market surveys submitted by the applicant during the administrative procedure in order to access the questionnaires and based its reasoning relating to the market surveys, set out in paragraphs 112 to 116 of the contested decision, on those questionnaires. It follows that those annexes must be regarded as admissible.
19 By contrast, Annexes A.8 to A.10 and A.13 to A.15 to the application are inadmissible in accordance with the case-law cited in paragraph 16 above.
20 Furthermore, it is apparent from the documents before the Court that Annex B.5 to the intervener’s response was also not submitted during the administrative procedure. Since that evidence was submitted for the first time before the Court, it must be declared inadmissible in accordance with the case-law cited in paragraph 16 above.
Certain of the intervener’s requests
21 In its response, the intervener made several requests to the Court that certain findings of the Board of Appeal be reviewed. In particular, it requests, first, in paragraph 8 of its response, that it be established that the relevant public should not be limited to only the Spanish-, Italian- and Portuguese-speaking areas of the European Union. Secondly, in paragraph 50 of its response, the intervener requests that the Court re-assess whether, on the basis of the brochures submitted by the applicant, a link could be established between the contested mark and the services provided, as the Board of Appeal found.
22 In so far as the intervener’s requests should be understood as independent pleas in law under Article 173(3) of the Rules of Procedure of the General Court, they can only be rejected since such pleas are incompatible with the form of order which it is seeking (see judgment of 24 November 2021, Włodarczyk v EUIPO – Ave Investment (dziandruk), T‑434/20, not published, EU:T:2021:815, paragraph 18 and the case-law cited).
23 In its response, the intervener has not sought the annulment or alteration of the contested decision. On the contrary, it contends that the Court should dismiss the action. It follows that the intervener’s requests referred to in paragraph 21 above must be rejected.
Scope of protection of the contested mark
24 The French-language version of the list of goods in Class 16 covered by the contested mark contains, inter alia, the following goods: ‘matériel d’instruction ou d’enseignement (à l’exception des appareils); matières plastiques pour l’emballage (non comprises dans d’autres classes)’ (instructional and teaching materials (except apparatus); plastic materials for packing (not included in other classes)). In the English-language version of that list, as reproduced, inter alia, in paragraph 1 of the original version of the contested decision, the words ‘plastic materials for packing (not included in other classes)’ appear twice, but, by contrast, the equivalent in English of ‘matériel d’instruction ou d’enseignement (à l’exception des appareils)’ (instructional and teaching materials (except apparatus)) does not appear.
25 According to Article 116(3) of Regulation No 40/94 (subsequently Article 120(3) of Regulation No 207/2009, now Article 147(3) of Regulation 2017/1001), ‘in cases of doubt, the text in the language of [EUIPO] in which the application for the [EU] trade mark was filed shall be authentic’.
26 In the present case, as is apparent from the documents before the Court, the application for registration of the contested mark was filed in French. It is therefore the French-language version of the wording of the goods covered by the contested mark which is authentic, as indeed the parties maintained at the hearing in response to a question from the Court. Accordingly, the contested mark was applied for and registered including in respect of ‘instructional and teaching materials (except apparatus)’ in Class 16.
27 For the same reasons, the contested mark was also applied for and registered in respect of ‘printing blocks’ in Class 16. Those goods appear in the French-language version of the list of goods covered by that mark, but do not appear in the English-language version of that list.
Substance
28 In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c) of that regulation (now Article 59(1)(a) of Regulation 2017/1001 and Article 7(1)(b) and (c) of that regulation, respectively), second, infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation, and, third, infringement of Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) of that regulation.
The first plea in law, alleging infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c) of that regulation
29 The applicant submits that the Board of Appeal made an error of assessment in finding that the word ‘casa’ was descriptive of the goods and services covered by the contested mark. It maintains that a consumer, confronted only with the word element ‘casa’, would think first and foremost of the building and not of the things or tools which a person could use in such a building. Thus, the applicant argues that the Board of Appeal made an error of assessment in concluding that a Spanish or Portuguese consumer would establish a link between the word ‘casa’ and the goods and services at issue. It submits that it is clear, in particular from the reports intended to demonstrate the distinctive character acquired by the contested mark through use, that only a small minority of consumers who did not recognise that mark made a link between the word ‘casa’ and the goods and services at issue.
30 The applicant complains that the Board of Appeal did not assess whether the contested mark was descriptive in respect of each individual product. It argues that most of the goods and services at issue do not have a direct link with a house. Thus, the goods in Class 4 could be used in any place other than a house. The applicant submits that some of the goods in Class 16 possibly relate first and foremost to an office and not to a house, while others would be associated with an artist’s studio, an art academy or a museum. As regards the goods in Classes 20, 21 and 24, it maintains that they could be used in a wide variety of places other than a house, and that it is therefore not correct that a consumer would establish an inherent link between the goods and a house. It adds that the same considerations apply to the services in Class 35.
31 The applicant also criticises the Board of Appeal for having found that the figurative elements of the contested mark would not divert the consumer’s attention from the word element ‘casa’, and submits that those figurative elements cannot be disregarded since they contribute to establishing the distinctive character of that mark. It highlights in particular that the word element ‘casa’ is not positioned centrally in the ‘bright green’ square and that that colour is not a typical colour for the goods and services at issue, resulting in a bright and clear logo which is not at all common.
32 Lastly, the applicant submits that the Board of Appeal failed to take into account the fact that, with respect to the goods at issue which are sold in shops, the visual aspects of the mark will be of relatively high importance.
33 EUIPO disputes the applicant’s assertions and contends, in particular, that the applicant’s argument that the word ‘casa’ is primarily associated with a building is irrelevant since, in the present case, that term indicates the intended purpose and the category of the goods and services at issue, with the result that a consumer confronted with that term in the context of the relevant goods and services will immediately, without further thought, perceive that they are household goods or goods intended for home use. Similarly, it argues that the Board of Appeal’s reasoning in paragraph 57 of the contested decision individualises the justification of descriptiveness as regards typewriters and office requisites in Class 16.
34 The intervener contends that the contested mark is purely descriptive in nature and, in that regard, agrees fully with the Board of Appeal’s findings, with the exception of the part relating to the definition of the relevant public.
35 Under Article 51(1)(a) of Regulation No 40/94, an EU trade mark is to be declared invalid on application to EUIPO where the EU trade mark has been registered contrary to the provisions of Article 7 of that regulation.
36 Under Article 7(1)(c) of Regulation No 40/94, 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. According to Article 7(2) of that regulation, Article 7(1) thereof is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
37 By prohibiting the registration as trade marks of such signs and indications, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
38 Signs and 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 40/94, regarded as incapable of performing the essential function of the trade mark, namely identifying the commercial origin of the goods or services, thus enabling 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 (see judgment of 25 June 2020, Off-White v EUIPO (OFF-WHITE), T‑133/19, not published, EU:T:2020:293, paragraph 20 and the case-law cited).
39 Additionally, as regards the absolute ground for refusal in Article 7(1)(c) of Regulation No 40/94, a sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 21 and the case-law cited).
40 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 22 and the case-law cited).
41 It should also be recalled that, in order for EUIPO to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article 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 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 word sign must therefore be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 25 June 2020, OFF-WHITE, T‑133/19, not published, EU:T:2020:293, paragraph 23 and the case-law cited).
42 By using the terms ‘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’ in Article 7(1)(c) of Regulation No 40/94, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited).
43 The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 43 and the case-law cited).
44 Furthermore, although it is irrelevant whether such a characteristic is commercially essential or ancillary, a characteristic, within the meaning of Article 7(1)(c) of Regulation No 40/94, must nevertheless be objective and inherent to the nature of that product or service and intrinsic and permanent with regard to that product or service (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 44 and the case-law cited).
45 It is in the light of those considerations that the Court must examine the arguments put forward by the applicant regarding the Board of Appeal’s assessment set out in the contested decision.
46 In the present case, the Board of Appeal found, first of all, that the public targeted by the goods and retail services at issue was the professional public as well as the general public. As for the wholesale services, they were directed at a professional public.
47 Next, the Board of Appeal noted that the contested mark was a figurative mark containing the word element ‘casa’ which, on the date of filing of that mark, meant ‘house’ in Spanish, Italian and Portuguese. In that regard, it considered that, in relation to the goods and services at issue, the word element ‘casa’ would be immediately perceived by the relevant consumers as indicating the intended purpose and the category of the goods, namely that they were goods to be used for the house.
48 In particular, the Board of Appeal found that the goods in Classes 4, 20, 21 and 24 were essentially furniture, decorative articles, goods for domestic use and household products. In its view, those were also the goods to which the contested retail and wholesale services in Class 35 relate. As regards the different materials, including raw materials of different types in Classes 16, 21 and 24, it found that the word ‘casa’ would be understood as meaning that they can be offered and used by the average public in order to make or pack its own decorative articles and crafts at home.
49 Furthermore, the Board of Appeal took the view that typewriters and office requisites (except furniture) in Class 16, although intended for offices, are increasingly offered as household goods. In particular, it stated that typewriters are collector or decorative goods nowadays.
50 Lastly, according to the Board of Appeal, the square background of the sign is a very basic shape, the stylisation of the letters is banal and the colours used are basic ones. It found that those elements, taken individually or together, do not divert the attention of the relevant public from the clear descriptive message conveyed by the word element.
51 As regards, first of all, the assertion that the Board of Appeal did not take sufficient account of the figurative elements of the contested mark, or of the fact that the word element is not positioned centrally in the ‘bright green’ square and that the visual aspects play a more important role because of the way in which the goods at issue are marketed, it should be noted that the Board of Appeal did indeed assess all the figurative elements in paragraph 60 of the contested decision. It found that those elements will be regarded as simple decorative elements which do not divert the attention of the relevant public from the clear descriptive message conveyed by the word element.
52 Those findings do not contain any error of assessment. The only figurative elements of the contested mark, namely the bright green square and the typeface used for the word element, are not capable, on account of their decorative nature, of having an impact on the perception of the word element ‘casa’. Indeed, the average consumer more readily refers to the goods in question by quoting the name rather than by describing the figurative element of the mark (see judgment of 7 May 2015, Cosmowell v OHIM – Haw Par (GELENKGOLD), T‑599/13, EU:T:2015:262, paragraph 48 and the case-law cited).
53 Second, it is necessary to examine the applicant’s claim that the Board of Appeal did not analyse whether the contested mark was descriptive in respect of each of the goods and services covered by that mark.
54 In that regard, it should be borne in mind that, as regards the competent authority’s obligation to state reasons for refusing to register a trade mark in respect of each of the goods or services for which that registration is sought, the competent authority may use only general reasoning for all of the goods and services concerned where the same ground for refusal is given for a category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30 and the case-law cited). However, 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 (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 31 and the case-law cited).
55 In the present case, as noted in paragraphs 48 and 49 above, the Board of Appeal assessed descriptiveness in respect of the goods and services at issue by grouping them together. Thus, it grouped together the goods in Classes 4, 20, 21 and 24, taking the view that they were essentially furniture, decorative articles, goods for domestic use and household products, and that the retail or wholesale services in Class 35 related to those goods. Next, it identified different materials, including different types of raw materials, in the goods in Classes 16, 21 and 24. Lastly, it assessed the descriptiveness of the word ‘casa’ by reference to typewriters and office requisites.
56 Thus, with regard to the goods and services at issue, the Board of Appeal established that they are interlinked in a sufficiently direct and specific way so as to form a sufficiently homogeneous group of goods and services, with the result that general reasoning may be used in accordance with the case-law cited in paragraph 54 above.
57 In those circumstances, the applicant cannot reasonably complain that the Board of Appeal did not assess whether the contested mark was descriptive in respect of each individual product.
58 Third, as regards the argument that the word ‘casa’ in Spanish, Italian and Portuguese refers to the building and not to things which a person could use in such a building, as noted in paragraph 36 above, the intended purpose is one of the characteristics mentioned in Article 7(1)(c) of Regulation No 40/94. The applicant’s argument must therefore be rejected.
59 Fourth, it is necessary to assess whether the Board of Appeal established that there is, in the mind of the relevant public, a sufficiently direct and specific relationship to enable that public immediately to perceive, without further thought, a description of the characteristics of the goods and services at issue.
60 In that regard, it should be noted that the applicant does not deny that the goods at issue could be used in the house, but submits, in essence, that those goods may be used in other places.
61 However, for the application of Article 7(1)(c) of Regulation No 40/94, it is sufficient for the sign to be descriptive of one of the possible intended purposes of the goods and services at issue, which the relevant public is liable to take into account when making a choice and which accordingly constitutes an essential characteristic thereof (judgment of 8 June 2022, Vitronic v EUIPO (Enforcement Trailer), T‑433/21, not published, EU:T:2022:344, paragraph 50).
62 Thus, the applicant’s arguments relating to the goods in Classes 4, 20, 21 and 24 and to the services in Class 35 covered by the contested mark must be rejected. The Board of Appeal did not therefore make an error of assessment in finding that the word ‘casa’ was descriptive of those goods and services.
63 However, that is not the case as regards the goods in Class 16 covered by the contested mark.
64 In that regard, the Board of Appeal, in paragraph 56 of the contested decision, endorsed the Cancellation Division’s position that if paper, cardboard and ‘plastic’ were offered for sale under the casa mark, that mark would be understood as indicating that those goods can be offered and used by the average public in order to make or even to pack its own decorative articles and crafts at home. Moreover, as regards typewriters and office requisites, the Board of Appeal found, in paragraph 57 of the contested decision, that although that type of article was traditionally reserved for offices, it was increasingly offered as household goods, adding that typewriters are collector goods or even decorative goods nowadays.
65 It must be stated, however, that those considerations are not such as to establish that the word ‘casa’ is objective and inherent to the nature of those goods and intrinsic and permanent with regard to those goods within the meaning of the case-law cited in paragraph 44 above. That word, which refers to the house, does not constitute a description of the intended purpose, within the meaning of the case-law cited in paragraph 61 above, of goods such as the different packing materials, office requisites or painting articles in Class 16. The reasoning of the Board of Appeal, according to which typewriters are collector goods or even decorative goods nowadays, is particularly illustrative of the fact that the house does not describe a characteristic that is objective and inherent to the nature of those goods and intrinsic and permanent with regard to those goods.
66 That conclusion cannot legitimately be called into question by EUIPO’s arguments, put forward at the hearing in response to a question from the Court, that all the goods concerned in Class 16 were intended, inter alia, to be used in the house and that the consumer would perceive the word ‘casa’ as an obvious and direct description of their intended purpose.
67 These are general considerations which are in any event insufficient for the purpose of establishing that the word ‘casa’ is objective and inherent to the nature of the goods at issue in Class 16 and intrinsic and permanent with regard to those goods.
68 In view of the foregoing, the present plea in law must be upheld as regards the goods at issue in Class 16. By contrast, that plea must be rejected as regards the goods at issue in Classes 4, 20, 21 and 24 and the services at issue in Class 35.
The second plea in law, alleging infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation
69 The applicant submits that the Board of Appeal erred in finding that the contested mark was devoid of distinctive character and maintains that it has demonstrated through academic studies that the vast majority of consumers do not make a link between the word ‘casa’ and the goods and services at issue. Similarly, the distinctive character of the contested mark is reinforced by the specific figurative elements. In addition, it argues that no objection was made at the time of registration of the contested mark. The applicant complains that the Board of Appeal failed to take into account the evidence of the registrability of the contested mark in Spain and Portugal.
70 EUIPO and the intervener dispute the applicant’s claims.
71 As is clear from Article 7(1) of Regulation No 40/94, for a sign to be ineligible for registration as an EU trade mark, it is sufficient that one of the absolute grounds for refusal applies (see, to that effect, judgment of 25 November 2014, Verband der Kölnisch-Wasser Hersteller, Köln v OHIM (Original Eau de Cologne), T‑556/13, not published, EU:T:2014:984, paragraph 35 and the case-law cited).
72 In the present case, the Board of Appeal merely noted, in paragraph 63 of the contested decision, that the descriptive signs referred to in Article 7(1)(c) of Regulation No 40/94 are also devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation.
73 Accordingly, since it follows from the examination of the first plea in law that the Board of Appeal was fully entitled to find that the contested mark was descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94 in respect of the goods and services at issue in Classes 4, 20, 21, 24 and 35, there is no need, to that extent, to examine the plea alleging infringement of Article 7(1)(b) of that regulation (see, to that effect, judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraphs 28 and 29, and of 5 February 2019, Gruppo Armonie v EUIPO (ARMONIE), T‑88/18, not published, EU:T:2019:58, paragraph 36).
74 By contrast, as regards the goods at issue in Class 16, since the Board of Appeal did not establish to the requisite legal standard that the contested mark was descriptive of those goods, the present plea in law must be upheld in respect of those goods, given that the Board of Appeal did not provide specific reasons as regards the finding that that mark lacked distinctive character.
The third plea in law, alleging infringement of Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) of that regulation
75 The applicant asserts that, in the light of the evidence submitted both before the Cancellation Division and before the Board of Appeal, the contested mark has, in any event, acquired distinctive character through use. In particular, it maintains that the Board of Appeal should have analysed the evidence submitted in Annexes 10 and 13 to 16 before the Board of Appeal concerning its established position on the European market, which, according to the Board of Appeal, demonstrated only its presence on the market, together with the other evidence. Moreover, it disputes the intervener’s assertions that the contested mark was used as a company, trade or shop name and not as a trade mark. The applicant argues that all the goods which it sells have a ‘casa’ label or price tag, and that no product with another trade mark is sold in its shops.
76 In addition, the applicant disputes the Board of Appeal’s assessments relating to the market surveys for Spain and Portugal which it submitted, and maintains that the results of those surveys could be extrapolated to Italy.
77 EUIPO and the intervener dispute the applicant’s claims.
78 Since the first and second pleas in law have been upheld in respect of the goods at issue in Class 16, the third plea in law must be examined solely with regard to the other goods and services covered by the contested mark.
79 According to Article 51(2) of Regulation No 40/94, where the EU trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d) of that regulation, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. Under Article 7(3) of Regulation No 40/94, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if that mark 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.
80 In that regard, it should be borne in mind that the precise purpose of Article 51(2) of Regulation No 40/94 is to maintain the registration of such of those marks which, because of the use that has been made of them, have in the meantime – that is to say, after their registration – acquired distinctive character in relation to the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7(1)(b) to (d) of that regulation (see judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 60 and the case-law cited).
81 It must be pointed out that the burden of proof concerning the distinctive character acquired through use pursuant to Article 51(2) of Regulation No 40/94 and Article 7(3) of that regulation is on the proprietor of the mark at issue (see judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 61 and the case-law cited).
82 It follows from the unitary character of the EU trade mark that, in order to be accepted for registration, a sign must have distinctive character, inherent or acquired through use, throughout the European Union (judgments of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 68, and of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a brown and beige chequerboard pattern), T‑359/12, EU:T:2015:215, paragraph 86).
83 Thus, in order to have the registration of a mark accepted under Article 7(3) of Regulation No 40/94, the distinctive character acquired in consequence of the use of that mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation (see judgment of 10 November 2004, Storck v OHIM (Shape of a sweet wrapper), T‑402/02, EU:T:2004:330, paragraph 78 and the case-law cited).
84 The distinctive character of a mark, including where it is acquired through use, must be assessed in relation to the goods or services in respect of which registration of that mark is applied for and in the light of the perception which the relevant public has of it (see, to that effect, judgment of 5 March 2003, Alcon v OHIM – Dr. Robert Winzer Pharma (BSS), T‑237/01, EU:T:2003:54, paragraph 51 and the case-law cited).
85 Furthermore, it is clear 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. However, the circumstances in which that requirement may be regarded as satisfied cannot be shown to exist solely by reference to general and abstract data (see order of 8 May 2019, Getsmarter Online v EUIPO (getsmarter), T‑473/18, not published, EU:T:2019:315, paragraph 51 and the case-law cited).
86 The Court of Justice has stated that, in determining whether a mark has acquired distinctive character in consequence of the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 49).
87 In that regard, account must be taken of, inter alia, the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of interested parties who identify the product as originating from a particular undertaking because of the mark, and statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls (see order of 8 May 2019, getsmarter, T‑473/18, not published, EU:T:2019:315, paragraph 53 and the case-law cited).
88 As regards the probative value of the evidence submitted, it is apparent from the case-law that certain elements are considered to be of greater probative value than others. In particular, sales figures and advertising material can be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by surveys or market studies as well as by statements from professional associations or statements from the specialist public (see, to that effect, judgment of 26 June 2019, Agencja Wydawnicza Technopol v EUIPO (200 PANORAMICZNYCH and Others), T‑117/18 to T‑121/18, EU:T:2019:447, paragraph 81 and the case-law cited).
89 It is in the light of the abovementioned principles that the present plea in law must be examined.
90 In accordance with the case-law cited in paragraph 83 above, the distinctive character acquired in consequence of the use of the contested mark must be demonstrated in the part of the European Union where it was devoid of any such character. As is apparent from the analysis of the first and second pleas in law, the present case concerns Spain, Italy and Portugal.
91 In that regard, the Board of Appeal found that the evidence on file did not allow it to conclude that the contested mark had acquired distinctive character in relation to the goods and services at issue in Spain, Italy and Portugal. The evidence submitted in that respect by the applicant at various stages of the procedure was as follows:
– brochures concerning the use of the contested mark in Spain, Italy and Portugal;
– a list of the locations of Casa shops in various European countries, including Spain, Italy and Portugal;
– a list of the various earlier rights held by the applicant;
– decisions of the Spanish and Portuguese authorities;
– information relating to the net sales of its shops, excluding internet sales, and the turnover of its franchised shops;
– market surveys carried out by professors concerning distinctive character acquired through use in Spain and Portugal.
92 At the outset, it should be noted that, as is apparent from paragraphs 75 to 116 of the contested decision, the Board of Appeal assessed all the evidence submitted by the applicant at various stages of the procedure, including the evidence submitted after the expiry of the time limit for filing the written statement setting out the grounds of appeal, with the result that the applicant cannot allege any lack of diligence in that regard.
93 As regards the relevance of the evidence submitted by the applicant, although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 40/94, a mark that is inherently devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union (see judgment of 19 June 2019, adidas v EUIPO – Shoe Branding Europe (Representation of three parallel stripes), T‑307/17, EU:T:2019:427, paragraph 149 and the case-law cited).
94 It follows that, if distinctive character acquired through use is not demonstrated in respect of one of the Member States of the European Union where the contested mark is devoid of any such character, namely Spain, Italy or Portugal, the present plea in law will have to be rejected. It is appropriate to begin by examining the evidence relating to Italy.
95 First, it should be noted that the evidence submitted by the applicant relating to Italy consists mainly of promotional brochures, information on the shops in the company’s retail chain, and various invoices showing sales. However, although that type of evidence might be sufficient to demonstrate genuine use of a mark, such evidence is not sufficient, in itself, to demonstrate the acquisition of distinctive character through use. That evidence does not contain any indication that the relevant public would perceive the contested mark as indicative of the commercial origin of the goods and services at issue.
96 In particular, the evidence relating to the applicant’s established position on the Italian market (Annexes 10 and 15 submitted before the Board of Appeal, described in paragraph 91 of the contested decision), as the Board of Appeal correctly found, demonstrates the applicant’s presence on the Italian market and not that the Italian public perceives the contested mark as indicative of the commercial origin of the goods and services at issue.
97 As regards the question whether the use referred to by the applicant was that of a company name, as the intervener contends, or that of a trade mark, the Board of Appeal found that the brochures submitted established a link between the contested mark and the services provided. By contrast, according to the Board of Appeal, it is less evident that such a link exists with regard to the goods at issue. It found, inter alia, that the applicant had not provided any evidence in support of its claim that the goods concerned have a ‘casa’ label. It concluded on that basis that, even if it were accepted that the combination of the various brochures on file and the list of the various Casa shops was sufficient to show genuine use of the contested mark, that would not demonstrate that at least a significant proportion of the relevant public identifies the goods and services at issue as originating from the applicant.
98 In that regard, it must admittedly be stated that the sales brochures which contain various images of the goods at issue are capable of establishing use of the contested mark not only in relation to the services covered by that mark, but also in relation to the goods covered by it. As is apparent from the case-law, there is use in relation to goods or services where, even where the sign is not affixed, the third party uses the sign constituting its company name in such a way that a link is established between the sign which constitutes the company name of the third party and the goods marketed or the services provided by the third party (see judgment of 2 June 2021, adp Gauselmann v EUIPO – Gameloft (GAMELAND), T‑17/20, not published, EU:T:2021:313, paragraph 32 and the case-law cited).
99 However, when assessing distinctive character acquired through use, as is apparent from the case-law cited in paragraph 85 above, it must be demonstrated that a significant proportion of the relevant section of the public identifies the goods or services at issue as originating from a particular undertaking because of the mark. Consequently, in accordance with the case-law cited in paragraph 88 above and as the Board of Appeal essentially found, the evidence relating to the use of the mark cannot, in any event, by itself, establish that that mark has acquired distinctive character through use. It follows that the question whether use of the contested mark has been established in relation to the goods at issue would potentially be relevant only if there was other evidence relating to the perception of that mark by the relevant section of the public.
100 Second, it is necessary to assess the Board of Appeal’s findings concerning the market surveys submitted by the applicant. In that regard, it should be borne in mind that those surveys related to the reputation of the contested mark in Spain and Portugal.
101 The applicant nevertheless submits that, since it is not necessary to establish by separate evidence the acquisition of distinctive character through use in each individual Member State, the evidence relating to Spain and Portugal, in particular the market surveys and academic reports submitted, is also relevant with respect to Italy. According to the applicant, the results of those reports could be extrapolated to Italy since those three Member States form part of the same language area in the European Union.
102 EUIPO and the intervener dispute the applicant’s arguments.
103 In that regard, the Board of Appeal, in paragraph 117 of the contested decision, maintained, inter alia, that, even if the surveys for Spain and Portugal were to be regarded as solid and objective evidence, the proprietor of the contested mark did not submit a survey for Italy, nor did it provide any reasoning which would justify a finding that the results concerning Spain and Portugal should be extended to Italy. The Board of Appeal added that the mere fact that similar evidence in the form of brochures and lists of shops was submitted in respect of the three countries was insufficient for extrapolation purposes.
104 Thus, even if the market surveys relating to Spain and Portugal are relevant for the purposes of establishing to the requisite legal standard that the contested mark has acquired distinctive character through use in relation to those countries, the question arises as to whether those results may be extrapolated to Italy, as the applicant essentially submits.
105 In that regard, the Court of Justice has held that, even if it is true that the acquisition by a mark of distinctive character through use must be proved for the part of the European Union in which that mark does not have inherent distinctive character, it would be unreasonable to require proof of such acquisition for each individual Member State (see judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 77 and the case-law cited).
106 No provision of Regulation No 40/94 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State. Therefore, it is not inconceivable that the evidence provided to establish that a particular sign has acquired distinctive character through use is relevant with regard to several Member States, or even to the whole of the European Union (judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 80).
107 In particular, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned (judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 81).
108 The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the goods and services that are present on the national market of the second (judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 82).
109 Thus, it is necessary to assess whether an extrapolation to Italy of any acquisition of distinctive character through use of the contested mark in Spain and Portugal is possible in the present case.
110 In that regard, it should be noted, as the Board of Appeal correctly found, that the applicant did not put forward any arguments claiming that the results of the market surveys relating to Spain and Portugal should be extrapolated to Italy.
111 Even if the Spanish, Portuguese and Italian languages may be regarded as being close, they do not, however, belong to the same language area, as the applicant submits. Similarly, it cannot be argued that there is a geographic proximity between Spain and Portugal, on the one hand, and Italy, on the other.
112 Consequently, it has not been demonstrated that, due to a geographic, cultural or linguistic proximity between Italy, on the one hand, and Portugal or Spain, on the other, the Italian public has a sufficient knowledge of the goods and services that are present on the Spanish or Portuguese market within the meaning of the case-law cited in paragraph 108 above.
113 Nor has the applicant provided evidence showing that Spain, Italy and Portugal were grouped together in the same distribution network and that it had treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market in order that, in accordance with the case-law cited in paragraph 107 above, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned.
114 When questioned at the hearing, the applicant submitted, inter alia, that the results of the market surveys relating to Spain and Portugal could be extrapolated to Italy since the word ‘casa’ has the same meaning in the three languages and the Italian public is confronted with the contested mark in the same way as the Spanish and Portuguese public. It argued that the latter conclusion may be inferred from the fact that the other evidence which it submitted, namely the advertising material and the list of Casa shops, was similar for all three countries.
115 It is sufficient to note that that evidence is not capable of demonstrating that the Italian public has a sufficient knowledge of the goods and services that are present on the Spanish or Portuguese market within the meaning of the case-law cited in paragraph 108 above, or that the three countries form a cross-border market within the meaning of the case-law cited in paragraph 107 above. Moreover, as has been noted in paragraph 103 above, the Board of Appeal correctly stated, in paragraph 117 of the contested decision, that the mere fact that similar evidence in the form of brochures and lists of shops was submitted in respect of the three countries was clearly insufficient for extrapolation purposes.
116 It follows that the applicant has not demonstrated that the contested mark has acquired distinctive character through use in Italy. Since that character had to be demonstrated for the whole of the territory where that mark was devoid of any such character (see paragraph 90 above), the present plea in law may be rejected without it being necessary to examine whether the acquisition of distinctive character through use has been demonstrated as regards Spain and Portugal.
117 Accordingly, the third plea in law must be rejected.
Costs
118 Under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.
119 In the present case, since the action has been upheld in respect of only some of the goods at issue and the intervener has not, in any event, applied for costs, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 July 2021 (Case R 1280/2020-2) in so far as it dismissed the appeal filed by Casa International as regards the following goods in Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationery; adhesives for stationery or household purposes; artists’ materials; brushes; typewriters and office requisites (except furniture); [instructional and teaching materials (except apparatus)]; plastic materials for packing (not included in other classes); printing types; [printing blocks]’;
2. Dismisses the action as to the remainder;
3. Orders each party to bear its own costs.
Costeira | Zilgalvis | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 22 March 2023.
E. Coulon | | M. van der Woude |