JUDGMENT OF THE GENERAL COURT (Second Chamber)
20 September 2023 (*)
(EU trade mark – Application for EU figurative mark Safeguard – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001)
In Case T‑210/22,
The Procter & Gamble Company, established in Cincinnati, Ohio (United States), represented by M. Körner and N. Schaumburg-Lippe, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Misztal and T. Klee, acting as Agents,
defendant,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen and W. Valasidis (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 26 April 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, The Procter & Gamble Company, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 February 2022 (Case R 1753/2021-5) (‘the contested decision’).
Background to the dispute
2 On 20 April 2021, the applicant lodged an application for registration as an EU trade mark under 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) of the following figurative sign:
3 The mark applied for covered goods in Class 3 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 which correspond to the following description: ‘bleaching preparations and other substances for laundry use; cleaning preparations; polishing preparations; scouring preparations; abrasive preparations; soaps; deodorants for personal use; antiperspirants; non-medicated body care preparations; cosmetic preparations for body care; hand care preparations; body wash; body lotion; shower and bath gel; bath foam; body spray.’
4 By decision of 7 May 2021, the EUIPO examiner rejected the application for registration of the mark at issue, on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, on the ground that the mark applied for was descriptive of certain characteristics of the goods for which protection was sought and was devoid of any distinctive character.
5 On 11 October 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 descriptive of the goods at issue and was devoid of any distinctive character.
Forms of order sought
7 In the application, the applicant claims that the Court should:
– annul the contested decision;
– register the mark applied for;
– order EUIPO to pay the costs.
8 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
9 At the hearing, the applicant withdrew its second head of claim, formal note of which was taken in the minutes of the hearing.
Law
10 In support of the action, the applicant relies on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001 and, second, infringement of Article 7(1)(b) of that regulation.
The first plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
11 The applicant argues that the contested decision was adopted contrary to Article 7(1)(c) of Regulation 2017/1001. In particular, it submits that the Board of Appeal erred in its assessment that the mark applied for was descriptive. In support of that plea, the applicant submits that:
– the term ‘safeguard’ is not part of everyday vocabulary and its meaning is not known to the wider public at all;
– there is no link between the word elements of the mark applied for and the goods at issue because, in any event, those goods do not ensure protection against danger, damage or injury;
– the figurative elements of that mark, namely the emblem or logo, the font, the shadow cast and the outer frame with a metallic glow, do not have merely a background function and the mark in question is three-dimensional;
– previous registrations of marks consisting of the word ‘safeguard’ were not properly taken into consideration in assessing whether the mark applied for should be registered.
12 Pursuant to Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Under Article 7(2) of that same regulation, Article 7(1) applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.
13 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 regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them 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 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
14 By prohibiting the registration as an EU trade mark of such signs and indications, Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by 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).
15 It should be borne in mind that, 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 2017/1001, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, second, 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).
16 It is in the light of the above case-law that the applicant’s first plea is to be examined.
The relevant public
17 The Board of Appeal found that the goods at issue in Class 3 were aimed at the public at large whose level of attention is average and that the relevant public was the English-speaking general public of the European Union living in Ireland or Malta.
18 In the circumstances of the present case, there is nothing in the file to call into question those assessments made by the Board of Appeal, which, moreover, are not disputed by the parties.
The meaning of the term ‘safeguard’
19 The Board of Appeal found that the term ‘safeguard’ could be defined, inter alia, as a noun referring to ‘a person or thing that ensures protection against danger, damage, injury, etc.’ and as a verb ‘safeguard’, meaning ‘to defend or protect’.
20 The applicant submits that the term ‘safeguard’ is not part of the basic vocabulary of the English language, contrary to the Board of Appeal’s assertion in the contested decision. It states that the meaning of that term is not known to the wider public.
21 EUIPO disputes the applicant’s arguments.
22 In that regard, as is apparent from the documents submitted in the proceedings by the applicant, be it the extract from the Collins English dictionary, the Wiktionary website, the Merriam-Webster dictionary, the Linguee website, the Cambridge English Dictionary website or the dictionary.com website, the term ‘safeguard’ means, first, as a noun, ‘a person or thing that ensures protection’ and, second, as a verb, ‘to defend or protect’. At the hearing, the applicant acknowledged, moreover, that that term could mean ‘to protect’ for English-language consumers.
23 In order to establish that the meaning of the term ‘safeguard’ adopted by the Board of Appeal is not usual in the light of the other meanings of that term, the applicant submits, inter alia, that the term is ‘an old English term which is hardly used anymore in everyday language’. However, the applicant has not produced any document to support that assertion and the dictionary extracts referred to in paragraph 22 above tend to show the contrary. The only documents produced by the applicant in support of its argument are documents relating to the 3 000 words most commonly used in the English language, which do not include the word ‘safeguard’. Those documents are not corroborated by any evidence making it possible to identify, inter alia, the criteria used for selecting the terms they contain. Furthermore, the fact that the term in question does not appear among the most commonly used words does not mean that it is now obsolete.
24 The applicant also submits that the use of the term ‘safeguard’ for the goods at issue is fanciful, that the term is used in certain specific fields (military, government and law, and software) and that the decisions cited by the Board of Appeal to demonstrate the meaning of the term correspond to different fields, including that of safety. However, the term in question, irrespective of the field in which it is used, has the meaning referred to in paragraph 19 above, which was accepted by the applicant at the hearing. Even assuming that the term is fanciful for the goods at issue, as the applicant submits, that does not mean that it does not have a meaning that consumers will understand. Moreover, the fact that such a term is often used in certain fields does not mean that it has a different meaning in other fields, which, in any event, the applicant has not proved.
25 It follows that the Board of Appeal did not err in its assessment that the term ‘safeguard’ would be understood as evoking protection.
The link between the word element ‘safeguard’ and the goods at issue
26 The Board of Appeal found that the mark applied for was a sign that, as a whole, was descriptive in relation to all the goods at issue, since it informs the relevant public that those goods are safe to use or that they protect again harm or health risks.
27 The applicant argues, in essence, that the Board of Appeal erred in assuming that the public – when it encounters the word element ‘safeguard’ in the context of beauty care (and not medical care or disinfectants) – will immediately and without any mental effort perceive that it informs that public that those products protect against harmful germs, viruses and bacteria.
28 The applicant submits, first, that the intended purpose of the goods in Class 3 is to wash, clean, nourish and prevent undesirable odours and not to disinfect or protect against allergies. Products that protect against bacterial infection or germs, such as medicated creams and disinfectants, are instead in Class 5. The applicant maintains that the same is true of anti-allergy products, since consumers with allergies prefer to purchase medicated or specially formulated products that are in Class 5, rather than normal cosmetic products.
29 The applicant also criticises the Board of Appeal for having provided a general statement of reasons in finding that allergen-free or antiviral varieties of the goods in Class 3 could be grouped into a single category.
30 In addition, the applicant submits that consumers looking for antiviral or antibacterial products will focus not on the product’s brand name, but on the product’s labelling.
31 Lastly, the applicant refers to Regulation (EC) No 1223/2009 of the European Parliament and of the Council of 30 November 2009 on cosmetic products (OJ 2009 L 342, p. 59) in order to claim that there are no ‘unsafe’ products on the EU market. The same, it is submitted, applies in relation to household detergents, which, in accordance with Regulation (EC) No 648/2004 of the European Parliament and of the Council of 31 March 2004 on detergents (OJ 2004 L 104, p. 1), must also be ‘safe’ in order to be distributed in the European Union.
32 EUIPO disputes the applicant’s arguments.
33 In that regard, it should be borne in mind that a sign can be refused registration on the basis of Article 7(1)(c) of Regulation 2017/1001 only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 32). Furthermore, in accordance with case-law, a sign with several possible meanings must be refused registration under Article 7(1)(c) of Regulation 2017/1001 if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32; of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 38; and of 3 September 2020, achtung! v EUIPO, C‑214/19 P, not published, EU:C:2020:632, paragraph 35). It is therefore necessary to consider, on the basis of the relevant meaning of the sign in question, whether, from the viewpoint of the public addressed, there is a sufficiently direct and specific relationship between the sign and the goods in respect of which registration is sought (judgment of 20 July 2004, Lissotschenko and Hentze v OHIM (LIMO), T‑311/02, EU:T:2004:245, paragraph 30).
34 As regards the present case, it should be noted, in the first place, that, contrary to the applicant’s claim, the general public clearly includes consumers with allergies to, inter alia, the allergenic fragrance substances contained in cosmetics and household products.
35 Furthermore, the goods at issue in the present case often have, in addition to their intrinsic cleaning or care properties, properties or ingredients intended to prevent or alleviate not only allergies, but also the transmission or presence of viruses or bacteria. In addition, they are freely available in shops, be it supermarkets, hypermarkets or drugstores.
36 Therefore, consumers suffering from allergies represent part of the relevant public and, in accordance with case-law, it is sufficient, in order for it to be regarded as descriptive, that the term in question may be understood by part of the relevant public as a description of the goods or services covered by the application for registration or as one of their characteristics (judgments of 17 September 2008, Prana Haus v OHIM (PRANAHAUS), T‑226/07, not published, EU:T:2008:381, paragraph 21, and of 18 November 2015, Research Engineering & Manufacturing v OHIM – Nedschroef Holding (TRILOBULAR), T‑558/14, not published, EU:T:2015:858, paragraph 17).
37 In the second place, the applicant claims that the Board of Appeal failed to take into consideration the fact that consumers with allergies do not usually purchase ‘normal’ cosmetic products in a pharmacy, but instead purchase medically or specially formulated products that are in Class 5. It adds that the Board of Appeal erred in finding that goods in Class 3 may have antiviral or antibacterial properties, whereas, by definition, those goods are in Class 5.
38 However, as the Board of Appeal rightly pointed out, the goods at issue, both household and cosmetic products, sometimes contain substances which have allergic effects. Indeed, certain goods in Class 3, such as cosmetics, and certain goods in Class 5, such as pharmaceutical products, may have the same purpose, be sold through the same distribution channels, such as pharmacies or other specialist shops, and often be manufactured by the same companies and aimed at the same end users (see, to that effect, judgment of 24 March 2021, Laboratorios Ern v EUIPO – Sanolie (SANOLIE), T‑175/20, not published, EU:T:2021:165, paragraph 41 and the case-law cited). In the present case, Class 3 may contain allergen-free, antiviral or antibacterial products which are not, however, medicinal products and are therefore not in Class 5, whatever the purpose of those goods. It follows that such goods are not exclusively in Class 5, but are also in Class 3.
39 The applicant, referring to Regulations Nos 1223/2009 and 648/2004, submits that there are no ‘unsafe’ goods on the EU market and therefore the term ‘safeguard’ has no meaning in relation to goods which are already safe to use.
40 Concerning Regulation No 1223/2009, as the Board of Appeal rightly stated, that regulation provides not only that certain fragrance substances may cause an abnormal immune response and, therefore, a risk to human health for allergy sufferers, but also for the need for certain fragrance substances to be specifically mentioned in the list of ingredients on cosmetic products. The same is true of Regulation No 648/2004, which, in recital 25, expressly mentions fragrance substances and the possibility of allergic reactions.
41 In the third place, the applicant also criticises the Board of Appeal for having provided general reasoning in finding that the allergen-free or antiviral varieties of goods in Class 3 could be grouped in a sufficiently homogeneous category or group, whereas such a sub-category or group should be in relation to the goods in Class 5.
42 It is true that, where the same ground for refusal is given for a category or group of goods or services, EUIPO may use only general reasoning for all of the goods or services concerned. Nevertheless, that power cannot prejudice the essential requirement for any decision refusing the benefit of a right conferred by EU law to be subject to judicial review which is designed to secure effective protection for that right and which, accordingly, must cover the legality of the reasons for the refusal decision (see order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraphs 38 and 39 and the case-law cited).
43 Accordingly, the option for the Board of Appeal to use general reasoning for a series of goods or services can extend only to goods which have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision in question, first, to explain adequately the reasoning followed by the Board of Appeal for each of the goods and services belonging to that category and, second, to be applied without distinction to each of the goods or services concerned (see judgment of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 28 and the case-law cited).
44 It should be borne in mind that the assessment of whether there is a sufficiently direct and specific link between the goods at issue, in order to determine whether they form a sufficiently homogeneous product category or group, is not an end in itself, but must be carried out in the light of the objective of enabling and facilitating the assessment in concreto of the question whether one of the absolute grounds for refusal may be applied to the application for registration of the mark concerned, in particular on the basis of the characteristics which are common to the goods at issue and which are relevant to the analysis of whether a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services (see, by analogy, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 32 and 33).
45 As regards the goods at issue, all of which are in Class 3, it must be held that the Board of Appeal did not err in finding that each of the products covered could be included within three different product varieties, namely an allergen-free variety, an antiviral variety and an antibacterial variety, and dividing them according to their common characteristics. Thus, the goods grouped in the allergen-free variety present a relevant characteristic, namely that they do not contain certain substances, and can be placed, for the purposes of examining the application for registration at issue in relation to the absolute ground for refusal concerned, in a sufficiently homogenous category or group (see, to that effect, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 34). As regards the products grouped in the antiviral and antibacterial varieties of the goods at issue, their properties are intended to protect both consumers and the surfaces on which they are to be applied from viruses and bacteria.
46 It follows from the foregoing that the Board of Appeal was entitled to find that all the goods at issue could be included in one of the different varieties referred to in paragraph 45 above and that it did not therefore err in using general reasoning for the goods grouped in each of those varieties.
47 In the light of all of the foregoing considerations, the Board of Appeal did not err in finding that the relevant public included allergy sufferers and those seeking to protect their health from harmful germs and bacteria and that the goods at issue did not expose them to a health risk.
48 Therefore, in view of the meaning of the term ‘safeguard’, which evokes the idea of protection, that term will be understood by the relevant public as relating to the protective properties of the goods at issue. It is clear that that term, when referring to those goods, may indicate that they can be used safely by any person suffering from allergies or to protect against harmful germs, viruses and bacteria.
49 Thus, applied to ‘soaps; deodorants for personal use; antiperspirants; non-medicated body care preparations; cosmetic preparations for body care; hand care preparations; body wash; body lotion; shower and bath gel; bath foam; body spray’, the term ‘safeguard’ will inform the consumer about the desired effect, namely that the goods will have a protective effect for consumers with allergies. The same applies to ‘bleaching preparations and other substances for laundry use; cleaning preparations; polishing preparations; scouring preparations; abrasive preparations’, the purpose of which is both to protect the skin of those using it against adverse effects, and to protect the surfaces on which they are applied. Consumers will therefore be guided by that term as regards the properties of the goods. Consumers suffering from allergies to a fragrance substance will understand that they will not be exposed to a health risk when they encounter that term in the context of cosmetic products without a fragrance substance.
50 As the Board of Appeal rightly found, the word element of the mark applied for, rather than being allusive or suggestive, as the applicant submits, in so far as it means, first, as a noun, ‘a person or thing that ensures protection against danger, damage, injury, etc.’, and, second, as a verb, ‘to defend or protect’, is directly descriptive in the context of allergen-free, antiviral and antibacterial varieties of the goods applied for from the perspective of a significant part of the relevant public. That is all the more true since, as the Board of Appeal rightly states, without being contradicted on this point by the applicant, many members of the public, in particular as a consequence of the Covid-19 pandemic, will look for varieties of cleaning and abrasive preparations and body cleaning and beauty care preparations which kill germs, viruses and bacteria.
51 As regards the applicant’s argument relating to the particular attention paid by consumers with allergies to the labelling of goods indicating specifically whether or not the product has antiviral or antibacterial properties and not to the name of the brand, suffice it to state that the applicant has not provided any evidence to substantiate its assertion that the part of the relevant public suffering from allergies does not pay attention to the brand affixed to the goods at issue.
52 In those circumstances, it must be concluded that the Board of Appeal did not err in its assessment that there was a link, for the purposes of Article 7(1)(c) of Regulation 2017/1001, between the term ‘safeguard’ and the goods at issue.
The assessment of the figurative elements of the mark applied for
53 The applicant submits, in essence, that the Board of Appeal erred in finding that the figurative elements of the mark applied had merely a background function. It maintains that the figurative elements consist not only of an emblem or logo, but also of further elements such as a particular font and a shadow cast of the word ‘safeguard’. It adds that the sign is composed of a distinctive outer frame with a metallic glow which matches the frame of the equally stylised word element. As a consequence, the sign at issue is three-dimensional. Due to the size of the graphical elements which take up most of the sign, it cannot be simply said that the figurative elements have only a background function.
54 The applicant states that the logo is not commonly used or customary in trade in relation to the goods in Class 3, but that, in the contested decision, the Board of Appeal proceeded on the basis that the graphical element of the sign would be perceived as a (protective) shield. However, even if that were the case, a protective shield would not be descriptive of the goods at issue without any further explanation. The position would be different in areas where protective shields are commonly used, for example for security devices and services. Consequently, according to the applicant, the overall impression created by the sign at issue is rather a creative arrangement giving a distinctive overall impression.
55 The applicant adds that, even assuming that a (protective) shield could be perceived within the sign, the sign would not be directly linked to allergen-free goods.
56 EUIPO disputes the applicant’s arguments.
57 As regards the effect of the figurative elements of a composite mark, the decisive factor in assessing the descriptive character is whether it alters the meaning of the sign in relation to the goods and services at issue from the perspective of the relevant public. Thus, a sign, which consists of a descriptive word element, must be regarded as being descriptive as a whole, provided the sign’s graphical elements do not divert the attention of the relevant public from the descriptive message conveyed by the word element (see, to that effect, judgment of 3 October 2019, LegalCareers v EUIPO (LEGALCAREERS), T‑686/18, not published, EU:T:2019:722, paragraph 42 and the case-law cited).
58 The figurative elements of the mark applied for are brought together within a two-dimensional shape that has a white line as a border and on which the word ‘safeguard’ is written at an angle, with that word being written in a white font and casting a shadow on the shape in the background.
59 As regards the two-dimensional shape on which the term ‘safeguard’ is written, it is clearly evocative of a shield. The very function of a shield is to provide protection for the person using it. The meaning of that term, evoking the idea of protection (see paragraph 25 above), is therefore reinforced by the representation of a shield.
60 The Board of Appeal was therefore right to find that the figurative elements brought together within a two-dimensional shape had a background function, highlighting the word element ‘safeguard’ and accentuating the descriptive message conveyed by that word element. As the Board of Appeal states, the figurative elements of the sign are decorative in nature and are not likely to convey an immediate and lasting impression on the relevant public.
61 Furthermore, as the Board of Appeal stated, the overall graphical stylisation of the sign is rather banal and does not convey any meaning that could divert the attention of the relevant public from the descriptive message resulting from the word element of the mark applied for. As regards the font and the shadow cast of the word ‘safeguard’, suffice it to state that the mark does not have any particular feature which would make it unusual and that, contrary to the applicant’s suggestion, it does not appear that those figurative elements give it a three-dimensional appearance. In any event, the applicant has not demonstrated in what way such an alleged three-dimensional appearance would render the presentation of that mark unusual or would be capable of conveying an immediate and lasting impression on the relevant public or of distinguishing the applicant’s goods from those of other suppliers on the market. In any event, that word remains easily legible despite the figurative elements (see, to that effect and by analogy, judgment of 10 November 2021, AC Milan v EUIPO – InterES (ACM 1899 AC MILAN), T‑353/20, not published, EU:T:2021:773, paragraph 57). The mark applied for will therefore be perceived by the relevant public as containing a word element represented in a normal font, which cannot divert the attention of the relevant public from the descriptive message of that word element. Moreover, that descriptive message is reinforced by the presence of the two-dimensional shape evoking a shield.
62 Consequently, the Board of Appeal’s assessment of the figurative elements of the mark applied for is not vitiated by errors.
EUIPO’s previous practice
63 The applicant submits that the Board of Appeal failed to take into account the previous marks cited by the applicant that were granted protection and which are identical, almost identical or highly similar to the mark applied for.
64 According to the applicant, EUIPO did not observe the principles of equal treatment and sound administration or the principle of legality, whereas it is required to carry out a stringent and full examination of every trade mark application in each individual case. In particular, the Board of Appeal did not set out in detail the reasons why the mark applied for should be denied registration while other EU marks which consist of the same elements are valid, nor did it undertake a thorough assessment of those marks. Lastly, the applicant states that the decisions referred to by the Board of Appeal in which the registration of marks containing the term ‘safeguard’ were refused are irrelevant.
65 EUIPO disputes the applicant’s arguments.
66 First, in so far as the applicant submits, in essence, that the contested decision is vitiated by a failure to state reasons, it should be borne in mind that, under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. That obligation has the same scope as that enshrined in Article 296 TFEU, pursuant to which the reasoning of the body which adopted the act in question must be set out clearly and unequivocally. That duty has two purposes: first, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and, second, to enable the EU Courts to exercise their power to review the legality of the decision. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgment of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 186).
67 Furthermore, the obligation to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if they set out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 12 March 2020, Maternus v EUIPO – adp Gauselmann (Jokers WILD Casino), T‑321/19, not published, EU:T:2020:101, paragraph 16 and the case-law cited).
68 In the present case, contrary to the applicant’s claim, the Board of Appeal set out clearly and unequivocally, in paragraphs 62 to 69 of the contested decision, the reasons why the previous marks cited by the applicant were irrelevant. In particular, the Board of Appeal explained that those marks had been ‘accepted’ by first-instance decisions that had not been contested before the Boards of Appeal, with the result that the Boards of Appeal had not had the opportunity to assess the registrability of the marks cited by the applicant, and the Board of Appeal pointed out that any interested party who believes that an EU trade mark was registered by a legal mistake has the option of filing an invalidity action in order to remove that mark from the EU trade marks register.
69 Second, in so far as the applicant claims that the Board of Appeal departed from previous practice, it should be recalled that decisions which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the EU courts and not on the basis of a previous decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
70 Admittedly, EUIPO is required to exercise its powers in accordance with the general principles of EU law, including the principle of equal treatment and the principle of sound administration. In the light of those two principles, EUIPO must take into consideration, when examining an application for registration of an EU trade mark, decisions previously taken in respect of similar applications and consider with special care whether or not it should decide in the same way; nevertheless, the way in which those principles are applied must be consistent with respect for the principle of legality (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 75).
71 Furthermore, the Boards of Appeal are not bound by decisions of first-instance bodies. It would be contrary to the Board of Appeal’s purpose, as defined in Articles 66 to 71 of Regulation 2017/1001, for its jurisdiction to be restricted by the requirement to respect the decisions of the first-instance adjudicating bodies of EUIPO (judgment of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL), T‑290/15, not published, EU:T:2016:651, paragraph 73).
72 In the present case, as is clear from paragraphs 33 to 52 above, the Board of Appeal rightly concluded that the mark applied for was caught by the ground for refusal under Article 7(1)(c) of Regulation 2017/1001, with the result that the applicant cannot reasonably rely on previous EUIPO decisions in order to invalidate that conclusion, especially since, in the present case, those are registration decisions of first-instance bodies of EUIPO which cannot bind the Board of Appeal, in accordance with the case-law referred to in paragraph 71 above.
73 Third, the Board of Appeal stated that, in accordance with case-law, the considerations set out in paragraphs 66 to 71 above apply even if the sign in respect of which registration as an EU trade mark was sought is composed in a manner identical to that of a mark in respect of which EUIPO has previously approved registration as an EU trade mark and which relates to goods or services identical or similar to those in respect of which registration of the sign in question was sought (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 70 and the case-law cited). By referring, in the contested decision, to that case-law, it not only examined the applicant’s arguments, but also responded to them without its assessment being vitiated by error.
74 Fourth, as regards the references made by the Board of Appeal to decisions in which registration of certain marks containing the term ‘safeguard’ was refused, evening if, as the applicant submits, those references are irrelevant, it is clear that, in essence, they were made by the Board of Appeal for the sake of completeness in paragraph 71 of the contested decision, with the result that, in any event, the applicant’s argument cannot call into question the fact that, first, the mark at issue is caught by the ground for refusal in Article 7(1)(c) of Regulation 2017/1001 and, second, the registrations relied on by the applicant could not have led to a different conclusion.
75 In the light of all of the foregoing considerations, it must be held that the Board of Appeal did not err in its assessment of the descriptive character of the mark applied for the purposes of Article 7(1)(c) of Regulation 2017/1001 in respect of the goods at issue. Accordingly, the first plea must be rejected as unfounded.
The second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
76 By its second plea, the applicant argues that the mark applied for should be regarded as a distinctive sign capable of distinguishing the goods of one undertaking from those of other undertakings.
77 EUIPO disputes the applicant’s arguments.
78 In that regard, it should be borne in mind that, in accordance with settled case-law, it is clear from Article 7(1) of Regulation 2017/1001 that it is sufficient for one of the absolute grounds for refusal listed therein to apply for the sign to be ineligible for registration as an EU trade mark (see judgment of 14 June 2001, Telefon & Buch v OHIM (UNIVERSALTELEFONBUCH and UNIVERSALKOMMUNIKATIONSVERZEICHNIS), T‑357/99 and T‑358/99, EU:T:2001:162, paragraph 35 and the case-law cited).
79 It follows that, since it is clear from the consideration of the first plea (see paragraph 78 above) that the Board of Appeal was right in finding that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, there is no need to examine the second 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).
80 In the light of all of the foregoing considerations, the action must be dismissed.
Costs
81 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 (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders The Procter & Gamble Company to pay the costs.
Marcoulli | Frimodt Nielsen | Valasidis |
Delivered in open court in Luxembourg on 20 September 2023.
V. Di Bucci | | M. van der Woude |