JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
18 October 2023 (*)
(EU trade mark – International registration designating the European Union – Figurative mark ENDURANCE – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 – Legal certainty – Equal treatment)
In Case T‑566/22,
Sports Group Denmark A/S, established in Silkeborg (Denmark), represented by T. Kruse Lie, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann and T. Klee, acting as Agents,
defendant,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, M. Kancheva (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 20 April 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Sports Group Denmark A/S, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 July 2022 (Case R 1779/2021-2) (‘the contested decision’).
Background to the dispute
2 On 12 May 2020, the applicant designated the European Union in its international registration of the following figurative mark:
3 The mark applied for covered goods and services in, inter alia, following the restriction made in the course of the proceedings before EUIPO, Classes 9, 25, 28 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, corresponding, for each of those classes, to, inter alia, the following description:
– Class 9: ‘Bicycle helmets; sports helmets’;
– Class 25: ‘Clothing, footwear, headgear; gloves (clothing); headbands (clothing); running clothing and running shoes; cyclists’ clothing and cycling shoes; none of the aforesaid goods including swimwear, beachwear, tri suits or any other clothing, headwear or footwear goods designed, adapted or otherwise promoted for use in the activities of swimming or any other water sport pursuits’;
– Class 28: ‘Gymnastic and sporting articles, sports equipment, gymnastics equipment; appliances for sports; appliances for gymnastics; none of the aforesaid goods including sporting or fitness apparatus or articles designed, adapted or otherwise promoted for use in the activities of swimming or any other water sport pursuits’;
– Class 35: ‘Retail and wholesale services, including via the internet in relation to bicycle helmets and sports helmets; retail and wholesale services, including via the internet in relation to clothing, footwear, headgear, gloves, headbands, running clothing, running shoes, cyclists’ clothing and cycling shoes; retail and wholesale services, including via the internet in relation to gymnastic and sporting articles, sports equipment, gymnastics equipment, appliances for sports and appliances for gymnastics; none of the aforesaid services being retail services for swimwear, beachwear, tri suits or any other clothing, headwear or footwear goods designed, adapted or otherwise promoted for use in the activities of swimming or any other water sport pursuits, and none of the aforesaid services being retail services for any sporting or fitness apparatus or articles designed, adapted or otherwise promoted for use in the activities of swimming or any other water sport pursuits’.
4 On 17 February 2021 the examiner withdrew the objection, which had been issued on 27 August 2020, on the basis of Article 7(1)(c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), but confirmed it in respect of the same goods and services solely on the basis of Article 7(1)(b) of that regulation. In doing so, the examiner found that the mark applied for was a word mark and not a figurative mark.
5 By decision of 23 August 2021, the examiner rejected the figurative mark applied for, in so far as it covered, inter alia, the goods and services in Classes 9, 25, 28 and 35 which have been referred to in paragraph 3 above, on the basis of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
6 On 18 October 2021, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
7 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark applied for was, for the relevant English-speaking public in the European Union, which consisted of professionals and of the general public, devoid of any distinctive character with regard to all of the goods and services which have been referred to in paragraph 3 above.
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision;
– order the publication of the mark applied for in respect of all the goods and services covered;
– order EUIPO to pay the costs, including those incurred before the Board of Appeal;
– in the alternative, if the Court reaches the same conclusion as EUIPO, refusing registration in respect of the goods and services covered by the mark applied for, remit the case to the examiner for a ruling on the acquired distinctiveness of the mark applied for for the purposes of Article 7(3) of Regulation 2017/1001.
9 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs if a hearing is convened.
Law
The issue of the Court’s jurisdiction as regards the applicant’s second head of claim and the issue of whether the action is admissible
10 It must be pointed out at the outset that, by its second head of claim, the applicant requests that the Court order the publication of the mark applied for in respect of all the goods and services covered, including those described in paragraph 3 above. In that regard, it is sufficient to state that, when exercising judicial review of legality under Article 263 TFEU, the Court does not have the jurisdiction to issue directions to European Union institutions, bodies, offices and agencies (see orders of 22 September 2016, Gaki v Commission, C‑130/16 P, not published, EU:C:2016:731, paragraph 14 and the case-law cited, and of 19 July 2016, Trajektna luka Split v Commission, T‑169/16, not published, EU:T:2016:441, paragraph 13 and the case-law cited).
11 According to settled case-law, in an action before the EU judicature against a decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of the EU judicature. Accordingly, it is not for the Court to issue directions to EUIPO. It is for the latter to draw the appropriate inferences from the operative part and grounds of the judgments of the Court (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited, and order of 25 June 2019, Eaglestone v EUIPO – Eaglestone (EAGLESTONE), T‑82/19, not published, EU:T:2019:484, paragraph 18 and the case-law cited).
12 It follows that the second head of claim in the application, by which the applicant requests that the Court issue directions to EUIPO, must be rejected on the ground that the Court does not have the jurisdiction to take cognisance of it.
13 Furthermore, it must be pointed out that the applicant states, in the application, that it maintains all of the arguments which it has submitted previously, which may be understood as a general reference to the written pleadings submitted in the proceedings before EUIPO. In that regard, it must be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and to Article 177(1)(d) of the Rules of Procedure of the General Court, an application must contain the pleas in law and arguments relied on and a summary of those pleas in law. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to rule on the action, if necessary without any other supporting information (see judgment of 22 June 2017, Biogena Naturprodukte v EUIPO (ZUM wohl), T‑236/16, EU:T:2017:416, paragraph 11 and the case-law cited).
14 Consequently, the application, in so far as it refers generally to the written submissions filed before EUIPO, is inadmissible to the extent that the general reference which it contains cannot be linked to the pleas and arguments put forward in that application itself (see, to that effect, judgment of 22 June 2017, ZUM wohl, T‑236/16, EU:T:2017:416, paragraph 12 and the case-law cited).
Substance
15 The applicant puts forward, in essence, two pleas in law, alleging, first, infringement of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, and, secondly, failure to comply with the principles of legal certainty and equal treatment. It submits, in essence, that the mark applied for has sufficient distinctive character to be capable of being registered in respect of the goods and services which have been referred to in paragraph 3 above and that a decision to the contrary would be at variance with EUIPO’s previous practice.
The first plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation
16 The first plea in law consists of three complaints, according to which, first, the Board of Appeal erred in concluding, on the basis of unsubstantiated or incorrect findings concerning endurance sports, that the mark applied for had no distinctive character with regard to the goods and services in question. That assertion on the part of the applicant is supported by the complaints that, secondly, the figurative elements of that mark are not negligible and that, thirdly, the term ‘endurance’ is not merely promotional or laudatory.
17 EUIPO disputes the applicant’s arguments.
18 Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered. Pursuant to Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
19 For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods and services in respect of which registration is sought as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see, to that effect, judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
20 The distinctive character of a mark, for the purposes of Article 7(1)(b) of Regulation 2017/1001, must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
21 The notion of public interest underlying Article 7(1)(b) of Regulation 2017/1001 is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the product or service covered by the mark to the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, to that effect, judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 48).
22 The registration of marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks is not excluded by virtue of such use (judgment of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraph 41).
23 As regards the assessment of the distinctive character of such marks, the Court of Justice has held that it is inappropriate to apply to those marks criteria which are stricter than those applicable to other types of sign (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36, and of 22 March 2017, Hoffmann v EUIPO (Genius), T‑425/16, not published, EU:T:2017:199, paragraph 27).
24 It is apparent from the case-law that, although all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, they can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, require at least some interpretation by the relevant public or set off a cognitive process in the minds of that public (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57, and of 22 March 2017, Genius, T‑425/16, not published, EU:T:2017:199, paragraph 28).
25 It follows that a trade mark consisting of an advertising slogan must be regarded as being devoid of any distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (judgments of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, not published, EU:T:2013:303, paragraph 24, and of 22 March 2017, Genius, T‑425/16, not published, EU:T:2017:199, paragraph 29).
26 For a finding that there is no distinctive character, it is sufficient that the semantic content of the word sign in question indicates to the consumer a characteristic of the goods or services which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or services (see judgments of 12 March 2008, Suez v OHIM (Delivering the essentials of life), T‑128/07, not published, EU:T:2008:72, paragraph 20 and the case-law cited, and of 17 April 2008, Nordmilch v OHIM (Vitality), T‑294/06, not published, EU:T:2008:116, paragraph 23 and the case-law cited). In addition, the mere fact that the semantic content of the word sign applied for does not convey any information about the nature of the goods concerned is not sufficient to make that sign distinctive (see, to that effect, judgment of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 31 and the case-law cited).
27 In that context, account must also be taken of the fact that, as is apparent from well-established case-law, the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers or a more attentive public made up of specialists or circumspect consumers (see, to that effect, judgment of 29 January 2015, Blackrock v OHIM (INVESTING FOR A NEW WORLD), T‑59/14, not published, EU:T:2015:56, paragraph 27 and the case-law cited).
28 Furthermore, even if the sign applied for is not descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, that fact does not automatically mean that it is distinctive for the purposes of Article 7(1)(b) of that regulation. Distinctive character may also be lacking if the relevant public cannot perceive in that sign an indication of the commercial origin of the goods (see judgment of 9 October 2002, Dart Industries v OHIM (UltraPlus), T‑360/00, EU:T:2002:244, paragraph 30 and the case-law cited).
29 In the first place, as regards the relevant public, the Board of Appeal found, in essence, in paragraphs 22 and 25 of the contested decision, that the relevant public was the English-speaking public in the European Union, which consisted in part of the general public which was interested in sports and in part of a professional public which was involved in sporting activities. There is no need to call those findings, which are not, moreover, disputed by the applicant, into question.
30 In the second place, as regards the meaning of the mark applied for, the Board of Appeal, first of all, found, in paragraphs 28 to 30 of the contested decision, that the sign applied for consisted of ‘a figurative mark containing a slightly stylised representation of the verbal element “endurance”’. Next, the Board of Appeal pointed out that, according to the Merriam-Webster online dictionary, the term ‘endurance’ is an ordinary English word which means, inter alia, ‘the ability to withstand hardship or adversity [and,] especially, the ability to sustain a prolonged stressful effort or activity’. Lastly, the Board of Appeal stated that, in relation to physical exertion by humans, particularly in sports, that word was used to denote the individual’s ability to exert him- or herself for a long period of time. There is no need to call those findings, which are not, moreover, disputed by the applicant, into question.
31 In the third place, as regards the relationship between the meaning of the mark applied for and the goods and services covered by that mark, first of all, the Board of Appeal concluded, in paragraph 30 of the contested decision, that the term ‘endurance’ was used to denote specific sports which are particularly demanding in terms of difficulty, stamina, strength requirements and duration (such as, for example, ‘endurance racing’, ‘endurance cycling’ and ‘endurance training’), which led it to find that the term ‘endurance’ was closely linked to sporting activities. The Board of Appeal thus concluded, in paragraphs 33 and 34 of that decision, that, taking into account that the goods and services covered by that mark might be used in the context of sporting activities or endurance sporting activities, the English-speaking general public as well as the professional public would immediately and without further reflection understand that the term ‘endurance’, which was a common English word, merely served to highlight the positive aspects of those goods, which were designed to be resistant and to endure in the context of sporting activities, and of those services, which were aimed at providing the goods concerned. Consequently, the Board of Appeal found that the relevant public would not tend to perceive any particular indication of commercial origin in the mark applied for beyond the promotional information conveyed.
32 Next, the Board of Appeal ascertained whether that finding was called into question by the graphic representation of the mark applied for, stating, in paragraph 36 of the contested decision, that the decisive question in that regard was whether the figurative elements changed, from the relevant public’s point of view, the meaning of that mark in relation to the goods or services concerned.
33 Lastly, the Board of Appeal concluded that the upper-case font used in the mark applied for was rather standard and commonplace. Consequently, the Board of Appeal found that the stylisation of the word element was insufficient to confer on that mark the minimum degree of distinctiveness necessary. According to the Board of Appeal, that mark did not therefore contain any figurative element which could be considered to be distinctive, individually or together with the word element, with the result that none of the elements present in that mark were capable of distracting the consumer from the message conveyed by the term ‘endurance’, a word which was composed in accordance with the rules of English grammar and would be directly and immediately perceived by the relevant public as promotional when that public was faced with the sign. Consequently, the Board of Appeal concluded that the mark applied for did not enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods and services concerned.
34 By the first complaint, the applicant submits, first, that the Board of Appeal erred in finding that the mark applied for was devoid of any distinctive character in the light of its alleged descriptiveness, the Board of Appeal having, in the applicant’s view, based its assessment on the lexical definition of the term ‘endurance’, which describes the qualities of the goods and services covered as being more resistant, sturdy, durable or capable of enduring. In so doing, the Board of Appeal referred to characteristics of human beings practising endurance sports rather than to characteristics of the goods and the services, which are aimed at providing those goods, covered by that mark.
35 Secondly, the applicant takes the view that the Board of Appeal based its assessment on its own arbitrary categorisation of sporting activities, defined as ‘endurance sports’, which were deemed to involve the cardiovascular and mental attributes of human beings, without providing any proof or substantiation whatsoever of the view that that definition of ‘endurance sports’ was understood by the relevant public, or even existed. It submits that, on that basis, the Board of Appeal analysed the distinctiveness of the mark applied for in relation to those sporting activities rather than in relation to the goods covered by that mark, namely sports clothing and sports equipment. It contends that the possible and ill-defined descriptive connotations for consumers which arise out of that analysis do not form a sufficiently clear link with those goods or with those services, which are aimed at providing those goods. It argues that that situation is identical to those censured by the Court in its judgments of 25 June 2020, Off-White v EUIPO (OFF-WHITE) (T‑133/19, not published, EU:T:2020:293), and of 9 June 2021, Philip Morris Products v EUIPO (SIENNA SELECTION) (T‑130/20, not published, EU:T:2021:341).
36 At the hearing, the applicant confirmed, in essence, that, in its view, the Board of Appeal appeared to be holding fast to the concept of the descriptiveness of the mark applied for, because the analysis which it carried out led to the conclusion that there was a description of the goods covered by that mark. In that regard, it submitted that the Board of Appeal referred to other terms which are not relevant in the present case, such as ‘resistant’, ‘sturdy’ or ‘durable’, while concluding that the term ‘endurance’ was a promotional message. According to the applicant, that allusion to terms other than that of ‘endurance’ is an error, because it is unlikely that the consumer will think of the resistance or sturdiness of the goods covered by the mark applied for when he or she perceives that mark.
37 EUIPO disputes the applicant’s arguments.
38 First of all, it must be stated, as regards the applicant’s first argument, that the Board of Appeal clearly identified, in paragraphs 10, 12 et seq. of the contested decision, the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 as being the only ground justifying the partial refusal of the registration which had been applied for in the present case. In that regard, it must be observed, as EUIPO correctly pointed out, that the Board of Appeal made it clear, in paragraph 34 of that decision, that the crucial question was whether consumers would perceive the mark applied for as being capable of indicating that the goods and services covered had a particular commercial origin. It is therefore apparent from the foregoing that the Board of Appeal adopted reasoning relating solely to the analysis of the distinctive character of the mark applied for, without in any way referring to the possible descriptiveness of that mark.
39 Next, it is important to point out that the definition of the term ‘endurance’, as reproduced in paragraph 30 above, includes both the resistance of objects and that of living beings, in particular human beings. That conclusion is also apparent, a fortiori, from the case-law according to which the term ‘endurance’ refers to ‘the ability of a person or a thing to withstand adversity and strain’ (judgment of 23 April 2013, Apollo Tyres v OHIM – Endurance Technologies (ENDURACE), T‑109/11, not published, EU:T:2013:211, paragraph 63). It follows that ‘the ability to withstand hardship or adversity [and,] especially, the ability to sustain a prolonged stressful effort or activity’ encompasses both the endurance of the goods covered by that mark and that of the relevant public in the present case.
40 Lastly, in the light of the foregoing, it must be stated that, by its first argument, the applicant confuses the description of the established qualities of the goods concerned and the promotion of those qualities by means of a promotional term or expression, while alleging that the Board of Appeal confused them in the same way in the contested decision. In this connection, it must be stated that, at the hearing, the applicant confirmed, in essence, that there was a difference between the promotion and the description of a product, because, although a promotional message is open to interpretation, that is not the case with regard to an objective descriptive message ‘within the meaning of the law’.
41 In that regard, it must be held that the Board of Appeal was right in finding that the term ‘endurance’ conveyed a promotional message with regard to the goods and the services, which are aimed at providing those goods, covered by the mark applied for, a message which is understood, as such, without any effort on the part of the relevant public. Although the term ‘endurance’ does not describe the specific qualities of those goods, because those specific qualities have not been objectively established with certainty, that term strongly, and without any effort being required to understand it, suggests to the relevant public that those goods will, without difficulty, withstand an intense sporting activity or a prolonged stressful effort. In accordance with the case-law cited in paragraph 26 above, for a finding that there is no distinctive character, it is therefore sufficient that the semantic content of the sign in question indicates to the consumer a characteristic of the goods or services which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods and services in question. Likewise, contrary to what the applicant claims, in accordance with the case-law cited in paragraph 28 above, although the mark applied for is not descriptive, that fact does not automatically mean that it is distinctive.
42 In that context, it must be stated that the mark applied for consists solely of an ordinary laudatory indication that the goods covered are desirable for enthusiasts of specific training or sports enthusiasts in general, whether or not that training or those sports are endurance training or endurance sports, which invariably presupposes that those goods have certain qualities which determine that desirability, in particular their ability, which is assumed and open to interpretation by the relevant public, to withstand sustained physical activity without difficulty. That mark thus consists only of an incitement to purchase those goods via a banal advertising message, the content of which is clear and which has no semantic depth, namely that they are desirable for those who practise sports. It is therefore clearly likely to be perceived by the relevant public only as a mere promotional formula and not as an indication of the commercial origin of those goods. Since the services covered are closely related to the goods at issue and incite consumers to purchase them for the same reasons of desirability, that finding also applies to those services.
43 Consequently, the Board of Appeal was right in referring to the characteristics of the goods concerned which are promoted by the term ‘endurance’, by concluding, in paragraphs 32 and 33 of the contested decision, that, in the context of sporting activities or endurance sports, consumers will perceive the mark applied for only as mere promotional information regarding the goods in Classes 9, 25 and 28 ‘(gloves, protective helmets, gymnastic articles, etc.)’, which simply incites consumers to purchase those goods by suggesting that they are more resistant, sturdy and durable, but will not perceive that mark as an indication of the commercial origin of those goods. As regards the retail and wholesale services in Class 35, the Board of Appeal was right in finding that they were aimed at providing those goods and that that same incitement to purchase would also be perceived with regard to them.
44 It follows that the applicant’s first argument must be rejected as unfounded.
45 Likewise, it is also necessary to reject the applicant’s second argument regarding the lack of any indication that endurance sports exist, since the existence of those sports can reasonably be deduced from the general nature of the term ‘endurance’. In that regard, the Board of Appeal stated that they include, for example, ‘endurance racing’, ‘endurance cycling’ or ‘endurance training’, which is sufficient to understand that what is involved are, generally speaking, sports which require physical, mental and material resilience because of the effort necessary in practising them or the duration of that practice. Consequently, in the light of the general nature of the term ‘endurance’ and of the examples given by the Board of Appeal, the argument that there is no proof that endurance sports exist cannot succeed. Furthermore, it must be pointed out that the Board of Appeal did not from beginning to end make up a new random category of sports, but found that the sporting practices mentioned by way of example, taken together, can be designated as coming, generally, within the scope of endurance sports.
46 In addition, as regards the criticism that the Board of Appeal analysed the distinctive character of the mark applied for by reference to sporting activities rather than by reference to the goods and services concerned, it must be borne in mind that, in accordance with the case-law which has been cited in paragraph 20 above, the distinctive character of that mark must be assessed both by reference to those goods and services and by reference to the perception of the relevant public. However, since the relevant public consists of the general public which is interested in sports and of the professional public which is involved in sporting activities, the perception of that public must be examined, as the Board of Appeal correctly did, by taking into account the context in which that perception is formed, that is to say, in the context of sporting activities or endurance sports, since each of those activities requires a certain endurance both on the part of the sportsmen or sportswomen and on the part of their sports equipment.
47 Accordingly, it must also be pointed out that, in the present case, what is involved is not a possible and ill-defined descriptive connotation with regard to the goods and services covered by the mark applied for, as the applicant claims, but the finding that there is direct promotion which does not require any reflection on the part of the relevant public in order for a clear link with those goods and services, which have been referred to in paragraph 3 above, to be established in the context of their use.
48 Furthermore, it must be stated, as observed by EUIPO, that the factual and legal context of the present case differs from that of the cases which gave rise to the judgments of 25 June 2020, OFF-WHITE (T‑133/19, not published, EU:T:2020:293), and of 9 June 2021, SIENNA SELECTION (T‑130/20, not published, EU:T:2021:341), in which the Board of Appeal had based its reasoning solely on the alleged descriptiveness of the signs and had not provided an analysis which went beyond that reasoning in the context of its examination with regard to Article 7(1)(b) of Regulation 2017/1001. Those cases cannot therefore usefully be relied on in the circumstances of the present case.
49 Consequently, contrary to what the applicant claims by its first complaint, the Board of Appeal’s finding that the mark applied for is devoid of any distinctive character is based not only on the fact that it has a clear promotional meaning in the context of the use of the goods and services concerned, but also on the fact that the semantic content of the term ‘endurance’, by suggesting the superior quality of those goods and services, is intended solely to incite consumers to purchase those goods and services and not to indicate their origin.
50 It follows that the applicant’s second argument and, therefore, the first complaint in its entirety, must be rejected as unfounded.
51 By its second complaint, the applicant submits, first, that, in the contested decision, the mark applied for was not regarded as a figurative mark, but rather as a word mark and, moreover, that, even though the examiner and the Board of Appeal actually ruled on the figurative mark applied for, the conclusion drawn is overly biased towards confirming the examiner’s initial refusal on the basis, which was ultimately rejected, that it was a descriptive word mark (see paragraph 4 above). Secondly, the applicant submits that the minimum threshold of distinctiveness required to allow the registration of a figurative mark is comparatively lower when the word element is defined by EUIPO as being non-descriptive. In support of its assertion, the applicant relies on EUIPO’s previous practice.
52 EUIPO disputes the applicant’s arguments.
53 In the present case, first, it must be pointed out that, as regards the applicant’s first argument, the applicant misreads the contested decision, since it is clear from paragraphs 35 to 41 of that decision that the Board of Appeal examined the mark applied for as being a figurative mark. As has already been stated in paragraph 33 above, the Board of Appeal reached the conclusion that, in the present case, the mark applied for did not contain any embellishing feature that would make it stand out as a trade mark and therefore found that it was incapable of performing the essential function of a trade mark.
54 In that regard, it must be stated that the applicant does not explain in what way the font of the term ‘endurance’ is capable of being regarded as distinctive, individually or together with that term, or on what basis and why that font could distract the consumer from the message conveyed by the word element of the mark applied for. At the hearing, the applicant was asked to develop its argument and, on that occasion, replied that, in view of the fact that the mark applied for was not descriptive, the question of whether the relevant public’s attention was distracted by the figurative element should not even have arisen. Nevertheless, according to the applicant, the mark applied for is sufficiently stylised for it to be capable of being registered, even though ‘it is not the most stylised mark in the world’.
55 Consequently, even though the applicant rightly submits that, in accordance with settled case-law, a minimum degree of distinctive character is sufficient to avoid the absolute ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001, in the present case, it must be held that that minimum degree has not been reached with regard to the goods and the services, which are aimed at providing those goods, covered by the mark applied for. The font used, which is one of the standard or basic fonts, and likewise the way in which it is written, do not make the term ‘endurance’ illegible or difficult to read and do not therefore distract the consumer from the message conveyed by that term.
56 In any event, the figurative aspect of the mark applied for is not capable, precisely on account of its banality, of attracting the relevant consumer’s attention and making him perceive the sign as an indication of commercial origin. In that commonplace graphic presentation, the mark applied for is, on the contrary, likely to be perceived merely as promotional and advertising information which is intended to inform the public of the characteristics of the goods in question which are being promoted (see, to that effect, judgment of 12 November 2014, Murnauer Markenvertrieb v OHIM (NOTFALL CREME), T‑504/12, not published, EU:T:2014:941, paragraph 40).
57 The applicant’s first argument must therefore be rejected as unfounded.
58 Secondly, it must be pointed out, as observed by EUIPO, that, as regards its second argument, the applicant has in no way substantiated the claim that the minimum threshold for a figurative mark is comparatively lower when the word element is defined by the Board of Appeal as being non-descriptive. At the hearing, the applicant was asked to clarify its comments in that regard, but it replied that it was not able to give precise reasons in support of its claim, although, in its opinion, it would be very difficult to find that there was no distinctive character if the mark was not descriptive.
59 The applicant confines itself to claiming, in essence, that, in an earlier decision of the Board of Appeal, the Board of Appeal found that, since the word element was not descriptive and no other valid ground for concluding that the mark applied for lacked distinctive character had been presented to the Board of Appeal or found to exist by the Board of Appeal, the examiner had erred in refusing to approve of and publish the registration of the mark applied for. It must be stated that the present case differs from the situation described by the applicant given that, in the present case, the word element was considered to be promotional, which is not apparent from the earlier decision relied on by the applicant in paragraph 42 of the application, according to which no other valid ground had been presented to the Board of Appeal. However, in the present case, the promotional nature of the term ‘endurance’ was an additional reason for refusing registration, once its descriptiveness, with regard to which the examiner had initially been unsure, as has been stated in paragraph 4 above, had been ruled out.
60 Consequently, in the light of the lack of precision of the applicant’s line of argument and the irrelevance of previous practice of EUIPO on which the applicant relies, it must be held that the applicant’s second argument and, consequently, its second complaint, must be rejected as unfounded.
61 By its third complaint, the applicant submits that the term ‘endurance’ was incorrectly categorised as being merely or solely promotional, because the Board of Appeal attached too much importance to the examiner’s initial objection based on descriptiveness, even though the examiner had withdrawn that objection. The applicant therefore draws the Court’s attention to its case-law regarding messages which are, in the applicant’s view, promotional or laudatory messages, stating that, in the applicant’s view, the Board of Appeal’s reasoning in the present case is identical to that which was censured by the annulment of the contested decision in the case which gave rise to the judgment of 14 July 2021, Victoria’s Secret Stores Brand Management v EUIPO – Yiwu Dearbody Cosmetics (BODYSECRETS) (T‑810/19, not published, EU:T:2021:460).
62 EUIPO disputes the applicant’s arguments.
63 First of all, it is necessary to reject the applicant’s first argument relating to the taking into account of the examiner’s objection based on the descriptiveness of the term ‘endurance’, an objection which was subsequently withdrawn (see paragraph 4 above). As has been stated in paragraph 38 above, the Board of Appeal carried out its analysis solely with regard to the absolute ground which is set out in Article 7(1)(b) of Regulation 2017/1001 and relates to the distinctive character of the mark applied for. Consequently, although, as in the present case, the mark applied for was regarded as conveying only a clear promotional message, which merely serves to highlight the positive aspects of the goods and the services, which are aimed at providing those goods, concerned in the present case and to incite consumers to purchase them, that was manifestly on account of, first, the context of the practice of sports or endurance sports in which those goods and services designated by the term ‘endurance’ are used and promoted and, secondly, on account of the lack of other word or figurative elements which serve to distract the relevant public’s attention from the direct promotional message, as has already been stated in paragraph 55 above.
64 Next, it must be stated in that regard, as observed by EUIPO, that the applicant merely cites the Court’s settled case-law, without, however, specifying the specific reasons why the mark applied for, despite its obvious promotional message, should possess a certain originality or resonance, require at least some interpretation by the relevant public or set off a cognitive process in the minds of that public, as required by the case-law cited by the applicant in paragraphs 46 to 50 of its application (see also paragraphs 24 and 25 above).
65 The first argument must therefore be rejected as unfounded.
66 Lastly, as regards the judgment of 14 July 2021, BODYSECRETS (T‑810/19, not published, EU:T:2021:460), which the applicant refers to in the context of its second argument, it must be stated that the factual situation in that judgment is different from that in the present case. First, it is apparent from the passages cited by the applicant that the Court found that the terms ‘body’ and ‘secrets’, in their usual meaning, are not laudatory references to superior quality, which has the consequence that the relevant public, when faced with the goods at issue, will not immediately understand the mark in question as referring to hidden tips for improving physical appearance. However, the situation in the present case is different, because the term ‘endurance’ used generally, but above all in the context of sporting practices, is obviously laudatory and the relevant public, when faced with the goods and services in question, will clearly and unambiguously understand that word as promoting the superior qualities of those goods and those services, which are aimed at providing those goods, and as inciting consumers to purchase them. It follows that the case-law cited by the applicant cannot be applied in the present case.
67 It must be therefore be held that the applicant’s second argument and, consequently, its third complaint, must be rejected as unfounded.
68 It follows from the foregoing that the first plea must be rejected as unfounded.
The second plea, alleging infringement of the principles of legal certainty and equal treatment
69 By its second plea, the applicant submits, in essence, that the Board of Appeal infringed the principles of legal certainty and equal treatment, because the contested decision is at variance with EUIPO’s previous practice.
70 The applicant claims that the Board of Appeal infringed its obligation to exercise its powers in accordance with the general principles of equal treatment and sound administration. In particular, it alleges that the Board of Appeal did not duly take account of EUIPO’s decision of 19 January 2022 authorising the registration of the EU figurative mark ‘ENDURANCE’ (No 018603052) in respect of ‘clothing’ in Class 25, which is already the subject of oppositions filed on the basis of the earlier registrations of the EU figurative marks ENDURANCE+ (No 016494239) and E ENDURANCE (No 018253166), both of which are registered in respect of, inter alia, clothing, footwear and headgear in Class 25. The applicant therefore takes the view that it is the only entity which has, ‘in recent times’, been unable to obtain the registration of its own mark containing the word ‘endurance’, which marks a break with EUIPO’s earlier decision-making practice, of which the three marks referred to above are the expression.
71 At the hearing, the applicant submitted a decision of the Opposition Division of EUIPO of 7 March 2023 in which it was found that the application for registration of the EU figurative mark ENDURANCE (No 018603052) created a likelihood of confusion with an earlier mark, and requested that that decision be placed on the file in respect of the proceedings before the Court. The applicant stated on that occasion that it wished to show, by means of that reference to EUIPO’s decision-making practice, that not only had other undertakings registered a trade mark ENDURANCE in the European Union, but that, on that basis, they had prevented their competitors from doing so and thus from using a mark consisting of the term ‘endurance’. According to the applicant, it follows that, for EUIPO, an EU trade mark consisting of the term ‘endurance’ is not only registrable, but also entitled to protection, except when the applicant is concerned.
72 EUIPO commented at the hearing on the admissibility of the document submitted by the applicant and, without formally objecting to its being placed on the file, expressed considerations relating to the belated nature of the submission of that document.
73 Although it was submitted for the first time at the hearing before the Court, that decision does not, strictly speaking, constitute evidence, within the meaning of Article 85 of the Rules of Procedure, as the applicant, moreover, contended at the hearing, but relates to EUIPO’s decision-making practice, to which, even if it postdates the procedure before EUIPO, a party has the right to refer for the first time before the Court. Neither the parties nor the Court itself can be precluded from drawing on the case-law or national decision-making practice for the purposes of interpreting EU law. Consequently, the decision of the Opposition Division of 7 March 2023, which was submitted at the hearing, may be taken into consideration (see, to that effect, judgments of 9 February 2017, International Gaming Projects v EUIPO – adp Gauselmann (TRIPLE EVOLUTION), T‑82/16, not published, EU:T:2017:66, paragraphs 17 to 19 and the case-law cited, and of 13 June 2019, MPM-Quality v EUIPO – Elton Hodinářská (MANUFACTURE PRIM 1949), T‑75/18, not published, EU:T:2019:413, paragraphs 20 and 21 and the case-law cited).
74 In the present case, it is apparent from the examination of the first plea in law that the Board of Appeal was right in finding, on the basis of a diligent and full examination and taking into account the perception of the relevant public and the goods and services covered by the mark applied for in the context of their use, that that mark was caught by the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001, with the result that the applicant cannot usefully rely, for the purposes of casting doubt on that finding, on previous decisions of EUIPO. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77 and the case-law cited).
75 In that regard, it must be borne in mind that, according to settled case-law, the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).
76 Likewise, it must be pointed out that, in any event, respect for the principle of equal treatment must be consistent with respect for the principle of legality. The application does not contain any argument against the Board of Appeal’s finding, in paragraph 46 of the contested decision, that a person who files an application for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76 and the case-law cited).
77 Moreover, it must be pointed out that, in order to illustrate EUIPO’s alleged decision-making practice which the Board of Appeal allegedly disregarded, the applicant confines itself to relying on the three marks which have been referred to in paragraph 70 above. However, EUIPO’s favourable opinion as regards the registration of those marks, with regard to the absolute grounds for refusal set out in Article 7 of Regulation 2017/1001, gave rise only to decisions of examiners and the Boards of Appeal cannot, in any event, be bound by the decisions of lower-ranking adjudicating bodies of EUIPO (see, to that effect, judgments of 22 May 2014, NIIT Insurance Technologies v OHIM (EXACT), T‑228/13, not published, EU:T:2014:272, paragraph 48, and of 4 July 2018, Deluxe Entertainment Services Group v EUIPO (deluxe), T‑222/14 RENV, not published, EU:T:2018:402, paragraph 71).
78 Furthermore, as regards the decision of the Opposition Division which the applicant submitted at the hearing, it must be stated that, apart from the fact it concerns opposition proceedings, which cannot influence the assessment of the absolute ground precluding registration of the mark applied for, that decision postdates the contested decision, with the result that it cannot have an effect on the legality of that decision.
79 In addition, it must be stated that the figurative aspects of the marks ENDURANCE+ (registered under the number 016494239) and E ENDURANCE (registered under the number 018253166) are not comparable with that of the mark applied for in the present case.
80 Consequently, it must be held that the applicant’s second plea must be rejected as ineffective.
81 In view of all of the foregoing considerations, the action must be dismissed.
82 In the light of the dismissal of the action, it is important to point out that only the operative part of the contested decision continues to govern the remittal to the examiner, which the Board of Appeal ordered in the second point of that operative part in order for the claims of acquired distinctiveness for the purposes of Article 7(3) of Regulation 2017/1001 to be ruled on. Since that remittal is still effective, given that the contested decision has been confirmed by the Court, it must be held that the applicant’s claim is fully satisfied by the contested decision, with the result that the applicant has no legal interest in bringing proceedings in order to request that remittal (see, to that effect, judgment of 6 April 2022, Funline International v EUIPO (AMSTERDAM POPPERS), T‑680/21, not published, EU:T:2022:216, paragraphs 18 and 19). It follows that the applicant’s fourth head of claim, by which it requests that the Court, if it reaches the same conclusion as EUIPO refusing registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above, remit the case to the examiner, must be rejected as inadmissible.
Costs
83 Under Article 134(1) of the Rules of Procedure, 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, and having regard to the fact that a hearing was convened, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Sports Group Denmark A/S to pay the costs.
Costeira | Kancheva | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 18 October 2023.
V. Di Bucci | | M. van der Woude |