JUDGMENT OF THE GENERAL COURT (Third Chamber)
20 December 2023 (*)
(EU trade mark – International registration designating the European Union – Figurative mark my mochi – Absolute ground for refusal – No distinctive character – Promotional slogan – Article 7(1)(b) and (2) of Regulation (EU) 2017/1001)
In Case T‑189/23,
The Mochi Ice Cream Company LLC, established in Vernon, California (United States), represented by A. Zalewska-Orabona, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,
defendant,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, G. Steinfatt (Rapporteur) and D. Kukovec, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, The Mochi Ice Cream Company LLC, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 January 2023 (Case R 1684/2022-2) (‘the contested decision’).
Background to the dispute
2 On 22 April 2021, the applicant obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1598762 designating the European Union in respect of the following figurative mark:
3 The goods in respect of which protection in the European Union was sought are in Class 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Ice cream; frozen confections; non-dairy frozen confections; vegan frozen confections’.
4 On 24 June 2021, EUIPO received notification of the international registration at issue, pursuant to the fourth sentence of Article 3(4) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22), as amended on 12 November 2007.
5 On 22 July 2021, the examiner issued a provisional refusal of protection in the European Union of the mark registered in the international register in respect of all the goods referred to in paragraph 3 above, on the basis of Article 7(1)(b) and (2) 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), in accordance with Article 193 of that regulation.
6 By decision of 30 June 2022, following the observations submitted by the applicant on 19 November 2021, the examiner confirmed the refusal of protection of the mark at issue in respect of all the goods covered.
7 On 29 August 2022, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, read in conjunction with Article 193(6) of that regulation, against the examiner’s decision.
8 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark at issue was devoid of any distinctive character. It found that the expression ‘my mochi’ was a promotional formula and that the stylised elements of the sign at issue were negligible and did not confer any distinctive character on that mark.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
10 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
11 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, in so far as the Board of Appeal found that the mark at issue was devoid of any distinctive character in respect of the goods referred to in paragraph 3 above.
12 That single plea consists of two parts, alleging, first, an incorrect assessment of the word element in the mark at issue with regard to the goods covered and, secondly, an incorrect assessment of the graphic representation of that mark.
The first part of the single plea, alleging an incorrect assessment of the word element of the mark at issue with regard to the goods covered
13 The applicant submits that the Board of Appeal erred in its assessment of the word element in the mark at issue with regard to the goods covered. It argues that, since those goods are not mochi cakes, the mark at issue has a certain originality and ambiguity, which will set off a cognitive process in the minds of the relevant public. It contends that the mere fact that it may use mochi dough as an ingredient for some of its goods does not render the mark at issue non-distinctive.
14 It claims that the Board of Appeal erred in finding, in paragraph 23 of the contested decision, that the expression ‘my mochi’ constituted a purely promotional statement. It submits that, since the international registration does not cover mochi cakes, the expression ‘my mochi’ does not contain any element which is capable of conveying a promotional message and should therefore be regarded as fanciful.
15 EUIPO disputes the applicant’s arguments.
16 Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered. Under 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. Those principles also apply, according to Article 189(1) of Regulation 2017/1001 and Article 193(1) of that regulation, mutatis mutandis to international registrations designating the European Union.
17 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 relevant public’s perception of the mark (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). 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 in respect of which registration is applied for as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
18 The applicant does not dispute the Board of Appeal’s findings that the relevant public is the general public with an average level of attention and that it was appropriate to confine the assessment to the general public in Ireland and Malta, which is English-speaking, and to the general public in Denmark, Sweden, Finland, the Netherlands and Cyprus, which has at least a basic understanding of English.
19 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 (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 35; of 22 March 2017, Hoffman v EUIPO (Genius), T‑425/16, not published, EU:T:2017:199, paragraph 26; and of 1 February 2023, Groschopp v EUIPO (Sustainability through Quality), T‑253/22, not published, EU:T:2023:29, paragraph 22).
20 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, Genius, T‑425/16, not published, EU:T:2017:199, paragraph 27). Accordingly, a minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 inapplicable (see judgment of 6 October 2021, Kondyterska korporatsiia ‘Roshen’ v EUIPO – Krasnyj Octyabr (Representation of a lobster), T‑254/20, not published, EU:T:2021:650, paragraph 116 and the case-law cited; judgment of 1 February 2023, Sustainability through Quality, T‑253/22, not published, EU:T:2023:29, paragraph 23).
21 However, it is apparent from the case-law that, although the criteria for the assessment of distinctive character are the same for different categories of marks, the relevant public’s perception is not necessarily the same in relation to each of those categories and that it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 37 and the case-law cited; judgment of 25 May 2016, U-R LAB v EUIPO (THE DINING EXPERIENCE), T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 47).
22 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 (judgments of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, not published, EU:T:2013:303, paragraph 25, and of 22 March 2017, Genius, T‑425/16, not published, EU:T:2017:199, paragraph 29). In particular, that is so where a sign indicates to the consumer a characteristic of the goods or services covered by that sign which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive as such, rather than as an indication of the commercial origin of the goods or services (judgments of 17 March 2016, Mudhook Marketing v OHIM (IPVanish), T‑78/15, not published, EU:T:2016:155, paragraph 25; of 14 July 2016, Volkswagen v EUIPO (ConnectedWork), T‑491/15, not published, EU:T:2016:407, paragraph 32; and of 1 February 2023, Sustainability through Quality, T‑253/22, not published, EU:T:2023:29, paragraph 27). Since the relevant public is not very attentive if a sign does not immediately indicate to it the origin or intended use of that which it wishes to purchase, but just gives it purely promotional, abstract information, it will not take the time either to enquire into the various possible functions of the expression or to memorise it as a trade mark (see judgment of 12 July 2023, Fibrecycle v EUIPO (BACK-2-NATURE), T‑772/22, not published, EU:T:2023:394, paragraph 54 and the case-law cited).
23 In paragraph 23 of the contested decision, the Board of Appeal found that the expression ‘my mochi’ constituted a purely promotional statement to the consumer, indicating that the goods being promoted could be customised and that they contained mochi dough. According to the Board of Appeal, the combination of a possessive pronoun with the name of a product is a formula that is customary in advertising and indicates that the offer is tailored to the customer’s individual tastes and preferences.
24 In that regard, the applicant is right in pointing out that, in so far as the relevant public perceives the mark at issue as an indication of the commercial origin of the goods which it covers, the fact that it is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character (see, to that effect, judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 45; of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 30; and of 1 February 2023, Sustainability through Quality, T‑253/22, not published, EU:T:2023:29, paragraph 26).
25 However, the average consumer is not in the habit of making assumptions about the origin of goods on the basis of slogans (see judgment of 25 May 2016, THE DINING EXPERIENCE, T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 78 and the case-law cited; judgment of 1 February 2023, Sustainability through Quality, T‑253/22, not published, EU:T:2023:29, paragraph 24).
26 For the relevant public in the present case, the mark at issue is not likely, in the light of the goods concerned, to have several meanings. It does not constitute a play on words nor is it fanciful. It does not give rise to a cognitive process in the minds of the relevant public and will not require any interpretative effort. As EUIPO correctly points out, mochi must be regarded as confections which can also be sold in a frozen state, with the result that they fall under all the specifications of the goods covered by the mark at issue. Accordingly, when faced with that mark, the relevant public will understand that the goods in question contain or may contain mochi dough as an ingredient and that it is being invited to choose its favourite flavour and make its favourite product its own by purchasing it. The relevant public will therefore understand the sign at issue in the most obvious sense and will perceive it only as a mere promotional formula extolling the qualities of the goods concerned and not as a designation of their commercial origin.
27 As regards the applicant’s argument that it is not the list of ingredients which is decisive as regards whether or not a sign is distinctive, but the relevant consumers’ perception of the mark, it must be stated that, since the ingredients of a foodstuff play a role in characterising that foodstuff, the indication of such an ingredient creates a direct link with the goods at issue in the minds of the relevant public.
28 Moreover, the fact that a sign is devoid of any distinctive character in relation to only some of the goods or services within a category referred to as such in the application for registration does not preclude that application from being rejected, since otherwise nothing would prevent its proprietor from also using it for the goods or services within the category of goods covered by the registration in respect of which it does not have distinctive character (see judgment of 14 December 2011, Vuitton Malletier v OHIM – Friis Group International (Representation of a locking device), T‑237/10, not published, EU:T:2011:741, paragraph 32 and the case-law cited).
29 Consequently, given that ‘ice cream’ includes ice cream covered with mochi dough, the Board of Appeal was fully entitled to find that protection of the international registration in the European Union was precluded by the absolute ground of lack of any distinctive character in respect of all of the goods covered.
30 The first part of the single plea must therefore be rejected.
The second part of the single plea, alleging an incorrect assessment of the graphic representation of the mark at issue
31 The applicant submits that the figurative elements of the mark at issue, even if they are considered to be minimal or purely decorative, are sufficient for that mark to serve as an indication of origin.
32 It argues that the Board of Appeal did not correctly assess the impact of the stylisation and figurative elements of the mark at issue on the overall impression which it creates. It contends that that mark has a stylisation which has the effect of evoking an earlier mark owned by the applicant, namely international registration No 1371790 designating the European Union in respect of the mark MY/MO. It submits that the consumer will therefore associate it immediately with that earlier mark, the applicant and the goods in question.
33 EUIPO disputes the applicant’s arguments.
34 As regards the graphic representation of the sign at issue and its typography, it must be stated that they are not unusual and do not give the sign as a whole distinctive character. The sign at issue contains, as the Board of Appeal found in paragraph 27 of the contested decision, certain stylised elements, consisting of the words ‘my’ and ‘mochi’ written on separate lines in a specific font. However, that stylisation has only a negligible impact on the overall impression created by the mark at issue.
35 The visual specificities relied on by the applicant, such as the arrangement of the letters on two lines and the division of the letter ‘y’ into two parts in order to evoke an oblique line, are rather banal. In particular, the space between the two lines forming the letter ‘y’ is minimal, with the result that it does not prevent the consumer from immediately recognising that letter and he or she will see nothing unusual in it. Consequently, those elements are not capable of conferring distinctive character on the mark at issue.
36 The applicant’s argument that the consumer will make a link between the applicant, its earlier mark and the goods covered by the mark at issue also cannot succeed. The applicant has not established that that earlier mark is actually known to the relevant public. However, that knowledge is necessary for the relevant public to be able to make the link relied on by the applicant. The mere fact that the earlier mark was registered in the European Union in 2017 does not prove that consumers in the European Union are familiar with it.
37 It follows that the Board of Appeal did not make any error of assessment in finding that the mark at issue was devoid of any distinctive character.
38 That finding cannot be called into question by the applicant’s argument that the international registration has been registered in certain English-speaking countries outside the European Union, such as Australia and the United States, and that similar marks have also been accepted by EUIPO.
39 As regards the registration of that sign in third countries, it is sufficient to point out, as observed by EUIPO, that EUIPO is not bound by national decisions issued, in particular, in countries which are not part of the European Union and in which decisions are, a priori, subject to different rules. It is apparent from the case-law that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. Accordingly, EUIPO and the EU judicature are not bound by a decision given in a Member State, or even a third country, that the sign in question is registrable as a national trade mark. That is so even if such a decision was adopted under national legislation in a country belonging to the language area in which the word sign in question originated (see, by analogy, judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47 and the case-law cited).
40 Furthermore, as regards the registration of other signs in the European Union, it must be borne in mind that, in its review of legality, the Court is not bound by the decision-making practice of EUIPO (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 22 April 2008, Casa Editorial el Tiempo v OHIM – Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, not published, EU:T:2008:121, paragraph 48).
41 It is true that EUIPO is under a duty to exercise its powers in accordance with the principles of equal treatment and of sound administration (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 60). In the light of those principles, EUIPO must take into account the decisions which it has already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, since the way in which those principles must be applied must be consistent with respect for the principle of legality, which means that the examination of any trade mark application must be stringent and full and must be undertaken in each individual case (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 61).
42 However, in the present case, as is apparent from paragraphs 29 and 37 above, the Board of Appeal was fully entitled to find that the protection of the international registration of the mark at issue in the European Union was precluded by the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 and carried out a full examination in that regard, with the result that the applicant cannot usefully rely, for the purposes of casting doubt on that finding, on previous decisions of EUIPO.
43 Furthermore, the Board of Appeal stated that the marks referred to by the applicant differed from the mark at issue not only in their distinctive figurative elements, but also in a combination of words which was more vague, abstract or more evocative. It also observed that the goods covered by those marks were not necessarily similar to the goods covered by the international registration at issue.
44 It follows that the Board of Appeal considered with the especial care required whether it should decide in the same way or not. In that regard, it must be pointed out that it was not necessary for the Board of Appeal expressly to analyse the earlier marks one by one and to provide detailed arguments with regard to each of them. It is apparent from the case-law that the Board of Appeal is not obliged to express a view on every argument submitted by the parties, but that it is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see, to that effect, judgment of 29 November 2016, Chic Investments v EUIPO (eSMOKING WORLD) T‑617/15, not published, EU:T:2016:679, paragraph 102).
45 The second part of the single plea must therefore be rejected and, consequently, the action must be dismissed in its entirety.
Costs
46 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.
47 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing has been arranged, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Delivered in open court in Luxembourg on 20 December 2023.
V. Di Bucci | | M. van der Woude |