JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
9 September 2020 (*)
(EU trade mark – Application for an EU trade mark consisting of a shade of the colour purple – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 – Lack of distinctive character acquired through use – Article 7(3) of Regulation 2017/1001)
In Case T‑187/19,
Glaxo Group Ltd, established in Brentford (United Kingdom), represented by S. Malynicz, QC, S. Baran, Barrister, and R. Jacob, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Hanne and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 15 January 2019 (Case R 1870/2017‑1) concerning an application for registration of the sign consisting of a shade of the colour purple as an EU trade mark,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, C. Iliopoulos and R. Norkus (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 29 March 2019,
having regard to the response lodged at the Court Registry on 12 June 2019,
further to the hearing on 27 February 2020,
gives the following
Judgment
Background to the dispute
1 On 24 September 2015, the applicant, Glaxo Group Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 The trade mark in respect of which registration was sought is the following colour sign:
3 On the registration application form, the sign applied for was described as being a colour mark with the following description:
‘Purple – Pantone: 2587C’.
4 The goods in respect of which registration was sought are in Classes 5 and 10 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 and correspond, for each of those classes, to the following description:
– Class 5: ‘Pharmaceutical preparations for the treatment of asthma and/or chronic obstructive pulmonary disease’;
– Class 10: ‘Inhalers for the treatment of asthma and/or chronic obstructive pulmonary disease; parts of the aforesaid goods’.
5 On 2 October 2015, the EUIPO examiner sent the applicant a letter of objection stating that the application did not appear to be eligible for registration under Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001).
6 On 13 October 2015, the applicant maintained its application for registration notwithstanding the objections raised by the examiner and filed evidence to support a finding of distinctive character acquired as a consequence of the use which had been made of it, within the meaning of Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001). It filed, inter alia, the following evidence:
– samples of marketing and promotional material, including packaging; leaflets; images taken at international exhibitions; samples of merchandising goods; a list of marketing expenditures as regards the Seretide products in general (in 15 out of 28 EU Member States);
– tables containing confidential data from a consultancy showing sales and market share figures generated by the products Seretide and Aliflus (the Italian version of the applicant’s inhaler) between 2000 and 2014 in all of the EU Member States);
– data on ‘acquired distinctiveness of a purple colour’ drawn from opinion surveys carried out in various EU Member States;
– printouts from an article and blogs from, inter alia, Belgium, Denmark, Germany, France, the Netherlands and the United Kingdom, designed to show the recognition of the mark among the general public;
– declarations and witness statements from employees of the applicant;
– printouts showing rankings of the top selling medicinal products worldwide;
– previous decisions from national courts in infringement proceedings brought by the applicant in Germany and Sweden.
7 By decision of 30 November 2015, the EUIPO examiner, first, rejected the application for registration on the basis of Article 7(1)(b) of Regulation No 207/2009 and, second, published the application for registration in view of the evidence submitted to prove distinctive character acquired through use, within the meaning of Article 7(3) of Regulation No 207/2009.
8 By decision of 6 July 2017, the examiner rejected in its entirety the application for registration of the mark on the basis of Article 7(1)(b) and Article 7(3) of Regulation No 207/2009. He found that the mark applied for would be perceived by the relevant public as an indication of certain characteristics of the goods and, therefore, could not perform the essential function of a trade mark, which is to indicate the commercial origin of goods or services. The examiner pointed out inter alia that inhalers are classified by colour, each colour designating a type of medicinal product. In his opinion, in some Member States, inhalers marketed in a violet colour contained combinations of medicinal products designed to relieve symptoms.
9 On 24 August 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the examiner’s decision.
10 By decision of 15 January 2019 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.
11 As regards Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal held, in essence, that, in view of the goods for which the mark had been sought and the evidence submitted, the choice of colours referred to the main active ingredients, the use for which the medicinal product is intended and its characteristics. For that reason, it considered that such use of the mark was descriptive.
12 The Board of Appeal also found that the relevant public had a specific interest in having colours kept available for competitors in the market of pharmaceuticals, since patients are inclined to take a generic pharmaceutical product more regularly, and even more so if the presentation of the medicinal product is similar to that of the original product.
13 The mark applied for was therefore not capable of serving as an indication of origin for the goods at issue and, consequently, was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
14 As regards distinctive character acquired through use for the purposes of Article 7(3) of Regulation 2017/1001, the Board of Appeal found that the evidence provided was insufficient to show that the mark applied for had acquired distinctive character in every Member State.
Procedure and forms of order sought
15 On 29 March 2019, the applicant brought an action before the General Court under Article 72 of Regulation 2017/1001.
16 On 12 June 2019, EUIPO filed a response.
17 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
18 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
19 In support of its action, the applicant puts forward two pleas in law. The first plea alleges infringement of Article 7(1)(b) of Regulation 2017/1001. The second alleges, in essence, infringement of Article 7(3) of Regulation 2017/1001.
First plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
20 This plea is divided into two parts, the first alleging an error of assessment of the inherent distinctive character of the mark applied for and the second alleging an error in law in that the Board of Appeal required more than a minimum level of distinctive character, contrary to Article 7(1)(b) of Regulation 2017/1001.
First part of the first plea in law, alleging an error of assessment of the inherent distinctive character of the mark applied for
21 By the first part of its first plea, the applicant claims that the Board of Appeal wrongly found that the colour in respect of which registration was sought was perceived by the relevant public as designating certain characteristics of the goods covered by the application for registration.
22 It considers that it provided sufficient evidence that, on the market for the goods concerned, there is no legislative or regulatory provision or informal convention restricting the use of the colour, that goods with the same characteristics were marketed in a wide variety of colours and that consumers consequently understood that colour could designate the origin of the goods. It would even be dangerous for a patient to associate the colour of the inhaler with the properties of the medicinal product that it contains.
23 The applicant claims that there is no evidence that any shade of purple – still less the shade Pantone 2587C – conveys a message to the public about one of the characteristics of the goods for which registration of the mark has been sought.
24 It also argues that the colour purple was specifically chosen as a unique identifier of its Seretide inhaler, since the colour is unusual, unique and memorable and has not been used by any other competitor.
25 According to the applicant, despite the fact that it provided ample proof of use showing that the colour purple was already recognised in all the Member States of the European Union, in particular by the professional public, as an identifier for its Seretide inhalers, which are, moreover, the only inhalers marketed on the European market in that colour, the Board of Appeal made a manifest error in basing its assessment on documents which did not relate to the correct sign and which came in large part from informal sources or websites hosted outside the European Union.
26 EUIPO contests the merits of the applicant’s arguments.
27 Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character may not be registered.
28 In order for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the product in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 34, and of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33).
29 That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
30 A minimum degree of distinctive character is, however, sufficient to render inapplicable the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 (judgments of 20 May 2009, CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD), T‑405/07 and T‑406/07, EU:T:2009:164, paragraph 57, and of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 16).
31 In order to constitute an EU trade mark under Article 4 of Regulation 2017/1001, colours or combinations of colours must satisfy three conditions. First, they must constitute a sign. Second, that sign must be capable of graphic representation. Third, that sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings (judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 23; see also, by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 22).
32 Colours are normally a simple property of things. Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning. However, it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign within the meaning of Article 4 of Regulation 2017/1001 (see, by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 23 and the case-law cited).
33 For the purposes of the application of Article 4 of Regulation 2017/1001, it is necessary to establish that, in the context in which they are used, colours or combinations of colours for which registration is sought in fact represent a sign. The purpose of that requirement is in particular to prevent the abuse of trade-mark law in order to obtain an unfair competitive advantage (see, by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 24).
34 In accordance with Article 3(3)(f)(i) of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001 and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), where the trade mark consists exclusively of a single colour without contours, that mark is to be represented by submitting a reproduction of the colour and an indication of that colour by reference to a generally recognised colour code.
35 With regard to the question whether, for the purposes of Article 4 of Regulation 2017/1001, colours or combinations of colours are capable of distinguishing the goods or services of one undertaking from those of other undertakings, it is necessary to determine whether or not those colours or combinations of colours are capable of conveying precise information, particularly as regards the origin of a product or service (see, by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 37).
36 In that regard, it must be recalled that, while colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (see, by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 38 and the case-law cited).
37 The concept of general 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 that 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).
38 As regards the registration as an EU trade mark of a colour per se, not spatially defined, the public interest underlying Article 7(1)(b) of Regulation 2017/1001 is directed at the need not to restrict unduly the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought (see, by analogy, judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 60).
39 Colours and abstract combinations thereof cannot be regarded as being inherently distinctive save in exceptional circumstances, since they are indistinguishable from the appearance of the goods designated and are not, in principle, used as a means of identifying commercial origin (see, by analogy, judgments of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraphs 65 and 66, and of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 39).
40 The first part of the first plea must be examined in the light of those considerations.
41 In the present case, the sign consists of the shade Pantone 2587C of the colour purple and the goods covered by the application for registration of that sign as an EU trade mark are inhalers and pharmaceutical preparations for the treatment of asthma or chronic obstructive pulmonary disease.
42 The parties agree that inhalers are medical devices that allow medicinal products to be administered into a patient’s body through the lungs. Similarly, pharmaceutical preparations for the treatment of asthma or chronic obstructive pulmonary disease fall mainly under two categories: first, those allowing rapid intervention against pulmonary conditions, particularly in the event of an attack, and, second, those making it possible for the disease to be kept under control in the long term.
43 It is also common ground that the inhaler for the medicinal product Seretide, marketed by the applicant in the colour purple, combines both those active ingredients, namely a preventive treatment and a medicinal product making it possible for the illness to be kept under control in the long term.
44 As regards the colour of the inhalers in general, it is true that, in the absence of legislative or regulatory provisions imposing a specific use of colours, manufacturers in that market sell their products in a variety of colours.
45 The Good practice guide on risk minimisation and prevention of medication errors, drawn up by the Pharmacovigilance Risk Assessment Committee of the European Medicines Agency (EMA), underlines the fact that the use of colour coding is not usually recommended in the medicinal-products market given the limited range of available colours and the absence of common understanding of colour coding conventions.
46 However, as the Board of Appeal rightly noted in paragraph 33 of the contested decision, that good practice guide established by the EMA recommends, by contrast, that the choice of colour should be considered in product design to ensure that it does not introduce any risk of confusion with other established products where informally agreed colour conventions exist. The example given in that regard in the guide is precisely that of inhalers for respiratory ailments.
47 At the hearing, the applicant confirmed that a colour code was used but argued that it did not involve the colour covered by the mark applied for.
48 It must be noted that it is apparent from the Board of Appeal’s file that, in 2015, the applicant itself was led to taking into consideration informally agreed colour conventions. It informed at least the English-speaking and Dutch-speaking public that it had had to change the colour of certain of its inhalers in order to comply with the existing common practice of designating those inhalers by their colour and thus to prevent patients from confusing the different medicinal products.
49 With specific regard to the inhalers for the medicinal product Seretide, it is apparent from the discussions at the hearing and from the Board of Appeal’s file that they can have either the shape of a disc or the shape of a boot and that they both contain shades of purple, one of which is predominant. Similarly, the strength of the medicinal product may vary. The shade Pantone 2587C is used as the predominant colour on disc inhalers regardless of the strength of the medicinal product, as well as on boot-shaped inhalers for strength 25/125. By contrast, for the other strengths of the medicinal product, boot-shaped inhalers come in different predominant shades of purple. Accordingly, the shade of purple of the body of the boot-shaped inhaler for the strength above 25/125 is darker and the shade Pantone 2587C is used only for the cap.
50 This use of several shades of purple for the goods at issue is also highlighted by the marketing documentation. That documentation shows explicitly that, as regards the boot type inhalers, a lighter shade is used for that medicinal product when its strength is weaker, whereas a darker shade corresponds to a higher strength. This finding is supported by the evidence, in particular by the samples of inhalers for the medicinal product Seretide, produced before EUIPO in the third-party observations. In those circumstances, the applicant’s argument that it made extensive use of the shade Pantone 2587C for advertising purposes is irrelevant, since the evidence submitted does not make it possible to establish that the relevant public will necessarily associate the goods concerned with that specific shade and not with a lighter or darker shade of purple also used by the applicant in connection with those goods.
51 According to the case-law, in the case of a colour per se, distinctive character without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is applied for is very restricted and the relevant market very specific (judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraph 79).
52 It follows from the foregoing considerations that, on the relevant market, colours can be used to convey to the public information relating to the characteristics of the goods. The arguments put forward by the applicant are not capable of showing that the goods covered by its application for registration of an EU trade mark constitute, within a market which the applicant described at the hearing as restricted, a specific category that escapes the rules and practice, even informal, applicable on that market.
53 In those circumstances, it would not be in the public interest for the availability of a colour such as the mark applied for to be restricted for other traders selling goods of the same kind as those in respect of which registration is sought. Such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single trader (see, to that effect, judgment of 13 September 2010, KUKA Roboter v OHIM (shade of orange), T‑97/08, EU:T:2010:396, paragraph 35 and the case-law cited).
54 With regard to the applicant’s argument that the colour purple was specifically chosen because of its unusual, unique and memorable character and because of the fact that it had not been used by any other competitor, it must be recalled that novelty or originality are not relevant criteria in the assessment of whether a mark has distinctive character (see, to that effect, judgments of 17 December 2010, Chocoladefabriken Lindt & Sprüngli v OHIM (Shape of a chocolate rabbit with a red ribbon), T‑336/08, not published, EU:T:2010:546, paragraph 24 and the case-law cited, and of 26 November 2015, Établissement Amra v OHIM (KJ Kangoo Jumps XR), T‑390/14, not published, EU:T:2015:897, paragraph 25 and the case-law cited). Therefore, differences that may exist in relation to the norm or customs of the sector, or even the most common configurations, are not sufficiently characteristic or memorable to confer on the mark applied for a minimum degree of distinctive character and will thus not be perceived as an indication of the commercial origin of the goods (see, by analogy, judgment of 16 January 2014, Steiff v OHIM (Fabric tag with metal button in the middle section of the ear of a soft toy), T‑434/12, not published, EU:T:2014:6, paragraph 29 and the case-law cited).
55 In the light of all of the foregoing, the first part of the first plea must be rejected as the Board of Appeal did not make any error of assessment regarding the lack of inherent distinctive character of the mark applied for.
Second part of the first plea in law, alleging an error in law in that the Board of Appeal required more than a minimum level of distinctive character
56 By the second part of its first plea, put forward for the sake of completeness or in the alternative to the first part, the applicant claims that the Board of Appeal erred in law in finding that the degree of distinctive character shown was insufficient. According to the applicant, the Board of Appeal, in so doing, applied a criterion for a minimum level of distinctive character that is higher than that required by law.
57 During the hearing, in answer to a question put by the General Court requesting that it indicate the paragraphs of the contested decision from which it was apparent that the Board of Appeal had taken the view that the degree of distinctive character was insufficient, the applicant merely stated, in essence, that, by assuming that the mark applied for had a certain descriptive character linked to the alleged existence of a colour convention, a trade mark could fulfil several functions. Since the sole criterion laid down by Article 7(1)(b) of Regulation 2017/1001 for the purpose of refusing registration is that of the lack of distinctive character, the Board of Appeal ought, in the applicant’s view, to have demonstrated that the sign was entirely descriptive or decorative.
58 EUIPO contests the merits of the applicant’s arguments.
59 It must be noted, first of all, that, contrary to the applicant’s assertions, the Board of Appeal did not require more than a minimum degree of distinctive character, as is apparent from, inter alia, paragraph 39 of the contested decision, in which it was found that the mark applied for is devoid of any distinctive character.
60 Next, as regards the applicant’s argument that the Board of Appeal ought to have demonstrated that the sign was entirely descriptive or decorative, it must be recalled that, according to the case-law, where an applicant claims that the mark applied for is distinctive, it is for that applicant to provide specific and substantiated information to show that the mark applied for has either inherent distinctive character or a distinctive character acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (see, to that effect, judgments of 5 March 2003, Unilever v OHIM (Ovoid tablet), T‑194/01, EU:C:2003:53, paragraph 48, and of 15 March 2006, Develey v OHIM (Shape of a plastic bottle), T‑129/04, EU:T:2006:84, paragraph 21).
61 Consequently, the second part of the first plea must be rejected and, therefore, the first plea must be rejected in its entirety.
Second plea in law, alleging infringement of Article 7(3) of Regulation 2017/1001
62 This plea comprises three parts, the first alleging an error in the assessment of the relevant public, the second alleging an error in the assessment of the surveys as if they were evidence and alleging lack of competence on the part of the Board of Appeal, and the third alleging failure to extrapolate from the evidence.
63 Since certain of the applicant’s arguments relating to the evidence are raised in both the first and third parts, those two parts must be examined together after an examination of the second part has first been carried out.
Second part of the second plea, alleging an error in the assessment of the surveys as evidence and alleging lack of competence on the part of the Board of Appeal
64 By the second part of the second plea, the applicant essentially criticises the Board of Appeal on the ground of its assessment of the surveys which the applicant had submitted as evidence and that it thus formed its own opinion of their probative value.
65 In particular, the applicant, first, contests the Board of Appeal’s finding, in paragraph 60 of the contested decision, relating to the scale of the samples of the relevant public and, second, claims that the Board of Appeal was not competent to find, as it did in paragraph 61 of the contested decision, that the colour shown to the public during the surveys had not always been the same or that it was associated with a specific inhaler shape.
66 EUIPO disputes the merits of the applicant’s arguments.
67 It is clear from the scheme of Article 7(3) of Regulation 2017/1001 that it is for the party which intends to rely on that provision to demonstrate that the mark in respect of which registration is sought has acquired distinctive character through use. However, neither the applicable EU trade-mark legislation nor the case-law of the General Court or the Court of Justice specifies a mandatory form for the evidence that must be adduced to prove that distinctive character has been acquired through use of the mark.
68 It follows, on the one hand, that a trade mark applicant is free to choose the evidence that it considers useful to submit to EUIPO in support of its application and, on the other hand, that EUIPO is obliged to examine all the evidence submitted to it for that purpose by that applicant and cannot reject from the outset a particular type of evidence as inadmissible (see, by analogy, judgment of 20 April 2005, Atomic Austria v OHIM – Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ), T‑318/03, EU:T:2005:136, paragraph 40).
69 In the present case, the applicant chose freely to submit, inter alia, the results of opinion surveys in order to demonstrate that the mark applied for had acquired distinctive character as a consequence of the use made of it. In those circumstances, not only did the Board of Appeal of EUIPO have competence to assess the probative value of those surveys, but it was under an obligation to do so.
70 Therefore, the second part of the second plea must be rejected.
First and third parts of the second plea, alleging an error in the assessment of the relevant public and failure to extrapolate from the evidence
71 By the first part of the second plea, the applicant criticises the Board of Appeal on the ground that it erroneously considered, in paragraph 55 of the contested decision, that the evidence adduced did not cover all of the relevant public.
72 While confirming, during the hearing, that the relevant public consists of healthcare professionals and the general public, the applicant claims that, in so far as every purchase transaction involves a prescribing physician and a pharmacist, whose influence is decisive in comparison with that of patients, it is sufficient to show, as it regards itself as having done, that the sign at issue had acquired distinctive character through use amongst those healthcare professionals.
73 The applicant claims that it is not necessary to adduce evidence for each component of the relevant public as long as the evidence adduced covers a significant part of it. It takes the view that the evidence adduced, examined as a whole, demonstrates adequately that a significant proportion of the relevant public perceives the mark applied for as having distinctive character.
74 Furthermore, as regards the general public, the applicant points out that it also submitted surveys covering approximately 1 500 patients in 10 Member States, extracts from patient blogs and statements confirming that they identified the Seretide inhaler by its colour, and a survey carried out in the United Kingdom among general practitioners who confirmed that patients commonly identified the Seretide inhaler as the purple inhaler.
75 By the third part of this plea, the applicant criticises the Board of Appeal of EUIPO for failing to extrapolate from, inter alia, the results of the opinion surveys. According to the applicant, such extrapolation would have enabled the Board of Appeal to find that the evidence of distinctive character acquired through use applied across the European Union.
76 EUIPO contends that these two parts of the second plea must be rejected.
77 It follows from Article 7(3) of Regulation 2017/1001 that the lack of inherent distinctive character of a sign does not preclude it from being registered as an EU trade mark when it is shown that it has acquired distinctive character as a consequence of the use which has been made of it.
78 It must be recalled that the distinctive character of a mark, whether inherent or acquired through use, means that that mark is capable of identifying the goods in respect of which registration is sought as originating from a specific undertaking. That character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public.
79 The essential function of a trade mark is therefore to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling that person, without any possibility of confusion, to distinguish those goods or services from others which have a different origin. In order for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all goods or services bearing that trade mark have been manufactured or supplied under the control of a single undertaking which is responsible for their quality (see judgment of 25 September 2018, Gugler v EUIPO – Gugler France (GUGLER), T‑238/17, EU:T:2018:598, paragraph 40 and the case-law cited). Consequently, the function of a trade mark as an indication of origin is just as important for the end user of a product as for the intermediaries who are involved in its marketing.
80 In accordance with Article 1(2) of Regulation 2017/1001, the EU trade mark has a unitary character, which implies that it is to have equal effect throughout the European Union. It follows from the unitary character of the EU trade mark that, in order to be accepted for registration, a sign must have distinctive character throughout the European Union. Therefore, under Article 7(1)(b) of that regulation, read in conjunction with Article 7(2) thereof, a mark must not be registered if it is devoid of distinctive character in part of the European Union. It has been held that the part of the European Union referred to in Article 7(2) of Regulation 2017/1001 may, where appropriate, consist of a single Member State (judgments of 29 September 2010, CNH Global v OHIM (Combination of the colours red, black and grey for a tractor), T‑378/07, EU:T:2010:413, paragraph 45, and of 17 May 2011, Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), T‑7/10, not published, EU:T:2011:221, paragraph 40; see also, to that effect, judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraphs 81 to 83).
81 Article 7(3) of Regulation 2017/1001, which permits registration of signs which have acquired distinctive character through use, must be read in the light of that requirement. Thus, it follows from the unitary character of the EU trade mark that, in order to be accepted for registration, a sign must have distinctive character, whether inherent or acquired through use, throughout the European Union (judgments of 17 May 2011, υγεία, T‑7/10, not published, EU:T:2011:221, paragraph 41, and of 15 December 2016, Mondelez UK Holdings & Services v EUIPO – Société des produits Nestlé (Shape of a chocolate bar), T‑112/13, not published, EU:T:2016:735, paragraph 120).
82 It is also apparent from the case-law that, in order for a trade mark to be accepted for registration under Article 7(3) of Regulation 2017/1001, the distinctive character acquired through use of that trade mark must be demonstrated in the part of the European Union where it was devoid of such character under Article 7(1)(b), (c) and (d) of that regulation (judgments of 21 April 2010, Schunk v OHIM (Representation of part of a chuck), T‑7/09, not published, EU:T:2010:153, paragraph 40, and of 22 March 2013, Bottega Veneta International v OHIM (Shape of a handbag), T‑409/10, not published, EU:T:2013:148, paragraph 76).
83 It should, however, be noted that, even if the acquisition by a mark of distinctive character through use must be demonstrated for the part of the European Union in which that mark did not, ab initio, have such character, it would be unreasonable to require proof of such acquisition for each individual Member State (see, to that effect, judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 62).
84 Thus, the criterion to be applied is that of proof that the mark in respect of which registration is sought has acquired distinctive character through use throughout the territory of the European Union, and that acquisition must be sufficiently proven in quantitative terms (see, to that effect, judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 63). In addition, the same types of evidence do not have to be provided in respect of each Member State (judgment of 28 October 2009, BCS v OHIM – Deere (Combination of the colours green and yellow), T‑137/08, EU:T:2009:417, paragraph 39).
85 Furthermore, according to settled case-law, there is insufficient proof of distinctive character acquired through use of a mark throughout the European Union where evidence is missing for certain Member States (see, to that effect, judgments of 8 July 2009, Mars v OHIM – Ludwig Schokolade (Shape of a chocolate bar), T‑28/08, not published, EU:T:2009:253, paragraph 48; of 30 September 2009, JOOP! v OHIM (!), T‑75/08, not published, EU:T:2009:374, paragraph 41; and of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 80).
86 As is apparent from the case-law cited in paragraphs 80 to 82 above, for the purposes of applying Article 7(3) of Regulation 2017/1001, the distinctive character acquired through use of the mark must be demonstrated throughout the territory of the European Union, and not only for a substantial part or the majority thereof. Furthermore, although there cannot be a requirement that proof of distinctive character acquired through use of that mark be adduced for each individual Member State concerned, such proof may be adduced globally for all the Member States concerned or separately for different Member States or groups of Member States (see, to that effect, judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 62). Consequently, in the event that the evidence submitted does not cover part of the European Union, even a part which is not substantial or consists of only one Member State, it cannot be concluded that distinctive character has been acquired through use of the mark throughout the European Union.
87 In the present case, since the Court has already found, in the context of the first plea, that the mark applied for is devoid of inherent distinctive character in the European Union, that mark must therefore have acquired distinctive character through use throughout the European Union in order to be capable of being registered by virtue of Article 7(3) of Regulation 2017/1001 (see, to that effect, judgments of 29 April 2004, Eurocermex v OHIM (Shape of a beer bottle), T‑399/02, EU:T:2004:120, paragraph 47; of 10 March 2009, Piccoli v OHIM (Shape of a seashell), T‑8/08, not published, EU:T:2009:63, paragraphs 37 to 39; and of 15 December 2016, Shape of a chocolate bar, T‑112/13, not published, EU:T:2016:735, paragraph 123).
88 The goods covered by the applicant’s application for registration of an EU trade mark have the core trait of being marketed on the possible recommendation of a prescribing doctor prior to their sale to end-consumers in a pharmacy. Consequently, the relevant public is composed not only of professionals, that is to say, doctors who prescribe the medicinal product and pharmacists who sell that product but also patients who are the end users of the medicinal product (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraphs 52 to 63; of 23 September 2009, GlaxoSmithKline and Others v OHIM – Serono Genetics Institute (FAMOXIN), T‑493/07, T‑26/08 and T‑27/08, not published, EU:T:2009:355, paragraph 50; and of 9 February 2011, Ineos Healthcare v OHIM – Teva Pharmaceutical Industries (ALPHAREN), T‑222/09, EU:T:2011:36, paragraphs 43 and 44).
89 Contrary to what the applicant claims, the fact that intermediaries such as healthcare professionals are liable to influence or even to determine the choice made by end consumers, namely patients, is not in itself capable of excluding all likelihood of confusion on the part of those consumers with regard to the origin of the goods at issue. Such a likelihood exists for patients since they are likely to be faced with those goods not only when used without a healthcare professional being present but also in the context of purchase transactions taking place at different times.
90 The Board of Appeal was therefore right in holding that, even if the choice of those goods was influenced or determined by intermediaries, the existence of distinctive character acquired through use also had to be demonstrated in respect of patients.
91 Next, it is necessary to examine whether the applicant has been able to establish that the sign at issue had, before the application for registration of a mark was filed, acquired distinctive character through use throughout the European Union in respect of a significant portion of the relevant public.
92 According to settled case-law, the principle which prevails in EU law is that of the unfettered evaluation of evidence, from which it follows, in particular, that the only relevant criterion for the purpose of assessing the probative value of evidence lawfully adduced relates to its credibility (see judgment of 15 December 2016, Infineon Technologies v Commission, T‑758/14, not published, EU:T:2016:737, paragraph 179 and the case-law cited). Thus, in order to assess the probative value of a document, it is necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears to be sound and reliable (see, to that effect, judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 53 and the case-law cited).
93 The evidence submitted must make it possible to show that the mark has become such as to identify the goods concerned as originating from a particular undertaking, and accordingly to distinguish them from goods of other undertakings. In assessing the distinctive character of a mark in respect of which registration has been sought, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraphs 49 and 51, and of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 75).
94 As regards the probative value of the evidence submitted, it is apparent from the case-law that certain elements are considered to be of greater probative value than others. In particular, sales figures and advertising material can be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by surveys or market studies as well as by statements from professional bodies or statements from the specialised public (see, to that effect, judgments of 29 September 2010, Combination of the colours red, black and grey for a tractor, T‑378/07, EU:T:2010:413, paragraphs 53 and 54; of 29 January 2013, Germans Boada v OHIM (Manual tile-cutting machine), T‑25/11, not published, EU:T:2013:40, paragraph 74; and of 24 February 2016, Shape of a contour bottle without fluting, T‑411/14, EU:T:2016:94, paragraphs 83 and 84).
95 So far as surveys in particular are concerned, their probative value depends on the survey method used (see, to that effect, judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM— Johnson’s Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraph 38). Thus, the results of a survey may lack probative value in the case where the survey in question is not accompanied by sufficient evidence to ensure that it is reliable (see, to that effect, judgment of 30 May 2013, Brauerei Beck v OHIM – Aldi (Be Light), T‑172/12, not published, EU:T:2013:286, paragraph 28).
96 Furthermore, it is apparent from the case-law that one of the criteria allowing the results of a survey to be recognised as having probative value is that the survey be carried out in the objective circumstances in which the mark at issue is present, or may be present, on the market (judgment of 24 October 2018, Bayer v EUIPO – Uni-Pharma (SALOSPIR), T‑261/17, not published, EU:T:2018:710, paragraph 63).
97 Similarly, the probative value of opinion surveys depends on, inter alia, whether the persons interviewed have been shown several images in order to be able spontaneously to associate one of those images with an undertaking, instead of being shown one image only (see, to that effect, judgment of 15 December 2005, BIC v OHIM (Shape of a lighter), T‑262/04, EU:T:2005:463, paragraph 84).
98 In the present case, in order to demonstrate that the mark applied for had acquired distinctive character as a consequence of the use which had been made of it, the applicant produced, inter alia, opinion surveys, statements from its own employees and healthcare professionals, extracts from blogs and websites, advertising materials and figures relating to sales of the goods at issue, marketing expenditure and market shares.
99 As regards, in the first place, the opinion surveys, these were carried out among general practitioners, pharmacists and patients in 15 Member States.
100 It must be noted, first, that the patient surveys were carried out in only 10 EU Member States, namely Belgium, Denmark, Ireland, Greece, France, Italy, Luxembourg, the Netherlands, Poland and Sweden. As is apparent from the observations in reply filed by the applicant before EUIPO on 9 October 2015 and 25 November 2016, only 200 patients were interviewed in the surveys relating to Belgium, Denmark, Luxembourg, the Netherlands and Sweden, 106 patients were interviewed in the surveys carried out in Greece, 103 in Ireland, 102 in Italy and 50 in France, respectively. With regard to Poland, the information provided by the applicant does not make it possible to ascertain the exact number of patients or professionals who took part in the opinion survey.
101 Second, the applicant has not provided any information that makes it possible to assess how representative the sample chosen in each of those Member States was and, therefore, to determine the probative value of the surveys. In the light of the market shares held by the applicant in each Member State, supported by a significant sales volume and turnover, as they appear from the evidence filed by the applicant during the administrative procedure, the numbers of patients interviewed appear to be, as the Board of Appeal noted in paragraph 60 of the contested decision, much too low to be reliable. The same finding must also be made with regard to the professional public, given that only 0.086% of general practitioners in the United Kingdom were interviewed and the number of professionals who participated in the surveys in that Member State is comparable or even identical to those relating to other Member States, as is apparent from paragraphs 60 and 61 of the contested decision, a point which the applicant does not dispute.
102 Third, it is apparent from the surveys that the interviewees, whether healthcare professionals or patients and irrespective of the Member State concerned, were shown only one image representing a shade of the colour purple. They were therefore not placed in a position to choose from among several images, or even several shades, the one that could spontaneously be associated with a particular undertaking.
103 Fourth, it must be noted that the surveys, with the exception of those carried out for Denmark and Sweden, do not specify the Pantone code of the colour purple used but merely indicate that the colour sample, the original of which is annexed to the survey report, was provided by the customer. At the very most, and solely in the report of a survey carried out in the United Kingdom and dated 27 April 2016, it is stated that the signatory of the survey was informed that the colour sample came directly from Pantone LLC to guarantee that the colour corresponded to Pantone 2587C. Contrary to what the applicant claims in paragraph 74 of the application, this is not a confirmation of the origin of the colour but a mere confirmation that the person who carried out the survey received specific information. In any event, that confirmation merely concerns the survey carried out in the United Kingdom and is therefore not capable of invalidating the Board of Appeal’s assessment of the other surveys.
104 Finally, fifth, it must be noted that, as the Board of Appeal found in paragraph 61 of the contested decision, the originals of the colour samples annexed to the surveys carried out in certain Member States include a shade of purple different to that of the other samples, or even represent a certain type of inhaler and not a colour.
105 In the light of all of the foregoing, it must be held that the surveys submitted are not capable of demonstrating that the mark applied for had acquired distinctive character through use in the Member States concerned. A fortiori, the results of those surveys cannot be extrapolated to other Member States.
106 As regards, in the second place, the statements of general practitioners and pharmacists and extracts from blogs and websites, it must be noted that these merely refer to the colour purple in general. Given that the goods in question are marketed under several shades of purple, that evidence is not capable of demonstrating that a link has been established by the relevant public between the Pantone 2587C shade of purple and the goods concerned and, consequently, that the mark applied for has acquired distinctive character through use.
107 In the third and final place, as regards the sales figures and the advertising material, it must be observed, first of all, that these may be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by the surveys. Sales figures and advertising material as such do not demonstrate that the public targeted by the goods in question perceives the mark applied for as an indication of commercial origin.
108 Since the surveys have not demonstrated that the mark applied for has acquired distinctive character as a consequence of the use made of it, proof of that use cannot therefore be provided by the mere provision of sales figures and advertising material even if there is no doubt that the sales figures demonstrate that the applicant has sold large quantities of Seretide inhalers within the European Union.
109 Consequently, the first and third parts of the second plea must be rejected and, accordingly, the second plea must be rejected in its entirety.
110 In the light of all the foregoing, the action must be dismissed in its entirety.
Costs
111 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.
112 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 (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Glaxo Group Ltd to pay the costs.
Marcoulli | Iliopoulos | Norkus |
Delivered in open court in Luxembourg on 9 September 2020.