JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
19 October 2022 (*)
(EU trade mark – Revocation proceedings – EU figurative mark representing Chinese characters – Genuine use of the trade mark – Article 18(1) of Regulation (EU) 2017/1001 – Article 58(1)(a) of Regulation 2017/1001 – Alteration of the distinctive character)
In Case T‑323/21,
Castel Frères, established in Blanquefort (France), represented by T. de Haan, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Shanghai Panati Co., established in Shanghai (China),
THE GENERAL COURT (Sixth Chamber),
Composed, at the time of the deliberations, of A. Marcoulli, President, S. Frimodt Nielsen and J. Schwarcz (Rapporteur), Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 6 July 2022,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, Castel Frères, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 March 2021 (Case R 753/2020-5) (‘the contested decision’).
Background to the dispute
2 On 29 May 2018, the applicant filed an application with EUIPO for revocation of the EU trade mark that had been registered further to an application filed on 17 March 2008 for the following figurative sign:
3 The goods covered by the contested mark, in respect of which a declaration of invalidity was sought, were inter alia in Class 33 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 corresponded to the following description: ‘Still wines’.
4 The ground relied on in support of the application for revocation was that referred to in Article 58(1)(a) 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), namely the lack of genuine use of the contested mark within a continuous period of five years.
5 On 3 April 2020, the Cancellation Division rejected the application for revocation.
6 On 24 April 2020, Shanghai Panati Co. filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7 By the contested decision, the Board of Appeal upheld the appeal and revoked the contested mark. The Board of Appeal found, in essence, that the differences between the contested mark and the mark as used were such as to alter the distinctive character of the contested mark.
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO and Shanghai Panati Co. to pay the costs, including those arising from the proceedings before the Board of Appeal.
9 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
10 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001 and of Article 18(1) of the same regulation. In particular, the applicant disputes the definition of the relevant public and the assessment of the nature of the use of the contested mark.
11 EUIPO disputes the applicant’s arguments.
12 First of all, it should be recalled that under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
13 Furthermore, it must be noted that the question of whether a mark has been put to genuine use requires that an overall assessment be carried out, taking all the available evidence into account. Thus, each piece of evidence is not to be analysed separately, but rather together, in order to determine the most likely and coherent meaning (see judgment of 21 November 2013, Recaro v OHIM – Certino Mode (RECARO), T‑524/12, not published, EU:T:2013:604, paragraph 31 and the case-law cited).
14 According to the case-law, there is no rule in the EU trade mark system that requires proof of use of the mark on its own, independently of any other mark or sign. Therefore, the situation could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer’s company (judgment of 6 November 2014, Popp and Zech v OHIM – Müller-Boré & Partner (MB), T‑463/12, not published, EU:T:2014:935, paragraph 43; see also, to that effect, judgments of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraphs 33 and 34, and of 14 December 2011, Völkl v OHIM – Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 100). Thus, the joint use of the company’s name or of a trade mark with the earlier trade mark cannot, in itself, compromise the identification function of the mark with regard to the goods at issue (see, to that effect, judgments of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 36, and of 6 November 2014, MB, T‑463/12, not published, EU:T:2014:935, paragraph 43).
15 However, it stems directly from the wording of Article 18(1)(a) of Regulation 2017/1001 that the use of the trade mark in a form which is different from the form in which it was registered is considered as a use for the purposes of the first subparagraph of Article 18(1) thereof, to the extent that the distinctive character of the trade mark in the form in which it was registered is not changed (see, to that effect, judgments of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 21; of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 30; and of 13 September 2016, hyphen v EUIPO – Skylotec (Representation of a polygon), T‑146/15, EU:T:2016:469, paragraph 25).
16 For a trade mark to possess distinctive character for the purposes of Regulation 2017/1001, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited; see also, to that effect, judgment of 29 April 2004, Procter & Gamble v OHIM, C‑468/01 P to C‑472/01 P, EU:C:2004:259, paragraph 32).
17 The Court of Justice has also already held that the condition of genuine use of a trade mark, within the meaning of Article 18(1) of Regulation 2017/1001, may be satisfied where the trade mark is used only through another composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark, to the extent that the trade mark continues to be perceived as an indication of the origin of the product in question (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 26 and the case-law cited).
18 In addition, it is apparent from paragraph 57 of the judgment of 13 September 2016, Representation of a polygon (T‑146/15, EU:T:2016:469), that, where several signs are used simultaneously, it is necessary to ensure that, for the purposes of the application of Article 18(1)(a) of Regulation 2017/1001, such use does not alter the distinctive character of the registered sign, having regard inter alia to business practices in the relevant sector.
19 Article 18(1)(a) of Regulation 2017/1001 relates in particular to a situation where a registered national or EU trade mark is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotional requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in insignificant respects, and the two signs can therefore be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark which was registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade (see, to that effect, judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 27 and the case-law cited).
20 Thus a finding that the distinctive character of the registered mark has been altered calls for an assessment of the distinctive and dominant character of the components added, on the basis of the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraphs 28 and 37).
21 For the purposes of that finding, account must be taken of the intrinsic qualities and, in particular, the greater or lesser degree of distinctive character of the earlier mark used solely as part of a complex trade mark or jointly with another mark. The weaker the distinctive character of that mark, the easier it will be to alter it by adding a component that is itself distinctive and the more the mark will lose its ability to be perceived as an indication of the origin of the good it identifies. The reverse is also true (judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 29).
22 It must also be remembered that, in order for Article 18(1)(a) of Regulation 2017/1001 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign or their weak distinctive character (see judgment of 13 September 2016, Representation of a polygon, T‑146/15, EU:T:2016:469, paragraph 31 and the case-law cited).
23 Lastly, it is also apparent from the case-law that the fact that the registered mark is sometimes used with additional elements and sometimes without can be one of the criteria from which it may be inferred that there has been no alteration of distinctive character (see, to that effect, judgment of 7 September 2016, Victor International v EUIPO – Ovejero Jiménez and Becerra Guibert (VICTOR), T‑204/14, not published, EU:T:2016:448, paragraph 42 and the case-law cited).
24 Whether the Board of Appeal was right to conclude, in essence, in paragraph 92 of the contested decision, that the applicant had not proved genuine use of the contested mark, either in the form registered or in a form that constituted an acceptable difference, in accordance with Article 18(1)(a) of Regulation 2017/1001, and therefore to uphold the appeal brought before it, should be examined in the light of the considerations noted above.
The first complaint, relating to the definition of the relevant public and its perception of the contested mark
25 As regards the relevant public, the Board of Appeal found, in paragraph 29 of the contested decision, that it consisted of the general public, since the goods at issue were usually subject to widespread distribution, ranging from the food sections of department stores to restaurants and to cafés. It added, in paragraph 35 of the contested decision, that ‘still wines’ in Class 33 were directed at the general public and that the wording of those goods contained no indication which would limit the relevant public to consumers who had knowledge of Chinese. Furthermore, in paragraph 39 of the contested decision, it found, in essence, that that public would not be able to verbalise or to memorise the Chinese characters forming the contested mark. According to the Board of Appeal, those characters would rather be perceived as meaningless, abstract signs or as decorative elements with a lower than average degree of distinctive character.
26 The applicant disputes that assessment, claiming, in essence, that the relevant public was not the general public but consisted of Chinese consumers. The Board of Appeal erred in respect of the linguistic profile of the relevant public that it used in its analysis. Since the applicant’s commercial strategy consists of selling its goods mainly to Chinese restaurants in France, the public actually confronted with the contested mark consists of people who speak or understand Chinese, or who have a basic knowledge of Chinese. It adds that it is well known, in the food and beverage industry, that local or ethnic goods are primarily purchased and consumed by a particular segment of the relevant public, namely the public familiar with the language of the country of origin of the goods, in this case the Chinese consumer. That public would therefore perceive the contested mark as an indication of the origin of the applicant’s goods and not as meaningless, abstract signs or as decorative elements.
27 EUIPO disputes the applicant’s arguments.
28 It should be noted at the outset that, even if it were necessary to find that the applicant had used its mark with Chinese restaurateurs and a Chinese-speaking public, as EUIPO maintained at the hearing, nonetheless it cannot be inferred therefrom that only the Chinese-speaking public is actually and effectively confronted with the contested mark.
29 First, there is nothing in the wording of the application for registration of the figurative mark to suggest that the ‘still wines’ for which the contested mark is registered are intended exclusively for customers of Chinese and Chinese-speaking origin. Indeed the general terms used to identify the goods in that application suggest rather that they are intended for the usual, average customers of those goods (see, to that effect and by analogy, judgment of 25 November 2003, Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU), T‑286/02, EU:T:2003:311, paragraph 32). Furthermore, the mere fact that the Chinese characters forming the contested mark may be identified by the Chinese-speaking public is not in itself sufficient to establish and define a particular category of consumers targeted by the contested mark (see, to that effect and by analogy, judgment of 25 November 2003, KIAP MOU, T‑286/02, EU:T:2003:311, paragraph 33).
30 Secondly, although the applicant’s commercial strategy consists of selling its goods mainly to Chinese restaurants in France, the fact remains that its goods are sold through other commercial channels, as the applicant itself indicated in paragraph 38 of the application. That finding is, moreover, corroborated by certain invoices submitted by the applicant before the adjudicating bodies of EUIPO, from which it is apparent that the goods at issue are sold by certain wholesalers which do not specifically target Chinese restaurateurs or a Chinese-speaking public.
31 Thirdly, as is apparent from paragraph 9 of the contested decision, even though the applicant claims that its commercial strategy consists of targeting around 600 000 Chinese consumers by selling its wine through Chinese restaurants, the fact remains that the applicant acknowledged, in the action before the Board of Appeal against the decision of the Cancellation Division, that its goods were also targeted at other, non-Chinese-speaking consumers who frequented Chinese restaurants on a regular basis.
32 Fourthly, in any event, the applicant has not produced evidence demonstrating that ‘still wines’ were intended exclusively for a niche market consisting solely of Chinese-speaking consumers, therefore it must be held that those goods are available for purchase by millions of non-Chinese-speaking consumers in France, in the general public, who frequent Chinese restaurants or other restaurants, particularly Asian restaurants, or who are likely to obtain supplies through other commercial channels.
33 Accordingly, the applicant cannot reasonably claim that the Board of Appeal erred in basing the contested decision on an assumption concerning the perception of ‘general consumers’, on the ground that those consumers are not actually and effectively confronted with the contested mark.
34 It follows from the foregoing that the applicant’s argument that the Board of Appeal erred in finding that the relevant public consisted of the general public, who would be unable to verbalise or to memorise the Chinese characters forming the contested mark, and not of Chinese consumers, who would actually be confronted with the contested mark, must be rejected.
35 That conclusion is not called into question by the three judgments cited below, already relied on by the applicant before the Board of Appeal and the relevance of which was correctly rejected by the Board of Appeal.
36 As regards the judgment of 25 June 2015, Loutfi Management Propriété Intellectuelle (C‑147/14, EU:C:2015:420), it must be stated that the applicant misreads and misinterprets the contested decision and that judgment.
37 First, the applicant cannot reasonably maintain that, in paragraph 34 of the contested decision, the Board of Appeal incorrectly presented the facts of that case by stating that the ‘goods at hand were very specific “halal” products which are prepared in accordance with a ritual prescribed by the Muslim religion and, consequently, mainly intended for a Muslim public’ and that ‘specific goods covered by the marks in conflict [justified] therefore that the Arabic-speaking consumers were relevant’. Suffice it to state, in that regard, that the Board of Appeal merely summarised the definition of the relevant given by the national court that referred the question to the Court of Justice for a preliminary ruling. In paragraphs 13 and 14 of the judgment of 25 June 2015, Loutfi Management Propriété Intellectuelle (C‑147/14, EU:C:2015:420), the Court of Justice indeed stated, first, that ‘the national court observed that the goods marketed … [were] “halal” products prepared in accordance with a ritual prescribed by the Muslim religion and, consequently, mainly intended for a Muslim public’ and, secondly, that ‘the national court concluded that the relevant public [had to be defined, in the present case], as being the public composed of Muslim consumers of Arab origin who consume[d] “halal” food products in the European Union and who ha[d] at least a basic knowledge of written Arabic’.
38 Secondly, the applicant cannot reasonably claim that the Court of Justice ruled that the relevant public had to include Arabic-speaking consumers, not because of the particular goods covered by the marks at issue but because those marks contained Arabic characters and were put to genuine use on the market for the Arabic-speaking public in Belgium. There is no basis for such a claim in the judgment of 25 June 2015, Loutfi Management Propriété Intellectuelle (C‑147/14, EU:C:2015:420). The Court of Justice merely answered the question referred for a preliminary ruling, taking into account the fact established by the national court that, in essence, ‘having regard to the contested goods, the relevant public consists of Muslim consumers of Arabic origin, who [had] at least a basic knowledge of the written Arabic language’. However, contrary to what the applicant alleges, it does not follow at all that the Court of Justice ruled that, where a mark contained characters from a foreign language, the relevant public would systematically include consumers with a knowledge of that language.
39 Lastly, as regards the judgments of 19 July 2017, Lackmann Fleisch- und Feinkostfabrik v EUIPO (медведь) (T‑432/16, not published, EU:T:2017:527), and of 13 December 2018, Monolith Frost v EUIPO – Dovgan (PLOMBIR) (T‑830/16, EU:T:2018:941), it must be held that the applicant misread, or at least partially misread, the contested decision.
40 Contrary to what the applicant claims in paragraph 34 of the application, the Board of Appeal did not dismiss the relevance of those two cases solely on the ground ‘that a “significant proportion of the population” in the Baltic States [spoke] and underst[ood] Russian and that “in the EU there is no such significant proportion of the public which sp[oke] and underst[ood] Chinese, including in France, where … there [were] about 600 000 Chinese citizens”’. The applicant omits to mention that the Board of Appeal pointed out, in paragraph 36 of the contested decision, that it was apparent from those two cases that the Court had ‘found that it [was] a well-known fact that in the Baltic States, Russian [was] spoken by a significant proportion of the population and Russian [was] even spoken as its mother tongue’. However, it is difficult to deny that a large proportion of French, or more broadly EU, nationals do not know Chinese or speak it as their mother tongue. That is what led the Board of Appeal to find, in essence, in response to the applicant’s unsubstantiated allegation that France had around 600 000 Chinese citizens, that the proportion of the public which spoke and understood Chinese in relation to the total population of France could not be regarded as a substantial proportion of average French consumers, justifying the failure to follow the reasoning adopted in the two judgments cited in paragraph 39 above. The figures put forward by the applicant in paragraphs 35 and 36 of the application, apart from being unsubstantiated, cannot call that finding into question.
41 Having regard to the foregoing considerations, the first complaint put forward by the applicant must be rejected.
The second complaint, relating to the nature of the use
42 In paragraphs 41 to 62 of the contested decision, the Board of Appeal found, in essence, that, in the form in which the mark was used, it was evident that the distinctive and dominant word elements ‘dragon de chine’ and the representation of a dragon altered the distinctive character of the contested mark.
43 The applicant disputes that assessment. First, it claims, in essence, that the finding that the distinctive character of the contested mark has been altered is based on the erroneous premiss that account must be taken of the perception of the general public, who will not be able to verbalise or to memorise the Chinese characters forming the contested mark, and not of Chinese consumers who would actually be confronted with the contested mark. Secondly, it alleges, in essence, that the use of the following sign on its goods or in advertisements does not alter the distinctive character of the contested mark:
44 EUIPO disputes the applicant’s arguments, referring to the Board of Appeal’s reasoning and conclusions.
45 In the first place, it is necessary to reject the applicant’s argument that the finding that the distinctive character of the contested mark has been altered is based on a false premiss. As has been stated in paragraph 34 above, the Board of Appeal did not err in finding that the relevant public consisted of the general public, who would not be able to pronounce or to memorise the Chinese characters forming the contested mark, and not of Chinese consumers.
46 In the second place, it should be noted that, since the application for revocation of the contested mark was filed on 29 May 2018, the five-year period referred to Article 58(1)(a) of Regulation 2017/1001 extends, as the Board of Appeal correctly pointed out in paragraph 24 of the contested decision, from 29 May 2013 to 28 May 2018.
47 In the third place, it must be borne in mind that the contested mark in its registered form is a figurative mark consisting of three characters from the Chinese alphabet. As the Board of Appeal correctly notes in paragraph 39 of the contested decision, the relevant public will not be able to verbalise or to memorise those Chinese characters, which will rather be perceived as meaningless, abstract signs or as decorative elements referring to China or to Asia. It is appropriate, therefore, to find that, with regard to the goods at issue, the Chinese characters forming the contested mark have a lower than average degree of distinctive character.
48 In the fourth place, it should be noted that the Board of Appeal took into account, for the purposes of its reasoning relating to the alteration of the distinctive character of the contested mark, all of the evidence submitted by the applicant as mentioned in paragraph 5 of the contested decision (Annexes 1 to 11) and in paragraph 9 of the contested decision (Annexes 12 to 18).
49 Among the evidence submitted by the applicant in which the contested mark appears, the Board of Appeal pointed out, in paragraph 45 of the contested decision, that it was apparent from Annexes 8 to 11 that the contested mark as used on the applicant’s goods was represented as follows:
50 In paragraph 46 of the contested decision, the Board of Appeal rightly found that the evidence in Annexes 7 and 7a consisting of, first, invoices issued by a wholesaler attesting to the sale of KASITE wine and, secondly, invoices issued by the applicant regarding sales of KASITE wine to a wholesaler referring to the use of the mark Dragon de Chine KASITE. Furthermore, it should be noted, as regards the other evidence submitted by the applicant in Annexes 9 to 11, consisting of catalogues and information sheets for goods representing the image of a bottle of wine, that the Chinese characters forming the contested mark appear systematically in combination with other terms such as ‘dragon de chine’ or ‘kasite’, as well as with the representation of a dragon. As the Board of Appeal correctly noted in paragraph 51 of the contested decision, none of the evidence shows the use of the contested mark in isolation or, at the very least, clearly apart from the word elements ‘dragon de chine’ or ‘kasite’. It must therefore be held that the way in which the combination mentioned above is used in the evidence submitted in the present case alters the distinctive character of the contested mark as registered.
51 In that regard, it must be emphasised that on the product packaging or in the advertisements (see paragraphs 43 and 49 above), the contested mark, which appears in a very small size, is almost systematically accompanied by the word elements ‘dragon de chine’ and by the representation of a dragon, which appear together and are very close to one another. Moreover, in so far as the contested mark is composed of three characters from the Chinese alphabet, in a very small size, the added elements are always clearly visible and dominate the overall impression.
52 The Board of Appeal was therefore right to find, in paragraphs 60 and 61 of the contested decision, that the contested mark as used, that is to say, in an ancillary position and in a much smaller size than the distinctive and dominant word elements ‘dragon de chine’ and the representation of a dragon, would be perceived by the relevant public as a decorative element and not as an indication of origin of the goods.
53 That finding cannot be called into question by the argument that, in essence, it is common in the wine sector for two or more trade marks to be used jointly and autonomously on labels, with or without the name of the manufacturer’s company, as is the case here with the mark Dragon de Chine. It must be stated that the word elements ‘dragon de chine’ are always clearly visible in that they occupy a dominant position in the overall impression created by the mark as used. In any event, even if it were established that those elements are a trade mark, the fact remains that that is not capable of weakening the alteration by those terms of the distinctive character of the contested mark, since the relevant public no longer perceives those three characters from the Chinese alphabet as an indication of the origin of the goods in question, in accordance with the case-law cited in paragraph 17 above.
54 Therefore, the situation in the case at hand is not the same as that in which the form of the sign used in trade differs only in insignificant respects from the form in which that sign was registered. Accordingly, the contested mark, on the one hand, and the combination shown below, on the other hand, cannot be regarded as broadly equivalent:
55 Having regard to the above examination of the distinctive and dominant character of the added elements, based on the intrinsic qualities of each of those elements and on the relative position of the various elements, it must be held that the variations in use demonstrated alter the distinctive character of the contested mark as registered, as the Board of Appeal rightly found.
56 It follows that the Board of Appeal did not infringe Article 58(1)(a) of Regulation 2017/1001 or Article 18(1)(a) of that regulation, given the alteration of the contested mark in the evidence submitted by the applicant.
57 That conclusion cannot be called into question by the argument that, in essence, the comparisons made by the Board of Appeal with various judgments of the General Court are incorrect on the ground that they are all based on incorrect premisses pointed out by the applicant in the course of its action. It is sufficient to note, in that regard, that the examination of the single plea in law has not revealed any erroneous premiss underlying the analysis of the contested decision.
58 Nor is that conclusion called into question by the judgment of the tribunal judiciaire de Bordeaux (Bordeaux Court, France) of 13 April 2021, relied on by the applicant, which correctly applied EU law in finding that the contested mark had been put to genuine use.
59 It must be held that that national decision is not such as to call into question the legality of the findings of the contested decision. It is sufficient to bear in mind that the EU trade mark regime is autonomous and that the legality of decisions of the Boards of Appeal is assessed solely on the basis of Regulation 2017/1001, with the result that EUIPO or, on appeal, the General Court, is not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see, to that effect, judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur and Aston (ARTHUR & ASTON), T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).
60 Therefore, the national decision relied on by the applicant is not capable of calling into question the legality of the Board of Appeal’s assessments.
61 Lastly, it must be added that, even if it were necessary to find that the public actually confronted with the contested mark was composed of persons who speak or understand Chinese, or who have a basic knowledge of Chinese, as the applicant submits, such a finding would not have undermined the finding that the variations in use demonstrated alter the distinctive character of the contested mark as registered. Even if the Chinese public were able to verbalise and to memorise the Chinese characters forming the contested mark, the fact remains that given, in particular, the very small size of those characters on the packaging of the goods or in the advertisements, the distinctive and dominant word elements ‘dragon de chine’ and the representation of a dragon added to the Chinese characters alter the distinctive character of the contested mark, including for that public.
62 It follows from the foregoing that the single plea in law raised by the applicant must be rejected.
Costs
63 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Castel Frères to pay the costs.
Marcoulli | Frimodt Nielsen | Schwarcz |
Delivered in open court in Luxembourg on 19 October 2022.
E. Coulon | | M. van der Woude |