JUDGMENT OF THE GENERAL COURT (Third Chamber)
12 June 2024 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark ULTRA – Absolute ground for invalidity – No distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – EUIPO’s Guidelines for examination)
In Case T‑170/23,
Amstel Brouwerij BV, established in Amsterdam (Netherlands), represented by T. Cohen Jehoram and Y. Song, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Ringelhann and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Anheuser-Busch LLC, established in Saint-Louis, Missouri (United States), represented by A. Renck and C. Stöber, lawyers,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, P. Škvařilová-Pelzl (Rapporteur) and D. Kukovec, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 24 January 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Amstel Brouwerij BV, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 January 2023 (Case R 2088/2021-5) (‘the contested decision’).
Background to the dispute
2 On 17 October 2002, the intervener, Anheuser-Busch LLC, filed an application for registration of the following figurative mark as an EU trade mark:
3 The mark applied for covered beers in Class 32 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.
4 The EU figurative mark was registered on 21 January 2005.
5 On 24 June 2020, the applicant filed a request for a declaration of invalidity of the registered mark on the basis of Article 51(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), as amended, itself 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)), read in conjunction with Article 7(1)(b) and (c) of that regulation.
6 On 13 October 2021, the Cancellation Division rejected the request for a declaration of invalidity in its entirety.
7 On 11 December 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
8 By the contested decision, the Board of Appeal dismissed the appeal on the grounds that the applicant had failed to show that the contested mark was devoid of any distinctive character or was descriptive, within the meaning of Article 7(1)(b) and (c) of Regulation No 40/94. In essence, the Board of Appeal held that the case-law of the General Court had already established a clear difference between the meaning of the element ‘ultra’ when used on its own and when used together with a further indication. To that effect, the Board of Appeal held that the word element ‘ultra’, used as a prefix, needed to be accompanied by a noun indicating in which sense or aspect the goods or services concerned went ‘beyond what [was] usual or ordinary’ or were ‘excellent’, and that on its own that word element had no meaning in relation to the goods concerned and was distinctive. Furthermore, the Board of Appeal maintained, in paragraphs 91, 92 and 95 of the contested decision, that it could not be bound by the first instance decisions of EUIPO or by the previous decision-making practice of the Boards of Appeal, or by EUIPO’s Guidelines for examination.
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 bear the costs in the event that an oral hearing is convened.
11 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The applicable law ratione temporis
12 EUIPO submits, in essence, that the applicant incorrectly relied on Regulation 2017/1001 in its application, which, in the light of the facts of the present case, cannot apply. To that effect, given the date on which the application for registration at issue was filed, that is, on 17 October 2002, which is determinative for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
13 Moreover, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.
14 Consequently, in the present case, as regards the substantive rules, the references made by the applicant and the intervener to Article 7(1)(b) of Regulation 2017/1001 must be understood as referring to Article 7(1)(b) of Regulation No 40/94, the terms of which are identical.
Admissibility of the evidence adduced for the first time before the General Court
15 The intervener contends that Annex A.5 to the application is inadmissible on the ground that it was produced for the first time before the Court. In the present case, that annex consists of a screenshot of the online Collins English Dictionary corresponding to the entry of the word element ‘ultra’. Furthermore, as the intervener notes, the observations filed by the applicant with the Cancellation Division and the Board of Appeal included a link to the internet page dedicated, in that online dictionary, to the entry of the word element ‘ultra’, which was not accompanied by a screenshot of the content of that page.
16 It should be noted that the Board of Appeal, in paragraphs 58 and 59 of the contested decision, relied on definitions from online dictionaries submitted by the applicant in the form of links to internet pages during the administrative procedure, such as the Oxford Advanced Learners’ Dictionary, the Diccionario de la Real Academia Española or the Duden dictionary, and concluded that the term ‘ultra’ meant, inter alia, ‘extreme, very or beyond’ and that it could be used as a noun or prefix.
17 In that regard, it must be borne in mind that, first, according to settled case-law, Article 95 of Regulation 2017/1001 does not preclude the adjudicating bodies of EUIPO from basing their decisions, in addition to the facts and evidence submitted by the parties, on facts which are well known, that is which are likely to be known by anyone or which may be learnt from generally accessible sources (see, to that effect, orders of 23 November 2015, Actega Terra v OHIM – Heidelberger Druckmaschinen (FoodSafe), T‑766/14, not published, EU:T:2015:913, paragraph 34 and the case-law cited, and of 12 February 2021, sprd.net v EUIPO – Shirtlabor (I love), T‑19/20, not published, EU:T:2021:89, paragraph 134 and the case-law cited).
18 Secondly, it is apparent from the case-law that, in essence, an extract from an online dictionary constitutes a source that is generally accessible to the general public and that, therefore, the definitions contained therein constitute well-known facts (see, to that effect, order of 23 November 2015, (FoodSafe), T‑766/14, not published, EU:T:2015:913, paragraph 36, and judgment of 15 October 2020, smart things solutions v EUIPO – Samsung Electronics (smart:)things), T‑48/19, not published, EU:T:2020:483, paragraph 75).
19 Thirdly, it should also be noted that, according to settled case-law, an applicant is entitled to produce documents before the Court as evidence of the accuracy – or inaccuracy – of a well-known fact (see judgment of 19 June 2018, Erwin Müller v EUIPO – Novus Tablet Technology Finland (NOVUS), T‑89/17, not published, EU:T:2018:353, paragraph 16 and the case-law cited).
20 In the present case, the contested annex contains the definition of the term ‘ultra’ according to the Collins English Dictionary which is, in essence, similar to the definitions on which the Board of Appeal relied (see paragraph 16 above). In that regard, the Board of Appeal was in a position to have access to that evidence, which was accessible to the general public and constituted a well-known fact. Furthermore, the fact that the applicant presents, for the first time before the Court, a screenshot of the content of an internet page, the link of which was already submitted during the administrative phase and which gives a dictionary definition, may be regarded as intended to substantiate the accuracy of a well-known fact. Accordingly, Annex A.5 to the application relates to facts which are referred to in the contested decision and which form part of the factual context of the proceedings before the Board of Appeal.
21 In the light of the foregoing, Annex A.5 to the application must be declared admissible.
Substance
22 In support of its action, the applicant puts forward, in essence, two pleas, the first alleging infringement of Article 7(1)(b) of Regulation No 40/94 and the second alleging breach of the general principles of protection of legitimate expectations and legal certainty.
23 In the context of the first plea, the applicant criticises the Board of Appeal for having found, in essence, that the term ‘ultra’, when used as a stand-alone word, was distinctive in relation to the goods in question.
24 In that regard, the applicant claims that the contested mark is a laudatory mark that is incapable of indicating the commercial origin of the goods at issue. It submits, to that effect, that the term ‘ultra’, when used as an adjective, denotes extraordinary qualities of something, such as something ‘going beyond what is usual or ordinary’, ‘excessive’ or ‘extreme’. According to the applicant, that is also apparent from the findings of the Cancellation Division, which had defined the word element ‘ultra’ as indicating that something was extraordinary, outstanding or of a unique high quality. Therefore, according to the applicant, the relevant public will perceive the word element ‘ultra’ as a promotional term the purpose of which is to promote positive qualities or superior characteristics of those goods, rather than as an indicator of the commercial origin of those goods, with the result that the contested mark is devoid of any distinctive character.
25 Furthermore, the applicant complains that the Board of Appeal made an error of assessment, in paragraphs 58 to 60 of the contested decision, in neglecting the fact that ‘ultra’ could be used not only as a prefix but also as a laudatory, stand-alone adjective in advertising language. The applicant considers that the Board of Appeal also erred, in paragraphs 62 to 68 of the contested decision, in considering that ‘ultra’ was devoid of distinctive character only when used as a prefix and in conjunction with other nouns. Furthermore, according to the applicant, its argument is supported by the provisions of EUIPO’s Guidelines for examination, according to which the term ‘ultra’, taken individually or in combination with other unregistrable elements, merely indicates a positive or appealing quality or function of the goods or services concerned, so that it cannot be registered as an EU trade mark, whether it is used alone or combined with another term.
26 Finally, the applicant submits that, according to the case-law, the term ‘ultra’, on its own, is a synonym for ‘going beyond’ or ‘extra’ and therefore plays the role of a superlative which designates a high and enhanced quality and is often used in advertising language (see, by analogy, judgments of 28 April 2015, Volkswagen v OHIM (EXTRA), T‑216/14, not published, EU:T:2015:230, paragraphs 21 and 23, and of 15 October 2019, Vans v EUIPO (ULTRARANGE), T‑434/18, not published, EU:T:2019:746, paragraph 21 and the case-law cited). Therefore, according to the applicant, the case-law relating to the non-distinctive nature of ‘extra’, which immediately informs consumers, without further reflection, that the goods or services concerned have positive qualities, can be applied mutatis mutandis to the term ‘ultra’.
27 EUIPO, supported by the intervener, disputes the applicant’s arguments.
28 In that regard, EUIPO contends that the case-law to which the applicant refers in its written pleadings and which is cited in EUIPO’s Guidelines for examination cannot be transposed to the present case, since it relates to compound word marks and seeks to prove the opposite point of view from that of the applicant. According to EUIPO, that case-law states rather that the prefix ‘ultra’, combined with another term or a superlative, serves to amplify the meaning of that term.
29 Furthermore, EUIPO and the intervener contend, in essence, that it must also be borne in mind that although the terms ‘extra’ and ‘ultra’ might have a similar meaning and be regarded as synonyms, as the applicant claims, they are nevertheless not interchangeable, for grammatical reasons, because the term ‘extra’ can be used on its own.
30 The intervener for its part contends that the Board of Appeal did not make an error of assessment in finding that the contested mark, used alone, was distinctive.
31 In that regard, the intervener maintains, first, that the term ‘ultra’, as a noun, does not have any meaning in relation to ‘beers’ in Class 32 and that, in essence, the applicant has not provided any evidence to the contrary. Secondly, the intervener contends that the various dictionary entries or screenshots of dictionaries and internet definitions show that that term is only a prefix. As such, it refutes the applicant’s argument that that term might be used as a stand-alone word and as a prefix, with the result that that argument is legally flawed. Thirdly, the intervener considers that the applicant has not demonstrated the laudatory or promotional nature of the contested mark since it misinterpreted the case-law relating to trade marks combining the term ‘ultra’ and another word element. Fourthly, the intervener submits that the applicant does not challenge, to the requisite legal standard, the Board of Appeal’s findings relating to the descriptive character of the contested mark in paragraphs 78 to 83 of the contested decision. According to the intervener, ‘ultra’, when used as a stand-alone word, does not highlight directly and unambiguously any specific aspects of the goods at issue, and thus the term must be considered to be neutral and inherently distinctive.
32 Article 7(1)(b) of Regulation No 40/94 provides that trade marks which are devoid of any distinctive character are not to be registered. Article 7(2) of that regulation states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union (judgment of 9 March 2022, Lea Nature Services v EUIPO – Debonair Trading Internacional (SO…?), T‑197/21, not published, EU:T:2022:118, paragraph 21).
33 The distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation No 40/94, means that that mark must serve to identify the goods in respect of which registration is sought as originating 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).
34 Furthermore, it is apparent from the case-law that the distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation No 40/94, must be assessed, first, by reference to the products or services in respect of which registration has been applied for 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).
35 In the present case, the goods covered by the contested mark, as set out in paragraph 1 of the contested decision, are ‘beers’ in Class 32, which are intended for all consumers. The Board of Appeal concluded, in paragraph 54 of the contested decision, that the relevant public consisted of the general public, with an average level of attention, and found, in paragraph 55 of that decision, that the relevant territory was that of the whole of the European Union. In response to a question raised at the hearing, EUIPO confirmed that the Board of Appeal had relied on the perception of the public in the English-speaking part of the European Union and the public speaking a Latin language that could understand the term ‘ultra’ as having the same meaning as in English.
36 It should also be borne in mind that according to settled case-law, all marks made up of signs or indications that are also used as advertising slogans, indications of qualities or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, and still are capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (see judgment of 30 April 2015, Steinbeck v OHIM – Alfred Sternjakob (BE HAPPY), T‑707/13 and T‑709/13, not published, EU:T:2015:252, paragraph 24 and the case-law cited).
37 It follows that a trade mark consisting of such signs or indications must be regarded as being devoid of any distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. On the other hand, such a mark must be recognised as having distinctiveness if, apart from its promotional function, it may be perceived immediately as an indication of the commercial origin of the goods and services in question (see judgment of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraph 17 and the case-law cited).
38 The first plea in law must be examined in the light of those considerations.
39 As a preliminary point, it should be recalled that the date of filing of the application for registration of an EU trade mark is the material date for the examination of an absolute ground for invalidity (order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraph 40; judgments of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 59, and of 3 June 2009, Frosch Touristik v OHIM – DSR touristik (FLUGBÖRSE), T‑189/07, EU:T:2009:172, paragraph 18). As is apparent from paragraph 1 of the contested decision, the material date to be taken into account in the examination of the present action is 17 October 2002.
40 In the first place, it must be observed that, on the material date, as the Board of Appeal noted in paragraph 63 of the contested decision, the Court has already held that the term ‘ultra’, used as a prefix, was capable of reinforcing the designation of a quality or characteristic of a product (judgment of 9 October 2002, Dart Industries v OHIM (UltraPlus), T‑360/00, EU:T:2002:244, paragraph 25).
41 In the second place, it should be noted that EUIPO’s Guidelines for examination are capable of providing relevant evidence showing EUIPO’s practice on the material date, since those guidelines may be taken into account in the assessment of the facts of the case. Despite their non-binding nature, EUIPO’s Guidelines for examination constitute a reference source on EUIPO’s practice in respect of trade marks and a set of rules setting out the line of conduct which the Office itself proposes to adopt (see, to that effect, judgment of 18 September 2015, Federación Nacional de Cafeteros de Colombia v OHIM – Hautrive (COLOMBIANO HOUSE), T‑387/13, not published, EU:T:2015:647, paragraphs 45 and 46 and the case-law cited). It is also apparent from the case-law that those guidelines are designed to bring together the practices stemming from, in particular, the decisions of the Courts of the European Union and of EUIPO and were drafted in order to reflect EUIPO’s practice (see, to that effect, judgment of 18 September 2015, COLOMBIANO HOUSE, T‑387/13, not published, EU:T:2015:647, paragraph 48).
42 Since EUIPO’s Guidelines for examination may provide relevant evidence to establish the factual context existing on the material date, it must be observed that, in Part B (entitled ‘Examination’), Section 4 (entitled ‘Absolute grounds for refusal’), Chapter 3 (‘Non-distinctive trade marks’), point 3 (‘Word elements’) of EUIPO’s Guidelines for examination, the latter, relying on a precedent of 9 December 2002 drawn up by the First Board of Appeal, expressly observed that terms merely denoting a positive or appealing quality or function of the goods or services concerned must be refused registration, whether applied for alone or in combination with descriptive terms. More specifically, according to those guidelines, with regard to which neither the Boards of Appeal nor the General Court are connected, the term ‘ultra’ is considered to be unregistrable, since it means ‘extremely’, whether used alone or in combination with other terms.
43 In addition, it should be noted, in paragraphs 60 and 89 of the contested decision, that, on the material date, EUIPO’s decision-making practice was aimed at an almost systematic refusal to register trade marks consisting of the term ‘ultra’ used alone or combined with other nouns. That evidence is also confirmed by the judgment of 9 October 2002, UltraPlus (T‑360/00, EU:T:2002:244), from which it is apparent, in essence, that EUIPO, on the material date, had already argued before the Court its settled practice of rejecting signs containing the word ‘ultra’ (see, to that effect, judgment of 9 October 2002, UltraPlus, T‑360/00, EU:T:2002:244, paragraph 53).
44 Even though EUIPO’s Guidelines for examination and EUIPO’s decision-making practice have no binding legal force, those elements nevertheless constitute relevant evidence for the purpose of establishing that, on the material date, the term ‘ultra’ could have a laudatory and promotional meaning in relation to the goods at issue.
45 In the third place, without prejudice to the considerations set out in paragraph 39 above, it must be borne in mind that, according to the case-law, material subsequent to the date of filing of the application for registration may also be taken into consideration provided that it enables conclusions to be drawn with regard to the situation as it was on that date (order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraph 41; judgments of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 60, and of 3 June 2009, FLUGBÖRSE, T‑189/07, EU:T:2009:172, paragraph 18).
46 In the present case, it is apparent from paragraphs 58 and 59 of the contested decision that the Board of Appeal relied on several online dictionaries, the date on which those definitions in question were put online being impossible to verify. As is apparent from paragraph 18 above, those definitions, which are well-known facts generally accessible to the general public, even if they are subsequent to the material date, constitute relevant evidence from which the meaning of the term ‘ultra’ can be inferred on that date and the way in which it could be perceived by the relevant public on that date.
47 It should also be noted that it is apparent from the various dictionary extracts that the term ‘ultra’ may be used both as a prefix or alone, as an adjective or as a noun. That is confirmed, moreover, by Annex A.5 to the application (see paragraph 20 above), from which it is apparent that that term, in English, may also be used as an adjective meaning ‘going beyond the usual limit’, ‘excessive’ or ‘extreme’.
48 Furthermore, it should be borne in mind that the General Court also clarified its line of case-law, holding, in essence, that the term ‘ultra’, used alone, means ‘which goes beyond what is usual or ordinary’, ‘excessive’, ‘extreme’ or ‘immoderate’ and that it was synonymous with ‘beyond something’ or ‘extra’ (see, to that effect, judgment of 15 October 2019, ULTRARANGE, T‑434/18, not published, EU:T:2019:746, paragraphs 20 and 21).
49 As such, it appears, according to the evidence set out in paragraphs 44, 46 and 48 above, that the term ‘ultra’ was, already at the relevant date, understood as meaning ‘beyond what is ordinary’, ‘excessive’, ‘extreme’ or ‘immoderate’. In any event, that term, which is a common and generic term, has, for the relevant public speaking English or a Latin language, an identical meaning both when it is used as a prefix or when it is used alone and is understood by that public as referring to a quality or characteristic of the product concerned. Furthermore, there is no reason to consider that its meaning would have varied between the date on which the trade mark application was filed and the date on which the application for a declaration of invalidity was filed.
50 In the fourth place, it should be noted that, as is apparent from paragraphs 48 and 49 above, and contrary to what EUIPO and the intervener submit, the Court has held, in essence, that the term ‘ultra’, which may be used alone or as a prefix, is synonymous with the term ‘extra’, which is a superlative denoting a high and intense quality, often used in advertising language. Accordingly, the Board of Appeal erred in finding, in paragraphs 60 and 68 of the contested decision, that the word ‘ultra’ could not, without being combined with other words, be regarded as a purely laudatory or promotional expression and that, therefore, the case-law relating to the term ‘extra’ could not be applied, by analogy, to the term ‘ultra’.
51 In that regard, it must be observed that the Court had already concluded that the term ‘extra’ was devoid of any distinctive character, in particular because it was laudatory, which was supposed to highlight abstract qualities of the goods or services designated by that term and to suggest to the consumer that those goods and services had qualities additional to those normally expected (see, to that effect, judgment of 28 April 2015, EXTRA, T‑216/14, not published, EU:T:2015:230, paragraph 21 and the case-law cited).
52 That conclusion, which constitutes further evidence, is supported by the General Court’s findings that, in essence, the generic meaning which tends to exalt, in an unspecified manner, the nature, function, quality or one of the qualities of any product, of the element ‘ultra’, which is synonymous with the term ‘extra’, and its usual use in everyday language, as in trade, as a generic laudatory term, contribute to the laudatory character of the mark applied for (see, to that effect, judgment of 15 October 2019, ULTRARANGE, T‑434/18, not published, EU:T:2019:746, paragraphs 21 and 32 and the case-law cited).
53 In the present case, contrary to what the intervener claims (see paragraph 31 above), it is sufficiently apparent from the evidence submitted by the applicant during the administrative phase that the term ‘ultra’, used alone or combined with other terms, is used in a generic and common way in trade for a wide range of everyday consumer goods and, in particular, for beers, contrary to what the Board of Appeal maintains in paragraph 70 of the contested decision.
54 The term ‘ultra’ clearly and immediately informs the relevant public of the superior quality of the goods compared with those of the competition. In those circumstances, it could, at the relevant date, be perceived by that public as an evocation of an idea of excellence, superiority or a certain taste or alcohol content of beers in Class 32.
55 It follows that the term ‘ultra’ is a generic laudatory term which cannot be regarded as capable of differentiating the commercial origin of the goods which it designates.
56 In the fifth place, the stylisation of the figurative element ‘ultra’, which is simple and banal and gives the word element a slightly two-dimensional aspect, does not divert consumers from the clear message conveyed by that word. The contested mark, as a whole, is therefore perceived as a mere promotional and laudatory message by the relevant public, and not as an indication of the commercial origin of the goods in question.
57 It follows that the term ‘ultra’ must be considered as being devoid of distinctive character for beers in Class 32. More specifically, when considering the need for the term ‘ultra’ to be available to other providers offering the products concerned, that term, whether used alone, as an adjective or noun, or as a prefix, has a laudatory and promotional character, which cannot be registered as an EU trade mark within the meaning of Article 7(1)(b) of Regulation No 40/94.
58 Therefore, the Board of Appeal made an error of assessment in finding, in essence, in paragraphs 72 and 96 of the contested decision, that the contested mark was distinctive or that it could not reasonably be expected that it would be perceived as being devoid of distinctive character in the future.
59 In those circumstances, the applicant is justified in claiming that the Board of Appeal infringed Article 7(1)(b) of Regulation No 40/94, with the result that the first plea in law must be upheld.
60 In the light of the foregoing, the contested decision must be annulled, without it being necessary to examine the second plea in law, since the contested mark is caught by an absolute ground for refusal of registration.
Costs
61 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.
62 Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant.
63 Since the intervener has been unsuccessful, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 January 2023 (Case R 2088/2021-5);
2. Orders EUIPO to bear its own costs and to pay those incurred by Amstel Brouwerij BV;
3. Orders Anheuser-Busch LLC to pay its own costs.
Schalin | Škvařilová-Pelzl | Kukovec |
Delivered in open court in Luxembourg on 12 June 2024.
V. Di Bucci | | S. Papasavvas |