JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
15 October 2025 (*)
( EU trade mark – Invalidity proceedings – EU figurative mark Frutaria – Absolute ground for invalidity – Descriptive character – Article 7(1)(c) and Article 51(1)(a) of Regulation (EC) No 40/94 – No distinctive character acquired through use – Article 7(3) and Article 51(2) of Regulation No 40/94 )
In Case T‑381/24,
Frutaria Innovation SL, established in Zaragoza (Spain), represented by M. Anadón Giménez and J. Learte Álvarez, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Markus Schneider, residing in Bonn (Germany), represented by F. Klopmeier and F. Breuer, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed, at the time of the deliberations, of M.J. Costeira, President, U. Öberg and E. Tichy-Fisslberger (Rapporteur), Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 10 June 2025,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Frutaria Innovation SL, seeks the partial annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 May 2024 (Case R 1377/2023-2), as corrected on 17 July 2024 (‘the contested decision’).
Background to the dispute
2 On 24 February 2022, the intervener, Mr Markus Schneider, filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 22 May 2007 in respect of the following figurative sign:
3 The goods and services covered by the contested mark in respect of which a declaration of invalidity was sought were in, inter alia, Classes 29, 31 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:
– Class 29: ‘Dried fruits’;
– Class 31: ‘Fresh fruits’;
– Class 35: ‘Export of fresh fruits’.
4 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 59(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), read in conjunction with Article 7(1)(b) and (c) of that regulation.
5 On 4 May 2023, the Cancellation Division dismissed the application for a declaration of invalidity.
6 On 3 July 2023, the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
7 On 27 May 2024, the Board of Appeal partially annulled the Cancellation Division’s decision.
8 In particular, first, that Board of Appeal found, in essence, that the contested mark was descriptive of ‘dried fruits’ in Class 29 and ‘fresh fruits’ in Class 31 (‘the goods concerned’), for the purposes of Article 7(1)(c) of Regulation 2017/1001, and, consequently, that it was also devoid of any distinctive character in respect of those goods, within the meaning of Article 7(1)(b) of that regulation. By contrast, the Board of Appeal found that the contested mark was not descriptive of the ‘export of fresh fruits’ in Class 35, nor devoid of any distinctive character in respect of those services.
9 Second, the Board of Appeal found that the applicant had not demonstrated that the contested mark had acquired distinctive character through use within the meaning of Article 59(2) of Regulation 2017/1001, read in conjunction with Article 7(3) of that regulation, in the relevant territory in respect of the goods concerned.
10 On 11 June 2024, the applicant submitted a request for correction of the Board of Appeal’s decision of 27 May 2024.
11 On 17 July 2024, the Board of Appeal adopted a corrigendum to the decision of 27 May 2024, in accordance with Article 102(1) of Regulation 2017/1001, on the grounds that, contrary to what had been stated in that decision, the application for a declaration of invalidity was upheld in respect of the goods concerned, and rejected as to the remainder, namely for the ‘export of fresh fruits’ in Class 35. Consequently, paragraphs 83, 113 and 114 of that decision, and points 1 and 2 of the operative part thereof, have been corrected to that effect.
Forms of order sought
12 The applicant claims, in essence, that the Court should:
– annul the contested decision in so far as the contested mark was declared invalid in respect of the goods concerned;
– order EUIPO to pay the costs, including those incurred in the proceedings before the Board of Appeal.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
14 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
15 Given the date on which the application for registration at issue was filed, namely 22 May 2007, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (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).
16 Consequently, in the present case, so far as concerns the substantive rules, the references to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation, and to Article 59(2) of Regulation 2017/1001, read in conjunction with Article 7(3) of that regulation, made by the Board of Appeal in the contested decision and by the parties in their written submissions must be understood as referring respectively to Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) and (c) of that regulation, and to Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) of that regulation.
17 In support of its action, the applicant relies, in essence, on three pleas in law, alleging, first, infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c) of that regulation, second, infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation, and, third, infringement of Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) of that regulation.
The first plea in law, alleging infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c) of that regulation
18 The applicant claims, in essence, that the contested mark, taken as a whole, cannot be regarded as descriptive in respect of the goods concerned. In particular, the applicant argues that the contested mark contains figurative elements that make that mark non-descriptive.
19 EUIPO and the intervener dispute the applicant’s arguments.
20 It should be recalled at the outset that, under Article 51(1)(a) of Regulation No 40/94, an EU trade mark is to be declared invalid on application to EUIPO where the EU trade mark has been registered contrary to the provisions of Article 7 of that regulation.
21 Under Article 7(1)(c) of Regulation No 40/94, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
22 Those signs or indications are deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
23 For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
24 Whether a sign is descriptive can be assessed only, first, by reference to the goods or services concerned and, second, by reference to the understanding which the relevant public has of the sign (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
The relevant public
25 As regards the relevant public, the Board of Appeal noted, in paragraph 26 of the contested decision, that it was common ground between the parties that the word element ‘frutaria’ of the contested mark was a Portuguese word and that it would be understood by the Portuguese-speaking part of the relevant public as meaning a ‘fruit shop’. In those circumstances, the Board of Appeal stated, in paragraphs 26 to 28 of the contested decision, that it was focusing solely on the perception of that part of the relevant public, since, in accordance with Article 7(2) of Regulation No 40/94, a trade mark is not to be registered notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
26 There is no need to call into question those assessments, which are, moreover, not disputed by the applicant.
27 Furthermore, in paragraph 30 of the contested decision, the Board of Appeal found, in essence, that the goods concerned were everyday goods aimed at average consumers with a below-average level of attention. In paragraph 105 of the contested decision, the Board stated that the relevant public was the public at large.
28 The applicant disputes that assessment. It argues, in essence, that the goods concerned are aimed at both the general public and professionals.
29 EUIPO and the intervener dispute the applicant’s arguments.
30 Admittedly, it is true, as EUIPO correctly maintains, that the goods concerned are everyday food products intended for all consumers, that is to say the general public.
31 However, as the applicant has argued, it cannot be ruled out that the relevant public consists not only of the general public, but also of professionals.
32 That being said, in the light of the nature of the goods concerned, the purchase of which does not, as a general rule, elicit careful consideration on the part of consumers, the level of attention of the relevant public cannot be considered to be different from that found by the Board of Appeal.
The understanding of the contested mark
33 First, the Board of Appeal noted, in paragraphs 34 to 39 of the contested decision, that the Portuguese word ‘frutaria’ could be considered to be descriptive of the goods concerned for the relevant public, since those goods are generally sold in a fruit shop.
34 Second, with regard to the figurative elements and the stylisation of the contested mark, the Board of Appeal found, in paragraphs 56 and 58 of the contested decision, that the figurative elements were banal, were commonly used in relation to foodstuffs and would be perceived as decorative elements serving to accentuate the overall prominence of the word element in that mark. In paragraph 63 of the contested decision, that Board of Appeal found that the stylisation of the word element was simple. In paragraph 57 of the contested decision, it noted that the mere addition of the colour green, which was commonly used in the field of foodstuffs, to the descriptive word element was not sufficient to give the contested mark distinctive character, but would be perceived as a decorative element. According to the Board of Appeal, those figurative elements and that stylisation of the contested mark were not sufficiently striking, either taken in isolation or as a whole, to divert the relevant public from the descriptive meaning of the word element ‘frutaria’ (paragraph 78 of the contested decision).
35 In particular, the Board of Appeal found that: (i) the underlining of the word element ‘frutaria’ did not change the descriptive character of the contested mark; (ii) the semicircle around that word element was merely a decorative flourish; (iii) the curved elements highlighted that element without being an indication of commercial origin; (iv) the green square was a simple, basic geometric shape devoid of any distinctive character per se; and (v) last, the stylisation of the word element, consisting of a common font, was very simple (paragraphs 59 to 63 of the contested decision).
36 The applicant argues that the figurative elements of the contested mark, namely the wavy line, the semicircle, the green square and colour green, do not evoke the goods concerned, with the result that they cannot be regarded as descriptive of those goods. The applicant also complains that the Board of Appeal did not examine the contested mark as a whole. It submits, in essence, that the combination of the figurative elements and the stylised word element is sufficiently distinctive, as a whole, to be perceived as an indication of the commercial origin of the goods concerned. Moreover, according to the applicant, the figurative elements are arranged creatively to build a corporate image. It further states that the presence of a wavy line builds a stable corporate image according to the judgment of 13 October 2021, Schneider v EUIPO – Frutaria Comercial de Frutas y Hortalizas (Frutaria) (T‑12/20, not published, EU:T:2021:702). Last, the applicant complains that the Board of Appeal did not follow EUIPO’s guidelines or decision-making practice. It refers to several decisions of the Boards of Appeal and of the Cancellation Division of EUIPO to support its argument that the contested mark, taken as a whole, has a certain degree of distinctive character and is memorable to the relevant public.
37 EUIPO and the intervener dispute the applicant’s arguments.
38 In that regard, it should be borne in mind that, as regards a composite mark, the assessment as to whether it is descriptive cannot be limited to an evaluation of each of its words or elements, considered in isolation, but must, in any event, be based on the relevant public’s overall perception of that mark and not on the presumption that elements that are individually not descriptive cannot, on being combined, be descriptive. The mere fact that each of those elements, considered separately, is not descriptive does not mean that the combination of those elements cannot be descriptive (see, to that effect, judgment of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraphs 41 and 42 and the case-law cited).
39 The examination of whether a composite mark, taken as a whole, is descriptive of the goods and services covered is not, however, inconsistent with a successive examination of the different composite elements of the mark in question (see judgment of 12 April 2016, Choice v EUIPO (Choice chocolate & ice cream), T‑361/15, not published, EU:T:2016:214, paragraph 23 and the case-law cited).
40 Furthermore, as the Board of Appeal correctly noted in paragraph 49 of the contested decision, where the word element of a composite mark is descriptive of the goods covered, the decisive question is whether, from the point of view of the relevant public, the figurative elements change the meaning of the sign at issue as a whole in relation to the goods covered. Thus, where the word element of a mark is descriptive, the mark is, as a whole, descriptive if the graphic elements of that mark do not divert the relevant public’s attention from the descriptive message conveyed by the word element (see judgment of 26 April 2018, Pfalzmarkt für Obst und Gemüse v EUIPO (100% Pfalz), T‑220/17, not published, EU:T:2018:229, paragraph 29 and the case-law cited).
41 As a preliminary point, there is no need to call into question the Board of Appeal’s assessment, in paragraph 18 of the contested decision, that the relevant date for the purpose of assessing the descriptive character of the contested mark is that on which the application for registration was filed, namely 22 May 2007.
42 As regards the word element ‘frutaria’ of the contested mark, the applicant does not dispute the Board of Appeal’s assessment that that element will be understood by the Portuguese-speaking part of the relevant public as meaning a ‘fruit shop’ (see paragraph 25 above) and accordingly a shop or a place where the goods concerned are sold, with the result that that element has descriptive character.
43 In such circumstances, the decisive question is whether, from the point of view of the relevant public, the figurative elements change the meaning of the contested mark as a whole in relation to the goods concerned (see paragraph 40 above).
44 With regard to those figurative elements, contrary to what the applicant claims, the green square, the semicircle and the wavy line are characterised by their simple, ordinary and not very stylised representation, with the result that the Board of Appeal was correct in finding, in paragraph 66 of the contested decision, that, from the point of view of the relevant public, those elements could not change the meaning of the contested mark as a whole, resulting from the word element ‘frutaria’, in relation to the goods concerned.
45 As regards the stylisation of the word element, the Board of Appeal was correct in finding, in paragraph 63 of the contested decision, that it was only simple, since that element is represented in one common font in green and in bold. On account of its simplicity, the stylisation of the word element is not such as to influence the understanding or the meaning of that element and, consequently, of the contested mark as a whole.
46 It follows that the Board of Appeal correctly found, in paragraphs 63 to 66 and 78 of the contested decision, that the figurative elements of the contested mark, including the stylisation of the word element, taking into account, in essence, their shape and position, did not divert the relevant public’s attention from the descriptive message conveyed by the word element.
47 That finding is not called into question by the applicant’s other arguments.
48 First, the applicant relies on a minimum degree of distinctive character of the contested mark, which has been confirmed on several occasions, in particular in paragraphs 67 and 68 of the judgment of 13 October 2021, Frutaria (T‑12/20, not published, EU:T:2021:702).
49 It must be stated that the judgment of 13 October 2021, Frutaria (T‑12/20, not published, EU:T:2021:702), to which the applicant refers, was delivered in the context of revocation proceedings in respect of the contested mark.
50 Consequently, contrary to what the applicant claimed at the hearing, the considerations set out in that judgment cannot be transposed to the present dispute concerning invalidity proceedings. As the Board of Appeal noted, in essence, in paragraph 73 of the contested decision, the distinctive character of a trade mark can only be called into question in the context of an application for a declaration of invalidity under Article 51 of Regulation No 40/94 (see, to that effect, judgment of 29 April 2015, Hostel Tourist World v OHIM – WRI Nominees (HostelTouristWorld.com), T‑566/13, not published, EU:T:2015:239, paragraph 35 and the case-law cited). In the context of revocation proceedings, such as those at issue in the judgment of 13 October 2021, Frutaria (T‑12/20, not published, EU:T:2021:702), while it is necessary, as the case may be, to take into account, as the Court did in that judgment, the greater or lesser degree of distinctive character of the mark at issue, that mark cannot, by virtue of its having been registered and unless its validity is called into question, be found to be devoid of any distinctive character (see, to that effect, judgment of 26 July 2023, Apart v EUIPO – S. Tous (Representation of the outline of a bear), T‑638/21, not published, EU:T:2023:434, paragraph 79).
51 Second, as regards the applicant’s argument that the Board of Appeal did not assess the contested mark as a whole, it must be noted that it is apparent from paragraphs 58, 64 and 66 of the contested decision that the Board of Appeal did assess the descriptive character of the contested mark, taken as a whole. In essence, the Board of Appeal found that, given their position around the word ‘frutaria’, the figurative elements of the contested mark, namely the semicircle, the green square and the wavy line, together with the simple stylisation of that word element, emphasised the descriptive message conveyed by that element. Thus, in accordance with the case-law referred to in paragraph 40 above, the Board of Appeal examined whether the figurative elements and the stylisation of the word element could change the relevant public’s perception of the contested mark as a whole, resulting from the descriptive character of the word element, but found that they did not do so in the present case, since those figurative elements and that stylisation instead emphasised the descriptive character of that word element.
52 Third, even if it were to be accepted, as the applicant maintains, that the figurative elements do not evoke the goods concerned, the fact remains that, from the point of view of the relevant public, those elements do not change the meaning of the contested mark as a whole in relation to those goods. The same applies to the applicant’s submission that the presence of the wavy line is not random.
53 Fourth, as regards the references to the EUIPO guidelines relating to trade marks and designs, it should be noted, as EUIPO has argued, that those guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48). Whether the registration of a sign as an EU trade mark is lawful is not to be assessed by reference to those guidelines, but by reference to the provisions of Regulation No 40/94 as interpreted by the EU judicature (see judgment of 1 June 2016, Grupo Bimbo v EUIPO (Shape of a bar with four circles), T‑240/15, not published, EU:T:2016:327, paragraph 58 and the case-law cited).
54 Fifth, in so far as the applicant relies on previous decisions of EUIPO, it is sufficient to note the following.
55 In its review of legality, the Court is not bound by EUIPO’s decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 22 April 2008, Casa Editorial el Tiempo v OHIM – Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, not published, EU:T:2008:121, paragraph 48).
56 Decisions concerning the registration of a sign as an EU trade mark which EUIPO takes under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous administrative practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
57 EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, including the principles of equal treatment and of sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73). In the light of those principles, EUIPO must take into account the decisions it has already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. Those principles must be applied in a way that is consistent with respect for the principle of legality (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 and 75).
58 Consequently, a person who supports the retention of a sign as an EU trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any application for a declaration of invalidity must be stringent and full, in order to prevent trade marks from being improperly retained. That examination must be undertaken in each individual case. The retention of a sign as an EU trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for invalidity (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 76 and 77, and of 20 January 2015, Aic v OHIM – ACV Manufacturing (Heat exchanger inserts), T‑617/13, not published, EU:T:2015:32, paragraph 32 and the case-law cited).
59 In the present case, in the application, the applicant referred to several previous decisions of EUIPO, both from the Boards of Appeal and from the lower adjudicating bodies. As regards, first, the previous decisions of the Boards of Appeal of EUIPO which the applicant had already relied on at the stage of the appeal, it should be recalled that, in paragraphs 75 and 76 of the contested decision, the Board of Appeal set out the reasons why it considered that the present case differed from those previous decisions. The applicant does not put forward any new argument which might invalidate the Board of Appeal’s assessment. As regards, second, another previous decision of a Board of Appeal and several previous decisions of the Cancellation Division, unlike the marks at issue in those cases and contrary to what the applicant alleges, the figurative elements and the stylisation of the contested mark in the present case are simple, ordinary and not very stylised (see paragraphs 44 and 45 above).
60 In any event, as is apparent from paragraphs 25 to 46 above, the Board of Appeal was fully entitled to find that the contested mark was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation No 40/94, with the result that the applicant cannot usefully rely on EUIPO’s previous decisions in order to invalidate that finding.
The relationship between the contested mark and the goods concerned
61 On account of the descriptive character of the word element of the contested mark ‘frutaria’ in respect of the goods concerned (see paragraph 42 above) for the Portuguese-speaking part of the relevant public, and the fact that the figurative elements are not such as to distract the attention of that public from the descriptive meaning of that word element in respect of those goods (see paragraphs 44 to 60 above), the relationship between that mark, taken as a whole, and the goods concerned is sufficiently direct and specific to enable the relevant public immediately to perceive, without further thought, a description of those goods or of one of their characteristics.
62 Accordingly, the contested mark has descriptive character for the purposes of Article 7(1)(c) of Regulation No 40/94 (see paragraphs 25 and 42 above).
63 It follows from all of the foregoing considerations that all of the applicant’s arguments are unfounded and that, therefore, the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation
64 The applicant claims, in essence, that the contested mark is not devoid of any distinctive character. The applicant complains that the Board of Appeal denied the contested mark a minimum degree of distinctive character in respect of the goods concerned. It also claims that the inherent distinctive character of the contested mark has been acknowledged several times during various opposition and revocation proceedings. According to the applicant, the contested mark is distinctive since it enables the relevant public to identify the commercial origin of the goods concerned and to distinguish them from those of other undertakings.
65 EUIPO and the intervener dispute the applicant’s arguments.
66 It is apparent from Article 7(1) of Regulation No 40/94 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign to be ineligible for registration as an EU trade mark or, if it has been registered, for the EU trade mark to be declared invalid pursuant to Article 51(1) of that regulation (order of 21 April 2016, ultra air v EUIPO, C‑232/15 P, not published, EU:C:2016:299, paragraph 57). Accordingly, there is no need to examine the merits of the second plea in law relied on by the applicant, alleging infringement of Article 7(1)(b) of that regulation.
The third plea in law, alleging infringement of Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) of that regulation
67 The applicant argues, in essence, that the Board of Appeal incorrectly found, in the contested decision, that the contested mark had not acquired distinctive character through use. According to the applicant, the Board of Appeal did not examine the evidence as a whole. The applicant complains that the Board of Appeal incorrectly denied the probative value of the statement by the Head of the applicant’s Administration Department in which he states that the contested mark has been in widespread use worldwide for many years in the sale of fruit, generating significant turnover. With regard to how geographically widespread use has been, the applicant submits that the invoices show that goods bearing the contested mark were delivered throughout Portugal. The applicant claims that, since the clients are resellers, the extent of use cannot be called into question. The applicant maintains that long-standing use of the contested mark is demonstrated by the information relating to turnover and by the statements from the Frutaria group and from resellers. The applicant submits that the relevant public consists of the general public and of professionals. Thus, according to the applicant, the Board of Appeal incorrectly required the production of invoices addressed to end consumers, whereas it would be unusual for invoices to be issued in such cases and it would be unlikely to obtain such invoices from the companies delivering the goods concerned.
68 The applicant also argues that statements from third-party companies confirm that the contested mark is perceived as an indication of commercial origin in the territory of Portugal, meaning that the Board of Appeal should have taken those statements into consideration. According to the applicant, those statements show that, first, when seeing the contested mark, the relevant public recognises the commercial origin of the goods concerned, second, consumers in Portugal would encounter that mark when purchasing fruits and, third, that mark features on packaging shown to the public. The applicant alleges that the Board of Appeal contradicted itself in criticising the lack of invoices addressed to the general public or to Portuguese supermarket chains. As regards the evidence consisting of brochures showing that the applicant was present at the ‘Fruit Attraction’ international trade fair, at which the contested mark was displayed, the applicant submits that the Board of Appeal could not disregard the fact that the relevant public included not only the general public but also professionals. The applicant further states, in essence, that the evidence shows that part of the relevant public, namely professional resellers offering the goods concerned to end consumers, was exposed to the contested mark. According to the applicant, the investment which it made to take part in such a trade fair, where that mark was displayed, confirms that that mark is perceived by the relevant public as an indication of commercial origin.
69 EUIPO and the intervener dispute the applicant’s arguments.
70 Under Article 51(2) of Regulation No 40/94, where an EU trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
71 Thus, Article 51(2) of Regulation No 40/94 covers marks whose registration was contrary to Article 7(1)(b), (c) or (d) of that regulation and which, in the absence of such a provision, would have been declared invalid pursuant to Article 51(1) of that regulation. The precise purpose of Article 51(2) is to maintain the registration of such of those marks which, because of the use that has been made of them, have in the meantime – that is to say, after their registration – acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when it took place, such registration was contrary to Article 7 of Regulation No 40/94 (see judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 60 and the case-law cited).
72 Article 51(2) of Regulation No 40/94 and Article 7(3) of that regulation are governed by the same logic and must be interpreted in the same way, in the light of the same relevant factors (judgment of 28 June 2019, Gibson Brands v EUIPO – Wilfer (Shape of a guitar body), T‑340/18, not published, EU:T:2019:455, paragraph 64).
73 According to the case-law, in order to determine whether a mark has acquired distinctive character through the use that has been made of it, in accordance with Article 51(2) of Regulation No 40/94, the competent authority must carry out an examination by reference to the actual situation and make an overall assessment of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking (see judgment of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 40 and the case-law cited).
74 In that regard, it must be recalled that 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 applied for, 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 (see judgment of 6 March 2024, Lidl Stiftung v EUIPO – MHCS (Shade of the colour orange), T‑652/22, not published, EU:T:2024:152, paragraph 99 and the case-law cited).
75 However, 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 judgment of 6 March 2024, Shade of the colour orange, T‑652/22, not published, EU:T:2024:152, paragraph 100 and the case-law cited).
76 Moreover, it is apparent from the case-law that proof of distinctive character acquired through use cannot be furnished by the mere production of sales volumes and advertising material. Likewise, the mere fact that the sign has been used in the European Union for some time is also not sufficient to show that the public targeted by the goods in question perceives it as an indication of commercial origin (see judgment of 6 March 2024, Shade of the colour orange, T‑652/22, not published, EU:T:2024:152, paragraph 101 and the case-law cited).
77 It follows that direct evidence is necessary in order to demonstrate that a mark has acquired distinctive character through use (judgment of 6 March 2024, Shade of the colour orange, T‑652/22, not published, EU:T:2024:152, paragraph 102).
78 Furthermore, for a mark to have acquired distinctive character through use, it is necessary that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking because of the mark (see judgment of 15 December 2005, BIC v OHIM (Shape of a lighter), T‑262/04, EU:T:2005:463, paragraph 61 and the case-law cited; see also, by analogy, judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 52).
79 In order to determine whether the grounds for refusal laid down in Article 7(1)(b) to (d) of Regulation No 40/94 must be excluded on account of the acquisition of distinctive character through use, the only relevant situation is as exists in the part of the territory of the European Union where the grounds for refusal have been established (see judgment of 14 December 2022, Devin v EUIPO – Haskovo Chamber of Commerce and Industry (DEVIN), T‑526/20, not published, EU:T:2022:816, paragraph 137 and the case-law cited).
80 The distinctive character of a mark, including that acquired through use, must be assessed in relation to the goods or services in respect of which registration of the mark is sought and in the light of the perception which the relevant public has of the mark (see, to that effect, judgment of 5 March 2003, Alcon v OHIM – Dr. Robert Winzer Pharma (BSS), T‑237/01, EU:T:2003:54, paragraph 51 and the case-law cited).
81 In paragraphs 92 and 93 of the contested decision, the Board of Appeal recalled that it was necessary to assess whether, in the territory in which it had considered the contested mark to be descriptive of the goods concerned, namely Portugal, that mark had acquired, through the use that has been made of it, distinctive character either on the date on which the application for registration of the contested mark was filed, namely 22 May 2007, or on the date on which the application for a declaration of invalidity was filed, namely 24 February 2022. That approach is not disputed by the applicant.
82 In the first place, as is apparent from paragraphs 30 to 32 above, the goods concerned are intended for the general public and professionals. Thus, as the applicant argues, the Board of Appeal should have considered that the existence of distinctive character acquired through use had to be demonstrated with regard to the Portuguese-speaking part of the relevant public consisting not only of the general public, but also of professionals.
83 In the second place, as is apparent from paragraph 5 of the contested decision, the applicant submitted a body of evidence during the administrative proceedings before EUIPO for the purpose of establishing that the contested mark had acquired distinctive character, namely, inter alia:
– a statement by the Head of the applicant’s Administration Department attesting to the use of the contested mark worldwide for many years in the sale of fruit, generating significant turnover;
– statements signed by two Portuguese third-party companies claiming that, to their knowledge, the contested mark is perceived as an indication of commercial origin by at least a significant proportion of the relevant public, given its long-standing use and the presence of that mark on the packaging of the goods concerned, on invoices, and on documents and communications of a commercial nature;
– invoices bearing the contested mark, sent to Portuguese customers during the period from 2001 to 2022;
– brochures demonstrating that the applicant was present, for the period from 2009 to 2022, at the ‘Fruit Attraction’ international trade fair, at which the contested mark was displayed;
– a statement by the Director of the ‘Fruit Attraction’ international trade fair dated 30 May 2022, stating that the contested mark was used to promote fresh fruits at that fair.
84 In paragraphs 102 and 103 of the contested decision, the Board of Appeal, in essence, acknowledged that certain items of evidence, namely the statement by the Head of the applicant’s Administration Department and the sales invoices supporting that statement, demonstrated the extent of use of the contested mark within the European Union and, in particular, Portugal.
85 However, in paragraphs 102, 104 to 106, 108 and 109 of the contested decision, the Board of Appeal noted that the evidence, taken as a whole, did not relate to the relevant public’s perception of the contested mark. In particular, it found that the applicant had not demonstrated that at least a significant proportion of that public identified the origin of the goods concerned. In paragraph 110 of the contested decision, the Board of Appeal further stated that the applicant had not submitted any evidence relating to the market share held by the contested mark, any figures on the amount invested in promoting that mark, or any statements from chambers of commerce and industry or other trade and professional associations showing that that mark has enhanced distinctive character in Portugal. Thus, failing any direct evidence of acquired distinctive character with regard to the relevant Portuguese public, the Board of Appeal found, in paragraphs 111 and 112 of the contested decision, that the contested mark had not acquired distinctive character through use in respect of the goods concerned for the purposes of Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) of that regulation.
86 On the one hand, with regard to the direct evidence, it must be stated that the applicant has not in fact provided surveys, market studies, statements from trade and professional associations or statements from chambers of commerce and industry, relating to the Portuguese-speaking part of the relevant public’s perception of the contested mark, within the meaning of the case-law referred to in paragraphs 73 to 77 above.
87 While, by contrast, the applicant has produced statements from third-party companies, they are insufficient to demonstrate that the relevant public perceives the contested mark as an indication of commercial origin. Those statements therefore do not lead to the conclusion that that mark has acquired distinctive character through use.
88 Although they mention the relevant public’s perception of the contested mark, those statements merely attest to the fact that that mark appeared on invoices, documents and communications of a commercial nature and the packaging of the goods concerned, to the fact that, according to those companies, that mark has been used to identify the goods concerned in trade even before the date on which the application for invalidity was filed, and, last, to the fact that, according to those companies, the function of identifying the commercial origin of those goods fulfilled by that mark had never been called into question on the Portuguese market. However, those statements are general in nature and are not supported by direct evidence.
89 Moreover, the content of the statements from third-party companies is almost identical. Those statements differ only in the identification of the companies in question and in the identification of the Portuguese supermarket chains that resell the goods concerned bearing the contested mark on their packaging. On account of their nearly identical content, those statements cannot be regarded as complementary.
90 Therefore, in the light of their content, the statements from third-party companies are capable only of corroborating, where necessary, further items of evidence.
91 On the other hand, with regard to the indirect evidence provided by the applicant, the following should be noted.
92 First, contrary to what the applicant claims, the Board of Appeal did not dismiss the probative value of the statement by the Head of the applicant’s Administration Department. It must be stated that, in paragraphs 96 to 101 of the contested decision, the Board of Appeal found that, although that statement could not be ignored in itself, its probative value was nevertheless low on account of the fact that it had been drawn up in the interest of its author. In paragraph 102 of the contested decision, that Board of Appeal also expressly acknowledged that the information contained in that statement demonstrated the extent of the use within the European Union, in particular in Portugal. Thus, the Board of Appeal did not deny that that statement had any probative value.
93 In any event, it follows from the case-law that probative value can be given to a statement, within the meaning of Article 76(1)(f) of Regulation No 40/94, made by one of the employees of the party relying on that statement only if it is supported by further evidence (judgment of 7 June 2005, Lidl Stiftung v OHIM – REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 43; see also judgment of 7 September 2022, 6Minutes Media v EUIPO – ad pepper media International (ad pepper the e-advertising network), T‑521/21, not published, EU:T:2022:520, paragraph 100 and the case-law cited). Therefore, in paragraph 101 of the contested decision, the Board of Appeal correctly required further evidence to corroborate the turnover figures in that statement, such as reliable accounting documents containing additional details concerning, in particular, the goods or services to which those turnover figures related.
94 Second, with regard to the invoices produced, it is true that invoices addressed to professionals may indicate that that part of the relevant public has been exposed to the contested mark. However, contrary to what the applicant maintains and as is apparent from the case-law referred to in paragraph 76 above, proof of distinctive character acquired through use cannot be furnished by the mere production of sales volumes of the goods concerned marketed under that mark.
95 Likewise, the mere fact that the contested mark has been used in the European Union for some time is also not sufficient to show that the relevant public perceives that mark as an indication of commercial origin. Consequently, even if it were apparent from the evidence produced by the applicant that the goods concerned bearing the contested mark have been marketed for more than 20 years, that fact would be insufficient in itself, but also in conjunction with the further evidence produced, to find that the relevant public would actually perceive those goods as originating from a particular undertaking.
96 Furthermore, the applicant’s argument, by which it complains that the Board of Appeal required the production of invoices addressed to end consumers, whereas it would be unusual for invoices to be issued in such cases and it would be unlikely to obtain such invoices from the companies delivering the goods concerned, is based on an incorrect reading of the contested decision. In paragraph 105 of the contested decision, the Board of Appeal in fact stated that the invoices produced by the applicant, addressed to Portuguese undertakings, did not provide sufficient information to demonstrate that a significant proportion of the relevant public perceived the contested mark as an indication of the commercial origin of the goods concerned. That Board of Appeal correctly required the production of evidence demonstrating that at least a significant proportion of the relevant public identified the goods concerned as originating from a particular undertaking because of the contested mark.
97 As regards the applicant’s argument that the Board of Appeal could not require it to produce invoices addressed to Portuguese supermarket chains, without the contested decision being vitiated by contradictions, it should be noted, as the Board of Appeal noted, that the submission of a significant number of those invoices could have indicated that the general public has been exposed to the contested mark.
98 Therefore, as the Board of Appeal correctly found in the contested decision, the invoices provided by the applicant are not capable of demonstrating that at least a significant proportion of the relevant public identified the goods concerned as originating from a particular undertaking.
99 Third, as regards the brochures demonstrating that the applicant was present at the ‘Fruit Attraction’ international trade fair, at which the contested mark was displayed, and the statement of the Director of that fair, even if it were accepted that that evidence could indicate that a proportion of the relevant public has been exposed to the contested mark, the fact remains that that evidence is indirect and does not relate to the relevant public’s perception of the contested mark. That evidence is therefore not capable of demonstrating that a significant proportion of the relevant public perceives the mark as an indication of the commercial origin of the goods concerned.
100 Furthermore, the applicant itself admits that the Director of the ‘Fruit Attraction’ international trade fair is not in a position to comment on the perception of the contested mark by the Portuguese-speaking part of the visitors to that fair.
101 Fourth, contrary to what the applicant claims, the Board of Appeal, after examining the items of evidence separately in paragraphs 96 to 108 of the contested decision, assessed the evidence as a whole. That Board of Appeal, in paragraph 111 of the contested decision, found that the evidence produced by the applicant, taken as a whole, did not enable it to determine the market share held by the contested mark, how intensive, geographically widespread and long-standing use of that mark has been, the amount invested by the applicant in promoting the mark and the proportion of the relevant class of persons who, because of that mark, identified the goods concerned as originating from the applicant.
102 Since all of the applicant’s arguments must therefore be rejected, the third plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
103 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.
104 Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Frutaria Innovation SL to pay the costs.
Costeira | Öberg | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 15 October 2025.
V. Di Bucci | | M. van der Woude |