JUDGMENT OF THE GENERAL COURT (First Chamber)
29 March 2023 (*)
(EU trade mark – Invalidity proceedings – EU word mark DECOTEC – Absolute ground for invalidity – Lack of descriptiveness – Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001))
In Case T‑308/22,
celotec GmbH & Co. KG, established in Sendenhorst (Germany), represented by E. Warnke and J. Römelt, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Decotec Printing, SA, established in Barcelona (Spain), represented by K. Guridi Sedlak, lawyer,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, M. Brkan and T. Tóth (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 7 February 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, celotec GmbH & Co. KG, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 March 2022 (Case R 1025/2021-5) (‘the contested decision’).
Background to the dispute
2 On 17 December 2019, the applicant filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following a trade mark application in respect of the word sign DECOTEC which had been filed by Decotec Printing, SA, on 7 June 2012.
3 The goods covered by the contested mark in respect of which a declaration of invalidity was sought are in Classes 16, 19 and 27 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the list of the following goods, as restricted on 13 May 2013:
– Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; drawer liners and/or furniture liners, of paper, wood-based paper, printed decorative paper, paper for lining’;
– Class 19: ‘Paper for use in building, except for its use in connection with infrastructures such as roads and rail tracks as well as pipelines; wax paper for use in building, except for its use in connection with infrastructures such as roads and rail tracks as well as pipelines; waterproofed paper for building, except for its use in connection with infrastructures such as roads and rail tracks as well as pipelines; paperboard for building, except for its use in connection with infrastructures such as roads and rail tracks as well as pipelines; roofing paper; tarred roofing paper; cladding sheets of wood; material made of polyethylene in the form of boards used as a wood substitute; all of the aforesaid goods made on the basis of cellulose fibres, and not made of bitumen or bituminous materials, and not for use in connection with infrastructures such as roads and rail tracks as well as pipelines’;
– Class 27: ‘Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile); wallpapers, wall coverings of paper, paper for walls and ceilings, paper for covering walls and ceilings, painted paper lined with textiles’.
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 28 May 2021, the Cancellation Division rejected the application for a declaration of invalidity in its entirety on the basis of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation.
6 On 8 June 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the contested mark had been registered without there having been any infringement of Article 7(1)(b) and (c) of Regulation 2017/1001.
8 In that regard, the Board of Appeal pointed out, inter alia, that the relevant public was the public in the European Union, which consisted both of average consumers, who were regarded as being reasonably well informed and reasonably observant and circumspect, and of professionals displaying a high level of attention.
9 Next, the Board of Appeal rejected the plea alleging that the contested mark was descriptive after pointing out, inter alia, that that sign did not, in itself, have any specific meaning and that the applicant had not proved that that sign had been used for descriptive purposes. Lastly, the Board of Appeal rejected the plea alleging that the contested mark was devoid of any distinctive character, on the ground that the applicant had not submitted any argument other than that alleging that that mark was descriptive.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
11 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 It must be pointed out at the outset that, given the date on which the application for registration in question was filed, namely 7 June 2012, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (see, to that effect, judgment of 21 April 2021, Apologistics v EUIPO – Kerckhoff (APO), T‑282/20, not published, EU:T:2021:212, paragraph 12).
13 Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the provisions of Regulation 2017/1001 must be understood as referring to the provisions of Regulation No 207/2009, which are substantively identical.
14 Furthermore, since, 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 case is governed by the procedural provisions of Regulation 2017/1001.
15 In support of its action, the applicant puts forward three pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001), secondly, infringement of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) and, thirdly, infringement of Article 94(1) of Regulation 2017/1001.
16 Since the third plea relates to complaints alleging a failure to state reasons and the first two pleas dispute the merits of that reasoning, it is appropriate to examine the third plea first.
The third plea, alleging infringement of Article 94(1) of Regulation 2017/1001
17 By its third plea, the applicant submits, in essence, first, that the Board of Appeal did not take into account the fact that Annexes A 32 to A 53 of the annexes in the Board of Appeal’s case file on which it had relied before the Board of Appeal were meant to prove that the goods in question could be decorated or were based on technology and that, consequently, the contested mark described them; secondly, that the Board of Appeal did not ‘assess the descriptive character of the sign “DECOTEC” in relation to the goods in question, but merely state[d] without any reasoning that there [wa]s no direct connection between the meaning of [that sign] and the relevant goods’; thirdly, that the contested decision does not contain any reasoning as to why the combination of the two elements comprising the word sign DECOTEC should not result in a meaningful expression, namely ‘decoration technology’, or as to why the expression ‘decoration technology’ does not in itself have a meaning; fourthly, that the Board of Appeal did not provide any explanation as to why several mental steps should be required in order the consider the word sign DECOTEC to be descriptive and, fifthly, that the Board of Appeal did not provide any reasoning as to why it took the view that the contested mark was not devoid of any distinctive character.
18 EUIPO, supported by the intervener, contends that that plea should be rejected.
19 In that regard, it must be borne in mind that the first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to address all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question. Furthermore, the obligation to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision. In addition, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its review (see judgment of 4 May 2022, Deichmann v EUIPO – Munich (Representation of two crossed stripes placed on the side of a shoe), T‑117/21, not published, EU:T:2022:271, paragraph 17 and the case-law cited).
20 It must also be added that the obligation to state reasons provided for in Article 296 TFEU is an essential procedural requirement which must be distinguished from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will vitiate the substantive legality of the decision, but not the statement of reasons in that decision, which may be adequate even though it sets out reasons which are incorrect. It follows that objections and arguments intended to establish that a measure is not well founded are irrelevant in the context of a plea alleging an inadequate statement of reasons or a lack of such a statement (see judgment of 22 October 2020, EKETA v Commission, C‑274/19 P, not published, EU:C:2020:853, paragraph 79 and the case-law cited).
21 In that regard, so far as concerns the first four of the applicant’s arguments, it must be pointed out that, as is apparent from paragraphs 62 and 63 and paragraphs 69 to 73 of the contested decision, the Board of Appeal, without denying that Annexes A 32 to A 53 in the Board of Appeal’s case file were intended to prove that the relevant goods could both be decorated and serve to decorate, found, however, that all of the evidence on which the applicant had relied was insufficient to prove that the contested mark was descriptive. According to the Board of Appeal, that mark did not, in itself, have any specific meaning, unless an analytical approach, involving several mental steps, was adopted. Furthermore, it pointed out that the applicant had not proved either that the relevant public could perceive in the contested mark a meaning which was descriptive of the goods in question or that that mark was commonly used in a descriptive way. In view of all of those considerations, the Board of Appeal drew the conclusion, first, that ‘consumers w[ould] not derive from the word “DECOTEC” any specific information or sufficiently clear indication with regard to the characteristics of the contested goods, as it remain[ed] unclear what [was] actually supposed to be described and for what purpose’, and, secondly, that the applicant had not proved that there was a direct connection between the meaning of the contested mark and the relevant goods.
22 As regards the fifth argument on which the applicant relies, it must be stated that, in paragraphs 85 to 91 of the contested decision, the Board of Appeal pointed out that the applicant had relied only on the descriptive meaning of the contested mark in order to allege that it lacked distinctive character. It found that that argument had to be rejected and that the contested mark had to be regarded as not being devoid of any distinctive character.
23 It is apparent from the considerations referred to in paragraphs 21 and 22 above that the reasons set out in the contested decision are sufficient to allow the applicant to understand the reasons why the Board of Appeal rejected its pleas and to enable the Court to exercise its power to review that decision.
24 It follows that the third plea, alleging a failure to state reasons, must be rejected.
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
25 By its first plea, which consists, in essence, of two parts, the applicant submits that the Board of Appeal erred in finding that the contested mark was not, for the purposes of Article 7(1)(c) of Regulation No 207/2009, descriptive of the goods in question.
26 By the first part, the applicant submits that the Board of Appeal misapplied Article 7(1)(c) of Regulation No 207/2009. By the second part, it contends that the Board of Appeal incorrectly assessed the evidence and consequently distorted the facts which had been submitted before it.
27 EUIPO, supported by the intervener, dispute the applicant’s arguments.
28 It must be pointed out at the outset that Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation, provides that 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 must not be registered.
29 Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. That provision therefore prevents those signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 15 January 2013, BSH v OHIM (ecoDoor), T‑625/11, EU:T:2013:14, paragraph 14 and the case-law cited).
30 For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, 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).
31 Moreover, in order for EUIPO to refuse registration on the basis of Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the sign in question actually be used in a way that is descriptive, but merely that, in the future, it might be used for such purposes. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgment of 16 December 2010, Deutsche Steinzeug Cremer & Breuer v OHIM (CHROMA), T‑281/09, EU:T:2010:537, paragraph 28 and the case-law cited).
32 Furthermore, for a trade mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive. The neologism or word itself must also be found to be descriptive (see judgment of 22 June 2005, PAPERLAB, T‑19/04, EU:T:2005:247, paragraph 26 and the case-law cited).
33 A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That presupposes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings arising from its constituent elements, with the result that it is more than the sum of its parts. In that connection, an analysis of the term in question in the light of the appropriate lexical and grammatical rules is also relevant (see judgment of 22 June 2005, PAPERLAB, T‑19/04, EU:T:2005:247, paragraph 27 and the case-law cited).
34 Lastly, in accordance with settled case-law, the only date which is relevant for the purposes of the assessment of an application for a declaration of invalidity is the date of filing of the application for the contested mark. However, the case-law allows material subsequent to that date to be taken into account if it relates to the situation on the date of filing of the trade mark application (see judgment of 3 June 2009, Frosch Touristik v OHIM – DSR touristik (FLUGBÖRSE), T‑189/07, EU:T:2009:172, paragraph 19 and the case-law cited).
35 It is in the light of those principles, having regard to the Board of Appeal’s assessment in the contested decision, that the applicant’s arguments must be examined.
The first part of the first plea, alleging misapplication of the provisions of Article 7(1)(c) of Regulation No 207/2009
36 The applicant puts forward three complaints, alleging in essence, first, that only the use of the contested mark was taken into account, to the detriment of the possibility of its having a specific meaning in the future, secondly, that there was failure to take into account the two descriptive abbreviations which constitute the contested mark and, thirdly, that there was failure to take the relevant goods into account in assessing whether the contested mark was descriptive.
37 EUIPO, supported by the intervener, contends that those arguments should be rejected.
38 As regards the first complaint, the applicant submits that the Board of Appeal incorrectly assessed whether the contested mark was descriptive by relying exclusively on its actual use.
39 In that regard, it must be pointed out that, in paragraphs 62 and 70 of the contested decision, the Board of Appeal first of all analysed whether the contested mark was, in itself, capable of being descriptive. It was only after finding that that was not the case that the Board of Appeal examined, in paragraph 71 of that decision, whether that mark was commonly used in a descriptive way.
40 Furthermore, in paragraph 72 of the contested decision, the Board of Appeal used the future indicative to draw the conclusion that the relevant public would not derive from the contested mark any specific information or sufficiently clear indication with regard to the characteristics of the goods in question.
41 It follows that, contrary to what the applicant claims, the Board of Appeal did analyse whether, as at the relevant date, the contested mark was, in itself, descriptive and whether, as at that date, it was reasonable to envisage that, in the future, that mark would constitute a description of the characteristics of the goods in question, to which it responded in the negative. It did not therefore rely exclusively on the use of the contested mark in order to conclude that it was not descriptive.
42 The first complaint must therefore be rejected.
43 By its second complaint, the applicant disputes the Board of Appeal’s finding that only an analytical approach makes it possible to understanding the meaning of the term ‘decotec’. It adds that the Board of Appeal, on the ground that the contested mark was a neologism, erred in not assessing whether the combination of the abbreviations ‘deco’ and ‘tec’ created an impression which was sufficiently far removed from the sum of those two elements and thus failed to take into account that, in a trade mark, the combination of two descriptive elements is itself descriptive. Lastly, it submits that the assessment that the contested mark did not have any clear meaning is not justified and must be regarded as an erroneous qualification of a finding of fact, which is arbitrary.
44 In that regard, it must first of all be pointed out that, in order to rule out the descriptiveness of the contested mark, the Board of Appeal found, in essence, in particular in paragraph 62 of the contested decision, that it was true that the terms ‘deco’ and ‘tec’, taken separately, were capable of being perceived as referring to the concepts of ‘decoration’ and ‘technology’. However, as was pointed out in paragraph 70 of that decision, the sign ‘decotec’, taken as a whole, did not have any specific meaning, unless ‘an analytical approach and only in several mental steps’ was adopted.
45 In so doing, the Board of Appeal found that the sign ‘decotec’ created an impression which was sufficiently far removed from that produced by each of its two constituent abbreviations considered in isolation. That led it to conclude, in essence, in paragraph 72 of the contested decision, that there was not, between the contested mark and the goods in question, a relationship that was 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.
46 In so doing, the Board of Appeal actually and correctly assessed whether the sum of the two abbreviations which the contested mark contained created an impression which was different from that produced by each of those two abbreviations considered in isolation, without it being necessary to give any other explanation.
47 Consequently, since it cannot be maintained that the Board of Appeal, as the applicant claims, qualified a finding of fact erroneously or made an ‘arbitrary’ finding, the second complaint must be rejected.
48 By its third complaint, the applicant submits that the Board of Appeal failed to examine the contested mark in the specific context of the goods in question, by merely stating, without any substantive reasoning, that there was no direct connection between the meaning of that mark and the goods in question, which also led the Board of Appeal to base the contested decision on an incorrect classification of a fact, which constitutes an arbitrary finding.
49 In that regard, it must be pointed out that a reading of paragraphs 48, 49, 66 and 70 to 73 of the contested decision shows that the Board of Appeal analysed the question of whether the contested mark was descriptive and the evidence submitted by the applicant not only by taking into account the contested mark as a whole, but also by assessing it in relation to the goods which it covered and to the business sectors to which those goods related.
50 In so doing and in taking the view in essence, in paragraph 72 of the contested decision, that the relevant public would not derive from the contested mark any information as regards the goods in question, the Board of Appeal did not make any error in law or error of assessment of the facts in finding that, having regard to the relevant public and the goods in question, that mark was not descriptive.
51 It follows that the last complaint must also be rejected and consequently the first part of the first plea must be rejected in its entirety.
The second part of the first plea, alleging an incorrect assessment of the evidence
52 The applicant relies on four complaints, all of which allege an incorrect assessment of the evidence.
53 By its first complaint, the applicant submits that, in paragraphs 64 and 65 of the contested decision, the Board of Appeal misinterpreted the reasons why it had submitted to it the evidence in Annexes A 1 to A 6 and A 8 to A 23 in EUIPO’s case file and the judgment of 19 January 2005 of the Bundespatentgericht (Federal Patent Court, Germany) in Annex A 7 in EUIPO’s case file, since the purpose of that evidence was to establish that, long before the relevant date, the relevant public understood the abbreviations ‘deco’ and ‘tec’, taken separately. It concludes that the Board of Appeal should have taken that evidence into account before examining the contested mark as a whole.
54 In that regard, it must be pointed out that, as is apparent from paragraph 44 above, the Board of Appeal did not deny that the terms ‘deco’ and ‘tec’ were capable of being perceived as abbreviations of the words ‘decoration’ and ‘technology’, which the applicant also intended to show by submitting that evidence.
55 However, and irrespective of the purpose which the applicant assigned to that evidence, there was nothing to prevent the Board of Appeal from pointing out, in essence, in paragraphs 64 and 70 to 72 of the contested decision, that that evidence did not show that the contested mark, taken as a whole, had any meaning. On the basis of that finding, there was nothing to prevent the Board of Appeal from drawing the conclusion that, in essence, the overall impression created by that mark was significantly far removed from that produced by each of the two abbreviations taken separately.
56 Likewise, there was nothing to prevent the Board of Appeal from considering the judgment referred to in paragraph 65 of the contested decision in the light of the term ‘decotec’ and not in the light of the abbreviation ‘deco’ alone. Moreover, the applicant does not rely on anything which is capable of showing that the Board of Appeal erred in finding that the circumstances of that judgment differed from those which had been brought before it.
57 Consequently, since there is nothing which permits the inference that the Board of Appeal misinterpreted the documents which were referred to in paragraphs 64 and 65 of the contested decision, the first complaint must be rejected.
58 By its second complaint, the applicant claims that the Board of Appeal erred, in paragraph 66 of the contested decision, in rejecting the evidence which it had submitted, on the ground that it was undated or that the date was too far removed from the relevant date. It states that it is possible, for the purposes of assessing whether a mark is valid, to take into account circumstances which are subsequent to that date.
59 In that regard, it must be pointed out that the Board of Appeal found, in paragraphs 63 and 70 of the contested decision, in essence, that, as at the relevant date, the term ‘decotec’ did not, in itself, have any particular meaning and that it had not been proved that, as at that date, it was used by the general public or in specialist language as an indication of, or an allusion to, ‘decoration technology’.
60 In order to reach that conclusion, the Board of Appeal found that the documents on which the applicant had relied, the purpose of which was to show the meaning of the terms ‘dekorationstechnik’, ‘decoration technology’, ‘dekotechnik’ and ‘deco technology’, did not, because they were undated or had dates which were after and too far removed from the relevant date, demonstrate that the contested mark was descriptive.
61 It must be stated that, as has been mentioned in paragraph 34 above, although it is possible, in the context of the assessment of whether a mark is valid, for material which is subsequent to the relevant date to be taken into account, that is, however, so only on condition that that material provides information regarding the situation existing as at that date. The Board of Appeal could validly find that that condition had not been satisfied since the documents at issue were not capable of providing information regarding the question of whether, as at the relevant date, it was possible to take the view that, from the standpoint of the relevant public, the contested mark was or could, in the future, be descriptive.
62 Consequently, since it cannot be maintained that the Board of Appeal erred as regards the assessment of the facts or as regards the law, that complaint must be rejected.
63 By its third complaint, the applicant claims that, in paragraphs 67 to 69 of the contested decision, the Board of Appeal erred in not examining the evidence which it had submitted and all the possible meanings of the contested mark from the point of view of whether that mark was descriptive, in particular as regards the possibility of the goods in question being both decorated and serving to decorate other objects.
64 In that regard, it must be borne in mind that the Board of Appeal is not required, in the context of its duty to state reasons, to explain the probative value of each item in the body of evidence on which it based its decision, provided that its reasoning allows the applicant to know the justification for the decision taken and therefore to defend itself and enables the Court to exercise its power of review (judgment of 4 May 2022, Representation of two crossed stripes placed on the side of a shoe, T‑117/21, not published, EU:T:2022:271, paragraph 27).
65 In the present case, it must be pointed out that, in order to reach, in paragraph 73 of the contested decision, the conclusion that the contested mark was not descriptive, the Board of Appeal referred, in paragraphs 70 and 71 of that decision, to all the evidence on which the applicant had relied, and therefore to that mentioned in paragraph 69 of that decision. Furthermore, it must be stated that the applicant has not shown that there was any misinterpretation of those documents on the part of the Board of Appeal.
66 Consequently, the third complaint must be rejected.
67 By its fourth complaint, the applicant submits that, by finding, in paragraph 63 of the contested decision, that it had not proved that the contested mark meant ‘decoration technology’, the Board of Appeal distorted the facts.
68 In that regard, it is sufficient to point out that, as is apparent from paragraphs 53 to 65 above, the Board of Appeal provided the reasons why it took the view that the documents on which the applicant had relied were not capable of proving that the contested mark was descriptive, and the applicant has in no way shown that the Board of Appeal made any error of assessment or distorted the facts.
69 It follows from the foregoing that the second part of the first plea must be rejected and, consequently, the first plea must be rejected in its entirety.
The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
70 By its second plea, the applicant submits that, as regards the lack of distinctive character of the contested mark and the application of Article 7(1)(b) of Regulation No 207/2009, the Board of Appeal erred in stating, in paragraph 86 of the contested decision, that the applicant had not put forward any argument other than that alleging that that mark lacked distinctive character because it was descriptive and that, in so doing, the Board of Appeal distorted the facts which had been brought before it.
71 In that regard, the applicant claims that, before the Board of Appeal, it submitted, inter alia, that Article 7(1)(b) of Regulation No 207/2009 applied where the contested mark was not at all descriptive and where there was an indirect link between that mark and the goods at issue, without that argument receiving a reply on the part of the Board of Appeal.
72 EUIPO, supported by the intervener, contends that that plea should be rejected.
73 In that regard, it must be pointed out that, in accordance with settled case-law, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods in respect of which registration is applied for 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).
74 Furthermore, it is apparent from the provisions of Articles 59 and 62 of Regulation 2017/1001 that an EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings and consequently enjoys a presumption of validity. In invalidity proceedings in respect of a trade mark, EUIPO is not therefore in principle required to examine the relevant facts of its own motion and it is for the party who has filed the application for a declaration of invalidity to invoke and to prove the specific facts which call the validity of that trade mark into question (see, to that effect, judgment of 30 March 2022, Perry Street Software v EUIPO – Toolstream (SCRUFFS), T‑720/20, not published, EU:T:2022:189, paragraphs 35 and 36 and the case-law cited).
75 In the present case, it is apparent both from reading the applicant’s appeal before the Board of Appeal against the Cancellation Division’s decision and from reading paragraph 10 of the contested decision that it is true that the applicant alleged infringement of Article 7(1)(b) of Regulation No 207/2009 on the ground that the Cancellation Division had not taken into account that that provision applied even where the sign was not descriptive, in particular where there was an indirect link between the contested mark and the goods at issue.
76 However, the applicant’s line of argument before the Board of Appeal, relating to the lack of distinctive character of the contested mark owing to an indirect link between that mark and the goods in question, lacked any clarity, with the result that the Board of Appeal could validly point out, in paragraph 86 of the contested decision, that the applicant had not put forward any other arguments in that regard. The applicant’s replies to the questions put by the Court at the hearing do not cast doubt on that finding.
77 Consequently, since it was not required to examine of its own motion all the facts on which a lack of distinctive character on the part of the contested mark could have been based, the Board of Appeal validly rejected that plea.
78 The second plea must therefore be rejected and the action must be dismissed in its entirety.
Costs
79 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.
80 Since 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 (First Chamber)
hereby:
1. Dismisses the action;
2. Orders celotec GmbH & Co. KG to pay the costs.
Delivered in open court in Luxembourg on 29 March 2023.