JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
14 July 2021 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark BODYSECRETS – Absolute grounds for refusal – No distinctive character – Descriptive character – Customary nature – Article 7(1)(b), (c) and (d), and Article 52(1)(a) of Regulation (EC) No 207/2009 (now Article 7(1)(b), (c) and (d), and Article 59(1)(a) of Regulation 2017/1001))
In Case T‑810/19,
Victoria’s Secret Stores Brand Management, Inc., established in Reynoldsburg, Ohio (United States), represented by J. Dickerson, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Fischer and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Yiwu Dearbody Cosmetics Co. Ltd, established in Yiwu City (China),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 5 September 2019 (Case R 2422/2018-5) relating to invalidity proceedings between Victoria’s Secret Stores Brand Management and Yiwu Dearbody Cosmetics,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias and T. Perišin (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 25 November 2019,
having regard to the response lodged at the Court Registry on 11 February 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 8 April 2015 Yiwu Dearbody Cosmetics Co. Ltd. (‘the proprietor of the contested mark’) filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Classes 3, 5 and 25 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 correspond to the following description:
– Class 3: ‘Bath salts; Shower gel; Cakes of toilet soap; Cosmetics; Perfumes; Dentifrices; Cosmetics for animals; Perfumery; Shoe wax; Detergent’;
– Class 5: ‘Depuratives; Bath salts for medical purposes; Mud for baths; Mouthwashes for medical purposes; Douching preparations for medical purposes; Disinfectants; Saniti[s]ing wipes; Cotton for medical purposes; Dental lacquer; Dietetic substances adapted for medical use; Animal washes’;
– Class 25: ‘Clothing; Shoes; Hats; Hosiery; Gloves [clothing]; Scarfs; Girdles’.
4 On 22 May 2015 the application for registration was published in Community Trade Marks Bulletin No 94/2015. That sign was registered as an EU trade mark on 10 October 2016 under number 013921978 in respect of all the goods referred to in paragraph 3 above.
5 On 15 November 2017 the applicant, Victoria’s Secret Stores Brand Management, Inc., filed with EUIPO an application for a declaration of invalidity of the contested mark for all the goods for which it was registered. The grounds for invalidity relied on in support of the application were those referred to in Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b), (c) and (d) of that regulation.
6 By decision of 16 October 2018, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
7 On 11 December 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision.
8 By decision of 5 September 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed that appeal as unfounded and upheld the Cancellation Division’s decision.
9 In that regard, in the first place, the Board of Appeal took the view that the contested mark is a figurative sign made up of two words: ‘body’ written in black bold letters and ‘secrets’ written in grey capital letters. The word element ‘body’ is an English word referring to the complete physical form of a person or animal. That word is not likely to be understood by the non-English-speaking public in the relevant territory. The word element ‘secrets’ is also an English word and refers to something which is ‘kept from knowledge or observation’. That word would be understood by part of the non-English-speaking public in as much as equivalent or similar words with the same meaning exist in other languages, for example in French, Spanish or Italian.
10 In the second place, the Board of Appeal found that the relevant public consisted of the general public, but that, for the goods at issue in Class 5, both a specialist public, such as doctors and pharmacists, and the usual end consumer were concerned. It also stated that, for certain goods, the level of attention of that public was higher than normal.
11 In the third place, as regards the ground referred to in Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal found that the evidence produced by the applicant did not demonstrate that, when confronted with the goods at issue, the relevant public would immediately understand that the contested mark refers to hidden tips that being used in relation to the body will improve its appearance. The Board of Appeal took the view that the expression as it was used in the press refers rather to the diets of famous women with an attractive appearance or to their physical training routine, and not to the products in question. In addition, the Board of Appeal found that the evidence does not demonstrate that the expression ‘body secrets’ was used, at the time when the application for registration of the contested mark was filed, as a laudatory or promotional marketing term.
12 In the fourth place, as regards the ground referred to in Article 7(1)(c) of Regulation 2017/1001, the Board of Appeal found that the contested mark provided no information as to how the goods at issue could be used in a ‘secret’ way to improve the appearance of a person (purpose), nor does it indicate that the goods are ‘secret’ goods which can improve physical appearance (quality). According to the Board of Appeal, the evidence submitted was irrelevant because it did not demonstrate that the sign was descriptive at the time when the application for registration of the contested mark was filed or that it could have been used in a descriptive manner.
13 In the fifth place, as regards the ground referred to in Article 7(1)(d) of Regulation 2017/1001, the Board of Appeal found that the evidence adduced to establish that the contested mark was customary did not make it possible to demonstrate that the mark was widely used to refer to advice on beauty, cosmetic products and fashion, but showed rather that the expression ‘body secrets’ was used to describe the secrets behind an attractive appearance, namely the fact of having a slim, healthy and youthful look.
14 In the sixth place, and lastly, as regards the applicant’s reliance on earlier EUIPO decisions concerning the registration of certain marks, the Board of Appeal found that the legality of EUIPO’s decisions must be assessed solely on the basis of Regulation 2017/1001 and not on the basis of EUIPO’s previous decision-making practice. In addition, the Board of Appeal found that the marketing value of the expression ‘body secrets’ was not the same as the marketing value of the word combinations which constituted the other marks relied on by the applicant.
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision;
– grant the application for a declaration of invalidity of the registration of the contested mark;
– order the proprietor of the contested mark to pay the costs.
16 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The applicable law ratione temporis
17 Given the date on which the application for registration of the contested mark was filed, namely 8 April 2015, which is determinative for the purposes of identifying the applicable substantive law, the facts of the present case are governed by the substantive provisions of Regulation No 207/2009 (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). Furthermore, 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.
18 Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written submissions to Article 7(1)(b), (c) and (d) and to Article 59(1)(a) of Regulation 2017/1001 must be understood as referring to Article 7(1)(b), (c) and (d) and to Article 52(1)(a) of Regulation No 207/2009, the wording of which is identical.
Substance
19 In support of its action, the applicant relies on four pleas in law. The first plea alleges failure to take into account the fact that figurative elements of the contested mark are so minimal as to be negligible. The second plea alleges infringement of Article 7(1)(b) of Regulation No 207/2009 on account of the incorrect assessment of the lack of distinctive character of the contested mark. The third plea alleges infringement of Article 7(1)(c) of Regulation No 207/2009 on account of the incorrect assessment of the descriptive nature of the contested mark. The fourth plea alleges infringement of Article 7(1)(d) of Regulation No 207/2009 on account of the incorrect assessment of whether the contested mark has become customary.
Preliminary observations
20 As a preliminary point, it should be recalled that Article 52(1)(a) of Regulation No 207/2009 provides that an EU trade mark is to be declared invalid where it has been registered contrary to the provisions of Article 7 of that regulation.
21 It should also be stated that both the distinctiveness and the descriptiveness of a sign must be assessed, first, in relation to the goods or services in respect of which registration of the sign is applied for and, second, in relation to the perception which the relevant public has of it (judgment of 14 April 2005, Celltech v OHIM (CELLTECH), T‑260/03, EU:T:2005:130, paragraph 28), which is made up of the average consumer of those goods and services, who is reasonably well informed and reasonably observant and circumspect (see judgment of 3 May 2018, Raise Conseil v EUIPO – Raizers (RAISE), T‑463/17, not published, EU:T:2018:249, paragraph 37 and the case-law cited). The same aspects must be addressed in assessing whether a mark has become customary for the purposes of Article 7(1)(d) of Regulation No 207/2009 (see, to that effect, judgment of 16 March 2006, Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN), T‑322/03, EU:T:2006:87, paragraph 49).
22 In addition, the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 3 May 2018, RAISE, T‑463/17, not published, EU:T:2018:249, paragraph 37 and the case-law cited).
23 In the present case, as regards the relevant public, the Board of Appeal implicitly found, in the contested decision, in the first place, that, given that the contested mark is formed by two English words, ‘body’ and ‘secrets’, the relevant public consists of the English-speaking public.
24 In the second place, the Board of Appeal found, in essence, that the relevant public consisted of the general public for the goods at issue in Classes 3 and 25 and, for the goods at issue in Class 5, of a specialist expert public, such as doctors and pharmacists, and, also, of the general public. The Board of Appeal also stated that, for some of those goods, the level of attention of the relevant public was higher than normal.
25 The applicant does not dispute those findings of the Board of Appeal, which are, moreover, correct.
The first plea: the Board of Appeal failed to take into account the fact that the figurative elements of the contested mark are so minimal as to be negligible
26 The applicant submits that the figurative elements of the contested mark are so minimal that they are negligible, so that the contested mark should have been examined as if it were a word mark. The applicant is of the view that the contested mark consists of two English words, ‘body’ and ‘secrets’, represented with no colour elements or additional matter. Thus, the average consumer inevitably and uncontrovertibly perceives the contested mark as the plain word mark BODYSECRETS. The applicant refers, by analogy, to the decision of the First Board of Appeal concerning the mark Foamplus (Case R 655/2007-1), according to which the relevant public could not deduce the origin of the goods from the visual elements of that mark, given that neither a standard font nor italics are striking or extraordinary shapes. Accordingly, the applicant submits that its arguments concerning the infringement of Article 7 of Regulation No 207/2009 should have been considered in that context and on that basis.
27 EUIPO disputes the applicant’s arguments.
28 It must be observed, first of all, that the applicant does not call into question the fact that the contested mark is a figurative mark. Nevertheless, it maintains that that mark should have been considered as if it were a word mark. According to the applicant, the contested mark has no colour element or additional matter.
29 However, it must be stated that the contested mark does have various colour elements, the word element ‘body’ being written in bold black letters, and the word element ‘secret’ being written in grey capital letters.
30 Therefore, the Board of Appeal was correct in stating, in the contested decision, that the contested mark is a figurative mark made up of two words, ‘body’, written in black, and ‘secrets’, written in grey.
31 Furthermore, it must be stated that it is apparent from the contested decision, and in particular from paragraph 30 of that decision, that the Board of Appeal examined and considered exclusively the word elements of the contested mark. Accordingly, since the Board of Appeal attached no importance to the figurative elements in the assessment of the contested mark, the present plea is, moreover, ineffective.
32 That conclusion cannot be called into question by the applicant’s argument based on an earlier EUIPO decision concerning the trade mark Foamplus. In that regard, it must be pointed out that EUIPO is required to decide on the basis of the circumstances of each individual case and that it is not bound by previous decisions taken in other cases. The legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009, and not on the basis of any previous decision-making practice of those boards. In addition, in its review of legality, the Court is not bound by the decision-making practice of EUIPO (see judgment of 12 March 2014, Borrajo Canelo v OHIM – Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 43 and the case-law cited).
33 The applicant’s first plea must therefore be rejected.
The second plea: infringement of Article 7(1)(b) of Regulation No 207/2009
34 The second plea comprises two parts. The first part alleges incorrect assessment of the evidence adduced by the applicant. The second part alleges incorrect assessment of the lack of distinctive character of the contested mark.
35 As a preliminary point, it should be recalled that, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered. Article 7(2) of that regulation provides that Article 7(1) thereof is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
36 According to the case-law, an absolute ground for refusal must be interpreted in the light of the general interest underlying it. As regards Article 7(1)(b) of Regulation No 207/2009, the concept of general interest is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer by enabling him or her, without any possibility of confusion, to distinguish the product or service from others which have another origin (see judgment of 3 May 2018, RAISE, T‑463/17, not published, EU:T:2018:249, paragraph 35 and the case-law cited).
37 A minimum degree of distinctive character is sufficient to render inapplicable the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 (see judgment of 5 June 2019, EBM Technologies v EUIPO (MobiPACS), T‑272/18, not published, EU:T:2019:373, paragraph 20 and the case-law cited).
38 Furthermore, as regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use (see judgment of 5 June 2019, MobiPACS, T‑272/18, not published, EU:T:2019:373, paragraph 21 and the case-law cited).
39 As regards the assessment of the distinctive character of such marks, the Court has already held that it is inappropriate to apply to them criteria which are stricter than those applicable to other types of sign (see judgment of 5 June 2019, MobiPACS, T‑272/18, not published, EU:T:2019:373, paragraph 22 and the case-law cited).
40 Consequently, according to the case-law, an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 207/2009 (see judgment of 5 June 2019, MobiPACS, T‑272/18, not published, EU:T:2019:373, paragraph 23 and the case-law cited).
41 It also follows from the case-law that all marks made up of signs or indications that are also used as advertising slogans, indications of quality 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 can still be 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 5 June 2019, MobiPACS, T‑272/18, not published, EU:T:2019:373, paragraph 24 and the case-law cited).
42 It follows that a trade mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, and according to settled case-law, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (see judgment of 5 June 2019, MobiPACS, T‑272/18, not published, EU:T:2019:373, paragraph 25 and the case-law cited).
43 The present plea in law must be examined in the light of those considerations.
– First part: incorrect assessment of the evidence adduced by the applicant
44 The applicant takes the view that the evidence which it adduced before EUIPO demonstrates that the expression ‘body secrets’ was used, at the time when the application for registration of the contested mark was filed, to refer to beauty, cosmetics and fashion tips to improve one’s body, so that the relevant public would understand that expression as a promotional formula indicating that the goods at issue are used to improve physical appearance, rather than as an indication of their commercial origin. Thus, according to the applicant, what is involved is a type of expression used in an advertisement as a laudatory slogan and which is perceived as such by the relevant public, and not perceived as a trade mark.
45 EUIPO disputes the applicant’s arguments.
46 In support of the application for a declaration of invalidity, the applicant submitted the following evidence:
– an article from the international magazine Cosmopolitan dated 24 June 2014 entitled ‘Marilyn Monroe beauty and body secrets revealed’;
– an article from the English magazine OK! dated 13 August 2014 entitled ‘Ferne McCann reveals beach body secrets’;
– an article from the magazine Marie Claire (undated) entitled ‘45 best body secrets’;
– an article from the magazine Marie Claire dated 3 January 2011 entitled ‘12 Celebrity Body Secrets’;
– an article from the magazine Look dated 22 June 2015 entitled ‘Kate Middleton’s Incredible Body Secrets Revealed’;
– an article from the magazine Glamour dated 21 August 2012 entitled ‘Celebrity Body Secrets’;
– an article taken, according to the applicant, from the magazine Daily Star dated 31 December 2014 entitled ‘Nicole Scherzinger shares her body secrets: Healthy for me means a healthy mind’;
– an article from the magazine Harper’s Bazaar dated 30 November 2011 entitled ‘Bazaar’s beauty team scoop the beauty secrets of some of our favourite stars’.
47 After having analysed the evidence adduced by the applicant, the Board of Appeal found, in the contested decision, that that evidence did not establish a link between the expression ‘body secrets’ and the goods covered by the contested mark, in Classes 3, 5 and 25, because it rather concerned the celebrities’ physical exercise and dietary habits. According to the Board of Appeal, some of the evidence refers to ‘beach body secrets’, that is to say to ‘secret tips on how to improve one’s body to go to the beach’, without referring to specific products in Class 3, 5 or 25. In addition, the Board of Appeal observed that the applicant had adduced no evidence regarding the expression ‘body secrets’ being a ‘promotional formula’ which is used in an advertisement.
48 In that regard, it must be observed, in the first place, that, contrary to the applicant’s assertion, the articles from various magazines which it adduced cannot demonstrate a link between the expression ‘body secrets’ and the goods covered by the contested mark. That evidence refers to fitness and dietary habits which make it possible to preserve an attractive physical appearance and to maintain a healthy, attractive body, but not to cosmetic products, products for medical purposes or clothing covered by the contested mark.
49 In particular, first, some of the press articles adduced by the applicant concern famous people’s particular dietary and fitness habits, such as, for example, the article taken from Cosmopolitan magazine dated 24 June 2014 entitled ‘Marylin Monroe’s beauty and body secrets revealed’, the article from Look magazine dated 22 June 2015 entitled ‘Kate Middleton’s Incredible Body Secrets Revealed’ and the article dated 31 December 2014, the source of which is unclear, entitled ‘Nicole Scherzinger shares her body secrets: Healthy for me means a healthy mind’.
50 Second, the article in OK! magazine dated 13 August 2014 entitled ‘Ferne McCann reveals beach body secrets’, which, moreover, does not use the expression ‘body secrets’, but rather the expression ‘beach body secrets’ does not of itself establish a link between the expression ‘body secrets’ and the products at issue.
51 Therefore, the Board of Appeal was correct in finding, in the contested decision, that the evidence adduced by the applicant in support of its application for a declaration of invalidity did not demonstrate that the expression ‘body secrets’ had been used, at the time when the application for registration of the contested mark was filed, as a laudatory or promotional marketing term, or that that expression used in the press could refer to the goods covered by the contested mark.
52 The first part of the second plea must therefore be rejected as unfounded.
– Second part: incorrect assessment of the lack of distinctive character of the contested mark
53 The applicant submits, in the first place, that the relevant public understands the sign BODYSECRETS as an expression suggesting that the goods designated by that sign are secret and exclusive in nature and, therefore, that those goods are superior to the ordinary version of that type of article, thus suggesting that those goods are desirable.
54 The applicant is, in the second place, of the view that the expression ‘body secrets’ is linked to the goods covered by the contested mark, because those goods are used to improve physical appearance, so that the contested mark is incapable of indicating to the consumer the commercial origin of those goods.
55 The applicant maintains, in the third place, that there is an earlier EUIPO decision concerning a similar application for registration in respect of the sign BEAUTY SECRETS to designate cosmetic products in Class 3, which was rejected under Article 7(1)(b) of Regulation No 207/2009 on the ground that that sign was devoid of any distinctive character. The applicant submits that that decision constitutes a more appropriate precedent than the decisions relating to the marks Lavender Secrets, BODYSOUL, BODY BENEFITS and BODY ART, which are mentioned in the contested decision.
56 On the basis of that precedent, the applicant claims, first of all, on the one hand, that the expression ‘body secrets’ conveys the meaning of ‘not commonly known methods which are intended to make someone more attractive’, as regards the goods at issue, since those goods are directly linked to a person’s appearance and could be used by a consumer to enhance his or her physical appearance. On the other hand, according to the applicant, the word ‘secret’ conveys the idea of special qualities, properties or satisfactory results and exclusiveness, and enhances the laudatory and promotional meaning of the contested mark as a whole.
57 In addition, in view of the message which the contested mark conveys, according to the applicant, it does not enable the relevant public to distinguish, without any possibility of confusion, the goods of the proprietor of the contested mark from those of a different commercial origin.
58 Lastly, the applicant is of the view that, contrary to the assessment in paragraphs 54 and 55 of the contested decision, the word ‘body’ carries no further significance than the word ‘beauty’ in the sign BEAUTY SECRETS nor would it attract the consumer’s attention to any greater degree than the word ‘beauty’, since in that context the words ‘body’ and ‘beauty’ are interchangeable and have a similar meaning.
59 EUIPO disputes the applicant’s arguments.
60 It should be recalled that a mark is distinctive where it serves to identify the goods or services for which registration is sought as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 5 June 2019, MobiPACS, T‑272/18, not published, EU:T:2019:373, paragraph 18 and the case-law cited).
61 It is not necessary for the trade mark to convey exact information about the identity of the manufacturer of the goods or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the goods or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality (see judgment of 5 June 2019, MobiPACS, T‑272/18, not published, EU:T:2019:373, paragraph 19 and the case-law cited).
62 In the first place, it should be noted, as did the Board of Appeal, that the English word ‘body’ designates ‘the complete physical form of a person or animal’ and the English word ‘secrets’ designates something which is ‘kept from knowledge or observation’.
63 In that regard, it is clear that, in their usual meaning, those words are not laudatory, referring to superior quality. Therefore, as is moreover apparent from paragraph 51 above, the Board of Appeal was fully entitled to find that the applicant had not demonstrated that the relevant public, when confronted with the goods in question, would immediately understand the contested mark as referring to hidden tips for improving physical appearance.
64 Moreover, as is apparent from paragraphs 48 to 51 above, the evidence adduced by the applicant in support of the application for a declaration of invalidity did not establish a direct link between the expression ‘body secrets’ and the goods at issue at the time when the application for registration of the contested mark was filed. Accordingly, on account of that link not being present, it must be held that the Board of Appeal was correct in finding that the expression ‘body secrets’ will not be perceived by the relevant public as a promotional formula.
65 In that regard, it must be recalled that, since invalidity proceedings are involved, the contested mark enjoys a presumption of validity, so that it is for the person who has filed the application for a declaration of invalidity to place before EUIPO the specific facts which call the validity of the contested mark into question (see, to that effect, judgment of 23 September 2020, Clouds Sky v EUIPO – The Cloud Networks (Wi-Fi Powered by The Cloud), T‑738/19, not published, EU:T:2020:441, paragraph 36 and the case-law cited). In the present case, the applicant’s line of argument in the second plea is based exclusively on the assertion that the expression ‘body secrets’ is purely promotional in relation to the goods at issue. Therefore, since that line of argument is rejected as unfounded, it must be concluded that the applicant has not established that the contested mark lacks distinctive character.
66 In the second place, it must be pointed out that, in accordance with the case-law referred to in paragraph 32 above, the applicant’s argument that the Court ought to take into account EUIPO’s decision concerning the sign BEAUTY SECRETS and make a similar ruling in relation to the contested mark cannot succeed. Therefore, the applicant’s argument that the Court ought to take into account EUIPO’s decision relating to the application for registration of the sign BEAUTY SECRETS and make a similar ruling in relation to the contested mark cannot succeed.
67 In any event, as regards the applicant’s line of argument regarding the sign BEAUTY SECRETS, it must be pointed out, as did the Board of Appeal and EUIPO, that the expressions ‘beauty secrets’ and ‘body secrets’ do not have the same marketing value and are not interchangeable expressions, in so far as, when faced with goods bearing the mark BODYSECRETS, a consumer will not be attracted by the suggestion that those goods will be special and capable of producing enhancing effects rarely found in other products on the market.
68 In the light of all the foregoing considerations, the second part of the second plea must be rejected as unfounded, as must, therefore, the plea in its entirety.
The third plea: infringement of Article 7(1)(c) of Regulation No 207/2009
69 The applicant complains, in essence, that the Board of Appeal did not correctly assess the descriptive nature of the contested mark with regard to the goods at issue.
70 The applicant takes the view that the contested mark refers to the quality of the goods, their intended purpose and other characteristics of those goods. First, according to the applicant, an indication of quality follows from the laudatory terms, referring to a superior quality of the designated goods or services and to their inherent quality, and the relevant public will understand that beauty, cosmetic and fashion products bearing the contested mark are secret and, implicitly, that they are better. Secondly, according to the applicant, the intended purpose is the function of a product or service, the result expected from its use or, more generally, the use for which it is intended, and the goods in question are all beauty, fashion or cosmetic products which, as the contested mark indicates, are secret means of improving one’s physical appearance. Thirdly, the applicant submits that the other characteristics need not be commercially essential and can be merely ancillary, and that the purpose of all of the goods covered by the contested mark is to make the person using them more attractive, or to make him or her believe that he or she is more attractive. The applicant therefore takes the view that the contested mark promotes those characteristics by describing the goods in question as ‘body secrets’, namely secret ways of improving one’s physical appearance.
71 In addition, as regards the evidence adduced by the applicant, the applicant reiterates the arguments it made in the context of the first plea, since, in its view, that evidence demonstrates not only the non-distinctive nature of the mark, but also its descriptiveness.
72 EUIPO disputes the applicant’s arguments.
73 Article 7(1)(c) of Regulation No 207/2009 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 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. According to the case-law, those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgment of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
74 The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (see judgment of 19 December 2019, Amazon Technologies v EUIPO (ring), T‑270/19, not published, EU:T:2019:871, paragraph 43 and the case-law cited).
75 It follows that, in order 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 sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of those goods and services or one of their characteristics (see judgment of 19 December 2019, ring, T‑270/19, not published, EU:T:2019:871, paragraph 44 and the case-law cited).
76 The Court must examine the applicant’s argument that the Board of Appeal erred in finding that the contested mark was not descriptive with regard to the goods at issue in the light of those considerations.
77 The Board of Appeal took the view, in the contested decision, that the contested mark conveys no information in relation to how the goods at issue could be used in a ‘secret’ way to improve a person’s appearance (purpose), nor does it indicate that the goods are ‘secret’ goods for the body that can improve one’s physical appearance (quality). According to the Board of Appeal, the evidence submitted was irrelevant because it did not show that the sign was descriptive at the time when the application for registration of the contested mark was filed or that it could have been used in a descriptive manner.
78 In the first place, as has been pointed out in paragraph 62 above, the English word ‘body’ means ‘the complete physical form of a person or animal’ and the English word ‘secrets’ means something which is ‘kept from knowledge or observation’. Accordingly, as EUIPO correctly observes, the expression ‘body secrets’, in its literal interpretation, refers to parts of the body which are hidden or unknown.
79 It is apparent from paragraphs 63 and 64 above that the expression ‘body secrets’ will not be perceived by the relevant public, immediately and without further thought, as having, by itself, a laudatory connotation in everyday language which is capable of commending the quality of the goods, and in particular the characteristics of the goods at issue. Accordingly, the Board of Appeal was correct in finding that the applicant had not shown that the relevant public, when confronted with those goods, would immediately understand that expression as referring to hidden tips that can improve one’s physical appearance.
80 In the second place, although the press articles adduced by the applicant show that the expression ‘body secrets’ is used many times in different contexts, it should be noted that that expression is always used in conjunction with other terms or phrases which specify its scope, for example in the expressions ‘beach body secrets’, ‘Body Secrets – Health Tips for your Best Body’ or ‘Marilyn Monroe’s beauty & body secrets revealed’.
81 As has been established in paragraphs 48 to 51 above, the evidence adduced by the applicant in support of the application for a declaration of invalidity did not demonstrate that the expression ‘body secrets’ had been used as a laudatory or promotional marketing term, or that that expression used in the press could refer to the goods covered by the contested mark. As EUIPO correctly points out, the evidence adduced by the applicant does not establish any laudatory or descriptive, still less a direct, connection with those goods.
82 Moreover, it must be observed that the Board of Appeal explicitly stated that the evidence adduced by the applicant did not demonstrate that the contested mark was descriptive at the time when the application for registration was filed or that it could have been used in a descriptive manner. As EUIPO points out, the wording used in that regard shows that the Board of Appeal not only focused on the lack of descriptiveness of the expression ‘body secrets’ at the time when the application for registration of the contested mark was filed, but also took into account possible future uses of the expression, in so far as they could be deduced from the evidence adduced by the applicant.
83 It follows from the foregoing that the reference to the words ‘body secrets’, always used in conjunction with other words, in the titles of the magazine articles adduced by the applicant as evidence does not lead to the conclusion that, when confronted with the contested mark, the relevant public would perceive immediately, and without further thought, a description of the goods covered by that mark or of one of the goods’ characteristics.
84 It is therefore necessary to reject the applicant’s third plea as unfounded.
The fourth plea: infringement of Article 7(1)(d) of Regulation No 207/2009
85 In essence, the applicant submits that the Board of Appeal did not correctly assess the fact that the contested mark has become customary in common parlance. The applicant is of the view that the magazine articles adduced as evidence demonstrate that, at the time when the application for registration of the contested mark was filed, the term ‘body secrets’ to refer to tips in the area of beauty, cosmetics and fashion was in widespread usage. According to the applicant, the readers of those articles and magazines are also the relevant public for the goods covered by the contested mark, so that, in the perception of that public, the use of that expression is widespread to describe fashion and beauty tips and the goods at issue. Therefore, the applicant submits that what is involved is a promotional expression intended to add kudos to a particular product, but which does not itself indicate the origin of that product.
86 EUIPO disputes the applicant’s arguments.
87 As a preliminary point, it must be stated that Article 7(1)(d) of Regulation No 207/2009 must be interpreted as precluding registration of a trade mark only where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought (see, by analogy, judgments of 4 October 2001, Merz & Krell, C‑517/99, EU:C:2001:510, paragraph 31, and of 5 March 2003, Alcon v OHIM – Dr.Robert Winzer Pharma (BSS), T‑237/01, EU:T:2003:54, paragraph 37).
88 Accordingly, whether a mark is customary can only be assessed, first, by reference to the goods or services in respect of which registration is sought, even though the provision in question does not explicitly refer to those goods or services, and, secondly, on the basis of the target public’s perception of the mark (see judgment of 16 March 2006, WEISSE SEITEN, T‑322/03, EU:T:2006:87, paragraph 49 and the case-law cited).
89 In addition, although there is a clear overlap between the scope of Article 7(1)(c) and Article 7(1)(d) of Regulation No 207/2009, marks covered by Article 7(1)(d) are excluded from registration not on the basis that they are descriptive, but on the basis of current usage in trade sectors covering trade in the goods or services for which the marks are sought to be registered (see judgment of 16 March 2006, WEISSE SEITEN, T‑322/03, EU:T:2006:87, paragraph 51 and the case-law cited).
90 Finally, signs or indications constituting a trade mark which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that mark are not capable of distinguishing the goods or services of one undertaking from those of other undertakings and do not therefore fulfil the essential function of a trade mark (see judgment of 16 March 2006, WEISSE SEITEN, T‑322/03, EU:T:2006:87, paragraph 52 and the case-law cited).
91 In the present case, the Board of Appeal found, in the contested decision, that the evidence adduced by the applicant in support of its claim that the contested mark was customary did not make it possible to demonstrate that that mark was widely used to refer to advice in the field of beauty, cosmetics and fashion. Rather, that evidence describes the secrets behind an attractive appearance, that is to say the fact of having a slim, healthy and youthful look.
92 In so far as the applicant reiterates its arguments based on the magazine articles referred to in paragraph 46 above concerning the assertion that the contested mark is customary, it must be held, as was established in paragraphs 48 to 51 above, that the applicant has provided no evidence capable of demonstrating that, at the time when the application for registration of the contested mark was filed, the expression ‘body secrets’, taken in isolation, was commonly used in the current language or in the trade sector concerned to designate the goods for which that mark was registered. It should be noted, as was observed by EUIPO, that the customary nature of the expression ‘body secrets’ for beauty, cosmetic and fashion products was not established at the time of that filing.
93 The fourth plea must therefore be rejected as being manifestly unfounded.
94 Since none of the pleas in law upon which the applicant relies is well founded, the action must be dismissed in its entirety, without there being any need to rule on the plea of inadmissibility raised by EUIPO with regard to the applicant’s second head of claim.
Costs
95 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
96 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Victoria’s Secret Stores Brand Management, Inc. to pay the costs.
Delivered in open court in Luxembourg on 14 July 2021.