Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Second Chamber)

25 September 2018 (*)

(EU trade mark — Invalidity proceedings — EU word mark ‘EM’ — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) — Evidence produced for the first time before the General Court)

In Case T‑180/17,

EM Research Organization, Inc., established in Okinawa (Japan), represented by J. Liesegang, M. Jost and N. Lang, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and D. Walicka, acting as Agents,

defendant,

the other parties to the proceedings before the Board of Appeal of EUIPO, intervening before the General Court, being

Christoph Fischer GmbH, established in Stephanskirchen (Germany),

Ole Weinkath, established in Hünxe-Drevenack (Germany),

Multikraft Produktions- und Handels GmbH, established in Pichl/Wels (Austria),

Phytodor AG, established in Buochs (Switzerland),

represented by M. Kinkeldey, J. Rosenhäger, K. Lochner and M. Peters, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 9 January 2017 (Case R 2442/2015-1), relating to invalidity proceedings between Christoph Fischer, Ole Weinkath, Multikraft Produktions- und Handel and Phytodor, on one hand, and, on the other, EM Research Organization,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin and M.J. Costeira (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 17 March 2017,

having regard to the response of EUIPO lodged at the Court Registry on 31 July 2017,

having regard to the responses of the interveners lodged at the Court Registry on 11 August 2017,

further to the hearing on 2 May 2018,

gives the following

Judgment

 Background to the dispute

1        On 13 February 2009, the applicant, EM Research Organization, Inc., filed an application for registration of international word mark No 1013416, designating the European Union for the goods listed below.

2        Registration as a trade mark was sought for the word sign EM.

3        Registration was notified on 8 October 2009 to the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), and published on 16 August 2010 in Community Trade Marks Bulletin No 151/2010.

4        The goods in respect of which registration was sought are in Classes 1 and 31 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, for each of those classes, to the following description:

–        Class 1: ‘Chemical preservative compositions, namely, antioxidants and antioxidant agents for use in the manufacture of soap and vegetable oils, and for use in the production of a wide variety of chemicals; and antioxidant food preservative compositions; rust inhibitors for industrial use; plant growth regulating and plant growth stimulating and enhancing preparations; soil conditioners; organic fertilizers; fertilizers and compost’;

–        Class 31: ‘Agricultural and horticultural products not included in other classes, and foodstuffs for animals, including additives for foodstuffs for animals.’

5        On 4 May 2014, the interveners, Christoph Fischer GmbH, Ole Weinkath, Multikraft Produktions-und Handels GmbH and Phytodor AG, filed an application for a declaration of invalidity of the contested mark, on the basis of Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) to (d) of Regulation No 207/2009 (now Article 7(1)(b) to (d) of Regulation 2017/1001), for all the goods covered by the trade mark. The interveners submitted that the mark was descriptive, devoid of any distinctive character, and had become customary for the goods in question.

6        By decision of 2 November 2015, the Cancellation Division upheld the application for a declaration of invalidity and declared the contested mark invalid for all of the goods concerned.

7        On 9 December 2015, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.

8        By decision of 9 January 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the applicant’s appeal and upheld the decision of the Cancellation Division.

9        At the outset, the Board of Appeal declared inadmissible, on grounds of their late submission, the additional statement of grounds filed by the applicant on 21 September 2016 setting out the grounds of the appeal and the market survey attached.

10      In the first place, the Board of Appeal found, first, that the goods ‘chemical preservative compositions, namely, antioxidants and antioxidant agents for use in the manufacture of soap and vegetable oils, and for use in the production of a wide variety of chemicals; and antioxidant food preservative compositions; rust inhibitors for industrial use’ in Class 1 were aimed at a public of professionals. Second, it found that the other goods in Class 1 covered by the contested mark, namely ‘plant growth regulating and plant growth stimulating and enhancing preparations; soil conditioners; organic fertilizers; fertilizers and compost’ and the goods in Class 31 were aimed at a relevant public made up not only of members of the general public with an interest in gardening or who own pets but also of a professional public made up of farmers and undertakings in the agricultural and horticultural sectors growing plants, vegetables and keeping livestock. In addition, the Board of Appeal stated that, in the light of the meaning of the contested mark in English and German, the relevant public was the English- and German-speaking public and, furthermore, that given the nature of the goods in question, the degree of attention of the relevant public was at least that of an average consumer.

11      In the second place, the Board of Appeal held that the evidence examined as a whole proved that at the date on which the European Union was designated, the contested mark was capable of being understood by the relevant public as a descriptive indication for the goods at issue or that there existed, at that date, definite and specific grounds for it to be reasonable to assume that such an association would be established in the future. In particular, the contested mark, which consists of the abbreviation ‘EM’, designating the expression ‘effective microorganisms’ in English and ‘effektive mikroorganismem’ in German, was capable of being understood by the relevant public as a descriptive indication of the nature or components of the goods, namely goods consisting of or including effective microorganisms.

12      In the third place, the Board of Appeal found that, taken as a whole, the contested mark was devoid of distinctive character and was incapable of performing the function of a trade mark. The contested mark has a normal meaning and does not constitute an arbitrary expression or a fanciful expression associated with the goods it designates.

13      In the fourth place, the Board of Appeal considered, in the light of the descriptive character of the mark and its lack of distinctive character, that it was not necessary to examine the conditions in Article 7(1)(d) of Regulation No 207/2009.

 Forms of order sought

14      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

15      EUIPO and the interveners contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility of the additional statement of grounds and the market survey

16      EUIPO, supported by the interveners, submits that the references made by the applicant to the information contained in the additional statement of grounds and the market survey carried out in August 2016 are inadmissible, since those documents were declared to be such by the Board of Appeal and the applicant has not disputed their inadmissibility in the application.

17      It must be observed in the present case that, first, the applicant refers at many points in the application to the information derived from the market survey carried out in August 2016 and attached to the additional statement of grounds it lodged on 21 September 2016.

18      Second, the applicant’s additional statement of grounds and the market survey attached were declared inadmissible by the Board of Appeal.

19      Third, the applicant has not challenged the inadmissibility of those documents in the application.

20      The purpose of an action before the General Court is to review the legality of the decisions of the Boards of Appeal of EUIPO within the meaning of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so that the legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see, to that effect, judgment of 16 January 2014, Optilingua v OHIM — Esposito (ALPHATRAD), T‑538/12, not published, EU:T:2014:9, paragraph 19 and the case-law cited).

21      Consequently, the references made by the applicant in the application to the information derived from the market survey must be disregarded, without it being necessary to examine their probative value.

 Admissibility of the documents produced for the first time before the Court

22      EUIPO, supported by the interveners, submits that Annexes A 12 to A 16 were not produced in the proceedings before EUIPO. They argue that those documents are new documents, produced for the first time before the Court and are therefore inadmissible.

23      It must be observed in the present case, as EUIPO and the interveners point out, that the documents produced in Annexes A12 to A16 to the application, namely a printout from an Internet site, an extract from a thesis, a copy of a periodical, a copy of a letter from a publishing house and a copy of a pleading, did not form part of the administrative file submitted by the applicant before the Board of Appeal of EUIPO.

24      It should be borne in mind that the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO as referred to in Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it.

25      Consequently, those documents must be disregarded without it being necessary to examine their probative value (see, to that effect, judgment of 10 May 2016, August Storck v EUIPO(Representation of white and blue square-shaped packaging), T-806/14, not published, EU:T:2016:284, paragraph 15 and the case-law cited).

 Substance

26      The applicant puts forward two pleas in law in support of its application. The first plea alleges infringement of Articles 145 and 57 of Regulation No 207/2009 (now Articles 182 and 64 of Regulation 2017/1001), read in conjunction with Article 7(1)(c) of that regulation. The second plea alleges infringement of Articles 145, 64(1) and 57(5) of Regulation No 207/2009 (now Articles 182, 71(1) and 64(5) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) of that regulation.

 The first plea, alleging infringement of Articles 145 and 57 of Regulation No 207/2009, read in conjunction with Article 7(1)(c) of that regulation

27      This plea in law is divided into two complaints. The first complaint relates to the determination of the relevant public. The second complaint relates to the assessment of the descriptive character of the contested mark.

28      As regards the first plea, it should be borne in mind that Article 52(1)(a) of Regulation No 207/2009 provides that a Community trade mark is to be declared invalid where it has been registered contrary to the provisions of Article 7 of that regulation. Under Article 7(1)(c) thereof, the following are not to be registered: ‘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’. In addition, Article 7(2) of Regulation No 207/2009 provides that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. Therefore, a European Union trade mark is to be refused registration where it is descriptive in just one of the official languages of the European Union (judgment of 19 September 2002, DKV v OHIM, C-104/00 P, EU:C:2002:506, paragraph 40).

29      Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is 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 such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks and prevents an undertaking from monopolising the use of a descriptive term to the detriment of other undertakings, including its competitors, for whom the extent of the vocabulary available to describe their own products is thereby reduced (see judgment of 25 November 2015, Ewald Dörken v OHIM — Schürmann(VENT ROLL), T-223/14, not published, EU:T:2015:879, paragraph 20 and the case-law cited).

30      It must also be recalled that the descriptive nature of a mark must be assessed, first, in relation to the goods or services for which registration of the sign has been sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and 22 May 2008, Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T-254/06, not published, EU:T:2008:165, paragraph 33; see also judgment of 17 May 2011, Consejo Regulador de la Denominación de Origen Txakoli de Álava and Others v OHIM (TXAKOLI), T-341/09, EU:T:2011:220, paragraph 20 and the case-law cited).

31      Thus, for a sign to fall within the scope of Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods and services which it designates to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T-19/04, EU:T:2005:247, paragraph 25 and the case-law cited).

32      Moreover, in order for EUIPO to refuse to register a trade mark under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could 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 (judgment of 23 October 2003, OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 32).

33      It is necessary to examine in the light of those principles whether the Board of Appeal erred in finding that, having regard to the evidence submitted by the interveners, the contested mark was already, or was capable of being, understood as a descriptive indication for the goods at issue, for the purposes of Article 7(1)(c) of Regulation No 207/2009.

–       The first complaint, relating to the determination of the relevant public

34      The applicant claims in essence that the Board of Appeal made an incorrect assessment of the relevant public in respect of part of the goods falling within Class 1 and in respect of the goods falling within Class 31. It argues that, since they are everyday goods, sold in trade, on the Internet, in supermarkets, at markets and at other retail outlets, their use requiring no special expert knowledge, those goods are aimed only at the general public.

35      EUIPO and the interveners dispute the applicant’s arguments.

36      It should be noted that the applicant is not challenging the Board of Appeal’s finding that the relevant public consists of the English- and German-speaking public, given the meaning of the contested mark in English and German.

37      Nor does the applicant dispute that the ‘chemical preservative compositions, namely, antioxidants and antioxidant agents for use in the manufacture of soap and vegetable oils, and for use in the production of a wide variety of chemicals; and antioxidant food preservative compositions; rust inhibitors for industrial use’ covered by the trade mark application and falling within Class 1 were aimed at a public of professionals.

38      Those findings by the Board of Appeal must be upheld.

39      On the other hand, it should be noted that the applicant is disputing the definition of the relevant public in respect of the other goods covered by the contested mark and falling within Class 1, and the goods falling within Class 31. According to the applicant, the Board of Appeal incorrectly held that those goods were also aimed at a public of professionals.

40      The goods concerned here are the ‘plant growth regulating and plant growth stimulating and enhancing preparations; soil conditioners; organic fertilizers; fertilizers and compost’ in Class 1 and the ‘agricultural and horticultural products not included in other classes, and foodstuffs for animals, including additives for foodstuffs for animals’ in Class 31.

41      The goods falling within Class 1 are essentially chemical products for agricultural and horticultural use. The goods falling within Class 31 are essentially goods for agricultural and horticultural use and foodstuffs for animals.

42      Having regard to their nature and intended use, those goods may therefore be of interest, on one hand, to members of the general public who garden or have pets and who purchase goods in supermarkets and, on the other, to professionals such as farmers and agricultural and horticultural undertakings which, in the course of their activities, grow plants and vegetables and keep livestock.

43      Accordingly, contrary to what is claimed by the applicant, given that those goods are also specialised goods aimed at a particular public, they are not aimed only at the general public.

44      It follows from the foregoing that the Board of Appeal did not err in finding that the relevant public was composed of both members of the general public with an interest in gardening or who own pets or other animals and professionals.

45      Lastly, it must be noted that the applicant does not dispute the finding of the Board of Appeal confirming the finding of the Cancellation Division that, given the nature of the goods at issue, the degree of attention of the relevant public was that of an average consumer. That finding by the Board of Appeal must be upheld.

46      The present complaint must therefore be rejected as unfounded.

–       The second complaint, relating to the assessment of the descriptive character of the contested mark

47      The applicant claims that the Board of Appeal erred in its assessment of the evidence submitted by the interveners. First, it argues that the 54 statements annexed to the application for a declaration of invalidity do not prove that the products bearing the contested mark are aimed at a specialised public or that such a public sees in the contested mark’s word sign ‘em’ a purely descriptive indication of those products. Moreover, those statements are not reliable or representative of the relevant public. Secondly, the Board of Appeal did not take into account, in its assessment of the evidence, the fact that such evidence all came from one of the interveners against which the applicant had lodged numerous actions for infringement and, furthermore, that the evidence expressly referred to the mark and the goods of the applicant. Thirdly, the Board of Appeal wrongly justified its taking into account of evidence subsequent to the relevant date or undated evidence on the basis of the judgment of 16 November 2011, Buffalo Milke Automotive Polishing Products v OHIM — Werner & Mertz (BUFFALO MILKE Automotive Polishing Products) (T‑308/06, EU:T:2011:675), relating to revocation proceedings. Fourthly, in addition to the fact that the dates of the occurrences appearing in the Wikipedia and Acronym Finder Internet sites are subsequent to the relevant period, such evidence is not from reliable sources. Fifthly, the aforementioned publications cited show only that the letters ‘em’ can signify ‘effective microorganisms’ or are the abbreviation for ‘effective microorganisms’. They do not, however, show that the average consumer who purchases fertilizer and agricultural or forestry goods considers the group of letters ‘em’ as a descriptive indication of those goods.

48      EUIPO and the interveners dispute the applicant’s arguments.

49      As a preliminary point it must be observed that the applicant is not disputing that (i) the group of letters ‘em’ is the abbreviation of the expressions ‘effective microorganisms’ in English and ‘effektive mikroorganismem’ in German; (ii) effective microorganisms are a combination of useful regenerative microorganisms which exist freely in nature and which have not been subject to any processing; (iii) the abbreviation ‘EM’ in upper case letters existed at the date the European Union was designated and at the relevant date there was already a range of fields of application of ‘EM technology’.

50      The interveners produced before the Board of Appeal, with regard to 13 February 2009 (the relevant date), scientific studies, extracts from publications, printouts from Internet sites, press articles and statements from professionals, traders and consumers.

51      After analysing those documents, the Board of Appeal, like the Cancellation Division, found that there was ample evidence proving that the contested mark was already, or was capable of being, understood as a descriptive indication for the goods at issue or that there existed, at that date, definite and specific grounds for it to be reasonable to assume that such an association would be established in the future by the relevant public, namely professionals in the relevant trades and members of the general public with an interest in gardening or who keep pets and other animals.

52      Specifically, the Board of Appeal found that, inasmuch as all the goods covered by the contested mark could contain effective microorganisms or consist of effective microorganisms, the group of letters ‘em’ as the abbreviation of the expression ‘effective microorganisms’ constituted a descriptive indication for the composition of the goods at issue.

53      Contrary to what the applicant claims, it is necessary to uphold that finding by the Board of Appeal.

54      It must be observed as a preliminary point that the purpose of the administrative procedure laid down in Article 56(1)(a) of Regulation No 207/2009 (now Article 63(1)(a) of Regulation 2017/1001), in conjunction with Article 52(1)(a) of that regulation, is, inter alia, to enable EUIPO to review the validity of the registration of a mark and to adopt, where necessary, a position which it should have adopted of its own motion under Article 37(1) of Regulation No 207/2009 (now Article 42(1) of Regulation 2017/1001) (judgment of 30 May 2013, ultra air v OHIM — Donaldson Filtration Deutschland (ultrafilter international), T‑396/11, EU:T:2013:284, paragraph 20).

55      It must be observed that it is apparent from the evidence produced by the interveners in the procedure before EUIPO that, first, the abbreviation EM was already used, at the relevant date, to designate the expression ‘effective microorganisms’.

56      Secondly, the abbreviation EM refers to a combination of microorganisms with regenerative and antioxidant powers and which have beneficial effects in particular for soil, plants, fruits, vegetables and animals.

57      Thirdly, the abbreviation EM does not refer to a specific product or to a trade mark.

58      Fourthly, the abbreviation EM and the use of effective microorganisms was already widespread at the date at which the European Union was designated, in the various relevant fields.

59      It follows that the Board of Appeal correctly held that the evidence submitted by the interveners proved that the contested mark was capable of being understood by the relevant public as a descriptive term in the sense that it conveyed obvious and direct information regarding the kind, quality or other characteristics, such as the composition, of the goods in question. As a result, the link between the abbreviation EM and the goods at issue was sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) of Regulation No 207/2009.

60      That finding is not called into question by the applicant’s arguments.

61      In the first place, it is necessary to reject the argument that (i) the statements annexed to the application for a declaration of invalidity do not prove that the relevant public would perceive the word element ‘em’ as a descriptive indication, (ii) those statements are not representative, and (iii) those statements do not constitute reliable items of evidence.

62      In this respect, as EUIPO observes in the response, first, the Board of Appeal did not rely solely on those statements for the purposes of the determination of the descriptive character of the contested mark. As is apparent from the contested decision, those statements constitute only part of the evidence on which the Board of Appeal’s findings were based. Furthermore, those statements have merely confirmatory value. As the Board of Appeal states in point 40 of the contested decision, they serve merely to corroborate the information from all the documents submitted.

63      Secondly, it must be observed that those statements are from people working on the issue of effective microorganisms or using effective microorganisms in the course of their professional activities or their hobbies. It must also be observed that the authors of those statements are active primarily in the fields to which the goods at issue relate, namely keeping livestock, gardening and agriculture. They thus include specialists, professionals and members of the general public.

64      Thirdly, it must be stated that the veracity of those statements cannot be called into question simply by the fact that they are signed by people interested for professional reasons in the issue of effective microorganisms (see, to that effect, judgment of 30 May 2013, ultrafilter international, T-396/11, EU:T:2013:284, paragraphs 20 and 21). Moreover, the applicant has produced no document such as to disprove those statements.

65      It must be added that, even if it were to be established, the fact that those statements were made following a request by the interveners and that the interveners may have coordinated the preparation of those statements does not, in itself, cast doubt on their content and evidential value. In the absence of evidence to the contrary, it must be assumed that each witness signed his statement of his own free will and takes responsibility for the content. Furthermore, the evidential value of a statement cannot be denied on the ground that it was not made before a notary public (judgment of 28 October 2009, BCS v OHIM — Deere (Combination of the colours green and yellow), T-137/08, EU:T:2009:417, paragraphs 50 and 51).

66      In the second place, it is necessary to reject the argument that the Board of Appeal did not take into account, in its assessment of the evidence, the fact that those items of evidence all came from one of the interveners against which the applicant had lodged numerous actions for infringement and, furthermore, expressly referred to the mark and the goods of the applicant.

67      First, as stated in paragraph 54 above, the purpose of the administrative procedure laid down in Article 56(1)(a) of Regulation No 207/2009, in conjunction with Article 52(1)(a) of that regulation, is, inter alia, to enable EUIPO to review the validity of the registration of a mark and to adopt, where necessary, a position which it should have adopted of its own motion under Article 37(1) of that regulation.

68      In that context, EUIPO is required to assess whether the mark under examination is descriptive and/or devoid of distinctive character, without the motives and earlier conduct of the applicant for a declaration of invalidity being able to affect the scope of the task entrusted to EUIPO in relation to the public interest underlying Article 7(1)(b) and (c) and Article 56(1)(a) of Regulation No 207/2009. Given that, in applying the provisions at issue in the context of invalidity proceedings, EUIPO does not rule on the question whether the rights of the proprietor of the mark take precedence over any rights which the applicant for a declaration of invalidity might have, but ascertains whether the rights of the proprietor of the mark were validly obtained in the light of the rules governing the registrability of marks, there can be no question of an ‘abuse of rights’ on the part of the applicant for a declaration of invalidity (judgment of 30 May 2013, ultrafilter international, T-396/11, EU:T:2013:284, paragraph 21).

69      Thus, the fact that the applicant for a declaration of invalidity may file an application with a view to subsequently affixing the sign in question to its own products is perfectly in line with the public interest safeguarded by Article 7(1)(c) of Regulation No 207/2009 of keeping signs freely available. That assessment is confirmed by Article 52(1) of Regulation No 207/2009, pursuant to which an EU trade mark may also be declared invalid on the basis of a counterclaim in infringement proceedings, which presupposes that the defendant in that action may obtain a declaration of invalidity even if he has used the mark in question and intends to continue to do so (judgment of 30 May 2013, ultrafilter international, T-396/11, EU:T:2013:284, paragraph 22).

70      Secondly, it must be stated that the applicant cannot profitably call in question the Board of Appeal’s finding that the contested mark was descriptive for the goods at issue merely by arguing that the evidence submitted by the interveners referred, inter alia, to the contested mark and to the applicant’s goods.

71      In this connection, it is sufficient to point out that the descriptive character of a mark is not affected by how many similar goods are already on the market (see, to that effect and by analogy, judgment of 17 January 2006, Henkel v OHIM (Red and white rectangular tablet with an oval blue centre), T-398/04, not published, EU:T:2006:19, paragraphs 40 and 41). The number of competitors who may use the signs and indications of which the mark consists is not decisive in this regard. Any operator at present offering, as well as any operator who might in the future offer, goods or services which compete with those in respect of which registration is sought must be able freely to use the signs or indications which may serve to describe characteristics of its goods or services (judgment of 12 February 2004, Koninklijke KPN Nederland, C-363/99, EU:C:2004:86, paragraph 58).

72      In the third place, the argument that the Board of Appeal wrongly justified its taking into account of evidence subsequent to the relevant date or undated evidence on the basis of the judgment of 16 November 2011, BUFFALO MILKE Automotive Polishing Products (T‑308/06, EU:T:2011:675), relating to revocation proceedings, must be rejected.

73      Although the subject matter of revocation proceedings and invalidity proceedings differs, they are both nevertheless governed by the same articles of Regulation No 207/2009 and pursue the same aim, namely to determine whether the contested mark still satisfies the conditions for registration laid down by Regulation No 207/2009. It follows that the Board of Appeal did not err in law in transposing to the present case, by using analogous reasoning, the general principles governing the assessment of the evidence in connection with revocation proceedings.

74      Moreover, first, a large part of the evidence produced by the interveners is dated prior to the relevant date and in itself suffices to establish the descriptive character of the contested mark.

75      Secondly, as noted by the Board of Appeal in the contested decision and EUIPO in the response, although those statements are dated after the relevant date, from them it is nevertheless possible to gauge the relevant public’s perception of the abbreviation EM and effective microorganisms prior to the date at which the European Union was designated (judgment of 3 June 2009, Frosch Touristik v OHIM — DSR touristik (FLUGBÖRSE), T-189/07, EU:T:2009:172, paragraph 19).

76      In the fourth place, the argument that the information taken from the Wikipedia and Acronym Finder Internet sites does not constitute a reliable source of information must be rejected.

77      First, the reliability of the information taken from those Internet sites cannot, as claimed by the applicant, be called into question by the mere fact that users have the possibility of adding new entries (see, to that effect, judgment of 13 July 2017, LG Electronics v EUIPO (QD), T-650/16, not published, EU:T:2017:489, paragraph 22).

78      Secondly, the applicant has submitted no document such as to disprove the information on those sites.

79      Thirdly, while, admittedly, references to certain Internet databases must be used with discernment, it should be noted, as stated by the Board of Appeal at point 39 of the contested decision, that such information was of merely confirmatory value and simply corroborated the information from all the documents submitted, which included scientific studies, extracts from technical publications, press articles and statements from professionals, traders and consumers.

80      In the fifth place, the argument that the publications cited show only that the letters ‘em’ can signify ‘effective microorganisms’ or are the abbreviation for ‘effective microorganisms’ must be rejected.

81      In that regard, it is sufficient to point out that registration of a word sign must be refused, pursuant to Article 7(1)(c) of Regulation No 207/2009, if at least one of its possible meanings identifies a feature of the goods or services concerned (see judgment of 13 July 2017, QD, T-650/16, not published, EU:T:2017:489, paragraph 25 and the case-law cited).

82      It is apparent from paragraph 55 above that one of the possible meanings of the abbreviation EM is indeed ‘effective microorganisms’, which designates a characteristic of the goods concerned.

83      In the sixth place, it is necessary to reject the argument that the evidence does not show that the average consumer who buys fertilizer and agricultural or forestry goods considers the group of letters ‘em’ to be a descriptive indication of those goods.

84      It need only be pointed out in this connection that, for EUIPO to refuse to register a mark under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark that are referred to in that provision actually be in use at the time of the application for registration in a way that is descriptive of goods or services in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (see judgment of 13 July 2017, QD, T-650/16, not published, EU:T:2017:489, paragraph 26 and the case-law cited).

85      In addition, the fact that the abbreviation EM was frequently used with the expression ‘effective microorganisms’ does not cast doubt on that finding. It must be noted that the fact that that combination can convey the nature of the goods at issue is enough to find that there is a sufficiently direct and specific link between them and the contested mark, of such a kind as to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of those goods in accordance with the case-law referred to in paragraph 31 above (judgment of 13 July 2017, QD, T-650/16, not published, EU:T:2017:489, paragraph 29 and the case-law cited).

86      Accordingly, the present complaint must be rejected as unfounded.

87      It follows from all the foregoing that the first plea in law must be rejected as unfounded.

 The second plea, alleging infringement of Articles 145, 64(1) and 57(5) of Regulation No 207/2009, in conjunction with Article 7(1)(b) of that regulation

88      In the first place, the applicant claims that the Board of Appeal neither related the examination of the contested mark to the goods in question nor took account of the evidence produced in order to establish the public’s perception of the mark. In particular, the Board of Appeal did not take into account the fact that the evidence submitted, for example in the form of publications, provides no information on whether the persons who perceive EM as an abbreviation regard it as an indication of the content or as an indication of a product of a particular undertaking. In the second place, it argues that the distinctive character of the sign EM was expressly examined and confirmed in numerous prior decisions of the Board of Appeal for goods in Classes 1 and 31. That difference in treatment constitutes an infringement of the principle of equal treatment, a principle which the Board of Appeal was bound to observe.

89      EUIPO and the interveners dispute the applicant’s arguments.

90      It must be recalled that, as is apparent from Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal listed applies for the sign at issue not to be registrable as an EU trade mark (judgment of 30 November 2017, Hanso Holding v EUIPO (REAL), T-798/16, not published, EU:T:2017:854, paragraph 54 and the case-law cited).

91      In the light of the findings following from the examination of the first plea, the second plea, alleging infringement of Articles 145, 64(1) and 57(5) of Regulation No 207/2009, in conjunction with Article 7(1)(b) of that regulation, must be rejected as inoperative.

92      It follows from all of the foregoing that the action must be dismissed in its entirety as unfounded.

 Costs

93      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.

94      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO and the interveners.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders EM Research Organization, Inc. to pay the costs.

Delivered in open court in Luxembourg on 25 September 2018.

*      Language of the case: English.

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