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

JUDGMENT OF THE GENERAL COURT (Single Judge)

28 September 2022 (*)

(EU trade mark – Application for the EU figurative mark FRESH – Absolute grounds for refusal – Descriptive character – Article 7(1)(c) and (2) of Regulation (EU) 2017/1001 – No distinctive character – Article 7(1)(b) of Regulation 2017/1001)

In Case T‑58/22,

Miroslav Labaš, residing in Košice (Slovakia), represented by M. Vasiľ, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Eberl and T. Klee, acting as Agents,

defendant,

THE GENERAL COURT (Single Judge),

Judge: U. Öberg,

Registrar: E. Coulon,

having regard to the written part of the procedure,

having regard to the decision of the General Court (Fifth Chamber), pursuant to Article 14(3) and Article 29 of the Rules of Procedure of the General Court, to assign the case to U. Öberg, sitting as a single Judge,

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,

gives the following

Judgment

1        By his action under Article 263 TFEU, the applicant, Mr Miroslav Labaš, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 November 2021 (Case R 610/2021-1) (‘the contested decision’).

 Background to the dispute

2        On 21 September 2020, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative mark:

3        The goods and services in respect of which registration was sought are in Classes 29, 30, 31, 32, 35 and 39 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 29: ‘Dairy products and dairy substitutes; Meat and meat products; Soups and stocks, meat extracts; Processed fruits, fungi, vegetables, nuts and pulses; Edible oils and fats’;

–        Class 30: ‘Sugars, natural sweeteners, sweet coatings and fillings, bee products; Coffee, teas and cocoa and substitutes therefor; Ice, ice creams, frozen yogurts and sorbets; Salts, seasonings, flavourings and condiments; Processed grains, starches, and goods made thereof, baking preparations and yeasts’;

–        Class 31: ‘Agricultural crops and horticulture products, other than those of botanical genus Phaseolus; aquacultural crops, forestry products’;

–        Class 32: ‘Soft drinks; Beer and brewery products’;

–        Class 35: ‘Business assistance, management and administrative services; Advertising, marketing and promotional services; Retail services relating to alcoholic beverages; Retail services in relation to alcoholic beverages (except beer); Retail services via catalogues related to alcoholic beverages (except beer); Retail services via global computer networks related to alcoholic beverages (except beer); Retail services in relation to confectionery; Retail services in relation to desserts; Retail services in relation to hygienic implements for humans; Retail services in relation to disposable paper products; Retail services in relation to teas; Retail services in relation to cleaning articles; Retail services in relation to cleaning preparations; Retail services in relation to chocolate; Retail services in relation to hygienic implements for animals; Retail services in relation to cocoa; Retail services in relation to beauty implements for humans; Retail services in relation to fodder for animals; Retail services in relation to coffee; Retail services in relation to dairy products; Retail services in relation to freezing equipment; Retail services in relation to meats; Retail services in relation to non-alcoholic beverages; Retail services via global computer networks related to non-alcoholic beverages; Retail services in relation to baked goods; Retail services in relation to beer; Retail services via global computer networks related to beer; Retail services in relation to foodstuffs; Retail services via global computer networks related to foodstuffs; Retail services in relation to tobacco; Retail services in relation to toiletries; Retail services relating to food; Retail services relating to candy; Retail services relating to fruit; Wholesale services in relation to foodstuffs; Wholesale services in relation to beer’;

–        Class 39: ‘Packaging and storage of goods’.

4        By decision of 12 February 2021, the examiner rejected the application for registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above, on the basis of Article 7(1)(b) and (c) and (2) 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).

5        On 31 March 2021, the applicant filed a notice of appeal against the examiner’s decision.

6        By the contested decision, the First Board of Appeal of EUIPO dismissed the appeal on the ground that the mark applied for was, first, descriptive of the characteristics of the goods and services at issue and, second, devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation 2017/1001.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        in the alternative, annul the contested decision in part, inasmuch as it rejects the application for registration of the mark applied for in respect of the services in Classes 35 and 39;

–        order EUIPO to pay the costs.

8        EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

9        In support of his action, the applicant relies on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001 and, second, infringement of Article 7(1)(b) of that regulation, inasmuch as the mark applied for (i) is not descriptive of the goods and services at issue and (ii) has distinctive character in respect of those goods and services.

10      The applicant claims that the Board of Appeal incorrectly found that the word element ‘fresh’ of the mark applied for was descriptive of the goods and services at issue.

11      In the applicant’s view, the application for registration proved to EUIPO that the mark applied for was widely known to the public in Slovakia, where he obtained registration of a substantially identical mark, and that consumers in that Member State associated it with an indication of the origin of supermarkets or retail stores belonging to the applicant and managed by him.

12      Furthermore, as regards the Board of Appeal’s main objections and arguments relating to the use of the word element ‘fresh’ in English-speaking countries, the applicant claims that every average consumer in those countries is aware of the fact that not every item sold in a store is fresh. Therefore, the use of the word element ‘fresh’ in the mark applied for cannot be misleading, including in Member States where English is the official language or a well-known language.

13      Furthermore, as regards the services in Classes 35 and 39, the applicant maintains that the Board of Appeal did not define the direct link between the mark ‘fresh’ applied for and the absolute ground for refusing to register the mark in respect of those services.

14      Thus, first, as regards the services in Class 35, the Board of Appeal’s arguments are hypothetical, indirect and improbable.

15      According to the applicant, first of all, although it is possible that the word element ‘fresh’ may be directly associated with fresh tobacco leaves, or with air fresheners used to counteract the smell of tobacco, that meaning cannot be ascribed to ‘retail services in relation to tobacco’. Next, the services relating to toiletries and beauty products, and freezing equipment, cannot, in themselves, be regarded as fresh. Lastly, no average consumer would perceive the word element ‘fresh’ of the mark applied for as being descriptive of the services which are normally for the purpose of running a business and facilitating the sale of goods or services.

16      Secondly, as regards the services in Class 39, essentially related to the packaging and storage of goods, there is no such thing as ‘fresh services related to packaging’ or ‘fresh services related to [the] storing of goods’.

17      EUIPO disputes the applicant’s arguments.

18      Under Article 7(1)(c) of Regulation 2017/1001, 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.

19      Furthermore, signs or indications which may serve, in trade, to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 2017/1001, deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 14 May 2013, Unister v OHIM (fluege.de), T‑244/12, EU:T:2013:243, paragraph 17 and the case-law cited).

20      It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, 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 the goods and services in question or one of their characteristics (see judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16 and the case-law cited).

21      Therefore, the descriptive character of a sign may only be assessed, first, in relation to the perception of the sign by the relevant public and, second, in relation to the goods or services concerned (see judgment of 7 June 2005, Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 26 and the case-law cited).

22      It is in the light of those considerations that the applicant’s line of argument, according to which the mark applied for is not descriptive of the goods and services at issue, must be examined.

23      As a preliminary point, it should be stated that the argument that the use of the word element ‘fresh’ in the mark applied for cannot be misleading, including in Member States where English is the official language or a well-known language, is ineffective, given that the Board of Appeal never ruled on whether that element was misleading.

24      According to settled case-law, Article 7(1)(c) of Regulation 2017/1001 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision therefore pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (see judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31, and of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 62).

25      Under Article 7(1)(c) of Regulation 2017/1001, a sign must be refused registration 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).

26      In the present case, the mark applied for consists of a word element, ‘fresh’, written in red stylised letters, and several figurative elements, namely two stylised green leaves.

27      It is therefore necessary to examine, on the basis of a given meaning of the mark applied for, whether there is a sufficiently direct and specific relationship between the word element ‘fresh’ and the goods or services at issue to enable the relevant public – in particular the public located in the English-speaking part of the European Union, since the word element of the mark applied for is an English word – immediately to perceive, without further thought, a description of those goods or services or of one of their characteristics (see, to that effect, judgments of 25 October 2018, Devin v EUIPO – Haskovo (DEVIN), T‑122/17, EU:T:2018:719, paragraph 18, and of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 28).

28      After finding that it was an English word derived from everyday language and conveying a clear and discernible concept from the point of view of the relevant English-speaking public, in paragraph 27 of the contested decision the Board of Appeal correctly found that the relevant public would immediately perceive the word ‘fresh’, the word element of the mark applied for, as a reference to a characteristic or quality of the goods in Classes 29, 30, 31 and 32, including foodstuffs and beverages.

29      The word ‘fresh’ may be directly perceived as an indication that the abovementioned goods are not cooked, have been recently obtained, or have been prepared with fresh goods that have been recently cooked, frozen, canned or preserved by other methods. Consequently, the link between those goods and the mark applied for is sufficiently direct and specific, as has moreover been acknowledged by the applicant, since he asserts, in the application, that ‘compared to Classes 29, 30, 31, 32, as regards Classes 35 and 39, there is no direct link between the English meaning of the word “fresh” and the type of services’, thus acknowledging that there is a link between the word ‘fresh’ and the goods in Classes 29, 30, 31 and 32.

30      As regards the services in Classes 35 and 39 covered by the mark applied for, it should be noted that the relevant English-speaking public will directly perceive the word element ‘fresh’ as providing information concerning the kind, quality and intended purpose of those services, since that element may be associated with the object, aim or field of specialisation of the services in respect of which registration of the mark is sought.

31      In particular, a direct descriptive link will always be established in the mind of the relevant public between the word element of the mark applied for and the services at issue, which consist of: (i) the retail sale of foodstuffs and beverages, which the relevant public will identify as fresh goods which are not cooked, have been recently obtained, or have been prepared with fresh goods that have been recently cooked, frozen, canned or preserved by other methods; (ii) the retail sale of toiletries, cleaning preparations and beauty and hygiene products which provide a degree of freshness or contain ingredients that the relevant public will identify as being fresh or as conveying a feeling of freshness and cleanliness; (iii) the retail sale of freezing equipment, the ultimate aim of which is preserving the freshness of retailed products; (iv) the retail sale of tobacco, a product which the relevant public will perceive as being fresh (for example, fresh tobacco leaves), or associated with air fresheners used to counteract the smell of tobacco; and (v) business, administrative, advertising and marketing services which could be specifically aimed at undertakings operating on the market of fresh goods and at companies marketing fresh foodstuffs and beverages.

32      Although the last set of services covered by the mark applied for – business, administrative, advertising and marketing services – are not expressly aimed at undertakings which operate on the market of fresh goods and at companies which market fresh foodstuffs and beverages, they also include specific services which could be used by such undertakings and companies. Therefore, as regards those generic services, the relevant public will naturally associate the word element ‘fresh’ with a characteristic of those services and will easily assume that the services in Class 35, which are normally for the purpose of running a business and facilitating the sale of goods or services, are specialised in the field of fresh goods.

33      As regards the services relating to the packaging and storage of goods in Class 39, it is sufficient to note that the main aim of those services is to keep goods fresh and to avoid any deterioration. Consequently, the word ‘fresh’ may be perceived by the relevant public as a direct indication that the goods which are packaged and stored by using the applicant’s services will be kept fresh in the sense that they will maintain their characteristics and properties.

34      In the light of the foregoing, the Court finds that the word element ‘fresh’ of the mark applied for will naturally be perceived by the English-speaking public of the European Union, immediately and without further thought, as a descriptive indication of a characteristic or the intended purpose of all the goods and services covered by the application for registration, and not as an indication of their commercial origin. In order for the registration of a mark to be refused, it is sufficient that there are grounds for refusal in part of the European Union (see, to that effect, judgments of 8 July 2004, MLP Finanzdienstleistungen v OHIM (bestpartner), T‑270/02, EU:T:2004:226, paragraph 21, and of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 57).

35      Thus, the Court considers that there is a sufficiently direct and specific relationship between the word element ‘fresh’ of the mark applied for and all the services at issue, with the result that the relevant English-speaking public will immediately perceive, without further thought, a description of those services or of one of their characteristics.

36      As regards the figurative elements of the mark applied for, the Court finds that they have, as such, no element that is visually eye-catching or likely to be remembered by the relevant public. As is rightly noted by the Board of Appeal, those figurative elements do not divert the attention of that public away from the descriptive word element of that mark, but, on the contrary, reinforce that descriptive character by the representation of two green leaves, which recall the concept of fresh and natural.

37      Nor are the stylisation of the letters of the word element ‘fresh’ of the mark applied for or their red colour likely to hold the attention of the relevant public.

38      Accordingly, the figurative elements of the mark applied for are not, because of the representation of two stylised green leaves, or the stylisation or the colour of the letters, particularly complex; nor are they capable of offsetting or altering the descriptive character of the word element of that mark in relation to the goods and services at issue.

39      The Board of Appeal therefore correctly found that the graphic representation of the mark applied for is not sufficient to distract the relevant public from the descriptive message conveyed by the word element.

40      Accordingly, it is necessary to uphold the Board of Appeal’s finding that, as regards the goods and services at issue, the sign for which registration is sought is descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001.

41      That ground in itself justifies the refusal of the registration at issue, with the result that there is no need to consider the merits of the plea alleging infringement of Article 7(1)(b) of that regulation (see, to that effect, order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28; judgments of 22 November 2018, Addiko Bank v EUIPO (STRAIGHTFORWARD BANKING), T‑9/18, not published, EU:T:2018:827, paragraph 38, and of 17 March 2021, Steinel v EUIPO (MobileHeat), T‑226/20, not published, EU:T:2021:148, paragraph 51).

42      According to settled case-law, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation 2017/1001 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services for the purposes of Article 7(1)(b) of that regulation (judgments of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 19, and of 5 July 2017, Allstate Insurance v EUIPO (DRIVEWISE), T‑3/16, not published, EU:T:2017:467, paragraph 41).

43      As is apparent from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal applies for the sign not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29; of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74; and of 17 March 2021, MobileHeat, T‑226/20, not published, EU:T:2021:148, paragraph 50).

44      Accordingly, the action must be dismissed in its entirety.

 Costs

45      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.

46      Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Single Judge)

hereby:

1.      Dismisses the action;

2.      Orders Mr Miroslav Labaš to pay the costs.

Delivered in open court in Luxembourg on 28 September 2022.

*      Language of the case: English.

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