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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

24 May 2023 (*)

(EU trade mark – Invalidity proceedings – Three-dimensional EU trade mark – Shape of an inhaler – Absolute ground for invalidity – Distinctive character acquired through use – Article 51(2) of Regulation (EC) No 40/94 (now Article 59(2) of Regulation (EU) 2017/1001) – Obligation to state reasons – Article 94 of Regulation 2017/1001)

In Case T‑477/21,

Glaxo Group Ltd, established in Brentford (United Kingdom), represented by T. de Haan and F. Verhoestraete, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Cipla Europe NV, established in Antwerp (Belgium),

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli, President, J. Schwarcz and R. Norkus (Rapporteur), Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the written part of the procedure,

further to the hearing on 2 December 2022,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Glaxo Group Ltd, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 May 2021 (Case R 1835/2016-1) (‘the contested decision’).

 Background to the dispute

2        On 16 December 2014, the other party to the proceedings before the Board of Appeal of EUIPO, Cipla Europe NV (‘the applicant for a declaration of invalidity’), filed with EUIPO an application for a declaration of invalidity of the three-dimensional EU trade mark which was registered following an application filed by the applicant on 12 April 2001 for the following sign:

3        The applicant claimed the colours ‘Lilac (Pantone ref 2645C)’ and ‘deep purple (Pantone ref 2617C)’ with the following clarification:

‘Lilac (Pantone ref: 2645C) and deep purple (Pantone ref: 2617C) in or applied to the three-dimensional shape in the proportions shown in the illustration’.

4        The goods covered by the contested mark in respect of which invalidity was sought were in Classes 5 and 10 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:

–        Class 5: ‘Pharmaceutical preparations and substances for the prevention, treatment and/or alleviation of respiratory ailments’;

–        Class 10: ‘Inhalers, parts and components for all the aforesaid goods’.

5        The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), read in conjunction with Article 7(1)(a) to (e)(ii) of that regulation (now Article 59(1)(a) and Article 7(1)(a) to (e)(ii) 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), respectively).

6        On 16 September 2016, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 52(1)(a), read in conjunction with Article 7(1)(b), of Regulation No 207/2009.

7        On 3 October 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

8        By the contested decision, the Board of Appeal dismissed the appeal. First of all, it found that the applicant for a declaration of invalidity had not shown that the contested mark was devoid of any distinctive character on the relevant date, namely the filing date of the application for registration of that mark. However, the Board of Appeal took the view that it was apparent from the evidence submitted and the discussions before the Cancellation Division that the choice of colours for medicinal products for the treatment of asthma referred to the active ingredients and to the purpose and characteristics of the medicinal product. It concluded that the colours had, on the relevant date, a specific meaning with regard to the inhalers at issue and that such use was descriptive.

9        Furthermore, the Board of Appeal found that the principles relating to the colour purple established in the judgment of 9 September 2020, Glaxo Group v EUIPO (Shade of the colour purple) (T‑187/19, not published, EU:T:2020:405), for the same market, applied mutatis mutandis to the relevant date in the present case, since those principles are inherent in the market of pharmaceutical products in recent decades.

10      Lastly, the Board of Appeal found that the evidence submitted had not demonstrated that the contested mark had acquired distinctive character through use before or after the filing date of the application for registration, but before the date of the application for a declaration of invalidity.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.

12      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      As a preliminary point, it should be noted that, given that the filing date of the application for registration at issue, namely 12 April 2001, is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Moreover, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.

14      In the present case, so far as concerns the substantive rules, references made by the Board of Appeal in the contested decision and by EUIPO in its written pleadings to the provisions of Regulation 2017/1001 and references made by the applicant to the provisions of Regulation No 207/2009 must be understood as referring to the identical provisions of Regulation No 40/94.

15      In support of its action, the applicant puts forward three pleas in law. The first plea alleges infringement of Article 94(1) of Regulation 2017/1001 and Article 41(2) of the Charter of Fundamental Rights of the European Union. The second plea alleges infringement of Article 7(1)(b) of Regulation No 40/94 (which became Article 7(1)(b) of Regulation No 207/2009, now Article 7(1)(b) of Regulation 2017/1001). The third plea alleges infringement of Article 51(2) of Regulation No 40/94 (which became Article 52(2) of Regulation No 207/2009, now Article 59(2) of Regulation 2017/1001).

16      It is appropriate to begin by examining the third plea and next the first and second pleas.

 The third plea in law, alleging infringement of Article 51(2) of Regulation No 40/94

17      The applicant claims that the Board of Appeal failed to examine the alternative argument that the contested mark had acquired distinctive character through use; similarly, it did not examine the extensive evidence submitted before the adjudicating bodies of EUIPO.

18      Furthermore, the Board of Appeal erred in considering, in paragraph 65 of the contested decision, that distinctive character acquired through use had to be assessed on the filing date of the application for registration of the contested mark.

19      As regards paragraph 66 of the contested decision, first, the sentence ‘the application could further have acquired distinctiveness after registration, before the registration request’ is incomprehensible and, second, the Board of Appeal’s refusal to examine the evidence submitted by the applicant to demonstrate that the contested mark had acquired distinctive character through use was insufficiently reasoned and did not enable it to understand the contested decision.

20      EUIPO disputes the applicant’s arguments.

21      According to Article 51(2) of Regulation No 40/94, where an EU trade mark has been registered in breach of, inter alia, Article 7(1)(b) of that regulation, which provides that trade marks which are devoid of any distinctive character are not to be registered, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. According to Article 7(3) of Regulation No 40/94 (which became Article 7(3) of Regulation No 207/2009, now Article 7(3) of Regulation 2017/1001), paragraph 1(b) of that article does not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

22      Furthermore, a sign can be registered as an EU trade mark only if evidence is provided that it has acquired, in consequence of the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). The Court of Justice also stated that the part of the European Union referred to in Article 7(2) may be comprised, where necessary, of a single Member State (see judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 75 and the case-law cited).

23      It follows that, with regard to a mark that is, ab initio, devoid of distinctive character across all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 76 and the case-law cited).

24      In the present case, the applicant claims, in essence, that the Board of Appeal did not examine the argument relating to the existence of distinctive character acquired through use or the evidence submitted in that regard.

25      Those claims must be rejected. First, it is apparent from paragraph 65 of the contested decision that the Board of Appeal found that the contested mark would have been registrable on the filing date of the application for registration if it had already acquired distinctive character in consequence of the use which had been made of it. According to the Board of Appeal, that mark could not have acquired such character before the filing date of the application for registration because it had not been used throughout the territory of all the Member States. Second, the Board of Appeal found that the evidence submitted did not demonstrate that the contested mark had acquired distinctive character in consequence of the use which had been made of it between the date of its registration and that of the application for a declaration of invalidity.

26      Admittedly, the statement of reasons for the contested decision is particularly brief as regards the distinctive character acquired through use of the contested mark during the period between its registration and the date of the application for a declaration of invalidity. However, the Board of Appeal took care to refer in that regard to the reasoning of the Cancellation Division’s decision. According to settled case-law, when the Board of Appeal confirms a decision of the Cancellation Division in its entirety, and given the continuity in terms of function between the Cancellation Divisions and the Boards of Appeal, to which Article 71(1) of Regulation 2017/1001 attests, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the parties and enables the Courts of the European Union to carry out fully their review as to whether the Board of Appeal’s assessment was well founded (see, to that effect, judgment of 8 July 2020, Euroapotheca v EUIPO – General Nutrition Investment (GNC LIVE WELL), T‑686/19, not published, EU:T:2020:320, paragraph 20 and the case-law cited).

27      As regards the alleged incoherence of the first sentence of paragraph 66 of the contested decision, it must be held, as EUIPO correctly submits, that it is a clerical error which has no bearing on the Board of Appeal’s reasoning.

28      Consequently, the third ground of appeal must be rejected as unfounded.

 The first plea, alleging infringement of Article 94(1) of Regulation 2017/1001 and Article 41(2) of the Charter of Fundamental Rights

29      The applicant claims, in essence, that the Board of Appeal did not examine the inherent distinctive character resulting from the particular combination of the elements of which the contested mark was composed, namely its shape, the colours ‘lilac’ and ‘deep purple’ and the particular arrangement of those colours. Accordingly, the Board of Appeal failed to fulfil its obligation to state reasons, in infringement of Article 94(1) of Regulation 2017/1001 and Article 41(2) of the Charter of Fundamental Rights.

30      EUIPO disputes the applicant’s arguments.

31      EUIPO contends that the Board of Appeal took the contested mark as a whole into account when assessing its inherent distinctive character.

32      As regards the shape of the contested mark, the Board of Appeal stated that inhalers could have the shape of a boot, which is the more traditional shape for inhalers, protected by a patent in the 1950s.

33      As regards the colours of the contested mark, EUIPO contends that a non-distinctive colour applied to a non-distinctive shape can only lead to the conclusion that the combination lacks distinctive character, without there being any need, in the present case, to suppose that the combination is more than the mere sum of its parts. As colours have a technical or informative function on the market for inhalers, the fact that the shape of the contested mark is covered by two shades of purple, the lid being darker than the body, cannot affect the Board of Appeal’s finding that the contested mark was devoid of distinctive character as a whole. The fact that the colour of the lid frequently differed from the colour of the body of the inhaler is, moreover, confirmed by the relevant norms and customs of the market referred to in paragraph 40 of the application initiating the proceedings.

34      Moreover, the fact that the applicant was able to challenge the substance of the contested decision and that it therefore understood the Board of Appeal’s reasoning shows that there was no infringement of the obligation to state reasons.

35      It should be borne in mind that, according to Article 41(2) of the Charter of Fundamental Rights, the right to good administration includes, inter alia, the obligation of the administration to give reasons for its decisions.

36      The obligation to state reasons also follows from the first sentence of Article 94(1) of Regulation 2017/1001, which provides that decisions of EUIPO are to state the reasons on which they are based. It has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the act in question. The purpose of that obligation is, on the one hand, to enable the persons concerned to ascertain the reasons for the measure and, on the other, to enable the Courts of the European Union to exercise their power to review the legality of the decision (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65 and the case-law cited). It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see judgment of 7 February 2007, Kustom Musical Amplification v OHIM (Shape of a guitar), T‑317/05, EU:T:2007:39, paragraph 57 and the case-law cited). The Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to ascertain the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (judgment of 25 March 2009, Anheuser-Busch v OHIM – Budějovický Budvar (BUDWEISER), T‑191/07, EU:T:2009:83, paragraph 128).

37      Furthermore, it should be observed that, in accordance with settled case-law, the obligation to state reasons is an essential procedural requirement and distinct from the question of whether the reasons given are correct. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (see judgment of 30 September 2016, Alpex Pharma v EUIPO – Astex Pharmaceuticals (ASTEX), T‑355/15, not published, EU:T:2016:591, paragraph 45 and the case-law cited).

38      As regards a compound trade mark, such as that which forms the subject matter of the present dispute, it is clear from the case-law that any distinctive character may be assessed, in part, in respect of each of its elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, present such character. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such character (see judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 29 and the case-law cited).

39      In the present case, it is apparent from the contested decision that the Board of Appeal defined the contested mark as a complex three-dimensional mark characterised by its shape, its specific colours and the arrangement of those colours.

40      After recalling that the discussions before the Cancellation Division had concerned, inter alia, the question whether, on the filing date of the application for registration of the contested mark, colours had a specific meaning as regards the inhalers at issue, the Board of Appeal found that it was apparent from the evidence submitted that medicinal products for the treatment of asthma were designed in various colours and the choice of those colours referred to the active ingredients and to the purpose and characteristics of the medicinal product and such use had to be regarded as descriptive. Next, the Board of Appeal analysed various items of evidence relating to colour and concluded that it was apparent from that evidence that colours had a technical or informative function, both for health professionals and for end consumers.

41      So far as concerns the shape of a boot used for inhalers, such as the shape described by the contested mark, the Board of Appeal found that it was the more traditional shape and that it was protected by a patent in the 1950s.

42      Lastly, the Board of Appeal found, in essence, that certain items of evidence showed that the contested mark was unusual on the market for the goods in question, which could be remembered by the relevant public and understood by it as being a reference to the proprietor of that mark. However, the Board of Appeal found that the principles which it inferred from the judgment of 9 September 2020, Shade of the colour purple (T‑187/19, not published, EU:T:2020:405), were applicable mutatis mutandis in the present case.

43      The Board of Appeal found that the contested mark was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

44      It follows from the foregoing that the Board of Appeal, as the applicant rightly claims, did not carry out an overall assessment of the constituent elements of the contested mark even though it had examined the distinctive character of each of them taken individually.

45      In this respect, it should be noted that it is apparent from well-established case-law that there is continuity in terms of their functions between the different units of EUIPO, on the one hand, and the Boards of Appeal, on the other. It follows from that functional continuity between the adjudicating bodies of EUIPO that, in the context of the review which the Boards of Appeal must undertake of the decisions taken by the units of EUIPO which heard the application at first instance, the Boards of Appeal are required to base their decisions on all the matters of fact and of law which the parties put forward, either in the proceedings before the department which heard the application at first instance or in the appeal. Thus, by virtue of the devolutive effect of appeal proceedings, the review by the Boards of Appeal requires a reappraisal of the dispute as a whole, and the Boards of Appeal must re-examine in full the initial application and take into account evidence produced in due time (see judgment of 23 October 2018, Mamas and Papas v EUIPO – Wall-Budden (Cot bumper), T‑672/17, not published, EU:T:2018:707, paragraph 39 and the case-law cited).

46      Consequently, in the present case, although it was not necessary for the Board of Appeal to undertake a new detailed analysis of each item of evidence, it was nevertheless required to base its conclusion concerning the inherent distinctive character of the contested mark on an overall assessment of that mark. The inevitable conclusion is that the Board of Appeal failed to carry out such an assessment.

47      Furthermore, contrary to what EUIPO contends, the case-law referred to in paragraph 26 above, according to which, when the Board of Appeal confirms a decision of the Cancellation Division in its entirety, and given the continuity in terms of function between the Cancellation Divisions and the Boards of Appeal, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the applicant and which enables the Courts of the European Union to carry out fully their review of legality, cannot be applied to the present case.

48      First, it is not apparent from the contested decision that the Board of Appeal referred to the Cancellation Division’s decision by adopting the reasoning of the latter decision concerning the overall assessment of the contested mark.

49      Second, while both the Cancellation Division and the Board of Appeal reached the conclusion that the contested mark was devoid of inherent distinctive character, those two adjudicating bodies gave different reasons for their respective decisions. The Cancellation Division took the view that (i) it was apparent from the evidence submitted by the parties that colours in general and their combination were a customary characteristic of inhalers even before the applicant filed its application for registration of the contested mark, (ii) it had not been sufficiently demonstrated that colours indicated a characteristic of the goods at issue and (iii) therefore, the combination of the shades of purple used for the inhaler shape was perceived by the relevant public as being a common and customary element of the goods and not as an indication of origin. On the contrary, the Board of Appeal found that it was apparent from the evidence submitted that colour had a technical and informative function.

50      It follows that the Board of Appeal was bound to carry out an overall assessment of the inherent distinctive character of the contested mark after having examined the distinctive character of the various elements of the composite mark.

51      In the light of the foregoing, the first plea must be upheld since the Board of Appeal found that the contested mark was devoid of inherent distinctive character without setting out the reasons why that mark, considered as a whole, was devoid of inherent distinctive character.

 Second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 40/94

52      The second plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94, is divided into three parts, the first of which alleges that the reasoning concerning the assessment of the distinctive character on the filing date of the application for registration of the contested mark is contradictory, the second, the absence of specific evidence capable of rebutting the presumption of legality and, the third, an error of assessment of the inherent distinctive character of that mark. It is appropriate to examine the first and second parts of that plea together.

53      The applicant claims, in essence, that all the reasoning of the contested decision is contradictory and that the applicant for a declaration of invalidity, on which the burden of proof lay, did not submit any evidence relating to the filing date of the application for registration of the contested mark. It is therefore wrong in fact and legally contradictory to consider that evidence dating from 2013 to 2015 concerned the situation on the relevant date in the present case.

54      According to the applicant, such a contradiction in reasoning amounts to a failure to state reasons justifying the annulment of the contested decision.

55      EUIPO acknowledges that there is a contradiction between, first, the Board of Appeal’s statement, in paragraph 46 of the contested decision, that the pharmaceutical sector ‘changes permanently’ and ‘[10] years or even longer periods are sufficiently long periods for changes in the perception of goods according to new trends and their constant evolution’ and, second, the Board of Appeal’s conclusion, in paragraph 63 of that decision, that ‘the principles established in [the judgment of 9 September 2020, Shade of the colour purple (T‑187/19, not published, EU:T:2020:405)] with respect to the purple colour for precisely the same market [2015] applies mutatis mutandis to the earlier date [2001]’.

56      However, EUIPO submits that it is apparent from the Board of Appeal’s reasoning that it considered that the evolution of consumers’ perception of colours used in relation to inhaler pharmaceuticals could not be that fast between 2001, the year in which the application for registration of the contested mark was filed, and 2015, in order for the principles deriving from the judgment of 9 September 2020, Shade of the colour purple (T‑187/19, not published, EU:T:2020:405) not to apply on the filing date of the application for registration of the contested mark.

57      Similarly, EUIPO maintains that the applicant for a declaration of invalidity submitted evidence, bearing a date postdating the filing of the application for registration of the contested mark, showing that colours had a technical and informative function for inhalers and that the Board of Appeal considered that that conclusion could be extrapolated to the filing date of the application for registration of the contested mark. According to EUIPO, if consumers were, at a certain point, accustomed to perceiving colours as having a technical or informative function on inhalers, it was unlikely that the same would not also apply to a point in time which is 10 or 15 years earlier.

58      As a preliminary point, it should be noted, first, that the purpose of invalidity proceedings 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 during the registration procedure (see, to that effect, judgment of 30 May 2013, ultra air v OHIM – Donaldson Filtration Deutschland (ultrafilter international), T‑396/11, EU:T:2013:284, paragraph 20). Accordingly, the registration of a trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings (judgment of 19 May 2010, Ravensburger v OHIM – Educa Borras (Memory), T‑108/09, not published, EU:T:2010:213, paragraph 25).

59      Under Article 95(1) of Regulation 2017/1001, in invalidity proceedings pursuant to Article 59 of that regulation, EUIPO is to limit its examination to the grounds and arguments submitted by the parties. In addition, under Article 27(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), in inter partes proceedings, the examination of the appeal is to be restricted to the grounds invoked in the statement of grounds and, as the case may be, in the cross appeal. Matters of law not raised by the parties shall be examined by the Board of Appeal only where they concern essential procedural requirements or where it is necessary to resolve them in order to ensure a correct application of Regulation 2017/1001 having regard to the facts, evidence and arguments presented by the parties.

60      According to settled case-law, in invalidity proceedings, as the registered European Union trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (see judgment of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a brown and beige chequerboard pattern), T‑359/12, EU:T:2015:215, paragraph 61 and the case-law cited).

61      Second, as stated in paragraph 36 above, the statement of reasons required by the second paragraph of Article 296 TFEU and Article 41(2)(c) of the Charter of Fundamental Rights, read in conjunction with the first sentence of Article 94(1) of Regulation 2017/1001, must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review.

62      In the present case, the relevant date for the purposes of the examination of the application for a declaration of invalidity is the filing date of the application for registration, namely 12 April 2001.

63      It is apparent from the contested decision that, in the analysis of the inherent distinctive character of the contested mark, the Board of Appeal found, first, that the applicant for a declaration of invalidity had not demonstrated that the contested mark was devoid of distinctive character on the relevant date.

64      However, subsequently and on the basis of the same evidence submitted by the applicant for a declaration of invalidity, the Board of Appeal came to the opposite conclusion, namely that colours had, as far as concerns medicinal products for the treatment of asthma, a technical and informative function for consumers since they ‘show a certain reference’ to the active ingredients, their purpose and the characteristics of the medicinal product. The Board of Appeal found that such use of colours was descriptive.

65      When questioned at the hearing on that apparent contradiction between the grounds of the contested decision, EUIPO merely claimed that the technical or informative function of colours was apparent not only from the evidence examined by the Board of Appeal in paragraphs 52 to 56 of that decision, but also from the documents examined by the Cancellation Division in its decision, to which reference was made in paragraph 49 of the contested decision.

66      In that regard, it should be noted that, in paragraph 49 of the contested decision, the Board of Appeal merely stated that the discussion before the Cancellation Division also concerned the relevant public’s understanding of the colours used as defined in the description of the contested mark, focusing on whether, on the filing date of the application for registration of that mark, colours had a specific meaning with respect to the inhalers at issue. It must be borne in mind that, contrary to what EUIPO contends, the Cancellation Division found that it had not been sufficiently demonstrated that the colours indicated a characteristic of the goods at issue.

67      Regardless of the fact that in the judgment of 9 September 2020, Shade of the colour purple (T‑187/19, not published, EU:T:2020:405), the relevant date for assessing the distinctive character of the sign at issue, namely a colour per se, was 24 September 2015, that is to say almost 14 years after the relevant date in the present case, the Board of Appeal nevertheless found, in paragraph 58 of the contested decision, that its findings relating to the descriptive character of the use of colours for medicinal products for the treatment of asthma were confirmed by that judgment.

68      That assessment by the Board of Appeal appears to run counter to paragraph 46 of the contested decision, in which it was held that (i) the pharmaceutical industry was developing constantly, (ii) 10-year periods or even longer periods were sufficiently long periods for the perception of the goods to have changed according to new trends and their constant evolution and (iii) that situation gave rise to uncertainty which made it difficult to establish the validity of the information back in time. While the Board of Appeal also found that a different assessment could be justified if there was evidence bearing a date subsequent to, but close to, the relevant date, it did not, however, identify and examine that evidence.

69      Furthermore, contrary to EUIPO’s submissions, the contested decision does not make it possible to understand why the principles inferred by the Board of Appeal from the judgment of 9 September 2020, Shade of the colour purple (T‑187/19, not published, EU:T:2020:405) were applicable to the contested mark and at the relevant date in the present case.

70      In those circumstances, it must be held that the contested decision is vitiated by contradictory reasoning. Such a contradiction amounts to a failure to state reasons, since it is impossible for the parties and the Courts of the European Union to determine whether, in the Board of Appeal’s analysis relating to the distinctive character of the contested mark, documents postdating the relevant date by at least 10 years could demonstrate the perception of a certain colour by the consumer on that date and, therefore, whether the applicant for a declaration of invalidity had sufficiently demonstrated that the contested mark was devoid of distinctive character on that date.

71      In view of those considerations, the first and second parts of the second plea must be upheld and it must be held that the Board of Appeal failed to fulfil its obligation to state reasons on account of contradictory reasoning in the contested decision.

72      In the light of all of the foregoing considerations, the first plea and the first and second parts of the second plea must be held to be well founded and, therefore, without it being necessary to examine the third part of the second plea, the form of order sought by the applicant must be granted by annulling the contested decision.

 Costs

73      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.

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

75      In addition, the applicant has applied for EUIPO to be ordered to pay the costs it incurred before the Board of Appeal. In that regard, it must be recalled that under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Consequently, EUIPO must also be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 May 2021 (Case R 1835/2016-1);

2.      Orders EUIPO to pay the costs, including those incurred for the purposes of the proceedings before the Board of Appeal.

Delivered in open court in Luxembourg on 24 May 2023.

*      Language of the case: English.

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