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

JUDGMENT OF THE GENERAL COURT (First Chamber)

22 March 2023 (*)

(EU trade mark – Invalidity proceedings – EU word mark BIO-BEAUTÉ – Absolute grounds for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) – No distinctive character – Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) – Distinctive character acquired through use – Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001) – Article 52(1)(a) and (2) of Regulation No 207/2009 (now Article 59(1)(a) and (2) of Regulation 2017/1001) – Obligation to state reasons – Article 75, first sentence of Regulation No 207/2009 (now Article 94(1), first sentence of Regulation 2017/1001))

In Case T‑750/21,

Beauty Biosciences LLC, established in Dallas, Texas (United States), represented by D. Mărginean, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaitė-Orlovskienė and R. Raponi, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Société de Recherche Cosmétique SARL, established in Luxembourg (Luxembourg), represented by P. Wilhelm, lawyer,

THE GENERAL COURT (First Chamber),

composed of D. Spielmann, President, R. Mastroianni (Rapporteur) and I. Gâlea, Judges,

Registrar: E. Coulon,

having regard to the written part of the procedure, in particular the measure of organisation of procedure of 10 November 2022 and the replies of the parties lodged at the Court Registry on 23 and 24 November 2022,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Beauty Biosciences LLC, seeks the annulment and the alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 September 2021 (Joined Cases R 1871/2020-4 and R 1891/2020-4) (‘the contested decision’).

 Background to the dispute

2        On 2 August 2019, the applicant filed with EUIPO an application for a declaration of invalidity in respect of the EU trade mark which had been registered following an application filed on 26 December 2014 in respect of the word sign BIO‑BEAUTÉ.

3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 3 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 3: ‘Dentifrices; cosmetics; perfumes, toilet water, eau de Cologne, body deodorants; essential oils; extracts of plant for cosmetic purposes; soaps, cleansing milk; cosmetic creams, gels, milks, lotions, masks, pomades, powders, serums and preparations for skin care; anti-wrinkle preparations; cosmetic preparations for lip care; sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); cosmetic preparations for slimming purposes; depilatories; hair products (hair and scalp care preparations); baths (cosmetic preparations for -); make-up and make up removing preparations; Preparations for shaving and after-shave preparations; tissues and wipes impregnated with cosmetic lotions; cotton wool for cosmetic purposes, cotton sticks for cosmetic purposes, round pads for removing make-up; incense, perfume water’;

–        Class 10: ‘Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles, artificial limbs, artificial implants; suture materials; support clothing for medical purposes’.

4        The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 59(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), read in conjunction with Article 7(1)(b) and (c) and (2) of that regulation.

5        On 28 July 2020, the Cancellation Division partially upheld the application for a declaration of invalidity in respect of the goods in Class 3, with the exception of ‘perfumes, toilet water, eau de Cologne; incense, perfume water’. The registration of the contested mark was maintained in respect of those goods and those in Class 10.

6        On 22 September 2020, the intervener filed a notice of appeal, pursuant to Articles 66 to 71 of Regulation 2017/1001, with EUIPO against the decision of the Cancellation Division in so far as that division had partially upheld the application for a declaration of invalidity.

7        On 25 September 2020, the applicant filed a notice of appeal, pursuant to Articles 66 to 71 of Regulation 2017/1001, with EUIPO against the decision of the Cancellation Division in so far as the application for a declaration of invalidity had been rejected in respect of ‘perfumes, toilet water, eau de Cologne; incense, perfume water’ in Class 3.

8        By the contested decision, the Board of Appeal dismissed the applicant’s appeal, on the one hand, and partially upheld the intervener’s appeal, on the other hand. First, it found that the relevant public consisted of the French-speaking general public in France, Belgium and Luxembourg, the level of attention of which was average. Secondly, it pointed out that the combination of the words ‘bio’ and ‘beauté’ in the contested mark with regard to products that were intended to improve a person’s appearance was perceived as providing information regarding the products, namely that they were manufactured organically, in a natural way, from natural materials, under conditions which respected nature and the environment. Consequently, according to the Board of Appeal, the sign was and had been, at the time when the application for registration of the contested mark was filed, descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001 with regard to some of the goods, namely the so-called ‘beauty’ products, in Class 3, in that it designates one of the characteristics, namely that they serve to enhance beauty in a natural, ecological way. Thirdly, the Board of Appeal found that, apart from its descriptiveness, the contested mark had a promotional connotation, resulting in a lack of inherent distinctiveness for the purposes of Article 7(1)(b) of Regulation 2017/1001. Fourthly, as regards the goods ‘Dentifrices, perfumes, toilet water, eau the Cologne; essential oils; incense, perfume water’ in Class 3, the Board of Appeal found that the contested mark was not descriptive of those goods since their purpose was to clean the teeth or to give a pleasant and desirable scent and not to beautify a person’s visual appearance. Fifthly, it pointed out that the contested mark had acquired distinctive character through use in respect of most of the goods in Class 3 with regard to which the contested mark had been identified as being descriptive and non-distinctive. In that regard, it found that the evidence submitted by the intervener, in the context of the appeal before EUIPO, showed continuous use of the mark between 2008 and 2018 in France, Belgium and Luxembourg for numerous beauty products. Lastly, the Board of Appeal added that the additional wording ‘by nuxe’, which accompanied the contested mark, was merely an indication that the goods covered by the mark BIO-BEAUTÉ were marketed by Nuxe, which did not prevent the contested sign from being recognised as a trade mark.

 Forms of order sought

9        The applicant claims, in essence, that the Court should:

–        partially annul the contested decision;

–        alter the contested decision as regards ‘dentifrices; essential oils; perfumes, toilet water, eau de Cologne; incense; perfume water’;

–        alter the contested decision as regards ‘cosmetics; body deodorants; extracts of plant for cosmetic purposes; soaps, cleansing milk; cosmetic creams, gels, milks, lotions, masks, pomades, powders, serums and preparations for skin care; anti-wrinkle preparations; cosmetic preparations for lip care; sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); cosmetic preparations for slimming purposes; depilatories; hair products (hair and scalp care preparations); baths (cosmetic preparations for -); make-up and make up removing preparations; preparations for shaving and after-shave preparations’;

–        order the intervener to pay the costs, including those incurred before the Board of Appeal and the Cancellation Division.

10      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

11      It should be noted at the outset that, given the date on which the application for registration at issue was filed, namely 26 December 2014, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (see, to that effect, 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).

12      Consequently, in the present case, so far as concerns the substantive rules, the references to the provisions of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring to the substantively identical provisions of Regulation No 207/2009.

13      In support of its action, the applicant relies on three pleas in law. The first plea alleges, in essence, first, insufficient reasoning arising from a contradiction in the contested decision and, secondly, infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) of that regulation, in that the Board of Appeal found that the contested mark was not descriptive with regard to the goods ‘Dentifrices; essential oils; perfumes, toilet water, eau de Cologne; incense, perfume water’ in Class 3. The second plea alleges infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) of that regulation, in that the Board of Appeal erred in finding that the contested mark was not devoid of any distinctive character with regard to those goods. Lastly, the third plea alleges infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 52(2) and Article 7(3) of that regulation, in that the Board of Appeal erred in finding that the contested mark had acquired, through use, distinctive character with regard to certain goods in Class 3.

14      The Court considers it appropriate, first of all, to deal with the first part of the first plea, alleging a lack of reasoning arising from a contradiction in the contested decision.

 The first part of the first plea, alleging a lack of reasoning arising from a contradiction in the contested decision

15      The applicant submits that the contested decision is based on contradictory reasoning. It argues that the Board of Appeal found that the contested mark was registrable for some of the goods, namely ‘perfumes, toilet water, eau de Cologne; essential oils; incense, perfume water’ and ‘dentifrices’, the purpose of which was not only to beautify, but also to clean or maintain hygiene. It contends that, by contrast, the Board of Appeal found that the contested mark was descriptive with regard to ‘body deodorants’, which are, however, like ‘perfumes’, used to mask body odour, and with regard to ‘make up removing preparations’ and ‘soaps’, the purpose of which is cleaning in the same way as it is the purpose of ‘dentifrices’. It submits that the fact that the Board of Appeal thus divided two purposes, namely cleaning and beautifying, is artificial and leads to contradictory reasoning.

16      In reply to a measure of organisation of procedure of the Court relating to the existence of a contradiction in the reasoning in the contested decision as regards the examination of whether the mark BIO-BEAUTÉ was descriptive with regard to certain goods in Class 3, EUIPO submits that the reasoning in the contested decision does not contain any contradictions. According to EUIPO, even though the purpose of cleaning is the same with regard to ‘make up removing preparations’ and ‘soaps’, on the one hand, and ‘dentifrices’, on the other hand, the fact remains that the mark is descriptive with regard to the former, which are connected, because they are ‘cosmetics’ (‘soaps’ being capable of including ‘shaving soaps’, ‘beard soaps’ and ‘make-up removal soaps’), which is not the case with regard to ‘dentifrices’. Furthermore, it disputes that the sole purpose of ‘body deodorants’, like ‘perfumes’, is that of preventing or masking body odour, since ‘body deodorants’ also serve to prevent sweating by keeping the armpits dry, whereas it submits that the function of ‘perfumes’ is to enhance the scent of the person who uses them.

17      In reply to that measure of organisation of procedure, the intervener submits, in essence, that there are no contradictions in the reasoning in the contested decision and that that reasoning shows that the Board of Appeal wished to adopt a specific assessment, and not a general one, as regards the nature and characteristics of the goods in question.

18      The first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94(1) of Regulation 2017/1001) provides that decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons 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, first, the persons concerned to exercise effectively their right to request judicial review of the contested decision and, secondly, the Courts of the European Union to exercise their power to review the legality of the decision. However, in stating the reasons for the decisions which they are called on to make, the Boards of Appeal are not obliged to take a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 21 February 2018, Laboratoire Nuxe v EUIPO – Camille and Tariot (NYouX), T‑179/17, not published, EU:T:2018:89, paragraph 20 and the case-law cited).

19      Next, it must be borne in mind that the statement of reasons for a decision must be logical and, in particular, contain no internal inconsistency that would prevent a proper understanding of the reasons underlying that decision (see judgment of 21 February 2018, NYouX, T‑179/17, not published, EU:T:2018:89, paragraph 21 and the case-law cited).

20      In the present case, the Board of Appeal, first of all, found that the contested mark consisted of two words, namely ‘bio’ and ‘beauté’, separated by a hyphen. It found, in paragraph 49 of the contested decision, that, used in relation to body care, cleansing and beauty products, the contested mark, taken as a whole, was perceived as providing information that those products were manufactured organically, in a natural way, from natural materials, under conditions which respected nature and the environment. Furthermore, it took the view, in paragraph 50 of the contested decision, that the contested mark was descriptive of ‘beauty products’, which could also be considered to be ‘cosmetics’. It added, in paragraph 51 of the contested decision, that the English word ‘cosmetic’ was translated as ‘cosmétique, produit de beauté’ [‘cosmetic, beauty product’] and that the word ‘cosmétique’ was defined by the Larousse dictionary as ‘toute préparation non médicamenteuse destinée aux soins du corps, à la toilette, à la beauté’, in English ‘any non-medicated preparation intended for body care, cleansing and beauty’.

21      Next, the Board of Appeal found, in paragraph 52 of the contested decision, that the contested mark was descriptive with regards to certain goods in Class 3, and in particular with regard to ‘body deodorants’, ‘soaps’, ‘make up removing preparations’, ‘cotton wool for cosmetic purposes’, ‘cotton sticks for cosmetic purposes’ and ‘round pads for removing make-up’.

22      However, in paragraph 53 of the contested decision, the Board of Appeal, in examining whether the contested mark was descriptive in relation to other goods in Class 3, namely ‘perfumes, toilet water, eau de Cologne; essential oils; incense, perfume water’ and ‘dentifrices’, deduced that, with regard to those goods, the contested mark was not descriptive, since they were meant, not to beautify, but, on the one hand, to give a pleasant and desirable scent to a person’s body or to his or her living environment and, on the other hand, to clean the teeth in order to maintain oral hygiene.

23      It must be held that that assessment on the part of the Board of Appeal is based on contradictory reasoning.

24      The Board of Appeal found, in paragraph 53 of the contested decision, that the goods in Class 3, which have been referred to in paragraph 22 above, with regard to which it did not acknowledge that the contested mark was descriptive, were meant ‘to give a pleasant and desirable scent, be it to a person’s body or to one’s living environment [or to] clean the teeth in order to maintain oral hygiene’. However, such a purpose does not, in essence, differ from that of the goods which have been referred to in paragraph 21 above, such as the ‘body deodorants’, ‘soaps’ or ‘make up removing preparations’, with regard to which it, by contrast, found that the contested mark was descriptive.

25      Furthermore, it must also be pointed out that that same paragraph of the contested decision, in so far as it is based on the purpose of the goods which have been referred to in paragraph 22 above, without, however, making a distinction between them, does not make it possible to understand in what way the contested mark is not descriptive with regard to each product.

26      Thus, on account of such contradictions in its reasoning, the contested decision does not make it possible to understand why the Board of Appeal assessed whether the contested mark was descriptive in a different way with regard to ‘body deodorants’, ‘soaps’, ‘make up removing preparations’, ‘cotton wool for cosmetic purposes’, ‘cotton sticks for cosmetic purposes’ and ‘round pads for removing make-up’ in Class 3, which were considered to be beauty products, on the one hand, and the goods ‘perfumes, toilet water, eau de Cologne; essential oils; incense, perfume water’ and ‘dentifrices’ in the same class, on the other hand.

27      Consequently, the contested decision must be annulled as regards ‘perfumes, toilet water, eau de Cologne; essential oils; incense, perfume water’ and ‘dentifrices’ on account of insufficient reasoning arising from a contradiction in the contested decision, without it be necessary to examine the second part of the first plea or the second plea.

28      By contrast, since the contested decision is being annulled only as regards ‘perfumes, toilet water, eau de Cologne; essential oils; incense, perfume water’ and ‘dentifrices’, it is necessary to examine the third plea.

29      As regards the applicant’s head of claim seeking the alteration of the contested decision as regards those goods, it must be borne in mind that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. The exercise of such a power must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).

30      In the present case, as is apparent from paragraph 27 above, since the Board of Appeal’s reasoning relating to ‘perfumes, toilet water, eau de Cologne; essential oils; incense, perfume water’ and ‘dentifrices’ is vitiated by a contradiction in the reasoning, the Court does not have available to it all the information in order to take the decision which the Board of Appeal should have taken (see, to that effect and by analogy, judgment of 23 September 2020, Polfarmex v EUIPO – Kaminski (SYRENA), T‑677/19, not published, EU:T:2020:424, paragraph 132). It follows that the conditions for alteration are not satisfied in the present case, with the result that the applicant’s request to that effect and consequently the second head of claim in the application must be rejected.

 The third plea, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 52(2) and Article 7(3) of that regulation

31      In the context of its third plea, the applicant submits that the Board of Appeal infringed Article 7(3) of Regulation No 207/2009 by erring in finding that the contested mark had acquired distinctive character through use in respect of the goods ‘cosmetics; body deodorants; extracts of plant for cosmetic purposes; soaps, cleansing milk; cosmetic creams, gels, milks, lotions, masks, pomades, powders, serums and preparations for skin care; anti-wrinkle preparations; cosmetic preparations for lip care; sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); cosmetic preparations for slimming purposes; depilatories; hair products (hair and scalp care preparations); baths (cosmetic preparations for -); make-up and make up removing preparations; preparations for shaving and after-shave preparations’ in Class 3.

32      In that regard, first of all, the applicant submits that the Board of Appeal did not take account of all the relevant territories in which the acquisition of distinctive character through use had to be proved, in so far as it did not take into account the Italian region of the Aosta Valley in which French is a minority language. Next, the applicant contends that, in spite of the copious evidence which the intervener submitted in order to prove that the contested mark had acquired distinctiveness through use since its registration, that evidence, first, does not refer to the relevant EU territories and, secondly, does not have sufficient or does not have any probative value at all. Lastly, the applicant submits that the intervener has not established that the sign BIO-BEAUTÉ was able, on its own, and not together with the additional wording ‘by nuxe’, to identify the particular undertaking from which the goods in question originated.

33      First, EUIPO submits that the Board of Appeal was right in finding that, since the lack of distinctiveness was confirmed on the basis of the perception of the French-speaking public in France, Belgium and Luxembourg, those are the territories which must be taken into consideration in order to analyse whether the contested mark had acquired any distinctiveness. Furthermore, the intervener contends that, for the purposes of the case-law, it was required to prove that at least a significant proportion of the French-speaking public identifies the goods in question as originating from a particular undertaking because of the mark BIO-BEAUTÉ.

34      Secondly, EUIPO and the intervener submit that, in the light of the entire body of evidence, the Board of Appeal was rightly able to conclude that the contested mark had acquired distinctiveness in relation to the goods at issue in that the evidence provided by the intervener was sufficient to show a long-term, high intensity of use of the contested mark in the relevant territories.

35      Thirdly, EUIPO and the intervener claim that the contested mark is displayed in a prominent way in comparison with the additional wording ‘by nuxe’. They submit that, consequently, owing to its position and size, the contested mark occupies a clearly dominant position, which makes it possible to conclude that it will not go unnoticed by the relevant public when it is read in conjunction with that additional wording. Furthermore, EUIPO contends that the element ‘by nuxe’ is insignificant with regard to the contested mark, which is a complex mark and which, with that addition, will be perceived as a variation which is broadly equivalent to the contested mark.

36      Under Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude the registration of a trade mark if that 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.

37      In that regard, it must be pointed out, in the first place, that for a mark to have acquired distinctiveness through use, it is necessary that at least a significant proportion of the relevant public, by virtue of that mark, identifies the goods or services concerned as originating from a particular undertaking. That identification must be as a result of the use of the sign as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the goods or services concerned from those of other undertakings (see judgment of 29 September 2010, CNH Global v OHIM (Combination of the colours red, black and grey for a tractor), T‑378/07, EU:T:2010:413, paragraphs 28 and 29 and the case-law cited; see also, by analogy, judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraphs 26 and 29).

38      In the second place, for a trade mark to be registrable on the basis of Article 7(3) of Regulation No 207/2009, the distinctive character acquired through use of that mark must be demonstrated in the part of the European Union in which it did not have such character for the purposes of Article 7(1)(b) to (d) of that regulation (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).

39      In the third place, the mark must have become distinctive through use before the application was filed (see judgment of 29 September 2010, Combination of the colours red, black and grey for a tractor, T‑378/07, EU:T:2010:413, paragraph 34 and the case-law cited).

40      In the fourth place, it must be pointed out that it is apparent from the case-law that, in determining whether the sign in question has acquired distinctive character in consequence of the use which has been made of it, an overall assessment must be made of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. For the purposes of that assessment, account may be taken of, inter alia: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons which, because of the mark, identifies the goods or services concerned as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 29 September 2010, Combination of the colours red, black and grey for a tractor, T‑378/07, EU:T:2010:413, paragraphs 31 and 32 and the case-law cited).

41      Furthermore, in order to assess whether a mark has acquired distinctive character through use, all the circumstances in which the relevant public may see that mark must also be borne in mind. That means not only when the decision to purchase is made but also before that point, for example as a result of advertising, and when the product is consumed (judgment of 22 June 2006, Storck v OHIM, C‑24/05 P, EU:C:2006:421, paragraph 71).

42      In the fifth place, the distinctive character of a sign, including that acquired through use, must be assessed in relation, first, to the goods or services in respect of which registration of the mark is applied for and, secondly, to the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect (see judgment of 28 October 2009, BCS v OHIM – Deere (Combination of the colours green and yellow), T‑137/08, EU:T:2009:417, paragraph 29 and the case-law cited).

43      Lastly, it must be borne in mind that that the burden of proof of distinctive character acquired through use, pursuant to Article 52(2) of Regulation No 207/2009 and Article 7(3) of that regulation, lies with the proprietor of the mark at issue (see, to that effect, judgment of 4 April 2019, Stada Arzneimittel v EUIPO (Representation of two opposing arches), T‑804/17, not published, EU:T:2019:218, paragraph 49 and the case-law cited).

44      It is in the light of those considerations that it must be examined whether the Board of Appeal erred in finding that the contested mark could be registered under Article 7(3) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation.

45      In the present case, the Board of Appeal found that the evidence which the intervener had submitted before the adjudicating bodies of EUIPO was sufficient and proved that the contested mark had acquired distinctive character through use in respect of certain goods in Class 3, namely ‘cosmetics; body deodorants; extracts of plant for cosmetic purposes; soaps, cleansing milk; cosmetic creams, gels, milks, lotions, masks, pomades, powders, serums and preparations for skin care; anti-wrinkle preparations; cosmetic preparations for lip care; sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); cosmetic preparations for slimming purposes; depilatories; hair products (hair and scalp care preparations); baths (cosmetic preparations for -); make-up and make up removing preparations; preparations for shaving and after-shave preparations’, in the French and Luxembourgish territories and in part of the Belgian territory.

46      In particular, it must be pointed out that the Board of Appeal relied, in order to establish that the contested mark had acquired such distinctive character, on the following evidence, which the intervener had submitted in the course of the proceedings before EUIPO:

–        awards given to certain goods bearing the mark NUXE and awards given to goods bearing the mark BIO-BEAUTÉ in France between 2008 and 2014 and international awards given to goods bearing the mark BIO-BEAUTÉ between 2010 and 2017 (exhibits Nos 1, 5, 8 and 12);

–        the first registration of the trade mark BIO-BEAUTÉ dating from 1999 and BIO-BEAUTÉ trade mark filings since 2008 (exhibits Nos 2 and 3);

–        posters of product lines bearing the mark BIO-BEAUTÉ dating from 2017 (exhibit No 4);

–        extracts from a website concerning the history of the mark BIO-BEAUTÉ and the goods bearing that mark and archives of various websites relating to the mark BIO-BEAUTÉ concerning Portugal, Luxembourg, Hungary, Slovenia, the Netherlands, Croatia, Ireland, Malta, Italy, Austria, the United Kingdom, Greece and Latvia (exhibits Nos 7 and 10);

–        surveys regarding the use of the mark BIO-BEAUTÉ in the United Kingdom, Germany, Croatia, Estonia, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, the Netherlands, Poland, Portugal, Spain and Romania (exhibit No 9);

–        press articles dating from 2007 to 2018, which were published in Finland, Denmark, Sweden, Slovenia, Bulgaria, Spain, France and Belgium (exhibits Nos 11 and 18);

–        a social media report covering the period from 2011 to 2019 showing the number of publications in which goods bearing the mark BIO-BEAUTÉ appeared, and game contests on Facebook dating from 2016, 2017 and 218 (exhibits Nos 13 and 16);

–        a list of the most read magazines in France in 2019 and a ranking of women’s magazines with regard to the same year (exhibits Nos 14 and 15);

–        the various shops selling goods bearing the mark NUXE (exhibit No 17);

–        pictures of goods bearing the mark BIO-BEAUTÉ sold in Belgium and Luxembourg (exhibit No 20);

–        volumes of sales of goods bearing the mark BIO-BEAUTÉ in Belgium and Luxembourg in respect of the period from 2009 to 2019, media investments regarding goods bearing the mark BIO-BEAUTÉ in respect of the period from 2008 to 2017 and the values and volumes of goods bearing the mark BIO-BEAUTÉ which were sold between 2009 and 2017 in France (exhibits Nos 19, 21 and 22).

47      In the first place, as regards the definition of the relevant public and of its level of attention, it must be stated that the Board of Appeal found that the goods ‘cosmetics; body deodorants; extracts of plant for cosmetic purposes; soaps, cleansing milk; cosmetic creams, gels, milks, lotions, masks, pomades, powders, serums and preparations for skin care; anti-wrinkle preparations; cosmetic preparations for lip care; sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); cosmetic preparations for slimming purposes; depilatories; hair products (hair and scalp care preparations); baths (cosmetic preparations for -); make-up and make up removing preparations; preparations for shaving and after-shave preparations’ were aimed at the general public, the level of attention of which was average.

48      In the second place, as regards the applicant’s argument that, first, generally, the evidence submitted by the intervener showing that the contested mark had acquired distinctiveness through use since its registration did not refer to the relevant territories in the European Union, namely France, Belgium and Luxembourg, and, secondly, in particular, the Board of Appeal did not take into account the territory of the Italian region of the Aosta Valley in which the acquisition of distinctive character also had to be proved since French is a minority language there, it must be borne in mind that, in order for the registration of a trade mark to be accepted under Article 7(3) of Regulation No 207/2009, the distinctive character acquired through use of that trade mark must be demonstrated in the part of the European Union in which it did not, ab initio, have such character under Article 7(1)(b) to (d) of that regulation. The part of the European Union referred to in Article 7(2) of that regulation may comprise, where necessary, a single Member State (judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 83).

49      Furthermore, although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 207/2009, a mark that is, ab initio, devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must be capable of establishing such acquisition throughout the Member States of the European Union (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 83).

50      In the present case, it must be pointed out that the intervener submitted evidence with regard to the relevant territories, namely those of France, Belgium and Luxembourg, but also with regard to other Member States of the European Union, namely Portugal, Hungary, Slovenia, the Netherlands, Croatia, Ireland, Malta, Italy, Austria, Greece, Latvia, Germany, Estonia, Lithuania, Poland, Spain, Romania, Denmark, Sweden and Bulgaria, as is shown by exhibits Nos 7, 9, 10, 11 and 18, which were submitted by the intervener and have been described in paragraph 46 above. Consequently, it must be held that the evidence submitted was capable of establishing the acquisition of distinctive character through use throughout the Member States, for the purposes of the case-law cited in paragraph 49 above, without it being necessary to submit evidence with regard to the Italian region of the Aosta Valley.

51      In the third place, it is necessary to respond to the applicant’s argument that the intervener has not established that the sign BIO-BEAUTÉ was able, on its own, and not together with the additional wording ‘by nuxe’, to identify the particular undertaking from which the goods in question originated, since that makes it possible to define the subject matter of the evidence which the intervener had to adduce in order to prove that the contested mark had acquired distinctive character through use.

52      In that regard, it must be borne in mind that the acquisition of distinctive character may result both from the use, as part of a registered trade mark, of a component thereof and from the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceives the goods or services, designated exclusively by the contested mark, as originating from a particular undertaking (judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 49; see also, by analogy, judgment of 7 July 2005, Nestlé, C‑353/03, EU:C:2005:432, paragraph 30). Therefore, regardless of whether the sign is used as part of a registered trade mark or in conjunction with a registered trade mark, the fundamental condition is that, as a consequence of that use, the sign may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking (see, by analogy, judgment of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraph 65).

53      First, the Board of Appeal pointed out that exhibits Nos 2 and 3 showed that the trade mark BIO-BEAUTÉ had first been registered in France in 1999 and that exhibit No 7 showed that the specific goods sold under the contested mark dated from 2008 and were natural skin care products. Next, it added that certain items of evidence, namely exhibits Nos 4, 9, 11, 16, 18, 19, 20 and 22, showed continuous use of the mark in the period from 2008 to 2018 in France, Belgium and Luxembourg for a wide range of beauty products. Secondly, the Board of Appeal found that the extensive number of press articles as well as the examples of use in exhibits 11, 16, 18 and 20 showed that the contested mark was used and advertised in magazines, as was proved by exhibits Nos 14 and 15, in those countries. According to the Board of Appeal, that evidence showed that the contested mark was not used on the packaging of the products concerned or in the advertisements in a descriptive way and that, on the contrary, it was clear that the sign had been consistently used by the intervener since the beginning of 2008. Furthermore, the Board of Appeal stated that the contested mark was always used with the symbol ‘®’ and that it was always in much larger and striking letters than the expression ‘by nuxe’. It found that, consequently, that expression, as additional wording, would be perceived by the relevant public as an indication that the goods covered by the mark BIO-BEAUTÉ were marketed by Nuxe.

54      Thirdly, the Board of Appeal found that exhibits Nos 19, 21 and 22, in which the sales volumes and advertising figures for France, Belgium and Luxembourg in respect of the period from 2009 to 2019 were set out, confirmed that the mark had been used during all those years. In particular, the Board of Appeal found, relying on exhibit No 22, that, in France, the classification tables of selected organic cosmetic brands by the independent company IQVIA showed that, for all those years, the contested mark was in the top three of the most successful brands of organic cosmetics in terms of value or volume.

55      The applicant submits, first, that, as the registrations in exhibits Nos 2 and 3 were not obtained on the basis of acquired distinctiveness, the Board of Appeal should not have taken them into account in the context of its assessment of the evidence. Secondly, as regards the awards which were referred to in exhibits Nos 5 and 8, the applicant contends that what is involved here concerns lists, which were compiled by the intervener, of awards given to the goods covered by the mark BIO-BEAUTÉ accompanied by the expression ‘by nuxe’ and that their credibility and accuracy are questionable. Thirdly, as regards the press articles in exhibits Nos 11 and 18, the applicant claims that only part of those exhibits refers to Belgium and France and that it refers to advertising for products bearing the mark BIO-BEAUTÉ accompanied by the expression ‘by nuxe’. Fourthly, it states that the four game contests on Facebook which are referred to in exhibit No 16 were organised by Nuxe in 2016, 2017 and 2018 and were always for goods bearing the mark BIO-BEAUTÉ accompanied by the expression ‘by nuxe’.

56      Fifthly, according to the applicant, exhibit No 19 contains a chart relating to sales volumes in Luxembourg and Belgium between 2009 and 2019 which was drawn up by the intervener. In that regard, it submits that, within the meaning of the case-law, because that declaration was made by a person connected to the intervener through an employment relationship, it cannot, on its own, constitute sufficient evidence that the contested mark has acquired distinctive character through use and must be corroborated by other evidence. Sixthly, it observes that exhibit No 20 contains pictures of goods bearing the mark BIO-BEAUTÉ accompanied by the expression ‘by nuxe’ in Belgium and France, without it being possible to distinguish which were taken in one or other of the countries. The applicant adds that those pictures, on their own, are not sufficient to prove that the contested mark has acquired such distinctive character through use. Seventhly, as regards exhibit No 21, namely two tables setting out the amounts invested by the intervener in promoting the mark BIO-BEAUTÉ accompanied by the expression ‘by nuxe’, the applicant submits that that document is not official, that the figures are not broken down on a market-by-market basis and that the probative value of that document should therefore be considered to be very low. Eighthly, the applicant observes that the tables contained in exhibit No 22 were also compiled by the intervener on the basis of data which was allegedly provided by IQVIA but that there is no official document confirming that the information in those tables comes from IQVIA. Furthermore, the applicant submits that nothing in those tables indicates that the figures concern the French territory. Lastly, the applicant argues that the only evidence which actually refers to Luxembourg is exhibit No 10, which contains three screen captures of two Luxembourgish websites. In conclusion, the applicant contends that the evidence submitted by the intervener does not prove that the contested mark has acquired distinctive character through use, as those documents prove, at most, that there has been genuine use in the French, Belgian and Luxembourgish territories.

57      It is apparent from the case-law cited in paragraphs 40 and 41 above that an overall assessment of the evidence must be made. It is also apparent from that case-law that, in the context of that overall assessment, certain evidence is regarded as having greater evidential value than other evidence. In particular, sales figures and advertising material can be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by surveys or market research and by statements from trade and professional associations (see judgment of 7 December 2017, Colgate-Palmolive v EUIPO (360°), T‑332/16, not published, EU:T:2017:876, paragraph 46 and the case-law cited). In the present case, it must be held that the Board of Appeal carried out an overall assessment of the evidence within the meaning of the case-law cited above.

58      It must be stated that the intervener essentially submitted evidence which, for the purposes of the case-law cited in paragraph 40 above, is likely to have less evidential value than other evidence. First, as regards the first registration of the mark BIO-BEAUTÉ from 1999 the filings of that mark since 2008 (exhibits Nos 2 and 3) which the intervener submitted in order to show the how long-standing the use had been, the press articles (exhibits Nos 11 and 18) and all the documents which are capable of being regarded as promotional, namely the pictures of the goods concerned associated with the contested mark (exhibits Nos 4 and 20), the social media report (exhibit No 13), the game contests on Facebook (exhibit No 16) and the sales volumes (exhibit No 19), it must be stated that, for the purposes of the case-law which has been cited in paragraph 57 above, distinctive character acquired through use cannot be proved merely by the submission of sales volumes and advertising material. In particular, the advertising material can regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use. The advertising material as such does not show that the public targeted by the goods or services in question perceives the sign as an indication of commercial origin (judgments of 12 September 2007, Glaverbel v OHIM (Texture of a glass surface), T‑141/06, not published, EU:T:2007:273, paragraph 41, and of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 84).

59      However, it must also be stated that the intervener submitted evidence which, for the purposes of the case-law cited in paragraphs 40 and 57 above, serves, since it is regarded as direct evidence, to prove that that contested mark had acquired distinctive character through use. The intervener’s investments in the field of advertising (exhibit No 21), the values and volumes of sales of goods between 2009 and 2017 (exhibit No 22) and the surveys on the use of the mark BIO-BEAUTÉ (exhibit No 9) are sufficient for it to be held, in the present case, that the evidence submitted by the intervener, taken as a whole, is sufficient to prove that the contested mark had acquired distinctive character through use. Furthermore, it must be pointed out that the Board of Appeal was right in finding that that evidence also served to prove that the contested sign had been consistently used, in the relevant territories of the European Union, since 2008 and therefore to prove a certain duration of use for the purposes of the case-law.

60      Lastly, as regards the applicant’s argument that the intervener has not proved that the sign BIO-BEAUTÉ was able, on its own, and not together with the additional wording ‘by nuxe’, to identify the particular undertaking from which the goods at issue originated, it is necessary to bear in mind the case-law cited in paragraph 52 above, according to which, regardless of whether the sign is used as part of a registered trade mark or in conjunction with a registered trade mark, the fundamental condition is that, as a consequence of that use, the sign may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. In the present case, it must be held that the contested sign does indeed identify, in the minds of the relevant class of persons, the goods at issue as originating from a particular undertaking, namely Nuxe. It must be stated, as was observed by the Board of Appeal, that the contested sign is always used in direct combination with the symbol ‘®’ and is always presented in a much larger font than the expression ‘by nuxe’. Consequently, that expression appears merely as an indication that the goods at issue are marketed by the company Nuxe and does not in any way detract from the fact that BIO-BEAUTÉ is recognised as a trade mark which has acquired distinctiveness through the use which has been made of it.

61      It follows that the intervener has proved that the contested mark had acquired distinctive character throughout the European Union and that the Board of Appeal was right in finding that the contested mark had, for the purposes of Article 7(3) of Regulation No 207/2009, acquired distinctiveness in relation to the goods concerned in consequence of the use which had been made of it.

62      It is apparent from all of the foregoing that the third plea must be rejected as must, consequently, the applicant’s third head of claim requesting that the contested decision be altered with regard to the goods at issue in the context of that plea.

 Costs

63      Under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.

64      In the present case, the applicant, EUIPO and the intervener have, respectively, been unsuccessful on some heads, since the contested decision is being partially annulled. Consequently, each party must be ordered to bear its own costs.

65      Furthermore, the applicant has also claimed that the intervener should be ordered to reimburse to it the costs incurred before the Board of Appeal and the Cancellation Division. In that regard, it is clear from Article 190(2) of the Rules of Procedure that only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. By contrast, the costs incurred for the purposes of the proceedings before the Cancellation Division do not constitute recoverable costs, with the result that, to that extent, the applicant’s claim cannot succeed.

66      Consequently, first, the applicant’s claim must be rejected in so far as it requests that the intervener be ordered to pay the costs incurred before the Cancellation Division. Secondly, in so far as the applicant’s claim concerns the costs of the proceedings before the Board of Appeal, it will be for the Board of Appeal to rule, in the light of the present case, on the costs relating to those proceedings (see, to that effect, judgment of 8 May 2019, Inditex v EUIPO – Ffauf Italia (ZARA), T‑269/18, not published, EU:T:2019:306, paragraph 88 and the case-law cited).

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 September 2021 (Joined Cases R 1871/2020-4 and R 1891/2020-4) in so far as it concerns ‘perfumes, toilet water, eau de Cologne; essential oils; incense, perfume water’ and ‘dentifrices’;

2.      Dismisses the action as to the remainder;

3.      Orders each party to bear its own costs incurred in the course of the proceedings before the General Court.

Delivered in open court in Luxembourg on 22 March 2023.

*      Language of the case: English.

© European Union
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