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

JUDGMENT OF THE COURT (Sixth Chamber)

23 October 2024 (*)

( EU trade mark - Invalidity proceedings - Figurative mark FIZZ Cider - Absolute grounds for invalidity - Descriptive character - No distinctive character - Article 7(1)(b) and (c) and Article 51(1)(a) of Regulation (EC) No 40/94 (now Article 7(1)(b) and (c) and Article 59(1)(a) of Regulation (EU) 2017/1001) - Evidence submitted for the first time before the Board of Appeal - Article 95(2) of Regulation 2017/1001 - Article 27(4) of Delegated Regulation (EU) 2018/625 - Obligation to state reasons - Right to be heard - Article 94(1) of Regulation 2017/1001 )

In Case T-1132/23,

Olvi Oyj, established in Iisalmi (Finland), represented by K. Rantala, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent,

defendant,

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

Koninklijke De Kuyper BV, established in Schiedam (Netherlands),

THE GENERAL COURT (Sixth Chamber),

composed of: J. Costeira, President, U. Öberg and P. Zilgalvis (Rapporteur), Judges,

Registrar: V. Di Bucci,

having regard to the written part of the procedure,

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, Olvi Oyj, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 September 2023 (Case R 2011/2022-1) (‘the contested decision’).

 Background to the dispute

2        On 28 August 2020, the other party to the proceedings before the Board of Appeal, Koninklijke De Kuyper BV, filed with EUIPO an application for a declaration of invalidity of the EU trade mark that had been registered on 14 June 2000 following an application filed on 19 January 1999 in respect of the following figurative sign:

3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 32 and 33 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 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’;

-        Class 33: ‘Alcoholic beverages (except beers)’.

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), (c), (d) and (g) and Article 59(1)(b) of that regulation.

5        On 5 September 2022, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. In essence, it found, inter alia, that the contested mark had, at the time of filing, at least a sufficient degree of distinctive character to be registered.

6        On 17 October 2022, the other party before the Board of Appeal filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

7        By the contested decision, the Board of Appeal upheld the appeal, annulled the decision of the Cancellation Division and declared the contested mark invalid. In its view, the combination of the word elements ‘fizz’ and ‘cider’ would be understood by the relevant public as bearing a direct and immediate descriptive semantic content vis-à-vis all the contested goods, and the figurative elements of that sign are not sufficient to endow the contested mark with distinctive character. Similarly, the Board of Appeal found that the applicant had not demonstrated that the contested mark had acquired distinctive character through use.

 Forms of order sought

8        The applicant claims that the Court should:

-        annul the contested decision;

-        order EUIPO to pay the costs.

9        EUIPO contends that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs in the event that a hearing is convened.

 Law

 The determination of the applicable substantive law ratione temporis

10      Given the date on which the application for registration of the contested mark was filed, namely 19 January 1999, 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (see, to that effect, 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).

11      Therefore, so far as concerns the substantive rules, the references made by the Board of Appeal and by the parties to Article 59(1)(a) and Article 7(1)(b) and (c) of Regulation 2017/1001 must be understood as referring, respectively, to Article 51(1)(a) and Article 7(1)(b) and (c) of Regulation No 40/94, which are identical in terms of their wording.

12      Accordingly, 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). Consequently, in so far as the application for a declaration of invalidity was filed on 28 August 2020 and the present action was brought on 17 October 2022, the present dispute is governed by the procedural provisions of Regulation 2017/1001 and by those 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).

 Substance

13      The applicant relies on three pleas in law, alleging (i) infringement of Article 95(2) of Regulation 2017/1001, read in conjunction with Article 27(4) of Delegated Regulation 2018/625, (ii) infringement of Article 94(1) and Article 95(1) of Regulation 2017/1001, read in conjunction with Article 70(2) of that regulation, and (iii) infringement of Article 7(1)(b) and (c) of Regulation No 40/94.

 The first plea in law, alleging infringement of Article 95(2) of Regulation 2017/1001 and Article 27(4) of Delegated Regulation 2018/625

14      By its first plea, the applicant disputes the admissibility of the evidence adduced at the appeal stage by the other party to the proceedings before the Board of Appeal. It submits, in particular, that that evidence already existed at the stage of the proceedings before the Cancellation Division and that there is no justification for accepting it at a late stage in the proceedings, particularly since it artificially expands the scope of the arguments of the applicant for a declaration of invalidity. It adds that, in the absence of an international crisis or other analogous cases of force majeure, the acceptance of that evidence constitutes a procedural irregularity capable of rendering the contested decision unlawful.

15      EUIPO disputes the applicant’s arguments.

16      Under Article 95(2) of Regulation 2017/1001, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

17      It follows from the wording of Article 95(2) of Regulation 2017/1001 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation 2017/1001 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see judgment of 1 February 2023, Brobet v EUIPO - Efbet Partners (efbet), T-772/21, not published, EU:T:2023:36, paragraph 38 and the case-law cited).

18      However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence which were invoked or submitted out of time taken into account by EUIPO. In stating that EUIPO ‘may’ decide to disregard such evidence, that provision grants the latter a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (see judgment of 1 February 2023, efbet, T-772/21, not published, EU:T:2023:36, paragraph 39 and the case-law cited).

19      Consequently, the taking into account of that additional evidence is in no way a ‘favour’ granted to one party or the other, but rather must result from an objective, reasoned exercise of the discretion conferred on EUIPO by Article 95(2) of Regulation 2017/1001 (see judgment of 24 January 2018, EUIPO v European Food, C-634/16 P, EU:C:2018:30, paragraph 58 and the case-law cited).

20      As regards the exercise by the Board of Appeal of its discretion as to whether to take into account facts or evidence submitted for the first time before it, it is apparent from Article 27(4) of Delegated Regulation 2018/625 that, in accordance with Article 95(2) of Regulation 2017/1001, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:

(a)      they are, on the face of it, likely to be relevant for the outcome of the case;

(b)      they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.

21      In the present case, the Board of Appeal considered that the evidence concerning the alleged meaning of the words ‘fizz’ and ‘fizzy’ in English and the relevant public’s understanding of them, submitted for the first time before the Board of Appeal, met the requirements of Article 95(2) of Regulation 2017/1001 and Article 27(4) of Delegated Regulation 2018/625 and that, accordingly, that evidence could be taken into account. It noted, in particular, that that evidence had been adduced to contest findings made in the decision of the Cancellation Division. By contrast, it rejected as inadmissible the evidence relating to the meaning of those words in other languages, noting that no argument or evidence in that regard had been submitted at first instance and that the other party to the proceedings before the Board of Appeal provided no reasons for not producing such evidence in due time.

22      As regards the evidence whose admissibility is challenged by the applicant in the present case, it comprises, as is clear from its description in paragraph 14 of the contested decision, entries in European dictionaries referring to the meaning of the English terms ‘fizz’ and ‘fizzy’, extracts from websites and press articles on the current use of the term ‘fizz’ in the field of alcoholic beverages and studies relating to the level of knowledge of English and its widespread use within the European Union.

23      In that regard, first, it must be noted, as is apparent in particular from paragraph 4 of the contested decision, that the other party to the proceedings before the Board of Appeal, in order to support its arguments that the terms ‘fizz’ and ‘fizzy’ were descriptive of the goods concerned, had produced, as an annex to its application for a declaration of invalidity, an extract from the New Oxford American Dictionary concerning the term ‘fizzy’ and an extract from Wikipedia concerning the meaning of the term ‘fizz’.

24      Secondly, the Cancellation Division, as is apparent from paragraph 13 of the contested decision, called into question the relevance of the abovementioned American dictionary in the context of a dispute within the European Union and, moreover, found that no concrete evidence had been submitted to support the assertion that the relevant public in the European Union would understand the term ‘fizz’ as merely describing that the goods in question were related to fizzy drinks.

25      In those circumstances, it must be held that the contested evidence is relevant for the outcome of the case, since it relates to the meaning of the word elements of the contested mark and their perception by the relevant public, which are essential elements when examining the grounds of absolute invalidity relied on in the present case. Similarly, it must be noted that that evidence supplements facts and evidence which had already been submitted in due time and that it was submitted in order to contest findings made by the Cancellation Division. As is clear from the file (see paragraphs 23 and 24 above), the other party to the proceedings before the Board of Appeal had already submitted evidence regarding the meaning of the term ‘fizz’ before the Cancellation Division and the latter found, in essence, that that evidence was not sufficient to establish the descriptive meaning of that term.

26      It follows that the Board of Appeal did not make an error of assessment in concluding that the evidence described in paragraph 22 above satisfied the conditions of Article 27(4) of Delegated Regulation 2018/625 and could be taken into account.

27      In addition, the applicant submits that the evidence adduced before the Board of Appeal already existed at the stage of the proceedings before the Cancellation Division and that there was no justification for accepting it at a late stage in the proceedings. It refers in particular to the absence of an international crisis or any other case of force majeure.

28      In that regard, it must be recalled that it is true that it is for the party submitting facts and evidence for the first time before the Board of Appeal to explain before it to what extent that submission satisfies the conditions laid down in Article 27(4) of Delegated Regulation 2018/625 (see judgment of 1 February 2023, efbet, T-772/21, not published, EU:T:2023:36, paragraph 43 and the case-law cited). However, that provision does not require the party submitting such evidence to show that it was impossible to submit it at an earlier stage, including the existence of an international crisis or other case of force majeure. Moreover, as is clear from paragraph 25 above, the applicant has demonstrated the existence of a valid reason within the meaning of Article 27(4) of Delegated Regulation 2018/625 for the submission of that evidence at the appeal stage.

29      The first plea must therefore be rejected.

 The second plea in law, alleging infringement of Article 94(1) and Article 95(1) of Regulation 2017/1001, read in conjunction with Article 70(2) of that regulation

30      The applicant alleges failure to observe the principle of audi alteram partem and infringement of its rights of defence in that the Board of Appeal did not invite it to submit observations on the new evidence adduced at the appeal stage by the other party to the proceedings before the Board of Appeal, that is to say the evidence relating to the meaning of the terms ‘fizz’ and ‘fizzy’ in English and to the understanding of those terms by the relevant public. It submits that, on account of that failure and that infringement, the contested decision must be revoked pursuant to Article 103(1) of Regulation 2017/1001. Similarly, the applicant submits that the Board of Appeal failed to give reasons for its decision to accept the admissibility of certain items of evidence and not others.

31      EUIPO disputes the applicant’s claims.

32      As a preliminary point, it must be noted that the applicant alleges infringement of Article 94(1) and Article 95(1) of Regulation 2017/1001, read in conjunction with Article 70(2) of that regulation. However, its arguments relate solely to the infringement of its rights of defence and of the failure to fulfil the obligation to state reasons, so that none of the arguments put forward concerns the infringement of Article 95(1) of Regulation 2017/1001 or of Article 70(2) of that regulation. Accordingly, the present plea must be rejected as regards the alleged infringement of the latter two provisions.

33      Under Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. They are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

34      In the present case, it is apparent from the file that the applicant was invited to submit observations on the statement setting out the grounds of appeal, which contained the contested evidence in an annex and had been lodged by the other party to the proceedings before the Board of Appeal. The statement of grounds was notified to the applicant on 20 January 2023. Moreover, it is clear from paragraph 17 of the contested decision that the applicant, in its response submitted on 25 April 2023, actually contested the admissibility of the evidence adduced for the first time at the appeal stage. In those circumstances, it cannot claim that its rights of defence were infringed in the present case.

35      With respect to the alleged failure to state reasons in the contested decision regarding the admissibility of the contested evidence, it must be recalled that the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is therefore sufficient if the institution concerned sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 15 January 2015, MEM v OHIM (MONACO), T-197/13, EU:T:2015:16, paragraph 19 and the case-law cited).

36      In the present case, it must be noted, as observed by EUIPO, that the Board of Appeal indicated, in paragraph 28 of the contested decision, that the taking into account of that evidence was justified in so far as it was relevant for the outcome of the case. It also stated that that evidence was intended to contest findings made in the decision of the Cancellation Division regarding facts and evidence already relied on at first instance, in accordance with Article 27(4) of Delegated Regulation 2018/625.

37      Moreover, it is apparent from paragraph 29 of the contested decision that the Board of Appeal gave reasons for finding the other part of the evidence inadmissible. It stated, with regard to the evidence concerning the alleged meaning of the terms ‘fizz’ and ‘fizzy’ in languages other than English, that such arguments had not been made at first instance and that they had therefore not been addressed in the decision of the Cancellation Division.

38      It follows that the Board of Appeal stated to the requisite legal standard its position on the taking into account of evidence submitted at the appeal stage by the other party to the proceedings before the Board of Appeal.

39      As regards the applicant’s request that the contested decision be revoked pursuant to Article 103(1) of Regulation 2017/1001, it is sufficient to note that, irrespective of whether such a request is admissible, it is apparent from the foregoing considerations that, in the present case, there was no infringement of the rights of the defence and the Board of Appeal stated to the requisite legal standard the reasons for the contested decision.

40      Consequently, the second plea must be rejected.

 The third plea in law, alleging infringement of Article 7(1)(c) and (b) of Regulation No 40/94

-       Infringement of Article 7(1)(c) of Regulation No 40/94

41      The applicant submits that the contested mark is not descriptive of the goods concerned. It submits that the Board of Appeal made an error of interpretation in limiting the wide range of possible meanings of the word element ‘fizz’ to that of a type of fizzy drink. In that regard, it argues that that term refers rather to the quality of effervescence, vivacity and excitement, evoking in the consumer’s mind an idea alluding to beverages which facilitate having a fun, exciting and good time, and being full of life and excitement. According to the applicant, that allusion is reinforced by the colours of the sign. It adds that, when assessing the descriptive character of a sign, all the possible meanings of the word elements contained therein must be taken into account.

42      Moreover, the applicant complains that the Board of Appeal failed to assess the combined effect of the figurative elements together with the word elements of the contested mark. Next, it claims that, for a figurative sign to be regarded as descriptive, the figurative elements must also be descriptive, which is not the case here.

43      EUIPO disputes the applicant’s arguments.

44      In accordance with Article 51(1)(a) of Regulation No 40/94, an EU trade mark is to be declared invalid, in particular on application to EUIPO, where it has been registered in breach of the provisions of Article 7 of that regulation.

45      Under Article 7(1)(c) of Regulation No 40/94, 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. Moreover, Article 7(2) of Regulation No 40/94 provides that paragraph 1 thereof is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

46      The general interest underlying Article 7(1)(c) of Regulation No 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraph 37 and the case-law cited).

47      According to the case-law, signs and 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 Regulation No 40/94, deemed incapable, by their very nature, of fulfilling the indication-of-origin function of the trade mark (see, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 30).

48      It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between the sign and the goods and 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 judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T-334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T-19/04, EU:T:2005:247, paragraph 25 and the case-law cited).

49      Accordingly, a sign’s descriptiveness cannot be assessed other than by reference to the goods concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (judgments of 16 March 2006, Telefon & Buch v OHIM - Herold Business Data (WEISSE SEITEN), T-322/03, EU:T:2006:87, paragraph 90, and of 15 January 2015, MONACO, T-197/13, EU:T:2015:16, paragraph 50).

50      Finally, as regards trade marks composed of several word and figurative elements, it must be borne in mind that, in order to assess the descriptive character of a compound mark, not only must the various elements of which it is composed be examined but also the mark as a whole, so that such an assessment must be based on the overall perception of that mark by the relevant public. The mere fact that each of those elements, considered separately, is descriptive does not preclude that their combination may be devoid of such character (see, to that effect, judgment of 8 May 2008, Eurohypo v OHIM, C-304/06 P, EU:C:2008:261, paragraphs 41 and 42).

51      It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was entitled to find that the contested mark was descriptive of the goods concerned for the purposes of Article 7(1)(c) of Regulation No 40/94.

52      In the present case, first, the Board of Appeal considered that the relevant public consisted, on the one hand, of the English-speaking part of the public of the European Union, namely Ireland and Malta, as well as those Member States where English was particularly well understood, such as the Netherlands, Finland and Sweden. On the other hand, the relevant public consisted of the public at large and professionals in the drinks and hospitality industry across the European Union, who may use English on a frequent basis due to the international nature of the business. It considered that both the English-speaking part of the European Union belonging to the public at large and the professional public in the hospitality industry were all likely to pay an average degree of attention in that regard given that the goods in question were frequently consumed. Those findings, which are not disputed by the applicant, are correct and must be endorsed.

53      Secondly, the Board of Appeal considered that the dominant element of the contested mark was the term ‘fizz’, but that the other elements making up the contested mark, namely the word element ‘cider’ and the figurative elements, could not therefore be disregarded when assessing the descriptive character of that mark. It concluded that the relevant public would understand both the term ‘fizz’ used alone and the combination of the word elements ‘fizz’ and ‘cider’ as bearing a direct and immediate descriptive semantic content vis-à-vis all the contested goods. In that regard, it observed that the term ‘fizz’ indicated that the goods were sparkling rather than still beverages, or constituted or formed part of a type of cocktail. The term ‘cider’, on the other hand, although far smaller in size and located at the bottom of the sign, will merely be seen as a secondary descriptive indication that the goods in question are cider or include cider as an ingredient or flavour. Moreover, the Board of Appeal found that the figurative elements were insufficient to overcome the descriptive nature of the word elements ‘fizz’ and ‘cider’ in the contested sign and concluded that it was descriptive.

54      In the first place, it should be noted that the contested mark is a compound mark. It is composed of a figurative element consisting of a rectangle whose colours include shades of green, yellow and black. On the one hand, located within that geometric element is the word element ‘fizz’, written in large white upper-case letters in the upper central part of the sign. On the other hand, the word element ‘cider’, placed below the element ‘fizz’, is represented in white italic script, which is thinner and considerably smaller in size. Moreover, it should be noted, as the Board of Appeal did, that the term ‘fizz’ is the dominant element of that mark due to its greater relative size and visual prominence.

55      In the second place, as regards the meaning of the word elements, it must be stated, as the Board of Appeal observed and the applicant does not dispute, that it is apparent from the evidence adduced by the other party before the Board of Appeal that the term ‘fizz’ as a noun can refer, inter alia, to small bubbles of gas or the sound that is made by bubbles of gas in a liquid, a fizzy drink or lively and exciting movement or activity. Similarly, the English verb ‘to fizz’ bears the meanings of to make lots of bubbles and a long sound, or to move a lot in a way which is exciting. Moreover, the numerous extracts provided by the other party to the proceedings before the Board of Appeal, described in paragraph 14 of the contested decision, confirm actual use of the term ‘fizz’ as a generic type of cocktail, namely ‘fizz’, attesting to the existence of numerous other cocktails which include the element ‘fizz’.

56      In the light of those definitions, the Board of Appeal was entitled to conclude, without committing any error of assessment, that the term ‘fizz’ was used in English in a descriptive manner in relation to the characteristics of the contested goods in Classes 32 and 33, which concerned alcoholic beverages and non-alcoholic drinks, alone or in combination with other beverages in cocktails.

57      As regards the applicant’s claim that the Board of Appeal failed to take into account other meanings of the term ‘fizz’, it must be recalled that, in order to apply Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 October 2003, OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 32).

58      As is apparent from paragraphs 56 and 57 above, the term ‘fizz’ designates, in at least one of its potential meanings, a characteristic of the contested goods.

59      As regards the word element ‘cider’, it is appropriate to endorse the Board of Appeal’s findings that that term normally designates an alcoholic beverage made from apples, whether carbonated or not, and will therefore be understood by the relevant public as being descriptive of the goods in question, since they may be cider or include cider as an ingredient or flavour.

60      As regards those two word elements taken together, there is no reason to call into question the Board of Appeal’s findings that they describe the contested goods. The English-speaking public will be aware that the goods in question are drinks which contain gas bubbles or which are actually fizzy, or ‘fizz’ cocktails, and that those drinks are cider or include cider as an ingredient or flavour. As regards the figurative elements, as the Board of Appeal found, they are not such as to confer distinctive character on the contested mark in so far as their abstract form conveys no meaning and they are not memorable.

61      In that regard, it is necessary to reject the applicant’s argument that the Board of Appeal failed to take into account the combined effect of the word elements of the sign at issue and that it wrongly concluded that the mark was descriptive, in particular because it was figurative.

62      As is apparent from paragraphs 48 and 54 of the contested decision, the Board of Appeal took into account the contested mark as a whole, stating in particular that the contested mark will be perceived immediately and directly by the English-speaking relevant public as referring to a relevant essential characteristic of all the goods in question, namely that those goods were sparkling beverages rather than still drinks, or constituted or formed part of a type of cocktail, and that the figurative elements merely served to emphasise the term ‘fizz’ in particular.

63      Similarly, it must be pointed out, as observed by EUIPO, that, according to settled case-law, for the purpose of assessing the descriptive character of the sign at issue, the decisive question is whether, from the point of view of the relevant public, the figurative elements change the meaning of the mark applied for in relation to the goods and services concerned. If the word element of a mark is descriptive, the mark is, as a whole, descriptive if the graphic elements of that mark do not divert the relevant public’s attention from the descriptive message conveyed by the word element (see judgment of 8 May 2024, Daimler Truck v EUIPO (CERTIFIED), T-436/23, not published, EU:T:2024:289, paragraph 29 and the case-law cited). That is the case here.

64      It follows that the Board of Appeal rightly held that the figurative elements of the sign at issue, namely the coloured rectangle and the graphic representation of the word elements, were insufficient to overcome the descriptive nature of the word elements ‘fizz’ and ‘cider’. There is no aspect of the slight stylisation of the letters of the word elements or a simple rectangular shape which may be easily and instantly memorised by the relevant public and which would make it possible for it to be perceived as an indication of the commercial origin of the goods in question and divert attention from the descriptive message conveyed by the word elements.

65      Accordingly, the Board of Appeal did not make an error of assessment in finding that the contested mark was descriptive of the goods concerned.

-       Infringement of Article 7(1)(b) of Regulation No 40/94

66      The applicant argues that the assessment concerning the lack of distinctive character of the contested mark is flawed, since that assessment follows from the reasoning relating to the descriptive character of that mark, which is vitiated by an error of assessment in its view.

67      EUIPO disputes the applicant’s arguments.

68      In the present case, the Board of Appeal considered that it was not necessary to examine the argument based on the lack of distinctive character of the contested mark in so far as the finding of the existence of the absolute ground relating to the descriptive character of that mark was sufficient to dismiss the appeal. Nevertheless, it stated, for the sake of completeness, that since the contested mark was descriptive of the goods in question, it was also devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

69      In that regard, it should be borne in mind that, according to settled case-law, it is sufficient that one of the absolute grounds for refusal within the meaning of Article 7(1) of Regulation No 40/94 applies for the sign applied for not to be registrable as an EU trade mark. As is apparent from paragraph 65 above, the Board of Appeal was entitled to find that the contested mark was descriptive in the present case. The present complaint must be dismissed.

70      In the light of the foregoing, the third plea must be rejected and the action must be dismissed in its entirety.

 Costs

71      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 pleading.

72      Even though the applicant has been unsuccessful in the present case, EUIPO contended that the applicant should be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders each party to bear its own costs.

Delivered in open court in Luxembourg on 23 October 2024.

*      Language of the case: English.

© European Union
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