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

JUDGMENT OF THE GENERAL COURT (First Chamber)

7 February 2024 (*)

(EU trade mark – Invalidity proceedings – EU word mark BEAUTYBIO – Absolute grounds for invalidity – 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))

In Case T‑80/23,

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

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,

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: 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, 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 20 December 2022 (Case R 1038/2022‑4) (‘the contested decision’).

 Background to the dispute

2        On 18 February 2021, the intervener, the Société de Recherche Cosmétique SARL, filed with EUIPO an application for a declaration of invalidity in respect of the EU trade mark registered following an application filed on 23 June 2017 for the word sign BEAUTYBIO.

3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 3 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 to the following description: ‘Body cleaning and beauty care preparations; Beauty serums; Body masks; Cosmetics; Eye cream; Creams for firming the skin; Non-medicated skin serums; Skin cleansers; Skin cream; Skin moisturisers; Skin toners; Skin care preparations; Cleansing creams; Cakes of toilet soap; Facial soaps; Facial scrubs [cosmetic]; Facial masks; Toners for cosmetic use; Skin lighteners; Hair lighteners; Moisturisers; Beauty care cosmetics; Colour cosmetics for the eyes; Eye pencils; Eyebrow pencils; Mascara; Lipsticks; Lip glosses; Lip liners; Cheek colours; Rouges; Loose face powder; Pressed face powder; Concealers; Make up foundations; Concealers for spots and blemishes’.

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 13 April 2022, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 7(1)(c) of Regulation 2017/1001.

6        On 10 June 2022, the applicant lodged an appeal with EUIPO against the Cancellation Division’s decision.

7        By the contested decision, the Board of Appeal dismissed the appeal. First, it found that the relevant public consisted of the general English-speaking public in the European Union, with an average degree of attention, even though the goods at issue may also be purchased by professionals or specialists. Secondly, according to the Board of Appeal, given the clear meaning of the words ‘beauty’ and ‘bio’ in the mark at issue, that mark is understood as referring to the fact that the goods at issue in Class 3 are intended to improve a person’s appearance and that they are manufactured organically, in a natural way, from natural materials, under conditions which respect nature and the environment. Furthermore, the Board of Appeal added that those elements of the mark at issue were commonly used and understood at the time the application for registration of that mark was filed and that their meaning has not changed since. Thirdly, the Board of Appeal found that the goods at issue had to be regarded as cosmetic or beauty products and that one of the essential characteristics of the products was their ingredients, since some consumers preferred cosmetics containing organic ingredients. Fourthly, the Board of Appeal found that there was a sufficiently direct and specific relationship between the mark at issue and all the goods at issue, so that consumers will immediately perceive that mark as a description of the nature and purpose of those goods. Thus, according to the Board of Appeal, the mark at issue was descriptive, at the time of its application for registration, under Article 7(1)(c) of Regulation 2017/1001, for all the goods at issue in Class 3. Lastly, it found that, since the mark at issue had a descriptive character, and since that ground in itself justified the invalidity of that mark, there was no need to consider the merits of the applicant’s arguments concerning infringement of Article 7(1)(b) of Regulation 2017/1001.

 Forms of order sought

8        The applicant claims that the Court should:

–        annul the contested decision, dismiss the application for declaration of invalidity and maintain the registration of the mark at issue;

–        alter the contested decision by dismissing the application for a declaration of invalidity;

–        order the intervener to pay the costs incurred before EUIPO and the Court.

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.

10      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs incurred before EUIPO and the Court.

 Law

11      It should be noted at the outset that, given the date on which the application for registration at issue was filed, namely 23 June 2017, 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), as amended (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, as regards the substantive rules, the references made by the parties in their written pleadings to Article 7(1)(b) and (c) and to Article 59(1)(a) of Regulation 2017/1001 must be understood as referring, respectively, to Article 7(1)(b) and (c) and Article 52(1)(a) of Regulation No 207/2009, the terms of which are identical.

13      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof, in so far as the Board of Appeal found that the mark at issue was descriptive for the goods at issue in Class 3, secondly, infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) thereof, in so far as the Board of Appeal wrongly found that the mark at issue was devoid of any distinctive character with regard to those goods.

 The first plea, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof

14      The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, consists of three parts, alleging, first, infringement of the principle that the burden of proof lies with the cancellation applicant, secondly, failure to observe the principle of the presumption of validity in the assessment of the descriptiveness of the contested mark and, thirdly, an error in the assessment of the descriptiveness of that mark. It is appropriate to examine the first and second parts of that plea together.

 The first and second parts of the first plea

15      The applicant submits, first, that the Board of Appeal failed to take account of the fact that the burden of proof lay with the intervener as the cancellation applicant. According to the applicant, during the proceedings before EUIPO, the intervener only presented arguments showing a correlation between the mark at issue and the earlier EU work mark BIO-BEAUTÉ, of which it is the proprietor and which was registered under number 13 609 631. The latter mark was the subject of the decision of the Fourth Board of Appeal of EUIPO of 28 September 2021 (Joined Cases R 1871/2020‑4 and R 1891/2020‑4). Furthermore, the applicant submits that the Cancellation Division and then the Board of Appeal based their decisions on well-known facts without taking into consideration the lack of arguments and evidence submitted by the intervener during the proceedings before them. Secondly, the applicant submits that the mark at issue enjoys a presumption of validity, so the intervener could not confine itself to proving the actual, individual meaning of the elements making up that mark, the lexical meaning of which the examiner could not have been unaware of, when authorising its registration, in 2017, without expressing any doubts as to its registrability.

16      The Board of Appeal found, first, that the present case is independent from the invalidity proceedings in relation to the EU trade mark BIO-BEAUTÉ and that the Cancellation Division decided the present case on its own merits. Furthermore, the Board of Appeal noted that the additional evidence produced by the applicant and the intervener, in the proceedings before EUIPO, in order to determine whether the term ‘bio’ was normally used by the English-speaking public in relation to natural, organic or eco cosmetics, was irrelevant, since the Cancellation Division’s findings were sufficiently supported by dictionary references, legal provisions and case-law of the Court of Justice and the General Court.

17      EUIPO and the intervener dispute the applicant’s arguments.

18      As regards the question whether the Board of Appeal was entitled to base its decision on well-known facts in the context of invalidity proceedings, it must be recalled that, in accordance with settled case-law, pursuant to Article 76(1) of Regulation No 207/2009, when examining absolute grounds for refusal, EUIPO examiners and, on appeal, the Boards of Appeal of EUIPO are required to examine the facts of their own motion in order to determine whether the mark for which registration is sought comes within one of the absolute grounds for refusal set out in Article 7 of that regulation. It follows that the competent bodies of EUIPO may be led to base their decisions on facts which have not been invoked by the applicant (see judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 21 and the case-law cited).

19      In invalidity proceedings, however, the Board of Appeal cannot be required to carry out afresh the examination conducted at the time of registration by the competent EUIPO bodies, of their own motion, of the relevant facts. It follows from the provisions of Articles 52 and 55 of Regulation No 207/2009 that the EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the review carried out by EUIPO in the examination of an application for registration (see judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 22 and the case-law cited).

20      By virtue of that presumption of validity, EUIPO’s obligation, under Article 76(1) of Regulation No 207/2009, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by the adjudicating bodies of EUIPO during the procedure for registration of that mark. In invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who had 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. Thus, according to the wording of that provision, in invalidity proceedings under Article 52 of that regulation, EUIPO is to limit its examination to the grounds and arguments submitted by the parties (see judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 23 and the case-law cited).

21      However, while the presumption of validity of the registration restricts EUIPO’s obligation to examine the relevant facts, it does not preclude it, in particular in view of the elements put forward by the party challenging the validity of the mark at issue, from relying, not only on those arguments and any evidence produced by that party in its application for a declaration of invalidity, but also on well-known facts observed by EUIPO in the context of the invalidity proceedings. Thus, where a party contests the validity of a registered mark relying on evidence in support of its application for a declaration of invalidity, the Board of Appeal is required to examine that evidence and the existence of well-known facts that the examiner might have omitted to take into consideration in the registration procedure (see judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraphs 24 and 25 and the case-law cited).

22      In that regard, the Board of Appeal correctly pointed out in paragraph 18 of the contested decision that the adjudicating bodies of EUIPO may take into consideration, in addition to the arguments and facts put forward by the parties, well-known facts, that is to say facts that are likely to be known by anyone or can be learned from generally accessible sources, in order to ascertain whether a ground for refusal precluded registration of the mark at issue at the time of filing of the application for registration. Well-known facts from generally accessible sources include information from standard dictionaries (see judgment of 14 September 2022, Task Food v EUIPO – Foodtastic (ENERGY CAKE), T‑686/21, not published, EU:T:2022:545, paragraph 54 and the case-law cited).

23      In the present case, in examining the descriptiveness of the mark at issue, the Board of Appeal took into consideration, in accordance with the case-law referred to in paragraph 21 above, the arguments relied on by the cancellation applicant in support of its application for a declaration of invalidity and the well-known facts that the examiner allegedly failed to take into consideration in its analysis of the application for registration of the mark at issue in 2017.

24      In particular, in its application for a declaration of invalidity, the intervener had argued that the mark at issue, being composed of commonly used terms that did not form an unusual combination in the mind of the relevant public at the date of filing of the application for registration, should be declared invalid for lack of distinctive character, especially if it was descriptive in relation to the goods concerned.

25      The Board of Appeal thus assessed whether the mark at issue was descriptive in view of the arguments relied on by the cancellation applicant. Contrary to the applicant’s claims, the Board of Appeal confined itself to examining the arguments relied on by the cancellation applicant, while taking the view that they were substantiated by well-known facts.

26      Accordingly, the Board of Appeal did not err in taking into account – in addition to the arguments relied on by the intervener in the proceedings before EUIPO – well-known facts, namely the meaning of the words ‘beauty’ and ‘bio’ in the online version of the Oxford English Dictionary, in order to conclude that the mark at issue was descriptive with regard to the goods at issue, in accordance with the case-law cited in paragraphs 21 and 22 above. The fact that it did so therefore cannot be indicative of either an error in the allocation of the burden of proof or a failure to have regard to the presumption of validity enjoyed by registered trade marks.

 Third part of the first plea in law

27      In the context of the third part of the first plea, the applicant submits that the Board of Appeal infringed Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof, by wrongly concluding that the mark at issue as a whole was descriptive of the goods at issue in Class 3.

28      According to the applicant, there is a perceptible difference between the elements ‘beauty’ and ‘bio’, taken alone, and their combination as ‘beautybio’, taken as a whole. More specifically, it submits that although, for the relevant public, the terms ‘beauty’ and ‘bio’ may form part of expressions used in everyday speech to designate the function of cosmetic products, their combination, by contrast, is syntactically unusual and is not a familiar expression in the English language, either for designating those goods or for describing their essential characteristics. The applicant claims that the term ‘bio’ is perceived by the relevant public as an adjective that is always placed before a noun in an expression, whereas, in the present case, that term is placed after the noun ‘beauty’, which creates an unnatural perception of the sign as a whole. Furthermore, it submits that, even if the term ‘bio’ were perceived as a noun, the correct way of referring to the quality relating to beauty would be by using the term ‘beautiful’ and not, as in the mark at issue, the term ‘beauty’. Lastly, the applicant asserts that a sign needs only a minimum degree of distinctiveness in order to be registered.

29      EUIPO and the intervener dispute the applicant’s arguments.

30      Under Article 52(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid, inter alia on application to EUIPO, where it has been registered contrary to the provisions of Article 7 of that regulation.

31      Article 7(1)(c) of Regulation No 207/2009 provides that ‘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. According to Article 7(2) of that regulation, paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

32      Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).

33      For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific relationship between the sign and the goods and services 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).

34      A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).

35      It should be borne in mind that, by using the terms ‘the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ in Article 7(1)(c) of Regulation No 207/2009, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of the goods or services may also be taken into account (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited).

36      The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 207/2009 are merely those which serve to designate a property, easily recognisable by the relevant public, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant public as a description of one of those characteristics (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50, and of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 32).

37      Furthermore, although it is irrelevant whether such a characteristic is commercially essential or ancillary, a characteristic, within the meaning of Article 7(1)(c) of Regulation No 207/2009, must nevertheless be objective and inherent to the nature of that product or service and intrinsic and permanent with regard to that product or service (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 44 and the case-law cited).

38      In the light of those principles, it must be examined whether the Board of Appeal was entitled to find that the mark at issue was descriptive of the goods at issue in Class 3.

39      It should be borne in mind, as regards marks consisting of a number of elements, that the issue of whether or not they are descriptive may be assessed, in part, in relation to each of those elements, taken separately, but must, in any event, also be established in relation to the whole which they comprise. A mark consisting of elements each of which is descriptive of characteristics of the goods or services it covers is itself descriptive of the characteristics of those goods or of those services, for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between that mark and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, that mark creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed. Thus, since the relevant public will perceive the mark applied for as a whole, it is any descriptiveness of the mark as a whole, and not of the various elements of that mark considered separately, which is important (see judgment of 9 September 2020, Daw v EUIPO (SOS Loch- und Rissfüller), T‑626/19, not published, EU:T:2020:399, paragraph 31 and the case-law cited).

40      In the first place, as regards the determination of the relevant public and its level of attention, the Board of Appeal found that the goods at issue were aimed at the public at large with an average level of attention, even though they may also be purchased by professionals or specialists. Furthermore, it found that the relevant public consisted of the English-speaking public of the European Union, namely the public in the United Kingdom, Ireland, the Scandinavian countries, the Netherlands, Finland and even Malta and Cyprus. The parties have not disputed those findings of the Board of Appeal.

41      As regards the relevant public’s perception of the mark at issue, it is apparent from the contested decision that, in order to assess its descriptiveness, the Board of Appeal, first, took into account the two word elements of which it was composed, namely ‘beauty’ and ‘bio’, written together without a space. In particular, it noted that the definition in the online version of the Oxford English Dictionary of the term ‘beauty’ was ‘that quality of a person (esp. a woman) which is highly pleasing to the sight; perceived physical perfection; attractive harmony of features, figure, or complexion; exceptional grace, elegance, or charm in appearance’, and the definition of the term ‘bio’ was ‘forming temporary words and ad hoc formations relating to life and living organisms (real and fictional), and (in later use) to biotechnology or environmental sustainability’.

42      In the present case, it should be noted, as the Board of Appeal did, that the mark at issue consists of the elements ‘beauty’ and ‘bio’, written together without a space. First of all, as regards the element ‘beauty’, according to case-law, it is a word forming part of the basic vocabulary of the English language (judgment of 10 February 2021, Biochange Group v EUIPO – mysuperbrand (medical beauty research), T‑98/20, not published, EU:T:2021:69, paragraph 60), which is used in the field of ‘cosmetics’ (judgment of 13 September 2010, Procter & Gamble v OHIM – Prestige Cosmetics (P&G PRESTIGE BEAUTE), T‑366/07, not published, EU:T:2010:394, paragraph 34).

43      Next, as regards the word ‘bio’, it should be borne in mind that, although, strictly speaking, its primary function is to indicate a connection with life, living beings and the study of living beings, or even production sectors of use to humans, the Court has, however, already had occasion to point out that that term had acquired a different meaning in everyday language. In particular, in trade, its use as a prefix or suffix has now acquired a highly evocative meaning, which may possibly be perceived differently depending on the product offered for sale to which it is attached, but which, generally, refers to the idea of environmental protection, the use of natural materials or even ecological manufacturing processes (see, to that effect, judgments of 29 April 2010, Kerma v OHIM (BIOPIETRA), T‑586/08, not published, EU:T:2010:171, paragraph 25, and of 21 February 2013, Laboratoire Bioderma v OHIM – Cabinet Continental (BIODERMA), T‑427/11, not published, EU:T:2013:92, paragraphs 45 and 46).

44      In the second place, it is necessary to examine whether, in accordance with the case-law cited in paragraphs 33 to 37 above, there exists, from the point of view of the relevant public thus defined, a sufficiently direct and specific relationship between the mark at issue and the goods and services at issue in Class 3.

45      As regards the applicant’s argument that the combination ‘beautybio’ is perceived differently from each element considered in isolation, it should be noted, as did the Board of Appeal and as set out in the foregoing considerations, that it is a mere combination of two descriptive elements, such that the mark at issue is descriptive as a whole. That combination is understood in relation to beauty products or cosmetics as providing information on the fact that those goods are manufactured in a natural way, from natural materials, under conditions which respect nature and the environment. Thus, it must be held that, for the purposes of the case-law cited in paragraph 39 above, the expression ‘beautybio’ does not create an impression on the part of the relevant public that is sufficiently far removed from that produced by the mere combination of meanings lent by the two word elements of which it is composed.

46      In the light of the foregoing considerations, it must be held that the mark at issue designates the characteristics of the goods at issue in Class 3, namely that they provide or enhance beauty, being goods produced in a natural, organic, ecological way. As the Board of Appeal correctly found, it must be held that that message is clear, direct and explicit and that, consequently, there is indeed, from the point of view of the relevant public, a sufficiently direct and specific link between the mark at issue and the goods at issue, within the meaning of the case-law cited in paragraph 33 above.

47      It follows from the foregoing that the Board of Appeal was right to hold that the mark at issue was descriptive of the goods at issue in Class 3, on the basis of Article 7(1)(c) of Regulation No 207/2009.

48      The first plea in law must, therefore, be rejected.

 The second plea, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) thereof

49      The applicant submits, in essence, that the Board of Appeal made an error of assessment in finding that the mark at issue was descriptive of the goods at issue and that it was, therefore, devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

50      EUIPO and the intervener dispute the applicant’s arguments.

51      As is clear from Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal applies for the sign at issue not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).

52      In the present case, it follows from the examination carried out in paragraphs 31 to 47 above that the sign submitted for registration is descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009 and that that ground alone justifies the refusal of the registration at issue, with the result that there is no need, in any event, to consider the merits of the plea alleging infringement of Article 7(1)(b) of that regulation (see, to that effect, order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28).

53      It follows from all of the foregoing that the second plea must be rejected and, therefore, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the request to dismiss the application for a declaration of invalidity and to maintain the registration of the mark at issue, made in the second part of the applicant’s first head of claim.

54      Consequently, the applicant’s second head of claim, seeking alteration of the contested decision for the goods at issue, must also be dismissed.

 Costs

55      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.

56      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener during the proceedings before the Court, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, bear its own costs.

57      In addition, the applicant and the intervener also sought payment of the costs incurred before EUIPO. In that regard, under Article 190(2) of the Rules of Procedure, 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.

58      Therefore, the forms of order of the applicant and of the intervener concerning the costs relating to the invalidity proceedings, which are not recoverable costs, are inadmissible (judgment of 6 June 2019, Torrefazione Caffè Michele Battista v EUIPO – Battista Nino Caffè (BATTISTINO), T‑221/18, not published, EU:T:2019:382, paragraph 76). As regards the costs relating to the proceedings before the Board of Appeal, suffice it to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 194).

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Beauty Biosciences LLC to bear its own costs and to pay those incurred by the Société de Recherche Cosmétique SARL during the proceedings before the Court;

3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.

Delivered in open court in Luxembourg on 7 February 2024.

*      Language of the case: English.

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