Judgments nº T-532/19 of Tribunal General de la Unión Europea, May 13, 2020

• Resolution Date: May 13, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-532/19

(EU trade mark - Application for the EU figurative mark pantys - Absolute ground for refusal - Descriptive character - Article 7(1)(c) of Regulation (EU) 2017/1001 - No distinctive character acquired through use - Article 7(3) of Regulation 2017/1001) In Case T-532/19,

EC Brand Comércio, Importação e Exportação de Vestuário em Geral Ltda, established in Sorocaba (Brazil), represented by B. Bittner and U. Heinrich, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Walicka, acting as Agent,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 22 May 2019 (Case R 314/2019-5), relating to an application for registration of the figurative mark pantys as an EU trade mark,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, C. Iliopoulos and R. Norkus (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 29 July 2019,

having regard to the response lodged at the Court Registry on 17 October 2019,

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

Background to the dispute

1 On 6 March 2018, the applicant, EC Brand Comércio, Importação e Exportação de Vestuário em Geral Ltda, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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).

2 Registration as a mark was sought for the following figurative sign:

3 The goods in respect of which registration was sought are in Classes 5, 25 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, inter alia, to the following description:

- Class 5: ‘Hygienic absorbents; sanitary napkins; sanitary briefs; sanitary towels; incontinence pads; protectors for panties [hygiene products]; hygienic panties; hygienic pants’;

- Class 25: ‘Liners made of layers of fabric for underwear; women’s underwear; modeling belts, namely panties; women’s lingerie; maternity clothes, namely panties’;

- Class 35: ‘Online retail trade services of women’s underwear, lingerie, underwear and sanitary products’.

4 By decision of 10 December 2018, the examiner rejected the application for registration on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, in respect of the goods and services referred to in paragraph 3 above, on the ground that the sign applied for (i) lacked distinctive character and (ii) was descriptive.

5 On 8 February 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.

6 By decision of 22 May 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, as regards the relevant public, the Board of Appeal found that it consisted of the public at large, whose level of attention is average. In the second place, it noted that the link between the mark applied for, which is a misspelling of the English word ‘panties’, and the goods and services at issue was sufficiently close for the sign to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001. In the third place, it rejected the applicant’s arguments that that mark had acquired distinctive character through use within the meaning of Article 7(3) of that regulation. In that regard, the Board of Appeal found that it was not possible to conclude on the basis of the evidence submitted by the applicant that the mark had become, in itself, distinctive from the perspective of the relevant public on the date on which the application for registration was filed.

Forms of order sought

7 The applicant claims that the Court should:

- annul the contested decision, in so far as it dismissed the appeal, as regards, on the one hand, certain goods in Class 5, namely ‘sanitary absorbents, sanitary towels, incontinence pads’ and, on the other, certain services in Class 35, namely ‘online retail trade services of women’s sanitary products’;

- order EUIPO to pay the costs.

8 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

9 In support of its action, the applicant relies on three pleas in law, alleging (i) infringement of Article 7(1)(c) of Regulation 2017/1001, (ii) infringement of Article 7(1)(b) of that regulation and, (iii) infringement of Article 7(3) of the regulation.

The first plea, alleging infringement of Article 7 (1)(c) of Regulation 2017/1001

10 The applicant claims, in essence, that the Board of Appeal erred in finding that the mark applied for was descriptive in respect of certain goods in Class 5, namely ‘sanitary absorbents, sanitary towels, incontinence pads’ and certain services in Class 35, namely ‘online retail trade services of women’s sanitary products’.

11 EUIPO disputes all the arguments put forward by the applicant.

12 Article 7(1)(c) of Regulation 2017/1001 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 cannot be registered.

13 The signs or indications referred to in Article 7(1)(c) of Regulation 2017/1001 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).

14 It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods 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).

15 Accordingly, a sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by the relevant public (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 18 November 2014, Think Schuhwerk v OHIM - Müller (VOODOO), T-50/13, not published, EU:T:2014:967, paragraph 20).

16 The arguments put forward by the parties relating to the assessment made by the Board of Appeal in the contested decision must be examined in the light of those principles.

17 In the first place, it should be noted that, in paragraph 13 of the contested decision, the Board of Appeal found that the goods and services at issue are aimed at the public at large, whose level of attention is average. The applicant does not dispute the Board of Appeal’s assessment. Moreover, there is no evidence in the file capable of casting doubt on that assessment. Furthermore, in so far as, in the present case, the Board of Appeal essentially endorsed the examiner’s observations and based its reasoning in the contested decision on the trade mark’s meaning in English, the descriptiveness of that trade mark must be assessed by reference to how it is perceived by the average English-speaking consumer.

18 In the second place, for the purpose of applying Article 7(1)(c) of Regulation 2017/1001, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the relevant public, there is a sufficiently direct and specific association between the sign at issue and the goods or the services in respect of which registration is sought (see, to that effect, judgment of 27 October 2016, Caffè Nero Group v EUIPO (CAFFÈ NERO), T-29/16, not published, EU:T:2016:635, paragraph 22).

19 In that regard, the Board of Appeal, like the examiner, found, in paragraph 14 of the contested decision, that the word element ‘pantys’ of the mark applied for is a misspelling of the English word ‘panties’, which denotes a form of women’s underwear.

20 In that respect, the Board of Appeal observed, in paragraph 16 of the contested decision, that the word ‘panties’ is defined in various English dictionaries as ‘women’s or girls’ underpants, especially short-legged or legless pants with an elasticated waist; tights, pantyhose’.

21 The Court upholds those findings of the Board of Appeal. The word element ‘pantys’ of the mark applied for will be perceived by the relevant public as a term denoting a form of women’s underwear, namely panties. When used to designate the goods at issue, which are all sanitary products, especially for women, that term will be immediately understood by the relevant public as describing the properties of those goods, namely, on the one hand, that they may be offered in the form of panties and, on the other, that they may be incorporated in that type of women’s underwear. In those...