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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Lotus Bakeries v EUIPO () and blanche) (EU trade mark - Judgment) [2025] EUECJ T-1096/23 (26 March 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T109623.html Cite as: [2025] EUECJ T-1096/23, ECLI:EU:T:2025:330, EU:T:2025:330 |
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JUDGMENT OF THE GENERAL COURT (First Chamber)
26 March 2025 (*)
( EU trade mark - Application for an EU trade mark consisting of a combination of the colours red and white - Absolute ground for refusal - No distinctive character - Article 7(1)(b) of Regulation (EU) 2017/1001 - Proportionality - Equal treatment - Obligation to state reasons - Article 94(1) of Regulation 2017/1001 - Request for referral to the Grand Chamber - Article 28 of the Rules of Procedure of the General Court )
In Case T‑1096/23,
Lotus Bakeries, established in Lembeke (Belgium), represented by C. Gommers and E. de Pauw, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee and V. Ruzek, acting as Agents,
defendant,
THE GENERAL COURT (First Chamber),
composed of M. Brkan, acting as President, T. Tóth (Rapporteur) and S.L. Kalėda, Judges,
Registrar: H. Eriksson, Administrator,
having regard to the written part of the procedure,
further to the hearing on 10 September 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Lotus Bakeries, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 September 2023 (Case R 730/2023-1) ('the contested decision').
Background to the dispute
2 On 22 February 2022, the applicant filed with EUIPO an application for registration of an EU trade mark in respect of a colour sign consisting of the following combination of colours:
3 The mark applied for covered goods in Class 30 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, corresponding to the following description: 'Biscuits; cakes; confectionery; fondants (confectionery); gingerbread; pastry (industrial); speculoos (caramelised biscuits); spreads on the basis of biscuits, speculoos (caramelised biscuits), coffee and/or chocolate; waffles; ice cream; edible ice; chocolate; chocolate products'.
4 By decision of 24 February 2023, the examiner rejected the application for registration of that mark, on the ground that it was devoid of any distinctive character, on the basis of Article 7(1)(b) 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).
5 On 4 April 2023, the applicant filed a notice of appeal with EUIPO against the examiner's decision.
6 By the contested decision, the Board of Appeal dismissed the appeal on the basis of Article 7(1)(b) of Regulation 2017/1001. The Board of Appeal found that, in the present case, the relevant public was the general public of the European Union. It found that the sign applied for consisted of a combination of the colours red and white arranged in a specific colour distribution. With regard to the colour red, the Board of Appeal found that it was a basic colour that was attention-grabbing. As regards the colour white, it found that this was a neutral colour that could easily be paired with other colours. The Board of Appeal found that the combination of those colours was a marketing tool. It found that the sign applied for did not have any eye-catching features that would enable the relevant public immediately to perceive that sign as an indicator of the commercial origin of the goods at issue. Accordingly, the Board of Appeal concluded that the two colours and the combination of those colours were devoid of distinctive character.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– refer the contested mark back to EUIPO for examination;
– order EUIPO to pay the costs, including those incurred before the Board of Appeal.
8 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
Law
Request for referral to the Grand Chamber of the General Court
9 In support of its request for referral to the Grand Chamber of the General Court, the applicant submits that the first plea in law raises a question of law that is of capital importance to the EU trade mark system. According to the applicant, the General Court will have to determine the appropriate legal test for assessing the inherent distinctive character of signs consisting of a combination of colours arranged in a systematic manner, as opposed to signs consisting of a single colour without contours.
10 It should be noted that, according to the case-law, the referral of a case to a Chamber sitting in extended composition is an option, not an obligation, recourse to which is subject to the criteria defined in the Rules of Procedure of the General Court (judgment of 17 December 2020, BP v FRA, C‑601/19 P, not published, EU:C:2020:1048, paragraph 95).
11 Under Article 28(1) of the Rules of Procedure, whenever the legal difficulty or the importance of the case or special circumstances so justify, a case may be referred to the Grand Chamber, to the Intermediate Chamber, or to a Chamber sitting with a different number of Judges. Pursuant to Article 28(2) of the Rules of Procedure, such a referral may, at any stage in the proceedings, be proposed to the plenum by the Chamber seised of the case, either of its own motion or at the request of a main party.
12 In the present case, as regards the request for referral to the Grand Chamber submitted by the applicant, there is nothing to justify referral to a Chamber sitting in extended composition or, a fortiori, to the Grand Chamber.
The second head of claim, regarding the referral of the mark applied for back to EUIPO for examination
13 Under the applicant's second head of claim, the General Court is requested to refer the mark applied for back to EUIPO for examination.
14 EUIPO contends that such a referral would be a consequence of the first head of claim if it were to be granted by the Court.
15 In that regard, it is sufficient to note that, in an action before the EU judicature against a decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 72(6) of Regulation 2017/1001, to take the measures necessary to comply with judgments of that judicature. It is therefore for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the EU judicature (see judgment of 31 January 2019, Pear Technologies v EUIPO – Apple (PEAR), T‑215/17, not published, EU:T:2019:45, paragraph 81 and the case-law cited). Accordingly, the second head of claim has no specific purpose, in that it is merely a consequence of the first head of claim, seeking the annulment of the contested decision. It must therefore be rejected as inadmissible.
Substance
16 The applicant relies, in essence, on three pleas in law, alleging (i) infringement of Article 7(1)(b) of Regulation 2017/1001, (ii) infringement of Article 94 of that regulation, and (iii) infringement of the principles of proportionality and of equal treatment.
17 It is appropriate to examine the second plea in law first.
The second plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001
18 In support of that plea in law, in the first place, the applicant claims that, taking into account the evidence it submitted, which included other colours, it is unable to understand why the Board of Appeal found in paragraph 27 of the contested decision that red and white are common colours. In the second place, the applicant submits that paragraphs 29 and 30 of that decision are inconsistent given that the Board of Appeal seems to have assessed the lack of distinctive character of the mark applied for by reference to its eye-catching properties and its decorative function. According to the applicant, the fact that a sign serves a decorative function does not mean that it cannot also be distinctive. Similarly, an eye-catching feature can add distinctiveness. The applicant also states that the Board of Appeal failed to substantiate its finding that the sign applied for had a purely decorative purpose. In the third place, the applicant claims that paragraph 31 of the contested decision, according to which the primary red stripe and the two white outer stripes differ in width depending on the product packaging, is incomprehensible in the light of the evidence submitted in support of the consistent use of the sign applied for. The applicant also states that the reference to the actual use of the mark applied for was irrelevant in the context of assessing the distinctive character of that mark. In the fourth place, the applicant claims that there is a contradiction between paragraph 24 of the contested decision, according to which the colour red is an attention-grabbing colour, and paragraph 33 of that decision, which finds that there are no eye-catching features in the sign applied for, as far as the relevant public is concerned.
19 EUIPO disputes the applicant's arguments.
20 In accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
21 The duty to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 20 February 2013, Langguth Erben v OHIM (MEDINET), T‑378/11, EU:T:2013:83, paragraph 15 and the case-law cited).
22 In the present case, as regards the applicant's first argument, it is apparent from the wording of paragraph 27 of the contested decision that it was on the basis of the examples given by the examiner that the Board of Appeal found that, despite the fact that alternative colours were also present in the market concerned, red and white were common colours.
23 As for its second argument, the applicant cannot reasonably claim that the Board of Appeal found that the mark applied for had a purely decorative purpose. In paragraphs 29 and 30 of the contested decision, the Board of Appeal referred only to the same examples as the examiner and to the examiner's findings, taking into account, among other things, associations of ideas that the mark applied for was capable of conveying, in order to assess whether that mark could communicate specific information to the relevant public, and therefore, whether it could be perceived as an indication of commercial origin.
24 As regards the applicant's third argument, it is clear from paragraph 31 of the contested decision that, having found that the actual use of the sign applied for was irrelevant, the Board of Appeal assessed only the evidence of use of that sign in order to demonstrate that, in any case, that use in no way called into question its findings relating to the assessment of the distinctive character of that sign.
25 As regards the applicant's fourth argument, it is apparent from paragraph 24 of the contested decision that the Board of Appeal referred to the reasons for the use of the colour red in marketing, linked to the ability of that colour to grab the attention of consumers, while, in paragraph 33 of that decision, it referred to the lack of eye-catching features in the sign applied for that would allow the public to perceive that sign as an indicator of the commercial origin of the goods at issue. Therefore, those paragraphs of the contested decision criticised by the applicant are not contradictory.
26 In the light of the foregoing, the second plea in law must be rejected.
The first plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
27 In support of that plea in law, the applicant relies, in essence, on four complaints. In the first place, it submits that the Board of Appeal failed to examine the contested sign as a whole and as it appears in the application for registration. Furthermore, it submits that, in paragraph 31 of the contested decision, the reference to the actual use of the sign applied for is irrelevant in the context of the assessment of the distinctive character of the sign applied for. In the second place, it claims that the Board of Appeal wrongly applied the criteria resulting from the case-law arising from the judgment of 6 May 2003, Libertel (C‑104/01, EU:C:2003:244), which concerned single colour marks. In the third place, the applicant complains that the Board of Appeal erred in its assessment of the distinctive character of the mark applied for. In the fourth place, the applicant states that, in paragraphs 28 to 30 of the contested decision, the Board of Appeal made findings relating to the descriptive character of the sign applied for, as referred to in Article 7(1)(c) of Regulation 2017/1001, even though those findings were irrelevant for the purpose of assessing the distinctive character of a sign, within the meaning of Article 7(1)(b) thereof.
28 EUIPO disputes the applicant's arguments.
29 As a preliminary point, it should be recalled that, in accordance with Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.
30 For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
31 As regards the question whether colours or combinations of colours are capable of distinguishing the goods or services of one undertaking from those of other undertakings, it must be determined whether or not those colours or combinations of colours are capable of conveying specific information, particularly as regards the origin of a product or service (judgments of 28 January 2015, Enercon v OHIM (Gradation of five shades of the colour green), T‑655/13, not published, EU:T:2015:49, paragraph 24, and of 27 September 2018, Demp v EUIPO (Combination of the colours yellow and grey), T‑595/17, not published, EU:T:2018:609, paragraph 21; see also, by analogy, judgment of 24 June 2004, Heidelberger Bauchemie, C‑49/02, EU:C:2004:384, paragraph 37).
32 As set out in the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384, paragraph 14), in order for colours or combinations of colours which are the subject of an application for registration of a trade mark, claimed in the abstract and without contours, to be able to constitute a trade mark, they must be able to satisfy the other conditions laid down, notably in Article 7 of Regulation 2017/1001. In particular, they must be presented as a sign with distinctive character, that is to say, capable of distinguishing the product or service covered by that sign as originating from a particular undertaking, and thus capable of distinguishing that product or service from those of other undertakings (see, to that effect, judgment of 20 July 2017, Basic Net v EUIPO (Representation of three vertical stripes), T‑612/15, not published, EU:T:2017:537, paragraph 59).
33 In addition, in assessing the potential distinctiveness of a given colour or combination of colours as a trade mark, regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought (see judgment of 27 September 2018, Combination of the colours yellow and grey, T‑595/17, not published, EU:T:2018:609, paragraph 24 and the case-law cited).
34 Moreover, it should be borne in mind that the distinctive character of a sign must be assessed, first, in relation to the goods or services for which registration of the sign has been sought and, second, in relation to the perception which the relevant public has of it (see judgment of 27 September 2018, Combination of the colours yellow and grey, T‑595/17, not published, EU:T:2018:609, paragraph 25 and the case-law cited).
35 In addition, it must be noted that, although Article 7(1)(b) of Regulation 2017/1001 does not differentiate according to types of signs, the fact remains that the relevant public's perception is not necessarily the same in the case of a sign consisting of a colour or colour combination per se as it is in the case of a word or figurative mark consisting of a sign that bears no relation to the appearance of the goods that it identifies (see, to that effect, judgment of 20 July 2017, Representation of three vertical stripes, T‑612/15, not published, EU:T:2017:537, paragraph 20).
36 Therefore, for a colour combination such as the one at issue to be able to fulfil the function of identifying the commercial origin of the goods at issue, it must contain elements capable of distinguishing it from other colour combinations and of attracting the consumer's attention (see, to that effect, judgment of 12 November 2008, GretagMacbeth v OHIM (Combination of 24 coloured squares), T‑400/07, not published, EU:T:2008:492, paragraph 45).
37 It is in the light of those considerations that the Court must examine the applicant's argument that the mark applied for is not devoid of distinctive character.
38 In the present case, the sign in respect of which registration was sought consists of a systematic arrangement of two colours, namely red and white, and is composed of seven stripes of colours of equal length. The colour distribution from left to right is the following: 14.3% white; 0.45% red; 0.45% white; 69.6% red; 0.45% white; 0.45% red; 14.3% white.
39 As regards the applicant's first complaint that the Board of Appeal failed to examine the sign applied for as a whole, it should be borne in mind that, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the various features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82 and the case-law cited).
40 In the present case, although it is apparent from paragraphs 24 and 25 of the contested decision that the Board of Appeal first examined the colours red and white separately, the fact remains that it then carried out a global assessment of the distinctive character of the mark applied for. In particular, after examining the specific distribution of the colours and the specific disposition of the colour combination at issue, the Board of Appeal found, in paragraph 32 of the contested decision, that neither the two colours considered individually nor their combination rendered the mark applied for distinctive. In the light of the foregoing, the Board of Appeal did not infer the lack of distinctive character of the mark applied for from the lack of such character in the elements of which it was composed, but took account of the overall impression produced by that mark. The applicant's arguments that the Board of Appeal did not analyse the mark applied for as a combination of colours and did not consider it as a whole must therefore be rejected.
41 As regards the argument as to the account taken of the actual use of the mark applied for, it is apparent from paragraph 31 of the contested decision that the Board of Appeal explicitly found that the actual use of the sign applied for was irrelevant and merely pointed out that, even if it were relevant, such use was not liable to call into question the finding concerning the lack of distinctive character of the sign. That argument must therefore be rejected.
42 It follows that the first complaint must be rejected.
43 As regards the third complaint, the applicant submits that the examination of the distinctive character of the mark applied for was vitiated by errors of assessment.
44 In that regard, it submits that the red and white stripes making up the mark applied for are not merely decorative for the packaging of the goods at issue, that they do not take on the appearance of those goods, that they are not usual in relation to such goods, that they do not refer to any characteristic of those goods and that they are not used as such on the market by competitors. The applicant adds that the number and alternation of those stripes are not simplistic, but that, on the contrary, they have a certain complexity constituting a striking feature that attracts the attention of the relevant public and confers distinctive character on the mark applied for.
45 It should be noted that, in the light of the case-law referred to in paragraphs 30 to 36 above, the fact that a sign for which registration as an EU trade mark is sought consists of a combination of colours used in a precise systematic arrangement associating those colours in a predetermined and uniform way is not sufficient to allow it to be registered as an EU trade mark.
46 In the contested decision, the Board of Appeal found that the use of red and white was common in the market of biscuits, chocolates and pastry and that neither of those colours, considered individually, was distinctive. The applicant's argument that other colours are also used on the packaging of such goods is not such as to call that finding into question.
47 The Board of Appeal also noted that, in the context of pastries and ice creams, the colour combination of red and white was likely to create visually appealing packaging and denote specific flavours or ingredients.
48 In that regard, the applicant argues that it is not usual for the combination of the colours red and white which the mark applied for comprises to refer to particular flavours. It adds that the goods in respect of which registration is sought may incorporate a wide variety of flavours.
49 It must be stated that, by those arguments, the applicant does not dispute the reality of the Board of Appeal's finding that, in the context of pastries and ice creams, the colour combination of red and white was likely to create visually appealing packaging. The applicant merely claims that that fact is not sufficient, in itself, to prevent registration of the mark applied for. In that regard, as is apparent, in particular, from paragraphs 22 to 25 above, that is not the only ground relied on by the Board of Appeal to support its finding relating to the lack of distinctive character of the mark applied for.
50 Furthermore, the Board of Appeal found that the mark applied for consisted of a simplistic combination of two colours arranged in a number of stripes which, due to the lack of contours of that mark, could be used for advertising or promotional purposes, in order to attract the relevant public's attention. In that regard, the applicant merely claims, without substantiating its claim, that the number and alternation of the stripes making up the mark applied for are not simplistic, but that, on the contrary, they have a certain complexity which is a striking feature that attracts the attention of the relevant public. In doing so, the applicant has not established that the mark applied for contains elements capable of distinguishing it from other colour combinations and attracting the consumer's attention, within the meaning of the case-law referred to in paragraph 36 above.
51 It follows that the applicant has not shown any error of assessment vitiating the Board of Appeal's finding that the mark applied for could not convey a specific message to the relevant public.
52 In accordance with the case-law referred to in paragraph 31 above, a mark which is not capable of conveying specific information, particularly as regards the origin of a product or service, is not capable of distinguishing the goods or services of one undertaking from those of other undertakings and is, therefore, devoid of distinctive character.
53 That finding is not called into question by the applicant's argument directed against the Board of Appeal's assertion that the stripes making up the mark applied for differed in width depending on the packaging of the goods at issue, with the result that the relevant public would not perceive that fluctuating distribution as an indication of commercial origin. Even supposing that the fact alleged by the applicant that it made consistent use of the mark applied for as represented in the application for registration is established, that has no bearing on the fact that, by itself, the mark applied for is not capable of conveying specific information, in particular as to the origin of the goods at issue.
54 For the same reason, the applicant's argument that red and white stripes, arranged in the same way as in the mark applied for, are not used as such on the market by competing operators must be rejected.
55 Consequently, the Board of Appeal was right to find that the mark applied for was devoid of distinctive character, with the result that the third complaint must be rejected.
56 As regards the second complaint, concerning the misapplication of the judgment of 6 May 2003, Libertel (C‑104/01, EU:C:2003:244), it must be stated that, in support of its claims, the applicant in fact confines itself to pointing out the quotations from that judgment in the contested decision, calling into question their relevance for the assessment of the distinctive character of signs consisting of combinations of colours used in a systematic arrangement.
57 It must be held, first, that the Board of Appeal was right to refer to the relevant case-law relating to colour combinations, in particular the judgment of 24 June 2004, Heidelberger Bauchemie (C‑49/02, EU:C:2004:384, paragraphs 37 and 38). Furthermore, although the risk of undermining the general interest in not unduly restricting the availability of colours varies according to the characteristics of each sign applied for, and even if that risk is generally lower in the case of a combination of colours with a systematic arrangement than in the case of a single colour, the fact remains that, in accordance with the case-law referred to in paragraph 33 above, it is necessary to take account of that general interest in assessing the distinctive character of a sign consisting of a single colour as well as of a sign consisting of a colour combination determined by a systematic arrangement. Second, it should be noted that, as is apparent from paragraph 55 above, the Board of Appeal did not err in law or in its assessment in finding that the mark applied for was devoid of distinctive character.
58 It follows that the second complaint must be rejected.
59 As regards the fourth complaint, according to which the Board of Appeal made findings relevant to establishing the descriptive character of a sign, as referred to in Article 7(1)(c) of Regulation 2017/1001, whereas the contested decision was based solely on Article 7(1)(b) of that regulation, it should be borne in mind that there is a certain overlap between the respective scopes of Article 7(1)(b) and Article 7(1)(c) of Regulation 2017/1001. Article 7(1)(b) is distinguished from Article 7(1)(c) of that regulation in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings. In those circumstances, it is important for the correct application of Article 7(1) of Regulation 2017/1001 to ensure that the ground for refusal set out in Article 7(1)(c) of that regulation duly continues to be applied only to the situations specifically covered by that ground for refusal. The situations specifically covered by Article 7(1)(c) thereof are those in which the sign in respect of which registration as a mark is sought is capable of designating a 'characteristic' of the goods or services referred to in the application (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 47 to 49).
60 In the present case, it is apparent in particular from paragraphs 24, 25, 27 and 32 of the contested decision that the lack of distinctive character of the mark applied for, within the meaning of Article 7(1)(b) of Regulation 2017/1001, was found for reasons other than its descriptive character. More specifically, the Board of Appeal essentially rejected the application for registration on the ground that the use of the colours red and white was common in the market concerned and that their combination did not enable the relevant public to perceive the sign applied for as an indication of commercial origin. The additional findings of the Board of Appeal in paragraphs 28 to 30 of the contested decision to the effect that the colour combination applied for could be perceived as having decorative, promotional or functional purposes, namely, in order to refer to the specific flavours or the natural colour of the ingredients, are not intended to establish any possible descriptive character of the mark applied for as referred to in Article 7(1)(c) of Regulation 2017/1001, but, taking into account the associations of ideas which the mark applied for may convey, are intended to support the notion that the relevant public will perceive the sign applied for as fulfilling a function other than that of an indication of commercial origin.
61 The fourth complaint must therefore be rejected.
62 It follows that the Board of Appeal did not err in law or in its assessment in finding that the mark applied for was devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001.
63 In the light of all of the foregoing, the first plea in law must be rejected.
The third plea in law, alleging infringement of the principles of proportionality and of equal treatment
64 The applicant complains that the Board of Appeal did not comply either with its previous practice in taking decisions or with the EUIPO guidelines or learning materials, by having, first, registered other marks comparable to the mark applied for and, second, examined that mark, which is a combination of two colours in a systematic arrangement, in the light of the criteria relating to marks of a single colour. In doing so, the Board of Appeal infringed the principles of proportionality and of equal treatment.
65 EUIPO disputes the applicant's arguments.
66 As regards the similar marks cited by the applicant, it must be borne in mind that, according to settled case-law, the decisions concerning the registration of a sign as an EU trade mark which EUIPO takes under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous administrative practice (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).
67 It is true that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, including the principles of equal treatment and of sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73). In the light of those principles, EUIPO must take into account the decisions which it has already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, since the application of those principles must be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as an EU trade mark cannot rely, to that person's advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as an EU trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 to 77).
68 In addition, the EUIPO guidelines are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48).
69 In the present case, as is apparent from paragraph 62 above, the Board of Appeal was right to find that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001 and, accordingly, the applicant cannot properly rely, in order to cast doubt on that conclusion, on previous decisions of EUIPO, or on EUIPO's guidelines for examination of EU trade marks or its learning materials.
70 In addition, the complaint alleging infringement of the principle of proportionality must be rejected, since the applicant has not put forward any argument specifically relating to that principle.
71 In the light of all of the foregoing, the third plea in law must be rejected and, accordingly, the action dismissed in its entirety.
Costs
72 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings.
73 As a hearing took place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Lotus Bakeries to pay the costs.
Brkan | Tóth | Kalėda |
Delivered in open court in Luxembourg on 26 March 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
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