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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Summerbird v EUIPO - Puratos (AMBER) (EU trade mark - Judgment) [2025] EUECJ T-1121/23 (05 March 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T112123.html Cite as: EU:T:2025:203, [2025] EUECJ T-1121/23, ECLI:EU:T:2025:203 |
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JUDGMENT OF THE GENERAL COURT (Second Chamber)
5 March 2025 (*)
( EU trade mark - Invalidity proceedings - EU word mark AMBER - Absolute ground for invalidity - Descriptive character - Article 7(1)(c) of Regulation (EU) 2017/1001 )
In Case T‑1121/23,
Summerbird A/S, established in Assens (Denmark), represented by T. Kruse Lie and A.-S. Kjeldbjerg Hilligsøe, lawyers,
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, intervener before the General Court, being
Puratos, established in Dilbeek (Belgium), represented by S. Debaene and H. Haouideg, lawyers,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, W. Valasidis (Rapporteur) and L. Spangsberg Grønfeldt, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 8 November 2024,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Summerbird A/S, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 September 2023 (Case R 1816/2022-1) (‘the contested decision’).
Background to the dispute
2 On 25 January 2021, the intervener, Puratos, filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed by the applicant on 10 May 2019 for the word sign AMBER.
3 The goods and services covered by the contested mark, in respect of which a declaration of invalidity was sought, were in Classes 30 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 corresponded, for each of those classes, inter alia, to the following description:
– Class 30: ‘Confectionery, namely chocolate and prepared desserts [pastries], chocolate eggs, chocolate decorations, chocolate coated nuts, chocolate sauces, chocolate creams, chocolate syrup, chocolate marzipan, chocolate shells, chocolate powder, chocolate mousses, imitation chocolate, chocolate based fillings, chocolate coffee, beverages containing chocolate; chocolate pastries, chocolate food beverages not being dairy-based or vegetable based’;
– Class 35: ‘Retailing and wholesaling, including via the internet, of chocolate nut butter, milk-based beverages flavoured with chocolate, retailing and wholesaling, including via the internet, of confectionery, namely chocolate and prepared desserts [pastries], chocolate eggs, chocolate decorations, chocolate-coated nuts, chocolate sauce, chocolate cream, chocolate syrup, chocolate marzipan, chocolate shells, chocolate powder, chocolate mousses, imitation chocolate, chocolate-based fillings, chocolate coffee, chocolate-based beverages, chocolate pastries; retailing and wholesaling, including via the internet, of chocolate food beverages, not being dairy or vegetable-based’.
4 The grounds relied on in support of the application for a declaration of invalidity were those referred to 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)(c), (d) and (e)(i) of that regulation.
5 On 26 July 2022, the Cancellation Division rejected the application for a declaration of invalidity.
6 On 16 September 2022, the intervener 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 in part. In particular, it declared the contested mark invalid, on the basis of Article 7(1)(c) of Regulation 2017/1001, in respect of all the goods and services referred to in paragraph 3 above.
Forms of order sought
8 The applicant claims, in essence, that the Court should:
– annul the contested decision in so far as the Board of Appeal found that the contested mark was descriptive;
– reject the application for a declaration of invalidity of the contested mark in its entirety or at least in part;
– order EUIPO to pay the costs, including those incurred before the Board of Appeal.
9 EUIPO contends that the Court should:
– dismiss the action;
– in essence, alter the contested decision;
– order the applicant to pay the costs in the event that an oral hearing is convened.
10 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of EUIPO’s request seeking to alter the contested decision
11 In its response, EUIPO requests the extension of the scope of the invalidity to the entire broad categories of ‘confectionery’ in Class 30 and of ‘retailing and wholesaling, including via the internet, of confectionery’ in Class 35. It confirmed at the hearing that that request sought the alteration of the contested decision. However, that request must be rejected as inadmissible, to the extent that it seeks the alteration of that decision on a point not raised in the application (see, to that effect, judgment of 20 December 2023, Pierre Balmain v EUIPO – Story Time (Representation of a lion’s head encircled by rings forming a chain), T‑564/22, not published, EU:T:2023:851, paragraph 12 and the case-law cited).
Admissibility of Annex A.7 to the application
12 The intervener contends that Annex A.7 to the application is a new document, produced for the first time before the Court. That document is, therefore, inadmissible.
13 Annex A.7 to the application is a copy of the national patent DK 180989 B1 by which the applicant’s production method for its chocolate product ‘AMBER chocolate’ is allegedly protected.
14 It should be noted that that document was produced for the first time before the Court, a matter which is not disputed by the applicant. However, the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, with the result that it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
15 Consequently, Annex A.7 to the application must be rejected as inadmissible.
The merits of the single plea in law
16 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(c) and Article 7(2) of Regulation 2017/1001. It submits that the Board of Appeal incorrectly found that the contested mark was descriptive in respect of the goods and services at issue at the date of the filing of the application for registration. The applicant’s plea in law is based on three complaints.
17 First of all, the Board of Appeal took into account evidence dated after the filing date of the application for registration of the contested mark. The Board of Appeal did not explain why that evidence, despite being dated after that filing date, enabled conclusions to be drawn with regard to the situation as it was on that date.
18 Next, the Board of Appeal made an error of assessment in finding that the evidence referred to in paragraphs 48 and 49 of the contested decision showed that, on the date of the filing of the application for registration of the contested mark, the English word ‘amber’ designated a type of chocolate.
19 Lastly, the Board of Appeal concluded that the English word ‘amber’ designated a type of chocolate, without, however, elaborating upon what exactly is meant by the term ‘type’, for example, the intended purpose, kind, colour, quality or something else, within the meaning of Article 7(1)(c) of Regulation 2017/1001. It also failed to identify the characteristic that the aforementioned word represents for chocolate products.
20 EUIPO and the intervener dispute the applicant’s claims.
21 Pursuant to Article 59(1)(a) of Regulation 2017/1001, an EU trade mark is to be declared invalid on application to EUIPO where the EU trade mark has been registered contrary to the provisions of Article 7 thereof.
22 Under Article 7(1)(c) of Regulation 2017/1001, 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.
23 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).
24 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 public has 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).
25 For a sign to fall within the scope of the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of 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).
26 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 2017/1001 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).
27 In order for EUIPO to refuse to register a trade mark under Article 7(1)(c) of Regulation 2017/1001, 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 (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
28 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 2017/1001, 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, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 44 and the case-law cited).
29 It is in the light of those considerations that the applicant’s single plea in law must be examined.
The relevant public
30 In the contested decision, the Board of Appeal found that the goods and services at issue targeted the public at large displaying a low to average level of attention. In addition, it found that, since the contested mark consisted of an English word, it was appropriate to examine it with regard to the public in the Member States in which English is an official language, namely Ireland and Malta, and to the public in the Member States where the basic understanding of English is a well-known fact, namely Denmark, Sweden, Finland, the Netherlands and Cyprus.
31 There is no reason to call into question those assessments, which are not disputed by the applicant.
The descriptive character of the contested mark in relation to the goods and services at issue
32 In the contested decision, the Board of Appeal found that the contested mark consisted of the English word ‘amber’, which describes, inter alia, a certain colour, which is, moreover, not disputed by the applicant.
33 Departing from the Cancellation Division’s assessment, the Board of Appeal found that the evidence submitted showed that the English word ‘amber’ was also used to describe a type of chocolate, namely caramelised white chocolate. In particular, the Board of Appeal concluded that that word was used, on the date of the filing of the application for registration of the contested mark, and subsequently, to describe an objectively and inherently relevant characteristic of the goods and services at issue, since it indicated a type of chocolate.
34 The three complaints in the single plea in law, as identified in paragraphs 17 to 19 above, concern that aspect of the dispute.
35 As regards the first complaint, alleging that the Board of Appeal made an error in taking into consideration, in paragraph 47 of the contested decision, evidence dated after the filing date of the application for registration of the contested mark, it should be borne in mind that, according to the case-law, the only date relevant for the purposes of the assessment of an application for a declaration of invalidity based on Article 59(1)(a) of Regulation 2017/1001 is that filing date. The case-law also allows material subsequent to that date to be taken into account, provided that it is relevant to the situation as it was on the date in question (see, to that effect, judgment of 3 June 2009, Frosch Touristik v OHIM – DSR touristik (FLUGBÖRSE), T‑189/07, EU:T:2009:172, paragraphs 19 and 28).
36 In the present case, the relevant date for analysing whether the contested mark complies with Article 7(1)(c) of Regulation 2017/1001 is therefore that of the filing of the application for registration of that mark, namely 10 May 2019.
37 The Board of Appeal found, in paragraph 47 of the contested decision, that among the evidence submitted, at the very least the documents from five chocolate makers identified in Annex 12 to EUIPO’s file show that the English word ‘amber’ is used to designate a type of chocolate.
38 It is true that the only date referred to in the documents at issue, consisting of extracts from official websites of undertakings which use the English word ‘amber’ to designate a type of chocolate, is that of 11 August 2022 and that that date, which corresponds to the date on which those extracts were printed, postdates the filing date of the application for registration of the contested mark.
39 However, it is apparent, in particular, from paragraphs 48 and 49 of the contested decision that the Board of Appeal also relied on other evidence, which predates the filing date of the application for registration of the contested mark, before concluding in paragraph 50 of that decision that the English word ‘amber’ had been used descriptively on that date. In that earlier evidence, dating from 2015 to 2017, it was stated that that word designates a type of chocolate. The documents at issue, despite being dated after the date of that filing, thus show that that meaning of that word remained unchanged after the date of that filing. Those documents thus enable, together with that earlier evidence, conclusions to be drawn with regard to the situation as it was on the date of filing, in accordance with the case-law cited in paragraph 35 above.
40 In those circumstances, the Board of Appeal did not err in taking into consideration the documents at issue in its assessment, in paragraph 47 of the contested decision.
41 Consequently, the first complaint must be rejected.
42 As regards the second complaint, first, the applicant submits that it is apparent from the use of the expression ‘i.e.’ rather than the expression ‘e.g.’ that the extract from the blog of Jeff de Bruges dating from 2017 (Annex 12 to EUIPO’s file) is the only evidence to which the Board of Appeal refers in paragraph 48 of the contested decision. In that regard, it must be stated, as is apparent from the expression ‘much of the evidence’ at the beginning of that paragraph, that it cannot be inferred from the mere use of the conjunction ‘i.e.’ that the Board of Appeal refers to a single item of evidence (in the present case, the aforementioned extract), rather than to that Annex 12 as a whole, which also contains extracts from catalogues, blogs and social media posts relating to the marketing of chocolate named ‘Amber chocolate’.
43 Second, the applicant submits that the evidence which predates the filing date of the application for registration of the contested mark did not show a descriptive use of the English word ‘amber’ to designate a type of chocolate. It claims that the extract from the Jeff de Bruges blog, to which the Board of Appeal refers in paragraph 48 of the contested decision, does not make it possible to understand how the relevant public perceives that word. According to the applicant, that word, read in conjunction with the explanation ‘caramelised white chocolate’ accompanying it, would be understood as designating the colour of chocolate, rather than a reference to a type of chocolate.
44 Moreover, the applicant claims that the extracts, dated 2015 and 2016, from its own official Facebook page and its 2018 sales catalogue, referred to in paragraph 49 of the contested decision, do not show a descriptive use of the English word ‘amber’ to designate a type of chocolate, given that it is not possible for the relevant public to understand, without further reflection, to which characteristic that word refers. According to the applicant, that evidence shows that that word was used to designate its own subline of chocolate products, protected by a patent, a copy of which appears in Annex A.7 to the application, and not a kind or type of chocolate.
45 As regards the Jeff de Bruges blog, it must be pointed out that it shows the use of the English word ‘amber’ to designate a type of chocolate, namely caramelised white chocolate, as opposed to other types of chocolate, such as milk chocolate or dark chocolate. The applicant merely states, without substantiating its claims, that ‘it seems’ that that word refers to the amber colour of chocolate rather than to the type of chocolate. In addition, the applicant does not explain the impact of that meaning of that word on the Board of Appeal’s reasoning.
46 As regards the screenshots of the applicant’s official Facebook page and its 2018 sales catalogue, it must be held, as the Board of Appeal found, that that evidence shows that amber white chocolate was a type of chocolate on the market. The applicant has not, moreover, adduced any evidence or put forward any argument capable of calling into question the Board of Appeal’s assessment.
47 As regards the applicant’s argument that the evidence in paragraph 49 of the contested decision does not demonstrate descriptive use of the contested mark, but rather exclusive use of the term ‘amber’, it must be stated that that argument is based solely on Annex A.7 to the application, which, as is apparent from paragraph 15 above, is inadmissible in the present case.
48 In any event, the fact, even if it were established, that ‘AMBER chocolate’ is protected by the applicant’s national patent has no effect on the Board of Appeal’s assessment of the use of the word ‘amber’ to designate a type of chocolate.
49 Consequently, the Board of Appeal correctly found that all the evidence showed that it was reasonable to assume that the English word ‘amber’ could actually be recognised by the relevant public as designating a type of chocolate.
50 In the light of the foregoing considerations, the second complaint must be rejected.
51 As regards the third complaint, alleging that the Board of Appeal failed to identify, in the contested decision, the characteristic which the word ‘amber’ represents for chocolate products, 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 2017/1001, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, second, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited).
52 Contrary to what the applicant claims, the Board of Appeal identified which characteristic of the goods and services at issue was relied upon in order to establish the descriptive character of the contested mark. It found that, in the light of the evidence submitted, the English word ‘amber’ was used to describe a type of chocolate, namely caramelised white chocolate, and that, for chocolate products, the contested mark would be understood as referring to a specific variety of chocolate.
53 The applicant also maintains that the Board of Appeal did not establish that the English word ‘amber’ describes a characteristic which is objective and inherent to the nature of chocolate products and intrinsic and permanent for them, within the meaning of the case-law cited in paragraph 28 above. It must be stated, however, as the Board of Appeal expressly noted in paragraph 50 of the contested decision, that that word, which was capable of describing a type of chocolate, corresponds to a characteristic which is objective and inherent to the nature of those products and intrinsic and permanent for them. The applicant has not, moreover, put forward any argument capable of calling into question the Board of Appeal’s assessment.
54 Consequently, the applicant’s third complaint must be rejected.
55 It follows from all the foregoing considerations that the single plea in law must be rejected as unfounded and, therefore, the action must be dismissed in its entirety.
Costs
56 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.
57 Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Summerbird A/S to pay the costs.
Marcoulli | Valasidis | Spangsberg Grønfeldt |
Delivered in open court in Luxembourg on 5 March 2025.
V. Di Bucci | M. van der Woude |
Registrar | President |
* Language of the case: English.
© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.
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URL: http://www.bailii.org/eu/cases/EUECJ/2025/T112123.html