Solidexpert Polska v EUIPO (woodexpert) (EU trade mark - Judgment) [2024] EUECJ T-68/24 (20 November 2024)

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( EU trade mark - International registration designating the European Union - Word mark woodexpert - Absolute ground for refusal - Descriptive character - Article 7(1)(c) of Regulation (EU) 2017/1001 )

Solidexpert Polska sp. z o.o., established in Krakow (Poland), represented by M. Krekora, lawyer,

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

composed, at the time of the deliberations, of I. Nõmm (Rapporteur), acting as President, G. Steinfatt and D. Kukovec, Judges,

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,

1 By its action under Article 263 TFEU, the applicant, Solidexpert Polska sp. z o.o., seeks the partial annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2023 (Case R 1788/2023-4) (‘the contested decision’).

2 On 22 November 2022, the applicant designated the European Union in its international registration for the word mark woodexpert.

3 The mark applied for designated goods and services in Classes 9 and 42 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 corresponding, for each of those classes, to the following description:

– Class 9: ‘Computer software applications, downloadable; programs for computers; operating programs; computer programs, downloadable; computer programs, recorded’;

– Class 42: ‘Updating of computer software; software as service; duplication of computer programs; computer programming; computer software design; computer system design; engineering services; rental of computer software; interior design; design services for furniture; industrial art design; design services for industrial art design’.

4 By decision of 27 June 2023, the examiner refused to grant the mark applied for protection in the European Union for the goods and services covered by the application, on the basis of Article 7(1)(b) and (c) and Article 7(2) 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 22 August 2023, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.

6 By the contested decision, the Board of Appeal partially upheld the appeal in respect of ‘computer programming; computer software design; computer system design services’ in Class 42. The appeal was dismissed in respect of the remainder of the goods and services designated by the mark applied for, on the basis of Article 7(1)(b) and (c), read in conjunction with Article 7(2) of Regulation 2017/1001.

– annul the contested decision in so far as it dismissed the appeal and upheld the refusal of the protection sought;

– order the applicant to pay the costs incurred by EUIPO in the event that an oral hearing is convened.

9 The applicant puts forward, in essence, three pleas in law. The first alleges infringement of Article 7(1)(c) of Regulation 2017/1001, the second, infringement of Article 7(1)(b) of that regulation, and the third, infringement of Article 27(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), read in conjunction with Article 42(2) and Article 70(2) of Regulation 2017/1001.

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

10 The applicant disputes the Board of Appeal’s assessment in so far as it found that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001 of all the goods designated by it in Class 9 and the services ‘updating of computer software; software as service; duplication of computer programs; computer programming; computer software design; computer system design; engineering services; rental of computer software; interior design; design services for furniture; industrial art design; design services for industrial art design’ in Class 42 and designated by the mark applied for. In addition, it submits that the alleged infringement of Article 7(1)(c) of Regulation 2017/1001 also results in infringement of Article 42(1) of that regulation.

12 As a preliminary point, it must be stated that, contrary to what the applicant claims, the Board of Appeal did not find that the mark applied for was descriptive of the services of computer programming, computer software design and computer system design. As stated in paragraph 6 above, so far as concerns those services, the applicant’s appeal before the Board of Appeal was upheld.

13 In accordance with 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 must not be registered. Under 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.

14 For a sign to fall within the scope of the prohibition laid down 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 relevant public immediately, and without further thought, to perceive 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 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).

17 In the present case, the Board of Appeal considered that the goods and services covered by the mark applied for were intended for both the professional public and the general public, with a level of attention varying from average to ‘higher than average’. In addition, given that the mark applied for is composed of English words, it considered that the mark was aimed at the English-speaking public in the European Union.

18 There is no need to call into question those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant.

19 The Board of Appeal noted that the mark applied for was composed of two words, namely ‘wood’ and ‘expert’, which had been brought together without introducing any unusual variations. It also found that the English word ‘wood’ designated, inter alia, a material and the English word ‘expert’ designated a person who is very skilled at doing something, or who knows a lot about a particular subject. It then concluded that the relevant public would understand the element ‘woodexpert’ as designating a specialist in the field of lumber, timber, woodland or things made from wood.

20 There is no need to call into question those assessments on the part of the Board of Appeal, which are not, moreover, disputed by the applicant.

21 The Board of Appeal noted in essence that the mark applied for was descriptive of the goods in Class 9 covered by that mark and of the services ‘updating of computer software; software as service; duplication of computer programs; engineering services; rental of computer software; interior design; design services for furniture; industrial art design; design services for industrial art design’ in Class 42 and designated by the mark applied for, since the relevant public would perceive the sign at issue as providing information that those goods and services are for, or provided by, skilful specialists or entities specialised in the field of wood.

22 As regards the goods in Class 9 referred to in paragraph 3 above, the applicant submits that there is no clear relationship between those goods and tangible materials, such as wood. It maintains that those goods are not made of wood and that, in order to design or supply those goods, it is not necessary for the expert to be a wood specialist. It notes that the same applies to the services related to computer programs, namely ‘updating of computer software; software as service; duplication of computer programs; computer programming; computer software design; computer system design; rental of computer software’ in Class 42, since those services are not provided by specialists in the field of wood but by specialists in the field of computer science.

23 In support of those arguments, it refers to various registrations of EU word marks with a specific meaning and to EU trade marks containing the term ‘wood’ designating software in Class 9 and services related to software in Class 42. It submits that the relevant public is accustomed to being exposed to trade marks with a specific meaning designating the goods and services in question and that it therefore does not perceive the word elements as describing the content of those goods and services.

24 It must be borne in mind that a trade mark’s descriptive character must be assessed in relation to the goods and services for which the mark was registered and in the light of the presumed perception of an average consumer of the category of goods and services in question, who is reasonably well informed and reasonably observant and circumspect (judgment of 22 November 2011, LG Electronics v OHIM (DIRECT DRIVE), T‑561/10, not published, EU:T:2011:685, paragraph 18).

25 According to the case-law, when registration of a sign as an EU trade mark is sought without distinction for a category of goods or services as a whole and that sign is descriptive in relation to only some of the goods or services within that category, the ground for refusal in Article 7(1)(c) of Regulation 2017/1001 nevertheless prevents registration of that sign for the whole of the category concerned (see, to that effect, judgments of 12 May 2016, Zuffa v EUIPO (ULTIMATE FIGHTING CHAMPIONSHIP), T‑590/14, not published, EU:T:2016:295, paragraph 61, and of 9 March 2022, Telefónica Germany v EUIPO (LOOP), T‑132/21, not published, EU:T:2022:124, paragraph 45 and the case-law cited).

26 Moreover, 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).

27 It should be noted that the goods in Class 9 referred to in paragraph 3 above and the services ‘updating of computer software; software as service; duplication of computer programs; rental of computer software’ in Class 42 are described in a broad and general manner in the application for registration of the mark applied for, without their exact content being specified. It must be borne in mind that, in accordance with the case-law cited in paragraph 24 above, a mark’s descriptive character must be assessed in relation to the goods and services as set out in the application for registration. Therefore, in view of the fact that the mark applied for designates broad and general categories of goods and services, it cannot be ruled out that, inter alia, the software, programs and services covered by the mark applied for provide content related to wood as a common material, are intended for wood experts or help people to become skilled in the field of wood.

28 Therefore, as the Board of Appeal found, it must be held that the word sign woodexpert can describe characteristics, such as the intended purpose or quality, of some of the goods and services designated by the mark applied for and, accordingly, that mark will be understood directly and immediately by the relevant public as describing those goods and services.

29 Even if, at the time of the application for registration, the mark applied for had not actually been used in a way that was descriptive of the goods and services in question, namely for goods and services related to the field of wood, that does not preclude such use in the future. According to the case-law cited in paragraph 26 above, such a possibility of future use in a way that is descriptive is sufficient to refuse to grant the protection sought.

30 Consequently, the mark applied for is caught by the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001 in respect of the goods and services referred to in paragraph 27 above.

31 As regards the services ‘engineering services; interior design; design services for furniture; industrial art design; design services for industrial art design’ in Class 42 and designated by the mark applied for, the applicant submits that they can refer to a material such as wood, but also to other materials given that the list of services designated by the mark applied for does not indicate that those services relate specifically to any type of wood or woodworking. In addition, it highlights several word marks containing the word ‘wood’ registered for identical or similar services.

32 As the applicant itself acknowledges in paragraph 35 of the application, the services referred to in paragraph 31 above can refer to a material such as wood. Thus, as the Board of Appeal correctly stated, it cannot be ruled out that the relevant public will perceive the sign ‘woodexpert’ as an indication that those services, which require a high degree of expertise, are provided by a specialist in the field of wood and the sign will therefore be descriptive of the nature and quality of those services.

33 The applicant’s argument that the services at issue may also refer to other materials cannot call that assessment into question since, in accordance with the case-law cited in paragraph 25 above, even if the sign is descriptive in relation to only some of the services at issue, the ground for refusal in Article 7(1)(c) of Regulation 2017/1001 nevertheless prevents registration of that sign for the whole of the category concerned. If the sign at issue were to be registered as an EU trade mark for the category covered by the application for registration, there would be nothing to preclude the applicant from also using it for services in that category of which it is descriptive (see, to that effect, judgment of 8 May 2019, Team Beverage v EUIPO (WEIN FÜR PROFIS), T‑57/18, not published, EU:T:2019:313, paragraph 29 and the case-law cited).

34 Consequently, the Board of Appeal was right to conclude that the mark applied for had a descriptive character for the purposes of Article 7(1)(c) of Regulation 2017/1001 in relation to the goods in Class 9 covered by the mark applied for and in relation to the services ‘updating of computer software; software as service; duplication of computer programs; engineering services; rental of computer software; interior design; design services for furniture; industrial art design; design services for industrial art design’ in Class 42 covered by the mark applied for.

35 That assessment cannot be called into question by the applicant’s arguments alleging that EUIPO has already registered, on the one hand, other trade marks containing the words ‘wood’ or ‘expert’ and, on the other, trade marks with a specific meaning which designate some of the goods or services in question.

36 In that regard, it should be borne in mind that the decisions concerning registration of a sign as an EU trade mark which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).

37 It is true that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle 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 already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. However, the way in which those principles are applied must be consistent with respect for the principle of legality (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 and 75).

38 Consequently, a person who files an application for registration of a sign as an EU trade mark cannot rely, to his or her 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 76 and 77).

39 In the present case, as is apparent from paragraphs 17 to 34 above, the Board of Appeal correctly found, after a strict and comprehensive examination, that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001, and therefore the applicant cannot reasonably rely, for the purposes of casting doubt on that conclusion, on earlier registrations by EUIPO.

40 As regards the complaint relating to the alleged infringement of Article 42(1) of Regulation 2017/1001, in the absence of an infringement of Article 7(1)(c) of that regulation, that complaint must be rejected since, in support of that complaint, the applicant relies only on infringement of Article 7(1)(c) of Regulation 2017/1001.

41 In the light of the foregoing, the first plea in law must be rejected as unfounded.

The second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001

42 The applicant submits, in essence, that the mark applied for is not devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

44 According to settled case-law, it is clear from the wording of Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign applied for not to be registrable as an EU trade mark (see judgment of 28 April 2021, Freistaat Bayern v EUIPO (GEWÜRZSOMMELIER), T‑348/20, not published, EU:T:2021:228, paragraph 62 and the case-law cited).

45 Consequently, in so far as the Board of Appeal rightly concluded that the mark applied for was descriptive in relation to the goods and services referred to in paragraph 34 above, for the purposes of Article 7(1)(c) of Regulation 2017/1001, it is not necessary to examine the merits of the plea alleging infringement of Article 7(1)(b) of that regulation.

The third plea in law, alleging infringement of Article 27(1) of Delegated Regulation 2018/625, read in conjunction with Article 42(2) and Article 70(2) of Regulation 2017/1001

46 The applicant submits that, in paragraph 25 of the contested decision, the Board of Appeal appears to have stated that the mark applied for would not have been descriptive and would have had distinctive character in relation to the services ‘updating of computer software; duplication of computer programs; rental of computer software and software as service’ had the applicant amended the list of services in such a way as to exclude services relating to wood or expertise in the field of wood from the application for registration of the mark applied for. However, since the applicant was not informed of such a possibility of amending the list of services at issue, which would have enabled it to obtain the protection sought, the Board of Appeal infringed Article 27(1) of Delegated Regulation 2018/625, read in conjunction with Article 42(2) and Article 70(2) of Regulation 2017/1001.

48 Under Article 27(1) of Delegated Regulation 2018/625, in ex parte proceedings, and with respect to those goods or services which form part of the subject matter of the appeal, the Board of Appeal, in compliance with Article 45(3) of Regulation 2017/1001, must proceed in accordance with Article 42 of Regulation 2017/1001 where it raises a ground for refusal of the trade mark application which had not already been invoked in the decision subject to appeal in application of that provision.

49 Under Article 42(2) of Regulation 2017/1001, the application must not be refused before the applicant has been allowed the opportunity to withdraw or amend the application or to submit his or her observations. To this effect, EUIPO must notify the applicant of the grounds for refusing registration and must specify a period within which he or she may withdraw or amend the application or submit his or her observations. Where the applicant fails to overcome the grounds for refusing registration, EUIPO must refuse registration in whole or in part.

50 Article 70(2) of Regulation 2017/1001 provides that, in the examination of the appeal, the Board of Appeal is to invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself.

51 In paragraph 24 of the contested decision, the Board of Appeal concluded that consumers will perceive the mark applied for as an indication that the goods at issue enable or facilitate expertise in the field of wood or that they are suitable or sophisticated enough for those who already have expertise in the field of wood. In paragraph 25 of the contested decision, the Board of Appeal found that the same was true for the services ‘updating of computer software; duplication of computer programs; rental of computer software and software as service’ in Class 42 since they will be perceived as being directly related to the same purpose and quality, and the concomitant software as a service constitutes the support platform by virtue of which the benefits of the content are provided, in circumstances where the holder of the international registration did not exclude wood or wood expertise from its field of application.

52 As observed by EUIPO, it must be noted that it is not apparent from the wording of paragraph 25 of the contested decision that the Board of Appeal had stated that, had the applicant amended the list of goods and services in question in such a way as to exclude services relating to wood or expertise in the field of wood from the application for registration, it would have obtained the protection sought. That paragraph appears to specify the scope of the list of services at issue, which is, moreover, as already indicated in paragraph 27 above, described in a broad and general manner, with the result that the services relating to wood cannot be excluded from that list.

53 Therefore, contrary to what the applicant claims, the Board of Appeal did not raise a new ground for refusal within the meaning of Article 27(1) of Delegated Regulation 2018/625 in the contested decision, since the ground for refusal in Article 7(1)(c) of Regulation 2017/1001 was put forward by the examiner in the decision of 27 June 2023. In that decision, the examiner’s conclusion, in respect of the services referred to in paragraph 51 above, was similar to that of the Board of Appeal, to the effect that the sign applied for will be perceived as providing information regarding the fact that those services are for, or provided by, specialists in the field of wood.

54 Consequently, the Board of Appeal cannot be held to have infringed Article 27(1) of Delegated Regulation 2018/625, read in conjunction with Article 42(2) and Article 70(2) of Regulation 2017/1001.

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

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Solidexpert Polska v EUIPO (woodexpert) (EU trade mark - Judgment) [2024] EUECJ T-68/24 (20 November 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T6824.html Cite as: EU:T:2024:847, [2024] EUECJ T-68/24, ECLI:EU:T:2024:847

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