BACKGROUND TO THE DISPUTE

On 6 May 2019, the applicant, Mr Beelow, applied to the European Union Intellectual Property Office (EUIPO) for registration of a European Union trade mark. The trade mark applied for is the word sign ‘made of Wood’.

The goods in respect of which registration was sought are in Class 25 within the meaning of the Nice Agreement and correspond to the following description: ‘T-shirts; sleeveless pullovers; polo shirts; polo jerseys; jumpers; hooded sweatshirts; shirts; waistcoats; sportswear; trousers; shorts; leggings [trousers]; overcoats; caps; caps; socks; underwear; blouses; skirts; dresses; baseball caps; sports shirts; jackets’.

By decision of 13 November 2019, the examiner refused the application for registration of the said mark on the grounds that it was devoid of distinctive character and was a descriptive mark.

On 14 January 2020, the applicant appealed to EUIPO. The Second Board of Appeal of EUIPO dismissed the appeal.

DECISION OF THE GENERAL COURT

The applicant relies, in essence, on two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation 2017/1001 and the second alleging infringement of Article 7(1)(b) of that regulation.

First plea in law, alleging infringement of Article 7(1)(c) of Regulation No 2017/1001

Under Article 7(1)(c) of Regulation 2017/1001, trademarks 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.

The Board of Appeal was entitled to focus its analysis on the English-speaking general public of the European Union with an average level of attention in order to assess the descriptive character of the mark applied for, within the meaning of Article 7(1)(c) of Regulation 2017/1001.

It is appropriate to examine the meaning of the words ‘of wood’ for the relevant public and the relationship between that meaning and the goods covered.

It should be recalled that, in order to ensure that the objective of freedom of use pursued by Article 7(1)(c) of Regulation No 2017/1001 is fully achieved, it is sufficient, for EUIPO to refuse registration on the basis of that provision, that the sign at issue may be used for descriptive purposes (Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I-0000, paragraph 38 and the case-law cited). A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (order of 5 February 2010 in Case C-80/09 P Mergel and Others v OHIM, not published, EU:C:2010:62, paragraph 37, and the case-law cited). Moreover, it is irrelevant that there are other signs more commonly used than the sign at issue to designate the same characteristics of the goods or services covered by the application for registration (Case C-51/10 P Agencja Wydawnicza Technopol v OHIM, EU:C:2011:139, paragraph 39, and the case-law cited).

The general public will understand the sign ‘made of Wood’, used in relation to clothing, in at least one of its possible meanings, as a description of the natural material from which such clothing is made and it could therefore be used for descriptive purposes by all economic operators who manufacture or could manufacture clothing from wood.

In so far as the mark applied for is considered descriptive, there is a direct public interest in not registering the sign as a trade mark (judgment of 11 February 2020, Stada Arzneimittel v EIPO (ViruProtect), T-487/18, not published, EU:T:2020:44, paragraph 47).

Therefore, even if there were literally more correct and more common formulations in English to indicate that the goods in question, namely different types of clothing, had been made of wood, such as ‘made from wood’, there was a public interest in maintaining the availability of the expression ‘made of wood’ for clothing.

Therefore, the Board of Appeal, in the contested decision, rightly upheld the refusal of the application for registration on the basis of Article 7(1)(c) of Regulation 2017/1001.

The first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 2017/1001, must therefore be rejected. 

Second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 2017/1001

EUIPO contests the applicant’s arguments and concludes that the second plea in law must be rejected as inoperative and, in any event, unfounded.

As is clear from Article 7(1) of Regulation No 2017/1001, it is sufficient that one of the absolute grounds for refusal applies for the sign not to be registered as an EU trade mark (Case C-104/00 P DKV v OHIM [2002] ECR I-0000, paragraph 29).

Since the first plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001, has already been rejected as unfounded, it is no longer necessary to rule on the merits of the second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001.

In the light of all the foregoing findings, the General Court dismissed the present action in its entirety.

JUDGMENT OF THE COURT 15 September 2021. Case T-702/20.