Washtower IP v EUIPO - LG Electronics (WASHTOWER) (EU trade mark - Judgment) [2024] EUECJ T-376/23 (20 November 2024)

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( EU trade mark - Invalidity proceedings - EU word mark WASHTOWER - Absolute ground for invalidity - Descriptiveness - Article 7(1)(c) and Article 59(1)(a) of Regulation (EU) 2017/1001 )

Washtower IP BV, established in Hengelo (Netherlands), represented by L. Fresco, lawyer,

European Union Intellectual Property Office (EUIPO), represented by M. Eberl and V. Ruzek, acting as Agents,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

LG Electronics, Inc., established in Seoul (South Korea), represented by M. Graf, lawyer,

composed of M.J. Costeira, President, P. Zilgalvis and E. Tichy‑Fisslberger (Rapporteur), Judges,

1 By its action under Article 263 TFEU, the applicant, Washtower IP BV, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 April 2023 (Case R 412/2022-5) (‘the contested decision’).

2 On 7 February 2020, Verburg Holding BV filed an application for registration of an EU trade mark for the word sign WASHTOWER.

3 The mark applied for designated goods in Class 20 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: ‘Furniture, namely cabinets for washing machines or clothes dryers; cupboards’.

4 That application was published in European Union Trade Marks Bulletin No 36/2020 of 24 February 2020.

5 On 25 May 2020, in accordance with Article 45(1) 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), the intervener, LG Electronics, Inc., submitted written observations to EUIPO. In those observations, the intervener asserted that the mark applied for was descriptive and devoid of any distinctive character, and that EUIPO should have therefore refused to register it ex officio.

6 On 2 July 2020, Verburg Holding notified EUIPO of the transfer of the trade mark application to the applicant, Washtower IP BV, then named BFA Verburg BV.

7 On 21 July 2020, the mark applied for was registered without EUIPO having replied to the intervener’s observations referred to in paragraph 5 above.

8 On 10 March 2021, the intervener filed an application with EUIPO for a declaration of invalidity of the EU trade mark WASHTOWER.

9 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation.

10 On 22 February 2022, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation, and declared the contested mark invalid in its entirety.

11 On 16 March 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

12 By the contested decision, the Board of Appeal dismissed the appeal. In essence, the Board of Appeal found that the contested mark was descriptive of the goods it covered for the relevant English-speaking public and was therefore devoid of any distinctive character as regards the goods concerned. In particular, it held that the term ‘washtower’ would immediately be understood by the relevant consumers as referring to a tall structure housing machinery or parts used in the process of washing, which was a direct reference to the purpose, shape and kind of the goods in question.

– annul the contested decision and dismiss the intervener’s application for a declaration of invalidity;

– order the applicant to pay the costs, in the event that a hearing is convened.

– order the applicant to pay the costs, including those incurred before the Board of Appeal.

Admissibility of the evidence adduced for the first time before the Court

16 EUIPO, supported by the intervener, submits that part of the evidence submitted by the applicant for the first time before the Court by separate document lodged at the Court Registry on 16 November 2023, namely promotional material, is inadmissible, given that that evidence refers to facts. The intervener adds that the other part of that evidence, namely the decision of 13 November 2023 of the United Kingdom Intellectual Property Office, is inadmissible because it was submitted out of time.

17 In the present case, it should be noted that, by document lodged at the Court Registry on 16 November 2023, the applicant submitted new evidence for the first time before the Court. The documents lodged were, first, a decision of 13 November 2023 of the United Kingdom Intellectual Property Office, and secondly, promotional material used by the intervener in the European Union for dryers stacked on top of washing machines, demonstrating the intervener’s marketing of those products under the name WashTower with the ™ symbol.

18 In this respect, first of all, it should be recalled that, under Article 85(3) of the Rules of Procedure of the General Court, the main parties may produce or offer further evidence before the oral part of the procedure is closed, provided that the delay in the submission of such evidence is justified.

19 First, as regards the document concerning the intervener’s promotional material, it is apparent from a letter from the applicant, submitted by the intervener with its observations of 5 December 2023, that, at the time when the application was lodged, the applicant was already aware of the advertising campaign for products bearing the name WashTower by the intervener. Therefore, the late submission of the promotional material is not justified, within the meaning of Article 85(3) of the Rules of Procedure, and must therefore be regarded as inadmissible.

20 Secondly, as regards the decision of the United Kingdom Intellectual Property Office, it should be noted that that decision was given on 13 November 2023, that is to say, more than four months after the application was lodged with the Court. Consequently, the applicant could not have submitted that decision at the stage of the application. That delay in its submission is therefore justified.

21 Also, it must be recalled that the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 95 thereof requires that that review be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN), T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter the decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).

22 It is therefore not the Court’s function to re-examine the factual circumstances in the light of evidence adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure, according to which the parties’ submissions may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).

23 Nonetheless, according to the case-law, a party is entitled to produce for the first time before the Court documents that are not strictly evidence but rather draw on EU, national or international case-law, even after the proceedings before EUIPO are complete. Indeed, neither the parties nor the Court itself can be precluded from drawing on EU, national or international case-law for the purpose of interpreting EU law (see judgment of 14 March 2018, Crocs v EUIPO – Gifi Diffusion (Footwear), T‑651/16, not published, EU:T:2018:137, paragraph 17 and the case-law cited).

24 It follows that the submission of the decision of 13 November 2023 of the United Kingdom Intellectual Property Office is admissible. The plea of inadmissibility raised by the intervener in that regard must therefore be dismissed.

25 The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) of that regulation, and secondly, infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) of that regulation.

26 As a preliminary point, under Article 59(1)(a) of Regulation 2017/1001, an EU trade mark is to be declared invalid, in particular on application to EUIPO, where it has been registered contrary to the provisions of Article 7 of that regulation.

27 An EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. The contested mark therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration. In those circumstances, it is for the person who has filed the application for a declaration of invalidity to place before EUIPO the specific facts which call the validity of that mark into question (see judgment of 23 September 2020, Clouds Sky v EUIPO – The Cloud Networks (Wi-Fi Powered by The Cloud), T‑738/19, not published, EU:T:2020:441, paragraph 36 and the case-law cited).

The first plea in law, alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) of that regulation

28 The applicant, in essence, challenges the Board of Appeal’s assessment that the contested mark is descriptive of the goods concerned under Article 7(1)(c) of Regulation 2017/1001.

30 Article 7(1)(c) of Regulation 2017/1001 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Article 7(2) of that regulation provides that Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

31 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).

32 By prohibiting the registration as trade marks of such signs and indications, Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely, that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).

33 For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).

34 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, secondly, 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, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited).

35 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).

36 A word sign must be refused registration under Article 7(1)(c) of Regulation 2017/1001 if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32, and of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 38).

37 It is in the light of those considerations that it is necessary to examine whether the arguments put forward by the applicant call into question the findings made by the Board of Appeal in the contested decision.

38 In the present case, the Board of Appeal correctly found, in paragraph 39 of the contested decision, that the goods in question, namely cabinets for washing machines or clothes dryers and cupboards in Class 20, were aimed at the general public. According to the Board of Appeal, that public was likely to display a higher than average level of attention, given that these were goods which were not purchased on a regular basis and that aesthetic or compatibility considerations could play a role in their choice.

39 It also correctly found, in paragraph 40 of the contested decision, that, in so far as the contested mark was composed of English words, the assessment of its descriptiveness had to be carried out with regard to the English-speaking part of the European Union, namely that corresponding to the population of Ireland and Malta, where English is an official language.

41 The applicant submits that the intervener has not demonstrated that the contested mark WASHTOWER was descriptive. In invalidity proceedings, in its view, the burden of proof lies with the applicant for a declaration of invalidity, in the present case, the intervener. In particular, it considers, first, that the registrability of the contested mark had been confirmed by EUIPO when it had registered that mark. Secondly, it points out that all the evidence adduced by the intervener had already been submitted in the form of third-party observations to EUIPO before the registration of the contested mark, and that despite this, the mark was still registered.

43 In the present case, in paragraphs 43 and 44 of the contested decision, in its assessment of the meaning of the contested mark, the Board of Appeal referred to the evidence submitted by the intervener in the application for a declaration of invalidity. First, in paragraph 43 of the contested decision, it took into consideration the dictionary excerpts annexed to the application for a declaration of invalidity submitted by the intervener in order to establish the meaning of the word ‘wash’. Secondly, in paragraph 44 of the contested decision, it also referred to that evidence in order to establish the meaning of the word ‘tower’.

44 In that regard, it is sufficient to note, in accordance with the case-law cited in paragraph 27 above and as is apparent from paragraph 43 above, that the Board of Appeal relied on the evidence submitted by the intervener during the proceedings before it.

45 It follows that, contrary to what is claimed by the applicant, the Board of Appeal correctly took into account the burden of proof.

46 That finding is not called into question by the applicant’s argument that the registrability of the contested mark had been repeatedly confirmed by EUIPO.

47 When questioned on that point at the hearing, the applicant confirmed that the decisions relied on were decisions of adjudicating bodies of EUIPO which rank below the Board of Appeal. However, the Boards of Appeal are not bound by the decisions of lower-ranking adjudicating bodies of EUIPO. In addition, the decisions which the Boards of Appeal of EUIPO are called on 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 Courts, and not on the basis of a previous decision-making practice (see, to that effect, judgment of 19 May 2021, Yongkang Kugooo Technology v EUIPO – Ford Motor Company (kugoo), T‑324/20, not published, EU:T:2021:280, paragraph 54 and the case-law cited). Furthermore, it should be borne in mind that the purpose of invalidity proceedings is, inter alia, to enable EUIPO to review the validity of the registration of a mark and to adopt, where necessary, a position which it should have adopted of its own motion during the registration procedure (see judgment of 24 May 2023, Glaxo Group v EUIPO – Cipla Europe (Shape of an inhaler), T‑477/21, not published, EU:T:2023:280, paragraph 58 and the case-law cited).

48 The applicant challenges, in essence, the meaning attributed by the Board of Appeal to the contested mark and to the elements of which it is composed. First, it challenges the Board of Appeal’s assessment that the word ‘tower’ was not limited to buildings, but was also understood in relation to furniture. It claims that that meaning only appeared in the online dictionary Lexico, which no longer exists. Secondly, the applicant argues that, unlike the obsolete expression ‘CD tower’, an example used by the Board of Appeal, the components make no grammatical, lexical or logical sense. In any event, the meaning on which the Board of Appeal relied was only secondary and only applicable in the event that the word was used with another word that would modify its principal meaning.

50 In the present case, the Board of Appeal found, in essence, that the contested mark consisted of the English words ‘wash’ and ‘tower’. In paragraph 43 of the contested decision, it found, in essence, that the word ‘wash’ could be understood, according to the dictionary excerpts submitted by the intervener, in the sense of ‘to clean something by the action of a detergent and water’, an ‘act of process of cleaning’ or ‘articles to be washed (“launder”), namely as cleaning a thing, like a shirt, jeans or clothing in general, with detergent and water’. As regards the word ‘tower’, the Board of Appeal, in paragraph 44 of the contested decision, found, in essence, that that word had the meaning, according to the dictionary excerpts submitted by the intervener, inter alia, of a ‘tall structure that houses machinery’ or a ‘tall structure used as a receptacle or for storage’. It added that the word ‘tower’ was not limited to buildings, but was also understood and used in relation to furniture. In paragraph 46 of the contested decision, it added that the relevant consumers were accustomed to seeing combinations containing that word, namely, inter alia, ‘CD tower’ or ‘control tower’.

51 First, it must be stated that the applicant does not dispute the meaning of the word ‘wash’ adopted by the Board of Appeal.

52 Secondly, the applicant’s arguments concerning the meaning of the element ‘tower’ making up the contested mark are not such as to call into question the Board of Appeal’s assessment.

53 Indeed, the case-law requires all the possible meanings that are generally known to the relevant public to be taken into account, and not a possible main meaning (see judgment of 23 January 2018, Wenger v EUIPO – Swissgear (SWISSGEAR), T‑869/16, not published, EU:T:2018:23, paragraph 58).

54 Accordingly, the Board of Appeal did not make an error of assessment in finding that the element ‘tower’, in the light of its possible meanings, could be understood as ‘a tall structure used as a receptacle or for storage’ or ‘a tall structure that houses machinery’.

55 Furthermore, although the applicant challenges the Board of Appeal’s finding that the meaning of the words making up the contested mark had not changed recently, it did not put forward any specific evidence or arguments to call that conclusion into question. In addition, even if the words ‘CD tower’ were obsolete, it must be stated that there are other expressions containing the word ‘tower’, such as, inter alia, the words ‘control tower’, as correctly stated by the Board of Appeal in paragraph 46 of the contested decision, or the terms ‘computer tower’, ‘power strip tower’, ‘towel tower’, ‘cooling tower’ and ‘tower fan’, as EUIPO stated at the hearing. It cannot therefore be stated that the relevant consumers are not accustomed to seeing combinations containing the word ‘tower’.

56 Accordingly, the Board of Appeal did not make an error of assessment in finding that it was common to combine the word ‘tower’ with either a noun or a verb in such a way that such a combination will be understood by the relevant English-speaking public.

57 The applicant’s argument that the term ‘washtower’ makes no grammatical, lexical or logical sense must therefore be disregarded. It follows that the meaning of the elements making up the contested mark found by the Board of Appeal is free from errors of assessment.

58 The applicant criticises the Board of Appeal for finding that the contested mark and the elements constituting it were descriptive of the goods concerned. It submits that, in so far as the elements making up the contested mark are not descriptive, those elements, taken as a whole, are also not descriptive. Accordingly, the applicant argues that there is no sufficiently direct and specific relationship between the contested mark and the goods concerned. Since the contested mark is a neologism, several mental steps are necessary in order to associate the contested mark with the goods concerned. The applicant further submits that the contested mark is not descriptive for the cupboards in Class 20. Because of their small size, it is unusual to use cupboards to store heavy and bulky machines due to safety and building constraints. Furthermore, the applicant complains that the Board of Appeal did not take proper account of the other arguments and evidence submitted by the applicant which corroborate the fact that the contested mark is not descriptive.

60 First of all, in view of the meaning of the word elements making up the contested mark and the linguistic habit reflected in the dictionary excerpts cited, according to which the relevant consumers are accustomed to seeing combinations with the element ‘tower’, the Board of Appeal, first, found that the contested mark as a whole would be understood by the English-speaking public as referring to ‘a tall structure housing machinery or parts used in the process of washing’. Secondly, it found, in paragraphs 52 and 53 of the contested decision, that, as regards part of the goods concerned, namely cabinets for washing machines or clothes dryers, the term ‘washtower’ directly indicated two characteristics of the goods, namely the shape and the purpose of the utensils stored in those goods, thus following the same logic and structure as the common expression ‘CD tower’. Although the designation of the other goods concerned, namely ‘cupboards’, did not expressly indicate that those goods were intended to house laundry appliances, the Board of Appeal noted, in paragraph 54 of the contested decision, that that purpose was not excluded by that general term and that, in any event, ‘cupboards’ and ‘cabinets’ were synonyms.

61 In that regard, it must be borne in mind that, according to the case-law, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. Accordingly, in order to assess whether or not a trade mark is descriptive of the goods or services covered, the overall impression given by it must be considered (see, by analogy, judgment of 7 May 2015, Voss of Norway v OHIM, C‑445/13 P, EU:C:2015:303, paragraph 105 and the case-law cited).

62 That does not mean, however, that the competent authority, responsible for ascertaining whether the trade mark for which registration is sought is capable of being perceived by the public as an indication of origin, may not first examine each of the individual words used for that mark. It may be useful, in the course of the competent authority’s overall assessment, to examine each of the components of which the trade mark concerned is composed (see, by analogy, judgment of 7 May 2015, Voss of Norway v OHIM, C‑445/13 P, EU:C:2015:303, paragraph 106 and the case-law cited).

63 Nonetheless, it has also been held that, as a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of Article 7(1)(c) of Regulation 2017/1001. However, such a combination may not be descriptive, for the purposes of that provision, provided that it creates an impression which is sufficiently far removed from that produced by the combination of those elements. Thus, a mark consisting of a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of those characteristics, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (see judgment of 25 February 2010, Lancôme v OHIM, C‑408/08 P, EU:C:2010:92, paragraphs 61 and 62). In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (see judgment of 22 June 2005, PAPERLAB, T‑19/04, EU:T:2005:247, paragraph 27 and the case-law cited).

64 In the present case, as regards, first, the element ‘tower’, as is apparent from paragraph 53 above, it must be stated that the mere fact that that element may also have other meanings is irrelevant for the purposes of assessing its descriptive character. Therefore, the element ‘tower’ may be perceived by the relevant English-speaking public, in view of its possible meanings referred to in paragraph 54 above, as describing a characteristic of the goods concerned, namely their shape.

65 Secondly, as regards the element ‘wash’, contrary to what the applicant claims, and as the Board of Appeal correctly pointed out, the designation of part of the goods concerned, namely ‘furniture, namely cabinets for washing machines or clothes dryers’, expressly indicates that those goods are intended to house laundry appliances. In that case, the contested mark will be understood by the relevant public as a reference to the purpose of the appliances stored in those goods. As regards cupboards, as the Board of Appeal rightly found, it cannot be ruled out that they have the same purpose, namely the storage of laundry appliances, as cabinets. Therefore, the element ‘wash’ constitutes a direct reference to the purpose of the goods concerned.

66 It follows that the Board of Appeal did not make an error of assessment in finding, in essence, separately, at least initially, that the word elements ‘wash’ and ‘tower’ of which the contested mark consists are descriptive.

67 Next, the Board of Appeal noted, in paragraph 55 of the contested decision, that the overall impression produced by the contested mark did not go beyond that of the elements of which it is composed and provided information about the characteristics of the goods concerned. The relevant public would therefore immediately and without further thought perceive the contested mark as a combination of two descriptive elements, regardless of their grammatical nature. In paragraph 56 of the contested decision, the Board of Appeal concluded that the contested mark would be perceived by the relevant consumer as a direct reference to the purpose, shape and kind of the goods concerned and had therefore to be declared invalid pursuant to Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 59(1)(a) of that regulation.

68 Even if the word ‘washtower’ were a neologism, as the applicant claims, it must be held that, because of the grammatically correct juxtaposition of the words of which it is composed, the relevant consumers will immediately perceive it, without further thought, as a tall structure housing machinery or parts used in the process of washing which refers directly to the purpose, shape and kind of the goods concerned.

69 Accordingly, in the light of the considerations set out in paragraphs 64 to 66 above, the applicant’s argument that the combination of the words ‘wash’ and ‘tower’ will lead to a neologism is not such as to call into question the Board of Appeal’s finding that the meaning of the term ‘washtower’ does not go beyond that of the elements of which it is composed.

70 In so far as the applicant refers to the judgment of 29 March 2023, celotec v EUIPO – Decotec Printing (DECOTEC) (T‑308/22, not published, EU:T:2023:165), suffice it to state that, unlike the elements in that case, none of the elements in the present case can be regarded as an abbreviation the understanding of which will require an analytical approach involving several mental steps.

71 Furthermore, in so far as the applicant claims that the contested mark is not descriptive in respect of the ‘cupboards’ in Class 20, it is sufficient to state that cupboards may be intended to house laundry appliances (see paragraph 65 above). For that reason, the applicant’s argument that ‘cupboards’ may have other purposes is irrelevant. According to case‑law, the fact that a sign is descriptive in relation to only some of the goods or services within a category listed as such in the application for registration does not preclude that sign being refused registration. If, in such a case, the sign in question was registered as an EU trade mark for the category covered, nothing would preclude its proprietor from also using it for the goods or services of that category in respect of which it is descriptive (see judgment of 6 December 2023, DGC Switzerland v EUIPO (cyberscan), T‑85/23, not published, EU:T:2023:784, paragraph 44 and the case-law cited).

72 In those circumstances, it must be concluded that the Board of Appeal was fully entitled to find that the contested mark as a whole was descriptive of the characteristics of the goods concerned.

73 Lastly, the Board of Appeal found, in essence, that the applicant’s other arguments concerning the perception of the contested mark did not call into question the finding that the contested mark was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001. The Board of Appeal found, in paragraph 49 of the contested decision, that it was irrelevant whether the term ‘washtower’ or similar terms had already been used for cabinets or cupboards. It added, in paragraph 57 of the contested decision, that the fact that there might be different generic terms to refer to the type of goods concerned was also irrelevant. In paragraph 59 of the contested decision, it noted that the applicant had not claimed or proved any acquired distinctiveness through use, in accordance with Article 59(2) of Regulation 2017/1001, with the result that the fact that the applicant had sold a certain quantity of cabinets and cupboards worldwide was irrelevant for the purposes of the current proceedings. It found, in paragraph 60 of the contested decision, that whether or not consumers were confused by the existence of other, similarly named products on the market and whether the intervener had acted in bad faith had no bearing on the finding that the contested mark is descriptive. It then pointed out, first, in paragraph 63 of the contested decision, that the Boards of Appeal were not bound by the decisions of lower instances of EUIPO and, secondly, in paragraph 65 of the contested decision, that the EU trade mark regime was an autonomous system, with the result that the registrations of the mark in third countries cannot provide the proprietor of the contested mark with a more advantageous legal position.

74 First, as regards the applicant’s argument that the contested mark is not a common term in the sector in question and that there are other descriptive terms for the goods concerned, it is sufficient to point out, as is apparent from paragraph 30 above, and as the Board of Appeal rightly did, that it is irrelevant, according to the case-law, that there are other signs or indications that are more usual than those of which the mark at issue consists for designating the same characteristics of the goods or services referred to in the application for registration.

75 Secondly, as regards the applicant’s argument that the contested mark was promoted and used by the applicant itself before its application for registration as an EU trade mark, with the result that it has enhanced distinctiveness, the Court, like the Board of Appeal finds that the applicant neither claimed nor demonstrated before the Board of Appeal or before the Court that the contested mark had acquired distinctiveness through use, in accordance with Article 59(2) of Regulation 2017/1001. The applicant cannot therefore reasonably rely on the actual and specific use which it made of the contested mark.

76 Thirdly, as regards the applicant’s arguments that English-speaking consumers were misled by the applicant’s and the intervener’s goods marketed under the same name, and that the intervener’s attempt to register the mark Wash Tower demonstrates bad faith, it should be recalled, as is apparent from paragraph 47 above, that the purpose of invalidity proceedings is, inter alia, to enable EUIPO to review the validity of the registration of a trade mark and to adopt, where necessary, a position which it should have adopted of its own motion during the registration procedure. Thus, contrary to what the applicant claims, and like the Board of Appeal, the Court considers that the questions as to whether the relevant consumers have been confused by the existence of other, similarly named products on the market and whether the intervener had acted in bad faith have no bearing on the conclusion that the contested mark is descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001.

77 Fourthly, in so far as the applicant relies on registrations and decisions of third countries, the Court recalls, as the Board of Appeal rightly observed, that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation 2017/1001, as interpreted by the EU Courts (see judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58 and the case-law cited). Accordingly, EUIPO and, as the case may be, the EU Courts are not bound by a decision given in a third country that a sign that is the same as that at issue is registrable as a national mark (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47).

78 Furthermore, in so far as the applicant referred to previous decisions of EUIPO, as is apparent from paragraph 47 above, the Boards of Appeal cannot be bound by the decisions of lower adjudicating bodies of EUIPO.

79 Accordingly, in those circumstances, the Board of Appeal was therefore right to find, in paragraph 67 of the contested decision, that the contested mark was descriptive of the goods concerned, for the purposes of Article 7(1)(c) of Regulation 2017/1001.

80 In view of the foregoing, the first plea in law raised by the applicant should therefore be dismissed.

The second plea in law, alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) of that regulation

81 The applicant claims, in essence, that the contested mark does not lack distinctiveness. First, it submits that the intervener has not demonstrated the lack of distinctiveness of the contested mark. Secondly, the applicant argues, in essence, that the contested mark has distinctive character as regards cupboards. According to the applicant, the contested mark is distinctive for cupboards because nothing in the description associates those cupboards with washing. Thirdly, it complains that the Board of Appeal failed to take proper account of the other arguments and the evidence submitted by the applicant, which corroborate the fact that the contested mark is distinctive.

83 Since it is apparent from 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 to be ineligible for registration as an EU trade mark, there is no need to examine the merits of the second plea in law relied on by the applicant, alleging infringement of Article 7(1)(b) of that regulation.

84 It follows from the foregoing that the action must be dismissed in its entirety.

85 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.

86 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.

87 In addition, the intervener also claimed that the applicant should be ordered to pay the costs incurred before the Board of Appeal. In that regard, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 28 April 2021, Comercializadora Eloro v EUIPO – Zumex Group (JUMEX), T‑310/20, not published, EU:T:2021:227, paragraph 45).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Washtower IP v EUIPO - LG Electronics (WASHTOWER) (EU trade mark - Judgment) [2024] EUECJ T-376/23 (20 November 2024) URL: http://www.bailii.org/eu/cases/EUECJ/2024/T37623.html Cite as: EU:T:2024:849, [2024] EUECJ T-376/23, ECLI:EU:T:2024:849

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