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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Ghiassi v EUIPO - Hersill (VITAE) (EU trade mark - Judgment) [2025] EUECJ T-1153/23 (09 April 2025) URL: https://www.bailii.org/eu/cases/EUECJ/2025/T115323.html Cite as: [2025] EUECJ T-1153/23, ECLI:EU:T:2025:377, EU:T:2025:377 |
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JUDGMENT OF THE GENERAL COURT (First Chamber)
9 April 2025 (*)
( EU trade mark - Invalidity proceedings - EU word mark VITAE - Absolute grounds for invalidity - Lack of descriptive character - Distinctive character - Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 )
In Case T‑1153/23,
Ardeshir Ghiassi, residing in Unna (Germany), represented by G. Vierkötter, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Hersill SL, established in Móstoles (Spain), represented by K. Guridi Sedlak, lawyer,
THE GENERAL COURT (First Chamber),
composed of R. Mastroianni, President, M. Brkan (Rapporteur) and S.L. Kalėda, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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,
gives the following
Judgment
1 By his action under Article 263 TFEU, the applicant, Mr Ardeshir Ghiassi, seeks the annulment and alteration of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 October 2023 (Case R 2392/2022-4) ('the contested decision').
Background to the dispute
2 On 13 September 2021, the applicant filed an application with EUIPO for a declaration of invalidity of the EU trade mark which had been registered following an application by the intervener, Hersill SL, filed on 7 June 2019, for the word sign VITAE.
3 The goods covered by the contested mark in respect of which a declaration of invalidity was sought were, following the restriction made in the course of the proceedings before EUIPO, in Class 10 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 to the following description: 'Surgical and veterinary apparatus and instruments; medical apparatus and instruments, not for use in the dental field; Therapeutic and assistance devices for disabled people; Lung ventilators for medical use; Emergency pulmonary respirators; Respirators for medical purposes; Powered respirators for artificial respiration; Apparatus for the treatment of lung ailments; Artificial heart-lung machines; Cardiopulmonary resuscitation masks; Artificial heart-lung oxygenators; all of the above excluding orthopedic and rehabilitation articles, in particular wheelchairs'.
4 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 (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)(b) and (c) of that regulation.
5 On 7 October 2022, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
6 On 5 December 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
7 By the contested decision, the Board of Appeal dismissed the appeal, on the ground that the applicant had not demonstrated that the contested mark was descriptive of the goods in respect of which it had been registered, within the meaning of Article 7(1)(c) of Regulation 2017/1001, in so far as the word 'vitae' was too vague to describe a particular characteristic of those goods. It also rejected the application for a declaration of invalidity on the basis of Article 7(1)(b) of that regulation, finding that the applicant had not claimed that the contested mark was devoid of distinctive character for any reason other than its descriptive character.
Forms of order sought
8 The applicant claims, in essence, that the Court should:
– annul the contested decision and declare the contested mark invalid;
– order EUIPO to pay the costs, including those incurred before the Board of Appeal.
9 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
10 The intervener contends, in essence, that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
11 The applicant relies, in essence, on two pleas in law, the first alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) thereof, and the second alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) thereof. The applicant takes the view that the contested mark is descriptive of the goods for which it had been registered and, therefore, is devoid of distinctive character.
12 Pursuant to Article 59(1)(a) of Regulation 2017/1001, an EU trade mark is to be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where that mark has been registered contrary to the provisions of Article 7 of that regulation.
13 In invalidity proceedings based on an absolute ground for refusal, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (judgment of 13 September 2013, Fürstlich Castell'sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraph 28).
14 However, while the presumption of validity of the registration restricts EUIPO's obligation to an examination of the relevant facts, it does not preclude it, in particular in view of the elements put forward by the party challenging the validity of the mark at issue, from relying, not only on those arguments and any evidence produced by that party in its application for a declaration of invalidity, but also on well-known facts observed by EUIPO in the context of the invalidity proceedings. Thus, where a party contests the validity of a registered trade mark relying on evidence in support of its application for a declaration of invalidity, the Board of Appeal is required to examine that evidence and to consider the existence of well-known facts that the examiner might have omitted to take into consideration in the registration procedure (see judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraphs 24 and 25 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) thereof
15 The applicant submits that the Board of Appeal erred in finding that the contested mark was not descriptive of the goods for which it had been registered. In that regard, he disputes the Board of Appeal's assessment relating, first, to the relevant public's perception of that mark and, secondly, to its meaning in relation to the goods at issue.
16 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, must not be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
17 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).
18 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).
19 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 and 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 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).
20 In that regard, 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. Accordingly, 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).
21 A sign's descriptiveness cannot therefore be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding that 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).
22 It is in the light of those considerations, having regard to the Board of Appeal's assessment in the contested decision, that the applicant's arguments must be examined.
The definition of the relevant public and its perception of the contested mark
23 The applicant disputes the Board of Appeal's assessment that it is apparent from the English dictionary Webster's Third New International Dictionary, which he submitted, that the relevant English-speaking public does not associate the word 'vitae' with the meaning 'life'. He submits that he has shown that both the German- and the English-speaking public had the same understanding of the word 'vitae', namely the plural form of the word 'life'.
24 EUIPO and the intervener dispute the applicant's arguments.
25 First of all, it should be noted that the Board of Appeal found that the goods at issue were intended for the professional public in the health sector, which displays a higher level of attention, something which the applicant does not dispute.
26 Next, it should be noted that the applicant also does not dispute the Board of Appeal's finding that the contested mark consists of the Latin word 'vitae' which has semantic content in both English and German, with the result that it based its assessment on the perception of the English-speaking and German-speaking parts of the relevant public.
27 Lastly, the applicant also agrees with the Board of Appeal that it is well known that health professionals are familiar with Latin and that they understand the meaning of the term 'vitae' as being the plural form of the term 'vita', which means 'life', as is apparent from the extracts from the Duden dictionary submitted by the applicant.
28 In contrast, the applicant's argument that the Board of Appeal erred in finding that the relevant English-speaking public associated the word 'vitae' with curriculum vitae and not with the word 'life' must be rejected.
29 While it is true, as the applicant submits, that the Board of Appeal found, on the basis of the English dictionary Webster's Third New International Dictionary, that the English-speaking public associated the term 'vitae', which is the plural of the word 'vita', meaning life, with curriculum vitae describing professional experience and not with the word 'life', the Board of Appeal was nevertheless right to base the contested decision on the perception of the relevant public, namely healthcare professionals, who understand the meaning of the term 'vitae' as being the plural form of the word 'life' and whose knowledge of Latin is well known, as is apparent from paragraph 27 above.
The meaning of the contested mark in relation to the goods at issue
30 The applicant is of the view that he submitted sufficient evidence to dispute the Board of Appeal's assessment that the contested mark, consisting of the single word 'vitae', was not descriptive of the goods at issue, because it was too vague to indicate a particular characteristic of those goods.
31 In particular, the applicant submits, first, that the assessment made by the Board of Appeal in its decision of 10 September 2021 in Case R 642/2021-5 ('the decision of 10 September 2021') must be taken into account, since it had found in that decision that the term 'vita' or 'vitae' was used by the specialist public in the health sector to designate health-related goods and that it was clearly understood by that public as descriptive of those goods which serve to 'strengthen or maintain vitality'. Accordingly, contrary to what the Board of Appeal states in the present case, the term 'vitae' is not vague.
32 Secondly, the applicant observes that, according to the Explanatory Note to the Nice Classification relating to Class 10, the goods at issue serve to diagnose, treat or improve functions or the state of health and therefore to 'strengthen or maintain vitality'. Accordingly, the Board of Appeal's assertion that the term 'vitae' could be understood as 'life-destroying' contradicts its assessments in the decision of 10 September 2021 and the classification of the goods in Class 10. The applicant adds that, of the goods and services falling within the 45 classes of the Nice Classification, only the goods in Class 10 relate to 'life' as the totality of bodily functions.
33 Thirdly, the applicant is of the view that, given the purpose of the goods in Class 10, which is described in the abovementioned Explanatory Note, the relevant public will immediately recognise the goods marketed under the term 'vitae' as being intended for health, for strengthening and maintaining vitality and therefore for bodily functions. According to the applicant, that term is clearly understood by that public without the need for several mental steps in order to reach the conclusion that the goods at issue 'save lives, keep humans alive and/or have a vitalising effect on humans'.
34 EUIPO and the intervener dispute the applicant's arguments.
35 In the first place, it should be noted that the goods at issue are in Class 10 and cover (i) surgical, veterinary and medical apparatus and instruments, (ii) therapeutic and assistance devices for disabled people, and (iii) various apparatus for the treatment of cardiopulmonary disorders. As the Board of Appeal states, those goods have various functions, such as surgical, therapeutic or cardio-respiratory functions, and fall within the healthcare field and medicine.
36 In the second place, the Court has already had occasion to rule on the meaning of the term 'vita', in that it evokes generally a positive quality attributable to a large range of different goods or services. It is a word of Latin origin, which gives the word containing it a connotation of 'life' or 'vitality' (see, to that effect, judgments of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson's Veterinary Products (VITACOAT), T‑277/04, EU:T:2006:202, paragraph 54, and of 2 March 2022, UGA Nutraceuticals v EUIPO – Vitae Health Innovation (VITADHA), T‑149/21, not published, EU:T:2022:103, paragraph 72).
37 In so far as it is established that the relevant public of health professionals is familiar with Latin, there is nothing to prevent the case-law considerations set out in the preceding paragraph from also applying, by analogy, to the term 'vitae', which is the plural form of the term 'vita' and means 'life'.
38 Consequently, as is apparent from that case-law, the term 'vitae' evokes only a positive quality of the goods or a connotation of 'life' or 'vitality', without further specification. Therefore, in so far as the contested mark, consisting solely of the word 'vitae', is not combined with or associated with additional word elements, such as 'vitae saving' or 'vitae preserving', it cannot inform consumers of the characteristics of the goods which it designates, namely their purpose or intended use.
39 The Board of Appeal correctly found that the term 'vitae' could be perceived, as such, only as 'something to do with human life', which is too vague and abstract an allusion in relation to the goods at issue, requiring a process of several mental steps. That is why that term cannot enable the relevant public immediately and without further thought to perceive a description of those goods or one of their characteristics, within the meaning of the case-law referred to in paragraphs 19 and 20 above, even if they are goods in the field of health and medicine and which are related to life.
40 Consequently, in view of the general nature of the term 'vitae', which may be linked to various purposes of the goods at issue, the Board of Appeal was right to find that the contested mark was too vague to be descriptive of those goods.
41 That finding cannot be called into question by the applicant's arguments.
42 First, as regards the abovementioned Explanatory Note to Class 10 covering the goods at issue, and on which the applicant relied in order to define the purpose of those goods, it is true that that note states that the goods in that class are used for the diagnosis, treatment or improvement of the physical function or state of health of humans. In addition, the Board of Appeal accepted that the general purpose of medicine was to preserve health and improve life conditions.
43 However, it must be stated, as observed by EUIPO and the intervener, that the applicant seems to take the view that the meanings of 'health', 'life' and 'vitality' are similar, even though they correspond to different concepts.
44 Furthermore, although the explanatory notes to the various classes of the Nice Classification provide information on the type of goods or services in each class or their general purpose, they are not sufficient to define a specific characteristic of the goods and services which they cover, which must nevertheless be objective and inherent to the nature of the 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).
45 Secondly, the dictionary extracts, submitted by the applicant, in which the term 'vitae' appears, do not prove that the goods marketed under that term will actually be perceived by the relevant public as goods which '[save lives], keep humans alive and/or have [a] vitalising effect on humans'.
46 The relevant public cannot infer from the mere word 'vitae', immediately and without thought, such a specific purpose of the goods at issue. As the Board of Appeal and the intervener considered, that public is likely to make several different associations or interpretations of the word 'vitae' as meaning to save life, preserve life, maintain life or improve life.
47 In addition, as recalled in paragraph 13 above, it is for the applicant to put forward specific facts capable of calling into question the validity of the contested mark, so that it was not for the Board of Appeal to search for other possible meanings of the word 'vitae' going beyond its ordinary meaning, which is the plural form of the word 'life'.
48 Thirdly, as regards the extracts from the intervener's website showing its goods and the brochure showing the Vitae 40 ventilator, submitted by the applicant, the Board of Appeal was also right to find that they did not provide information on the specific characteristics of the goods presented in those extracts and that brochure which could be inferred from the word 'vitae' alone. At most, the statement in the brochure on the Vitae 40 ventilator that it 'saves lives' is merely a promotional statement by the intervener and not the perception of the relevant public.
49 Fourthly, as regards the taking into account of the Board of Appeal's assessment of the term 'vitae' in its decision of 10 September 2021, it should be recalled that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal 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 the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous administrative practice (judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47).
50 Nevertheless, where the bodies of EUIPO decide to take a different view from the one adopted in their previous decisions, they should, having regard to the context in which they adopt their new decision, since reliance on those previous decisions forms part of that context, provide an explicit statement of their reasoning for departing from those decisions (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 66).
51 In the present case, the decision of 10 September 2021 contained, in paragraphs 90 to 92, an analysis of the perception of the Spanish-speaking public of the word 'vitae', which is common to the marks at issue, in proceedings based on a relative ground for invalidity.
52 First of all, the Board of Appeal found, in that decision, that a significant part of the relevant public would understand the term 'vitae' to mean something related to 'life'. Next, the Board of Appeal referred to the case-law of the Court, cited in paragraph 36 above, to indicate that the relevant public of the European Union, and at least the German-speaking public in particular, would establish a link between the term 'vita' and the concepts of 'life' and 'vitality' and that that term generally evoked a positive quality attributable to a wide range of different goods or services, which was all the more true for goods and services related to health. Lastly, the Board of Appeal acknowledged the fact that a significant part of the relevant public, such as professionals in the health sector, in which Latin or Greek terms are common, know the basic Latin term 'vitae' and that it would not perceive that term as particularly distinctive in relation to the dietetic substances concerned, in Class 5, used to strengthen or maintain vitality.
53 While it follows from the decision of 10 September 2021 that the term 'vitae' will be perceived by health professionals as being linked to the concepts of 'life' or 'vitality', in accordance with the case-law referred to in paragraph 36 above, it must nevertheless be stated that the Board of Appeal, in that case, did not rule on whether that term was descriptive of the goods concerned, which were, moreover, different from the goods at issue in the present case, which fall within Class 10. The Board of Appeal merely stated that the term 'vitae' would not be perceived as particularly distinctive in relation to the goods concerned, namely dietetic substances in Class 5. Therefore, in the present case, that term cannot be regarded as descriptive of goods related to health, as the applicant claims.
54 Accordingly, the applicant could not usefully rely on the decision of 10 September 2021 to prove that the term 'vitae' was descriptive of the goods at issue in the present case, which are in Class 10.
55 In the light of the foregoing, the applicant has not adduced evidence that the relevant public would be able to establish a sufficiently direct and specific link between the contested mark and the goods at issue, so as to perceive immediately and without further thought the description of an objective characteristic of those goods.
56 Consequently, the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) thereof
57 The applicant submits that, since he has proven that the contested mark was descriptive of the goods in Class 10, that mark is also devoid of any distinctive character.
58 EUIPO disputes the applicant's arguments. The intervener has not put forward any arguments in that regard.
59 It must be recalled that each of the grounds for refusal to register listed in Article 7(1) of Regulation 2017/1001 is independent of the others and calls for separate examination (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 45 and the case-law cited).
60 The descriptive signs referred to in Article 7(1)(c) of Regulation 2017/1001 are also devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) for reasons other than the fact that it may be descriptive (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46).
61 In the present case, it must be stated that the applicant does not put forward any argument in support of the lack of distinctive character of the contested mark, other than its descriptive character. That argument of the applicant was rejected in the context of the first plea, as is apparent from paragraph 55 above.
62 In the light of the foregoing, the second plea in law must also be rejected and, consequently, the action must be dismissed in its entirety.
Costs
63 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.
64 Since the applicant has been unsuccessful, he must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. However, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Ardeshir Ghiassi, in addition to bearing his own costs, to pay those incurred by Hersill SL;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Mastroianni | Brkan | Kalėda |
Delivered in open court in Luxembourg on 9 April 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
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