JUDGMENT OF THE GENERAL COURT (Second Chamber)

23 July 2025 ( * )

( EU trade mark – Invalidity proceedings – Three-dimensional EU trade mark – Shape of an inhaler – Absolute ground for invalidity – No distinctive character – Article 7(1)(b) and Article 51(1)(a) of Regulation (EC) No 40/94 – No distinctive character acquired through use – Article 7(3) and Article 51(2) of Regulation No 40/94 – Decision adopted following the annulment by the General Court of an earlier decision – Res judicata – Article 72(6) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 )

In Case T‑432/24,

Glaxo Group Ltd, established in Brentford (United Kingdom), represented by T. de Haan, F. Verhoestraete and S. Vandezande, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,

defendant,

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

Cipla Europe NV, established in Antwerp (Belgium), represented by J. Erdozain López, J. Vicente Martínez and M. González Candela, lawyers,

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli, President, J. Schwarcz and W. Valasidis (Rapporteur), 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 its action under Article 263 TFEU, the applicant, Glaxo Group Ltd, seeks the annulment and alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 June 2024 (Case R 1835/2016-2) (‘the contested decision’).

Background to the dispute

2 On 16 December 2014, the intervener, Cipla Europe NV, filed with EUIPO an application for a declaration of invalidity of the three-dimensional EU trade mark registered, following an application lodged by the applicant on 12 April 2001, on 9 November 2005, under No 2 179 562, for the following sign:

3 The applicant claimed the colours ‘lilac (Pantone ref: 2645C)’ and ‘deep purple (Pantone ref: 2617C)’ with the following clarification:

‘Lilac (Pantone ref: 2645C) and deep purple (Pantone ref: 2617C) in or applied to the three-dimensional shape in the proportions shown in the illustration’.

4 The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 5 and 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, for each of those classes, to the following description:

– Class 5: ‘Pharmaceutical preparations and substances for the prevention, treatment and/or alleviation of respiratory ailments’;

– Class 10: ‘Inhalers, parts and components for all the aforesaid goods’.

5 The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), read in conjunction with Article 7(1)(a) to (e)(ii) of that regulation.

6 On 16 September 2016, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) of that regulation.

7 On 3 October 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

8 By decision of 19 May 2021 (Case R 1835/2016-1), the First Board of Appeal of EUIPO dismissed the appeal (‘the initial decision’). It found that the contested mark was devoid of inherent distinctive character and that the evidence submitted had not shown that that mark had acquired distinctive character through use.

9 By application lodged at the General Court Registry on 9 August 2021, the applicant brought an action against the initial decision, registered as Case T‑477/21.

10 By judgment of 24 May 2023, Glaxo Group v EUIPO – Cipla Europe (Shape of an inhaler) (T‑477/21, not published, EU:T:2023:280), the Court annulled the initial decision. It upheld the plea alleging breach of the obligation to state reasons, stating that the Board of Appeal had concluded that the contested mark was devoid of inherent distinctive character without setting out the reasons why that mark, considered as a whole, was devoid of inherent distinctive character. It also found that the Board of Appeal had failed to fulfil its obligation to state reasons on account of contradictory reasoning in the initial decision.

11 Following the judgment of 24 May 2023, Shape of an inhaler (T‑477/21, not published, EU:T:2023:280), the case was remitted to the Second Board of Appeal, which dismissed the appeal against the decision of the Cancellation Division.

12 The Board of Appeal took the view, in the contested decision, that the contested mark, assessed as a whole, did not depart significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments during the relevant period and found, on that ground, that it was devoid of distinctive character. It also concluded, after examining the evidence submitted by the applicant, that the applicant had not demonstrated that the contested mark had acquired distinctive character through use.

Forms of order sought

13 The applicant claims that the Court should:

– principally, alter the contested decision by dismissing the application for a declaration of invalidity in its entirety;

– in the alternative, annul the contested decision;

– order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.

14 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.

15 The intervener contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

The interpretation of the applicant’s principal head of claim

16 It should be noted that the applicant’s principal request for alteration necessarily entails the annulment of the contested decision, requested in the alternative, since the annulment of all or part of a decision constitutes a prerequisite to its alteration (judgment of 30 November 2006, Camper v OHIM – JC (BROTHERS by CAMPER) , T‑43/05, not published, EU:T:2006:370, paragraph 99).

17 In those circumstances, it should be understood that the applicant seeks, principally, both the annulment and the alteration of the contested decision, the alteration being a precondition for the annulment (see judgment of 24 January 2024, U.I. Lapp v EUIPO – Labkable Asia (labkable Solutions for cables) , T‑636/22, not published, EU:T:2024:24, paragraph 17 and the case-law cited).

The claims for annulment and alteration

18 As a preliminary point, it should be noted that, given the date on which the application for registration at issue was filed, namely 12 April 2001, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (see, to that effect, order of 5 October 2004, Alcon v OHIM , C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO , C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Furthermore, since, in accordance with settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain , C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.

19 In the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision to the provisions of Regulation 2017/1001 must be understood as referring to the provisions of Regulation No 40/94, which are identical in content.

20 The applicant relies, in essence, on four pleas in law.

21 The first plea alleges failure to have regard to the principle of res judicata contrary to Article 72(6) of Regulation 2017/1001. The second plea alleges an error in the assessment of the inherent distinctive character of the contested mark contrary to Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation. The third plea alleges an error in the assessment of the distinctive character acquired by the contested mark in consequence of the use which has been made of it contrary to Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) of that regulation. The fourth and final plea alleges failure to have regard to the obligation to state reasons contrary to Article 94(1) of Regulation 2017/1001 and of Article 41(2) of the Charter of Fundamental Rights of the European Union.

22 It is appropriate, in the present case, to examine the fourth plea before examining the other pleas in the action.

The fourth plea, alleging failure to have regard to the obligation to state reasons contrary to Article 94(1) of Regulation 2017/1001 and of Article 41(2) of the Charter of Fundamental Rights

23 The applicant submits that the statement of reasons for the contested decision is contradictory, with the result that, in essence, it does not make it possible to understand the reasons underlying it. The plea is divided into two parts.

24 First, as regards the statement of reasons relating to the inherent distinctive character of the colour combination of the contested mark, the applicant is not in a position to understand whether the Board of Appeal found that there was a colour code which would make the purple colour combination descriptive of the characteristics of the goods covered by the contested mark, or whether the Board of Appeal found that the purple colour combination in itself was not distinctive.

25 Second, as regards the statement of reasons for the overall inherent distinctive character of the contested mark, the applicant submits that, according to the case-law, the fact that a sign may serve several purposes has no bearing on its distinctive character. In essence, it criticises the Board of Appeal for failing to state the reasons why, in the present case, the fact that the contested mark may serve as an indication of the active ingredients contained in the goods which it covers should prevail over the fact that it is also likely to be perceived as indicating the commercial origin of the goods covered.

26 EUIPO and the intervener dispute the applicant’s arguments.

27 It should be borne in mind that, according to Article 41(2) of the Charter of Fundamental Rights, the right to good administration includes, inter alia, the obligation of the administration to give reasons for its decisions.

28 The obligation to state reasons also follows from the first sentence of Article 94(1) of Regulation 2017/1001, which provides that decisions of EUIPO are to state the reasons on which they are based. It has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question. It is sufficient that that institution sets out the facts and the legal considerations having decisive importance in the context of the decision (see, to that effect, judgment of 16 October 2024, ePlus v EUIPO – Telefónica Germany (e.plus) , T‑604/23, not published, EU:T:2024:695, paragraphs 21 and 22 and the case-law cited).

29 In the present case, it is clear from paragraphs 59 to 69 of the contested decision that the Board of Appeal found that the purple colour combination in two shades applied to the contested mark was devoid of inherent distinctive character on the sole ground that such a combination did not depart significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments.

30 Although it is true that, in paragraph 62 of the contested decision, the Board of Appeal noted, on the basis of the illustrations provided by the intervener, that the use of colours to make reference to the active ingredients was existing at the time when the contested sign was filed, and was known by the relevant public, it did not infer from that finding that the contested mark was descriptive of the goods covered by that mark. Such a finding was made only in the alternative, in order, as is clear from the first sentence of that paragraph, to ‘corroborate’ its statement that, in essence, the relevant public was accustomed to the presence of coloured inhalers on the market at the time when the application for registration of the contested mark was filed.

31 In that regard, the statement of reasons cannot lead the applicant to question whether the Board of Appeal took into account, in its assessment of the distinctive character of the contested mark, a colour code which would make the purple colour combination in two shades descriptive of the characteristics of the goods covered. After expressly stating that ‘there was no official EU-wide convention on colour coding for inhalers at the relevant date’, the Board of Appeal took the view, as is clear from paragraph 62 of the contested decision, that the absence of such a convention, highlighted by the applicant, ‘[was] irrelevant’.

32 In the light of the foregoing, the first part of the present plea must be rejected.

33 As regards the second part, the applicant claims, in essence, as has been observed in paragraph 25 above, that the Board of Appeal did not state the reason why the descriptive or non-distinctive character of the contested mark should prevail over its distinctive character, which fails to have regard to the relevant case-law.

34 It is sufficient, in that regard, to note that the second part of the present plea is based on a misreading of the contested decision. The Board of Appeal did not find, contrary to what the applicant claims, that the relevant public perceived the contested mark as an indication of the commercial origin of the goods covered by that mark. On the contrary, it found, in paragraph 62 of the contested decision, that ‘the relevant public, in particular the health professionals, m[ight] associate the colour with the corresponding active ingredients contained in [the goods at issue], but not with a particular undertaking or commercial origin’.

35 In those circumstances, the second part of the fourth plea must be rejected and, since both parts of the plea have been rejected, the fourth plea must be rejected in its entirety.

The first plea, alleging failure to have regard to the principle of res judicata contrary to Article 72(6) of Regulation 2017/1001

36 The applicant submits that, in adopting the contested decision, the Board of Appeal failed to comply with the grounds set out in paragraphs 69 and 70 of the judgment of 24 May 2023, Shape of an inhaler (T‑477/21, not published, EU:T:2023:280), on which the Court annulled the initial decision. The Board of Appeal therefore ‘repeated the same errors’ as in the initial decision. Consequently, the contested decision is contrary to Article 72(6) of Regulation 2017/1001, in that the Board of Appeal failed to take the measures necessary to comply with that judgment.

37 EUIPO and the intervener dispute the applicant’s arguments.

38 It should be borne in mind that, in an action before the EU judicature against a decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 266 TFEU and Article 72(6) of Regulation 2017/1001, to take the necessary measures to comply with any judgment ordering annulment that may be delivered by the EU judicature (judgment of 14 July 2021, Veronese v EUIPO – Veronese Design Company (VERONESE) , T‑749/20, not published, EU:T:2021:430, paragraph 29).

39 In order to comply with a judgment annulling a measure and to implement it fully, the institution responsible for adopting that measure is required to have regard not only to the operative part of the judgment but also to the grounds constituting its essential basis, in so far as they are necessary to determine the exact meaning of what is stated in the operative part (see, to that effect, judgment of 1 September 2021, Gruppe Nymphenburg Consult v EUIPO (Limbic® Types) , T‑96/20, EU:T:2021:527, paragraph 44 and the case-law cited).

40 In the present case, paragraphs 69 and 70 of the judgment of 24 May 2023, Shape of an inhaler (T‑477/21, not published, EU:T:2023:280), read as follows:

‘69 Furthermore, contrary to EUIPO’s submissions, the [initial] decision does not make it possible to understand why the principles inferred by the Board of Appeal from the judgment of 9 September 2020, Shade of the colour purple (T‑187/19, not published, EU:T:2020:405) were applicable to the contested mark and at the relevant date in the present case.

70 In those circumstances, it must be held that the [initial] decision is vitiated by contradictory reasoning. Such a contradiction amounts to a failure to state reasons, since it is impossible for the parties and the Courts of the European Union to determine whether, in the Board of Appeal’s analysis relating to the distinctive character of the contested mark, documents postdating the relevant date by at least 10 years could demonstrate the perception of a certain colour by the consumer on that date and, therefore, whether [the intervener] had sufficiently demonstrated that the contested mark was devoid of distinctive character on that date.’

41 It is clear from paragraphs 69 and 70 of the judgment of 24 May 2023, Shape of an inhaler (T‑477/21, not published, EU:T:2023:280), that the Court did not rule on the substantive legality of the initial decision and merely found that that decision was vitiated by contradictory reasoning, which amounts to a failure to state reasons. The force of res judicata therefore only concerns the statement of reasons for the initial decision, which, following that judgment, has disappeared from the legal order (see, to that effect, judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL) , T‑402/07, EU:T:2009:85, paragraph 21 and the case-law cited) and has been replaced by the contested decision.

42 It is not apparent from the statement of reasons for the contested decision that the Board of Appeal, which was required to reassess the appeal that had been brought before it, reproduced the statement of reasons for the initial decision, criticised by the Court, in order to justify dismissing the appeal again.

43 As set out in paragraphs 55 and 64 of the judgment of 24 May 2023, Shape of an inhaler (T‑477/21, not published, EU:T:2023:280), the Board of Appeal, while stating that the pharmaceutical sector was permanently changing and that ‘[10] years or even longer periods are sufficiently long periods for changes in the perception of goods according to new trends and their constant evolution’ took the view, in support of the initial decision, that ‘the principles established in [the judgment of 9 September 2020, Shade of the colour purple (T‑187/19, not published, EU:T:2020:405)] with respect to the purple colour for precisely the same market [2015] applie[d] mutatis mutandis to the earlier date [2001]’. It concluded, in essence, that the contested mark was not distinctive, essentially, on account of the descriptive character of the use of colours for medicinal products for the treatment of asthma, since such colours show ‘a certain reference’ to the active ingredients, their purpose and the characteristics of the goods at issue.

44 The Board of Appeal did not reproduce such a statement of reasons in support of the contested decision. It referred to the judgment of 9 September 2020, Glaxo Group v EUIPO (Shade of the colour purple) (T‑187/19, not published, EU:T:2020:405), not in order to infer that the use of colours in the contested mark was descriptive of the goods which it covers but to confirm its findings that, in essence, as is apparent from paragraphs 69 and 70 of the contested decision, the use of colours, including the colour purple in two shades, did not depart significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments. In that regard, it also stated, in paragraph 70 of the contested decision, that it was clear from the file that the uses and norms in that sector had remained the same between 2001 and 2015.

45 The Board of Appeal therefore did not make the same error as that which it had made in support of the initial decision, since it did not, in any event, find that the descriptive character of the use of colours in the contested mark was confirmed by the judgment of 9 September 2020, Shade of the colour purple (T‑187/19, not published, EU:T:2020:405).

46 It follows from the foregoing that the applicant is not justified in claiming that the Board of Appeal made the same errors as in the initial decision and disregarded, on that ground, the force of res judicata attaching to the judgment of 24 May 2023, Shape of an inhaler (T‑477/21, not published, EU:T:2023:280), and, consequently, Article 72(6) of Regulation 2017/1001.

47 In those circumstances, the first plea must be rejected.

The second plea, alleging infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) of that regulation

48 The applicant submits, in essence, that the Board of Appeal erred in taking the view that the contested mark was devoid of distinctive character. It divides its plea into two parts.

49 In the first place, the Board of Appeal erred in law on the ground that it assessed the condition relating to the inherent distinctive character of the colour combination applied to the shape of the inhaler by basing its assessment only on evidence which was undated or subsequent to the date on which the application for registration of the contested mark was filed.

50 In the second place, the Board of Appeal made two errors in its assessment of the inherent distinctive character of the contested mark.

51 First, the Board of Appeal erred in its assessment of the distinctive character of the colour combination of the contested mark, since it took into account, in support of such an assessment, only the colour purple of that mark.

52 Second, the Board of Appeal made an error of assessment in concluding that the contested mark, considered as a whole, did not depart significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments.

53 EUIPO and the intervener dispute the applicant’s arguments.

– The first part, alleging an error of law in the taking into account of the relevant date

54 It follows from the case-law that the relevant date for the purpose of assessing the existence of an absolute ground for refusal in the examination of an application for a declaration of invalidity based on Article 51(1) of Regulation No 40/94 is the date of filing the application for registration of the contested EU trade mark (see order of 24 September 2009, Bateaux mouches v OHIM , C‑78/09 P, not published, EU:C:2009:584, paragraph 18 and the case-law cited).

55 In the present case, after stating in paragraph 43 of the contested decision that ‘the relevant date for the purposes of the examination of the application for a declaration of invalidity [was] the filing date of the contested [mark], namely 12 April 2001’, the Board of Appeal assessed the distinctive character of the colour combination by taking into account, inter alia, as is apparent from paragraph 61 of the contested decision, the documents produced by the applicant before the Cancellation Division and referenced in Annex 6 to its response to the application for a declaration of invalidity. It is common ground that those documents contain illustrations of various coloured inhalers used for the treatment of respiratory diseases, sold in several countries of the European Union in 2001.

56 In those circumstances, and irrespective of the merits of the Board of Appeal’s assessment that such documents ‘corroborated’ the undated documents or documents subsequent to the date on which the application for registration of the contested mark was filed, submitted by the intervener during the proceedings, the applicant cannot reasonably claim that the Board of Appeal based its assessment only on those documents.

57 In the light of the foregoing, the first part of the second plea must be rejected.

– The second part of the second plea, alleging errors in the assessment of the inherent distinctive character of the contested mark

58 The second part of the second plea is based on two complaints.

59 As regards the first complaint, as summarised in paragraph 51 above, it must be held, contrary to what the applicant claims, that the Board of Appeal took into account the purple colour combination in two shades applied to the contested mark.

60 After stating, in paragraph 59 of the contested decision, that it had to ‘be assessed whether the purple colour and its specific combination on the cap and the body of the inhaler, as depicted in the trade mark’s representation, departs significantly from the norms and customs of the sector of inhalers for the treatment of pulmonary ailments’, the Board of Appeal found, in paragraph 64 of the contested decision, that it was clear from the evidence submitted for its assessment ‘that inhalers existed in different colours, including with a combination of two colours’. It pointed out, in that regard, in paragraph 68 of the contested decision, ‘that the mere fact that the purple colour is depicted in two shades for the cap and the body of the inhaler in the contested sign [was] not sufficient … since … it was not atypical for consumers to see two coloured inhalers on the market’.

61 In those circumstances, the complaint alleging that the Board of Appeal ‘[had] not [taken] into account the colour combination, but it [had] only evaluated the distinctiveness of the colour purple’ is based on a misreading of the contested decision and must, on that ground, be rejected.

62 As regards, next, the second complaint, the applicant submits that the Board of Appeal incorrectly took the view that the contested mark, considered as a whole, did not depart significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments.

63 It should be noted that, under Article 51(1)(a) of Regulation No 40/94, an EU trade mark is to be declared invalid on application to EUIPO where that mark has been registered contrary to the provisions of Article 7 of that regulation.

64 Under Article 7(1)(b) of Regulation No 40/94, ‘trade marks which are devoid of any distinctive character’ are not to be registered. Moreover, Article 7(2) of that regulation states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the [European Union]’.

65 For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM , C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).

66 According to settled case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see judgment of 22 June 2006, Storck v OHIM , C‑25/05 P, EU:C:2006:422, paragraph 26 and the case-law cited).

67 Nonetheless, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see judgment of 22 June 2006, Storck v OHIM , C‑25/05 P, EU:C:2006:422, paragraph 27 and the case-law cited).

68 In addition, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of that provision (see judgment of 7 October 2004, Mag Instrument v OHIM , C‑136/02 P, EU:C:2004:592, paragraph 31 and the case-law cited).

69 In the first place, the Board of Appeal found, in paragraphs 45 to 48 of the contested decision, that the relevant territory was that of the whole of the European Union and that the goods at issue, namely pharmaceutical preparations and substances for respiratory ailments, and inhalers, in Classes 5 and 10, were aimed both at medical professionals, such as doctors and pharmacists, and at patients suffering from respiratory ailments, namely end consumers of the goods at issue. Having regard to the specific nature of the goods, which may have an impact on consumers’ health, the Board of Appeal took the view that the level of attention of the relevant public was higher than average.

70 There is no reason to call those assessments into question, which are, moreover, not disputed by the applicant.

71 In the second place, after noting that the contested mark consisted of the shape of an inhaler and its particular colour combination of ‘lilac’ and ‘deep purple’ for the body and for the cap, as depicted in the application for registration, the Board of Appeal, first of all, noted, in paragraph 55 of the contested decision, that it was not disputed that the shape of that mark corresponded to the standard shape of a metered dose inhaler for the treatment of respiratory ailments. Taking the view that such a shape did not depart significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments, the Board of Appeal concluded, in paragraph 58 of the contested decision, that, in accordance with the parties’ statements during the proceedings, the shape of the contested mark was devoid of distinctive character in relation to the goods covered by that mark.

72 Next, the Board of Appeal found, on the basis of the evidence placed in the case file, that it was customary, at the time when the application for registration of the contested mark was filed, that inhalers available on the relevant market display some colours, including combinations of two colours. After noting that the originality of a mark was not a relevant criterion for assessing its distinctive character, it found that the colour purple, as such, was also neither unusual nor striking.

73 In those circumstances, the Board of Appeal took the view that the purple colour combination in two shades applied to the contested mark did not depart significantly from the norm or customs of the sector and concluded, in paragraph 69 of the contested decision, that such a combination of colours was devoid of distinctive character in relation to the goods covered by the contested mark.

74 Lastly, after finding that neither the shape nor the colours of the contested mark were distinctive in relation to the goods at issue, the Board of Appeal submitted that the contested sign, taken as a whole, did not depart significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments on the relevant market. It therefore took the view, in paragraph 73 of the contested decision, that the contested mark, considered as a whole, was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.

75 As a preliminary point, it should be noted that the contested mark, which constitutes a three-dimensional mark representing the shape of an inhaler used in the treatment of respiratory ailments, corresponds to the shape of the goods covered by that mark. Thus, in the light of the case-law set out in paragraphs 67 and 68 above, the Board of Appeal was right to examine, in order to assess its distinctive character, whether that mark departed significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments.

76 First, it should be noted, as is clear from paragraph 71 above and from the written pleadings submitted before the Court, that the applicant does not dispute the Board of Appeal’s assertion, referred to in paragraph 58 of the contested decision, that the shape of the contested mark does not depart significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments, with the result that that shape was devoid of distinctive character in relation to the goods covered by that mark.

77 There is no reason to call that assessment into question.

78 Second, the applicant submits that the Board of Appeal found, in essence, that the contested mark was devoid of distinctive character on the ground that the mere originality or novelty of the colour purple was not a relevant criterion, without examining whether, in the present case, on account of such originality, that mark departed significantly from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments.

79 Such an argument is, however, based on a misreading of the contested decision.

80 As follows from paragraph 72 above, the Board of Appeal found, in paragraphs 59 to 62 of the contested decision, that the combination of colours applied to the contested mark did not depart from the norm or customs of the sector concerned, irrespective of the specific colour chosen, on the ground, in essence, that the application of one or more colours to the shape of an inhaler used in the treatment of respiratory ailments was customary on the relevant date. It concluded that the colour purple and its specific combination on the cap and the body of the inhaler were devoid of any distinctive character.

81 The Board of Appeal therefore carried out its analysis of the inherent distinctive character of the colour combination applied to the contested mark in accordance with the case-law set out in paragraph 68 above.

82 It is true that the Board of Appeal added, in paragraph 65 of the contested decision, that the originality or novelty of a colour was irrelevant, responding, in that regard, to the applicant’s argument that, as is apparent from paragraph 63 of the contested decision, the colour purple was not used by any of its competitors at the time when the contested mark was filed.

83 In that regard, the Board of Appeal found that, notwithstanding, in essence, the fact that ‘the colour purple was chosen, according to [the applicant], because of its unusual, unique and memorable character’, ‘differences [in the contested mark] … in relation to the norm or customs of the sector’ did not confer on that mark a minimum degree of distinctive character.

84 However, contrary to what the applicant claims, the Board of Appeal did not thereby find that ‘when a norm exists, it is never possible to create distinctiveness in a trade mark’. On the contrary, it examined, while replying in the negative, whether, in the present case, in view of the use of the colour purple in the contested mark, that mark was likely to depart significantly from the norm or customs of the sector concerned.

85 Such an interpretation is supported by the Board of Appeal’s assessment in paragraph 67 of the contested decision. Where ‘the specific colours as registered in the contested sign [had not been] used in the relevant [period and] market’, the Board of Appeal, after examining the alleged originality of the colours used, found in that paragraph that the colour purple in two shades was neither unusual nor striking and that it would therefore not be perceived as an indication of the commercial origin of the goods covered by the contested mark.

86 Third, the applicant submits that, contrary to the Board of Appeal’s view, the purple colour combination in two shades departs significantly from the norm of the sector of inhalers used for the treatment of respiratory ailments.

87 In so far as the applicant claims that the contested mark has distinctive character, notwithstanding the Board of Appeal’s analysis, it must be recalled that it is for that applicant to provide specific and substantiated information to show that that mark has either inherent distinctive character or a distinctive character acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 9 September 2020, Shade of the colour purple , T‑187/19, not published, EU:T:2020:405, paragraph 60 and the case-law cited).

88 In the present case, the applicant claims, in essence, that the contested mark has distinctive character on the ground that, ‘with very striking lilac and deep purple colours, moreover in a particular arrangement and proportions’, it departs significantly from the norm.

89 In that regard, it should be borne in mind that mere novelty or originality are not, in any event, relevant criteria in the assessment of whether a mark has distinctive character (see judgment of 14 November 2019, Neoperl v EUIPO (Representation of four filled-in holes in a regular hole pattern) , T‑669/18, not published, EU:T:2019:788, paragraph 44 and the case-law cited; judgment of 29 January 2025, Doorinn v EUIPO (Position of a label on a mattress) , T‑147/24, not published, EU:T:2025:107, paragraph 45).

90 The circumstance that the colour purple, as the applicant submits, is, contrary to what the Board of Appeal found, unusual or striking cannot therefore suffice to invalidate the assessment of the Board of Appeal, which was fully entitled to take the view that such a circumstance had no bearing on its assessment of the distinctive character of the contested mark. Consequently, it is also of no relevance that such an assessment was, as the case may be, the result of an incorrect application of the judgment of 13 July 2011, Evonik Industries v OHIM (Purple rectangle with a rounded side) (T‑499/09, not published, EU:T:2011:367, paragraphs 20 to 22).

91 It is not enough that the mark applied for is original, but it must also differ substantially from the basic shapes of the goods in question, commonly used in trade, and not look like a mere variant of those shapes (see judgment of 25 November 2020, Brasserie St Avold v EUIPO (Shape of a dark bottle) , T‑862/19, EU:T:2020:561, paragraph 39 and the case-law cited).

92 It is apparent from the evidence produced before the Board of Appeal, and referred to in paragraphs 55 and 56 above, that, at the time when the application for registration of the contested mark was filed, the use of colours, including in the form of a combination of two colours, on inhalers used for the treatment of respiratory ailments was common practice on the relevant market. In those circumstances, the Board of Appeal was right to take the view, in paragraph 69 of the contested decision, that ‘the variety of the existing colours put on inhalers in 2001 [was such as to establish] that one more colour appearing on the market was not likely to depart significantly from the norms and customs of the sector’.

93 Since, as has been pointed out in paragraph 31 above, the Board of Appeal did not rely on the existence of a colour code in support of its assessment, it must be added that the argument that, even if it were well founded, the evidence produced by the intervener had been insufficient to establish the existence of a colour code is irrelevant.

94 In those circumstances, and although the applicant has not adduced any evidence capable of calling into question the Board of Appeal’s findings, it must be concluded that the Board of Appeal, after finding that all the elements making up the contested mark did not depart from the norm or customs of the sector of inhalers used for the treatment of respiratory ailments, was entitled, without making an error of assessment, to find that the contested mark, considered as a whole, was devoid of distinctive character.

95 In the light of all of the foregoing, the second plea must be rejected.

The third plea, alleging infringement of Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) of that regulation

96 The applicant submits, in essence, that the contested mark has acquired, in consequence of the use which has been made of it, distinctive character in relation to the goods which it covers.

97 The evidence produced by the applicant to establish that the contested mark had acquired distinctive character in the United Kingdom and in Spain was sufficient to prevent that mark from being declared invalid, since the intervener disputed the lack of acquired distinctive character only in those two territories.

98 EUIPO and the intervener dispute the applicant’s arguments.

99 Under Article 7(3) of Regulation No 40/94, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a trade mark if that trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

100 It follows from the unitary character of the EU trade mark that, in order to be accepted for registration, a sign must have distinctive character, inherent or acquired through use, throughout the European Union (judgments of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services , C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 68, and of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a brown and beige chequerboard pattern) , T‑359/12, EU:T:2015:215, paragraph 86). It follows that, as regards a mark which is, ab initio , devoid of inherent distinctive character in the European Union, the relevant territory to be taken into consideration in order to assess whether it has acquired distinctive character through use is the whole of the European Union (judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services , C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 76).

101 In the present case, after observing that it was ‘incumbent upon the [applicant] to prove that the contested [mark] had acquired distinctiveness throughout the European Union’, the Board of Appeal found that the applicant had not established that the contested mark had acquired such character, both at the time when the application for registration was filed and at the time of its actual registration as well as at the time when the application for a declaration of invalidity was filed. It took the view, in essence, either that the evidence provided by the applicant did not relate to the entire territory of the European Union or that that evidence did not make it possible to assess the use of the contested mark as such.

102 The Board of Appeal concluded that, even assessed as a whole, the evidence submitted by the applicant was not sufficient to demonstrate to the requisite legal standard that the contested mark had acquired distinctive character through use throughout the European Union for a significant part of the relevant public.

103 In that regard, it should be noted that, in accordance with the case-law cited in paragraphs 87 and 100 above, the Board of Appeal was fully entitled to require the applicant to establish throughout the territory of the European Union that the contested mark had acquired distinctive character through the use which had been made of it in respect of the goods which it covers. Since the burden of proof lies with the applicant, the fact, even if it were correct, that the evidence adduced by the intervener during the proceedings concerned only the territories of the United Kingdom and Spain therefore has no bearing on the legality of the contested decision.

104 In those circumstances, even if, as the applicant claims, the evidence which it provided sufficiently demonstrates the distinctive character acquired by the contested mark in the territories of the United Kingdom and Spain, that circumstance is not sufficient for the absolute ground for refusal raised against it under Article 7(1)(b) of Regulation No 40/94 not to apply in the present case, pursuant to Article 7(3) of that regulation.

105 In the light of all of the foregoing, the third plea must be rejected.

106 In those circumstances, since all the pleas have been rejected, the action must be dismissed in its entirety.

Costs

107 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.

108 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, 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, bear its own costs.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1. Dismisses the action;

2. Orders Glaxo Group Ltd to bear its own costs and to pay those incurred by Cipla Europe NV;

3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.

Marcoulli

Schwarcz

Valasidis

Delivered in open court in Luxembourg on 23 July 2025.

V. Di Bucci

L. Truchot

Registrar

President

* Language of the case: English.