EUROPEAN UNION: SUSTAINABLE BY DESIGN Application for Class 18 Falls Short

The General Court (GC) has dismissed an appeal from Delvaux Design Coordination and confirmed its refusal of an application for word mark SUSTAINABLE BY DESIGN in Class 18 (case T-3/24) (Delvaux Design Coordination et Finance (applicant) v. European Union Intellectual Property Office (EUIPO), Nov. 13, 2024).

In 2022, the applicant sought to register the word combination SUSTAINABLE BY DESIGN as a European Union Trade Mark. In 2023, EUIPO rejected the application because of a lack of distinctive character on the basis of Article 7(1)(b), in conjunction with Article 7(2), of Regulation (EU) 2017/1001.

The applicant appealed the decision, arguing that the refused mark was more than just a laudatory promotional slogan, but the EUIPO’s Board of Appeal (BoA) confirmed it in 2023.

The applicant then addressed the GC, which confirmed the findings of the BoA. Though marks made up of signs that are also used as advertising slogans may still be capable of indicating to the consumers the commercial origin of goods/services—in particular, where those marks can have a number of meanings, or constitute a play on words, or be perceived as fanciful—the GC found that the term SUSTAINABLE suggests a clear and unequivocal meaning and that the two-word combination BY DESIGN is far from being sophisticated, having its own entry in English dictionaries and being understandable to the English-speaking public.

Therefore, the GC stated that the public will perceive the overall expression SUSTAINABLE BY DESIGN as conveying a laudatory message, indicating that the goods at issue were intentionally made to be environmentally friendly. Consequently, the sign was considered as devoid of distinctive character. In addition, as regards the applicant’s arguments that the same mark was registered in English-speaking countries, such as the United Kingdom and the United States, and in other member states, the GC recalled that decisions given in a member state or in a third country do not bind the EUIPO and the courts of the EU.

Expressions that, apart from their promotional meaning, do not contain any element enabling the relevant public to perceive them as an indication of commercial origin of related goods/services, will be regarded as not capable of performing the essential mark’s function.

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