Judgment — ECLI:EU:T:2026:299
Date: 2026-04-29
Language of the case: English

JUDGMENT OF THE GENERAL COURT (Ninth Chamber) 29 April 2026 (*) ( EU trade mark – Applications for EU figurative marks FI – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EU) 2017/1001 ) In Cases T‑465/25 and T‑466/25, Fisher Investments Europe Ltd, established in London (United Kingdom), represented by L. Karnøe Søndergaard, lawyer, applicant, v European Union Intellectual Property Office (EUIPO), represented by T. Klee, acting as Agent, defendant, THE GENERAL COURT (Ninth Chamber), composed of S. Kingston, President, A. Marcoulli (Rapporteur) and J. Hettne, 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 actions under Article 263 TFEU, the applicant, Fisher Investments Europe Ltd, seeks, in essence, the annulment and alteration of two decisions of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 May 2025 (Cases R 2354/2024-5 and R 2355/2024-5) (‘the contested decisions’). Background to the dispute 2 On 22 April 2024, the applicant filed with EUIPO an application for registration of an EU trade mark in respect of each of the following figurative signs (which are the subject matter of the actions in T‑465/25 and T‑466/25, respectively): 3 The marks applied for each covered services in Classes 36 and 41 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, for each of those classes, to the following description: – Class 36: ‘Investment management and investment advisory services; providing managed investment portfolios consisting of exchange traded funds to investors’; – Class 41: ‘Educational and entertainment services, namely, conducting seminars, making personal appearances, and performing speaking engagements, all in the field of investment management and investment advisory services’. 4 By decisions of 8 October 2024, the examiner rejected the applications for registration of those marks, on the basis of Article 7(1)(b) and (c) 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(2) of that regulation. 5 On 6 December 2024, the applicant filed a notice of appeal with EUIPO against each of the examiner’s decisions. 6 By the contested decisions, the Board of Appeal dismissed the appeal on the ground that the relevant public would perceive the signs applied for as being descriptive, for the purposes of Article 7(1)(c) of Regulation 2017/1001, in so far as they conveyed information as to the fact that the services covered related to investments in Finland or to the management of a securities portfolio on the Finnish stock exchange, or that those services were provided by a financial institution. The Board of Appeal also found that the marks applied for were devoid of any distinctive character, in so far as they were descriptive, but also in so far as they conveyed a banal informative message and were therefore incapable of performing the essential function of a trade mark, namely of identifying the origin of the services at issue. Subsequently, it dismissed as inconclusive the examples of previously registered EU trade marks put forward by the applicant as well as the fact that the signs applied for had been registered in the United States. Lastly, in essence, the Board of Appeal dismissed the claim that distinctive character had been acquired through use of the marks applied for as being out of time and, in any event, unfounded. Forms of order sought 7 The applicant contends that the Court should: – annul the contested decisions and authorise the registration of the marks applied for in respect of all the services covered; – order EUIPO to pay the costs. 8 EUIPO contends that the Court should: – dismiss the actions; – order the applicant to pay the costs in the event that a hearing is convened. Law 9 After the parties were given the opportunity to submit their observations in that regard, the Court decided to join the present cases for the purposes of the judgment, in accordance with Article 68(1) of the Rules of Procedure of the General Court. The Court’s jurisdiction 10 It must be pointed out that the applicant claims inter alia that the Court should authorise the registration of the marks applied for in respect of all the services covered. That head of claim may be understood as requesting that the Court alter the contested decisions within the meaning of Article 72(3) of Regulation 2017/1001 by adopting the decisions that the Board of Appeal should have taken, in accordance with the provisions of that regulation. The competent bodies of EUIPO do not, however, adopt formal decisions recording the registration of an EU trade mark which could be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of a claim that it should register an EU trade mark. Nor, in those circumstances, is it for the Court to take cognisance of a claim for alteration requesting that it amend the decision of a Board of Appeal to that effect (see, to that effect, judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited). 11 It follows that that head of claim must be rejected on the grounds of lack of jurisdiction. Substance 12 The applicant submits that the contested decisions infringe Article 7(1)(c) of Regulation 2017/1001 which provides that signs that are descriptive are not to be registered, arguing that the Board of Appeal incorrectly assessed the distinctive character of the marks applied for. 13 At the outset, it must be pointed out that the contested decisions confirm the examiner’s decisions refusing registration in which that examiner regarded those marks as being descriptive, for the purposes of Article 7(1)(c) of Regulation 2017/1001, and devoid of any distinctive character, within the meaning of Article 7(1)(b) of that regulation, including for reasons other than their descriptiveness. However, although the applicant states that ‘the distinctiveness’ of the trade marks applied for was ‘incorrectly assessed’, it does not expressly argue that the latter provision was infringed and concludes its entire line of argument by claiming that those marks are not caught by Article 7(1)(c) of Regulation 2017/1001. 14 Nevertheless, since the Board of Appeal’s reasoning on the application of Article 7(1)(b) of Regulation 2017/1001 is based, essentially, on its arguments concerning the application of Article 7(1)(c) of that regulation, which are challenged by the applicant, the Court considers that the applicant also seeks to call into question the Board of Appeal’s findings in relation to the application of Article 7(1)(b) of Regulation 2017/1001, since they form part of both grounds for refusal relied on in the contested decisions. 15 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. Article 7(2) of that regulation provides that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. 16 Those signs or indications are deemed 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). 17 For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the relevant public immediately to perceive, without further thought, 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). 18 Whether a sign is descriptive can be assessed only, first, by reference to the goods or services concerned and, secondly, by reference to the understanding which the relevant public has of the sign (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). 19 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 signs or indications that are descriptive of 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 or 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). 20 It is in the light of those considerations that it must be analysed whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001. The relevant public 21 The Board of Appeal found that the services in question in Class 36 targeted both the general public and a specialised public and that the services in question in Class 41 targeted exclusively a professional or specialised public. It inferred that the relevant public consisted of particularly circumspect individuals with a high level of attention. In essence, while it found that the perception of the signs applied for was to be examined from the perspective of the English-speaking public in the European Union, the Board of Appeal also found that, in so far as the element ‘FI’ was universally accepted as being the country code for Finland, those signs may be attributed a meaning throughout the European Union. 22 There is no need to call into question those assessments, which, moreover, are not disputed by the applicant. The descriptiveness of the marks applied for 23 The Board of Appeal confirmed the examiner’s assessments regarding the meaning of the signs applied for, namely that they would be perceived by the relevant public as being an acronym referring to either Finland or a financial institution. Next, it found, in essence, that, when it encounters the marks applied for, the relevant public, due to the opportunities for investment which exist in Finland, could understand the services offered as relating to investments in that country or on the Finnish stock market. According to the Board of Appeal, that public could also understand those marks as conveying the information that the services are offered by a financial institution. It added that, in view of their simplicity, the figurative elements of those marks merely highlighted their word element and, therefore, were not capable of diverting the attention of the public from their descriptive meaning. It inferred from the foregoing that the marks applied for were caught by the prohibition on registration set out in Article 7(1)(c) of Regulation 2017/1001. 24 The applicant challenges the Board of Appeal’s reasoning by claiming that the figurative elements of the marks applied for make their word element secondary and that those marks do not contain any word which, in common parlance, would be used to designate the services covered. In particular, the applicant submits that the public will not immediately perceive those marks as making reference to Finland due to the lack of a sufficiently direct and specific link to the services covered. It adds that it is not established that the element ‘fi’ is used by the relevant public to refer to financial information, institutions or services. The acronym is therefore too unclear. 25 The applicant also relies on marks previously registered with EUIPO and invokes a breach of the principles of equal treatment and of sound administration. 26 EUIPO disputes the applicant’s arguments. 27 In that regard, in the first place, it should be noted that the applicant does not dispute that the two letters ‘f’ and ‘i’, which make up the word element of the marks applied for, constitute the acronym ‘FI’ of the term ‘financial institution’ and also the country code ‘FI’ designating Finland. Contrary to what the applicant claims, the circumstance that that country is also identified by the abbreviation ‘FIN’ bears no relevance. Article 7(1)(c) of Regulation 2017/1001 does not require that the signs or indications which may serve to designate the characteristics of the products or services covered should be the only way of designating such characteristics (see, to that effect, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 57; see also judgment of 8 June 2022, Vitronic v EUIPO (Enforcement Trailer), T‑433/21, not published, EU:T:2022:344, paragraph 59). 28 In the second place, the applicant submits that the link between the meanings of the word element ‘fi’ relied on by the Board of Appeal and the services covered by the marks applied for is not sufficiently direct within the meaning of the case-law cited in paragraph 17 above, but requires further thought. 29 In that regard, first, as the applicant points out, the marks applied for, in themselves, admittedly contain no word which may be employed to designate a characteristic of the services covered. The Board of Appeal, however, found that the word element ‘fi’ is perceived as descriptive of the services covered in so far as it constitutes the acronym ‘FI’ of the term ‘financial institution’ or the alpha-2 code defined by the ISO 3166-1 standard, used inter alia in the International Bank Account Number (IBAN) and SWIFT codes, namely ‘FI’, designating Finland. 30 Secondly, concerning the question whether the relevant public will be able to understand, immediately and with no further thought, the signs applied for as referring to the acronym ‘FI’ meaning ‘financial institution’, the applicant submits that the use of that acronym by the relevant public has not been established and that there is a broad range of possible interpretations of the element ‘fi’. 31 As a preliminary point, it must be specified that the applicant, relying on the judgment of 13 June 2014, Grupo Flexi de León v OHIM (FLEXI) (T‑352/12, not published, EU:T:2014:519), submits, correctly, that the mere fact that a sign is made up of an abbreviation derived from a term which is descriptive of the products or services covered is not sufficient to reject the application for registration. It is necessary that that sign be recognised by the relevant public as being the abbreviation or acronym for a descriptive term. 32 In that regard, it must be borne in mind that, in order to establish that the element ‘fi’ was commonly used as the acronym ‘FI’ of the term ‘financial institution’, the Board of Appeal, in essence, confirmed the examiner’s assessment by relying, as did the examiner, on information extracted from the website Internet Acronym Finder and on indications drawn from a leading website in the world of finance, as well as on the results of internet searches. The applicant develops no argument and produces no document capable of calling into question the relevance of that evidence, according to which the term ‘financial institution’ is indeed commonly designated by its acronym ‘FI’. 33 The circumstance, relied on by the applicant, that the word element ‘fi’ could be interpreted in different manners, since the acronym ‘FI’ has various meanings, is not conclusive. In fact, since a number of those meanings bear no relation to the services covered by the marks applied for, they will not come to the mind of the relevant public when that public encounters those marks. Furthermore, for a sign to be classified as descriptive, for the purposes of Article 7(1)(c) of Regulation 2017/1001, it is sufficient for it to designate, in at least one of its potential meanings, a characteristic of the services covered (see judgment of 3 September 2020, achtung! v EUIPO, C‑214/19 P, not published, EU:C:2020:632, paragraph 35 and the case-law cited). 34 In those circumstances, and in the light of the fact that the relevant public consists of particularly circumspect individuals (see paragraph 21 above), it cannot be excluded that the English-speaking part of that public or, at the very least, a non-negligible part of that public, when coming across the services covered, may immediately perceive the word element ‘fi’ of the marks applied for as the acronym ‘FI’ of the term ‘financial institution’. 35 Thirdly, it is undisputed that the term ‘financial institution’, which, according to the Board of Appeal, may be interpreted as designating any company exercising activities in the field of finance, has a sufficiently direct and specific link to the services covered by the marks applied for, in so far as those services are liable to be offered by such a company. 36 Therefore, it is not necessary to assess whether, as the Board of Appeal found, the marks applied for, in so far as they could also be perceived as a reference to Finland, have a sufficiently direct and specific link to the services covered. As was recalled in paragraph 33 above, for a sign to be classified as descriptive, it is sufficient that it may be perceived, in at least one of its potential meanings, as designating a characteristic of the services covered. 37 Fourthly, in so far as the applicant submits that the figurative elements of the marks applied for strengthen their distinctive character, it must be noted, as did the Board of Appeal, that the font of the word element ‘fi’ is relatively standard, that the dark blue background, circular or square, as the case may be, is not original or unique and that the underlining of that word element serves merely to highlight it. Those figurative elements are therefore not capable of affecting in any way the comprehension or the meaning of the word element ‘fi’ of the marks applied for. Consequently, the Board of Appeal was correct in finding, in essence, that those figurative elements would not divert the attention of the public from the descriptive meaning of that word element. The applicant is not therefore justified in claiming that the figurative elements of the marks applied for make the meaning of their word element secondary. 38 It follows from all of the foregoing that the Board of Appeal correctly concluded that the marks applied for were descriptive of the characteristics of the services covered. 39 That conclusion is not called into question by the applicant’s argument based on EUIPO’s decision-making practice. 40 In that regard, the applicant submits that EUIPO authorised, including recently, the registration of various FI marks and that of various marks whose word element could constitute, as is the case with the marks applied for, an ISO 3166-1 alpha-2 code, very widely used to designate countries. While admitting that EUIPO is not bound by its previous decisions, the applicant submits that, having regard to the principles of equal treatment and sound administration, those decisions should have been taken into account in the context of examining the marks applied for. 41 It should be borne in mind that the decisions concerning registration of a sign as an EU trade mark which EUIPO is led 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 (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited). 42 In the present case, as is apparent from paragraph 38 above, the Board of Appeal was correct in finding that the marks applied for were caught by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001. It is therefore to no avail that the applicant relies on previous registrations with EUIPO in order to invalidate that finding, especially since the EU trade mark registrations including the word element ‘fi’ relied on by the applicant were adopted by first-instance adjudicating bodies of EUIPO, whose decisions are not binding either on the Board of Appeal or on the General Court (see, to that effect, judgment of 12 December 2019, Conte v EUIPO (CANNABIS STORE AMSTERDAM), T‑683/18, EU:T:2019:855, paragraph 79 and the case-law cited). Moreover, in the present case, the argument that other marks which could be perceived as referring to a State, in so far as they are composed of a word element constituting an ISO 3166-1 alpha-2 code, have been registered with EUIPO, appears to be ineffective since the circumstance that the marks applied for may be perceived as being constituted by the acronym ‘FI’ for the term ‘financial institution’ is sufficient to establish their descriptiveness (see paragraph 36 above). 43 It must be added that, according to settled case-law, it is evident from the wording of Article 7(1) of Regulation 2017/1001 that, if one of the absolute grounds for refusal listed in that provision applies, that suffices for the sign at issue not to be registrable as an EU trade mark (see, to that effect, judgments of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 31 and the case-law cited, and of 28 April 2021, Freistaat Bayern v EUIPO (GEWÜRZSOMMELIER), T‑348/20, not published, EU:T:2021:228, paragraph 62). 44 In the present case, since it has been found that the marks applied for were descriptive of the services covered for the purposes of Article 7(1)(c) of Regulation 2017/1001 and that that ground alone justifies the refusals to register the marks applied for, it is not necessary to examine the question whether, in addition, those marks are devoid of any distinctive character, within the meaning of Article 7(1)(b) of that regulation. 45 It follows that the single plea in law must be rejected and, therefore, the action as a whole must be dismissed. Costs 46 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. 47 Although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, it is appropriate to order each party to bear its own costs. On those grounds, THE GENERAL COURT (Ninth Chamber) hereby: 1. Joins Cases T‑465/25 and T‑466/25 for the purposes of the judgment; 2. Dismisses the actions; 3. Orders Fisher Investments Europe Ltd and the European Union Intellectual Property Office (EUIPO) each to bear their own costs. Kingston Marcoulli Hettne Delivered in open court in Luxembourg on 29 April 2026. V. Di Bucci S. Papasavvas Registrar President * Language of the case: English.