Judgment — ECLI:EU:T:2019:246
Date: 2019-04-11
Language of the case: English
Court formation: Sixth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Spain

Judgment of the General Court (Sixth Chamber) of 11 April 2019 — Adapta Color v EUIPO — Coatings Foreign IP (Rustproof System ADAPTA) (Case T‑226/17) (EU trade mark — Invalidity proceedings — EU word mark Rustproof system ADAPTA — Partial declaration of invalidity by the Board of Appeal — Absolute grounds for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) — No distinctive character acquired through use — Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001) — Infringement of the right to be heard — Obligation to state reasons — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) — Evidence submitted for the first time before the Court) 1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Re-examination of the facts in the light of evidence not previously submitted before EUIPO bodies — Not included (Council Regulation No 207/2009, Art. 65) (see para. 14) 2. EU trade mark — Decisions of EUIPO — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case (Council Regulation No 207/2009) (see paras 21, 56, 57) 3. EU trade mark — Appeals procedure — Action before the EU judicature — Legality of a decision issued by EUIPO’s Board of Appeal adjudicating in invalidity proceedings — Challenged by the submission of new facts — Not permissible — Account taken, for the purposes of interpreting EU law, of EU national or international case-law not cited before the EUIPO bodies — Lawfulness (Council Regulation No 207/2009, Art. 65) (see para. 22) 4. EU trade mark — Decisions of EUIPO — Observance of the rights of the defence — Scope of the principle (Council Regulation No 207/2009, Art. 75, second sentence) (see paras 28, 32, 33) 5. EU trade mark — Procedural provisions — Statement of reasons for decisions — First sentence of Article 75 of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see paras 38, 39) 6. Acts of the institutions — Statement of reasons — Obligation — Scope — Plea alleging absence or inadequacy of the statement of reasons — Plea alleging incorrectness of the statement of reasons — Distinction (Art. 296 TFEU) (see para. 40) 7. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Separate examination of the grounds for refusal in relation to each of the goods or services covered by the application for registration — Obligation to state the reasons for refusing to register — Scope (Council Regulation No 207/2009, Art. 7(1) and Art. 75, first sentence) (see paras 47-49) 8. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Aim — Need to preserve availability (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 66) 9. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Meaning (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 67, 68) 10. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Criteria (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 69) 11. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7 of Regulation No 207/2009 — Relevant date for the examination of an absolute ground for invalidity — Date of lodging the application for registration (Council Regulation No 207/2009, Art. 7 and Art. 52(1)(a)) (see para. 82) 12. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(c) of Regulation No 207/2009 — Word mark Rustproof system ADAPTA (Council Regulation No 207/2009, Arts 7(1)(c), and 52(1)(a)) (see paras 85-89, 92-96) 13. EU trade mark — Definition and acquisition of the EU trade mark — Refusal of registration based on one of the absolute grounds for refusal set out in Article 7(1) of Regulation No 207/2009 — Whether sufficient (Council Regulation No 207/2009, Art. 7(1)) (see para. 98) 14. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) and (c) of Regulation No 207/2009 — Exception — Distinctive character acquired through use — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b), and (c) and Art. 52(2)) (see para. 105) 15. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Distinctive character acquired through use — Criteria for assessment (Council Regulation No 207/2009, Art. 7(3)) (see paras 106-108) 16. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) and (c) of Regulation No 207/2009 — Exception — Distinctive character acquired through use — Word mark Rustproof system ADAPTA (Council Regulation No 207/2009, Art. 7(1)(b), and (3), and Art. 52(2)) (see paras 110, 112-115) Re: Action brought against the decision of the Fifth Board of Appeal of EUIPO of 6 February 2017 (Case R 2408/2015-5), relating to invalidity proceedings between Coatings Foreign IP and Adapta Color. Operative part The Court: 1. Dismisses the action; 2. Orders Adapta Color, SL to pay the costs.