Opinion of the Advocate General — ECLI:EU:C:2017:41
Date: 2017-01-25
Language of the case: Spanish
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - successful

summary, I believe that the sole ground of appeal cannot be upheld, for the errors in law imputed to it by EUIPO are not to be found in the judgment under appeal, and that the appeal must be dismissed. VI. Conclusion 81. In the light of the foregoing considerations, I propose that the Court should: (1) dismiss the appeal brought by the European Union Intellectual Property Office (EUIPO) against the judgment of the General Court of 4 June 2015 in Case T‑222/14 Deluxe Laboratories v OHIM (deluxe); (2) order EUIPO to bear the costs of Deluxe Entertainment Services Group Inc. 1 Original language: Spanish. 2 Successor to Deluxe Laboratories Inc. 3 The term ‘EU trade mark’ complies with Article 1(2) of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade marks and Designs) (OJ 2015 L 341, p. 21). I shall use the terms ‘European Union trade mark’ and ‘EU trade mark’ interchangeably. 4 Judgment of 4 June 2015, Deluxe Laboratories v OHIM (deluxe), T‑222/14, not published, EU:T.2015:364. 5 There is a substantial body of case-law of the Court of Justice on trade marks which include advertising slogans. See, inter alia, judgments of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraph 35, and of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 45. 6 Of the case-law on laudatory signs, see judgment of 13 January 2011, Media-Saturn-Holding v OHIM, C‑92/10 P, not published, EU:C:2011:15, paragraph 51, and order of 11 December 2014, FTI Touristik v OHIM, C‑253/14 P, not published, EU:C:2014:2445, ‘BigXtra’, paragraph 35. 7 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). Regulation No 2015/2424 is not applicable ratione temporis. 8 The application was published in Community Trade Marks Bulletin No 2009/044 of 16 November 2009. 9 Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended. 10 [Translator’s note: footnote not relevant to English translation]. 11 See paragraphs 22 to 24 of the judgment under appeal. 12 The General Court cited, inter alia, the order of 18 March 2010 in CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraphs 37 and 38, and, by analogy, also the judgment of 15 February 2007, BVBA Management, Training en Consultancy, C‑239/05, EU:C:2007:99, paragraphs 32, 34 and 38. 13 Order of 11 December 2014, C‑253/14 P, not published, EU:C:2014:2445, paragraphs 48 and 49. 14 In that case, the goods and services for which trade mark protections was claimed belonged to Classes 16, 35, 39, 41, 42 and 43 of the Nice Agreement. 15 See, in particular, paragraphs 23 and 24 of the judgment. 16 Thereby fulfilling the obligation to state reasons. 17 Judgments of 12 March 2008, Suez v OHIM (Delivering the essentials of life), T‑128/07, not published, EU:T:2008:72, paragraph 33; of 25 March 2014, Deutsche Bank v OHIM (Leistung aus Leidenschaft), T‑539/11, not published, EU:T:2014:154, paragraph 16; and of 12 December 2014, Wilo v OHIM (Pioneering for You), T‑601/13, not published, EU:T:2014:1067, paragraph 37. 18 In paragraphs 20 and 21 thereof. 19 Paragraph 17 of the judgment under appeal, which refers to the order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 40, and to the judgments of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 28, and of 23 September 2009, France Télécom v OHIM, T‑396/07, not published, EU:T:2009:353, paragraph 28. 20 Referring to the order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 46. 21 Paragraph 23 of the contested decision. 22 Order of 11 December 2014, C‑253/14 P, not published, EU:C:2014:2445. 23 See point 29 of this Opinion and the associated footnote. 24 Deluxe Inc. cited the following by way of example: digital and intellectual property asset management (Class 35); deposit and transport of cameras (Class 39); operation of laboratories for the processing of motion picture, television and advertising films (Class 40); retrieving digital files representing film content (Class 42); and research and development in connection with the illegal downloading and storing of unauthorised digital motion picture, television and advertising files (Class 45). 25 In particular, in paragraphs 15 to 18 thereof. 26 Judgment of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraph 59. 27 Judgment of 15 February 2007, BVBA Management, Training en Consultancy, C‑239/05, EU:C:2007:99, paragraph 32 and the case-law cited. 28 Order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 37 and the case-law cited. 29 Order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 38 and case-law cited. 30 The General Court correctly makes this observation at paragraph 18 of the judgment under appeal. 31 The Court has implicitly rejected that the competent authority may carry out a review of distinctive character limited to the minimum expression of that concept, which would allow it to register any sign provided that it was able even slightly to differentiate it from the signs of competitors. See the judgment of 19 September 2002, DKV, C‑104/00 P, EU:C:2002:506, paragraphs 13 and 20. 32 Judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 59 and the case-law cited. 33 Judgment of 21 October 2004, OHIM v Erpo Möbelwerk, C‑64/02 P, EU:C:2004:645, paragraph 41. 34 Judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 45. 35 Judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 38. 36 EUIPO has attempted to equate luxury with superior quality but that semantic association is neither clear nor inevitable. There may be goods, including everyday consumer goods, which are of high quality (for example, water) but are not necessarily luxury goods. On the other hand, it is possible to imagine luxury goods or services (especially, by reference to their rarity or unusualness) which are not necessarily of exceptional quality. 37 It would be difficult to refer, for example, to a ‘luxury’ system for digital data compression or a ‘luxury’ system for tracking pirated digital content, to mention just two of the services which the disputed mark was intended to protect. 38 At the hearing, Deluxe Inc. confirmed the claim it had already made before the Board of Appeal of EUIPO, without being contradicted, namely that the sign at issue in the dispute has been registered in Spain, Italy, Australia, Canada, the United States and the United Kingdom and that these registrations are proof of its ‘inherent distinctiveness’. 39 This is the figurative mark ‘deluxe’, No 006891949, composed of that word framed by a circle in the colour red. Registration of the mark was granted by EUIPO, at the request of Deluxe Entertainment Services Group Inc., for goods in classes 35, 39, 40, 41, 42 and 45, similar to those covered by the sign at issue in these proceedings. 40 Those considerations do not preclude the mark ‘deluxe’ from lacking distinctive character when applied to certain specific goods. That was the ruling of the General Court in its earlier judgment of 17 December 2014, Lidl Stiftung v OHIM (Deluxe), T‑344/14, not published, EU:T:2014:1097, paragraph 28. 41 Opinion of Advocate General Ruiz-Jarabo Colomer in DKV, C‑104/00 P, EU:C:2002:288, point 91, which the judgment of 19 September 2002 adopted almost verbatim in paragraph 39 (EU:C:2002:506). 42 Council Directive 89/104/EEC of 21 December 1988 (OJ 1989 L 40, p. 1) and Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 (OJ 2008 L 299, p. 25). 43 Judgments of 24 May 2012, Formula One Licensing v OHIM, C‑196/11 P, EU:C:2012:314, paragraph 41, and of 8 November 2016, BSH v EUIPO, C‑43/15, EU:C:2016:837, paragraph 66. In the first of those cases, the dispute concerned the finding of the General Court that the sign ‘F1’ lacked distinctive character despite its prior registration as a national mark. Although the facts of that appeal differed from those of the present appeal, the wording of the judgment in Formula One Licensing v OHIM can be extrapolated to the instant case. 44 At the hearing, EUIPO stated that, in its opinion, the word ‘deluxe’ completely lacks the capacity to distinguish any goods or services. 45 Also at the hearing, in reply to questions from the Court, EUIPO acknowledged that its principal argument was based on the sign ‘deluxe’ being quite incapable of identifying goods and services, and that its alternative argument was based on the fact that, having regard to those goods and services, it is necessary to examine whether they have any common features enabling them to fit into one or more categories. 46 Paragraph 27, in fine, of the judgment under appeal. 47 Although that argument is set out at the end of the judgment under appeal, it is appropriate to refer to it at this juncture because I believe that it best explains the ratio decidendi of the judgment. 48 Paragraphs 20 and 21 of the judgment under appeal. 49 According to the General Court, ‘the mark applied for covers more than 90 goods and services, which are included in eight different classes and relate to areas as diverse as the cinema, advertising, storage and transport of goods, product research and development, security, leisure and information technology’ [free translation] (paragraph 20 of the judgment under appeal). 50 Ibid., paragraph 22. 51 Order of 18 March 2010, C‑282/09 P, EU:C:2010:153. 52 Order of 18 March 2010, C‑282/09 P, EU:C:2010:153. 53 ‘The existence of such a link between, for example, motion picture films, delivery of goods by truck, warehouse storage, product research and development and hosting and designing the websites of others is not obvious and, at all events, cannot be inferred from the wording of the contested decision’ [free translation] (paragraph 27 of the judgment under appeal). 54 Point 2[3] of the contested decision. 55 Acceptance of a common feature arising from the ‘message’ of the mark would be tantamount to reversing the process of logical deduction which leads to the search for a sufficiently direct and specific link between goods and services. 56 Order of 18 March 2010, C‑282/09 P, EU:C:2010:153. 57 Order of 11 December 2014, BigXtra, C‑253/14 P, not published, EU:C:2014:2445. See point 25 of this Opinion. 58 Judgment of 21 March 2014, FTI Touristik v OHIM (BigXtra), T‑81/13, not published, EU:T:2014:140, paragraphs 43 to 47. 59 Order of 18 March 2010, C‑282/09 P, EU:C:2010:153. 60 See point 5 of this Opinion. 61 Judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 47. 62 Judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 48. 63 Judgment of 8 April 2003, Linde and Others, C‑53/01, EU:C:2003:206, paragraph 74. There is no doubt that the sign ‘deluxe’ is complex but since both the examiner and the Board of Appeal emphasised the ‘banal’ character of the figurative element, minimising any importance of that element for the purposes of the examination of distinctive character, they should, in the interests of consistency, have treated that sign as one composed exclusively of a possible indication of the quality of the goods. 64 See the Opinion of Advocate General Ruiz-Jarabo Colomer in Mag Instrument v OHIM, C‑136/02, EU:C:2004:151, point 20. 65 Opinion of Advocate General Jacobs in OHIM v Wrigley, C‑191/01 P, EU:C:2003:225, points 51 and 53. 66 Order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 27 and the case-law cited.