Information;Judgment — ECLI:EU:T:2025:340
Date: 2025-03-26
Language of the case: English
Court formation: Seventh Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible
Origin: Hungary

summary of its assessment set out in paragraph 23 above, but that it has not made an error of law in that regard. 32 It should be borne in mind that, by using the terms ‘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’ in Article 7(1)(c) of Regulation 2017/1001, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, second, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited). Furthermore, it has already been held that account had to be taken of the intended users of the goods covered by the mark applied for as a characteristic of those goods (judgment of 8 May 2024, Tiendanimal v EUIPO (CRIADORES), T‑314/23, not published, EU:T:2024:299, paragraph 28). 33 Third, as regards the applicant’s argument that most of the software is not developed or marketed for the purpose of combating fraud and that only some of the goods and services in question provide complex anti-fraud and additional specialised functions, it must be borne in mind that, for Article 7(1)(c) of Regulation 2017/1001 to apply, it is sufficient for the sign to be descriptive of one of the possible intended purposes of the goods and services at issue which the relevant public is liable to take into account when making a choice and which accordingly constitutes an essential characteristic thereof (judgment of 12 June 2024, Nike Innovate v EUIPO – Puma (FOOTWARE), T‑130/23, not published, EU:T:2024:373, paragraph 67). 34 As for the goods in question in Class 9, the applicant does not expressly indicate that they may not serve to prevent fraud or combat fraud. In any event, it provides no explanation as to the purposes unrelated to fraud prevention, which, according to the applicant, those goods serve, nor does it adduce any evidence establishing or at least indicating that they could not serve to combat fraud. On the contrary, Annex A.3 to the application shows that the applicant’s goods are used in combating fraud. As regards the services in question in Classes 42 and 45, the applicant concedes that they may in fact serve to combat fraud. 35 Moreover, it must be stated that the applicant does not identify among the goods and services in question those which it claims are not developed or marketed to combat fraud or which it sustains did not have complex or specialised functions for that purpose. In addition, the applicant’s claim summarised in paragraph 33 above is not substantiated, either by evidence or explanations concerning the allegedly different functions of the goods and services in question. 36 Fourth, the applicant submits that the expression ‘fraud fighters’ is not customarily used in the industry concerned to describe anti-fraud software and software-related services and that other terms are used for that purpose. 37 However, in order for EUIPO to refuse to register a trade mark under Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (judgment of 8 June 2022, Vitronic v EUIPO (Enforcement Trailer), T‑433/21, not published, EU:T:2022:344, paragraph 60). 38 Furthermore, it has also been held that it was irrelevant whether there were other, more usual, signs or indications for designating the same characteristics of the goods or services referred to in the application for registration than those of which the mark applied for consists. Although Article 7(1)(c) of Regulation 2017/1001 provides that, if the ground for refusal of registration set out therein is to apply, the mark must consist ‘exclusively’ of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not require that the signs or indications in question should be the only way of designating such characteristics (judgment of 8 June 2022, Enforcement Trailer, T‑433/21, not published, EU:T:2022:344, paragraph 59). 39 Fifth, as regards the applicant’s argument that the Board of Appeal does not rely on any evidence to assess the relevant public’s perception of the international registration applied for and to show that it was necessary that others in the industry use similar names to describe their own goods or services, it must be stated, as observed by EUIPO, that, first, it is not necessary to show that there is already a descriptive use of the sign by the applicant or its competitors. Such evidence is not necessary, since the wording of Article 7(1)(c) of Regulation 2017/1001 refers to the possibility of a sign to be perceived as a designation of a characteristic of the goods or services. Second, the application of that provision does not depend on there being a real, current or serious need to leave a sign or indication free for the benefit of third parties (see, to that effect, judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 35). 40 Sixth, in respect of the applicant’s arguments that, on the one hand, the Board of Appeal did not take into account the fact that, in the software industry, the combination of the term ‘fighters’ and of another term had become an attractive branding structure, and, on the other, signs including the term ‘fighter’ or ‘fighters’ had been registered by EUIPO in respect of goods in Class 9 or services in Class 42, it must be held that the only evidence to which the applicant refers in support of those arguments consists of a list of seven registrations, listed in paragraph 19 of the statement of grounds of the appeal which it lodged before the Board of Appeal. Those decisions relate to six registrations of marks containing the term ‘fighters’ in combination with other terms, which are significantly far removed from the term ‘fraud’, and to the registration of the word sign FraudView. It cannot be inferred from those seven decisions, concerning signs different from the international registration applied for, that that registration is not descriptive of the goods and services in question. 41 Seventh, concerning the applicant’s argument that the international registration applied for has been registered or has not had an absolute ground for refusal of registration raised against it in many English-speaking countries and that it has been registered in Hungary, it must be borne in mind that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal of EUIPO must be evaluated solely on the basis of Regulation 2017/1001, as it is interpreted by the EU judicature (see judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58 and the case-law cited). Accordingly, EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47). 42 It follows from all of the foregoing that the Board of Appeal did not make an error of assessment in finding that the international registration applied for fell within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. In addition, the examination of the present plea has not revealed any shortcomings in the statement of reasons for the contested decision in that regard. 43 Therefore, the first plea must be rejected. The second plea, alleging infringement of Article 7(1)(b) and Article 7(2) of Regulation 2017/1001 44 By its second plea, the applicant submits that the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 and Article 7(2) of that regulation by incorrectly finding that the international registration applied for lacked distinctive character in respect of the goods and services in question on the basis of the ground for refusal concerning descriptive character. According to the applicant, the international registration applied for does have distinctive character. 45 EUIPO disputes the applicant’s arguments. 46 In the contested decision, the Board of Appeal referred to the case-law which states that a descriptive mark is, on that account, necessarily devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001 and, in particular, found that, given that the international registration applied for was descriptive of the goods and services in question, it could not, for that reason, be granted protection in the European Union under Article 7(1)(b) of Regulation 2017/1001 and Article 7(2) of that regulation. 47 In that regard, it must be borne in mind that it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation 2017/1001 applies for the sign applied for not to be registrable as an EU trade mark (judgment of 23 October 2024, Nike Innovate v EUIPO (SUPPORT-FIT), T‑1072/23, not published, EU:T:2024:729, paragraph 44). 48 As is apparent from the examination of the first plea, the Board of Appeal did not make an error of assessment in finding that the international registration applied for fell within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. Since that ground is in itself sufficient to justify the refusal of registration, there is no need, in the present case, to examine the merits of the second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001 and Article 7(2) of that regulation. The third plea, alleging breach of the principles of equal treatment and sound administration 49 The applicant submits that the Board of Appeal breached the principles of equal treatment and sound administration by dismissing the appeal brought before it, since, first, the international registration applied for has been registered for goods and services in Classes 9, 42 and 45 in Hungary as well as in a number of third countries and, second, similar signs have been registered by EUIPO. 50 EUIPO disputes the applicant’s arguments. 51 In the contested decision, the Board of Appeal found that the earlier registrations relied on by the applicant concerned signs different from the sign at issue in the present case. In its view, although some of those signs contained the term ‘fraud’ and others the term ‘fighters’, none of them consisted of the same combination and had the same meaning as the expression ‘fraud fighters’ in relation to the goods and services in question, with the result that they could not be regarded as analogous. Moreover, the Board of Appeal took the view that the principles of equal treatment and sound administration always had to be consistent with respect for the principle of legality and that the examination of any application for registration had to be stringent and full and had to be undertaken in each individual case. It also stated that, as regards registrations of marks outside the EU system, the EU trade mark regime was an autonomous system, which applied independently of any national system. 52 First, as regards registration of similar signs by EUIPO, it should be borne in mind that, since the application by EUIPO of the principles of equal treatment and sound administration must be consistent with respect for the principle of legality, a person who files an application for registration of a sign as an EU trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73, 75 and 76). In addition, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77, and of 25 September 2015, August Storck v OHIM (2good), T‑366/14, not published, EU:T:2015:697, paragraph 40). 53 In any event, it follows from the contested decision that the Board of Appeal examined the earlier registrations relied on by the applicant and explained, in essence, that the signs to which those registrations related could not be regarded as analogous to the international registration applied for. It correctly noted that, although some of those signs contained the term ‘fraud’ and others the term ‘fighters’, none of them consisted of the same combination of those terms and had the same meaning as the expression ‘fraud fighters’ in relation to the goods and services in question. 54 Second, the applicant’s argument claiming that the international registration applied for has been registered in respect of goods and services in Classes 9, 42 and 45 in Hungary as well as in a number of third countries must be rejected on the basis of the case-law cited in paragraph 41 above. 55 Therefore, the third plea must be rejected. The fourth plea, alleging infringement of Article 94(1) of Regulation 2017/1001 56 The applicant submits that the Board of Appeal failed to comply with its duty to state reasons laid down in Article 94(1) of Regulation 2017/1001. First, that board of appeal did not take account of the evidence produced in Annex 1 to the statement of grounds of the appeal brought before it, namely the list of the best fraud-detection software. Second, the Board of Appeal did not clearly define the relevant public and did not assess the market reality and consumer habits and perceptions in the industry of the goods and services in question. Third, that board of appeal did not provide any specific evidence, such as market research, in support of its finding that the expression ‘fraud fighters’ would immediately be understood by the relevant public as descriptive of those goods and services. 57 EUIPO disputes the applicant’s arguments. 58 Under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. The duty to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 20 February 2013, Langguth Erben v OHIM (MEDINET), T‑378/11, EU:T:2013:83, paragraph 15 and the case-law cited). 59 In the present case, in so far as the applicant’s arguments relied on in connection with that plea in fact concern the merits of the grounds of the contested decision, they must be disregarded as ineffective. 60 In any event, contrary to what the applicant claims, the Board of Appeal clearly defined, in paragraphs 18 and 20 of the contested decision, the relevant public and stated adequate reasons, in paragraphs 21 to 30 of the contested decision, for its assessment of the perception by that public of the international registration applied for when that registration is affixed to the goods and services in question. 61 That statement of reasons enabled both the applicant and the Court to understand the Board of Appeal’s reasoning and thus met the requirements of Article 94(1) of Regulation 2017/1001. 62 Therefore, the fourth plea must be rejected and, consequently, the action must be dismissed in its entirety. Costs 63 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 64 Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs. On those grounds, THE GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders Seon Technologies Kft. and the European Union Intellectual Property Office (EUIPO) to bear their own costs. Kowalik-Bańczyk Hesse Ricziová Delivered in open court in Luxembourg on 26 March 2025. V. Di Bucci S. Papasavvas Registrar President * Language of the case: English.