Judgment — ECLI:EU:T:2017:154
Date: 2017-03-09
Language of the case: German
Court formation: Eighth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Germany

Judgment of the General Court (Eighth Chamber) of 9 March 2017 — Marsh v EUIPO (ClaimsExcellence) (Case T‑308/16) (EU trade mark — Application for the EU word mark ClaimsExcellence — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EC) No 207/2009) 1. 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 — Concept — Mark composed of a word or neologism resulting from a combination of elements (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 16, 18-21, 49) 2. 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. 17) 3. 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 — Assessment of the descriptive nature of a sign — Criteria (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 22, 24) 4. 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 — Word mark ClaimsExcellence (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 23, 25, 26, 37, 38, 42, 43, 46, 47, 49) 5. 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 — Trade mark made up of several elements — Possible for the competent authority to examine each of the elements making up the trade mark — Scope of protection of the mark (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 35) 6. 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, Arts 7(1), and 75, first sentence) (see para. 45) 7. EU trade mark — Definition and acquisition of the EU trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Earlier registration of the mark in certain Member States or third countries — Decisions not binding EU bodies (Council Regulation No 207/2009) (see para. 50) Re: ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 8 April 2016 (Case R 2358/2015-4), concerning an application for registration of the word sign ClaimsExcellence as an EU trade mark. Operative part The Court: 1. Dismisses the action; 2. Orders Marsh GmbH to pay the costs.