Judgment;Information — ECLI:EU:T:2024:135
Date: 2024-02-28
Language of the case: German
Court formation: Seventh Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - decision unnecessary;Action for annulment - successful

Judgment of the General Court (Seventh Chamber) of 28 February 2024 – BIW Invest v EUIPO – New Yorker Marketing & Media International (Compton) (Case T‑747/22) (1) ( EU trade mark – Invalidity proceedings – Figurative mark Compton – Absolute grounds for invalidity – Lack of descriptiveness – Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) – Distinctive character – Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) ) 1. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or service – Concept (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) (see paragraphs 21, 22) 2. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or service – Aim – Need to preserve availability (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) (see paragraph 23) 3. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or service – Assessment of the descriptive character of a sign – Geographical names (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) (see paragraphs 24-29, 31) 4. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or service – Assessment of the descriptive character of a sign – Determination of the relevant public (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) (see paragraphs 37, 53) 5. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or service – Recognition of the descriptive character in relation to certain products falling within a category – Application of such recognition also to all the products in that category (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) (see paragraphs 42, 43) 6. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or service – Figurative mark Compton (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) (see paragraphs 47, 48, 56, 71-75) 7. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks devoid of any distinctive character – Concept of distinctiveness (Council Regulation No 207/2009, Arts 7(1)(b) and 52(1)(a)) (see paragraphs 80, 81) 8. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks devoid of any distinctive character – Figurative mark Compton (Council Regulation No 207/2009, Arts 7(1)(b) and 52(1)(a)) (see paragraphs 86, 88-91) Operative part The Court: 1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 September 2022 (Case R 1913/2021-2); 2. Orders EUIPO and New Yorker Marketing & Media International GmbH to each bear, in addition to their own costs, half of those incurred by BIW Invest AG, including costs necessarily incurred for the purposes of the proceedings before the Board of Appeal. 1 OJ C 24, 23.1.2023.