Judgment — ECLI:EU:T:2016:287
Date: 2016-05-12
Language of the case: German
Court formation: Sixth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Germany

Summary — Judgment of the General Court (Sixth Chamber), 12 May 2016 1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Assessment of distinctive character — Criteria (Council Regulation No 207/2009, Art. 7(1)(b)) 2. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Marks constituted of advertising slogans — Distinctive character — Application of specific criteria for assessment — Not permissible (Council Regulation No 207/2009, Art. 7(1)(b)) 3. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Marks constituted of advertising slogans — Flattering promotional formula (Council Regulation No 207/2009, Art. 7(1)(b)) 4. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Marks constituted of advertising slogans — Flattering promotional formula — Figurative mark Mark1 (Council Regulation No 207/2009, Art. 7(1)(b)) 5. EU trade mark — Decisions of the Office — 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 1. See the text of the decision. (see paras 24-29) 2. See the text of the decision. (see paras 30, 34) 3. See the text of the decision. (see paras 32, 33) 4. The figurative trade mark Mark 1 constituted by a combination of the colours black and red, registration of which is applied for in respect of tobacco-based products and electronic cigarettes and in respect of related products falling within Classes 9 and 34 of the Nice Arrangement, is devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 on the EU trade mark, because its laudatory or promotional meaning, perceived immediately and understood as such by the relevant public, eclipses any indication of the commercial origin of the goods concerned, so that the mark will not be remembered by the relevant public as an indication of provenance. In that regard, the fact that the word ‘mark’ is capable of having several meanings is not decisive. One of those meanings is that of trade mark which clearly and essentially has a laudatory and promotional meaning for the goods concerned, since it suggests to the relevant public essentially the idea of a ‘number 1 brand’ for the goods covered by the application. Faced with that mark, the relevant public would not be led to perceive any indication of the commercial origin of the goods covered by it, beyond the promotional information that the mark applied for is ‘number 1’. Concerning the meaning of the figurative elements, the colour combination of black for the word and red for the number, the weakly distinctive font and the difference in size between the word and the number are so lacking in any special character that they bring no distinctive character to the mark applied for as a whole. Those elements possess no feature, in particular in terms of imaginativeness or as regards the way in which they are combined, as would allow the mark to fulfil its essential function in relation to the goods covered by the application for registration. (see paras 40, 41, 43, 44) 5. See the text of the decision. (see paras 46-50)