JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
29 November 2018 (*)
(EU trade mark — Invalidity proceedings — EU word mark FUNNY BANDS — Absolute grounds for refusal — Article 7(1)(b) and (c) and Article 52(1)(a) of Regulation (EC) No 207/2009 (now Article 7(1)(b) and (c) and Article 59(1)(a) of Regulation (EU) 2017/1001))
In Case T‑214/17,
Out of the blue KG, established in Lilienthal (Germany), represented by G. Hasselblatt, V. Töbelmann and A. Zarm, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, J. Ivanauskas and D. Walicka, acting as Agents,
defendant,
the other parties to the proceedings before the Board of Appeal of EUIPO being
Frédéric Dubois, residing in Lasne (Belgium),
MFunds USA LLC, established in Miami Beach, Florida (United States),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 20 January 2017 (Case R 1081/2016-2) concerning invalidity proceedings between Out of the blue, of the one part, and Frédéric Dubois and MFunds USA, of the other part,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, I. Labucka and A. Dittrich (Rapporteur), Judges,
Registrar: I. Dragan,
having regard to the application lodged at the Court Registry on 6 April 2017,
having regard to the response lodged at the Court Registry on 18 July 2017,
further to the hearing on 13 July 2018,
gives the present
Judgment
I.      Background to the dispute
1        On 18 June 2015, Mr Frédéric Dubois and MFunds USA LLC obtained registration, under number 9 350 794, of the EU word mark FUNNY BANDS (‘the mark at issue’) from the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The goods and services covered by the mark at issue are in Classes 14, 17 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, jewellery, precious stones; horological and chronometric instruments; rings (jewellery); rings (jewellery); bracelets (jewellery); necklaces (jewellery); novelty key rings’;
–        Class 17: ‘Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal; Rings of rubber; rubber, raw or semi-worked; ebonite (vulcanite); liquid rubber; synthetic rubber; cords of rubber; cords of rubber; plastic fibres not for textile use; threads of rubber or of silicone, not for use in textiles; elastic threads, not for textile purposes; threads of plastic materials, not for textile use; semi-processed plastic substances’;
–        Class 35: ‘Advertising; business management; business administration; office functions; business administration of licences for goods and services for others; import-export agencies; procurement for others (purchasing of goods and services for other businesses); demonstration of goods; distribution of samples; dissemination of advertisements; direct mail advertising; direct mail advertising; collection and systematic ordering of data in a central file; computerised file management; Organisation of exhibitions for commercial or advertising purposes; presentation of goods on all means of communication for retail sale; sales promotion (for others); publication of publicity texts; on-line advertising on a computer network; mail advertising; radio advertising; television advertising; marketing research; recruiting sponsors; Writing of publicity texts; purchase orders (administrative processing of -); wholesaling and retailing of precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, rings (jewellery), bands (jewellery), bracelets (jewellery), necklaces (jewellery), key rings (trinkets or fobs), rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metal, rings of rubber, gum, raw or partly processed, ebonite (vulcanite), liquid rubber, synthetic rubber, cords of rubber, cords of rubber, plastic fibres, not for textile use, threads of rubber or of silicone, not for use in textiles, elastic threads, not for use in textiles, threads of plastic materials, not for textile use, plastics in extruded form’.
3        On 24 June 2015, the applicant, Out of the blue KG, filed an application for a declaration that the mark at issue was invalid, pursuant to Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 59(1)(a) and Article 7(1)(b) and (c) of Regulation 2017/1001) in respect of all the goods and services covered by the mark at issue.
4        On 23 May 2016, the Cancellation Division rejected the application for a declaration of invalidity.
5        On 13 June 2016, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
6        By decision of 20 January 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. First, it rejected the applicant’s assessment that the mark at issue was descriptive. In that regard, it noted that FUNNY BANDS had an obscure meaning and that there was not a sufficiently direct and specific relationship between the mark at issue and the goods and services in question. In that context, the Board of Appeal found that the term ‘funny’ could not be regarded as describing a characteristic of a ‘band’, where ‘band’ is understood to mean an encircling strip comprising a piece of jewellery or used as a fastener or where it is understood to mean a ‘plain ring for the finger’. That finding applies a fortiorito the wholesale and retail services in Class 35 relating to the same goods. Secondly, the Board of Appeal rejected the applicant’s argument that the mark at issue lacked distinctive character on the ground that that argument was based solely on the alleged descriptive character of the mark at issue. Thirdly, as regards the previous decision-making practice of EUIPO, the Board of Appeal noted that the legality of EUIPO decisions must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of EUIPO and also that the factual circumstances which gave rise to the decisions cited by the applicant, relating to the trade marks COOL BANDS, SPORT BANDS, BADGE BANDS and CRAZY BANDS, were different from those in the present case.
II.    Forms of order sought by the parties
7        In the application initiating proceedings, the applicant claims that the Court should:
–        annul the contested decision;
–        declare the mark at issue invalid;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the application for alteration in its entirety;
–        order the applicant to pay the costs.
9        At the hearing, it was confirmed that, by its first head of claim, EUIPO seeks to have the appeal dismissed in its entirety, including the dismissal of the application for annulment of the contested decision.
10      Moreover, the applicant withdrew part of its action. It stated at the hearing that it was challenging the contested decision only in so far as it confirmed the Cancellation Division’s rejection of the application for cancellation of the word mark FUNNY BANDS for the following goods and services:
–        Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, jewellery; rings (jewellery); rings (jewellery); bracelets (jewellery); necklaces (jewellery); novelty key rings’;
–        Class 17: ‘Rubber, gutta-percha, gum and products made of those materials, not included in other classes; flexible pipes, not of metal; rubber rings; unworked or semi-worked rubber; cords of rubber’;
–        Class 35: ‘Wholesale and retail of precious metals and their alloys and goods in precious metals or coated therewith, jewellery, rings (jewellery), rings (jewellery), bracelets (jewellery), necklaces (jewellery), rubber, gutta-percha, gum and goods made from these materials, flexible pipes, not of metal’.
III. Law
A.      Admissibility of the action
11      Despite the partial withdrawal of the action at the hearing, EUIPO maintains that the remainder of the action is inadmissible and must therefore be rejected. In that regard, EUIPO submits, in essence, that the application does not identify with the requisite degree of precision the essential elements of fact and of law on which the action is based, contrary to Article 177(d) of the Rules of Procedure of the General Court, and does not enable the Court to give a ruling on the substance of the action without infringing Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), nor EUIPO to defend itself effectively. According to EUIPO, the arguments put forward by the applicant are based on a definition of the term ‘band’ meaning ‘flat, thin strip or loop’ and so do not apply, as a result, either to the products designating raw materials or semi-manufactured products, namely ‘precious metals and their alloys’ in Class 14 and ‘rubber, gutta-percha, gum; unworked or semi-worked rubber’ in Class 17, or to the following services in Class 35: ‘retail and wholesale of precious metals and their alloys, rubber, gutta-percha, gum’.
12      That argument cannot be accepted. In the first place, it must be borne in mind that, under Article 177(d) of the Rules of Procedure, an application in an action brought against a decision of a Board of Appeal of EUIPO must contain the subject matter of the proceedings, the pleas in law and arguments relied on and a summary of those pleas in law. In the present case, the application meets those requirements. The essential elements of fact and of law are apparent from its contents. Contrary to EUIPO’s submissions, it is clear from the application that the applicant disputes the Board of Appeal’s assessment that the mark at issue has an obscure meaning as regards the goods and services concerned and that it submits, in particular by devoting a paragraph to each of Classes 14, 17 and 35 (paragraphs 30 to 32 of the application), that the mark at issue is descriptive of the goods and services in those classes. The question of whether the expression ‘funny bands” actually serves to designate a characteristic of the goods and services concerned is, contrary to what EUIPO appears to suggest, a question concerning the substance and not admissibility. The applicant has therefore set out the pleas in law and arguments relied on in support of its application for annulment of the contested decision and cancellation of the mark at issue in a manner sufficiently clear and precise to enable the defendant to prepare its defence, as is apparent from the response, and the Court to rule on the present action.
13      In the second place, it is also appropriate to reject EUIPO’s argument that the action is inadmissible since the Court cannot uphold the claim for annulment of the contested decision and the mark at issue without infringing Article 76(1) of Regulation No 207/2009. Indeed, it is clear from the case-law concerning Article 76(1) of Regulation No 207/2009 that, in the context of proceedings for a declaration of invalidity, even when that involves, as in the present case, absolute grounds for invalidity, the Board of Appeal is not to examine the facts of its own motion (see, to that effect, judgment of 27 June 2017, Aldi Einkauf v EUIPO — Fratelli Polli (ANTICO CASALE), T‑327/16, not published, EU:T:2017:439, paragraphs 38 to 40 and the case-law cited). However, having regard to the considerations set out in paragraph 12 above, the applicant cannot be accused of not having adduced evidence to call into question the validity of the contested decision and of the mark at issue. In those circumstances, the Court is in a position, where appropriate, to annul the contested decision and, in the context of a possible alteration of the decision under Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001), to declare the mark at issue invalid without examining the facts of its own motion.
14      Therefore, the present action is admissible and must be examined as to its substance.
B.      Substance
15      The applicant has put forward two heads of claim, the first seeking the annulment in part of the contested decision and the second seeking a declaration that the mark at issue is invalid for the goods and services referred to in paragraph 10 above.
1.      The first head of claim, seeking the annulment in part of the contested decision
16      In support of its application for annulment of the contested decision, the applicant puts forward three pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation No 207/2009, the second alleging infringement of Article 7(1)(b) of that regulation and the third alleging infringement of the principles of equal treatment and the protection of legitimate expectations.
(a)    The first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
17      By its first plea, the applicant disputes the Board of Appeal’s assessment of the descriptive character of the mark at issue within the meaning of Article 7(1)(c) of Regulation No 207/2009.
18      Under Article 52(1)(a) of Regulation No 207/2009, the invalidity of an EU trade mark is to be declared, on application to EUIPO, where the EU trade mark has been registered contrary to the provisions of Article 7 of that regulation (now Article 7 of Regulation 2017/1001). Under Article 7(1)(c) of Regulation No 207/2009, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate 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, are not to be registered.
19      According to case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may freely be used by all (see judgment of 16 December 2015, Perfetti Van Melle v OHIM (DAISY and MARGARITAS), T‑381/13 and T‑382/13, not published, EU:T:2015:983, paragraph 49 and the case-law cited).
20      For a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 23 January 2014, NCL v OHIM (NORWEGIAN BREAKAWAY), T‑514/12, not published, EU:T:2014:28, paragraph 17 and the case-law cited).
21      Furthermore, the Court has held, first, that the application of Article 7(1)(c) of Regulation No 207/2009 does not require the sign at issue to be the usual means of designation. Second, in order for EUIPO to refuse registration of a trade mark under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications referred to in that article composing that mark 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. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 17 October 2017, Murka v EUIPO (SCATTER SLOTS), T‑704/16, not published, EU:T:2017:728, paragraph 26 and the case-law cited).
22      Moreover, if a mark consisting of a neologism or of a word produced by a combination of elements is to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive. Such descriptiveness may also be found in respect of the neologism or word itself (see judgment of 2 May 2012, Universal Display v OHIM (UniversalPHOLED), T‑435/11, not published, EU:T:2012:210, paragraph 17 and the case-law cited).
23      It must also be borne in mind that the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, second, by reference to the goods or services concerned (see judgment of 2 May 2012, UniversalPHOLED, T‑435/11, not published, EU:T:2012:210, paragraph 19 and the case-law cited).
24      It is in the light of those considerations that the assessment of whether, in the present case, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 must be made.
25      In the present case, it is apparent from paragraph 10 above that the goods and services covered by the mark at issue in respect of which the annulment of the contested decision is sought are in Classes 14, 17 and 35. The goods in Class 14 are precious metals and their alloys and goods in those materials, jewellery, rings, bracelets, necklaces and novelty key rings. Those in Class 17 include rubber, gutta-percha, gum and products made of those materials, flexible pipes not of metal and rubber rings and cords. The services in Class 35 are, in essence, wholesale and retail sale of the goods referred to above.
26      As regards the relevant public, the Board of Appeal found, in paragraph 27 of the contested decision, that the goods and services at issue are directed at both average consumers, reasonably well informed and reasonably observant and circumspect, and professionals, who show a higher level of attention. Contrary to the applicant’s apparent suggestion, it is appropriate to endorse the Board of Appeal’s finding relating to the dual nature of the relevant public, consisting of both average consumers and of specialised professionals. As rightly pointed out by EUIPO, the mark at issue has also been registered for goods designating a raw material or a semi-finished product and wholesale services which are, by their nature, intended for professionals. The Board of Appeal also correctly stated, in paragraph 28 of the contested decision, that, since the mark at issue is composed of two English words, it is in relation to English-speaking consumers in the European Union that the ground for refusal in Article 7(1)(c) of Regulation No 207/2009 must be assessed.
27      Accordingly, it is with regard to that relevant public which it must be examined, on the basis of a given meaning of the word sign at issue, whether there is a sufficiently direct and specific relationship between the word sign FUNNY BANDS and the goods and services at issue.
28      In that regard, the Board of Appeal found, first, in paragraph 34 of the contested decision, that the mark at issue had an obscure meaning and, second, in paragraphs 35 to 42 of the contested decision, that it was not descriptive of the goods and services covered by it.
(1)    The meaning of the mark at issue
29      In the first place, as regards the meaning of the mark at issue and, in that context, the meaning of the English words ‘funny’ and ‘bands’ considered in isolation, it is appropriate to confirm the definitions in paragraphs 31 and 32 of the contested decision, which, moreover, are not called in question by the parties. It follows, on the one hand, that the term ‘funny’ is understood as meaning ‘causing laughter or amusement; humorous’ or ‘difficult to explain or understand; strange or curious’ and, on the other, that ‘bands’ is the plural of the term ‘band’ which means, inter alia, ‘plain ring for the finger, especially a gold wedding ring’, ‘thin, flat encircling strip: as a close-fitting strip that confines material at the waist, neck or cuff of clothing’ and ‘a flat, thin strip or loop of material, used as a fastener, for reinforcement, or as decoration’.
30      Taken in isolation, the word elements which make up the mark at issue thus have a clear meaning that is easily understood by the relevant public.
31      In the second place, it is therefore necessary to examine whether the Board of Appeal correctly held, in paragraph 34 of the contested decision, that the expression ‘funny bands’, considered as a whole, had an obscure meaning as regards the goods and services concerned. In the same vein, the Cancellation Division found that the message conveyed by the mark at issue was not fully understandable by the relevant public.
32      The applicant disputes that assessment and claims that the mark at issue has a clear meaning which corresponds to the simple sum of the definitions of the words ‘funny’ and ‘bands’, namely ‘a flat, thin strip or loop of material, used as a fastener, for reinforcement, or as decoration, which is humorous/curious/strange’.
33      EUIPO contends that the word combination ‘funny bands’ has an unusual nature and creates an impression sufficiently far removed from that produced by the mere combination of its components. In that regard, EUIPO claims, on the one hand, that the definition of the term ‘band’ in the sense of ‘a flat, thin strip or loop of material, used as a fastener, for reinforcement, or as decoration’ defines the term ‘band’ in relation to its function and not its form and accordingly does not cover goods which have in themselves the form of a band or loop, but only those which form part of another product and which fulfil, in that context, the above functions. On the other hand, where ‘band’ is understood to mean ‘a plain ring for the finger, especially a gold wedding ring’, EUIPO argues that its combination with the word ‘funny’ creates an inherent and clear contradiction, because a plain ring, that is to say, without any decoration, cannot be funny.
34      In that regard, it must be stated, first, that the combination of the terms ‘funny’ and ‘bands’, separated by a space, is consistent with English grammar rules. The structure of the mark at issue is therefore not unusual. Thus, it will be understood as meaning that the adjective ‘funny’ seeks to describe a characteristic of the noun ‘bands’. Secondly, it is appropriate to note that the definition of the term ‘funny’, in particular in the sense of ‘provoking laughter or amusement’, ‘strange’ or ‘curious’ specifies neither what is ‘funny’ nor to what extent. Consequently, it does not preclude the term ‘funny’ being combined with the word ‘bands’, in the sense of ‘a flat, thin strip or loop of material, used as a fastener, for reinforcement, or as decoration’.
35      Thirdly, EUIPO’s argument that the combination ‘funny bands’ has an unusual nature and creates an impression which is sufficiently far removed from that produced by the mere combination of its components, must be rejected. On the one hand, the applicant’s line of argument is not at all based on the definition of the term ‘band’ meaning ‘a plain ring for the finger’. Accordingly, EUIPO’s argument alleging that the combination of the words ‘funny’ and ‘bands’ contains an inherent and clear contradiction due to the fact that a ‘band’ meaning ‘a plain ring for the finger’, that is to say, without decoration, cannot be humorous must be rejected. In that context, it should also be recalled that, according to the settled case-law, a sign falls under the prohibition in Article 7(1)(c) of Regulation No 207/2009, if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
36      On the other hand, it should be noted that the definition of the term ‘band’ relied upon by the applicant, namely ‘a flat, thin strip or loop of material, used as a fastener, for reinforcement, or as decoration’, does not, in any event, contain any similar limitation. In fact it covers, in view of its non-specific nature, a large number of different variants as regards the visual design of the strips or loops. In that context, it should be noted that, as is apparent from the very wording of the latter definition, it refers not only to the function which the ‘band’ fulfils in respect of another article, but also to goods which in themselves have the form of a ‘band’. Accordingly, it cannot be argued that the combination ‘funny bands’, includes, in that case, an inherent and clear contradiction which leads to the meaning of the mark at issue being incomprehensible to the relevant English-speaking public.
37      It follows from the foregoing considerations, as the applicant argues, that at least a significant part of the relevant public will understand the mark at issue as referring to ‘bands’ which are ‘funny’, that is to say flat, thin strips or loops of material, used as fasteners, for reinforcement, or as decoration, which are humorous, strange or curious.
(2)    The ability of the term ‘funny’ to designate a characteristic of goods designated by the term ‘bands’
38      As regards the relationship between the mark at issue and the goods and services at issue, the Board of Appeal stated, in paragraph 39 of the contested decision, that, as correctly found by the Cancellation Division, a ‘band’ meaning an encircling strip, being a piece of jewellery or used as a fastener, was not, in itself, an article that will cause laughter. To the English-speaking public, the adjective ‘funny’ means ‘causing laughter or amusement; humorous’ as in the expressions ‘a funny story’ or ‘a funny person’. According to the Board of Appeal, that is not a characteristic that is normally attached to ‘bands’ in the sense of encircling strips. The Board of Appeal added that the expression ‘funny’, in addition, could not describe a ‘band’ in the sense of ‘a plain ring for the finger, in particular a gold wedding ring’, since a plain ring, that is to say, without decoration, could not be humorous. Finally, the Board of Appeal took the view that that finding held true a fortiori for wholesale and retail services relating to the same goods in Class 35. Furthermore, the reference in paragraph 37 of the contested decision to the judgment of 2 December 2008, Ford Motor v OHIM (FUN) (T‑67/07, EU:T:2008:542), shows that the Board of Appeal also found that, although the term ‘funny’ could potentially evoke allusive associations, it does not designate, in a precise manner, a characteristic of ‘bands’.
39      The applicant disputes that assessment and claims, in essence, first, that the Board of Appeal relied on a very limited interpretation of the term ‘funny’ to deny that it can describe a characteristic of goods covered by the definition of the term ‘band’ and, second, that the word ‘funny’ does not merely confer a positive image in the abstract on the goods and services covered, but will immediately be perceived as referring to ‘bands’ that could be particularly amusing and bring happiness to the consumer by being colourful, awkwardly shaped or printed with humorous motifs.
40      EUIPO disputes the applicant’s line of argument and submits, in essence, first, that the word ‘funny’ would not be understood in the sense alleged by the applicant, but, at most, as conferring a positive image on the ‘bands’ and, secondly, that even if those goods were coloured, awkwardly shaped or printed with humorous motifs, those aspects would not fall within the definition of the word ‘funny’.
41      As a preliminary point, it is appropriate to emphasise that, in the context of its analysis of the descriptive character of the mark at issue in paragraphs 35 to 42 of the contested decision, the Board of Appeal has left open the question of whether and, if so, to what extent the term ‘bands’ serves to designate the goods covered by the mark at issue in Classes 14 and 17 or the services in Class 35 concerning those goods. Such was also the case as regards whether the word ‘funny’, taken in isolation, designates a characteristic of those goods. The Board of Appeal rather denied, in paragraph 39 of the contested decision, the descriptive character of the mark at issue, on the basis of the sole consideration that ‘bands’ are not ‘funny’. It follows therefrom that the Board of Appeal thus took the view that, even if one of the goods concerned were covered by the definition of ‘bands’, it could not simultaneously be characterised as being ‘funny’, for which reason the expression ‘funny bands’, taken as a whole, could not, in any event, serve to designate the goods at issue or one of their characteristics. At the hearing, EUIPO confirmed that interpretation of paragraph 39 of the contested decision.
42      It is therefore necessary to examine whether the applicant is correct to dispute that assessment.
43      In the first place, it is appropriate to recall that, in order for a sign to fall within the scope of Article 7(1)(c) of Regulation No 207/2009, it is sufficient, as the very wording of the provision states, that that sign or the indications which it includes may serve to describe goods or services or characteristics of those goods or services. Accordingly, it is sufficient that the term ‘funny’ may be used to designate a characteristic of goods designated by the term ‘bands’ and it is not necessary that ‘bands’, in the sense of flat, thin strips or loops of material, used as fasteners, for reinforcement, or as decoration, always and necessarily have the characteristic of being ‘funny’ (see, to that effect, judgments of 5 November 2008, Neoperl Servisys v OHIM (HONEYCOMB), T‑256/06, not published, EU:T:2008:475, paragraph 35, and of 19 April 2016, Spirig Pharma v EUIPO (Daylong), T‑261/15, not published, EU:T:2016:220, paragraph 46).
44      In the second place, it must be borne in mind, as follows from the considerations set out in paragraphs 34 to 37 above, that, on the one hand, the meaning of the word ‘funny’ does not preclude that term being used in combination with the term ‘bands’ and, on the other, the term ‘bands’ does not include, having regard to its non-specific nature, specifications concerning the visual design of the bands or loops. Accordingly, the goods designated by the term ‘bands’ can have a special visual design, particularly with unusual colours, awkward shapes or humorous motifs. As EUIPO confirmed at the hearing, the contested decision does not contain anything to show that the Board of Appeal took account of the fact that the goods which are covered by the definition of the term ‘band’ can, simultaneously, have unusual colours, awkward shapes or humorous motifs.
45      In the third place, it must be noted that, contrary to EUIPO’s submissions, the term ‘funny’ is not limited, in the present case, to conferring a positive image on the ‘bands’ within the meaning of the case-law cited by the Board of Appeal in paragraphs 37 and 38 of the contested decision. Indeed, in accordance with that case-law, the fact that an undertaking may wish to give its goods a positive image, indirectly and in an abstract manner, yet without directly and immediately informing the consumer of one of the qualities or specific characteristics of the goods or services, is a case of evocation and not designation for the purposes of Article 7(1)(c) of Regulation No 207/2009 (judgment of 2 December 2008, FUN, T‑67/07, EU:T:2008:542, paragraph 33).
46      Nevertheless, unlike the case referred to in paragraph 45 above, which relates to the descriptive character of the word mark FUN in connection with motor land vehicles, the word element ‘funny’ of the mark at issue will not evoke, in the eyes of the relevant public, indirectly and in an abstract manner, the entertaining value of the goods covered by the definition of the term ‘bands’, but will, on the contrary, go beyond suggestion. Indeed, in the context of the mark at issue, namely the combination with the term ‘bands’, the term ‘funny’ will refer, directly, specifically and comprehensibly, to one of the characteristics of the goods covered by the definition of the term ‘bands’.
47      In that regard, it must be noted, firstly, that the combination ‘funny bands’ contrasts with flattering or laudatory terms such as ‘fun’ in that the message conveyed to the consumer is made specific by the presence of the term ‘bands’. Thus, the mark at issue, by the use of the term ‘funny’, does not merely create in the mind of the consumer the abstract idea that the goods concerned may be a source of amusement, but associates the word ‘funny’ with the designation of the goods, namely ‘bands’. Accordingly, the combination ‘funny bands’ enables a concrete, specific and objective link to be established between the meaning of the term ‘funny’ and all the goods which can be classified as ‘bands’.
48      Secondly, it must be noted that that conclusion is even supported by the judgment of 2 December 2008, FUN (T‑67/07, EU:T:2008:542). In paragraph 40 of that judgment, the Court pointed out, on the one hand, that the examiner’s research was not limited to the sign FUN, but also included word combinations comprising the sign FUN and the word ‘vehicles’ and, on the other, that such a combination will necessarily be descriptive of the goods, in so far as it associates the sign applied for with the designation of the goods in question.
49      Thirdly, it must be pointed out that, although the question whether something is, in fact, ‘funny’ is the result of a subjective assessment, the combination of that term and the term ‘bands’ conveys to the consumer a specific message as regards the characteristic of those ‘bands’. As it follows from the considerations in paragraph 44 above, it is possible that the goods designated by the term ‘bands’ include variants with unusual colours, awkward shapes or humorous motifs. Furthermore, contrary to EUIPO’s submissions, those aspects fall within the definition of the term ‘funny’ in the sense of ‘causing laughter or amusement; humorous’ or ‘difficult to explain or understand; strange or curious’. Accordingly, the term ‘funny’, read in combination with the term ‘bands’, immediately informs the relevant public, without further reflection, of the fact that the ‘bands’ are of a particular design, such as unusual colours, awkward shapes or humorous motifs and, in consequence, seek to provoke laughter or create a strange or curious appearance. Thus, the term ‘funny’ describes the nature and purpose of the ‘bands’.
50      In the light of the foregoing considerations, it must be held that the Board of Appeal was incorrect to take the view that the term ‘funny’ cannot serve to designate a characteristic of goods designated by the term ‘band’.
51      Since it is on the basis of that consideration that the Board of Appeal found that the mark at issue was not descriptive, the applicant’s first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, must be upheld, without it being necessary to examine the parties’ other arguments presented in that regard.
(b)    The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
52      In its second plea, the applicant challenges the decision of the Board of Appeal to reject its appeal based on an infringement of Article 7(1)(b) of Regulation No 207/2009.
53      In paragraphs 45 and 46 of the contested decision, the Board of Appeal justified that decision on the ground that, on the one hand, the applicant’s appeal was, as regards the lack of distinctive character of the mark at issue, solely based on its alleged descriptiveness and, on the other, the fact that, according to it, the mark at issue was not descriptive of the goods and services in question.
54      Given that the analysis made by the Board of Appeal of the lack of descriptiveness of the mark at issue is vitiated by an error of assessment, the contested decision must also be annulled on the ground that it rejects the application for a declaration of invalidity based on the ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009.
55      In the light of all the foregoing considerations, the applicant’s first head of claim must be upheld and the contested decision must be annulled in so far as the Board of Appeal rejected its claim for the goods and services referred to in paragraph 10 above, without it being necessary to examine the applicant’s third plea in law, alleging infringements of the principles of equal treatment and protection of legitimate expectations.
2.      The second head of claim, seeking a declaration that the mark at issue is invalid
56      With regard to the applicant’s second head of claim, requesting the Court to declare that the mark at issue is invalid, it must be borne in mind that the power of the General Court, in accordance with Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001), to alter decisions does not have the effect of conferring on that Court the power to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
57      In the present case, the Board of Appeal based the inapplicability of the absolute grounds for refusal referred to in Article 7(1)(b) and (c) of Regulation No 207/2009 on the incorrect assessment that the word ‘funny’ could not serve to describe a characteristic of goods designated by the term ‘bands’ and did not adopt a position on whether and to what extent the term ‘bands’ and the expression ‘funny bands’, taken as a whole, otherwise serve to designate the goods and services in Classes 14, 17 and 35 listed in paragraph 10 above, or one of their characteristics. In those circumstances, it is not for the Court, in the present case, to examine the arguments presented by the applicant and by EUIPO in that regard.
58      The application for alteration of the contested decision made by the applicant on the basis of that line of argument must therefore be rejected.
Costs
59      Under Article 134(3) of the Rules of Procedure, each party is to bear its own costs where each party succeeds on some and fails on other heads of claim.
60      In the present case, the applicant and EUIPO have, respectively, been unsuccessful in part. Moreover, the applicant withdrew part of its action. Accordingly, it is appropriate to order that each party bear its own costs.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 January 2017 (Case R 1081/2016-2), in so far as it dismissed the appeal against the decision of the Cancellation Division to reject the application for a declaration of invalidity of the EU word mark FUNNY BANDS for ‘precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, jewellery; rings (jewellery); rings (jewellery); bracelets (jewellery); necklaces (jewellery); novelty key rings’ in Class 14, ‘rubber, gutta-percha, gum and products made of those materials, not included in other classes; flexible pipes, not of metal; rubber rings; unworked or semi-worked rubber; cords of rubber’ in Class 17 and ‘services of wholesale and retail of precious metals and their alloys and goods in precious metals or coated therewith, jewellery, rings (jewellery), rings (jewellery), bracelets (jewellery), necklaces (jewellery), rubber, gutta-percha, gum and goods made from these materials, flexible pipes, not of metal’ in Class 35;
2.      Dismisses the remainder of the action;
3.      Orders each party to bear its own costs.
Gratsias
Labucka
Dittrich
Delivered in open court in Luxembourg on 29 November 2018.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.