62024TJ0082_RES
Case T‑82/24
Administration of the State Border Guard Service of Ukraine
v
European Union Intellectual Property Office
Judgment of the General Court (Third Chamber) of 13 November 2024
(EU trade mark – Application for EU figurative mark RUSSIAN WARSHIP, GO F**K YOURSELF – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 – Political slogan – Equal treatment – Principle of sound administration – Article 71(1) of Regulation 2017/1001)
EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Figurative mark RUSSIAN WARSHIP, GO F**K YOURSELF
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))
(see paragraphs 26-34, 38-41, 44, 53)
EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character – Marks consisting of political slogans – Slogan conveying a main message of a political nature
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))
(see paragraphs 35, 36)
EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – General reasoning for all the goods and services concerned – Obligation to state the reasons for refusing to register – Scope
(European Parliament and Council Regulation 2017/1001, Arts 7(1) and 94(1), first sentence)
(see paragraph 37)
EU trade mark – Decisions of EUIPO/the Office – Principle of equal treatment – Principle of sound administration – EUIPO’s/The Office’s previous decision-making practice – Principle of legality – Need for a stringent and full examination in each individual case
(European Parliament and Council Regulation 2017/1001)
(see paragraphs 49-52)
Résumé
By its judgment, the General Court addresses, for the first time, the question of the possibility of registering a ‘political slogan’ as a trade mark.
A Ukrainian border guard, the predecessor-in-title to the applicant, Administration of the State Border Guard Service of Ukraine, filed with the European Union Intellectual Property Office (EUIPO) an application for registration of the figurative sign ‘RUSSIAN WARSHIP, GO F**K YOURSELF’ as an EU trade mark for various goods and services. (
1
) The examiner rejected that application for registration in its entirety on the basis of Article 7(1)(f) of Regulation 2017/1001, (
2
) according to which trade marks which are contrary to public policy or to accepted principles of morality must not be registered. The applicant filed a notice of appeal with EUIPO against the examiner’s decision. By the contested decision, (
3
) the Board of Appeal dismissed the appeal on the ground that the mark applied for was devoid of any distinctive character in respect of the goods and services at issue and therefore had to be refused registration pursuant to Article 7(1)(b) of Regulation 2017/1001.
Findings of the Court
The Court notes that the applicant submits unsuccessfully that the Board of Appeal erred in classifying the mark applied for as a ‘political slogan’.
The phrase in the mark applied for had been widely used, immediately after its first use, in order to rally support for Ukraine and had thus become, very quickly, a symbol of Ukraine’s fight against the aggression of the Russian Federation. Thus, that sentence was used in a political context, repetitively and with the aim of expressing and promoting support to Ukraine. That situation corresponds perfectly to the definition of the expression ‘political slogan’ put forward by the applicant itself in its application, namely, an expression, used in a political or social context, repetitive of an idea or purpose, with the goal of persuading the public or a target group within it.
The phrase in the mark applied for has been used very intensively in a non-commercial context and will necessarily be associated very closely with that context by the relevant public. The phrase used in the mark applied for very quickly became one of the symbols of Ukraine’s fight against Russian aggression, associated with a soldier of the Ukrainian army and, thus, with Ukraine. Given the extent of the media coverage of that event, that phrase will be associated with that recent historical moment, well known to the average EU consumer.
In that regard, the Court considers that the Board of Appeal did not err in law in finding that the general principle that the relevant public is not very attentive with regard to a sign which does not immediately indicate the origin of the goods and services concerned, given that they would not perceive it or mentally register it as a trade mark, also applied to signs whose main message was of a political nature.
In view of the essential function of a trade mark, namely that of identifying the origin of the goods or services covered by it, a sign is incapable of fulfilling that function if the average consumer does not perceive, in its presence, the indication of the origin of the goods or services, but only a political message.
As regards the obligation to state reasons, the Court points out that, where the same ground for refusal is given for a category or group of goods or services, the competent authority may use only general reasoning for all of the goods or services concerned. The case-law has indeed made clear that such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services. Nevertheless, it has stated that it is necessary to take into account, in order to determine whether the goods and services are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogenous categories and groups, the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question whether or not the mark concerned by the application for registration comes under one of the absolute grounds for refusal. In addition, the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant for the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services. It follows that such an assessment must be carried out in concreto for the examination of each application for registration and, as the case may be, for each of the different absolute grounds for refusal which may apply.
In the present case, the Board of Appeal found, in the contested decision, that the mark applied for would not be perceived by the relevant public as indicating a commercial origin. Furthermore, it stated that the phrase in the mark applied for would first and foremost be interpreted as a political message and that that perception would be identical for all the goods or services covered by that mark. It follows that the Board of Appeal found that the goods and services covered by the mark applied for form a sufficiently homogeneous group, having regard to the absolute ground for refusal which, in its view, has caught registration of that mark.
Given that the Board of Appeal was right in finding that the mark applied for would not be perceived by the relevant public as indicating a commercial origin, but as a political message promoting support for Ukraine’s fight against the military aggression of the Russian Federation, it could validly group all the goods and services covered by the mark applied for in a single category, despite having different inherent characteristics.
Therefore, in view of the specific nature of the mark applied for and its identical perception by the relevant public with regard to all the goods and services covered by the application for registration, the Court held that it was without committing an error of assessment that the Board of Appeal found that those goods and services form part of a single group to which the ground for refusal, which it upheld, applies in the same way and that it was right to find that the mark applied for is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
(
1
)	More specifically, the mark applied for covers the goods and services in Classes 9, 14, 16, 18, 25, 28 and 41 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.
(
2
)	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).
(
3
)	Decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 December 2023 (Case R 438/2023-1).