ORDER OF THE COURT (Ninth Chamber)
6 September 2018 (*)
(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Invalidity proceedings — Figurative mark containing the word elements ‘free’ and ‘style’ — Regulation (EC) No 207/2009 — Article 7(1)(c) — Perception by the relevant public — Definitive assessment thereof by the General Court — Article 76 — Facts and evidence produced out of time — Principle of equal treatment — Lack of binding force of previous decisions of the European Union Intellectual Property Office (EUIPO))
In Case C‑150/18 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 February 2018,
El Corte Inglés SA, established in Madrid (Spain), represented by J.L. Rivas Zurdo, abogado,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Elho Business & Sport Vertriebs GmbH,
intervener at first instance,
THE COURT (Ninth Chamber),
composed of C. Vajda (Rapporteur), President of the Chamber, E. Juhász and K. Jürimäe, Judges,
Advocate General: M. Szpunar,
Registrar: A. Calot Escobar,
having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 181 of the Rules of Procedure of the Court of Justice,
makes the following
Order
1        By its appeal, El Corte Inglés SA seeks to have set aside the judgment of the General Court of the European Union of 5 December 2017, El Corte Inglés v EUIPO — Elho Business & Sport (FRee STyLe) (T‑212/16, not published, ‘the judgment under appeal’, EU:T:2017:869), by which the General Court dismissed its action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 February 2016 (Case R 377/2015-1) concerning invalidity proceedings between Elho Business & Sport Vertriebs GmbH and El Corte Inglés (‘the decision at issue’).
2        The appellant also claims that the Court should order EUIPO and Elho Business & Sport Vertriebs to pay the costs.
3        The appellant relies on three grounds in support of its appeal.
The appeal
4        Pursuant to Article 181 of the Court’s Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss the appeal in whole or in part.
5        That provision must be applied in the present case.
6        On 19 June 2018, the Advocate General took the following position:
‘1.      I propose that the Court should dismiss the appeal in the present case as being, in part, manifestly inadmissible and, in part, manifestly unfounded, and order the appellant to bear its own costs in accordance with Article 181 of the Rules of Procedure of the Court, for the following reasons.
The first ground of appeal, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
2.      By its first ground of appeal, the appellant takes issue with the findings of the General Court in paragraphs 29 to 51 of the judgment under appeal, which establish that the mark at issue is descriptive in respect of the goods for which it was registered.
3.      First, the appellant claims that, contrary to the position taken in the judgment under appeal, the mark at issue is not a mark composed “exclusively” of elements which may be considered descriptive. In the present case, the word “free” is positioned above the word “style”, with the result that the whole constitutes a geometric element resembling a square. Furthermore, the appellant states that the mark at issue is composed of upper and lower case letters. Thus, the composition created through the use of different letters suggests that the target public will be attentive to the details of the graphic design. Finally, the orange colour of the composition stands out very clearly in the overall perception of the mark at issue.
4.      Secondly, the appellant states that the words “free” and “style”, as well as the combination of those two words, are used, in other languages, to refer to certain sports. Thus, the expression “free style” does not refer, in itself, to anything in particular beyond its literal meaning in English. In order to describe a specific sport or activity, those words would have to be followed by the name of that sport or activity. Therefore, according to the appellant, the expression “free style” is devoid of distinctive character in respect of goods or services linked to sport, which is not the case in respect of the goods for which registration was sought, which are in Classes 14, 18 and 25 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. Furthermore, for the Spanish-speaking public, the words “free” and “style” cannot be descriptive because they do not form part of everyday Spanish vocabulary.
5.      I consider that the arguments relied on in support of the first ground of appeal cannot succeed.
6.      While the appellant states that the first ground of appeal alleges infringement of Article 7(1)(c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), I nevertheless think that its arguments take issue with the General Court’s appraisal of the facts, which led that court to find that the mark at issue will be perceived by the relevant public as descriptive.
7.      As the General Court recalled in paragraph 19 of the judgment under appeal, descriptiveness, for the purpose of Article 7(1)(c) of Regulation No 207/2009, may only be assessed, first, in relation to the relevant public’s perception of the sign in question and, second, in relation to the goods or services concerned. In that respect, the General Court first of all, in paragraphs 21 to 28 of the judgment under appeal, assessed the relevant public’s perception of the mark at issue, then, in paragraphs 29 to 50 of the judgment under appeal, applied the conclusions drawn from that assessment to the goods for which registration was sought. That appraisal of the facts by the General Court, in paragraphs 21 to 50 of the judgment under appeal, led it to endorse the decision [at issue] and to find that the mark at issue was descriptive.
8.      In that context, I observe that the first ground of appeal concerns an allegedly incorrect assessment by the General Court in respect of, first, the relevant public’s perception of the mark at issue and, secondly, the goods for which registration was sought. Therefore, by the first ground of appeal, the appellant challenges the General Court’s appraisal of the facts.
9.      The effect of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union is that an appeal lies on points of law only and the appraisal of the facts by the General Court does not, save where they are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (orders of 5 February 2010, Mergel and Others v OHIM, C‑80/09 P, not published, EU:C:2010:62, paragraph 25, and of 4 March 2010, Kaul v OHIM, C‑193/09 P, not published, EU:C:2010:121, paragraph 75).
10.      Since the appellant has not alleged distortion of the facts in the first ground of appeal, that ground is manifestly inadmissible.
The second ground of appeal, alleging infringement of Article 76 of Regulation No 207/2009
11.      By its second ground of appeal, which concerns paragraphs 57 to 59 of the judgment under appeal, the appellant claims that the General Court infringed Article 76 of Regulation No 207/2009. More specifically, the General Court should have rejected as inadmissible the evidence submitted by the intervener at first instance, Elho Business & Sport Vertriebs, on the ground that that evidence was not submitted in due time, in accordance with Article 76 of Regulation No 207/2009.
12.      The appellant notes that, in paragraph 58 of the judgment under appeal, the General Court held that it was not necessary to rely on the evidence in question in order to conclude that the mark at issue was descriptive. It also notes that the Cancellation Division of EUIPO found that the mark at issue was not descriptive, whereas the Board of Appeal of EUIPO took the opposite view just after the submission of that evidence. In those circumstances, in the appellant’s view, it is clear from Article 76 of Regulation No 207/2009 that the General Court should have rejected as inadmissible the evidence submitted by the intervener at first instance.
13.      In my view, these arguments are untenable.
14.      It should be observed that the appellant has not demonstrated in what way and to what extent the alleged infringement of Article 76 of Regulation No 207/2009 influenced the judgment under appeal.
15.      It must be recalled that, in paragraph 58 of the judgment under appeal, the General Court noted that it was not apparent from the decision [at issue] that the Board of Appeal did in fact take account of the evidence which was produced for the first time before it. Furthermore, the General Court, as the court with jurisdiction to find and appraise the relevant facts and to assess the evidence, carried out its own analysis of the mark at issue, which led it to conclude that the mark was descriptive. It should be observed that the General Court held in that context, in paragraph 58 of the judgment under appeal, that it was not necessary to rely on that evidence in order to conclude that the mark at issue was descriptive.
16.      Therefore, even if it could be inferred from Article 76 of Regulation No 207/2009 that the General Court was required to reject as inadmissible the evidence submitted by the intervener at first instance, that would, as such, have no effect on the judgment under appeal and could not lead to it being set aside. Accordingly, I consider this ground of appeal to be ineffective.
17.      In any event, I note that Article 76(2) of Regulation No 207/2009, which, according to the appellant, was misconstrued by the General Court, provides that EUIPO “may” disregard facts or evidence which are not submitted in due time by the parties concerned. Therefore, EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time. When evidence is not submitted in due time, EUIPO has broad discretion in respect of any refusal to take account of such evidence, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see, to that effect, judgment of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:C:2018:128, paragraphs 48 and 49).
18.      In my view, such an argument is manifestly unfounded. While EUIPO cannot be criticised for taking account of the evidence on the ground that it was submitted out of time, in the same way, the General Court cannot be criticised, in the present appeal, for not rejecting that evidence as inadmissible. Accordingly, I consider the second ground of appeal to be ineffective and, in any event, manifestly unfounded.
The third ground of appeal, alleging infringement of the principle of equal treatment
19.      By the third ground of appeal, which alleges infringement of the principle of equal treatment and concerns paragraphs 65 to 67 of the judgment under appeal, the appellant criticises the General Court for applying, in the assessment of the descriptiveness of the mark at issue, different criteria from those applied in numerous decisions on trade marks including or directly constituted by the words “free” and “style”.
20.      That argument is manifestly unfounded.
21.      It is clear from well-established case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. However, those principles must be consistent with respect for legality. Moreover, for reasons of legal certainty and, specifically, of sound administration, the examination of any trade mark application must be stringent and exhaustive, in order to prevent trade marks being improperly registered. That examination must be undertaken in each individual case (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73, 75 and 77, and order of 3 October 2012, Cooperativa Vitivinícola Arousana v OHIM, C‑649/11 P, not published, EU:C:2012:603, paragraph 59). Consequently, an appellant is not entitled to rely on previous decisions of EUIPO in order to cast doubt on the conclusion reached by the General Court (see, to that effect, orders of 11 April 2013, Asa v OHIM, C‑354/12 P, not published, EU:C:2013:238, paragraph 42, and of 26 May 2016, Hewlett Packard Development Company v EUIPO, C‑77/16 P, not published, EU:C:2016:373, paragraph 4).
22.      Consequently, I take the view that the third ground of appeal must be rejected as manifestly unfounded and, accordingly, the appeal dismissed in its entirety.
23.      Having regard to the foregoing, I propose that the Court dismiss the appeal, in accordance with Article 181 of the Rules of Procedure of the Court, as being, in part, manifestly inadmissible and, in part, manifestly unfounded, and that the appellant be ordered to bear its own costs.’
7        For the same reasons as those given by the Advocate General, the appeal must be dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.
Costs
8        Under Article 137 of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. Since the present order has been adopted before the appeal was served on the other parties to the proceedings at first instance and, consequently, before those other parties could have incurred costs, it is appropriate to decide that El Corte Inglés must bear its own costs.
On those grounds, the Court (Ninth Chamber) hereby orders:
1.      The appeal is dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.
2.      El Corte Inglés SA shall bear its own costs.
Luxembourg, 6 September 2018.
A. Calot Escobar
C. Vajda
Registrar
President of the Ninth Chamber
*      Language of the case: English.