JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
9 March 2017 (*)
(EU trade mark — International registration designating the European Union — Word mark FOREVER FASTER — Mark consisting of an advertising slogan — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Equal treatment — Principle of sound administration)
In Case T‑104/16,
Puma SE, established in Herzogenaurach (Germany), represented by M. Schunke, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and K. Sidat Humphreys, acting as Agents,
defendant,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 7 January 2016 (Case R 770/2015-1) relating to the international registration designating the European Union in respect of the word mark FOREVER FASTER,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,
Registrar: P. Cullen, Administrator,
having regard to the application lodged at the Court Registry on 16 March 2016,
having regard to the response lodged at the Court Registry on 20 May 2016,
further to the hearing on 12 January 2017,
gives the following
Judgment
Background to the dispute
1        On 23 December 2013, the applicant, Puma SE, designated the European Union for international registration No 1217411 in respect of the word mark FOREVER FASTER. Notification was given of that registration on the same day to 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).
2        The goods in respect of which registration was sought are, inter alia, in Classes 25 and 28 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, among others, for each of those classes, to the following description:
–        Class 25: ‘Footwear’;
–        Class 28: ‘Games and playthings; gymnastics and sporting apparatus; gymnastics and sporting articles (included in this class); balls for games, golf balls; tennis rackets, cricket bats, golf clubs, hockey sticks, table tennis bats, badminton and squash rackets, table tennis and cricket bats, golf clubs and hockey sticks; roller skates, ice skates and in-line skates’.
3        On 13 October 2014, the examiner informed the applicant of his objections to the registration of the mark applied for as regards the goods referred to in paragraph 2 above. Those objections were based on the grounds laid down in Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.
4        On 12 January 2015, the applicant submitted its comments in response to those objections.
5        By decision of 20 March 2015, the examiner confirmed his initial objections and rejected the application for registration in respect of the goods referred to in paragraph 2 above on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.
6        On 17 April 2015, the applicant filed a notice of appeal with EUIPO against the examiner’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
7        By decision of 7 January 2016 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. First of all, it found, in paragraph 12 of the contested decision, that the goods in question were directed at the public at large and that the average consumers of those goods were deemed to be reasonably well informed and reasonably observant and circumspect. In this respect, the Board of Appeal also stated that, since the mark applied for consisted of two words in English, its distinctiveness had to be assessed by reference to the English-speaking public, as well as consumers who have a sufficient knowledge of English to understand the words used in the mark applied for. Secondly, the Board of Appeal took the view, in paragraphs 13 to 16 of the contested decision, that the relevant public would immediately construe, without any analytical effort, the message conveyed by the expression ‘forever faster’, in accordance with English grammar rules, as referring to ‘speed with a long duration’. The Board of Appeal stated, in paragraphs 16 to 19 of the contested decision, that the message would be perceived as a simple laudatory formula or information on the desired qualities and purpose of the goods in question, namely to help their users become ‘constantly faster’. At the end of that examination, in paragraph 22 of the contested decision, the Board of Appeal concluded that the mark applied for was devoid of any distinctive character as regards the goods in question and that the message conveyed by that mark, beyond its promotional meaning, contained no element enabling the relevant public to perceive it as an indication of the commercial origin of the goods in question and was not unusual in the sporting sector. Thirdly, in paragraph 23 of the contested decision, the Board of Appeal found that the documents submitted by the applicant were not capable of proving distinctive character acquired through use, as provided for in Article 7(3) of Regulation No 207/2009, on the ground that those documents all displayed the mark applied for alongside one of the applicant’s other distinctive signs. Fourthly, as is apparent from paragraphs 24 and 25 of the contested decision, on the one hand, the Board of Appeal observed that the earlier registrations relied on by the applicant were not identical to the mark applied for because they contained other figurative elements or additional word elements warranting a different assessment to that relating to the mark applied for. On the other hand, the Board of Appeal rejected the possibility of basing its assessment of the distinctiveness of the mark applied for on the applicant’s arguments that the mark had been accepted for registration in a Member State and in third countries. The Board of Appeal therefore concluded, in paragraph 26 of the contested decision, that the application for registration had to be rejected, pursuant to Article 7(1)(b) of Regulation No 207/2009, because the mark applied for was not capable of identifying the commercial origin of the goods in question.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to allow registration of the mark applied for in respect of the goods at issue;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.
9        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
10      As was made clear at the hearing and was noted in the minutes of that hearing, the applicant, by its second head of claim, requests that the Court exercise its power to alter the contested decision and find that the mark applied for has an intrinsic distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
Law
11      In support of its action, the applicant raises two pleas in law alleging, first, infringement of Article 7(1)(b) of Regulation No 207/2009 and, second, infringement of the principles of equal treatment and sound administration.
First plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
12      In support of its first plea, the applicant raises two complaints. The first complaint alleges that the Board of Appeal made an error of assessment as regards the meaning attributed to the words comprising the mark applied for and the finding that the mark was devoid of any distinctive character for the goods in question. The second complaint alleges misapplication of the criteria laid down in the case-law for the purpose of determining whether a mark consisting of an advertising slogan is distinctive.
13      EUIPO disputes the applicant’s arguments.
14      It must be recalled that, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character may not be registered. Article 7(2) of the same regulation provides that paragraph 1 is to apply notwithstanding the fact that the grounds of non-registrability obtain in only part of the European Union.
15      According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (see, to that effect, judgments of 20 May 2009, CFCMCEE v OHIM (P@YWEB CARD and PAYWEB CARD), T‑405/07 and T‑406/07, EU:T:2009:164, paragraph 33, and of 21 January 2011, BSH v OHIM (executive edition), T‑310/08, not published, EU:T:2011:16, paragraph 23).
16      The distinctive character of a sign must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception which the relevant public has of it (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 34 and the case-law cited, and of 9 September 2010, OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, EU:C:2010:508, paragraph 32 and the case-law cited).
17      With regard to marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 35 and the case-law cited).
18      As regards the assessment of the distinctive character of those marks, it is inappropriate to apply to the latter criteria stricter than those applicable to other types of sign (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36 and the case-law cited, and of 11 December 2012, Fomanu v OHIM (Qualität hat Zukunft), T‑22/12, not published, EU:T:2012:663, paragraph 16 and the case-law cited). However, it is apparent from the case-law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 37 and the case-law cited, and of 21 May 2015, Mo Industries v OHIM (Splendid), T‑203/14, not published, EU:T:2015:301, paragraph 18 and the case-law cited).
19      The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of the goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood, perhaps even primarily understood, as a promotional formula has no bearing on its distinctive character (see judgment of 21 May 2015, Splendid, T‑203/14, not published, EU:T:2015:301, paragraph 17 and the case-law cited).
20      Furthermore, an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(l)(b) of Regulation No 207/2009 (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 39 and the case-law cited).
21      A mark consisting of an advertising slogan must be regarded as devoid of any distinctive character if it is liable to be perceived by the relevant public merely as a simple promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (see judgments of 11 December 2012, Qualität hat Zukunft, T‑22/12, not published, EU:T:2012:663, paragraph 22 and the case-law cited, and of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, not published, EU:T:2013:303, paragraph 24 and the case-law cited; see also, to that effect, order of 12 June 2014, Delphi Technologies v OHIM, C‑448/13 P, not published, EU:C:2014:1746, paragraph 36).
22      For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the product relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods. In addition, the mere fact that the semantic content of the word sign applied for does not convey any information about the nature of the goods or services concerned is not sufficient to make that sign distinctive (see judgment of 23 September 2009, France Télécom v OHIM (UNIQUE), T‑396/07, not published, EU:T:2009:353, paragraph 17 and the case-law cited).
23      It is in the light of those considerations that the Court must examine whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 by finding that the mark applied for was devoid of distinctive character.
24      In the first place, it should be noted that the Board of Appeal found, in paragraph 12 of the contested decision, that the goods in question were aimed at the public at large and that the average consumer of those goods was deemed to be reasonably well informed and reasonably observant and circumspect. The Board of Appeal also noted that, to the extent that the sign consisted of standard English words, its distinctiveness had to be assessed by reference to the English-speaking public of the European Union, as well as consumers who have sufficient knowledge of English to understand those words. The applicant does not dispute those findings, which are correct and must be endorsed.
25      In the second place, it must be pointed out that, in paragraphs 13 to 16 of the contested decision, the Board of Appeal took the view that the words ‘forever’ and ‘faster’ would be understood as a reference to speed over a long period of time. In that respect, on the one hand, the Board of Appeal noted that the word ‘forever’ would not only be perceived as meaning ‘endless’ or ‘everlasting’, but also, in informal or hyperbolic terms, as a reference to continuity or a very long period of time. On the other hand, the Board of Appeal observed that the word ‘faster’ would be understood as an increase in speed or moving more quickly. That word being a comparative word, without a point of comparison in the present case, it could, according to the Board of Appeal, suggest a comparison with other goods or people that are less fast or even to a comparison in time. The Board of Appeal based its assessment on the meaning of the words comprising the mark applied for according to the definitions given in online dictionaries. As is apparent from paragraphs 16 to 20 and 22 of the contested decision, the Board of Appeal found that the mark applied for, as a whole, would be understood by the relevant public as a laudatory statement indicating the purpose or the desired characteristics of the goods in question, namely to enable their user to be ever faster. Those expressions are, according to the Board of Appeal, commonly used in the sporting sector to motivate athletes and sportsmen in general to improve and to be faster, and to convince them of their capacity to maintain their performance over a long period of time, even, ideally, forever.
26      The applicant submits, in essence, that the Board of Appeal was wrong to find that the mark applied for meant ‘speed for a long duration’, on the ground that that meaning does not correspond to the normally understood meaning of those words. According to the applicant, the word ‘forever’ is normally interpreted as meaning ‘endless’ or ‘everlasting’ and, therefore, cannot be used to describe goods of any kind. Additionally, that is shown by a EUIPO decision relating to the registration of the trade mark FOREVER for goods similar to those covered by the mark applied for. As regards the word ‘faster’, the applicant argues, first, that, being a comparative word without a point of comparison, it did not mean ‘speed’, and, second, that it would be perceived as ambiguous and distinctive of the goods in question.
27      According to settled case-law, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Thus, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered (see judgments of 29 April 2004, Procter & Gamble v OHIM, C‑468/01 P to C‑472/01 P, EU:C:2004:259, paragraph 44 and the case-law cited, and of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 20 and the case-law cited). That does not preclude, however, the competent authority, responsible for ascertaining whether the trade mark for which registration is sought is capable of being perceived by the public as an indication of origin, first examining each of the individual features of the ‘get-up’ of that mark in turn. It may be useful, in the course of the competent authority’s overall assessment, to examine each of the components of which the trade mark concerned is made up (see judgment of 30 June 2005, Eurocermex v OHIM, C‑286/04 P, EU:C:2005:422, paragraph 23 and the case-law cited).
28      Firstly, it should be noted that the Board of Appeal carried out an examination of each word comprising the mark applied for on the basis of the definitions in online dictionaries such as Collins, Oxford English and The Free Dictionary. For the reasons given by the Board of Appeal in paragraphs 14 and 15 of the contested decision, respectively, and referred to in paragraph 25 above and contrary to what the applicant argues, the meanings of the words ‘forever’ and ‘faster’ comprising the mark applied for are not incorrect. Furthermore, those meanings are among those normally attributed to those words by the relevant public.
29      Secondly, the applicant cannot rely on a decision of EUIPO to argue that the word ‘forever’ is normally interpreted as meaning ‘endless’ and not as referring to continuity or a long period of time. In that regard, it must be recalled that, according to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of any previous practice of the Boards of Appeal (see judgment of 13 June 2014, Grupo Flexi de León v OHIM (FLEXI), T‑352/12, not published, EU:T:2014:519, paragraph 32 and the case-law cited). Furthermore, in any event, as is apparent from paragraph 14 of the contested decision and as noted by EUIPO, the registration of the word ‘forever’ as a trade mark, referred to by the applicant, has expired, and an application for registration of that mark was refused by a decision of the Board of Appeal on the ground that that word was not distinctive of the goods that it was intended to cover (decision of 11 August 2014, Case R 592/2014-5, FOREVER).
30      Thirdly, the applicant’s argument that the word ‘faster’ does not mean ‘speed’, on the basis that it is a comparative word which, in the absence of a point of comparison, may be interpreted in many ways and, as such, is distinctive of the goods in question, cannot succeed. It is clear that, in paragraph 15 of the contested decision, the Board of Appeal took account of the comparative nature of the word ‘faster’ and its various possible interpretations, namely that it could suggest a comparison as regards other goods or other persons or a comparison in time. The Board of Appeal, without erring, took the view, in paragraph 19 of the contested decision, that the word referred to the idea of an increase in speed and, therefore, described one of the desired characteristics of the goods in question.
31      Fourthly, even if it were to be accepted, as the applicant argues, that certain meanings of the words comprising the mark applied for are not devoid of distinctive character for the goods in question, that would not be sufficient to cast doubt upon the assessments made by the Board of Appeal in the contested decision as to the lack of distinctiveness of the trade mark applied for, taken as a whole. As the Board of Appeal was correct to point out, in paragraph 21 of the contested decision, a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 25 April 2013, Bayerische Motoren Werke v OHIM (ECO PRO), T‑145/12, not published, EU:T:2013:220, paragraph 34 and the case-law cited).
32      It must be pointed out that, contrary to what the applicant argues, the mark applied for, taken as a whole, describes the desired quality or characteristics of the goods in question. As correctly stated in paragraph 16 of the contested decision, the goods in question may be designed, in particular, to allow their users to move quickly or to win a game or competition. Footwear, in Class 25, is used in numerous sports in which speed is essential. In addition, better results in terms of speed may be achieved thanks to the specific characteristics of a pair of shoes, such as the use of lightweight materials, a flexible structure, or the fact that they are comfortable to wear. Similarly, the goods in Class 28, referred to in paragraph 2 above, are normally designed so as to meet the performance needs of the user, namely the need to be faster than others, faster than before, or to achieve a higher level of performance. Finally, athletes and amateur sportsmen, who form part of the relevant public, are aware of those characteristics of the goods in question and purchase those products, in particular, because of those characteristics.
33      The applicant has therefore failed to show that the Board of Appeal made an error of assessment in finding, in paragraphs 16 to 19 of the contested decision, that the words ‘forever’ and ‘faster’ would be perceived by the relevant public as referring to a permanent or continuous increase in speed. The arguments put forward by the applicant do not undermine the Board of Appeal’s findings that the mark applied for, taken as a whole, sends out a clear message which is not unusual in the sporting sector, corresponding, in essence, to a simple laudatory declaration or information on the desired characteristics of the goods in question, namely that those goods allow their user to be ‘ever faster’ or ‘to go faster for longer’. As it is perceived in that way by the relevant public, the mark applied for, as the Board of Appeal was right to observe in paragraphs 22 and 26 of the contested decision, cannot fulfil the function of identifying the commercial origin of the goods in question and therefore does not comply with the provisions Article 7(1)(b) of Regulation No 207/2009. Consequently, the applicant’s first complaint must be rejected.
34      In the third place, as regards the applicant’s second complaint, alleging an erroneous assessment of the criteria laid down in the case-law for the assessment of the distinctiveness of a mark consisting of an advertising slogan, such as the mark applied for, the following observations must be made.
35      First, as regards the applicant’s arguments that the distinctiveness of a slogan cannot be denied even when the slogan is primarily understood as a promotional formula and only secondarily as an indication of the commercial origin of the goods, it should be noted that the Board of Appeal was correct to find, in paragraph 22 of the contested decision, that the mark applied for was likely to be perceived ‘only’ as a promotional formula. In particular, the Board of Appeal excluded the possibility that, beyond its obvious promotional meaning, the mark applied for could be perceived as an indication of the commercial origin of the goods in question. It took the view, correctly, that the relevant public, when faced with the mark applied for, would recognise it as ‘an expression that conforms with English grammar rules’ and refers to speed over a long period of time (see paragraph 13 of the contested decision), which directly describes a quality or desired characteristics of the goods in question (see paragraphs 16 to 18 of the contested decision). The Board of Appeal concluded that it sends out a clear message, frequently used in advertisements to motivate athletes and sportsmen in general, which would not be understood as a distinctive sign of the goods if it stood by itself, that is to say not accompanied by another distinctive sign of the applicant (see paragraph 19 of the contested decision).
36      Secondly, it is necessary to reject the applicant’s arguments alleging, first, that there is a special practice in the sports industry which allows for the registration of slogans expressing an ‘attitude or lifestyle’, on the basis that that type of slogan will be perceived by consumers as an indication of the commercial origin of the goods and, second, that the combination of a slogan with another distinctive mark does not mean that the slogan itself lacks distinctiveness.
37      In that regard, it should be observed that the applicant relies on slogans which are different to the mark applied for in so far as concerns the words of which they are composed and that the alleged ability to express an attitude or lifestyle is not a factor which plays a decisive role for the proposes of the registration of a slogan, as registration is dependent, inter alia, on the assessment of its distinctiveness. Thus, even assuming that the slogan ‘forever faster’ could express an attitude or lifestyle, that is not capable of calling into question the fact that, following a specific analysis, that slogan was found to be devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 (see paragraph 33 above).
38      Furthermore, in so far as the slogan ‘forever faster’, taken in isolation, was found to be devoid of any distinctive character, the presence of other distinctive marks of the applicant next to it cannot alter the conclusion that that slogan is not, by itself, able to serve the function of identifying the goods as coming from the applicant’s company. Given that those distinctive marks are not the subject matter of the application for registration, the Board of Appeal was right to find, in paragraph 23 of the contested decision, that the evidence which shows the slogan ‘forever faster’ accompanied by those distinctive marks of the applicant does not prove that the sign that it seeks to register has distinctive character
39      Thirdly, while it has been held that the fact that it may have a number of meanings, the presence of a play on words or an imaginative, surprising and unexpected expression is not a necessary condition for establishing that an advertising slogan has distinctive character, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character (see, to that effect, judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 47 and 57). In the present case, the mark applied for does not contain any play on words or imaginative, surprising and unexpected expression, it has no particular originality or resonance, nor does it possess an ambiguity likely to trigger in the mind of the relevant public a cognitive process requiring any particular effort.
40      It follows that, since the mark applied for is a simple laudatory statement which is descriptive of the qualities of the goods in question and devoid of any characteristics allowing it to be regarded as intrinsically distinctive, it does not meet the criteria laid down in EU case-law, and referred to by the applicant itself in its application, to be accepted for registration.
41      The arguments relied on by the applicant therefore do not show that the Board of Appeal departed from the criteria laid down in the case-law when assessing the distinctiveness of the mark applied for consisting of an advertising slogan. Accordingly, the applicant’s second complaint must be rejected.
42      In the fourth and final place, as regards the arguments and the documents produced by the applicant to show that the slogan ‘forever faster’ constitutes the largest ever trade mark relaunch, carried out in 2014/2015, it is important to make the following observations, without it being necessary to rule on the admissibility of the documents produced for the first time before the Court.
43      First, the responses provided by the Board of Appeal, in paragraph 23 of the contested decision, with regard to the documents produced before it, also apply to the documents produced for the first time before the Court. Those documents contain advertisements which shows the slogan at issue accompanied by the applicant’s distinctive sign PUMA. Those documents do not show the use of the slogan ‘forever faster’ as an indication of the commercial origin of the goods, but merely as a promotional formula emphasising the quality of the goods which allow users to be ‘ever faster’. The message conveyed by the expression ‘forever faster’ is further supported by the presence in the advertisements, in particular, of famous sporting persons. Thus, it is not apparent from those documents that the slogan of the mark applied for, taken in isolation, would be perceived by the relevant public as a distinctive sign of the goods in question.
44      Secondly, it must be noted that the applicant launched its marketing campaign for the slogan ‘forever faster’ in August 2014. The intrinsic distinctiveness of a mark cannot be assessed by EUIPO on the basis of a marketing campaign which took place after the date of filing of the application for registration, which, in the present case, was on 23 December 2013.
45      In the light of the foregoing considerations, the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of the principles of equal treatment and sound administration
46      First, the applicant argues that the Board of Appeal could not presume that all of the registrations of signs similar to the mark applied for which it put forward, were unlawful. The Board of Appeal should have stated the reasons why it decided otherwise in the present case. Furthermore, EUIPO’s previous decision-making practice showed that the word ‘faster’ had been considered to be distinctive for goods identical or similar to the goods in question, covered by the signs accepted for registration and that, in particular, in one of those decisions, EUIPO had indicated that the word ‘faster’ was not descriptive of ‘games and playthings’ similar to those at issue in the present case.
47      Second, the applicant submits that the Board of Appeal should have taken into account the fact that the expression ‘forever faster’ was registered as a mark in other English-speaking countries, which shows that that expression is neither descriptive nor devoid of any distinctive character for the goods in question in the present case in relation to the relevant English-speaking public.
48      In that regard, it must be recalled 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. In the light of those two principles, EUIPO must, when examining an application for registration of an EU trade mark, take account of the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. Nonetheless, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, the person who seeks registration of a sign as a trade mark cannot rely, to his own benefit, on any unlawful act committed to the benefit of someone else in order to secure an identical decision. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77).
49      In the present case, it has become apparent that, contrary to what may have been the position with regard to certain earlier applications for the registration as trade marks of signs containing words identical or similar to those of the mark applied for, the present application is caught by one of the grounds for refusal set out in Article 7(1)(b) of Regulation No 207/2009.
50      That being so, and given the fact that the mark applied for is devoid of any distinctive character, the applicant cannot properly rely on the registration of earlier marks by EUIPO.
51      That assessment cannot be called into question by the applicant’s arguments alleging, first, that the Board of Appeal did not provide any specific argument capable of explaining why the earlier registrations did not constitute valid precedents and, second, that the mark applied for had been registered and approved in third countries and had been registered under international arrangements.
52      First, as is clear from the above, it was only after a stringent and full examination of the factual circumstances in the present case that the Board of Appeal concluded that the mark applied for was caught by the ground for refusal provided under Article 7(1)(b) of Regulation No 207/2009.
53      Secondly, if it is true, as the applicant claims, that it cannot be presumed that the registrations it puts forward are unlawful, that cannot have the effect of authorising the unwarranted registration of a mark which, in the light of the facts in the present case, is caught by one of the grounds for refusal set out in Article 7(1) of Regulation No 207/2009.
54      Thirdly, the Board of Appeal, in the contested decision, analysed whether or not it ought to adopt an identical decision to those previously adopted by EUIPO in relation to other EU marks and took the view, as is clear from paragraph 24 of the contested decision, that those registrations were not identical to the mark applied for on the ground that they contained other figurative elements or additional word elements which justified a different assessment to the assessment relating to the mark applied for in the present case. Thus, the Board of Appeal, by indicating differences between the registrations put forward by the applicant and the mark applied for, provided an adequate statement of reasons for its decision in the present case.
55      Fourthly, as regards the applicant’s reliance on the fact that the mark applied for has already been registered in Germany, Australia, the United States and New Zealand, been approved in Canada and South Africa and has been registered under international agreements, it should be noted that, as the Board of Appeal correctly pointed out in paragraph 25 of the contested decision, that argument cannot prove that the mark applied for may be registered as an EU trade mark. The Board of Appeal also cannot be required, in order to respect the principles of equal treatment and sound administration, to take into account, as the applicant claims, the possibility that the mark applied for might, in some circumstances, be registered in the United Kingdom.
56      In that regard, it must be borne in mind that the existence of identical or similar registrations at national level does not constitute a ground for allowing the registration of trade marks devoid of any distinctive character. According to settled case-law, the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO and, if appropriate, the European Union judicature are therefore not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark (see judgments of 25 March 2014, Deutsche Bank v OHIM (Leistung aus Leidenschaft), T‑539/11, not published, EU:T:2014:154, paragraph 53 and the case-law cited, and of 24 June 2014, 1872 Holdings v OHIM — Havana Club International (THE SPIRIT OF CUBA), T‑207/13, not published, EU:T:2014:570, paragraph 32 and the case-law cited). Accordingly, the applicant’s arguments relying on other national and international registrations are ineffective.
57      In view of all the above considerations, it is necessary to reject the second plea in law and, accordingly, the action in its entirety, without it being necessary to rule on the applicant’s second head of claim.
Costs
58      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Puma SE to pay the costs.
Gervasoni
Madise
da Silva Passos
Delivered in open court in Luxembourg on 9 March 2017.
E. Coulon
S. Gervasoni
Registrar
President
* Language of the case: English.