Judgment of the General Court (Tenth Chamber) of 17 March 2021 –

Bende v EUIPO – Julius-K9 (K-9)

(Case T‑878/19)

(EU trade mark – Invalidity proceedings – EU word mark K-9 – Absolute grounds for refusal – Signs which have become customary – Article 7(1)(d) of Regulation (EC) No 207/2009 (now Article 7(1)(d) of Regulation (EU) 2017/1001))

1. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications which have become customary in everyday language or commerce – Customary character – Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 59(1)(a); Council Regulation No 207/2009, Art. 7(1)(d)) (see paras 17-21, 26, 31, 39)

2. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications which have become customary in everyday language or commerce – Word mark K-9 (European Parliament and Council Regulation 2017/1001, Art. 59(1)(a); Council Regulation No 207/2009, Art. 7(1)(d)) (see paras 21, 26, 30, 31, 35, 38, 40, 48, 51)

3. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications which have become customary in everyday language or commerce – Evidence consisting of documents published outside the European Union or concerning countries outside the European Union – Whether permissible (European Parliament and Council Regulation 2017/1001, Art. 59(1)(a); Council Regulation No 207/2009, Art. 7(1)(d)) (see para. 34)

4. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications which have become customary in everyday language or commerce – Evidence – Whether permissible (European Parliament and Council Regulation 2017/1001, Art. 59(1)(a); Council Regulation No 207/2009, Art. 7(1)(d)) (see paras 38, 39)

5. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications which have become customary in everyday language or commerce – Material date for the examination of whether the mark has become customary – Account taken of circumstances subsequent to the date of filing the application for registration – Whether permissible (European Parliament and Council Regulation 2017/1001, Art. 59(1)(a); Council Regulation No 207/2009, Art. 7(1)(d)) (see paras 43, 44)

6. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications which have become customary in everyday language or commerce – Material date for the examination of whether the mark has become customary – Taking into account of undated documents (European Parliament and Council Regulation 2017/1001, Art. 59(1)(a); Council Regulation No 207/2009, Art. 7(1)(d)) (see para. 45)

7. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications which have become customary in everyday language or commerce – Geographical scope of the grounds for refusal – Grounds for refusal in part of the European Union – Whether permissible (European Parliament and Council Regulation 2017/1001, Art. 59(1)(a); Council Regulation No 207/2009, Art. 7(2)) (see para. 50)

8. EU trade mark – Appeals procedure – Action before the EU judicature – Legality of the decision of a Board of Appeal – Account taken, for the purposes of interpreting EU law, of national legislation, case-law or academic writing – Whether permissible (European Parliament and Council Regulation 2017/1001, Art. 72; Council Regulation No 207/2009, Art. 7(1)(d)) (see para. 56)

Re:

Action brought against the decision of the Second Board of Appeal of EUIPO of 1 October 2019 (Case R 560/2018-2), as corrected on 12 March 2020, relating to invalidity proceedings between Mr Bende and Julius-K9.

Operative part

The Court:

1. Dismisses the action;