Case T-844/16

Alpirsbacher Klosterbräu Glauner GmbH & Co. KG

v

European Union Intellectual Property Office

(EU trade mark — Application for EU word mark Klosterstoff — Absolute grounds for refusal — Descriptive character — Mark of such a nature as to deceive the public — Article 7(1)(b), (c) and (g) of Regulation (EC) No 207/2009 (now Article 7(1)(b), (c) and (g) of Regulation (EU) 2017/1001) — Previous EUIPO practice)

Summary – Judgment of the General Court (Ninth Chamber), 26 October 2017

EU trade mark — Definition and acquisition of the EU trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Earlier registration of the mark in certain Member States or third countries — Decisions not binding EU bodies

Signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009 on the European Union trade mark, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, thus enabling the consumer who acquires the goods or service designated by the mark 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. It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, 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 paras 13, 14)

See the text of the decision. (see paras 21-32)

Under Article 7(1)(g) of Regulation No 207/2009 on the European Union trade mark, registration is to be refused for trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service. The circumstances for refusing registration referred to in Article 7(1)(g) of Regulation No 207/2009 presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived. (see paras 41, 42)

See the text of the decision. (see paras 43-46)

Under the first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94 of Regulation 2017/1001), decisions of European Union intellectual property office are to state the reasons on which they are based. According to the case-law, that duty has the same scope as that laid down by Article 296 TFEU and its purpose is, first, to allow interested parties to know the justification for the measure so as to enable them to protect their rights and, second, to enable the EU judicature to review the legality of the decision. (see para. 50)

The decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of European Union intellectual property office are called on to take under Regulation No 207/2009 on the European Union trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions 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 a previous decision-making practice of EUIPO. It has also been held that although, while having regard to the principles of equal treatment and sound administration, EUIPO is obliged to take into account the decisions already taken and to consider with particular care whether it should decide in the same way or not, the application of those principles must nevertheless be consistent with respect for the principle of legality. (see para. 51)