Judgment of the General Court (Second Chamber) of 20 October 2021 –

Standardkessel Baumgarte Holding v EUIPO (Standardkessel)

(Case T‑617/20)

(EU trade mark – Application for EU word mark Standardkessel – Absolute grounds for refusal – No descriptive character – Distinctive character – Article 7(1)(b) and (c) of Regulation (EU) 2017/1001)

1. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Re-evaluation of the facts in the light of evidence produced for the first time before it – Precluded (European Parliament and Council Regulation 2017/1001, Art. 72) (see paras 15, 16)

2. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Aim – Need to preserve availability (European Parliament and Council Regulation 2017/1001, Art. 7(1)(c)) (see para. 22)

3. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Assessment of the descriptive nature of a sign – Criteria (European Parliament and Council Regulation 2017/1001, Art. 7(1)(c)) (see paras 23, 24, 33)

4. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Meaning – Mark composed of a word or neologism resulting from a combination of elements (European Parliament and Council Regulation 2017/1001, Art. 7(1)(c)) (see para. 37)

5. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Word mark Standardkessel (European Parliament and Council Regulation 2017/1001, Art. 7(1)(c)) (see paras 42-44, 46, 51-55)

6. EU trade mark – Definition and acquisition of the EU trade mark – Refusal of registration based on one of the absolute grounds for refusal set out in Article 7(1) of Regulation 2017/1001 – Whether sufficient (European Parliament and Council Regulation 2017/1001, Art. 7(1)) (see para. 59)

7. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Word mark Standardkessel (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b)) (see paras 62-66, 78)

8. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Meaning – Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b)) (see paras 69-72)

9. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Marks consisting of advertising slogans – Distinctive character – Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b)) (see para. 73)

10. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Marks consisting of advertising slogans – Slogan conveying an objective message (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b)) (see para. 77)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 27 July 2020 (Case R 2665/2019-1), concerning an application for registration of the word sign Standardkessel as an EU trade mark.

Operative part

The Court:

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 July 2020 (Case R 2665/2019-1) as regards ‘common metals and their alloys; unprocessed and semi-processed materials of metal, not specified for use; metal materials for building and construction (non-electric)’ in Class 6, ‘elevating apparatus (machines), cranes’ in Class 7 and ‘rental of generators; recycling of waste and trash’ and ‘incineration of waste and trash; recycling of waste and valuable materials; recycling of chemicals; waste treatment (transformation); sorting of waste and recyclable material (transformation)’ in Class 40 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. Dismisses the action as to the remainder;