Judgment of the General Court (Third Chamber) of 27 October 2016 — Caffè Nero Group v EUIPO (CAFFÈ NERO)

(Case T‑37/16)

‛EU trade mark — Application for the EU figurative mark CAFFÈ NERO — Absolute grounds for refusal — No distinctive character — Descriptiveness — Mark of such a nature as to deceive the public — Article 7(1)(b), (c) and (g) of Regulation (EC) No 207/2009’

1. 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 (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 17)

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 — Concept (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 18, 19)

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 (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 20)

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 — Figurative mark CAFFÈ NERO (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 21, 29, 35-37, 42, 43)

5. EU trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Scope — No obligation to prove matters within common knowledge (Council Regulation No 207/2009, Art. 76(1)) (see para. 27)

6. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Overlap between the scope of the grounds for refusal set out in subparagraphs (b) and (c) of Article 7(1) of Regulation No 207/2009 (Council Regulation No 207/2009, Art. 7(1)(b) and (c)) (see para. 46)

7. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Trade marks likely to deceive the public — Figurative mark CAFFÈ NERO (Council Regulation No 207/2009, Art. 7(1)(g)) (see paras 50, 51, 54, 55)

8. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Trade marks likely to deceive the public — Criteria for assessment — Trade mark also capable of being perceived in a non-deceiving sense — Irrelevant (Council Regulation No 207/2009, Art. 7(1)(g)) (see paras 52, 53)

9. EU trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case (see paras 57-59)

Re:

ACTION brought against the decision of the First Board of Appeal of EUIPO of 6 November 2015 (Case R 954/2015-1), relating to the application for registration of the figurative sign CAFFÈ NERO as an EU trade mark.

Operative part

The Court:

1. Dismisses the action;