Judgment of the General Court (Sixth Chamber) of 12 May 2016 —

Zuffa v EUIPO (ULTIMATE FIGHTING CHAMPIONSHIP)

(Case T‑590/14)

‛EU trade mark — Application for the EU word mark ULTIMATE FIGHTING CHAMPIONSHIP — Absolute grounds for refusal — Lack of distinctive character — Descriptiveness — Distinctive character acquired through use — Obligation to state reasons — Relevant public — Article 7(1)(b) and (c), (2) and (3) and Article 75 of Regulation (EC) No 207/2009’

1. EU trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see paras 16-18)

2. Acts of the institutions — Statement of reasons — Obligation — Scope — Decision taken in a context known to the addressee — Whether summary statement of reasons sufficient (Art. 296 TFEU) (see para. 36)

3. EU trade mark — Procedural provisions — Statement of reasons for decisions (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see paras 37, 38)

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 — Concept (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 53-55)

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 ULTIMATE FIGHTING CHAMPIONSHIP (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 57-65)

6. EU trade mark — Definition and acquisition of the EU trade mark — Application for registration of a sign for all the goods or services falling within the same category — Assessment of the descriptiveness of the sign concerning all the goods or services (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 61)

7. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Trade marks which are devoid of distinctive character, descriptive or commonplace — Exception — Distinctive character acquired through use — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b) to (d), and (3)) (see paras 73-77)

Re:

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 19 May 2014 (Case R 1425/2013-2), regarding an application for registration of the sign ULTIMATE FIGHTING CHAMPIONSHIP as an EU trade mark.

Operative part

The Court:

1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 May 2014 (Case R 1425/2013-2) in so far as it dismisses the appeal of Zuffa, LLC as regards the following goods and services: — ‘pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital video discs; digital versatile discs; electronic storage media; USB flashdrives; CD-ROM discs all featuring mixed martial arts competitions, events and programs; motion picture films in the field of mixed martial arts’ in Class 9; — ‘provision of information relating to mixed martial arts via communication and computer networks; providing news and information in the fields of sports, fitness and mixed martial arts via communication and computer networks’ in Class 41;

2. Dismisses the present action as to the remainder;