4

The General Court summarised in paragraphs 1 to 7 of the judgment under appeal the facts giving rise to the dispute as follows: ‘1. On 10 October 2012, the applicant, [Deluxe], filed an application for registration of a Community trade mark at [EUIPO] pursuant to … Regulation No 207/2009... 2. The mark [applied for] is the following figurative sign: 3. The goods and services for which registration was sought are in Classes 9, 35, 37, 39 to 42 and 45 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, and correspond, for each of those classes, to the following description: — Class 9: “Motion picture and television films featuring music videos, action/adventure, comedy, drama, horror, family, children, anime, sports, documentaries, commercials, science fiction, history, education, live action, computer-generated, animated, 2D, 3D, trailers, public service announcements, fiction, non-fiction, reality, and thrillers; digital media, namely, pre-recorded DVDs, HD DVDs, and pre-recorded optical discs featuring music videos, action/adventure, comedy, drama, horror, family, children, anime, sports, documentaries, commercials, science fiction, history, education, live action, computer-generated, animated, 2D, 3D, trailers, public service announcements, fiction, non-fiction, reality, and thrillers, and downloadable audio and video recordings featuring motion picture films, television shows, and video programs”; — Class 35: “Inventory control and computerised tracking and tracing of packages in transit; advertising and marketing of motion pictures, television shows, and advertisements; preparing audiovisual displays in the fields of music, motion pictures, television shows, and advertisements; preparing audiovisual presentations for use in advertising; post-production editing services for video and audio commercials; product merchandising; business services, namely, outsourcing in the field of translation services, namely, providing the transfer of information relating to captions and subtitles for audiovisual works; business management of assets in the nature of television programs, motion picture films and commercials, and commercial, industrial and corporate audiovisual media content; arranging and conducting tradeshow exhibitions for commercial or advertising purposes in the fields of entertainment, television, software and video games; organizational services, namely, indexing files representing film, video, audio, picture and document content, for post-production industries; display arrangement services of digital files representing film, video, audio, picture and document content, for post-production industries; inventory management, namely, locating digital files representing film, video, audio, picture and document content, for post-production industries; business management services, namely, digital and intellectual property asset management”; — Class 37: “Rejuvenation services for film, tape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media, namely, cleaning of film, tape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media”; — Class 39: “Deposit and transport of cameras, film, video, digital media, data processing and accessories thereto; storage and warehousing of film, digital and video media, and promotional material related to movies, television shows, and advertisements, namely, clothing, posters, and movie, television show, and advertisement cut-outs; electronic storage of digital and video images, digital cinema and sound recordings; storage of motion pictures, television shows, advertisements, digital cinema, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, and online media; storage of master video discs, audio tapes, and CD-ROMs of music and images; media management, namely, moving, archiving, and transporting digital files representing film, video, audio, picture and document content, for post-production industries; packing articles for transportation; delivery of goods by truck; warehouse storage; and warehousing services; merchandise packaging for others, merchandise packaging for others, namely, packaging music, videos, DVDs, HD DVDs, pre‑recorded optical discs and other recorded, digital, downloadable, and online media and custom packaging services for sound, video, and data recordings, to the order and specification of others”; — Class 40: “Duplication and replication of motion picture films, television shows, advertisements, and video programs on film, videotape, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; mastering and duplication of positive and negative motion picture prints to videotape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media; cutting of negatives; rental of printing machines and apparatus for industrial development and printing in the photographic, cinema and television industries; color enhancement of black and white cinematic film; closed captioning of films and videos; digital correction services of videos, and digital video transfer, namely, providing color correction and conversion of motion picture, television, and advertising film to video film; film and any other video media reproduction, namely, remastering of films from one format to another; and contract manufacturing in the field of digital versatile discs; duplication of video-tape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media in all professional formats; video services, namely, mastering and duplication of professional video tape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media formats; film development services; film to videotape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media transfer services, namely, conversion of motion picture, television, and advertising film to videotape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media. film and other video media back-up services, namely, digital preservation and restoration of cinematic films; printing services for sound, video, and data recordings; processing and printing of motion picture, television and advertising films; conversion of motion picture, television, and advertising film from 2D to 3D; operation of laboratories for the processing of motion picture, television, and advertising films; formatting and conversion of media and digital data; digital conversion of motion picture, television, and advertising films to videotapes, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, and online media; film to tape digital transfer services, namely, transferring film to DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media”; — Class 41: “Motion picture, television, and advertising film, videotape and digital video laboratory and post-production services, namely, high-resolution scanning of film, digital color timing, laser film recording of digital video and high definition images to film; digital and video mastering services for motion pictures, television shows, and advertisements; digital imaging; digital and electronic manipulation of images for motion pictures, television shows, and advertisements; recording digital images onto film; video and audio media production, namely, production of video cassettes and DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media for others; production of visual, optical and digital special effects for others, for television, motion pictures, advertisements, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media, namely, digital cinema; audio recording and production; film editing services; electronically producing motion picture, television, and advertising film from videotape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media recordings; producing special visual effects for videotapes, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; production and distribution of motion pictures, television shows, and advertisements; providing voice-overs for videotapes, records, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; consulting services in connection with film production and distribution; production of master video discs, audio tapes, and CD-ROMS of music and images; arranging for distribution or syndication of motion pictures, television shows, and advertisements. distribution services for film, tape, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; video editing services; dubbing services and film editing; video and sound track for cinema, television and advertisements”; — Class 42: “Design and development of computer software; product research and development; hosting the websites of others; website design services for others; digital watermarking; graphic design services for print media in the field of entertainment; DVD menu packaging and design for others; design for others of music, video, DVD, and digital media packaging; quality control for others of the duplication, replication and distribution of digital film and video; content creation services, namely, authoring and development of interactive computer software and media content; design and development of multimedia products, namely, DVD menu design for others; retrieving digital files representing film, video, audio, picture and document content, for post-production industries; conversion of data or documents from physical to electronic media; authoring services for DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; digital data compression; digital compression of audio and video data; film and video data digital compression; providing digital compression of media and digital data”; — Class 45: “Product security consultation services in the motion picture, television, and advertising industries, namely, product authentication, detection of product piracy, and the recording and tracking of digital data; security printing, namely, encoding of media and digital data for use in tracking the source of unauthorised copies thereof and providing encoding and transcoding of media and digital data; encoding of motion picture, television, and advertising films for use in tracking the source of unauthorised copies thereof; providing content security for recorded media; anti-piracy rights management, namely, product security services in the motion picture, television, and advertising industries; security related technology and services, namely, tracking and tracing services used to secure, track, and trace encoded film against fraud, piracy, and counterfeiting; electronic content protection services; research and development in connection with the illegal downloading and storing of unauthorised digital motion picture, television, and advertising files”. … 5. By decision of 13 June 2013, the examiner refused the application in relation to all the goods and services referred to in paragraph 3 above, in accordance with Article 7(1)(b) and (c) of Regulation No 207/2009, on the grounds that the mark applied for, first, lacked distinctive character and, second, informed consumers about the quality of the goods and services concerned. 6. On 3 July 2013, [Deluxe] filed a notice of appeal with [EUIPO], pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision. 7. By [the decision at issue], the Second Board of Appeal of [EUIPO] (‘the Board of Appeal’) upheld the examiner’s decision. It held, inter alia, that, in the parts of the European Union where English is understood, the word element ‘deluxe’ is not on its own capable of distinguishing the applicant’s goods and services from those of its competitors, for it is a form of commonplace promotional tag and merely consists of a “claim of superior quality”. It added that the term ‘deluxe’ falls within the category of terms that must be excluded from trade mark monopoly and that the figurative element at issue was not sufficient to confer distinctive character on the mark applied for. On those same grounds, the Board of Appeal upheld the examiner’s decision in so far as he had held that the mark applied for informs consumers about the quality of the goods and services concerned. The Board of Appeal also held that that mark had not acquired distinctive character through use in the European Union.’