Judgment of the General Court (Ninth Chamber) of 23 September 2020 –

Clouds Sky v EUIPO – The Cloud Networks (Wi-Fi Powered by The Cloud)

(Case T‑738/19)

(EU trade mark – Invalidity proceedings – EU figurative mark Wi-Fi Powered by The Cloud – Absolute grounds for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – No descriptive character – Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 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 presented for the first time before it – Precluded (European Parliament and Council Regulation 2017/1001, Art. 72) (see para. 17)

2. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – 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, Arts 7(1)(c) and 52(1)(a)) (see para. 30)

3. European Union trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Meaning (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) (see para. 31)

4. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – 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, Arts 7(1)(c) and 52(1)(a)) (see paras 32, 43)

5. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – 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 – Features revealing the descriptive character of a sign – Reference to online databases (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) (see para. 38)

6. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Figurative mark Wi-Fi Powered by The Cloud (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) (see paras 41, 48)

7. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks devoid of distinctive character – Meaning – Criteria for assessment (Council Regulation No 207/2009, Arts 7(1)(b) and 52(1)(a)) (see para. 52)

8. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Overlap of the scope of the grounds set out in Article 7(1)(b) and (c) of Regulation No 207/2009 (Council Regulation No 207/2009, Arts 7(1)(b) and (c) and 52(1)(a)) (see para. 53)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 2 September 2019 (Case R 696/2019-5) relating to invalidity proceedings between Clouds Sky and The Cloud Networks.

Operative part

The Court:

1. Dismisses the action;