ORDER OF THE GENERAL COURT (Ninth Chamber)

1 February 2018 ( *1 )

(EU trade mark — International registration designating the European Union — Figurative mark EXPRESSVPN — Absolute ground for refusal — Application for alteration — Single head of claim — Inadmissibility)

In Case T‑265/17,

ExpressVPN Ltd, established in Glen Vine (Isle of Man), represented by A. Muir Wood, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 16 February 2017 (Case R 1352/2016-5), concerning the international registration designating the European Union No 1265562 of the figurative mark EXPRESSVPN,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise and R. da Silva Passos (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application and the request for confidentiality lodged at the Court Registry on 5 May 2017,

having regard to the plea of inadmissibility lodged at the Court Registry on 22 June 2017,

having regard to the observations of the applicant lodged at the Court Registry on 21 August 2017,

makes the following

Order

1 On 3 July 2015, the applicant, ExpressVPN Ltd, filed an application for protection of the international registration No 1265562 with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the following figurative sign:

3 The services in respect of which registration was sought are in Class 42 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 to the following description: ‘IT consultancy, advisory and information services; data security services; software development’.

4 On 26 May 2016, the examiner rejected the application for registration on the basis of Article 7(1)(b) and (c) and (2) of Regulation No 207/2009 (now Article 7(1)(b) and (c) and (2) of Regulation 2017/1001), on the ground that the sign applied for was descriptive, on the one hand, and devoid of any distinctive character, on the other. The examiner also dismissed the applicant’s argument that the sign applied for had acquired distinctive character through the use which had been made of it, within the meaning of Article 7(3) of that regulation (now Article 7(3) of Regulation 2017/1001).

5 On 25 July 2016, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.

6 By decision of 16 February 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed that appeal. First of all, it considered, in essence, that the sign applied for was descriptive in so far as that sign, for an English-speaking public having a higher than average level of attention, was descriptive of the characteristics of the services requested. Next, it held that that sign was also devoid of any distinctive character. Lastly, the Board of Appeal considered that the evidence produced by the applicant did not support the assertion that the element ‘expressvpn’ had become recognisable as the international registration holder’s trade mark.

Forms of order sought

7 In the application, the applicant claims that the Court should: – ‘alter the [contested decision so as] to permit the [mark applied for to] proceed to registration on the basis that [that mark] is neither descriptive nor devoid of distinctive character and on the basis of the evidence of acquired distinctiveness submitted to the examiner and to the Fifth Board of Appeal’; – order EUIPO to pay the costs.

8 In the plea of inadmissibility, EUIPO contends that the Court should: – dismiss the action as inadmissible; – order the applicant to pay the costs; – in the alternative, in the event that the Court considers the action admissible, set a new time limit for taking further steps in the proceedings.

9 In the observations on the plea of inadmissibility, the applicant claims that the Court should reject that plea. It states that it is seeking only the alteration of the contested decision, ‘having the effect that the [mark applied for] will proceed to be added to the European Union trade mark register by [EUIPO], granting protection in respect of the European Union’. It also claims that EUIPO’s subsidiary request for the proceedings to continue should be upheld and that EUIPO should be ordered to pay the costs relating to the plea of inadmissibility.

Law

10 Pursuant to Article 130(1) and (7) of the Rules of Procedure of the General Court, the Court may, at the defendant’s request, give a decision on inadmissibility without going to the substance of the case.

11 In the present case, as EUIPO has requested a decision on the inadmissibility of the action, the Court, considering itself to be sufficiently informed by the documents before it, decides to give a decision on that request without taking further steps in the proceedings.

12 In support of its plea of inadmissibility, EUIPO contends, in essence, that the application is inadmissible, because the single head of claim seeks the alteration of the contested decision so that the mark applied for may be registered. However, EUIPO argues that the Court does not have jurisdiction to take cognisance of an application requesting it to alter the decision of a Board of Appeal, either by registering the mark itself or by ordering EUIPO to register that mark.

13 In its observations on the plea of inadmissibility, the applicant states that it is seeking only the alteration of the contested decision, ‘having the effect that the [mark applied for] will proceed to be added to the European Union trade mark register by [EUIPO], granting protection in respect of the European Union’.

14 In that regard, it should be noted that the single head of claim in the present action constitutes an application for alteration within the meaning of Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001), which provides that, with regard to actions brought against decisions of the Boards of Appeal, ‘the General Court shall have jurisdiction to annul or to alter the contested decision’. As the applicant has emphasised, in its observations on the plea of inadmissibility, that it was seeking only the ‘alteration’ of the contested decision, ‘having the effect that the [mark will be registered]’, it is not possible for the Court, in the present case, to interpret that single head of claim as seeking both the annulment and the alteration of that decision.

15 The Court has already held that, since the annulment of all or part of a decision constitutes a necessary prerequisite in order to allow an application for alteration of a decision within the meaning of Article 65(3) of Regulation No 207/2009, such an application may not be granted where there is no claim for annulment of the contested decision (see, to that effect, judgment of 30 November 2006, Camper v OHIM — JC (BROTHERS by CAMPER), T‑43/05, not published, EU:T:2006:370, paragraph 99).

16 In any event, in so far as the applicant’s application requests that ‘the [mark applied for] will proceed to be added to the European Union trade mark register by [EUIPO]’, it should be borne in mind that the Court’s power to alter decisions operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation No 207/2009 (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraphs 29 and 30; of 11 February 2009, Bayern Innovativ v OHIM — Life Sciences Partners Perstock (LifeScience), T‑413/07, not published, EU:T:2009:34, paragraphs 14 to 16; and of 9 September 2011, Deutsche Bahn v OHIM — DSB (IC4), T‑274/09, not published, EU:T:2011:451, paragraph 22).

17 Accordingly, the admissibility of a head of claim seeking alteration by the Court of the decision of a Board of Appeal must be assessed in the light of the powers conferred on that Board by Regulation No 207/2009.

18 It should be noted that, first, under Article 64(1) of Regulation No 207/2009 (now Article 71(1) of Regulation 2017/1001), following the examination as to the allowability of an appeal brought against a decision of one of the departments listed in Article 58(1) of that regulation (now Article 66(1) of Regulation 2017/1001), the Board of Appeal ‘may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution’. Accordingly, the Board of Appeal does not have the power to issue directions to the department whose decision it has examined (orders of 30 June 2009, Securvita v OHIM (Natur-Aktien-Index), T‑285/08, EU:T:2009:230, paragraph 16, and of 17 May 2017, Piper Verlag v EUIPO (THE TRAVEL EPISODES), T‑164/16, not published, EU:T:2017:352, paragraph 18).

19 Second, it should be borne in mind that the registration of an EU trade mark stems from the finding that the conditions laid down in Article 45 of Regulation No 207/2009 (now Article 51 of Regulation 2017/1001) are satisfied, although the departments of EUIPO responsible for registration of EU trade marks do not adopt any formal decision in that respect which might be the subject of an appeal.

20 Article 45(1) of Regulation No 207/2009 provides that, ‘where an application meets the requirements set out in this Regulation and where no notice of opposition has been given within the period referred to in Article 41(1) or where any opposition entered has been finally disposed of by withdrawal, rejection or other disposition, the trade mark and the particulars referred to in Article 87(2) shall be recorded in the Register’ (Article 41(1) of Regulation No 207/2009 now being Article 46(1) of Regulation 2017/1001, and Article 87(2) of Regulation No 207/2009 now being Article 111 of Regulation 2017/1001).

21 Pursuant to Article 131 of Regulation No 207/2009 (now Article 160 of Regulation 2017/1001), an examiner is to be responsible for taking decisions on behalf of EUIPO in relation to an application for registration of an EU trade mark, including the matters referred to in Articles 36, 37 and 68 of that regulation (now Articles 41, 42 and 76 of Regulation 2017/1001), except in so far as an Opposition Division is responsible. In addition, pursuant to Article 132(1) of that regulation (now Article 161(1) of Regulation 2017/1001), an Opposition Division is to be responsible for taking decisions on an opposition to an application to register an EU trade mark.

22 It follows from the provisions cited in paragraphs 20 and 21 above that the powers conferred on the examiner and on the Opposition Division do not include finding that all the conditions for registration of an EU trade mark laid down in Article 45 of Regulation No 207/2009 are satisfied.

23 Accordingly, in the context of an appeal brought against a decision of the examiner or the Opposition Division under Article 58(1) of Regulation No 207/2009, a Board of Appeal can be called upon to rule, in the light of the powers conferred on it by Article 64(1) of that regulation, only on some of the conditions for registration of an EU trade mark listed in paragraph 21 above, that is to say, either on the compliance of the application for registration with the provisions of that regulation, or on the outcome of any opposition to that application.

24 Therefore, it is clear that a Board of Appeal does not have the power to take cognisance of an application requesting that it register an EU trade mark (see order of 17 May 2017, THE TRAVEL EPISODES, T‑164/16, not published, EU:T:2017:352, paragraph 24 and the case-law cited).

25 In those circumstances, it is similarly not for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect (order of 30 June 2009, Natur-Aktien-Index, T‑285/08, EU:T:2009:230, paragraph 23).

26 It follows from all of the foregoing that the action must be dismissed as inadmissible, without it being necessary to give a ruling on the request for confidentiality submitted by the applicant.

Costs

27 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

28 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds, THE GENERAL COURT (Ninth Chamber) hereby orders:

1. The action is dismissed.

2. ExpressVPN Ltd is ordered to pay the costs.

Luxembourg, 1 February 2018. E. Coulon Registrar S. Gervasoni President

( *1 ) Language of the case: English.