Judgment of the General Court (Second Chamber) of 13 May 2020 –

Global Brand Holdings v EUIPO (XOXO)

(Case T‑503/19)

(EU trade mark — Application for the EU word mark XOXO — Absolute ground for refusal — No distinctive character — Article 7(1)(b) and (2) of Regulation (EU) 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 produced for the first time before it — Precluded (European Parliament and Council Regulation 2017/1001, Art. 72) (see para. 20)

2. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Definition (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b)) (see para. 28)

3. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Assessment of distinctive character (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b)) (see para. 29)

4. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Marks consisting of advertising slogans — Distinctive character — Application of specific criteria for assessment — Not permissible (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b)) (see paras 30, 31)

5. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Marks consisting of advertising slogans — Distinctive character — Criteria for assessment (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b)) (see paras 32-35)

6. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Word mark XOXO (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b)) (see paras 37, 38, 42-51)

7. EU trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria (European Parliament and Council Regulation 2017/1001) (see para. 56, 60)

8. 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 (European Parliament and Council Regulation 2017/1001) (see paras 57-59)

9. EU trade mark — Definition and acquisition of the EU trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Earlier registration of the mark in certain Member States or third countries — Decisions not binding EU bodies (European Parliament and Council Regulation 2017/1001) (see para. 62)

10. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Exception — Acquisition through use — Examination by the Office — Limitation to the facts and evidence raised by the trade mark applicant (European Parliament and Council Regulation 2017/1001, Art. 7(3)) (see para. 69)

11. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Annulment or variation for reasons appearing after judgment was delivered — Precluded (European Parliament and Council Regulation 2017/1001, Arts 72(2) and 95) (see para. 78)

Re:

Action brought against the decision of the First Board of Appeal of EUIPO of 11 April 2019 (Case R 1413/2018-1), concerning an application for registration of the word sign XOXO as an EU trade mark.

Operative part

The Court:

1. Dismisses the action;