Judgment of the General Court (First Chamber) of 23 January 2018 — Wenger v EUIPO — Swissgear (SWISSGEAR)

(affaire T‑869/16)

(EU trade mark — Invalidity proceedings — EU word mark SWISSGEAR — Absolute grounds for refusal — No distinctive character — Descriptiveness — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 (now Article 7(1)(b) and (c) of Regulation (EU) 2017/1001) — Article 52(1)(a) and Article 76 of Regulation No 207/2009 (now Article 59(1)(a) and Article 95 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 produced for the first time before it—Not included (Council Regulation No 207/2009, Art. 65) (see para. 21)

2. EU trade mark—Decisions of the Office—Principle of equal treatment—Principle of sound administration—EUIPO’s previous decision-making practice—Principle of legality (Council Regulation No 207/2009) (see paras 25, 69, 70)

3. EU trade mark—Appeals procedure—Action before the EU judicature—Legality of a decision issued by EUIPO’s Board of Appeal adjudicating in invalidity proceedings—Challenged by the adducing of new facts—Not permissible—Account taken, for the purposes of interpreting EU law, of EU national or international case-law not cited before the EUIPO bodies—Lawfulness (Council Regulation No 207/2009, Art. 65) (see para. 26)

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—Assessment of the descriptive nature of a sign—Geographical names (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 40, 42)

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 SWISSGEAR (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 47, 48, 60, 63-65, 71, 72, 76)

6. 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—Assessment of the descriptive nature of a sign—Criteria (Council Regulation No 207/2009, Art. 65) (see paras 50, 51)

7. 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—Meaning—Neologism consisting of elements descriptive of characteristics of the goods or services concerned—Whether included where the nature of the combination is not unusual (Council Regulation No 207/2009, Art. 65) (see para. 62)

8. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Separate examination of the various grounds for refusal—Overlapping of the scope of the grounds set out in Article 7(1)(b) to (d) of Regulation No 207/2009 (Council Regulation No 207/2009, Art. 65) (see paras 74, 75)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 12 January 2016 (Case R 2974/2014-5), relating to invalidity proceedings between PayPal and Hub Culture.

Operative part

The Court:

1. Dismisses the action;