Judgment of the General Court (Eighth Chamber) of 15 September 2016 —

Trinity Haircare v EUIPO — Advance Magazine Publishers (VOGUE)

(Case T‑453/15)

‛EU trade mark — Invalidity proceedings — EU figurative trade mark VOGUE — Absolute ground for refusal — No descriptive character — Distinctiveness — Article 52(1)(a), read in conjunction with Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 — Bad faith — Article 52(1)(b) of Regulation No 207/2009’

1. 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 — Concept (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 17)

2. 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. 7(1)(c)) (see paras 18, 19)

3. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) and (c) of Regulation No 207/2009 — Figurative mark VOGUE (Council Regulation No 207/2009, Art. 7(1)(b) and (c)) (see paras 21, 24, 35)

4. EU trade mark — Definition and acquisition of the EU trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Decisions of national authorities not binding EU bodies (Council Regulation No 207/2009) (see para. 26)

5. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 29-31)

6. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Criteria for assessment — Taking into account of all relevant factors at the time of filing the application for registration — Applicant’s knowledge that a third party is using an identical or similar sign — Intention of the applicant — Degree of legal protection of the signs at issue — Commercial logic underlying the registration of the contested sign as an EU trade mark (Council Regulation No 207/2009, Art. 52(1)(b)) (see paras 39, 45)

7. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Applicant in bad faith when lodging the trade mark application — Figurative mark VOGUE (Council Regulation No 207/2009, Art. 52(1)(b)) (see para. 44)

8. EU trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Invalidity proceedings concerning absolute grounds for refusal — Examination restricted to the submissions of the parties (Council Regulation No 207/2009, Arts 7(1), 52, 55 and 76(1)) (see para. 48)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 May 2015 (Case R 2426/2014-4) relating to invalidity proceedings between Advance Magazine Publishers and Trinity Haircare.

Operative part

The Court:

1. Dismisses the action;