Judgment of the General Court (Second Chamber) of 24 April 2018 —

VSM v EUIPO (WE KNOW ABRASIVES)

(Case T‑297/17)

(European Union trade mark — Application for EU word mark WE KNOW ABRASIVES — Mark consisting of an advertising slogan — Competence of the Board of Appeal in appeals limited to part of the services covered by the application for registration — Article 64(1) of Regulation (EC) No 207/2009 (now Article 71(1) of Regulation (EU) 2017/1001) — Absolute ground for refusal — Lack of distinctiveness — Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001))

1. EU trade mark—Appeals procedure—Appeal to a Board of Appeal—Competence of the Boards of Appeal—New full examination of the merits (Council Regulation No 207/2009, Arts 59, first sentence, and 64(1)) (see paras 17-20)

2. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Marks devoid of any distinctive character—Meaning—Criteria for assessment (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 28-30)

3. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Marks devoid of any distinctive character—Marks constituted of advertising slogans—Distinctive character—Application of specific criteria for assessment—Not permissible (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 31, 32, 45)

4. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Marks devoid of any distinctive character—Marks constituted of advertising slogans—Slogan with a fantasy character (Council Regulation No 207/2009, Art. 7(1)(b)) (see para. 33)

5. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Marks devoid of any distinctive character—Marks constituted of advertising slogans—Flattering promotional formula (Council Regulation No 207/2009, Art. 7(1)(b)) (see para. 34)

6. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Marks devoid of any distinctive character—Trade mark made up of several elements—Possible for the competent authority to examine each of the elements making up the trade mark—Scope of protection of the mark (Council Regulation No 207/2009, Art. 7(1)(b)) (see para. 38)

7. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Marks devoid of any distinctive character—Word mark WE KNOW ABRASIVES (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 46, 54, 55, 60, 61)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 6 March 2017 (Case R 1595/2016-4) concerning an application for registration of the word sign WE KNOW ABRASIVES as an EU trade mark.

Operative part

The Court:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 March 2017 (Case 1595/2016-4) in so far as it refused registration of the word sign WE KNOW ABRASIVES for services in Class 35 corresponding to the following description: ‘Advertising; commercial management services; secretariat services; wholesale service in the field of metallic construction products; commercial administration’;

2. Rejects the remainder of the form of order sought of VSM.Vereinigte Schmirgel- und Maschinen-Fabriken AG;