Case C‑437/15 P

European Intellectual Property Office (EUIPO)

v

Deluxe Entertainment Services Group Inc.

(Appeal — EU trade mark — Figurative mark containing the word element ‘deluxe’ — Refusal of registration by the examiner)

Summary — Judgment of the Court (Third Chamber), 17 May 2017

EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Examination of the grounds for refusal having regard to each of the products or services covered by the application for registration — Obligation to state the reasons for refusing to register — Scope

(Council Regulation No 207/2009, Arts 7(1) and 75, first sentence)

Since registration of a mark is always sought for the goods or services specified in the application for registration, the question whether registration can be refused on one of the absolute grounds must be assessed on the facts by reference to those goods or services.

According to the Court’s case-law, first, the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought and, secondly, the decision by which the competent authority refuses registration of a mark must, in principle, state reasons in respect of each of those goods or services.

However, as regards that last requirement, the Court has stated that the competent authority may use only general reasoning for all of the goods and services concerned where the same ground for refusal is given for a category or group of goods or services.

The Court then made clear that such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services.

In order to determine whether the goods and services covered by an application for registration of an EU mark are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogenous categories and groups, account must be taken of the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question whether or not the mark concerned by the application for registration comes under one of the absolute grounds for refusal.

Accordingly, the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant for the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services. It follows that such an assessment must be carried out in concreto for the examination of each application for registration and, as the case may be, for each of the different absolute grounds for refusal which may apply.

It follows from the foregoing considerations that it cannot be ruled out a priori that the goods and services covered by an application for registration all present a relevant characteristic for the analysis of an absolute ground for refusal and that they can be placed, for the purposes of examining the application for registration at issue in relation to that absolute ground for refusal, in a sufficiently homogenous single category or group.

(see paras 28-34)