Judgment of the General Court (Fifth Chamber) of 29 November 2018 –

Out of the blue v EUIPO — Dubois and MFunds USA (FUNNY BANDS)

(Case T‑214/17)

(EU trade mark — Invalidity proceedings — EU word mark FUNNY BANDS — Absolute grounds for refusal — Article 7(1)(b) and (c) and Article 52(1)(a) of Regulation (EC) No 207/2009 (now Article 7(1)(b) and (c) and Article 59(1)(a) of Regulation (EU) 2017/1001))

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 — Aim — Need to preserve availability (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 19)

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 — Meaning — Mark composed of a word or neologism resulting from a combination of elements (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 20-22)

3. 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 — Criteria (Council Regulation No 207/2009, Art. 7(1)(c)) (see para. 23)

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 — Word mark FUNNY BANDS (Council Regulation No 207/2009, Art. 7(1)(c)) (see paras 26, 34-37, 47-50)

5. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits (Council Regulation No 207/2009, Art. 65(3)) (see para. 56)

Re:

Action brought against the decision of the Second Board of Appeal of EUIPO of 20 January 2017 (Case R 1081/2016-2) concerning invalidity proceedings between Out of the blue, of the one part, and Frédéric Dubois and MFunds USA, of the other part.

Operative part

The Court:

1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 January 2017 (Case R 1081/2016-2), in so far as it dismissed the appeal against the decision of the Cancellation Division to reject the application for a declaration of invalidity of the EU word mark FUNNY BANDS for ‘precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, jewellery; rings (jewellery); rings (jewellery); bracelets (jewellery); necklaces (jewellery); novelty key rings’ in Class 14, ‘rubber, gutta-percha, gum and products made of those materials, not included in other classes; flexible pipes, not of metal; rubber rings; unworked or semi-worked rubber; cords of rubber’ in Class 17 and ‘services of wholesale and retail of precious metals and their alloys and goods in precious metals or coated therewith, jewellery, rings (jewellery), rings (jewellery), bracelets (jewellery), necklaces (jewellery), rubber, gutta-percha, gum and goods made from these materials, flexible pipes, not of metal’ in Class 35;

2. Dismisses the remainder of the action;