Source: EURLEX
Language: en
Format: md

ORDER OF THE GENERAL COURT (Second Chamber)

7 April 2025 ([\*](#Footnote*))

( EU trade mark – Application for EU word mark JUST SLIP IN – Absolute grounds for refusal – Descriptive character – No distinctive character – Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 – Equal treatment – Principle of good administration – Articles 20 and 41 of the Charter of Fundamental Rights – Action manifestly lacking any foundation in law )

In Case T‑295/24,

**Skechers USA, Inc. II,** established in Manhattan Beach, California (United States), represented by J. Bogatz, Y. Stone and J. Feigl, lawyers,

applicant,

v

**European Union Intellectual Property Office (EUIPO),** represented by M. Eberl, acting as Agent,

defendant,

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,

Registrar: V. Di Bucci,

makes the following

**Order**

1        By its action under Article 263 TFEU, the applicant, Skechers USA, Inc. II, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 April 2024 (Case R 67/2024-4) (‘the contested decision’).

**Background to the dispute**

2        On 17 February 2023, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the word sign JUST SLIP IN, pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), claiming the priority of American trade mark No 97 794 682, filed on 14 February 2023.

3        The mark applied for covered goods in Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Footwear’.

4        By decision of 23 November 2023, the examiner rejected the application for registration of the mark applied for on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.

5        On 10 January 2024, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.

6        By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark applied for was descriptive of the goods covered by that mark, within the meaning of Article 7(1)(c) of Regulation 2017/1001, and therefore was devoid of any distinctive character, within the meaning of Article 7(1)(b) of that regulation. In essence, it found that the link between the sign applied for and the goods at issue was sufficiently close in that the mark applied for conveyed direct and specific information about easily recognisable characteristics of the goods at issue.

**Forms of order sought**

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

8        EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs in the event that a hearing is convened.

**Law**

9        Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.

10      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give a decision without taking any further steps in the proceedings, notwithstanding that one of the parties has requested a hearing (order of 6 October 2015, *GEA Group* v *OHIM (engineering for a better world)*, T‑545/14, EU:T:2015:789, paragraph 13).

11      The applicant relies on five pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001, secondly, failure to state reasons in breach of Article 94(1) of that regulation, thirdly, infringement of Article 7(1)(b) of that regulation, fourthly, breach of the principle of equal treatment, as enshrined in Article 20 of the Charter of Fundamental Rights of the European Union (‘the Charter’), read in conjunction with Article 41 of the Charter, and fifthly, breach of the principle of good administration, as enshrined in Article 41(1) and (2) of the Charter.

***The first plea in law, alleging infringement of** **Article 7****(1)(c) of Regulation 2017/1001***

12      The applicant submits, in essence, that the Board of Appeal made an incorrect assessment of the descriptive character of the mark applied for.

13      EUIPO disputes the applicant’s arguments.

14      Under Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, are not to be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

15      Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, *OHIM* v *Wrigley*, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, *Eurocool Logistik* v *OHIM (EUROCOOL)*, T‑34/00, EU:T:2002:41, paragraph 37).

16      In order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, *Deutsche Post EURO EXPRESS* v *OHIM (EUROPREMIUM)*, T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, *Metso Paper Automation* v *OHIM (PAPERLAB)*, T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).

17      A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, *Peek & Cloppenburg* v *OHIM (Cloppenburg)*, T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).

18      It is in the light of those considerations that the Court must examine whether, as the applicant submits in the context of the present plea, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 by analysing, first, the arguments relating to the relevant public and territory, next, those relating to the meaning of the sign applied for and, lastly, those disputing the descriptiveness of the mark applied for in relation to the goods at issue.

*The relevant public and territory*

19      In paragraph 14 of the contested decision, the Board of Appeal found, as regards the goods at issue, namely footwear in Class 25, that the relevant public was the general public, whose level of attention is average. Furthermore, in paragraph 15 of the contested decision, the Board of Appeal stated that, as the sign applied for was made up of English words, the absolute ground for refusal had to be assessed by reference not only to the English-speaking public of the European Union (namely that of Ireland and Malta), but also by reference to the public of countries in which English is widely understood, such as Denmark, Cyprus, the Netherlands, Finland and Sweden.

20      The applicant submits that the Board of Appeal erred in that assessment in so far as the public targeted by the goods at issue, namely the general public in the European Union, has only a very basic knowledge, if any, of the English language, outside the States where the official language is English. In those circumstances, the applicant submits that the assessment that the mark applied for is descriptive in character can be made only by reference to the general public of Ireland and Malta, since the Board of Appeal did not provide evidence to support the claim that the expression ‘just slip in’ was composed of basic English terms which would therefore be understood by the public in EU Member States where English is not the official language.

21      EUIPO disputes the applicant’s arguments.

22      In the present case, as the applicant does not dispute the Board of Appeal’s assessment that the relevant public is the general public with an average level of attention, it should not be called into question.

23      As regards the applicant’s arguments disputing that any Member States other than Ireland and Malta should be taken into account, it need only be recalled that, in accordance with Article 7(2) of Regulation 2017/1001, it is sufficient that an absolute ground obtains in part of the European Union for a mark to be refused registration, and that part may be limited to a single Member State (see, to that effect, judgment of 10 July 2024, *Bartex Bartol* v *EUIPO – Grupa Chorten (duch puszczy)*, T‑473/23, not published, EU:T:2024:458, paragraph 46 and the case-law cited).

24      In those circumstances, the applicant’s arguments relating to the definition of the relevant public must be rejected as ineffective, since the Board of Appeal was right to find that the relevant public in the present case consisted, inter alia, of the general public in the territories of Ireland and Malta.

*The meaning of the sign applied for*

25      The Board of Appeal endorsed the examiner’s assessments relating to the meaning of the sign applied for and set out in paragraph 17 of the contested decision. Consequently, it found that the sign applied for would be perceived by the relevant public as meaning to put on quickly and easily. In particular, it endorsed the definition taken from a reputable dictionary and used by the examiner. Thus, first, as regards the expression ‘slip in’, the Board of Appeal endorsed the approach taken by the examiner, who had noted that, whether or not the words ‘slip’ and ‘in’ are hyphenated, that expression referred to something being slipped in. Thus, the Board of Appeal found that, irrespective of the existence of possible alternative meanings, the expression ‘slip in’, referring to footwear, would be understood by the English-speaking public as conveying information about the fact that that footwear may be put on by being slipped in. Secondly, the Board of Appeal endorsed the examiner’s definition of the word ‘just’, according to which, in the context of footwear, it serves not only to place emphasis on the words that follow, namely ‘slip in’, but also to describe them, stressing the positive quality of the goods, which is that consumers need only slip their feet into that footwear in order to put it on.

26      The applicant submits that the Board of Appeal erred in its assessment of the meaning of the sign applied for. First, it states that the Board of Appeal erred in breaking the sign down into two parts, namely ‘just’ and ‘slip in’, whereas the sign applied for, considered as a whole, namely the expression ‘just slip in’, has no meaning in English. Furthermore, it states that the meaning of the expression ‘slip-in’ used by the Board of Appeal included a hyphen, which is not present in the sign applied for. It adds that the expression ‘slip in’ is not equivalent to the expression ‘slip into’. Secondly, it criticises the Board of Appeal for not having given enough weight to the various possible meanings of the word ‘just’ and to the possible meanings of the expression ‘slip in’, for example, that ‘slip in’ refers to the act of including, especially without warning or in a way that is not obvious, or to the act of entering a place without being noticed. Even if the meaning used by the Board of Appeal were accepted, the expression ‘slip in’, in relation to footwear, would mean that the footwear is being slipped in a thing. The Board of Appeal overlooked the fact that the expression ‘slip in’ is a play on words, which may also be interpreted figuratively as meaning to move easily or smoothly, which could convey the meaning to take on a challenge in life. Thirdly, the Board of Appeal wrongly relied on screenshots of websites which make no reference to the expression ‘just slip in’.

27      EUIPO disputes the applicant’s arguments.

28      In the first place, it must be borne in mind, as regards marks consisting of a number of word elements, that the issue of whether or not they are descriptive may be assessed, in part, in relation to each of those elements taken separately, but must, in any event, also be established in relation to the whole which they comprise. Accordingly, since the relevant public will perceive the mark applied for as a whole, it is any descriptiveness of the mark as a whole, and not of the various elements of that mark considered separately, which is important (see, to that effect, judgment of 14 September 2022, *Lotion* v *EUIPO (BLACK IRISH)*, T‑498/21, not published, EU:T:2022:543, paragraph 21).

29      Furthermore, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, that consumer will break it down into word elements which, for him or her, have a specific meaning or which resemble words known to him or her (see judgment of 13 February 2019, *Nemius Group* v *EUIPO (DENTALDISK)*, T‑278/18, not published, EU:T:2019:86, paragraph 53 and the case-law cited).

30      Consequently, there is no need to call into question the approach followed by the Board of Appeal consisting of examining the definitions of the various word elements making up the sign applied for which are capable of being identified by the relevant public, before examining the meaning of the sign applied for as a whole, in the light of those definitions.

31      In the second place, as regards the meaning of the English word ‘just’, it should be noted that the meaning used by the Board of Appeal is among the possible meanings put forward by the applicant itself, namely an adverb which places focus on the words which it accompanies, and qualifies them in the same way as the adverbs only or simply. As regards the expression ‘slip in’, it must be noted that the various definitions put forward by the applicant all refer to the act of slipping, and doing so with ease, since the applicant refers to the expressions ‘smoothly’, ‘without being noticed’ or ‘easily’. In the context of the footwear covered by the mark applied for, that notion of ‘slipping in easily’ is likely to be understood by the relevant public as referring to the fact that that footwear may be put on by being slipped on, as the Board of Appeal correctly found.

32      In the third place, in so far as the applicant claims that the Board of Appeal failed to take account of the various possible meanings of the expression ‘just slip in’, or of the associations and concepts which might be perceived from it in the context of the meaning of the sign applied for as a whole, such as the exhortation to slip into life or take on a challenge in life, it must be noted that, even if such meanings and associations could be perceived, in a figurative sense, from the expression ‘just slip in’, they do not appear to be immediate meanings of that expression in relation to the footwear covered by the mark applied for.

33      In any event, it must be borne in mind that the fact that the sign applied for may have several meanings does not preclude the application of the absolute ground for refusal provided for in Article 7(1)(c) of Regulation 2017/1001. According to settled case-law, a word sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgment of 23 October 2003, *OHIM* v *Wrigley*, C‑191/01 P, EU:C:2003:579, paragraph 32).

34      In the fourth place, it should also be noted that the fact that the expression ‘slip in’ in the sign applied for is not hyphenated does not prevent the relevant public from understanding that expression as a misspelling of the expression ‘slip-in’. It is sufficient in that regard that the consumer understands a word, even if it is misspelled, in the same way as the word spelled correctly (see judgment of 22 May 2014, *Walcher Meßtechnik* v *OHIM (HIPERDRIVE)*, T‑95/13, not published, EU:T:2014:270, paragraph 32 and the case-law cited).

35      In the fifth place, as regards the applicant’s arguments concerning the screenshots of its website, set out in the examiner’s decision and referred to by the Board of Appeal, it is sufficient to note that the Board of Appeal relies on those screenshots only in order to illustrate that the applicant itself uses the expression ‘slip-ins’, which is reasonably close to the expression ‘slip in’, to describe footwear and the possibility of putting on that footwear without bending over and without using one’s hands.

36      Consequently, the Board of Appeal was right to find, in paragraph 21 of the contested decision, that, in relation to the footwear covered by the mark applied for, the expression ‘just slip in’ was likely to be perceived directly by the relevant public as conveying information about the kind of goods at issue and their method of use, namely that consumers need only slip their feet into the shoes in order to put them on.

*Assessment of the descriptive character of the mark applied for in relation to the goods at issue*

37      The Board of Appeal found, in essence, that the mark applied for, taken as a whole in relation to the goods at issue, had a sufficiently direct link with those goods, with the result that it would convey direct and specific information about characteristics of those goods which are easily recognisable by at least a significant part of the English-speaking public of the European Union, and was therefore caught by the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001.

38      The applicant claims that the Board of Appeal wrongly held that the mark applied for was descriptive of the goods at issue. In that regard, it submits, in essence, that the sign applied for has no direct and specific link with the goods at issue and that it makes no reference to any of their characteristics. Indeed, the sign applied for could be deemed allusive to a certain attitude or outlook on life, which is not capable of describing a characteristic inherent to footwear. Furthermore, it submits that when the public perceives the sign applied for, a complex cognitive process is triggered, in so far as there are several possible interpretations of that sign, which, given that it does not appear in any dictionary, is a fanciful expression.

39      Moreover, the applicant complains that the Board of Appeal failed to take into account the existence of numerous registrations of signs similar to the sign applied for, as EU trade marks, as well as the registration of the sign applied for in the United Kingdom and the application for registration in the United States, which shows that that sign is not descriptive for the English-speaking public. Furthermore, extensive case-law relating to signs which have been found not to be descriptive shows that the Board of Appeal’s approach is incorrect in the present case.

40      EUIPO disputes the applicant’s arguments.

41      In that regard, it should be borne in mind, as has been stated in paragraph 31 above, that, in the context of the footwear covered by the mark applied for, the Board of Appeal was right to find that the expression ‘slip in’ referred to the notion of ‘slipping in easily’ and that the word ‘just’ reinforced that notion.

42      Furthermore, as is clear from the case-law referred to in paragraph 17 above, a sign’s descriptiveness cannot be assessed other than by reference to the goods concerned and by reference to the understanding which the relevant public has of it.

43      In those circumstances, the Board of Appeal cannot be criticised for finding that, upon encountering the expression ‘just slip in’ in connection with footwear in Class 25, the English-speaking public of the European Union would establish a direct and specific link between the sign applied for and those goods, enabling it immediately to perceive, without further thought, the characteristic of allowing the wearer to put them on by slipping their feet into them.

44      Therefore, the Board of Appeal was right to find, in paragraph 25 of the contested decision, that, for a significant part of the relevant public, the sign applied for is descriptive of the goods at issue.

45      Contrary to what is claimed by the applicant, which disputes that the sign applied for refers to a characteristic of the goods at issue, the Board of Appeal was right to find that the possibility for wearers to put on the footwear in question simply by slipping their feet into it constituted a characteristic relating to the kind, quality or method of use of that footwear. That conclusion cannot be called into question by the applicant’s interpretations that the sign applied for refers to the act of just introducing something without being noticed or the act of taking on a challenge in life. Those interpretations of the sign applied for do not appear to be immediate meanings for the relevant public in relation to footwear.

46      Furthermore, as the Board of Appeal indicated, for illustrative purposes, by reference to screenshots from the applicant’s website which had also been referenced by the examiner, it must be pointed out that the applicant itself highlights the possibility for wearers to put on the footwear which it markets without using their hands, by simply slipping their feet into it.

47      In addition, as the Board of Appeal correctly stated in paragraph 20 of the contested decision, the relevant public’s perception of that characteristic is reinforced by the fact that the words ‘slip in’ are preceded by the word ‘just’, which places the focus on the action of putting on the goods at issue. The Board of Appeal correctly found that the word ‘just’ serves to indicate to the relevant public of the goods at issue that in order to put the footwear on, they need only slip their feet into it.

48      Moreover, the fact that the expression ‘just slip in’, taken as a whole, does not appear, as such, in the dictionary does not mean that a cognitive process is triggered in the mind of the relevant public when it perceives the sign applied for. Since the various word elements of the sign applied for are words that can be found in English dictionaries, the English-speaking public will be able to recognise them and, therefore, understand their meaning without any effort, for the purposes of the case-law referred to in paragraph 29 above. In addition, and in any event, it should be borne in mind that, according to the case-law, EUIPO is under no obligation to prove that the sign in respect of which registration is sought as an EU trade mark is included in dictionaries (see, to that effect, judgment of 14 December 2018, *Dermatest* v *EUIPO (ORIGINAL excellent dermatest 5-star-guarantee.de CLINICALLY TESTED)*, T‑802/17, not published, EU:T:2018:971, paragraph 38 and the case-law cited).

49      Furthermore, contrary to what the applicant also submits, the fact that the expression ‘just slip in’ has never been registered with EUIPO does not prove that it is fanciful. In any event, that fact has no bearing on the legality of the contested decision. According to the case-law, a word sign must therefore be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 23 November 2022, *Allessa* v *EUIPO – Dumerth (CASSELLAPARK)*, T‑701/21, not published, EU:T:2022:724, paragraph 78 and the case-law cited).

50      As regards the applicant’s arguments based on the numerous registrations of signs similar to the sign applied for as EU trade marks, it should be recalled that, according to settled case-law, the decisions concerning registration of a sign as an EU trade mark which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of those boards (judgment of 15 September 2005, *BioID* v *OHIM*, C‑37/03 P, EU:C:2005:547, paragraph 47; order of 11 February 2021, *Klose* v *EUIPO*, C‑600/20 P, not published, EU:C:2021:110, paragraph 21, and judgment of 21 February 2024, *Roethig López* v *EUIPO – William Grant & Sons Irish Brands (AMAZONIAN GIN COMPANY)*, T‑756/22, not published, EU:T:2024:101, paragraph 46).

51      As regards the arguments based on the registration, in the United Kingdom, of a sign identical to the sign applied for and the application for registration of the sign applied for in the United States, it must be borne in mind that the EU trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see judgment of 6 September 2018, *Bundesverband Souvenir – Geschenke – Ehrenpreise* v *EUIPO*, C‑488/16 P, EU:C:2018:673, paragraph 72 and the case-law cited). Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State, or in a third country, that the sign in question is registrable as a national mark (judgments of 27 February 2002, *Streamserve* v *OHIM (STREAMSERVE)*, T‑106/00, EU:T:2002:43, paragraph 47, and of 11 May 2010, *Abadía Retuerta* v *OHIM (CUVÉE PALOMAR)*, T‑237/08, EU:T:2010:185, paragraph 137). That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word sign in question originated (judgments of 27 February 2002, *STREAMSERVE*, T‑106/00, EU:T:2002:43, paragraph 47, and of 14 June 2007, *Europig* v *OHIM (EUROPIG)*, T‑207/06, EU:T:2007:179, paragraph 42).

52      As regards the applicant’s arguments relying on case-law in which the General Court held that certain signs were not descriptive of the goods concerned, it is sufficient to note that the signs, goods and services and other circumstances which were relevant in the cases which gave rise to the judgments cited by the applicant are different from those which are relevant in the present case, and as a result of which the application for registration of the mark applied for was refused, under Article 7(1)(c) of Regulation 2017/1001, in so far as at least one of the possible meanings of the sign applied for designated a characteristic of the goods at issue.

53      It follows from the foregoing that the Board of Appeal rightly concluded that the trade mark applied for was caught by the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001.

54      The first plea must therefore be rejected as manifestly lacking any foundation in law.

***The second and third pleas in law, alleging infringement of** **Article 7****(1)(b) of Regulation 2017/1001 and infringement of** **Article 94****(1) of that regulation***

55      In support of its second plea, the applicant submits, in essence, that the Board of Appeal did not provide an adequate statement of reasons for the contested decision in finding that the mark applied for lacked distinctive character, even though it is required to provide reasoning for each absolute ground for refusal of registration, in accordance with the EUIPO examination guidelines.

56      In support of its third plea, the applicant submits that the contested decision is vitiated by an error of law in so far as the Board of Appeal misapplied the criteria for assessing the distinctive character of a trade mark.

57      EUIPO disputes the applicant’s arguments.

58      It is clear from Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign applied for not to be registrable as an EU trade mark (see, to that effect, judgments of 19 September 2002, *DKV* v *OHIM*, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 15 October 2020, *Itinerant Show Room* v *EUIPO (FAKE DUCK)*, T‑607/19, not published, EU:T:2020:491, paragraph 67).

59      In the present case, since it has been established that the mark applied for was descriptive of the goods at issue, within the meaning of Article 7(1)(c) of Regulation 2017/1001, it is not necessary to examine the merits of the applicant’s arguments relating to the distinctive character of the mark applied for, which concern the absolute ground for refusal provided for in Article 7(1)(b) of Regulation 2017/1001.

60      It follows from the foregoing that the third plea must be rejected as ineffective and, consequently, the second plea, alleging a failure to state reasons for the examination of the absolute ground for refusal under Article 7(1)(b) of Regulation 2017/1001, must also be rejected.

***The fourth and fifth pleas in law, alleging** **breach** **of the principles of equal tr****eatment and good administration***

61      In support of its fourth plea, the applicant submits that the Board of Appeal breached the principle of equal treatment, as provided for in Article 20 of the Charter, read in conjunction with Article 41(2) of the Charter, in that it deviated from EUIPO’s practice, as summarised in its guidelines, without any reason to do so.

62      In addition, in support of its fifth plea, the applicant submits that, by breaching the principle of equal treatment, the Board of Appeal also breached the principle of good administration, within the meaning of Article 41 of the Charter.

63      EUIPO disputes the applicant’s arguments.

64      In that regard, it is worth recalling the case-law cited in paragraphs 50 and 51 above, according to which the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of the decision-making practice of EUIPO or a previous national decision-making practice. Accordingly, EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State that a sign is registrable as a national trade mark.

65      It is true that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principles of equal treatment and good administration. In the light of those two principles, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with particular care whether it should decide in the same way or not. However, the way in which the principles of equal treatment and good administration are applied must be consistent with respect for legality. Consequently, a person who applies for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of good administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments of 10 March 2011, *Agencja Wydawnicza Technopol* v *OHIM*, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77, and of 14 December 2018, *Dermatest* v *EUIPO (ORIGINAL excellent dermatest)*, T‑803/17, not published, EU:T:2018:973, paragraphs 58 and 59).

66      As noted in paragraph 53 above, the Court considers that the Board of Appeal correctly concluded that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001.

67      In those circumstances, in the light of the case-law cited in paragraph 65 above, the Board of Appeal did not breach the principles of equal treatment and good administration in concluding that, despite the registrations of the mark outside the European Union and previous registrations of other trade marks with EUIPO, the absolute ground for refusal in Article 7(1)(c) of Regulation 2017/1001 precluded registration of the sign applied for.

68      The fourth and fifth pleas must therefore be rejected as manifestly lacking any foundation in law.

69      It follows from all of the foregoing that the action must be dismissed in its entirety as manifestly lacking any foundation in law.

**Costs**

70      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

71      Although the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that a hearing is convened. Since no hearing was held, each party must be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby orders:

1.      **The action is dismissed.**

2.      **The parties shall each bear their own costs.**

Luxembourg, 7 April 2025.

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| --- | --- | --- |
| V. Di Bucci |  | A. Marcoulli |

|  |  |  |
| --- | --- | --- |
| Registrar |  | President |

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[\*](#Footref*)      Language of the case: English.

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