Case T‑56/15

Raimund Schmitt Verpachtungsgesellschaft mbH & Co. KG

v

European Union Intellectual Property Office

‛EU trade mark — Application for European Union word mark BRAUWELT — Absolute grounds for refusal — Descriptive character — No distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 — Distinctive character acquired through use — Article 7(3) of Regulation No 207/2009 — Right to be heard — Obligation to state reasons — Article 75 of Regulation No 207/2009’

Summary — Judgment of the General Court (First Chamber), 18 October 2016

1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Amendment of a decision by the Office — Assessment having regard to the competences conferred on the Board of Appeal

   (Council Regulation No 207/2009, Arts 45, 64(1), and 65(3))

2. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Separate examination of the grounds for refusal in relation to each of the goods 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)

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 — Aim — Need to preserve availability

   (Council Regulation No 207/2009, Art. 7(1)(c))

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 — Concept — Mark composed of a word or neologism resulting from a combination of elements

   (Council Regulation No 207/2009, Art. 7(1)(c))

5. 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 BRAUWELT

   (Council Regulation No 207/2009, Art. 7(1)(c))

6. EU trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality — Need for a strict and complete examination in each particular case

   (Council Regulation No 207/2009)

7. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Overlap of the scope of the grounds set out in subparagraphs (b) and (c) of Article 7(1) of Regulation No 207/2009

   (Council Regulation No 207/2009, Art. 7(1)(b) and (c))

8. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Trade marks which are devoid of distinctive character, descriptive or commonplace — Exception — Distinctive character acquired through use

   (Council Regulation No 207/2009, Art. 7(3))

9. EU trade mark — Appeals procedure — Action before the EU judicature — Limitation of the list of products and services after the decision of the Board of Appeal — Specifications likely to influence the determination of the target public — Change in the subject-matter of the proceedings — Exclusion

   (Council Regulation No 207/2009, Art. 43(1); Rules of Procedure of the General Court, Art. 188)

10. 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, Art. 64(1))

1.  It is not for the General Court to take cognisance of an application for alteration of a decision of a Board of Appeal of the European Intellectual Property Office to the effect that registration of the mark applied for as an EU trade mark be ordered, or that the said mark be registered.

   In that regard, whilst the Court has jurisdiction under Article 65(3) of Regulation No 207/2009 to alter Board of Appeal decisions, that jurisdiction operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation No 207/2009, which means that the admissibility of a request for amendment must be assessed in the light of the powers conferred on that Board of Appeal.

   Although registration of an EU trade mark is a consequence of a finding that the conditions laid down in Article 45 of Regulation No 207/2009 have been met, the departments of EUIPO responsible for registration of EU trade marks do not, in that respect, adopt any formal decision which might be the subject of an appeal. Accordingly, a Board of Appeal that may, under Article 64(1) of Regulation No 207/2009, either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further treatment, does not have power to take cognisance of an application that it register an EU trade mark. In those circumstances, it is similarly not for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect.

   (see paras 11-14)

2.  Where registration of a mark is sought in respect of various goods or services, the Board of Appeal must determine specifically that none of the grounds for refusal of registration listed in Article 7(1) of Regulation No 207/2009 applies to the mark in question, in relation to each of those goods or services claimed, and may reach conclusions which differ depending upon the goods or services in question. Therefore, when refusing registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated.

   However, where the same ground for refusal is given for a category or group of goods or services, the Board of Appeal may limit itself to using general reasoning for all of the goods or services concerned, provided that all the factual and legal considerations constituting the grounds of the decision in question, first, explain adequately the reasoning followed by the Board of Appeal for each of the goods and services belonging to that category and, second, can be applied without distinction to each of the goods or services concerned. The mere fact that the goods and services in question are in the same class under the Nice Agreement is not sufficient for that purpose.

   (see paras 21, 22)

3.  See the text of the decision.

   (see para. 29)

4.  See the text of the decision.

   (see paras 30-34)

5.  See the text of the decision.

   (see paras 52, 53, 58)

6.  See the text of the decision.

   (see paras 81, 82)

7.  See the text of the decision.

   (see para. 92)

8.  Under Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal set out in Article 7(1)(b) to (d) of that regulation do not preclude registration of a trade mark if the trade mark has become distinctive in relation to the goods or services for which registration is requested.

   Consequently, in principle, acquisition of distinctive character through use must be proven for the entire category of goods or services covered by the relevant ground of refusal, as enumerated in the list of goods and services covered by the mark sought, and not in relation to a subcategory.

   The foregoing rule is without prejudice to Article 43(1) of Regulation No 207/2009, under which a trade mark applicant may at any time withdraw its application for an EU trade mark or restrict the list of goods or services included.

   (see paras 107-109)

9.  A restriction in accordance with Article 43(1) of Regulation No 207/2009 of the list of goods or services contained in an application for an EU trade mark effected subsequently to the adoption of the decision appealed against may be taken into consideration by the Court where the applicant for the trade mark confines itself strictly to reducing the subject matter of the dispute by withdrawing certain categories of goods or services from the list of goods and services covered in the trade mark application.

   Where, on the other hand, that restriction leads to a change in the subject matter of the dispute, in that it results in the introduction of new elements which had not been submitted for examination by the Board of Appeal for the purposes of the adoption of the decision appealed against, it may not, in principle, be taken into account by the Court. Such is the case inter alia where the restriction of the goods and services consists in specifications capable of influencing the determination of the target public and of changing, consequently, the factual context presented before the Board of Appeal.

   (see para. 113)

10.  Under Article 64(1) of Regulation No 207/2009, following the examination as to the merits of the appeal, the Board of Appeal is to decide on the appeal and may, in doing so, exercise any power within the competence of the department which was responsible for the decision appealed against. It follows from that provision that, through the effect of the appeal against an examiner’s decision refusing registration, the Board of Appeal may carry out a new, full examination of the merits of the application for registration, in terms of both law and fact. Consequently, the Board of Appeal has jurisdiction inter alia to rule on a claim of distinctive character of the mark sought acquired through use for the purposes of Article 7(3) of Regulation No 207/2009.

    The Board of Appeal does not lose that jurisdiction merely because the trade mark applicant has opted to claim distinctive character acquired through use for the first time at the stage of appeal proceedings. In such a case, the loss of an instance, criticised in the present case by the applicant, arises solely because of the trade mark applicant’s own conduct, not because of any infringement of its procedural rights due to the actions of EUIPO departments.

    (see paras 119, 120)