Case T‑123/18

Bayer Intellectual Property GmbH

v

European Union Intellectual Property Office

Judgment of the General Court (Ninth Chamber), 14 February 2019

(EU trade mark — Application for an EU figurative mark representing a heart — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001)

1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Meaning — Criteria for assessment

   (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))

   (see paragraphs 13, 14)

2. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Assessment of distinctive character — Criteria — Perception of the trade mark by the relevant public — Attention level of the public

   (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))

   (see paragraph 17)

3. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of distinctive character — Figurative mark representing a heart

   (European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))

   (see paragraphs 23-32)

4. 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

   (European Parliament and Council Regulation 2017/1001)

   (see paragraphs 34, 35)

5. EU trade mark — Decisions of the Office — Legality — EUIPO's previous decision-making practice — Principle of non-discrimination — Irrelevant

   (European Parliament and Council Regulation 2017/1001)

   (see paragraph 36)

Résumé

In the case which gave rise to the judgment of 14 February 2019, Bayer Intellectual Property v EUIPO (T‑123/18, EU:T:2019:95), an action was brought before the General Court against the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) which dismissed the appeal filed against the examiner’s decision, who had refused registration of the figurative mark representing a heart. The Board of Appeal took the view that the mark applied for would be perceived by the relevant public as the representation of a heart and, therefore, as a reference to the fact that the services in question concern the field of cardiology.

The General Court states, in the first place, that a mark must allow the relevant public to distinguish the products covered by that mark from those of other undertakings without paying particular attention (see, to that effect, judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 32), so that the distinctiveness threshold necessary for registration of a mark cannot depend on the public’s level of attention.

In the second place, the General Court states that, in accordance with settled case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, having regard to the principles of equal treatment and of sound administration, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with special care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered or annulled. Accordingly, such an 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.

The General Court notes that it follows from those principles, first, that it is incumbent on the Boards of Appeal, when deciding to take a different view from the one adopted in decisions already taken in respect of similar applications relied on before them, to provide an explicit statement of their reasoning for departing from those decisions. However, such a duty to state reasons on a divergence from previous decisions is less important in relation to an assessment which strictly depends on the mark applied for than to factual findings which do not depend on that same mark. Second, it observes that it also follows from that case-law that decisions concerning the registration of a sign as an EU trade mark taken by the Boards of Appeal pursuant to Regulation 2017/1001 fall within the scope of circumscribed powers and are not a matter of discretion and, accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union. Accordingly, the Boards of Appeal cannot be bound by the previous decisions of EUIPO.

In the present case, the General Court notes, first, that an examination of the distinctiveness of a mark applied for depends strictly on that mark, and not on findings of fact relied on by the applicant. Thus, the Board of Appeal was able to limit itself to indicating that the applicant was not entitled to rely on previous decisions of EUIPO in order to reject the finding that the mark applied for was caught by the ground of refusal based on Article 7(1)(b) of Regulation 2017/1001. The General Court observes, moreover, that the Board of Appeal, in any event, explicitly stated the reason why it departed from the finding made in the previous decision relied on by the applicant. It found, in essence, that the goods then at issue were not specifically related to cardiology, so that those goods did not, contrary to the services at issue in the present proceedings, have a ‘directly and immediately recognisable relationship with a human heart’. Second, the General Court considers that the applicant cannot challenge the merits of that reasoning without calling into question the merits of the refusal to register the mark applied for. However, the General Court notes that the Board of Appeal was correct to find that the mark applied for was caught by the ground for refusal of infringement of Article 7(1)(b) of Regulation 2017/1001.