Keywords

1. Community trade mark — Appeals procedure — Appeal to a Board of Appeal — Competence of the Boards of Appeal — New full examination of the merits — Condition — Admissibility of the action

(Council Regulation No 207/2009, Arts 59, first sentence, and 64(1))

2. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods — Concept

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

3. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods — Aim — Need to preserve availability — Scope of the examination

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

4. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods

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

5. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Overlap between the scope of the grounds for refusal 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))

6. Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — OHIM’s previous decision-making practice — Principle that penalties must have a sound legal basis — Need for a strict and complete examination in each particular case

7. Community trade mark — Definition and acquisition of the Community trade mark — Prior registration of the trade mark in certain Member States — Effect

8. Community trade mark — Transformation into an application for a national trade mark — Application with a view to initiating the national procedure — No obligation to carry out a detailed analysis of the distinctive character of the sign in all Member States

(Council Regulation No 207/2009, Arts 75 and 112(2)(b))

9. Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion — Registration of a new trade mark — Absolute grounds for refusal — Burden of proof

(Council Regulation No 207/2009, Arts 7(1) and 76(1))

Summary

1. 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. That power is, however, conditional on the admissibility of the appeal before the Board of Appeal.

In that regard, the first sentence of Article 59 of Regulation No 207/2009 states that ‘any party to proceedings adversely affected by a decision may appeal’. It follows from that provision that parties to proceedings before Office for Harmonisation in the Internal Market (Trade Marks and Designs) may appeal to the Board of Appeal against a decision taken by a lower department of OHIM only in so far as that decision has rejected their claims or applications. In so far as the decision of the lower department of OHIM has, on the contrary, upheld the claims of a party, that party does not have standing to appeal to the Board of Appeal.

It is apparent from the first sentence of Article 59 of Regulation No 207/2009 that, if the examiner has rejected an application for registration of a Community trade mark only in respect of the goods covered by that application, while allowing registration in respect of the services covered by it, the appeal brought by the applicant for the trade mark before the Board of Appeal can lawfully relate only to the examiner’s refusal to allow registration in respect of the goods covered by the application. The applicant may not, by contrast, legitimately appeal before the Board of Appeal against the examiner’s consent to register such an application in respect of the services.

(see paras 21-24)

2. See the text of the decision.

(see para. 32)

3. See the text of the decision.

(see para. 33)

4. The word sign NEO, registration of which is applied for in respect of goods falling within Classes 7 and 12 of the Nice Agreement, is descriptive of the goods covered by the trade mark application for the purposes of Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark, from the point of view of the relevant public with a command of modern Greek.

As regards the use of the sign NEO in modern Greek in respect of the goods covered by the application for registration, the relevant consumer will deduce from the term itself, without undertaking any complex thought processes, that it refers to something new, modern or in line with the latest technological developments and that, in that language, that sign is simply laudatory and intended to highlight the positive qualities of the goods covered by the application for registration.

It is irrelevant in that regard that the relevant public displays a high level of attention. It is also irrelevant, in that regard, that the sign in respect of which registration has been applied for is written in capital letters and is to be used as a catchword. A word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark.

That finding alone, that the sign NEO has descriptive character, is sufficient for it to be regarded as also being devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 as regards the goods covered by the application for registration in modern Greek and from the point of view of the relevant public.

(see paras 37-40, 44)

5. There is a measure of overlap between the scope of Article 7(1)(c) of Regulation No 207/2009 and that of Article 7(1)(b) of that regulation inasmuch as the descriptive signs referred to in Article 7(1)(c) of that regulation are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Article 7(1)(b) is distinguished from Article 7(1)(c) of that regulation in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.

(see para. 42)

6. See the text of the decision.

(see para. 50)

7. See the text of the decision.

(see para. 53)

8. Article 112(2)(b) of Regulation No 207/2009 merely requires OHIM to comply with a decision of the Office according to which, in a Member State, grounds for refusal of registration or grounds for revocation or invalidity apply to the Community trade mark application or Community trade mark.

By contrast, that provision cannot derogate from Article 7(2) of Regulation No 207/2009, which provides that the absolute grounds for refusal set out in Article 7(1) of that regulation apply notwithstanding that those grounds of non-registrability obtain in only part of the Union. The content of the rule provided for by Article 7(2) of Regulation No 207/2009 would be distorted by an interpretation of Article 112(2)(b) of Regulation No 207/2009 according to which the Board of Appeal, ruling on an appeal against the Examiner’s refusal of an application for registration owing to the descriptive and non-distinctive character of the mark applied for the purpose of Article 7(1)(b) and (c) of Regulation No 207/2009, is required to carry out a detailed analysis of the distinctive character of the sign in all the Member States even if it is obvious that the sign has, in the perception of the relevant public and in respect of the goods and services covered by the application for registration, descriptive character in the language of one Member State.

It follows that there are no grounds either for assuming that Article 112(2)(b) of Regulation No 207/2009, read in conjunction with Article 75 of that regulation, is intended to require the Board of Appeal, ruling on an appeal against the examiner’s refusal of an application for registration owing to the descriptive and non-distinctive character of the mark applied for in part of the European Union for the purposes of Article 7(1)(b) and (c) and 7(2) of Regulation No 207/2009, to carry out a detailed analysis of the distinctive character of the sign with regard to the goods and services referred to in that application in all the Member States.

(see paras 56-58)

9. See the text of the decision.

(see para. 62)

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Application for the Community word mark NEO — Absolute grounds for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Descriptive character — Article 7(1)(c) of Regulation No 207/2009 — Extent of the examination to be carried out by the Board of Appeal — Examination as to the merits conditional on the admissibility of the action — Articles 59 and 64(1) of Regulation No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009 — Examination of the facts by the Office of its own motion — Article 76 of Regulation No 207/2009’