ORDER OF THE COURT (Tenth Chamber)

13 December 2018 (*)

(Appeal — Article 181 of the Court’s Rules of Procedure — EU trade mark — Figurative mark including the word element ‘hp’ — Invalidity proceedings — Rejection of the application for a declaration of invalidity)

In Case C‑408/18 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 June 2018,

Senetic S.A., established in Katowice (Poland), represented by M. Krekora, adwokat,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

HP Hewlett Packard Group LLC, established in Houston (United States),

intervener at first instance,

THE COURT (Tenth Chamber),

composed of F. Biltgen, President of the Eighth Chamber, acting as President of the Tenth Chamber, E. Levits and M. Berger (Rapporteur), Judges,

Advocate General: E. Sharpston,

Registrar: A. Calot Escobar,

having regard to the decision taken, after hearing the Advocate General, to give a decision by reasoned order in accordance with Article 181 of the Court’s Rules of Procedure,

makes the following

Order

1        By its appeal, Senetic S.A. asks the Court to set aside the judgment of the General Court of the European Union of 24 April 2018, Senetic v EUIPO — HP Hewlett Packard Group (hp) (T‑207/17, not published, EU:T:2018:215, ‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 February 2017 (Case R 1001/2016-5), relating to invalidity proceedings.

2        The appellant puts forward three grounds of appeal. The first alleges infringement of Article 7(1)(c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), the second alleges infringement of Article 7(1)(b) of that regulation and the third alleges infringement of Article 52(1)(b) of the regulation.

 The appeal

3        Pursuant to Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may, at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss the appeal in whole or in part.

4        That provision must be applied in the present case.

5        On 19 October 2018, the Advocate General took the following position:

‘1.      On 28 September 2009 HP Hewlett Packard Group LLC (“Hewlett Packard”) filed an application for registration of an EU trade mark with [EUIPO] pursuant to [Regulation No 207/2009]. Registration as a mark was sought for a figurative sign composed of the letters “hp” in white placed inside a dark grey circle (“the trade mark at issue”). The goods and services for which registration was sought fell within Classes 2, 7, 9, 16, 35 to 38 and 40 to 42 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. On 13 January 2015, the appellant filed an application for a declaration of invalidity of that trade mark, which was dismissed by a decision of the Cancellation Division of EUIPO of 5 April 2016. The appellant then challenged that decision before the Board of Appeal. By decision of 1 February 2017, the Fifth Board of Appeal of EUIPO dismissed the appellant’s case. On 5 April 2017, the appellant lodged an application with the General Court seeking, inter alia, the annulment of the decision of the Board of Appeal.

2.      In dismissing the appellant’s application the General Court held as follows. First, the Board of Appeal was correct in finding that the appellant had failed to establish a sufficiently direct and specific relationship between the trade mark at issue and the goods and services which it covered. Second, the trade mark must be regarded as having a minimum degree of distinctiveness and capable of performing the essential function of a trade mark. Third, the appellant had failed to demonstrate, in any respect, bad faith on the part of Hewlett Packard.

3.      I refer the Court to the judgment under appeal for further details.

4.      The appellant asks the Court to: (i) declare that the appeal is admissible; (ii) set aside the judgment under appeal; (iii) annul the decision of the Board of Appeal of 1 February 2017; and (iv) order EUIPO and Hewlett Packard to pay the costs.

5.      The appellant advances three grounds of appeal.

6.      By the first ground of appeal the appellant submits that the trade mark at issue consists exclusively of descriptive signs. In its assessment the General Court made two errors of law. First, the General Court erred by ruling that the appellant had failed to prove that the relevant public would associate the letters “hp” with the sectors of technology and finance. Evidence was provided to show that the letters “hp” were used in the sectors of computer science and electronic devices and that those letters could be understood by the general public as referring to ‘hedge process’ in the financial services sector. The appellant was not subject to an obligation to provide evidence that those letters were in fact used by anyone other than Hewlett Packard before the trade mark was filed. Second, the General Court erred in concluding at paragraph 33 of the judgment under appeal that the appellant was obliged to prove that figurative elements of the trade mark at issue were descriptive. Rather, it was sufficient for the appellant to demonstrate that the figurative elements would not change the public’s perception of the trade mark.

7.      The General Court stated at paragraphs 20 to 21 of the judgment under appeal that an EU trade mark is to be declared invalid, where it has been registered contrary to Article 7 of Regulation No 207/2009. Signs and indications that fall within Article 7(1)(c) of that regulation are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought and are deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services concerned.

8.      At paragraphs 29 to 34 of the judgment under appeal the General Court ruled that the appellant merely made a general assertion that the trade mark at issue was descriptive. It stated that the Board of Appeal had been right in concluding that some evidence put forward by the appellant in the proceedings before it was manifestly irrelevant, since it concerned combinations of letters other than those used in the trade mark at issue. Further, the evidence indicating that the letters “hp” corresponded in the financial services sector to ‘hedge process’ was not sufficient of itself to establish the descriptive character of the mark. Finally, the General Court rejected the appellant’s argument that the figurative elements of the trade mark at issue did not present a sufficiently distinctive character allowing them to prevail over the descriptive meaning of the letters “hp”. The General Court held that the appellant had failed to establish a sufficiently direct and specific relationship between the trade mark at issue and the goods and services covered by that mark.

9.      It is clear from the judgment under appeal that the General Court examined the Board of Appeal’s assessment in the light of the wording of Article 7(1)(c) of Regulation No 207/2009 and the principles in the Court’s established case-law. Moreover, the General Court did not state that the appellant was obliged to provide evidence or to prove that figurative elements of the trade mark at issue were descriptive. The appellant’s assertion to that effect is based on a misreading of the judgment under appeal.

10.      It follows from Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union that an appeal to the Court lies on a point of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence do not, save where facts and evidence are distorted, constitute a point of law subject, as such, to review by the Court of Justice on appeal (order of 24 January 2018, Windfinder R & L v EUIPO, C-553/17 P, not published, EU:C:2018:33, paragraph 4).

11.      The appellant has not claimed and has not demonstrated that the General Court distorted the facts or evidence. Rather, in reality the appellant seeks a re-examination of the facts underpinning the assessment of whether the trade mark at issue is descriptive and is caught by the prohibition in Article 7(1)(c) of Regulation No 207/2009.

12.      I therefore conclude that the first ground of appeal is partly manifestly inadmissible and partly manifestly unfounded.

13.      By the second ground of appeal, the appellant claims that the General Court was wrong to conclude that because the trade mark at issue is not descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it must be regarded as having a minimum degree of distinctiveness for the purposes of Article 7(1)(b) of that regulation.

14.      At paragraphs 43 to 46 of the judgment under appeal the General Court set out the basis of its approach to assessing the distinctive character of a mark, which includes: reference to the products or services in respect of which registration is sought; that a minimum degree of distinctiveness is sufficient for the purposes of Article 7(1)(b) of Regulation No 207/2009; that it is not necessary to show that a sign looks unusual or striking; and that the sign filed must merely appear, a priori, capable of enabling the relevant public to identify the origin of the goods or services covered by the EU trade mark application and to distinguish them from those of other undertakings.

15.      The General Court then found at paragraph 48 of its judgment that the trade mark at issue was not descriptive of the goods or services which it covers. The General Court upheld the Board of Appeal’s finding that “the combination of the two letters constituting the trade mark at issue, accompanied by figurative elements such as those at issue in this case, is not commonly used or perceived simply as an indication lacking any distinctive character.” It rejected the appellant’s argument that the trade mark at issue has no characteristic element or any memorable eye-catching features capable of lending it a minimum degree of distinctiveness. Finally, the General Court accepted that the “hp” sign can be understood by the relevant public as a reference to the names Hewlett and Packard, the surnames of the founders of the company.

16.      The second ground of appeal is based upon a misreading of the General Court’s judgment. The General Court does not state that as the trade mark at issue is not descriptive as set out in Article 7(1)(c), it is distinctive within the meaning of Article 7(1)(b) of Regulation No 207/2009. Rather, the General Court conducted a step-by-step examination of the trade mark at issue. It concluded, following that assessment, that it is clear that the letters “hp” are capable of performing the essential function of a trade mark, in so far as that sign is capable of enabling a consumer to identify the commercial origin of the goods or services in question.

17.      I therefore consider that the second ground of appeal is manifestly unfounded.

18.      The appellant submits by its third ground of appeal that the General Court wrongly concluded that Hewlett Packard’s registration of the trade mark at issue (which the appellant alleges is a descriptive mark) was not an act of bad faith.

19.      At paragraphs 53 to 63 of the judgment under appeal the General Court correctly set out the basis upon which an EU trade mark is to be declared invalid under Article 52(1)(b) of Regulation No 207/2009 where an applicant acts in bad faith at the time when he filed the application for the trade mark at issue. The General Court records the following points: (i) the EU trade mark registration system rests on the ‘first to file’ principle, laid down in Article 8(2) of Regulation No 207/2009; (ii) that principle is qualified by, inter alia, Article 52(1)(b) of that regulation; (iii) the burden of proof in such cases rests upon the applicant in invalidity proceedings; (iv) the relevant time for determining whether there was bad faith on the part of the applicant for registration is the time of filing the application for registration; (v) in determining whether an applicant for registration acts in bad faith, account must be taken of certain factors including the state of knowledge of the applicant for registration, such as whether he knows that a third party is using the sign in one of the Member States, whether his intention is to prevent a third party from continuing to use the sign, and the degree of legal protection enjoyed by the third party’s sign. In the context of the general examination conducted under Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the sign at issue and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark and the chronology of events leading up to that filing.

20.      The General Court found that the appellant had failed to produce any evidence of bad faith on the part of Hewlett Packard at the time when the application for registration of the trade mark at issue was filed. First, no evidence was produced demonstrating the objective circumstances in which Hewlett Packard was alleged to know that some of the goods and services concerned were marketed by the applicant or by other third parties under a similar or identical sign. Second, the appellant had not shown that the mark at issue was descriptive or lacked distinctiveness; therefore the appellant’s claims that evidence of bad faith on the part of the intervener is easier to establish owing to the descriptive character of the contested mark were unfounded. Third, the appellant had failed to establish that Hewlett Packard intended to prevent the marketing of a product by a third party using the sign which it had applied to register.

21.      As stated in paragraph 10 above, Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union provide that an appeal to the Court lies on points of law only. The General Court thus has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence.

22.      In reality the appellant here again seeks a re-examination of the facts underpinning the General Court’s assessment of whether Hewlett Packard acted in bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009 when it filed the application for the trade mark. However, as it is not claimed that the facts or the clear sense of the evidence were distorted, the appellant’s arguments must be rejected as manifestly inadmissible.

23.      In the light of all the foregoing, I conclude that the three grounds of appeal put forward by the appellant should be rejected on the basis that they are either manifestly inadmissible or manifestly unfounded. Accordingly, I recommend that the Court should dismiss the appeal under Article 181 of the Rules of Procedure.

24.      Under Article 137 of the Rules of Procedure, which applies to appeals by virtue of Article 184(1) thereof, the order terminating a case should also rule on the costs. The present appeal has not been notified to the respondent and the latter has not therefore incurred costs in connection with the appeal. The appellant should bear its own costs.’

6        For the same reasons as those given by the Advocate General, the appeal must be dismissed as being in part manifestly inadmissible and in part manifestly unfounded.

 Costs

7        Under Article 137 of the Rules of Procedure, applicable to appeal proceedings by virtue of Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. Since the present order has been adopted before the appeal was served on the other parties and, consequently, before those parties could have incurred costs, the appellant must bear its own costs.

On those grounds, the Court (Tenth Chamber) hereby orders:

1.      The appeal is dismissed as being in part manifestly inadmissible and in part manifestly unfounded.

2.      Senetic S.A. shall bear its own costs.

Luxembourg, 13 December 2018.

*      Language of the case: English.