Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Third Chamber)

18 November 2014 (*)

(Community trade mark — Application for Community word mark THE YOUTH EXPERTS — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) of Regulation (EC) 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 — First sentence of Article 59 of Regulation No 207/2009)

In Case T‑484/13,

Lumene Oy, established in Espoo (Finland), represented by L. Laaksonen, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 26 June 2013 (Case R 187/2013-2) concerning an application for registration of the word sign THE YOUTH EXPERTS as a Community trade mark,

THE GENERAL COURT (Third Chamber),

composed of S. Papasavvas, President, N.J. Forwood and E. Bieliūnas (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 9 September 2013,

having regard to the response lodged at the Court Registry on 30 January 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 10 January 2012, the applicant — Lumene Oy — obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) an international registration for the word sign THE YOUTH EXPERTS, designating the European Union and setting 9 January 2012 as the priority date (on the basis of a Finnish mark).

2        On 26 April 2012, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received notification of the international registration of the sign in question.

3        The goods in respect of which registration as a Community trade mark was sought, after the restriction made during the procedure before OHIM, fall within Classes 3 and 5 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, and correspond, for each of those classes, to the following description:

–        Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

–        Class 5: ‘Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’.

4        On 10 May 2012, the examiner informed the applicant of his objections to the registration of the trade mark applied for, which were based on its lack of distinctive character, and his view that registration should be refused in accordance with Article 7(1)(b), read together with Article 7(2), of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

5        By letter of 10 September 2012, the applicant replied to those objections.

6        By decision of 28 November 2012 (‘the examiner’s decision’), the examiner refused the sign in question protection in the European Union in respect of the ‘[s]oaps[,] perfumery, essential oils, cosmetics, hair lotions[ and] dentifrices’ in Class 3 and in respect of the ‘[p]harmaceutical and veterinary preparations[,] dietetic food and substances adapted for medical or veterinary use, food for babies [and] dietary supplements for humans and animals’ in Class 5 (collectively, ‘the contested goods’), pursuant to Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, on the ground that the trade mark applied for was devoid of any distinctive character. On the other hand, the examiner accepted the Community trade mark application for the other goods in Class 3, namely, ‘[b]leaching preparations and other substances for laundry use [and] cleaning, polishing, scouring and abrasive preparations’, and those in Class 5, namely, ‘[s]anitary preparations for medical purposes[,] plasters, materials for dressings[,] material for stopping teeth [and] dental wax[,] disinfectants[,] preparations for destroying vermin[,] fungicides [and] herbicides’ (collectively, ‘the non-contested goods’).

7        On 28 January 2013, the applicant filed a notice of appeal with OHIM against the examiner’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.

8        By decision of 26 June 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal on the basis of Article 7(1)(b), read together with Article 7(2), of Regulation No 207/2009, finding, in particular, that the trade mark applied for was unsuitable as an indication of the commercial origin of all the goods in Classes 3 and 5. In addition, it rejected the applicant’s arguments concerning the fact that a number of Community trade marks containing the words ‘youth’ or ‘experts’ have been registered, and concerning the registration of the sign THE YOUTH EXPERTS in Finland by the Patentti- ja rekisterihallitus (Finnish Patent and Registration Office; ‘the Finnish Office’) and in the United States by the United States Patent and Trademark Office (USPTO).

 Procedure and forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision;

–        conclude that the trade mark applied for may proceed to registration.

10      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

11      By way of measures of organisation of procedure under Article 64 of the Rules of Procedure, the Court invited the parties, by letters of 10 July 2014, to submit their observations on the plea in law alleging lack of competence that it proposed to raise of its own motion, specifically to the effect that the Board of Appeal had exceeded its powers — in particular, with regard to the first sentence of Article 59 of Regulation No 207/2009 — in that, of its own motion, it had taken up afresh the examination of the application for registration of the Community trade mark in question, in the light of the absolute grounds for refusal set out in Article 7 of Regulation No 207/2009, in respect of all the goods covered by that application, when the examiner had allowed the registration of the Community trade mark in respect of the non-contested goods. The observations of the applicant and OHIM were lodged at the Court Registry on 16 July 2014 and 25 July 2014, respectively.

 Law

 Admissibility of the applicant’s second head of claim

12      OHIM disputes the admissibility of the applicant’s second head of claim, that the Court should conclude that the trade mark applied for may proceed to registration.

13      In the circumstances of the present case, such a head of claim must be interpreted as a request that OHIM be instructed to register that mark.

14      However, it is settled case-law that, in an action brought before the judicature of the European Union against the decision of a Board of Appeal of OHIM, OHIM is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with the judgment handed down. Accordingly, it is not for the General Court to issue directions to OHIM. It is for the latter to draw the appropriate inferences from the operative part and grounds of the judgments handed down by the judicature of the European Union (see, by analogy, judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and case-law cited).

15      Therefore, the second head of claim put forward by the applicant, requesting that the Court order OHIM to allow the application for registration, is inadmissible.

 Substance

16      In support of the action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.

17      However, it should be noted as a preliminary point that, according to settled case-law, lack of competence for the purposes of Article 263 TFEU constitutes a ground of ‘public policy’, which must be raised by the judicature of the European Union of its own motion (see, to that effect, judgments of 29 February 2012 in Certmedica International and Lehning entreprise v OHIM — Lehning entreprise and Certmedica International (L112), T‑77/10 and T‑78/10, EU:T:2012:95, paragraph 91, and of 13 December 2013 in Hungary v Commission, T‑240/10, ECR, EU:T:2013:645, paragraph 70 and case-law cited).

18      Moreover, in fulfilling its duty to raise of its own motion a ground of public policy, the judicature of the European Union must have regard to the rule that the parties should be heard (see, to that effect, judgment of 2 December 2009 in Commission v Ireland and Others, C‑89/08 P, ECR, EU:C:2009:742, paragraphs 59 and 60).

19      In the present case, as was recalled in paragraph 11 above, the parties were invited to submit their observations on the question whether the Board of Appeal had competence — in particular, in the light of the first sentence of Article 59 of Regulation No 207/2009 — to re-examine the application for registration of the Community trade mark in question in respect of all the goods covered by that application, when the examiner had allowed the registration in respect of some of the goods covered. The parties complied with that request within the prescribed period.

 Extent of the examination carried out by the Board of Appeal

20      In its observations of 25 July 2014, OHIM confirmed its view, set out as a preliminary point in its reply, that the Board of Appeal had exceeded its powers, but stated that that fact ought not to lead to the annulment of the contested decision.

21      In this connection, it should be observed that it is indeed clear from the examiner’s decision that the examiner rejected the application for registration of a Community trade mark only in respect of the contested goods.

22      Although the file in the procedure before OHIM shows that, by its appeal before OHIM, the applicant sought annulment of the examiner’s decision in its entirety, it should be noted that, in accordance with the first sentence of Article 59 of Regulation No 207/2009, if, as in the present case, the examiner has refused an application for registration of a Community trade mark only in respect of the contested goods covered by that application, while allowing registration in respect of the non-contested goods, the appeal lodged by the trade mark applicant with the Board of Appeal can lawfully relate only to the examiner’s refusal to allow registration in respect of the contested goods. The applicant may not, by contrast, legitimately appeal before the Board of Appeal against the examiner’s consent to the registration of such an application in respect of the non-contested goods (see, to that effect, judgment of 3 July 2013 in Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 24).

23      Consequently, although it is true that, in the present case, the applicant lodged an appeal with the Board of Appeal seeking annulment of the examiner’s decision in its entirety, the fact remains that, pursuant to the first sentence of Article 59 of Regulation No 207/2009, the Board of Appeal was legitimately seised of the appeal only to the extent that the lower authority had rejected the applicant’s claims (see judgment in NEO, EU:T:2013:343, paragraph 25).

24      It follows that the Board of Appeal exceeded the limits of its powers in so far as it re-opened of its own motion the examination, in the light of the absolute grounds for refusal set out in Article 7 of Regulation No 207/2009, of the application for registration of a Community trade mark in respect of the non-contested goods covered by that application and in so far as it found that the trade mark applied for was, for the purposes of Article 7(1)(b) of that regulation, devoid of any distinctive character such as to enable those non-contested goods to be distinguished.

25      The contested decision must therefore be annulled to the extent that the trade mark for which registration was sought was declared devoid of any distinctive character, for the purposes of Article 7(1)(b) of Regulation No 207/2009, in relation to the non-contested goods, in respect of which the examiner had allowed registration.

 Single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

26      The applicant submits, in essence, that the Board of Appeal was wrong to find that the trade mark applied for was devoid of any distinctive character, for the purposes of Article 7(1)(b) of Regulation No 207/2009, on the basis that it was by nature a laudatory promotional message. The applicant argues that, on the contrary, the trade mark applied for constitutes a creative, distinctive and original use of terminology clearly capable of identifying the origin of the goods covered by the trade mark to the consumer. In addition, OHIM’s previous decision-making practice and the decisions of the Finnish Office and the USPTO unequivocally support the distinctiveness of the trade mark.

27      OHIM disputes the applicant’s arguments.

28      It must be pointed out that, since it has been held in paragraphs 22 to 25 above that the contested decision must be annulled for infringement of Article 59 of Regulation No 207/2009, to the extent that the trade mark applied for was declared devoid of any distinctive character as regards the non-contested goods, in respect of which the examiner had allowed registration, the present plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, must be considered only in relation to the contested goods, in respect of which registration was refused by the examiner.

29      Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered. Furthermore, 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.

30      According to settled case-law, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (judgments of 21 January 2010 in Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33, and of 12 July 2012 in Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 23).

31      That distinctive character must be assessed, first, by reference to the goods in respect of which registration has been applied for and, secondly, by reference to the relevant public’s perception of the mark (judgments in Audi v OHIM, EU:C:2010:29, paragraph 34, and Smart Technologies v OHIM, EU:C:2012:460, paragraph 24).

32      As regards marks consisting of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of those marks is not excluded by virtue of such use. For the purposes of assessing the distinctiveness of such marks, it is inappropriate to apply to those marks criteria stricter than those applicable to other signs (judgments in Audi v OHIM, EU:C:2010:29, paragraphs 35 and 36, and Smart Technologies v OHIM, EU:C:2012:460, paragraph 25).

33      Whilst the criteria for assessing distinctiveness are the same for the various categories of trade mark, it may become apparent, when applying those criteria, that the relevant public’s perception is not necessarily the same in relation to each of those categories and that, therefore, it may prove more difficult to establish the distinctiveness of the marks in certain categories than of those in other categories (judgments in Audi v OHIM, EU:C:2010:29, paragraph 37, and Smart Technologies v OHIM, EU:C:2012:460, paragraph 26).

34      Such difficulties do not justify, in any event, the laying down of specific criteria supplementing or derogating from the criterion of distinctiveness for word marks consisting of advertising slogans (see, to that effect, judgments in Audi v OHIM, EU:C:2010:29, paragraph 38, and Smart Technologies v OHIM, EU:C:2012:460, paragraph 27).

35      In particular, an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order for such a slogan to be distinctive (judgments in Audi v OHIM, EU:C:2010:29, paragraph 39, and Smart Technologies v OHIM, EU:C:2012:460, paragraph 28).

36      Furthermore, the mere fact that a mark is perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient in itself to support the conclusion that that mark is devoid of distinctive character (judgments in Audi v OHIM, EU:C:2010:29, paragraph 44, and Smart Technologies v OHIM, EU:C:2012:460, paragraph 29).

37      The laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (judgments in Audi v OHIM, EU:C:2010:29, paragraph 45, and Smart Technologies v OHIM, EU:C:2012:460, paragraph 30).

38      It is in the light of those considerations that the applicant’s arguments must be examined.

39      First of all, as regards the relevant public, the Board of Appeal found in paragraphs 18 and 19 of the contested decision that, as the trade mark applied for consisted of elements from the English language, the relevant public was the English-speaking public or even a public that is not English-speaking but which has a sufficient grasp of basic English. It inferred from this that the target public included, in addition to the relevant public of the United Kingdom, Ireland and Malta, at least that of Cyprus, Sweden, Denmark, Finland and the Netherlands.

40      In addition, the Board of Appeal observed that all the goods covered by the trade mark applied for were directed at both the public at large and professionals in the medical field. However, referring to the case-law of the General Court, the Board of Appeal noted that the level of attention of the relevant public was relatively low with regard to promotional indications (see, to that effect, judgments of 9 July 2008 in BYK-Chemie v OHIM (Substance for Success), T‑58/07, EU:T:2008:269, paragraph 23, and of 17 November 2009 in Apollo Group v OHIM (THINKING AHEAD), T‑473/08, EU:T:2009:442, paragraph 33).

41      That definition of the relevant public, which is moreover not disputed by the applicant, must be confirmed.

42      Next, as regards the perception of the sign at issue by the relevant public, the Board of Appeal stated that that sign consisted of the English words ‘youth’ and ‘experts’ and represented, conceptually, a promotional indication or slogan. The Board of Appeal stated that it was an expression that was grammatically correct, that was not imaginative, surprising or unexpected, that did not constitute a play on words and that did not have a certain originality and resonance making it easy to remember. According to the Board of Appeal, the trade mark applied for would, on the contrary, be understood as a self-explanatory laudatory message that the applicant’s goods were designed, produced or made by young experts with an extensive knowledge in the relevant field, which would reassure the consumer as to the quality of the goods in question, those goods being based on an improved formula or recently developed, for example. The Board of Appeal concluded from this that the trade mark applied for was a banal slogan with a clear and unambiguous laudatory meaning that would not be perceived by the relevant public as an indication of the commercial origin of the goods concerned, but as purely promotional information (paragraphs 20, 30, 32, 33 and 35 of the contested decision).

43      In addition, the Board of Appeal stated that the relevant public was accustomed to seeing advertisements vaunting the improved effectiveness of the contested goods and that it was therefore not surprising that slogans using terms such as ‘youth’ and ‘experts’ were commonly used for marketing purposes, whether in the cosmetics and beauty care sector, in the pharmaceutical industry and healthcare services sector or in the field of dietary and nutritional supplements, in order to promote the desirable quality of those goods (paragraphs 24, 26 to 28 of the contested decision).

44      It should be observed, in the light of the considerations set out in the contested decision, that the Board of Appeal carried out a correct analysis of the meaning of the word sign at issue in relation to the contested goods and to the perception of the relevant public.

45      At the end of that analysis, the Board of Appeal was thus fully entitled to conclude that the relevant public, confronted with the trade mark applied for, would not be led to perceive it as an indication of commercial origin, but as purely promotional information promising expertise in a particular field.

46      That conclusion cannot be called in question by the criticisms put forward by the applicant.

47      In this connection, first, in so far as the applicant claims, on the one hand, that the overall assessment of the trade mark applied for shows that that mark is not descriptive of any type of the contested goods and, on the other, that an English-speaking public would not use the words making up the trade mark applied for to describe the goods in question, it should be pointed out that the Board of Appeal did not in this case apply the absolute ground for refusal, referred to in Article 7(1)(c) of Regulation No 207/2009, relating to the descriptive character of a sign.

48      Having concluded that the sign at issue was devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, the Board of Appeal did not have to examine whether the sign might also be caught by the absolute ground for refusal of registration referred to in Article 7(1)(c) of that regulation.

49      Accordingly, the applicant’s argument alleging an error in the analysis of the trade mark applied for as descriptive — an argument that is relevant only where Article 7(1)(c) of Regulation No 207/2009 is applied — is therefore ineffective ab initio, in that it is directed against a ground that does not appear in the contested decision.

50      Second, the applicant takes issue with the Board of Appeal for holding that the only message conveyed by the trade mark applied for was that the applicant’s goods were designed, produced or made by young experts with an extensive knowledge in the relevant fields, when the mark conveys at least three different meanings to the relevant public.

51      It must be pointed out that such an argument is based on an incorrect reading of the contested decision.

52      It is apparent from the contested decision, in particular, from paragraphs 20, 24, 26 and 27, that the Board of Appeal held that the trade mark applied for did indeed convey the self-explanatory laudatory message that the applicant’s goods were designed, produced or made by young experts with an extensive knowledge in the relevant field — in this case, that of cosmetics and beauty care or that of the pharmaceutical industry and healthcare services, or indeed that of dietary and nutritional supplements — which would reassure the consumer as to the quality of the goods in question, those goods being based on an improved formula or recently developed, for example.

53      The necessary inference is that, far from accepting only one interpretation of the trade mark applied for, the Board of Appeal took into account the various messages conveyed by the mark. The Board of Appeal consequently found that the trade mark applied for would be understood by the relevant public as informing it that the contested goods covered by the trade mark applied for are created by young experts, but also as informing it that those goods have specific qualities for furthering the youthfulness and good health of the skin and body, for example, and, therefore, that young experts in the field of products for furthering the youthfulness and good health of the skin and body may be involved, those various messages being the very messages that the applicant regards as being conveyed by the sign at issue.

54      Third, the applicant claims that a minimum degree of distinctiveness is sufficient to render a mark registrable, in accordance with Article 7(1)(b) of Regulation No 207/2009. According to the applicant, when the relevant public is confronted with the trade mark applied for in relation to the contested goods, the link between those goods and the sign at issue will clearly be too indeterminate for the mark to be regarded as being completely devoid of distinctive character.

55      However, the applicant has not adduced any evidence to substantiate that assertion, which is formulated in a vague and general way, and it has accordingly not succeeded in calling in question the Board of Appeal’s conclusion that, in relation to the contested goods, the trade mark applied for lacks distinctive character.

56      Fourth, as regards the arguments alleging failure to follow OHIM’s decision-making practice, it must be recalled that OHIM is under a duty to exercise its powers in accordance with the general principles of EU law. In the light of the principles of equal treatment and of sound administration, OHIM must take into consideration the decisions taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. The way in which those principles are applied must, however, be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act that was to the advantage of someone else. 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. Such an examination must therefore be undertaken in each individual case. The registration of a sign as a trade 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 (see, to that effect, judgment of 8 November 2012 in Hartmann v OHIM (Nutriskin Protection Complex), T‑415/11, EU:T:2012:589, paragraph 36 and case-law cited).

57      In the present case, the Board of Appeal concluded, on the basis of a comprehensive examination and taking into account the perception of the relevant public, that the relevant public would perceive the trade mark applied for as a promotional message, inviting it to choose the applicant’s products because they have been developed by specialists in the relevant fields, and as an indication of the contested goods’ quality. As is apparent from paragraphs 42 to 55 above, that finding is in itself sufficient for it to be held that, in relation to the contested goods, registration of the word sign THE YOUTH EXPERTS as a Community trade mark is caught by the absolute ground for refusal under Article 7(1)(b) of Regulation No 207/2009. It follows that, contrary to the applicant’s claims, the assessment of its application for registration of the word sign THE YOUTH EXPERTS as a Community trade mark in respect of the contested goods was made in a manner consistent with the case-law, on the basis of a correct interpretation and a correct application of Article 7(1)(b) of Regulation No 207/2009.

58      Consequently, since the legality of the contested decision regarding the non-registrability of the sign THE YOUTH EXPERTS as a Community trade mark in respect of the contested goods is established directly on the basis of Article 7(1)(b) of Regulation No 207/2009, it is apparent from the case-law cited in paragraph 56 above that the contested decision cannot be called in question merely because the Board of Appeal did not, in the present case, follow OHIM’s decision-making practice.

59      Fifth, as regards the argument alleging failure to follow the registration practice of the Finnish Office and of the USPTO, suffice it to recall that, according to settled case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, which applies independently of any national system. Consequently, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant EU rules alone, as interpreted by the judicature of the European Union (see, to that effect, judgments of 25 October 2007 in Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraphs 65 and 66, and of 17 July 2008 in L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58). Accordingly, OHIM and, as the case may be, the judicature of the European Union are not bound by a decision given in a Member State, or indeed a non-member country, to the effect that the sign in question is registrable as a national mark (judgment of 27 February 2002 in Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47).

60      Given that, in the present case, the legality of the contested decision regarding the non-registrability of the sign applied for as a Community trade mark in respect of the contested goods is established directly on the basis of Article 7(1)(b) of Regulation No 207/2009 (see paragraph 57 above), that decision cannot be called in question merely because the Board of Appeal did not follow the decision-making practice of the Finnish Office and the USPTO.

61      In the light of all those observations, it is evident that the plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009 is unfounded.

62      In the light of all the foregoing, the contested decision must be annulled to the extent that the trade mark for which registration was sought was declared devoid of any distinctive character, for the purposes of Article 7(1)(b) of Regulation No 207/2009, in relation to the non-contested goods. Since the single plea in law is, in fact, unfounded as regards the contested goods, the action must be dismissed as to the remainder.

 Costs

63      Under Article 87(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the Court may order that the costs be shared or that each party bear its own costs. In the present case, since the contested decision is annulled as regards the goods in respect of which the examiner had allowed registration, each party must bear its own costs.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby:

1.      Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 26 June 2013 (Case R 187/2013-2) as regards ‘[b]leaching preparations and other substances for laundry use [and] cleaning, polishing, scouring and abrasive preparations’ in Class 3 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, and ‘[s]anitary preparations for medical purposes[,] plasters, materials for dressings[,] material for stopping teeth [and] dental wax[,] disinfectants[,] preparations for destroying vermin[,] fungicides [and] herbicides’ in Class 5 of that agreement;

2.      Dismisses the action as to the remainder;

3.      Orders each party to bear its own costs.

Delivered in open court in Luxembourg on 18 November 2014.

[Signatures]

* Language of the case: English.

© European Union
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