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

JUDGMENT OF THE GENERAL COURT (Single Judge)

2 June 2016 (*)

(EU trade mark - Application for EU word mark REVOLUTION - Mark consisting of an advertising slogan - Absolute ground for refusal - Absence of distinctiveness - Article 7(1)(b) of Regulation (EC) No 207/2009)

In Case T-654/14,

Revolution LLC, established in Washington, DC (United States), represented by P. Roncaglia, F. Rossi and N. Parrotta, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented initially by P. Geroulakos, and subsequently by D. Gája and A. Folliard-Monguiral, acting as Agents,

defendant,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 11 June 2014 (Case R 2143/2013 1), concerning an application for registration of the word sign REVOLUTION as an EU trade mark,

THE GENERAL COURT (Single Judge),

Judge: E. Buttigieg,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 8 September 2014,

having regard to the response lodged at the Court Registry on 18 November 2014,

further to the hearing on 1 March 2016,

gives the following

Judgment

 Background to the dispute

1        On 15 May 2013, the applicant, Revolution LLC, claiming the priority of a United States trade mark application lodged on 15 November 2012, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). The mark for which registration was sought is the word sign REVOLUTION.

2        The services for which registration was sought are in Class 36 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 to the following description: ‘Financial consulting; providing venture capital, development capital, private equity and investment funding; management of private equity funds’.

3        On 4 June 2013, the examiner informed the applicant of his objections to registration of the mark applied for, based on Article 7(1)(b) and (2) of Regulation No 207/2009. The applicant maintained its application for registration.

4        By decision of 14 October 2013, the examiner, confirming his assessment of 4 June 2013, rejected the application for registration of the mark on the basis of Article 7(1)(b) and (2) of Regulation No 207/2009, on the ground that the mark applied for was devoid of distinctive character.

5        On 31 October 2013, the applicant filed an appeal against the examiner’s decision.

6        By decision of 11 June 2014 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal, holding that the sign applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 and, accordingly, rejected the registration of the mark applied for.

7        In particular, the Board of Appeal stated, first of all, that the relevant public consisted of average consumers and professionals whose degree of attentiveness was higher than average in so far as the services covered could involve significant investments and were not contracted daily. It also added that, in respect of a promotional indication, the level of attention of the relevant public was nevertheless relatively low. Furthermore, the Board of Appeal held, like the examiner, that the word ‘revolution’ meant specifically ‘a far-reaching and drastic change, especially in ideas, methods, etc’. Next, it held that, in relation to the services covered, that word amounted to a promotional message in that it indicated that these were new types of services fundamentally altering the offer of those services and promising advances of benefit to their user. It held that the vagueness and imprecision of the word ‘revolution’ did not give it any originality or resonance that would make it distinctive. Finally, the Board of Appeal dismissed the argument based on the registration of similar marks comprising the word ‘revolution’ by OHIM or the American authorities, noting that every application for registration must be subject to a rigorous and complete assessment in the light of specific criteria and the factual circumstances of the case at issue and that the EU trade mark system was an independent system.

 Forms of order sought

8        The Court (First Chamber) decided, pursuant to Article 14(3) and Article 29 of the Rules of Procedure, to delegate the case to E. Buttigieg, sitting as a single Judge.

9        The applicant claims that the Court should:

-        annul the contested decision;

-        order EUIPO to pay the costs.

10      EUIPO contends that the Court should:

-        annul the contested decision;

-        order the applicant to pay the costs.

 Law

11      In support of its action, the applicant raises two pleas in law, alleging, first, infringement of Article 7(1)(b) of Regulation No 207/2009 and, second, breach of the general principles of equal treatment, good administration and legal certainty and infringement of Article 75 of that regulation.

 First plea in law: infringement of Article 7(1)(b) of Regulation No 207/2009

12      In support of its first plea in law, the applicant puts forward, in essence, two complaints. It claims, in the first place, that the Board of Appeal erred in its assessment of the promotional nature of the mark applied for and, in the second place, that the Board misconstrued the case-law of the Court of Justice stemming from the judgment of 21 January 2010 in Audi v OHIM (C-398/08 P, EU:C:2010:29), in that, even were the sign applied for to be perceived as a promotional message, that does not prevent it being capable of performing the functions of a trade mark.

13      Under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered. In addition, Article 7(2) of Regulation No 207/2009 states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the EU’.

14      The distinctive character of a mark for the purposes of Article 7(1)(b) of Regulation No 207/2009 means that that mark serves to identify the goods in respect of which registration was sought as originating from a specific undertaking, and thus to distinguish those goods from those of other undertakings (see judgments of 21 January 2010 in Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited, and 20 October 2011 in Freixenet v OHIM, C-344/10 P and C-345/10 P, EU:C:2011:680, paragraph 42 and the case-law cited).

15      In that regard, it should be noted that the signs devoid of distinctiveness referred to in Article 7(1)(b) of Regulation No 207/2009 are regarded as incapable of performing the essential function of a trade mark, namely, that of identifying the origin of the goods or services, thus enabling the consumer purchasing the goods or service designated by the mark, on making a further purchase, to make the same choice, should the experience prove positive, or to make a different choice, should the experience prove negative (judgment of 27 February 2002 in REWE-Zentral v OHIM (LITE), T-79/00, EU:T:2002:42, paragraph 26). Such is the case for, inter alia, signs which are commonly used in connection with the marketing of the goods or services concerned (judgments of 3 July 2003 in Best Buy Concepts v OHIM (BEST BUY), T-122/01, EU:T:2003:183, paragraph 20, and 30 June 2004 in Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T-281/02, EU:T:2004:198, paragraph 24).

16      The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see judgment of 20 October 2011 in Freixenet v OHIM, C-344/10 P and C-345/10 P, EU:C:2011:680, paragraph 43 and the case-law cited).

17      As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or expressions urging consumers to purchase the goods or services covered by those marks, their registration is not excluded, as such, by virtue of such use (judgments of 21 October 2004 in OHIM v Erpo Möbelwerk, C-64/02 P, EU:C:2004:645, paragraph 41, and 21 January 2010 in Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 35).

18      As regards the assessment of the distinctive character of such marks, the Court of Justice has previously held that it was inappropriate to apply to those marks criteria stricter than those applicable to other signs (judgments of 21 October 2004 in OHIM v Erpo Möbelwerk, C-64/02 P, EU:C:2004:645, paragraphs 32 and 44, and 21 January 2010 in Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 36).

19      The Court of Justice has therefore held that 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 to have the minimum level of distinctiveness required under Article 7(1)(b) of Regulation No 207/2009 (see, to that effect, judgments of 21 October 2004 in OHIM v Erpo Möbelwerk, C-64/02 P, EU:C:2004:645, paragraphs 31 and 32, and 21 January 2010 in Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 39).

20      It is in the light of those considerations that it must be considered whether, as the applicant submits in its first plea, the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 by finding that the mark applied for was devoid of any distinctiveness.

21      First of all, the Court must confirm the Board of Appeal’s findings, which the applicant moreover does not dispute, regarding the definition of the relevant public and its degree of attention. As the Board of Appeal correctly noted, the services covered are directed both at the general public’s average consumer and at professionals and, in the case of those services which involve substantial commitments and investments, are technical and in respect of which contracts are not entered into every day, the level of attentiveness of the relevant public is rather high. Nevertheless, as the Board of Appeal correctly observed, this finding requires some qualification, because, in accordance with settled case-law, the level of attention of the relevant public may be relatively low when it comes to promotional statements, and this is so particularly in respect of, as is the present case, financial services (judgment of 15 September 2005 in Citicorp v OHIM (LIVE RICHLY), T-320/03, EU:T:2005:325, paragraphs 73 and 74). Furthermore, since, as the examiner noted, the word ‘revolution’ is understood in English, French and Slovene, which the Board of Appeal does not dispute, the relevant public is made up of individuals who speak those languages.

 The complaint alleging error of assessment of the promotional nature of the mark applied for

22      The applicant, relying on case-law, claims that only slogans and laudatory terms conveying an objective and self-evident promotional message in relation to the goods and services covered are refused registration. On the one hand, the word ‘revolution’ is not in itself promotional or laudatory and, on the other, it can be perceived as such in respect of the services concerned only after a complex mental process. Thus, by virtue of its originality and the lack of clear meaning in respect of the services covered, the sign applied for does not constitute to a promotional message.

23      EUIPO contests the applicant’s arguments.

24      In the context of the present complaint, it must be determined whether the Board of Appeal correctly analysed the meaning of the mark applied for in concluding that it did amount to a promotional message.

25      As for the meaning of the word ‘revolution’ which constitutes the mark applied for, the Board of Appeal held in paragraph 19 of the contested decision, like the examiner, referring to the online version of the Collins English Dictionary, that the word ‘revolution’ meant in particular ‘a far-reaching and drastic change, especially in ideas, methods, etc’. It added that, according to the online Merriam-Webster dictionary, that word could also be defined as meaning ‘a sudden, radical, or complete change’ or a ‘fundamental change in the way of thinking about or visualising something’. As for the political connotations of the word ‘revolution’, it stated in paragraph 20 of the contested decision that they would not come into the mind of the relevant public in relation to the services covered, given that that word was used in different contexts without being associated to a negative connotation, but by referring back to a fundamental change, for example by designating a cultural, sexual, scientific or technological revolution.

26      Regarding the link between the semantic content of the sign and services at issue, the Board of Appeal noted in paragraph 23 of the contested decision that, in relation to the services covered, the word ‘revolution’ meant that these were new types of services fundamentally altering the offer of those kinds of services, promising progress benefiting their users and thereby guaranteeing the best possible return on investment. Consequently, according to the Board of Appeal, the relevant public will perceive that word as a mere promotional indication.

27      The Board of Appeal’s findings are not vitiated by error and must be approved.

28      One of the meanings of the word ‘revolution’ is indeed a fundamental, drastic and large-scale change, which the applicant does not contest. Used in respect of the financial services covered by the contested mark, that word conveys for the relevant public a message that these are new kinds of services offering new, innovative or different investment solutions compared to those existing until then, and which consequently modify the offer of those services in that those revolutionary financial services allow better returns on investment. As the Board of Appeal stated in paragraph 23 of the contested decision, the investment services covered in the present case, and more specifically the provision of venture capital, development capital, private equity and investment funding and the management of private equity funds are often linked to the emerging markets or are based on innovative financial products thanks to which the investor may hope to maximise his investments.

29      Therefore, ‘revolution’ is a laudatory term in the nature of an advertisement, the purpose being to highlight the positive qualities of the services covered. It is immediately perceived by the relevant public as a laudatory advertising message, which indicates that the services covered by the sign applied for offer, for the relevant public, a positive change and advantages compared to the services offered previously or offered by competitors (see, to that effect, judgment of 30 June 2014 in Mehr für Ihr Geld, T-281/02, EU:T:2004:198, paragraph 29 and the case-law cited).

30      Contrary to the applicant’s claims, the sign applied for conveys, in relation to the services covered, a clear and unequivocal message, immediately apparent and which does not require any interpretative effort, because the relevant public will deduce from the word ‘revolution’ itself, without undertaking any complex thought processes, that it refers to something revolutionary, to a change or an innovation and that the sign is merely laudatory and extols the positive qualities of the services covered by the application for registration.

31      It follows from all those considerations that the Board of Appeal did not err in finding that the sign applied for will be perceived by the relevant public, with regard to the financial services covered, as a promotional message.

 The complaint alleging failure to have regard to the judgment in Audi v OHIM

32      The appellant claims that, even if it were to be accepted that the mark applied for conveys an objective and laudatory promotional message in relation to the services at issue, the finding of the Board of Appeal that the mark applied for is devoid of any distinctiveness is not justified, in the light of the judgment of 21 January 2010 in Audi v OHIM (C-398/08 P, EU:C:2010:29). According to the applicant, the Board of Appeal failed to apply the criteria for assessing the distinctiveness of a promotional slogan set out in that judgment, first, by failing to ascertain whether the sign applied for could be perceived as an indication of the commercial origin of the services covered and, second, by deciding that the mark applied for was devoid of distinctiveness, even though the different meanings and connotations of the word ‘revolution’, the earlier registrations of marks comprising that word and the habitual character of the connection between that word and the applicant’s services demonstrate that the sign applied for can be perceived as an indication of the commercial origin of the services covered.

33      EUIPO contests the applicant’s arguments.

34      In that respect, it must be stated that the Court ruled in the judgment of 21 January 2010 in Audi v OHIM (C-398/08 P, EU:C:2010:29, paragraph 44) that 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.

35      The laudatory connotation of a word mark does not mean that it cannot be apt 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 as to the commercial origin of the goods and 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 distinctiveness (judgment in Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 45).

36      Thus, to the extent that a mark which consists of signs or indications that are also used as advertising slogans, indications of quality or expressions prompting consumers to purchase the goods or the services it designates is not descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, it can express an objective message, even a simple one, and still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where that mark is not merely an ordinary advertising message, but possesses a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the public concerned (judgment in Audi v OHIM, C-398/08 P, EU:C:2010:29, paragraph 57).

37      It follows that a mark consisting in an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. By contrast, and according to settled case-law, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately as an indication of the commercial origin of the goods or services in question (order of 12 June 2014 in Delphi Technologies v OHIM, C-448/13 P, not published, EU:C:2014:1746, paragraph 37; see also judgment of 13 April 2011 in Smart Technologies v OHIM (WIR MACHEN DAS BESONDERE EINFACH), T-523/09, not published, EU:T:2011:175, paragraph 31 and the case-law cited).

38      It is in the light of those considerations that it is appropriate to determine whether the Board of Appeal was correct in finding that the mark applied for was devoid of any distinctive character under Article 7(1)(b) of Regulation No 207/2009.

39      In this regard, it should be noted that, contrary to the view of the applicant, the Board of Appeal did not confine itself, in holding that the mark applied for was devoid of distinctiveness, to the finding that it amounted to a promotional message. Beyond this qualification, the Board of Appeal also noted, in paragraph 25 of the contested decision, that the imprecise nature of the laudatory word ‘revolution’ did not allow the sign applied for to fulfil the essential function of a trade mark which is to designate the commercial origin of the services covered. It also held, in paragraph 26 of the contested decision, that that sign was not easily remembered because it lacked all originality or resonance when it was being used in relation to the services covered.

40      Therefore, the Board of Appeal did not infer the lack of distinctiveness from the mere fact that the sign applied for amounted to a promotional formula, but supported that finding with additional assessments, indicating that the sign will not immediately be perceived as indicating the commercial origin of the goods, but as conveying a promotional message. It follows that, contrary to the view of the applicant, the Board of Appeal did take into account the criteria stemming from the judgment of 21 June 2010 in Audi v OHIM (C-398/08 P, EU:C:2010:29), in its assessment of the distinctive character of the sign applied for, considered as a promotional formula.

41      Moreover, those Board of Appeal findings concerning the lack of distinctiveness of the mark applied for are not vitiated by error and must be upheld.

42      Firstly, the Board of Appeal was right in finding that, in the light of its imprecise character, the sign applied for consisting of the word ‘revolution’ was not capable of exercising the function of indication of origin beyond bearing a promotional message giving the information that the services covered were revolutionary or innovative. In order to find that there is no distinctiveness, it is sufficient to note that the semantic content of the word mark indicates to the consumer a characteristic of the service relating to its market value which, whilst not specific, comes from information designed to promote or advertise which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the services. In addition, the mere fact that the semantic content of the word sign applied for does not convey any information about the nature of the services concerned is not sufficient to give that sign distinctiveness (see, to that effect, judgment of 30 June 2004 in Mehr für Ihr Geld, T-281/02, EU:T:2004:198, paragraph 31 and the case-law cited).

43      Secondly, the semantic content of the word ‘revolution’ constituting the mark applied for and the link existing between that content and the services covered, considered previously, do not in any way appear to give that mark applied for any specific originality or resonance, as the Board of Appeal was correct to point out, or trigger in the relevant public a cognitive process or interpretative effort, as referred to in the judgment of 21 January 2010 in Audi v OHIM (C-398/08 P, EU:C:2010:29); so that the mark applied for is perceived as a mere promotional formula praising the quality of the services covered as innovative services or services characterised by a change. Moreover, since the relevant public is not very attentive if a sign does not immediately indicate to it the origin or destination of the object of its intended purchase, but rather gives it purely promotional and abstract information, it will not take the time either to enquire into the sign’s various possible functions, or mentally to memorise it as a trade mark. Therefore, it must be found that the sign applied for will be perceived in the first instance by the relevant public as a laudatory or promotional reference to a quality or use of the services concerned, because of its inherent meaning, rather than as a mark (see, to that effect, judgment of 28 April 2015 in Volkswagen v OHIM (EXTRA), T-216/14, not published, EU:T:2015:230, paragraph 27 and the case-law cited).

44      As regards the applicant’s argument that various elements give a distinctive character to the mark applied for, and in particular the fact that the word ‘revolution’ has several meanings and connotations which are all characteristics giving distinctiveness to the mark applied for, it is noteworthy that, in the present case, it is indeed true that the use of the word ‘revolution’ in different contexts gives rise, depending on the context, to negative or positive connotations. Nonetheless, it should be noted that, as is apparent from the case-law cited in paragraph 16 above, the distinctive character of a trade mark must be assessed, first, by reference to the goods or services for which registration has been applied for and, second, by reference to the perception of the relevant public. In the present case, the possible negative connotations, referred to by the applicant, which come to mind when that word is used in a historical or political context, do not prevail in the relevant public’s mind when faced with the sign applied for where the word ‘revolution’ is used in relation to the financial services at issue (see, too that effect and by analogy, judgment of 15 September 2005, LIVE RICHLY, T-320/03, EU:T:2005:325, paragraph 83).

45      In any event, it should be noted that a word sign must be refused registration under Article 7(1)(b) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 23 January 2014 in Novartis v OHIM (CARE TO CARE), T-68/13, not published, EU:T:2014:29, paragraph 41 and the case-law cited).

46      It follows that the applicant’s argument must be rejected.

47      The applicant then maintains that because it is already the proprietor of several registrations comprising the word ‘revolution’, the relevant public is accustomed to make a connection, within the meaning of the Audi case-law (judgment of 21 January 2010, in Audi v OHIM, C-398/08 P, EU:C:2010:29), between a mark comprising that word and the services offered by the defendant, so that the mark applied for, even described as a slogan, is such as to identify, for that public, the commercial origin of the services covered.

48      In that respect, it must be stated that the applicant has not provided any evidence capable of showing such a perception by the relevant public. The sole fact that the applicant is the proprietor of several marks comprising the word ‘revolution’ is not sufficiently decisive to establish from the outset that the relevant public considers that the word ‘revolution’ leads it to believe that the applicant is at the commercial origin of the services covered.

49      Similarly, assuming that the applicant’s argument claims that the mark applied for is a widely known slogan, as was the case of the mark at issue in the judgment of 21 January 2010 in Audi v OHIM (C-398/08 P, EU:C:2010:29), it is noteworthy that it did not put forward any elements capable of demonstrating that the circumstances in this case were comparable to those resulting in that judgment, and specifically that the sign REVOLUTION was a widely known slogan allowing the relevant public to perceive the sign applied for as an indication of the commercial origin of the services covered.

50      In any event, it should be noted that it follows from paragraph 59 of the judgment of 21 January 2010 in Audi v OHIM (C-398/08 P, EU:C:2010:29) that the Court did not use as a sole basis the reputation of the slogan at issue to find that the mark in question in the present case bore a distinctive character in that it also demonstrated that that slogan required a certain interpretative effort on behalf of the public and exhibited a certain originality and resonance which made it easy to remember. In the present case, the mark applied for does not require any interpretative effort on the part of the public and does not exhibit any originality or resonance making it easy to remember, as is apparent from paragraph 43 above.

51      Finally, as regards the argument that the applicant is the proprietor of a series of registrations of EU marks consisting of the sign REVOLUTION or revolving around that sign for related services, the applicant confirmed, during the hearing, that it intended also to raise an argument based on the existence of a family of marks. As EUIPO correctly holds, the concept of a family of marks does not come under absolute grounds for refusal, but only relative grounds for refusal; so that the Board of Appeal had to assess the distinctive character of the mark applied for in the light of its inherent characteristics, without taking into consideration the other allegedly similar marks of which the applicant was the proprietor (see, to that effect, judgment of 24 November 2015 in Intervog v OHIM (meet me), T-190/15, not published, EU:T:2015:874, paragraph 36). It follows that argument of the applicant’s must be rejected, without the need to give judgment on EUIPO’s argument that it is inadmissible because put forward for the first time before the Court.

52      It follows from all those considerations that the relevant public will perceive the sign REVOLUTION, in relation to the financial services covered, primarily as a promotional formula and not as an indication of the commercial origin of the services at issue and the Board of Appeal did not err in finding that that sign amounts to a promotional message devoid of distinctive character.

53      The second complaint must therefore be rejected as unfounded. Consequently, the first plea in law must be rejected in its entirety.

 The second plea in law alleging infringement of the general principles of equal treatment, good administration and legal certainty, as well as Article 75 of Regulation No 207/2009

54      The applicant claims that EUIPO must, having regard to the principles of equal treatment, good administration and legal certainty, take into account the decisions previously adopted in respect of similar applications for registration. Furthermore, it claims that the Board of Appeal ignored registrations relating to similar marks, including those belonging to the applicant, while relying on irrelevant refusals of registration without putting forward any statement of reasons and without explaining such a difference, whereas, according to Article 75 of Regulation No 207/2009, the reasoning underpinning EUIPO’s decisions must make it possible for interested parties to understand the reasons for the measure taken.

 The complaint alleging infringement of the principles of equal treatment, good administration and legal certainty

55      The applicant holds that the Board of Appeal has, by failing to observe the principles of good administration and equality of treatment, ignored the earlier registrations of marks comprising the word ‘revolution’, including those regarding identical services to those services at issue, but has relied on applications for registration of marks for which the word ‘revolution’ was not dominant and which concerned goods and services very different from the services at issue. The applicant claims that, even if EUIPO is not bound by its earlier decision-making practice, it must nevertheless observe the principle of legal certainty so that the proprietors of trade marks may foresee the outcome of a registration application.

56      EUIPO contests the applicant’s arguments.

57      In this respect, it should be noted that the legality of the decisions of the Board of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Union judicature, and not on the basis of a previous decision-making practice of EUIPO which cannot, in any event, bind the Union judicature (see, to that effect, judgments of 15 September 2005 in BioID v OHIM, C-37/03 P, ECR, EU:C:2005:547, paragraph 47, 12 January 2006 in Deutsche SiSi-Werke v OHIM, C-173/04 P, EU:C:2006:20, paragraph 48; and 30 April 2013 in Boehringer Ingelheim International v OHIM (RELY-ABLE), T-640/11, not published, EU:T:2013:225, paragraph 33).

58      If, having regard to the principles of equality of treatment and of good administration, EUIPO must take into account the decisions already 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 the principles of equal treatment and sound administration are applied must nevertheless be consistent with respect for the principle of legality, so that there cannot be equality in an unlawful act, and a person who applies for registration of a sign as a trade mark may not rely, to his own benefit, on a possible unlawful act committed to his advantage or for the benefit of another, in order to secure an identical decision (see, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraphs 73 to 76). Moreover, for reasons of legal certainty and sound administration, any trade mark application must be examined strictly and fully, in order to prevent trade marks being improperly registered, and that examination must be undertaken in each individual case, for registration of a sign as a mark depends on specific criteria, applicable in the factual circumstances of the particular case and intended to ascertain whether the sign at issue is not caught by a ground for refusal (see judgments of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C-51/10, EU:C:2011:139, paragraph 77).

59      In the present case, the Board of Appeal found that, on the basis of a full and specific assessment, the mark applied for constituted to an advertising slogan devoid of distinctive character. It follows that, contrary to the applicant’s claim, the assessment of its application for registration of the word sign REVOLUTION as an EU trade mark for the goods covered was made consistently with case-law, on the basis of a correct interpretation and application of Article 7(1)(b) of Regulation No 207/2009.

60      Consequently, since the legality of the contested decision regarding the registrability of the sign REVOLUTION as an EU trade mark for the services in question 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 58 above that the contested decision cannot be called into question by virtue of the mere fact that the Board of Appeal did not follow in the present case EUIPO’s decision-making practice, even supporting it to have been established. Moreover, it cannot be maintained that the Board of Appeal has infringed the principle of legal certainty, since that principle makes it compulsory for each trade mark application to be subject to a specific assessment.

61      It follows that this complaint must be rejected.

 The complaint alleging breach of Article 75 of Regulation No 207/2009

62      The applicant claims that the Board of Appeal failed to provide an adequate statement of reasons for the contested decision in that it did not put forward any grounds enabling the applicant to understand the reasons why it excluded from its assessment marks consisting of or comprising the word ‘revolution’ registered for services similar to those contained in the registration application, while relying on precedents which, according to the applicant, are irrelevant.

63      EUIPO contests the applicant’s arguments.

64      In that regard, it must be noted that, in accordance with the first sentence of Article 75 of Regulation No 207/2009, EUIPO’s decisions must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same effect as that which derives from Article 296 TFEU, according to which the statement of reasons must disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question of whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004 in KWS Saat v OHIM, C-447/02 P, EU:C:2004:649, paragraphs 63 to 65).

65      In particular, where EUIPO refuses to register a sign as an EU trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal, absolute or relative, which precludes that registration and the legal provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify the application of the provision relied on. Such a statement of reasons is, in principle, sufficient (see, to that effect, judgment of 9 July 2008 in Reber v OHIM - Chocoladefabriken Lindt & Sprüngli (Mozart), T-304/06, EU:T:2008:268, paragraph 46).

66      In the present case, the contested decision’s statement of reasons meets those requirements. Thus, it is common ground that the Board of Appeal stated that Article 7(1)(b) of Regulation No 207/2009 precluded registration of the mark applied for because it was devoid of distinctiveness. The Board of Appeal gave reasons for that refusal by defining the relevant public and its degree of attention (paragraphs 17 and 18 of the contested decision), determining the meaning of the word ‘revolution’ constituting the sign applied for, and the relevant public’s perception of that sign in respect of the services concerned (paragraphs 19 to 23 of the contested decision). It then described the mark applied for as a promotional slogan and noted that that slogan lacked originality and resonance, so that it was not capable of indicating the commercial origin of the services covered and that, consequently, it was devoid of even slight distinctiveness (paragraphs 23 to 27 of the contested decision). Finally, the Board of Appeal considered and rejected the applicant’s argument based on earlier registrations (paragraphs 28 to 31 of the contested decision). To do so, it referred to several marks comprising the word ‘revolution’ in relation to which registration was refused on the basis of Article 7(1)(b) of Regulation No 207/2009 and noted that those refusals confirmed that each application for registration must be assessed in the light of its inherent characteristics according to the goods and services concerned and of the terminology used at the relevant time, and stated that, in accordance with settled case-law, the lawfulness of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Union judicature, and not in the light of an earlier decision-making practice of EUIPO.

67      That statement of reasons discloses clearly and unequivocally the reasoning adopted by the Board of Appeal in rejecting the registration of the mark applied for and enables the applicant to have knowledge of the reasons leading the Board of Appeal to take that decision and the Tribunal to review it.

68      It follows that the contested decision is sufficiently reasoned and that complaint must be rejected.

69      In the light of all the foregoing considerations, the second plea in law must be rejected and, consequently, the action be dismissed in its entirety.

 Costs

70      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

71      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Single Judge)

hereby:

1.      Dismisses the action;

2.      Orders Revolution LLC to pay the costs.

Delivered in open court in Luxembourg on 2 June 2016.

[Signatures]

* Language of the case: English.

© European Union
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