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

Provisional text

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

18 May 2017 (*)

(EU trade mark - Application for the EU word mark INSTASITE - Absolute ground for refusal - Descriptiveness - Article 7(1)(c) of Regulation (EC) No 207/2009)

In Case T-375/16,

Sabre GLBL Inc., established in Southlake, Texas (United States), represented by J. Zecher, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Hanf and S. Crabbe, acting as Agents,

defendant,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 27 April 2016 (Case R 1742/2015-2), relating to an application for registration of the word sign INSTASITE as an EU trade mark,

THE GENERAL COURT (Eighth Chamber),

composed of A. M. Collins, President, M. Kancheva and R. Barents (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 13 July 2016,

having regard to the response lodged at the Court Registry on 28 September 2016,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 26 March 2015, the applicant, Sabre GLBL Inc., 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).

2        Registration as a mark was sought for the word sign INSTASITE.

3        The goods and services in respect of which registration was sought are in Classes 9, 35 and 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, and correspond to the following description:

-        Class 9: ‘Computer software, in particular for design, development, testing, installation, maintenance, updating, hosting and customisation of websites’;

-        Class 35: ‘Advertising services; marketing services; advertising and marketing services, namely, promoting the goods and services of others in the field of hotel and hospitality services in Class 35; rental of advertising space; search engine optimisation of websites for advertising and marketing purposes; business information services; business administration services; business consulting services; storage, organisation, administration, maintenance and searching of data in computer databases; information and consultancy regarding the aforementioned services’;

-        Class 42: ‘Design, development, testing, installation, maintenance, updating, hosting and customisation of websites for third parties; design, development, testing, installation, maintenance, updating, hosting and customisation of databases for third parties; design, development, testing, installation, maintenance, updating, hosting and customisation of computer software for third parties; providing temporary use of non-downloadable computer software for design, development, testing, installation, maintenance, updating, hosting and customisation of websites; providing temporary use of non-downloadable computer software for design, development, testing, installation, maintenance, updating, hosting and customisation of databases for third parties; providing temporary use of non-downloadable computer software for design, development, testing, installation, maintenance, updating, hosting and customisation of computer software for third parties; website design and development for others; website design consultancy; information and consultancy regarding the aforementioned services’.

4        By letter of 13 April 2015, the examiner informed the applicant that the mark applied for was not eligible for registration for the goods and services in Class 9 and ineligible in part for the goods and services in Class 42, on the ground that it was descriptive, for the purpose of Article 7(1)(c) of Regulation No 207/2009, and devoid of any distinctive character, within the meaning of Article 7(1)(b) of that regulation.

5        By letter of 8 June 2015, the applicant replied, in essence, that the mark applied for was not descriptive and that it had distinctive character.

6        By decision of 31 July 2015, the examiner rejected the application for registration in part, namely for the goods and services in Class 9 and in part for the goods and services in Class 42, on the ground that the mark applied for was caught by the grounds for refusal set out in Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

7        On 27 August 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

8        By decision of 27 April 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. As is apparent from paragraph 21 of the contested decision, it found that the mark applied for was descriptive for the purpose of Article 7(1)(c) of Regulation No 207/2009. The Board of Appeal stated, in paragraphs 24 and 25 of the contested decision, that the word combination at issue ‘instasite’ would be immediately and intuitively perceived by the targeted public as meaning ‘instant’ and ‘site’ and that the absence of a hyphen or a space between the two words composing the sign applied for does not amount to evidence of any creative aspect capable of distinguishing the applicant’s products from those of other undertakings.

9        In paragraphs 27 and 28 of the contested decision, the Board of Appeal found that the mark applied for would be understood immediately and without any further reflection, in the light of the goods and services concerned, which are computer software, in particular for the design, development, testing, installation, maintenance, updating, hosting and customisation of websites, and related services such as consultancy concerning the design or maintenance of such sites, as being ‘instant (web)sites’, that is to say websites which can be created, and inter alia tested, updated and customised, instantly by the software’s user. The idea of creating websites ‘instantly’ is a well-established and widespread concept. The Board of Appeal made clear, in paragraph 29 of the contested decision, that it is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) of Regulation No 207/2009 actually be in use, at the time of the application for registration, in a way that is descriptive of goods or services in relation to which the application is filed or of characteristics of those goods or services. It is sufficient that those signs and indications could be used for such purposes. The Board of Appeal added, in paragraph 30 of the contested decision, that the descriptiveness does not necessarily need to be somehow ‘higher’ in order to fall within the scope of Article 7(1)(c) of Regulation No 207/2009 when the public is a specialised one.

10      The Board of Appeal also noted, in paragraph 31 of the contested decision, that the registrability of a sign must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of previous EUIPO practice.

11      The Board of Appeal therefore concluded, in paragraph 32 of the contested decision, that the mark applied for was descriptive of the goods and services at issue. It inferred from this, in paragraph 34 of that decision, that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. Finally, in paragraph 35 of the contested decision, the Board of Appeal, for the sake of completeness, held that the mark applied for was laudatory and that, consequently, the relevant consumer was likely to perceive that mark as a mere advertising slogan.

 Forms of order sought

12      The applicant claims that the Court should:

-        annul the contested decision;

-        order EUIPO to pay the costs.

13      EUIPO contends that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs.

 Law

14      In support of its action, the applicant puts forward three pleas in law, alleging, first, infringement of the obligation to give the parties the opportunity to present their comments pursuant to the second sentence of Article 75 of Regulation No 207/2009, second, infringement of Article 7(1)(c) of that regulation and, third, infringement of Article 7(1)(b) of that regulation.

 The first plea, alleging infringement of the obligation to give the parties the opportunity to present their comments pursuant to the second sentence of Article 75 of Regulation No 207/2009

15      The applicant complains, in essence, that the Board of Appeal did not give it the opportunity to present its comments on the laudatory nature of the mark applied for and its perception as an advertising slogan.

16      EUIPO contests the applicant’s argument.

17      Under the second sentence of Article 75 of Regulation No 207/2009, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision relates to both factual and legal reasons and to the evidence (judgment of 4 October 2006, Freixenet v OHIM (Shape of a frosted matt black bottle), T-188/04, not published, EU:T:2006:290, paragraph 28).

18      Furthermore, observance of the rights of the defence is a general principle of EU law, by virtue of which a person whose interests are appreciably affected by a decision addressed to him by a public authority must be given the opportunity to make his point of view known (order of 4 March 2010, Kaul v OHIM, C-193/09 P, not published, EU:C:2010:121, paragraph 58; judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T-34/00, EU:T:2002:41, paragraph 21, and of 18 January 2013, FunFactory v OHIM (Vibrator), T-137/12, not published, EU:T:2013:26, paragraph 53).

19      In accordance with that principle, a Board of Appeal of EUIPO may base its decision only on matters of fact or of law on which the parties have been able to set out their views. Consequently, where the Board of Appeal gathers facts intended to serve as a basis for its decision, it is under an obligation to notify the parties of those facts in order that the parties may submit their views on them (see, to that effect, judgments of 21 October 2004, KWS Saat v OHIM, C-447/02 P, EU:C:2004:649, paragraphs 42 and 43, and of 18 January 2013, Vibrator, T-137/12, not published, EU:T:2013:26, paragraph 54).

20      According to the applicant, in interpreting the mark applied for as an advertising slogan and in raising a possible perception of that mark as an advertising slogan in the contested decision without that argument having been raised by the Examination Division, the Board of Appeal did not give it the opportunity to present its comments in this respect.

21      It must be stated that the applicant’s interpretation of the contested decision is based on a misreading of that decision.

22      In that regard, it must be noted that the Board of Appeal, after having found in paragraph 32 of the contested decision that it agreed with the examiner’s conclusion that the sign INSTASITE was not eligible for registration under Article 7(1)(c) of Regulation No 207/2009, and having found in paragraph 34 of that decision that, as a consequence, the mark applied for was also devoid of any distinctive character for the goods and services at issue within the meaning of Article 7(1)(b) of that regulation, made the following observations in paragraph 35 of the contested decision:

23      It is clearly apparent from paragraph 35 of the contested decision that the Board of Appeal found that the factual and legal reasons and the evidence on which the examiner relied were sufficient to establish the descriptive nature of the mark applied for.

24      By referring to the laudatory nature and the perception of the mark applied for as a mere advertising slogan, the Board of Appeal did not in any way state that it was taking those factors into consideration, but merely pointed out the existence of other factors, such that the evidence which formed the basis for the contested decision was not exhaustive.

25      It cannot therefore properly be inferred from that paragraph that other evidence, on which the applicant had no opportunity to present its comments, was taken into consideration in the administrative proceedings.

26      It follows from the foregoing that the first plea must be rejected.

 The second plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

27      The applicant claims, in essence, that the Board of Appeal was wrong in finding that the mark applied for was descriptive of the goods and services at issue for the purpose of Article 7(1)(c) of Regulation No 207/2009.

28      Under Article 7(1)(c) of Regulation No 207/2009, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, are not to be registered. Moreover, Article 7(2) of Regulation No 207/2009 states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in part of the European Union only.

29      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 31; of 27 February 2002, Ellos v OHIM (ELLOS), T-219/00, EU:T:2002:44, paragraph 27; and of 19 April 2016, Spirig Pharma v EUIPO (Daylong), T-261/15, not published, EU:T:2016:220, paragraph 17).

30      Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, pursuant to Article 7(1)(c) of Regulation No 207/2009, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, in order thereby to enable the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 23 October 2003, OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 30, and of 19 April 2016, Daylong, T-261/15, not published, EU:T:2016:220, paragraph 18).

31      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgment of 19 April 2016, Daylong, T-261/15, not published, EU:T:2016:220, paragraph 19 and the case-law cited).

32      For a mark which consists of a neologism or of a word produced by a combination of elements to be regarded as descriptive for the purpose of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of those elements be found to be descriptive. The neologism or word itself must also be found to be descriptive (judgments of 12 January 2005, Wieland-Werke v OHIM (SnTEM, SnPUR, SnMix), T-367/02 to T-369/02, EU:T:2005:3, paragraph 31, and of 19 April 2016, Daylong, T-261/15, not published, EU:T:2016:220, paragraph 20; see also, by analogy, judgments of 12 February 2004, Koninklijke KPN Nederland, C-363/99, EU:C:2004:86, paragraph 96, and of 12 February 2004, Campina Melkunie, C-265/00, EU:C:2004:87, paragraph 37).

33      A trade mark consisting of a neologism or of a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purpose of Article 7(1)(c) of Regulation No 207/2009 unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That presupposes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that connection, analysis of the words at issue in light of the appropriate lexical and grammatical rules is also relevant (see judgment of 19 April 2016, Daylong, T-261/15, not published, EU:T:2016:220, paragraph 21 and the case-law cited).

34      It must also be borne in mind that the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, second, by reference to the goods or services concerned (judgments of 27 February 2002, EUROCOOL, T-34/00, EU:T:2002:41, paragraph 38, and of 19 April 2016, Daylong, T-261/15, not published, EU:T:2016:220, paragraph 22).

35      As regards the relevant public, it is necessary to uphold the Board of Appeal’s finding, in paragraph 16 of the contested decision, a finding which has not, moreover, been disputed by the applicant, that the goods and services covered by the mark applied for are mainly aimed at a professional public, but may also target the public at large, which would display a higher than average level of attention, given that the goods and services concerned are relatively complex.

36      It must also be stated that, since the mark applied for consists of elements in English, the examiner, who has not been contradicted by the Board of Appeal in this respect, was right in finding that the existence of absolute grounds for refusal had to be examined with regard to English-speaking consumers of the European Union. That finding has also not been disputed by the applicant.

37      Consequently, in accordance with Article 7(2) of Regulation No 207/2009, the relevant public by reference to which the absolute ground for refusal must be assessed is an English-speaking public, since the word sign at issue consists of word elements derived from English (see, to that effect, judgment of 27 February 2015, Universal Utility International v OHIM (Greenworld), T-106/14, not published, EU:T:2015:123, paragraph 22 and the case-law cited).

38      Accordingly, it is necessary, for the purpose of applying Article 7(1)(c) of Regulation No 207/2009, to consider, on the basis of a given meaning of the mark applied for, whether there is, from the point of view of the relevant public, a sufficiently direct and specific link between the word sign INSTASITE and the goods and services in respect of which registration is sought (see, to that effect, judgments of 26 November 2003, HERON Robotunits v OHIM (ROBOTUNITS), T-222/02, EU:T:2003:315, paragraph 38, and of 27 February 2015, Greenworld, T-106/14, not published, EU:T:2015:123, paragraph 23 and the case-law cited).

39      The applicant claims that the Board of Appeal based its decision on the incorrect assumption that the relevant consumer would understand the mark as referring to ‘an instant or quickly produced internet location’, relying on a definition of the online version of the Collins Dictionary. In the applicant’s submission, the Board of Appeal misread or overinterpreted the dictionary definition, the relevance and probative value of which were not assessed correctly, and ignored the evidence submitted by the applicant, which indicated the absolute lack of a definition in a dictionary of the term ‘insta’.

40      It must be borne in mind at the outset that, as the case-law has recognised, in order to assess in the case of compound word signs whether or not a mark is devoid of any distinctive character, the overall impression created by that mark should be taken into consideration. That does not, however, mean that an examination may not first be made of each of the various components of that mark. It may be useful, in the course of the overall assessment, to examine each of the components of the mark concerned (see judgment of 8 February 2011, Paroc v OHIM (INSULATE FOR LIFE), T-157/08, EU:T:2011:33, paragraph 50 and the case-law cited).

41      It follows that, as regards verbal expressions which consist of a combination of elements, descriptiveness may be assessed, in part, in relation to each of those elements, taken separately, but must, in any event, also be established in relation to the whole which they comprise (see judgment of 15 March 2012, Strigl and Securvita, C-90/11 and C-91/11, EU:C:2012:147, paragraph 23 and the case-law cited). Since the relevant public will perceive the mark applied for as a whole, it is any descriptiveness of the mark as a whole, and not of the various elements of that mark, considered separately, which is important.

42      As regards the meaning of the mark applied for, the examiner, endorsed by the Board of Appeal, first gave the definitions of the terms forming the mark applied for and, on the basis of those definitions, concluded that the relevant consumer would understand the expression ‘instasite’ as meaning ‘an instant or quickly produced internet location’.

43      The definitions set out below of the terms forming the mark applied for are both taken from the online English dictionary Collins English Dictionary, one of the main English dictionaries:

-        insta: ‘combining form; indicating instant or quickly produced’;

-        site: ‘an internet location where information relating to a specific subject or group of subjects can be accessed’.

44      On the basis of those definitions, which confirm an ordinary and obvious meaning that does not require a specific interpretation of the elements forming the mark applied for, the Board of Appeal concluded that the relevant consumer consequently understands the expression ‘instasite’ as immediately informing him without further reflection that the goods and services applied for are, first, services enabling the instant production, maintenance and updating of internet sites, and, second, software used for this purpose.

45      That assessment of the Board of Appeal must be upheld.

46      Moreover, the applicant’s argument that the term ‘insta’ does not appear in other dictionaries, that the term ‘insta-thriller’ - the only term found in relation to the word part ‘insta’ - is not defined in other dictionaries and that an internet search does not reveal a single page showing use of this term, is irrelevant.

47      As the Board of Appeal rightly states in paragraph 22 of the contested decision, ‘what is decisive is the consumer’s perception, and not dictionary definitions’. Contrary to the applicant’s assertions, the decision of the Board of Appeal was therefore not exclusively based on the dictionary definition, but also took into account the perception of consumers.

48      Thus, in paragraph 19 of the contested decision, the Board of Appeal did indeed indicate that the mark applied for would immediately inform consumers without further reflection that the goods and services applied for are, first, services for producing, maintaining and updating internet sites instantly, and, second, software used for this purpose.

49      Indeed, the question whether the mark applied for is descriptive of the goods and services for which the application is made is to be examined by reference to the understanding which the relevant public has of it, here composed of an English-speaking professional public as well as the public at large with a higher than average level of attention.

50      As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purpose of Article 7(1)(c) of Regulation No 207/2009, even if that combination creates a neologism. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned (see, by analogy, judgment of 12 February 2004, Campina Melkunie, C-265/00, EU:C:2004:87, paragraph 39).

51      In that regard, it must be pointed out that the mark applied for is composed of the two elements ‘insta’ and ‘site’, which are immediately recognisable in the mark applied for, and thus descriptive, the definition of which appears in paragraph 43 above.

52      The grammatically correct juxtaposition of the elements ‘insta’ and ‘site’ which forms the expression ‘instasite’, regardless of the number of dictionaries where it can be found, will be immediately and intuitively perceived by the targeted public as meaning ‘instant’ and ‘site’, which the Board of Appeal also noted in paragraph 25 of the contested decision.

53      Associated with the goods and services at issue, the mark applied for creates a descriptive word combination (namely an instant or quickly produced internet location) describing the kind, intended purpose and quality (referring to the timeliness of delivery) of the goods and services at issue, which the examiner and the Board of Appeal very rightly found in paragraph 25 of the contested decision.

54      It must be added that the fact that the sign INSTASITE does not in itself appear in dictionaries does not alter in any way the assessment that it is descriptive of the goods and services at issue for the purpose of Article 7(1)(c) of Regulation No 207/2009, especially since, according to the case-law mentioned in paragraph 29 above, that provision pursues an aim in the public interest, which requires that such signs or indications may be freely used by all.

55      In that regard, it should be noted that, in paragraph 26 of the judgment of 12 January 2000, DKV v OHIM (COMPANYLINE) (T-19/99, EU:T:2000:4), the General Court held that coupling together the terms ‘company’ and ‘line’, without any graphic or semantic modification, did not imbue them with any additional characteristic such as to render the sign, taken as a whole, capable of distinguishing the applicant’s services from those of other undertakings, and added that the fact that the sign COMPANYLINE as such did not appear in dictionaries - whether as one word or otherwise - did not in any way alter that finding. That assessment was confirmed by the Court of Justice in paragraph 23 of the judgment of 19 September 2002, DKV v OHIM, C-104/00 P, EU:C:2002:506.

56      The applicant’s argument that the Board of Appeal, in the contested decision, failed to assess the reliability of the source of the definition of the elements forming the mark applied for must also be rejected. The case-law to which the applicant refers relates to the limits of the probative value of internet publications and is irrelevant in the present case. Indeed, the judgment cited by the applicant concerned publications on the Wikipedia website, which are available to the public and can be modified by it. In the present case, the definitions at issue emanate from a private website which the public cannot modify and is at least as reliable as the same dictionary in print format, as it is updated more regularly.

57      Next, the applicant’s argument that the dictionary definition is not clear and precise and does not meet the applicable scientific standards, which require the provision of a sufficient number of relevant examples for the goods and services at issue, must also be rejected.

58      According to settled case-law and as already noted in paragraph 47 above, the decisive factor is whether the relevant public allocates a meaning to the element ‘instasite’ and, as the case may be, what that definition is. Although it is true that the definitions contained in a dictionary meeting the relevant scientific standards set out in detail a term’s semantic content, a mark’s conceptual content is not necessarily identical to those definitions since, during the short space of time in which the consumer is faced with a mark, he perceives the meaning of the terms intuitively rather than in a linguistically scientific way. Thus, in the present case, the Board of Appeal’s crucial finding is that which appears in paragraph 25 of the contested decision, according to which the series of elements ‘insta’ and ‘site’ is understood as a reference to an instant site, without the exact words used in one dictionary or another to give the lexicological definition of the element ‘insta’ being decisive (see, to that effect, judgment of 9 March 2015, ultra air v OHIM - Donaldson Filtration Deutschland (ultra.air ultrafilter), T-377/13, not published, EU:T:2015:149, paragraph 36, confirmed on appeal by order of 21 April 2016, ultra air v EUIPO, C-232/15 P, not published, EU:C:2016:299).

59      Even if there were as yet no technology to create a website ‘in a click of the mouse’, this idea would not be too vague and blurred. The relevant English-speaking consumers, with a relatively high level of specialisation, would no doubt, without any further thought, see in it, in relation to the goods and services at issue, that the software and related services are intended for the design, development and maintenance of ‘instant sites’.

60      The applicant’s argument that a distinction should be made between the word ‘insta’ with no hyphen, which the dictionary does not define, and the prefix ‘insta’ containing a hyphen, which the dictionary defines, is therefore irrelevant, since these two words may not be understood in the same way.

61      Indeed, as has just been stated in paragraph 58 above, the question whether the contested mark is descriptive of the goods and services for which it is registered is to be examined by reference to the understanding which the relevant public has of it.

62      So far as is relevant, it should be noted that the applicant refers to a certain number of decisions of Boards of Appeal which have accepted the registration of word marks composed of two parts.

63      According to settled case-law, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice of EUIPO (judgments of 16 February 2000, Procter & Gamble v OHIM (Soap bar shape), T-122/99, EU:T:2000:39, paragraphs 60 and 61; of 5 December 2000, Messe München v OHIM (electronica), T-32/00, EU:T:2000:283, paragraphs 46 and 47; and of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T-281/02, EU:T:2004:198, paragraph 35). Accordingly, EUIPO is not bound either by national registrations or by its own previous decisions.

64      Even if, by that argument, the applicant, in essence, complains that the Board of Appeal infringed the principle of equal treatment, it must be noted that, in the light of the principles of equal treatment and of sound administration, it has indeed been held that EUIPO must, when examining an application for registration of an EU trade mark, 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 (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraph 74, and of 25 September 2015, August Storck v OHIM (2good), T-366/14, not published, EU:T:2015:697, paragraph 38).

65      However, those principles must be reconciled with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his own benefit, on any unlawful act committed in favour of another in order to secure an identical decision (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraphs 75 and 76, and of 25 September 2015, 2good, T-366/14, not published, EU:T:2015:697, paragraph 39).

66      Moreover, for reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C-51/10 P, EU:C:2011:139, paragraph 77, and of 25 September 2015, 2good, T-366/14, not published, EU:T:2015:697, paragraph 40).

67      In the present case, it is apparent from the contested decision that the Board of Appeal carried out a full and specific examination of the mark applied for before refusing to register it. In addition, it is apparent from the examination of the applicant’s other complaints that that examination led the Board of Appeal, correctly, to oppose registration of the mark applied for on the basis of the absolute ground for refusal referred to in Article 7(1)(c) of Regulation No 207/2009. Since the examination of the mark applied for in the light of that provision could not, in itself, lead to a different conclusion, the applicant’s claims relating to the failure to take into consideration the registration of identical marks cannot succeed. The applicant may thus not usefully rely on previous decisions of EUIPO in order to cast doubt on the conclusion that the registration of the mark applied for is incompatible with Regulation No 207/2009.

68      It follows from all the foregoing that the second plea must be rejected.

 The third plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

69      The applicant claims, in essence, that the Board of Appeal was wrong to hold that the mark applied for was devoid of any distinctive character for the purpose of Article 7(1)(b) of Regulation No 207/2009.

70      In that regard, it must be noted that, as is clear from the wording of Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as an EU trade mark (order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C-212/07 P, not published, EU:C:2008:83, paragraph 27, and judgment of 19 April 2016, Daylong, T-261/15, not published, EU:T:2016:220, paragraph 67).

71      In the present case, since the mark applied for has been held to be descriptive of the goods and services at issue, it follows that the third plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, must be rejected as ineffective.

72      It follows from all of the foregoing that the action must be dismissed.

 Costs

73      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. 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 (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Sabre GLBL Inc. to pay the costs.

Delivered in open court in Luxembourg on 18 May 2017.

* Language of the case: English.

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