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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

30 November 2017 (*)

(EU trade mark - Application for the EU figurative mark REAL - Absolute grounds for refusal - Descriptive character - No distinctive character - No distinctive character acquired through use - Article 7(1)(b) and (c) and (3) of Regulation (EC) No 207/2009 [now Article 7(1)(b) and (c) and (3) of Regulation (EU) 2017/1001])

In Case T‑798/16,

Hanso Holding AS, established in Tromsø (Norway), represented by M. Wirtz, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

defendant,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 2 September 2016 (Case R 2405/2015-2), relating to the application for registration of the figurative sign REAL as a European Union trade mark,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin and J. Costeira (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 14 November 2016,

having regard to the response of EUIPO lodged at the Court Registry on 17 February 2017,

having regard to the fact that no request for a hearing was submitted by the 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 30 April 2015, the applicant, Hanso Holding AG, 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the following figurative sign:

3        The goods for which registration of the trade mark was sought are in Classes 29, 30 and 31 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, following the restrictions made on 20 May 2015, to the following description:

–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; casseroles based on meat, fish, poultry, game, vegetables, eggs, milk, milk products, oils and fats as well as soups, all in the form of dried lunches and dinners; casseroles based on meat patties and fish patties, all in the form of dried lunches and dinners’;

–        Class 30: ‘Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; casseroles based on rice, flour and preparations made from flour and cereals, on pasta, on sauces, spices and noodles, all in the form of dried lunches and dinners; cereals; muesli mixtures; chocolate muesli’;

–        Class 31: ‘Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt’.

4        By decision of 2 October 2015, the examiner rejected the application for registration on the basis of Article 7(1)(b) and (c) and (2) of Regulation No 207/2009 (now Article 7(1)(b) and (c) and (2) of Regulation 2017/1001). The grounds put forward in support of that refusal were the descriptive character and the lack of distinctive character of the mark applied for in respect of the goods at issue.

5        On 1 December 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against that decision.

6        By decision of 2 September 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the first place, the Board of Appeal considered that the relevant public consists of average consumers and professionals, who have a high level of attention. The Board of Appeal also stated that, in so far as the word element ‘real’ of the trade mark applied for had a meaning in English, in Romanian, in Portuguese and in Spanish, the relevant public was made up of English, Romanian, Portuguese and Spanish consumers. In the second place, the Board of Appeal considered that the trade mark applied for was descriptive of the goods at issue for the purposes of Article 7(1)(c) of Regulation No 207/2009. In essence, the Board of Appeal considered that the trade mark applied for would be perceived by the relevant public as a descriptive indication of the kind and nature of the goods at issue, namely that they are real or genuine and not fake or artificial. In the third place, the Board of Appeal considered that the trade mark applied for was also devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. In essence, the Board of Appeal held that since the trade mark applied for merely informed the relevant public that the goods at issue were genuine and not fake or artificial, it was incapable of performing its essential function, which is to guarantee the commercial origin of the goods. In the fourth place, the Board of Appeal considered that the applicant had not provided the evidence necessary to assess whether the trade mark applied for had, by use prior to the filing of the application for registration, acquired distinctive character within the meaning of Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001).

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

8        EUIPO contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

9        In support of the action, the applicant invokes four pleas in law, alleging infringement, first, of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 7(2) of Regulation No 207/2009, secondly, of Article 7(1)(b) of Regulation No 207/2009, read in conjunction with Article 7(2) of Regulation No 207/2009, thirdly, of Article 7(3) of Regulation No 207/2009 and, fourthly, of Article 83 of Regulation No 207/2009 (now Article 107 of Regulation 2017/1001). It is necessary to examine in turn the first, third, second and fourth pleas in law.

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

10      The applicant complains that the Board of Appeal held that the trade mark applied for is descriptive. According to the applicant, the word ‘real’, associated with the goods at issue, has no clear meaning, since it merely emphasises their actual existence. Consumers would, therefore perceive it only as a word without meaning. Moreover, consumers would not regard it as information which is descriptive of an essential characteristic of the goods at issue, but simply as a laudatory suggestion. Furthermore, the contested decision is contrary to the guidelines identified by the settled case-law.

11      EUIPO disputes the applicant’s arguments.

12      In that regard, it should be noted that, 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’ may not be registered. Moreover, Article 7(2) of Regulation No 207/2009 states that Article 7(1) thereof applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

13      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 European Union trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (see judgment of 18 September 2015, Bundesverband Deutsche Tafel v OHIM - Tiertafel Deutschland (Tafel), T‑710/13, EU:T:2015:643, paragraph 15 and the case-law cited).

14      Furthermore, signs or indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 18 September 2015, Tafel, T‑710/13, EU:T:2015:643, paragraph 16 and the case-law cited).

15      Moreover, the signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (see judgment of 18 November 2014, Think Schuhwerk v OHIM - Müller (VOODOO), T‑50/13, not published, EU:T:2014:967, paragraph 18 and the case-law cited).

16      It follows that, in order for a sign to be caught by the prohibition set out in the abovementioned provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics (see judgment of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 14 and the case-law cited).

17      It should also be noted that the distinctiveness of a mark may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (see judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 41 and the case-law cited).

18      It is in the light of those considerations that it must be assessed whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009, by holding that the trade mark applied for was descriptive of the kind and nature of the goods at issue.

19      In the first place, it must be noted that the goods for which the protection of the figurative mark REAL was refused are goods in Classes 29, 30 and 31. Concerning the goods in Classes 29 and 30, the Board of Appeal stated, in paragraph 59 of the contested decision, that those goods were common foodstuffs and prepared foods containing different ingredients, which were all intended for human consumption. Concerning the goods in Class 31, the Board of Appeal stated, in paragraph 64 of the contested decision, that those goods were foodstuffs not having been subject to any form of preparation for human consumption, which were not intended for immediate human consumption, but rather for use in agriculture, horticulture and forestry. Those findings on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

20      In the second place, it should be noted that the Board of Appeal held, in paragraphs 22 to 24 of the contested decision, that the relevant public was, having regard to the goods at issue, made up professionals and average consumers with a high level of attention. The Board of Appeal also stated, in paragraph 26 of the contested decision, that since the trade mark applied for was composed of a word element with a meaning in English, Romanian, Portuguese and Spanish, the relevant public consisted of English, Romanian, Portuguese and Spanish consumers. Those findings on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

21      In the third place, it should be pointed out that the Board of Appeal held, in paragraph 32 of the contested decision, that the trade mark applied for was composed, first, of the word element ‘real’, written in upper-case letters and in a standard typeface and, secondly, of a figurative element, representing a black geometric form, similar to a rectangle with rounded corners, resembling a label. The Board of Appeal also stated, in paragraphs 33 and 34 of the contested decision, that the word ‘real’ of the trade mark applied for meant in English, Romanian, Portuguese and Spanish ‘not artificial or simulated, genuine’. Those findings on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.

22      In the fourth place, it should be noted that the Board of Appeal held, in paragraph 50 of the contested decision, that the trade mark applied for, associated with the goods at issue, will be perceived by the relevant public as a descriptive indication of the kind and nature of the goods.

23      Contrary to what the applicant claims, it is necessary to uphold that finding of the Board of Appeal.

24      First, it must be noted that there is a direct and specific link between the trade mark applied for and certain characteristics of the goods at issue. As was in essence correctly pointed out by the Board of Appeal in paragraphs 60 and 65 of the contested decision, the word element ‘real’ of the trade mark applied for, meaning ‘not artificial or simulated, genuine’, directly and immediately informs the relevant public that the goods at issue, which are foodstuffs and foods mainly intended for human consumption, are solely composed of the product and do not contain any artificial additives or supplements or have not been prepared or treated in any way. Therefore, contrary to what the applicant claims, the trade mark applied for is not merely laudatory, but immediately descriptive of a characteristic of the goods at issue, in so far as it conveys the clear and unequivocal idea that since the goods applied for are mainly goods intended for human consumption, they are genuine, authentic and not artificial.

25      Secondly, it must be stated that, contrary to what the applicant claims, the same ground for refusal can be applied, by analogy, to goods which are artificial. As the Board of Appeal correctly pointed out in paragraph 63 of the contested decision, the trade mark applied for, in combination with artificial goods, will be perceived by the relevant public as informing it directly and immediately that it concerns a genuine substitute.

26      Thirdly, it must be stated that, contrary to what the applicant claims, it is irrelevant that the word ‘real’ is used, as in the trade mark applied for, without any other additional element. It should be noted that it follows from the wording itself of Article 7(1)(c) of Regulation No 207/2009 that a mark which designates a quality of the goods at issue is considered to be descriptive (see order of 30 November 2015, August Brötje v OHIM (HydroComfort),T‑845/14, not published, EU:T:2015:934, paragraph 22 and the case-law cited).

27      It follows that, since the trade mark applied for was composed of a single word, inside a black frame similar to a rectangle with rounded corners the lines of which were slightly inclined, which may serve, in trade, to designate a characteristic of the goods at issue, the Board of Appeal was correct to conclude that it was descriptive, for the purposes of Article 7(1)(c) of Regulation No 207/2009.

28      The applicant does not put forward any arguments which are capable of calling into question the Board of Appeal’s conclusion.

29      First, it is necessary to reject the applicant’s argument that the word element ‘real’ of the trade mark applied for has meanings other than that accepted by the Board of Appeal and could therefore also be interpreted differently.

30      It suffices to note that, pursuant to Article 7(1)(c) of Regulation No 207/2009, a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32). In the present case, as stated in paragraph 21 above, the applicant has not provided any evidence capable of contesting the meaning of the word ‘real’, as set out in the contested decision. Therefore, the fact, even if correct, that the word ‘real’ could also have other meanings is, in any event, irrelevant.

31      Secondly, it is necessary to reject the applicant’s argument that the descriptive character of the trade mark applied for is not immediately apparent, without further thought, to the relevant consumers, since the word ‘real’ does not have a meaning which describes the goods at issue.

32      The English, Romanian, Portuguese and Spanish consumers, for whom no translation is necessary, will immediately understand that the word ‘real’ means ‘not artificial or simulated, genuine’, so that they will immediately make a connection between that word and a characteristic of the goods at issue. In those circumstances, the Board of Appeal was correct to hold that the sign in question was directly descriptive of the kind and nature of the goods at issue, which concern foodstuffs, grains, agricultural, horticultural and forestry products, seeds, natural plants and flowers.

33      Thirdly, it is necessary to reject the argument that the trade mark applied for does not designate any essential characteristics of the goods at issue.

34      It is irrelevant whether the characteristics of the goods described by a sign are commercially essential or merely ancillary. The wording of Article 7(1)(c) of Regulation No 207/2009 does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying that provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see judgment of 21 January 2015, Grundig Multimedia v OHIM (GentleCare), T‑188/14, not published, EU:T:2015:34, paragraph 31 and the case-law cited). A word sign must already be refused registration if at least one of its possible meanings designates a characteristic of the goods or services at issue (see, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).

35      In the light of all of the foregoing, the first plea in law must be rejected as unfounded.

 The third plea in law, alleging infringement of Article 7(3) of Regulation No 207/2009

36      The applicant claims that the Board of Appeal made an incorrect assessment of the high degree of recognition of the trade mark applied for for the purposes of Article 7(3) of Regulation No 207/2009. According to the applicant, the trade mark applied for has distinctive character acquired by use, due to the fact that the goods at issue are widely distributed in the European Union and that they take up a large market share.

37      EUIPO disputes the applicant’s arguments.

38      It should be noted that, in order to have the registration of a trade mark accepted under Article 7(3) of Regulation No 207/2009, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation (see judgments of 21 April 2010, Schunk v OHIM (Presentation of part of a chuck), T‑7/09, not published, EU:T:2010:153, paragraph 40 and the case-law cited, and of 22 March 2013, Bottega Veneta International v OHIM (Shape of a handbag), T‑409/10, not published, EU:T:2013:148, paragraph 76 and the case-law cited).

39      It is apparent from the case-law that, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia, the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify the goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the mark, it must be concluded that the requirement laid down in Article 7(3) of Regulation No 207/2009 is satisfied (see judgments of 21 April 2010, Presentation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 41 and the case-law cited, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 77 and the case-law cited).

40      In the present case, the Board of Appeal found that the applicant had failed to provide the evidence necessary to assess whether the trade mark applied for had, through use prior to the filing of the application for registration, acquired distinctiveness in accordance with Article 7(3) of Regulation No 207/2009. More specifically, the Board of Appeal considered that the mere reference to the market share held by the applicant in the countries where it sold its goods and the mere claim that the goods labelled with the trade mark applied for were well-known throughout the European Union did not prove that the relevant public in the Member States concerned recognised the trade mark applied for as an indication of the commercial origin of the goods at issue prior to the application for registration.

41      Contrary to what the applicant claims, it is necessary to confirm that conclusion of the Board of Appeal.

42      As is apparent from the case-law, the proprietor of the trade mark applied for must show, in the first place, the extent of use of its mark and, in the second place, the impact that that use had on its distinctiveness. The efforts on the part of the proprietor are taken into account only in so far as they produce objective results in terms of the perception of the mark amongst the relevant public (judgment of 10 December 2008, Bateaux mooches v OHIM - Castanet (BATEAUX MOUCHES), T‑365/06, not published, EU:T:2008:559, paragraph 39).

43      In that regard, as is apparent from the case-law referred to in paragraph 42 above, the following may inter alia also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 75).

44      The distinctiveness acquired by use of a mark cannot be established solely by reference to general, abstract data (see judgments of 21 April 2010, Presentation of part of a chuck, T‑7/09, not published, EU:T:2010:153, paragraph 39 and the case-law cited, and of 22 March 2013, Shape of a handbag, T‑409/10, not published, EU:T:2013:148, paragraph 75 and the case-law cited).

45      It is incumbent on the applicant relying on the distinctive character of a trade mark applied for to provide specific and substantive evidence that the trade mark applied for has distinctive character acquired by use (see judgment of 22 March 2013, Bottega Veneta International v OHIM (Shape of a bag),T‑410/10, not published, EU:T:2013:149, paragraph 97 and the case-law cited).

46      It is apparent from the file of the procedure before EUIPO that the applicant has not provided any specific documents to substantiate the claim that the trade mark applied for had acquired distinctive character as a result of its use prior to the application for registration.

47      In those circumstances, it must be concluded that the Board of Appeal was correct to hold that the applicant had not provided the evidence necessary to assess whether the relevant public, or a significant part thereof, identified the trade mark applied for as indicating the commercial origin of the goods at issue, in the light of its use before the application for registration.

48      That conclusion is not undermined by the applicant’s argument that the sales figures submitted in the context of the procedure before EUIPO amount to sufficient evidence of significant prior use of the trade mark applied for.

49      It should be noted that the sales figures constitute only secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as provided by declarations from professional associations or market studies (judgments of 29 January 2013, Germans Boada v OHIM (Shape of a tile-cutting machine), T‑25/11, not published, EU:T:2013:40, paragraph 74, and of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 83).

50      The sales figures in themselves do not show that the public targeted by the goods at issue perceive the trade mark at issue as an indication of the commercial origin. In respect of the Member States for which neither declarations of professional associations, nor market studies, were submitted, proof of distinctive character acquired through use cannot, as a rule, be furnished by the mere production of sales figures (see, to that effect, judgments of 29 January 2013, Manual tile-cutting machine, T‑25/11, not published, EU:T:2013:40, paragraph 75, and of 24 February 2016, Shape of a contour bottle without fluting, T‑411/14, EU:T:2016:94, paragraph 84). That is all the more so in the present case as the sales figures provided by the applicant are not corroborated by any evidence.

51      Moreover, it is not possible to deduce from the figures presented by the applicant that they specifically concern the goods at issue marketed under the trade mark applied for. The sales figures shown in the applicant’s written pleadings do not state whether they concern the trade mark applied for. It is therefore not possible to draw any conclusion regarding the perception of the trade mark applied for by the relevant public.

52      It follows that the present plea in law must be rejected as unfounded.

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

53      The applicant argues that the Board of Appeal was wrong to hold that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

54      In that regard, it must be recalled that, as is apparent from Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal listed applies for the sign at issue not to be registrable as an EU trade mark (see order of 30 November 2015, HydroComfort, T‑845/14, not published, EU:T:2015:934, paragraph 33 and the case-law cited).

55      In the light of the conclusions resulting from the examination of the first and third pleas in law, it is necessary to reject as ineffective the second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.

 The fourth plea in law, alleging infringement of Article 83 of Regulation No 207/2009

56      The applicant claims, in essence, that the Board of Appeal infringed the principles of equal treatment and sound administration, by considering the trade mark applied for to be descriptive and devoid of any distinctive character. By rejecting the application for registration, the Board of Appeal did not follow the previous practice of EUIPO, which held, in previous decisions and, in particular, in the context of the case concerning the EU trade mark MILPA REAL, that the word ‘real’ was not descriptive of the goods in Classes 29, 30 and 31.

57      EUIPO disputes the applicant’s arguments.

58      In that regard, it should be recalled that the decisions which EUIPO is required to take under Regulation No 207/2009 concerning registration of a sign as an EU trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the EU judicature and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 3 July 2013, Warsteiner Brauerei Haus Cramer v OHIM - Stuffer (ALOHA 100% NATURAL), T‑243/12, not published, EU:T:2013:344, paragraph 43).

59      The applicant cannot therefore criticise the Board of Appeal for basing the contested decision on Regulation No 207/2009 as interpreted by the Courts of the European Union, rather than on the earlier practice of EUIPO in terms of registration of an EU trade mark.

60      It also follows from the case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, having regard to the principles of equal treatment and of sound administration, EUIPO must take into account the decisions already 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 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 committed for the benefit of someone else (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76, and of 21 March 2014, FTI Touristik v OHIM (BigXtra), T‑81/13, not published, EU:T:2014:140, paragraph 52).

61      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 (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77, and of 9 March 2017, Maximum Play v EUIPO (MAXPLAY), T‑400/16, not published, EU:T:2017:152, paragraph 49).

62      In the present case, the EU trade mark application submitted by the applicant is caught by one of the grounds for refusal set out in Article 7(1) of Regulation No 207/2009. In so far as it was noted in paragraph 27 above that the Board of Appeal was right to conclude that registration of the trade mark applied for the goods at issue was incompatible with that regulation, the applicant could not properly rely, in order to cast doubt on that conclusion, on earlier decisions of EUIPO. 

63      Consequently, this ground of appeal must be rejected as unfounded.

64      In the light of all the foregoing considerations, the action must be dismissed in its entirety.

 Costs

65      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.

66      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 (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Hanso Holding AS to pay the costs.

Delivered in open court in Luxembourg on 30 November 2017.

*      Language of the case: English.

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