Orders nº T-265/17 of Tribunal General de la Unión Europea, February 01, 2018

• Resolution Date: February 01, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-265/17

(EU trade mark - International registration designating the European Union - Figurative mark EXPRESSVPN - Absolute ground for refusal - Application for alteration - Single head of claim - Inadmissibility)

In Case T-265/17,

ExpressVPN Ltd, established in Glen Vine (Isle of Man), represented by A. Muir Wood, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 16 February 2017 (Case R 1352/2016-5), concerning the international registration designating the European Union No 1 265 562 of the figurative mark EXPRESSVPN,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise and R. da Silva Passos (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application and the request for confidentiality lodged at the Court Registry on 5 May 2017,

having regard to the plea of inadmissibility lodged at the Court Registry on 22 June 2017,

having regard to the observations of the applicant lodged at the Court Registry on 21 August 2017,

makes the following

Order

1 On 3 July 2015, the applicant, ExpressVPN Ltd, filed an application for protection of the international registration No 1 265 562 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 services in respect of which registration was sought are in Class 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: ‘IT consultancy, advisory and information services; data security services; software development’.

4 On 26 May 2016, 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), on the ground that the sign applied for was descriptive, on the one hand, and devoid of any distinctive character, on the other. The examiner also dismissed the applicant’s argument that the sign applied for had acquired distinctive character through the use which had been made of it, within the meaning of Article 7(3) of that regulation (now Article 7(3) of Regulation 2017/1001).

5 On 25 July 2016, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.

6 By decision of 16 February 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed that appeal. First of all, it considered, in essence, that the sign applied for was descriptive in so far as that sign, for an English-speaking public having a higher than average level of attention, was descriptive of the characteristics of the services requested. Next, it held that that sign was also devoid of any distinctive character. Lastly, the Board of Appeal considered that the evidence produced by the applicant did not support the assertion that the element ‘expressvpn’ had become recognisable as the international registration holder’s trade mark.

Forms of order sought

7 In the application, the applicant claims that the Court should:

- ‘alter the [contested decision so as] to permit the [mark applied for to] proceed to registration on the basis that [that mark] is neither descriptive nor devoid of distinctive character and on the basis of the evidence of acquired distinctiveness submitted to the examiner and to the Fifth Board of Appeal’;

- order EUIPO to pay the costs.

8 In the plea of inadmissibility, EUIPO contends that the Court should:

- dismiss the action as inadmissible;

- order the applicant to pay the costs;

- in the alternative, in the event that the Court considers the action admissible, set a new time limit for taking further steps in the proceedings.

9 In the observations on the plea of inadmissibility, the applicant claims that the Court should reject that plea. It states that it is seeking only the alteration of the contested decision, ‘having the effect that the [mark applied for] will proceed to be added to the European Union trade mark register by [EUIPO], granting protection in respect of the European Union’. It also claims that EUIPO’s subsidiary request for the proceedings to continue should be upheld and that EUIPO should be ordered to pay the costs relating to the plea of inadmissibility.

Law

10 Pursuant to Article 130(1) and (7) of the Rules of Procedure of the General Court, the Court may, at the defendant’s request, give a decision on inadmissibility without going to the substance of the case.

11 In the present case, as EUIPO has requested a decision on the inadmissibility of the action, the Court, considering itself to be sufficiently informed by the documents before it, decides to give a decision on that request without taking further steps in the proceedings.

12 In support of its plea of inadmissibility, EUIPO contends, in essence, that the application is inadmissible, because the single head of claim seeks the alteration of the contested decision so that the mark applied for may be registered. However, EUIPO argues that the Court does not have jurisdiction to take cognisance...