Judgments nº T-113/18 of Tribunal General de la Unión Europea, July 12, 2019

• Resolution Date: July 12, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-113/18

(EU trade mark - Application for EU word mark FREE - Absolute ground for refusal - Lack of distinctive character - Article 7(1)(b) of Regulation (EU) 2017/1001) In Case T-113/18,

Miles-Bramwell Executive Services Ltd, established in Alfreton (United Kingdom), represented initially by J. Mellor QC, G. Parsons and A. Zapalowski, Solicitors, and subsequently by J. Mellor, G. Parsons and F. McConnell, Solicitors,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and H. O’Neill, acting as Agents,

defendant,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 27 November 2017 (Case R 2164/2016-1), relating to an application for registration of the word sign FREE as an EU trade mark,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 22 February 2018,

having regard to the response lodged at the Court Registry on 21 June 2018,

having regard to the decision of 12 February 2019 joining Cases T-113/18 and T-114/18 for the purposes of the oral part of the procedure,

further to the hearing on 9 April 2019,

gives the following

Judgment

Background to the dispute

1 On 5 February 2016, the applicant, Miles-Bramwell Executive Services Ltd, 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 word sign FREE.

3 The goods and services for which registration was sought, the full list of which is reproduced in paragraph 1 of the decision of the First Board of Appeal of EUIPO of 27 November 2017 (Case R 2164/2016-1) (‘the contested decision’), are in Classes 9, 16, 35, 41 and 44 within the meaning 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.

4 By decision of 22 February 2016, the EUIPO examiner provisionally refused registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above on the ground that such registration was caught by the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), read in conjunction with Article 7(2) of that regulation (now Article 7(2) of Regulation 2017/1001).

5 By decision of 28 July 2016, the examiner rejected the application for registration in full, on the basis of Article 7(1)(b) and (c) and (2) of Regulation No 207/2009, on the ground that the mark applied for was descriptive and devoid of distinctive character. In particular, the examiner considered, in essence, that the consumer would immediately understand that the goods and services covered by the mark applied for were offered free of charge in order to promote the applicant’s range of goods and services.

6 On 24 November 2016, the applicant filed a notice of appeal against the examiner’s decision to reject the application for registration. The applicant filed its statement of grounds of appeal on 30 January 2017. In its statement, the applicant included a request to restrict the list of goods and services covered by the mark applied for.

7 By the contested decision, the First Board of Appeal of EUIPO dismissed the appeal, after having accepted the request to restrict the list of goods and services covered. Following that restriction, the goods and services concerned, the complete list of which is reproduced in paragraph 16 of the contested decision, remain in Classes 9, 16, 35, 41 and 44 within the meaning of the Nice Agreement and they relate in essence to the fields of slimming, weight control, diet, food, beverages, nutrition, dieting, exercise, health, fitness, recreation, lifestyle, eating habits and well-being.

8 In the first place, the Board of Appeal defined the relevant public as the English-speaking public of the European Union, including the public having a sufficient knowledge of English. Furthermore, the Board of Appeal considered that, even if the public targeted by the goods and services designated by the mark were made up of consumers who were concerned with slimming, dieting and weight control, their understanding of the mark applied for would be more direct and immediate than that of the public with an average level of attention.

9 In the second place, the Board of Appeal considered that the word ‘free’ meant ‘immune from, not subject to or affected by (something regarded as harmful or undesirable)’ or ‘clear of something which is regarded as objectionable or problematic. With of, from’.

10 In the third place, according to the Board of Appeal, the word ‘free’ is a generic term in the field covered by the goods and services designated by the mark applied for, which relate in essence to slimming, weight control, diet, food, beverages, nutrition, dieting, exercise, health, fitness, recreation, lifestyle, eating habits and well-being. The mark applied for clearly refers to goods and services for consumption that are free from harmful or...