Bundesverband Souvenir - Geschenke - Ehrenpreise eV v European Union Intellectual Property Office.

• Jurisdiction: European Union
• Celex Number: 62016CJ0488
• ECLI: ECLI:EU:C:2018:673
• Court: Court of Justice (European Union)
• Date: 06 September 2018
• Procedure Type: Recurso de anulación
• Docket Number: C-488/16

JUDGMENT OF THE COURT (Fifth Chamber)

6 September 2018 ( *1 )

(Appeal — EU trade mark — Invalidity proceedings — Word mark NEUSCHWANSTEIN — Regulation (EC) No 207/2009 — Article 7(1)(b) and (c) — Absolute grounds for refusal — Descriptive character — Indication of geographical origin — Distinctive character — Article 52(1)(b) — Bad faith)

In Case C‑488/16 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 13 September 2016,

Bundesverband Souvenir — Geschenke — Ehrenpreise eV, established in Veitsbronn (Germany), represented by B. Bittner, Rechtsanwalt,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO), represented by D. Botis, A. Schifko and D. Walicka, acting as Agents,

defendant at first instance,

Freistaat Bayern, represented by M. Müller, Rechtsanwalt,

intervener at first instance,

THE COURT (Fifth Chamber),

composed of J.L. da Cruz Vilaça, President of the Chamber, E. Levits, A. Borg Barthet (Rapporteur), M. Berger and F. Biltgen, Judges,

Advocate General: M. Wathelet,

Registrar: R. Șereș, Administrator,

having regard to the written procedure and further to the hearing on 29 November 2017,

after hearing the Opinion of the Advocate General at the sitting on 11 January 2018,

gives the following

Judgment

1 By its appeal, Bundesverband Souvenir — Geschenke — Ehrenpreise eV seeks the setting aside of the judgment of the General Court of the European Union of 5 July 2016, Bundesverband Souvenir — Geschenke — Ehrenpreise v EUIPO — Freistaat Bayern (NEUSCHWANSTEIN) (T‑167/15, not published, EU:T:2016:391) (‘the judgment under appeal’), whereby that court dismissed its action seeking annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 January 2015 (Case R 28/2014-5), relating to invalidity proceedings between the appellant and Freistaat Bayern (Free State of Bavaria, Germany) (‘the decision at issue’).

Legal context

2 Article 7, entitled ‘Absolute grounds for refusal’, of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), provides, in paragraph 1(b) and (c) thereof: ‘The following shall not be registered: … (b) trade marks which are devoid of any distinctive character; (c) 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; …’

3 Article 52 of that regulation, entitled ‘Absolute grounds for invalidity’, provides, in paragraph 1 thereof: ‘A [European Union] trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where the [EU] trade mark has been registered contrary to the provisions of Article 7; (b) where the applicant was acting in bad faith when he filed the application for the trade mark.’

Background to the dispute

4 On 22 July 2011 the Freistaat Bayern filed an application for registration of an EU trade mark with EUIPO pursuant to Regulation No 207/2009.

5 Registration as a mark was sought for the word sign ‘NEUSCHWANSTEIN’ (‘the contested trade mark’).

6 The goods and services in respect of which registration was sought are in Classes 3, 8, 14 to 16, 18, 21, 25, 28, 30, 32 to 36, 38 and 44 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, for each of those classes, to the following description: – Class 3: ‘Perfumery goods; articles for body and beauty-care’; – Class 8: ‘Cutlery of precious metals’; – Class 14: ‘Jewellery; clocks and watches’; – Class 15: ‘Musical instruments; musical boxes; electric and electronic musical instruments’; – Class 16: ‘Writing and note paper; pencils and ink’; – Class 18: ‘Leather and imitations of leather; umbrellas; travelling bags; handbags; suit carriers; suitcases; briefcases; vanity cases (not fitted); toilet bags’; – Class 21: ‘Glassware, porcelain and earthenware not included in other classes; teapots not of precious metal’; – Class 25: ‘Clothing; footwear; headgear; suspenders; belts; braces’; – Class 28: ‘Games and playthings; board games’; – Class 30: ‘Coffee; tea; cocoa; sugar; honey; pastries; cakes; cookies; sweets; ice-cream; confections; spices’; – Class 32: ‘Soft drinks; beers’; – Class 33: ‘Alcoholic beverages (except beers)’; – Class 34: ‘Matches; cigarette cases, ashtrays, smokers’ articles made of non-precious metal; cigarettes; tobacco’; – Class 35: ‘Advertising agency services’; – Class 36: ‘Insurance; finance; monetary affairs; real estate affairs’; – Class 38: ‘Telecommunication and communication services’; – Class 44: ‘Hygienic and beauty care for human beings’.

7 The application for registration of the contested trade mark was published in Community Trade Marks Bulletin No 166/2011 of 2 September 2011, and the contested trade mark was registered on 12 December 2011 under No 10144392.

8 On 10 February 2012 the appellant filed an application for a declaration of invalidity under Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) and (c) of that regulation, of the contested trade mark in respect of all the goods and services referred to in paragraph 6 above.

9 On 21 October 2013 the Cancellation Division of EUIPO rejected that application for a declaration of invalidity, concluding that the contested trade mark did not consist of indications which might serve to designate the geographical origin or of other characteristics inherent to the goods and services concerned, and that there had therefore been no infringement of Article 7(1)(c) of Regulation No 207/2009. In addition, it held that, since the contested trade mark was distinctive in respect of the goods and services concerned, there had been no infringement of Article 7(1)(b) of that regulation. Lastly, it considered that the appellant had not proved that the application for registration of the contested trade mark had been made in bad faith and that there had therefore been no infringement of Article 52(1)(b) of that regulation.

10 On 20 December 2013 the appellant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision.

11 By the decision at issue, the Fifth Board of Appeal of EUIPO confirmed the Cancellation Division’s decision and dismissed the appellant’s appeal.

The procedure before the General Court and the judgment under appeal

12 By application lodged at the Registry of the General Court on 2 April 2015, the appellant brought an action seeking annulment of the decision at issue.

13 In support of its action, it relied on three pleas in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, of Article 7(1)(c) of that regulation, and of Article 52(1)(b) thereof, respectively.

14 By the judgment under appeal, the General Court rejected the three pleas relied on by the appellant and, consequently, dismissed the action in its entirety.

Forms of order sought before the Court

15 By its appeal, the appellant claims that the Court should: – set aside the judgment under appeal; – cancel the registration of the contested trade mark; and – order EUIPO to pay the costs.

16 EUIPO and the Freistaat Bayern contend that the Court should dismiss the appeal and order the appellant to pay the costs.

The appeal

17 The appellant raises three grounds in support of its appeal, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, of Article 7(1)(b) of that regulation, and of Article 52(1)(b) thereof, respectively.

The first ground of appeal

Arguments of the parties

18 By the first ground of appeal, the appellant submits that the General Court infringed Article 7(1)(c) of Regulation No 207/2009 by finding that the contested trade mark was not descriptive of the goods and services concerned. That ground of appeal is divided, in essence, into two parts.

19 By the first part, the appellant disputes certain assessments carried out by the General Court in paragraphs 22, 26 and 27 of the judgment under appeal.

20 Thus, in the first place, the General Court incorrectly considered, in paragraph 22 of the judgment under appeal, that, for certain goods in Class 14, the relevant public’s degree of attentiveness is higher. According to the appellant, even if that class of goods partly consists of expensive goods, nevertheless it cannot be considered, generally, that the degree of attentiveness will be higher for those goods, since jewellery and clocks may also be offered at very reasonable prices.

21 In the second place, the General Court also incorrectly found...