General Court erred in law with regard to homogeneity of goods and services with respect to the reasoning of absolute grounds of refusal
17-05-2017 Print this page
The General Court erred in law by stating that the goods and services covered by the application for registration of the sign ‘Deluxe’ displayed such differences as regards their nature, their characteristics, their intended use and the way in which they are marketed that they could not be considered a homogenous category enabling the Board of Appeal to adopt a general reasoning with respect to the absolute grounds of refusal: the General Court failed to have regard to the possibility that, despite their differences, all the goods and services at issue could have a common characteristic that could justify their placement within a single homogenous group.
"34. It follows from the foregoing considerations that it cannot be ruled out a priori that the goods and services covered by an application for registration all present a relevant characteristic for the analysis of an absolute ground for refusal and that they can be placed, for the purposes of examining the application for registration at issue in relation to that absolute ground for refusal, in a sufficiently homogenous single category or group, for the purposes of the case-law cited in paragraph 31 of the present judgment.
35. In the present case, it is apparent from paragraph 26 of the judgment under appeal that, in relation to all the goods and services covered by the application for registration at issue, the Board of Appeal indicated that all the goods, without exception, can be presented as being of superior quality, and all the services, without exception, can be presented as providing superior quality. It follows from that consideration that the Board of Appeal, in essence, considered that all the goods and services covered by the application for registration under examination presented a characteristic which was relevant to the analysis of the absolute ground for refusal under Article 7(1)(b) of Regulation No 207/2009, namely the fact that they could be presented as having or providing superior quality and that, therefore, they were all part of a sufficiently homogenous single category or group, for the purposes of the analysis of that absolute ground for refusal. The relevance, according to the Board of Appeal, of that common characteristic of the goods and services at issue for the purposes of the analysis that it had to carry out is demonstrated by the findingin the decision at issue that the mark applied for consisted of a ‘claim of superior quality’.
36. The Board of Appeal’s failure, mentioned in paragraph 22 of the judgment under appeal, to expressly indicate that the goods and services at issue had such a sufficiently direct and specific link to each other to the point that they form a homogenous category cannot lead to a different conclusion, since such an indication was implicit from the Board’s consideration referred to in paragraph 26 of the judgment under appeal.
37. It was for the General Court, in order to check observance of the Board of Appeal’s obligation to carry out to the specific assessment required by Article 7(1)(b) of Regulation No 207/2009 and to give sufficient reasons to the requisite standard, to examine, in the context of a factual assessment, the merits of the Board of Appeal’s considerations noted in paragraph 35 of the present judgment.
38. In particular, it was for the General Court, first, to check whether the mark applied for, which is composed of a word element and a figurative element, was indeed capable of being perceived, directly and immediately, as a claim of superior quality or a laudatory message by the relevant public rather than as an indication of the commercial origin of the goods and services it designates.
39. Second, it was for the General Court to check, in the context of the analysis of the word element of the mark applied for, whether the term ‘deluxe’ did actually convey the concept of ‘superior quality’ as claimed by the Board of Appeal, given that that word element amounts to a direct reference to the concept of ‘luxury’. If the term ‘deluxe’ were to have a meaning distinct to that of ‘superior quality’, as considered by the Advocate General in paragraph 54 to 55 of his Opinion, the General Court would then have to examine whether or not, in the light of that meaning, the goods and services covered by the mark at issue constitute a homogenous group justifying recourse to a general reasoning.
40. However, the General Court ruled out generally the possibility of finding the goods and services at issue to be homogenous and it did not take into account, in that regard, the specificity of the mark applied for or, in particular, of its perception by the relevant public.
41. Indeed, as is apparent from paragraph 21 of the judgment under appeal, the General Court merely found that the goods and services covered by the application for registration at issue displayed such differences as regards their nature, their characteristics, their intended use and the way in which they are marketed that they could not be considered a homogenous category enabling the Board of Appeal to adopt a general reasoning with respect to them. The General Court therefore failed to have regard to the possibility that, despite their differences, all the goods and services at issue could have a common characteristic, relevant to the analysis that the Board of Appeal had to carry out, which, in accordance with the considerations set out in paragraphs 33 and 34 of the present judgment, could justify their placement within a single homogenous group and the use by the Board of Appeal of a general reasoning in relation to them.
42. For the same reasons, the Court’s assertion, in paragraph 27 of the judgment under appeal, that ‘the fact that the term “deluxe” amounts to a laudatory and promotional term capable of applying to all the goods and services at issue is without consequence’ is also erroneous.
43. It follows from the foregoing that the General Court erred in law in interpreting Article 7(1)(b) and Article 75 of Regulation No 207/2009, with the result that the judgment under appeal must be set aside."
IPPT20170517, CJEU, EUIPO v Deluxe Entertainment
C-437/15 P - ECLI:EU:C:2017:380
