Judgment of the General Court (Seventh Chamber) of 28 February 2024
Judgment of the General Court (Seventh Chamber) of 28 February 2024
Data
- Court
- General Court
- Case date
- 28 februari 2024
Verdict
Judgment of the General Court (Seventh Chamber) of 28 February 2024 –
BIW Invest v EUIPO – New Yorker Marketing & Media International (COMPTON)
(Case T‑746/22)(1)
"(EU trade mark - Invalidity proceedings - Word mark COMPTON - Absolute grounds for invalidity - Lack of descriptiveness - Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) - Distinctive character - Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001))"
1. EU trade markSurrender, revocation and invalidityAbsolute grounds for invalidityMarks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or serviceConcept
(Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a))
(see paragraphs 21, 22)
2. EU trade markSurrender, revocation and invalidityAbsolute grounds for invalidityMarks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or serviceAimNeed to preserve availability
(Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a))
(see paragraph 23)
3. EU trade markSurrender, revocation and invalidityAbsolute grounds for invalidityMarks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or serviceAssessment of the descriptive character of a signGeographical names
(Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a))
(see paragraphs 24-29, 31)
4. EU trade markSurrender, revocation and invalidityAbsolute grounds for invalidityMarks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or serviceAssessment of the descriptive character of a signDetermination of the relevant public
(Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a))
(see paragraphs 36, 37, 53)
5. EU trade markSurrender, revocation and invalidityAbsolute grounds for invalidityMarks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or serviceRecognition of the descriptive character in relation to certain products falling within a categoryApplication of such recognition also to all the products in that category
(Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a))
(see paragraphs 42, 43)
6. EU trade markSurrender, revocation and invalidityAbsolute grounds for invalidityMarks consisting exclusively of signs or indications which may serve to designate the characteristics of a product or serviceWord mark COMPTON
(Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a))
(see paragraphs 47, 48, 56, 71-75)
7. EU trade markSurrender, revocation and invalidityAbsolute grounds for invalidityMarks devoid of any distinctive characterConcept of distinctiveness
(Council Regulation No 207/2009, Arts 7(1)(b) and 52(1)(a))
(see paragraphs 80, 81)
8. EU trade markSurrender, revocation and invalidityAbsolute grounds for invalidityMarks devoid of any distinctive characterWord mark COMPTON
(Council Regulation No 207/2009, Arts 7(1)(b) and 52(1)(a))
(see paragraphs 86, 88-91)
Operative part
The Court:
1. Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 September 2022 (Case R 1915/2021-2);
2. Orders EUIPO and New Yorker Marketing & Media International GmbH to each bear, in addition to their own costs, half of those incurred by BIW Invest AG, including costs necessarily incurred for the purposes of the proceedings before the Board of Appeal.