Provisional text
JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
21 June 2017 (*)
(EU trade mark — Application for the EU word mark LONGHORN STEAKHOUSE — Absolute ground for refusal — Descriptiveness — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 — Equal treatment and principle of sound administration)
In Case T‑856/16,
Rare Hospitality International, Inc., established in Orlando, Florida (United States), represented by I. Lázaro Betancor, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 September 2016 (Case R 2149/2015-5), relating to an application for registration of the word sign LONGHORN STEAKHOUSE as an EU trade mark,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias (Rapporteur), President, A. Dittrich and P.G. Xuereb, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 December 2016,
having regard to the response lodged at the Court Registry on 20 February 2017,
having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 14 April 2015, the applicant, Rare Hospitality International, Inc., 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).
2 Registration as a mark was sought for the word sign LONGHORN STEAKHOUSE.
3 The services in respect of which registration was sought are in Class 43 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: ‘Restaurant services’.
4 By letter of 27 April 2015, the examiner issued a provisional refusal of protection on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, on the ground that the word sign LONGHORN STEAKHOUSE would be understood as an expression which, taken as a whole, immediately informs consumers that the services applied for are those of a restaurant that specialises in long-horned steak. The sign would therefore convey direct and obvious information on the kind of services covered by the application for registration and would thus be descriptive. For the same reasons, the sign would also be devoid of any distinctive character. Lastly, the examiner invited the applicant to submit its observations, in accordance with Article 37(3) of Regulation No 207/2009.
5 By decision of 1 September 2015, the examiner refused the application, on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, on the ground that the word mark applied for was descriptive and devoid of any distinctive character. As regards, in particular, the applicant’s argument that the average English-speaking consumer would not know that the term ‘longhorn’ refers to cattle, the examiner presented extracts from Internet sites showing that, quite apart from the fact that it appears in English-language dictionaries, that term is used in the United Kingdom to describe a particular breed of cattle. Specifically, the extracts consisted of pages reproduced from three Internet sites, belonging to producers or distributors of beef, which devoted sections to the Longhorn breed of cattle, and offering online sales services and Longhorn beef-based recipes.
6 On 26 October 2015, the applicant filed a notice of appeal with EUIPO against that decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
7 By decision of 12 September 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, having recalled, in paragraph 15 of the contested decision, that, according to settled case-law, it is sufficient, for a sign to be refused registration, that at least one of the sign’s possible meanings designates a characteristic of the goods or services concerned, the Board of Appeal found that, according to several English-language dictionaries, the term ‘longhorn’ refers to ‘1. Texas Longhorn: a long-horned breed of beef cattle, usually red or variegated, formerly common in SW US / 2. a now rare British breed of beef cattle with long curved horns’ (see paragraph 21 of the contested decision), and to ‘an animal of a breed of cattle with long horns’ (see paragraph 22 of the contested decision). Therefore, according to the contested decision, since the term ‘steakhouse’ is nowadays widely used to designate ‘a restaurant that specialises in serving steaks’, the terms ‘longhorn’ and ‘steakhouse’, taken together, will be understood by the relevant public, namely the English-speaking public in the European Union. Consequently, in the light of the services covered by the mark applied for, namely restaurant services, the relevant public, or at least a part of the relevant public, will immediately perceive the mark as providing direct descriptive information as to the object of the services applied for or one of their essential characteristics, namely a specialisation in Longhorn meat. The Board of Appeal also confirmed the examiner’s finding that the combination of the two abovementioned terms did not possess any additional characteristic capable of altering their purely descriptive nature. It found that, consequently, the mark applied for, taken as a whole, was descriptive of the services in Class 43 applied for, for the purposes of Article 7(1)(c) of Regulation No 207/2009, and it therefore rejected the application for registration.
8 The Board of Appeal also reaffirmed the examiner’s finding as to the lack of distinctiveness of the mark applied for in respect of the services covered by it, as provided for in Article 7(1)(b) of Regulation No 207/2009.
9 Lastly, the Board of Appeal rejected the applicant’s arguments based on the earlier registration of another mark containing the term ‘longhorn’ and the registration of the mark applied for by the United States Patent and Trademark Office (USPTO).
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
12 In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009, second, infringement of Article 7(1)(b) of that regulation and, third, breach of the principles of equal treatment and sound administration.
First plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
13 By its first plea in law, the applicant claims that the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 in so far as it found that the mark applied for consisted of a combination of ‘very common’ words which have a meaning in English merely on the basis of the fact that the words in question appear in English-language dictionaries. More specifically, the applicant disputes that the term ‘longhorn’ is ‘very common and meaningful’, and submits that the Board of Appeal did not assess the alleged descriptiveness of the mark applied for taking into account the perception that the target public would have of that mark.
14 The applicant disputes, in this connection, the examples provided by the examiner, drawing attention to the rarity of the Texas Longhorn breed of cattle, nowadays ‘largely forgotten’, and stating that those examples, which appear to be directed at specialists in cattle breeding and in restaurant services in the United Kingdom, can in no case serve as evidence that average consumers in the English-speaking Member States are aware of the term ‘longhorn’ and the corresponding breed of cattle.
15 According to the applicant, the mere fact that the word ‘longhorn’ appears in English-language dictionaries does not suffice to show that the average English-speaking consumer in the European Union understands, knows or uses that term, since the dictionaries relied on by the Board of Appeal refer to a multitude of scientific, technical, foreign or erudite terms known and used only by specialists in the relevant sectors. The applicant claims that the average consumer would not understand or recognise all of the names of the breeds of cattle listed in the Collins online dictionary relied on by the examiner and the Board of Appeal, and refers, in support of its statement, to three other breeds of cattle listed therein, namely the Kerry, Hereford and Jersey breeds.
16 The applicant submits that the average English-speaking consumer of restaurant services is unlikely to be familiar with the word ‘longhorn’ or to know that it refers to a specific breed of cattle. Instead, according to the applicant, it is more likely that the average consumer would understand the word ‘longhorn’ to be merely a juxtaposition of the words ‘long’ and ‘horn’, without making a mental link with a particular breed of cattle. Even consumers who have visited the United States of America and who coincidentally might be aware of the Texas Longhorn breed of cattle would not necessarily, and in any event, not immediately and without reflection, perceive the mark applied for as relating to restaurant services specialising in food products coming from Texas Longhorn cattle.
17 Lastly, neither the examiner nor the Board of Appeal have established descriptive use of the expression ‘longhorn steakhouse’ in respect of restaurant services in the United States of America or in the European Union.
18 For its part, EUIPO observes that the applicant in no way disputes that the term ‘longhorn’ appears in English-language dictionaries as designating, inter alia, ‘an animal of a breed of cattle with long horns’ or that the term ‘steakhouse’ appears in the same dictionaries as designating ‘a restaurant that specialises in serving steaks’.
19 More specifically, as regards the term ‘longhorn’, EUIPO contends that, contrary to what the applicant claims, it is a commonly used word, which appears in several dictionaries and which has a clear meaning. According to the Oxford English Dictionary, the term in question has a ‘use of 4 on the scale of 8’. It is therefore a term that is used with a more than limited frequency and by a broader circle than that of specialists in the field.
20 Lastly, according to EUIPO, the specialist public in the field concerned, namely chefs, professionals in cattle breeding and those active in the food, distribution and agriculture sectors, constitutes a significant part of the relevant public for restaurant services. Therefore, even if the mark applied for is descriptive only as regards that part of the relevant public, the mark would, in any event, have to be regarded as being descriptive.
21 Article 7(1)(c) of Regulation No 207/2009 provides that 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, are not to be registered.
22 According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that descriptive indications or signs relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks, and prevents an undertaking from monopolising the use of a descriptive term to the detriment of other undertakings, including its competitors, whose choice of available vocabulary for describing their own goods and services is thereby reduced (see judgment of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL), T‑290/15, not published, EU:T:2016:651, paragraph 23 and the case-law cited).
23 The descriptiveness of a mark must be assessed, first, in relation to the goods or services in respect of which the registration of the sign has been applied for and, second, in relation to the perception of the mark by the relevant public, which is made up of consumers of those goods or services (see judgment of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL), T‑290/15, not published, EU:T:2016:651, paragraph 25 and the case-law cited).
24 In order for a sign to be caught by the prohibition laid down in that provision, there must be a sufficiently direct and specific link between the sign and the goods or services concerned to enable the relevant public immediately to perceive, without further thought, a description of the category of the goods and services concerned or of one of their characteristics (see order of 17 June 2016, Hako v EUIPO (SCRUBMASTER), T‑629/15, not published, EU:T:2016:384, paragraph 15 and the case-law cited).
25 According to the case-law, a trade mark consisting of one or more words composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between the word or words and the mere sum of the parts thereof. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the words create an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which they are composed that the words are more than the sum of their parts. In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (see order of 17 June 2016, SCRUBMASTER, T‑629/15, not published, EU:T:2016:384, paragraph 16 and the case-law cited).
26 In the present case, according to the applicant, the Board of Appeal’s conclusion as regards Article 7(1)(c) of Regulation No 207/2009 is incorrect in so far as the department of EUIPO in question relied on the finding that the mark applied for constitutes a combination of ‘very common and meaningful English words’.
27 The Court notes, first, that the Board of Appeal did not expressly indicate, in the contested decision, on which of the meanings of the term ‘longhorn’, to which reference is made in paragraph 7 above, it relied in reaching its conclusion. It is clear, however, from the contested decision, that that conclusion is based both on the fact that the term ‘longhorn’ may designate specific breeds of cattle, and, in particular, the Texas Longhorn breed of cattle, and on the fact that that term may have a more generic meaning and designate, consequently, without referring to a specific breed of cattle, beef cattle with long horns (see paragraph 7 above).
28 For its part, the applicant claims, in essence, that, in order for the term ‘longhorn’ to be regarded as descriptive, it would have to be understood by the average consumer of the services in question as designating a specific breed of cattle, namely the Texas Longhorn breed of cattle (see paragraph 41 of the application). According to the applicant, that is not the case, regardless of the fact that the average consumer of the services in question may understand the term ‘longhorn’ as a term composed of the words ‘long’ and ‘horn’ (see paragraph 40 of the application and paragraph 16 above).
29 In the light of the foregoing and in so far as the contested decision is also based on the fact that the term ‘longhorn’ may designate the Texas Longhorn breed of cattle, it is necessary to examine the applicant’s argument that the Board of Appeal wrongly found that the average consumer will understand the term ‘longhorn’ as designating the specific Texas Longhorn breed of cattle.
30 The applicant claims, in essence, that since the meaning of the term ‘longhorn’, designating the rare Texas Longhorn breed of cattle, is perceived by only a part of the relevant public, namely professionals in the sector, the term in question cannot be regarded as being descriptive of the services covered by the mark applied for, for the purposes of Article 7(1)(c) of Regulation No 207/2009. However, as EUIPO notes at paragraph 24 of the response, according to the case-law, for the purposes of the application of Article 7(1)(c) of Regulation No 207/2009, it suffices that there is, at least from the point of view of a not insignificant part of the target public, a sufficiently direct and specific relationship between the sign at issue and the goods or services in respect of which registration has been sought (see judgment of 23 October 2015, Geilenkothen Fabrik für Schutzkleidung v OHIM (Cottonfeel), T‑822/14, not published, EU:T:2015:797, paragraph 23 and the case-law cited).
31 In this connection, it should be pointed out that, according to paragraph 17 of the contested decision, the services covered by the mark applied for are directed at the general public. That finding is not disputed by the applicant.
32 However, it must be held that, at the very least, a not insignificant part of the general public at which the services in question are directed consists of consumers who particularly enjoy red meat, and beef in particular, and who have, consequently, extensive knowledge of the field concerned. Accordingly, it is likely that those consumers are aware of the Texas Longhorn breed of cattle.
33 The applicant does not dispute, moreover, the meaning of the term ‘steakhouse’, which designates a ‘restaurant that specialises in serving steaks’, namely slices of meat for grilling intended for human consumption, nor does it dispute the fact that it is widely and commonly used by an English-speaking public. Consequently, it must be concluded that, at the very least, a not insignificant part of the relevant public will perceive the mark applied for as being descriptive of the services covered by it.
34 The applicant has not put forward any evidence liable to call into question the findings of the Board of Appeal on this point or the material annexed to the decision of the examiner to establish that the breed of cattle in question is known, at least, to the connoisseurs and lovers of red meat who form part of the relevant public. Indeed, apart from a single reference to one of the Internet sites relied on by the examiner, according to which the breed of cattle in question is rare and ‘largely forgotten’ (see paragraph 14 above), the applicant has in no way substantiated its claims set out in paragraph 27 of the application. In particular, it has not provided any evidence, nor has it set out any argument, capable of establishing that the examples of Internet sites relied on by the examiner are directed at a very limited specialist public and that they show that only some specialists in the cattle breeding sector and some recognised chefs would perceive the meaning of the term ‘longhorn’. On the contrary, the Internet sites in question offer online sales services and Longhorn beef-based recipes (see paragraph 5 above). Those services cannot, in view of both their very nature and the nature of the medium used, be regarded as being directed at a very limited specialist public. Indeed, the rarity or prized nature of a food or product cannot, on its own, be regarded as evidence necessarily signifying that the products or foods are not known, or are not widely known, to the general public.
35 Consequently, since the rarity of animals of the Texas Longhorn breed of cattle, or indeed of the meat from such animals (see paragraph 14 above), even if proved, in no way constitutes a relevant factor in the circumstances of the present case, the applicant’s entire line of argument based thereon must be rejected.
36 Moreover, as regards the relevant public’s perception of the meaning of the term ‘longhorn’, the fact that the examples provided by the examiner concerned use of the term ‘longhorn’ in respect of goods in Class 29 of the Nice Agreement, which includes meat, amongst other foods, and not in respect of services in Class 45, which were covered by the applicant’s trade mark application, is not relevant to the present case.
37 The applicant complains, in addition, that the Board of Appeal based its conclusion merely on the fact that the word ‘longhorn’ appears in English-language dictionaries (see paragraph 15 above).
38 It is true that, as the applicant notes, the mere inclusion of a term in one or more dictionaries cannot suffice to show that it is a commonly used term, the meaning of which will immediately be perceived by the general public, even in the case of native speakers of the language concerned. A dictionary does not contain only well-known and regularly used terms, but also terms that are rare, poetic, outdated or that relate to highly specialised fields, the meaning of which is known only to a small number of specialists in the relevant sectors. It is more likely, consequently, in the case of such terms, that the relevant public, faced with a sign containing them, will not immediately perceive their meaning or, as the case may be, their connection with the goods or services covered.
39 However, the applicant has misread the contested decision on this point. The Board of Appeal did not solely take account of the fact that the term ‘longhorn’ appears in English-language dictionaries, but also relied on the material invoked by the examiner (see paragraph 22 of the contested decision and paragraph 34 above). The same is true as regards the term ‘steakhouse’. Thus, the Board of Appeal did not merely refer to the fact that the term in question appeared in a dictionary, but explained that it was commonly used and perceived as designating a restaurant that specialises in serving steaks (see paragraph 23 of the contested decision).
40 In any event, even if the average consumer, namely, in the present case, the average English-speaking consumer in the European Union, does not perceive the term ‘longhorn’ as designating a specific breed of cattle, he will nevertheless be led to regard the term ‘longhorn’ as constituting a juxtaposition of the words ‘long’ and ‘horn’, everyday words that are commonly used by the English-speaking public. Consequently, it must be presumed that the average English-speaking consumer will, at the very least, be led to regard the term ‘longhorn’ as designating an animal with long horns.
41 In this connection, the meaning of the term in question cannot be regarded as requiring an analytical examination on the part of the relevant public because the term does not depart from everyday language in a manner such that the public would attribute more to it than the sum of the word elements of which it is composed. Thus, the term formed by the elements ‘long’ and ‘horn’, namely by an adjective and a noun, may be regarded, in the light of the rules of English syntax, grammar, phonetics and semantics, as being grammatically correct or even syntactically normal, particularly since it is common in English to create words by coupling together two words each of which has a meaning (see judgment of 14 July 2016, Volkswagen v EUIPO (ConnectedWork), T‑491/15, not published, EU:T:2016:407, paragraph 30 and the case-law cited and paragraph 31).
42 It is, moreover, common knowledge that the slices of meat served in ‘steakhouse’ restaurants (see paragraph 33 above) are slices of red meat and, in particular, slices of beef. Therefore, in the context of the services in question in the present case, and faced with an expression consisting of the terms ‘longhorn’ and ‘steakhouse’, it must be held that the average English-speaking consumer, including one who is not necessarily a connoisseur or lover of red meat, will be led to think that the restaurant services in question relate to beef from animals with long horns. Consequently, even if the average consumer is not aware of the specific breed of cattle Texas Longhorn, he will, nevertheless, be led immediately to perceive, within the meaning of the case-law cited in paragraph 24 above, one of the characteristics of the services that the mark applied for covers, within the meaning of Article 7(1)(c) of Regulation No 207/2009, namely their specialisation in beef from animals with long horns. In this connection, it should be noted that, as is clear from paragraph 22 of the contested decision, the entries in the English-language dictionaries do not all refer to the specific breed of cattle Texas Longhorn or to any other specific breed of cattle. There are dictionaries which allude to a generic definition of the term ‘longhorn’, by indicating that this designates ‘cattle with long horns’, without mentioning to which specific breed of cattle that animal belongs. Moreover, the Board of Appeal took account of that generic definition of the term in question, contained in the Oxford English Dictionary, in reaching its conclusion on the descriptiveness of the mark applied for.
43 Those considerations suffice to establish the descriptiveness of the term ‘longhorn’, contrary to what the applicant appears to be suggesting, namely that, in order for the mark applied for to be regarded as descriptive of the services in question, the average consumer must associate the mark with the specific breed of cattle Texas Longhorn (see paragraphs 40 and 41). It is clear that the generic category ‘meat from animals of a breed of cattle with long horns’ includes the specific category ‘animals of the Texas Longhorn breed of cattle’.
44 Furthermore, it is clear from the foregoing that, contrary to what the applicant appears to be suggesting, the association of the terms ‘longhorn’ and ‘steakhouse’ cannot be compared to other associations of the term ‘steakhouse’ and another term designating a breed of cattle, such as ‘kerry’, ‘hereford’ and ‘jersey’ (see paragraph 15 above), since those terms generally designate geographical locations and are not composed of simple and commonly used English words, the meaning of which, in the context of the services in question, is likely to be perceived immediately by the relevant public.
45 Lastly, as regards the applicant’s argument set out in paragraph 17 above, suffice it to recall that, according to settled case-law, it is not necessary that the mark applied for should actually be used, at the time that registration is applied for, for the purpose of describing the services concerned. It suffices that the mark could be used for such purposes (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 44 and the case-law cited). Moreover, it must be observed on that point that the judgment on which the applicant relies, in paragraph 37 of its application, for the purposes of disputing the case-law cited above, namely the judgment of 12 March 2008, Compagnie générale de diététique v OHIM (GARUM) (T‑341/06, not published, EU:T:2008:70), does not concern Article 7(1)(c) of Regulation No 207/2009, but Article 7(1)(b) of that regulation.
46 The first plea in law must, therefore, be rejected.
47 In those circumstances, there is no need to examine the second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009. According to settled case-law, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies for a sign not to be registrable as an EU trade mark (see judgment of 13 January 2014, LaserSoft Imaging v OHIM (Workflow Pilot), T‑475/12, not published, EU:T:2014:2, paragraph 34 and the case-law cited). Accordingly, it is appropriate to proceed directly to the examination of the third plea in law put forward in the application.
The third plea in law, alleging breach of the principles of equal treatment and sound administration
48 The applicant claims that the Board of Appeal was in breach of the principles of equal treatment and sound administration at two stages of the reasoning followed in the contested decision.
49 Relying on the order of 9 April 2008, Bild digital and ZVS (C‑39/08 and C‑43/08, not published, EU:C:2008:209), the applicant claims that EUIPO ought, in examining its application, to have taken into consideration decisions already adopted in respect of similar applications. It relies, in this connection, on three earlier EU trade mark registrations consisting of a term designating a breed of cattle and the word ‘steakhouse’, and concludes that, by refusing its application, the Board of Appeal was manifestly in breach of the principle of equal treatment.
50 In addition, the applicant submits that the Board of Appeal was in breach of the principle of equal treatment in its assessment of the term ‘longhorn’. Thus, even though, in the decision issued on 2 October 2015 in Case R 0413/2015-5, the same Board of Appeal of EUIPO stated that the fact that a term ‘appears in the Collins Dictionary Online is not sufficient to show that the word [constituting the mark applied for in that case] is commonly understood or used by the average English speaking consumer’, the contested decision is based exclusively, so far as the relevant public’s understanding of the term ‘longhorn’ is concerned, on the fact that that term appears in English-language dictionaries.
51 EUIPO recalls, in this connection, that the legality of decisions adopted by the Boards of Appeal must be examined solely on the basis of Regulation No 207/2009 and not on the basis of previous decisions adopted by it. It notes, moreover, that it cannot be accepted that the Boards of Appeal are bound by the decisions of the examiner or by those of the different Divisions, on which the Boards have not had the opportunity to adjudicate.
52 It should be recalled, first of all, that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 66 and the case-law cited).
53 Accordingly, EUIPO must, when examining an application for registration of an EU trade mark, take into consideration the decisions already adopted in respect of similar applications and consider with special care whether it should decide in the same way or not (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 67 and the case-law cited).
54 Nevertheless, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as an EU trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 68 and the case-law cited).
55 In addition, according to settled case-law, decisions concerning registration of a sign as an EU trade mark, which the Boards of Appeal are called on to take under Regulation No 207/2009, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, whether a sign may be registered as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by the European Union judicature (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 71 and the case-law cited).
56 Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as an EU trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 69 and the case-law cited).
57 It also follows from the case-law of the Court of Justice that the considerations set out in paragraphs 52 to 56 above apply even if the sign in respect of which registration is sought as an EU trade mark is composed in a manner identical to that of a mark in respect of which EUIPO has already approved registration as an EU trade mark and which relates to goods or services identical or similar to those in respect of which registration of the sign in question is sought (see judgment of 9 November 2016, SMARTER TRAVEL, T‑290/15, not published, EU:T:2016:651, paragraph 70 and the case-law cited).
58 In the present case, it is clear from the examination of the first plea in law put forward by the applicant that the Board of Appeal was fully entitled to find, on the basis of a comprehensive examination and taking account of the perception of the relevant public, that the EU trade mark application filed by the applicant was caught by the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009. It follows that, in accordance with the case-law cited above, that assessment cannot be called into question on the sole ground that the Board of Appeal did not follow EUIPO’s supposed decision-making practice in the present case (see, by analogy, judgment of 7 October 2015, The Smiley Company v OHIM (Shape of a smiley with heart-shaped eyes), T‑656/13, not published, EU:T:2015:758, paragraph 48).
59 Lastly, specifically as regards the assessment of the term ‘longhorn’ carried out by the Board of Appeal (see paragraph 50 above), it is clear from the considerations set out in paragraphs 37 to 39 above that the applicant’s line of argument is based on a misreading of the contested decision and it must therefore be rejected in any event.
60 In the light of all the foregoing, the third plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
61 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Rare Hospitality International, Inc. to pay the costs.
Delivered in open court in Luxembourg on 21 June 2017.