JUDGMENT OF THE GENERAL COURT (Third Chamber)
15 March 2023 (*)
(EU trade mark – International registration designating the European Union – Word mark FUCKING AWESOME – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 – Legal certainty – Equal treatment – Principle of sound administration)
In Case T‑178/22,
FA World Entertainment Inc., established in Los Angeles, California (United States), represented by M. Breuer, I. Dimitrov and C. Tenbrock, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
THE GENERAL COURT (Third Chamber),
composed of F. Schalin, President, G. Steinfatt and D. Kukovec (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 11 January 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, FA World Entertainment Inc., seeks annulment of the decision of the Fifth Board of Appeal of the European Intellectual Office (EUIPO) of 3 February 2022 (Case R 1131/2021-5) (‘the contested decision’).
Background to the dispute
2 On 29 October 2020, the applicant, claiming the priority of American trade marks No 90210704 and No 90210698 of 25 September 2020, obtained international registration designating the European Union for the word mark FUCKING AWESOME from the International Bureau of the World Intellectual Property Organisation (WIPO).
3 The international registration was notified to EUIPO, pursuant to 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).
4 The mark applied for designated the goods in Classes 9, 18, 25 and 28 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 corresponding, for each of those classes, to the following description:
– Class 9: ‘Eyewear, namely, sunglasses, eyeglasses and ophthalmic frames and cases and replacement parts therefor; eyewear; eyewear accessories, namely, straps, neck cords and head straps which restrain eyewear from movement on a wearer; eyewear cases; cell phone cases; cell phone covers’;
– Class 18: ‘All-purpose athletic bags; backpacks; beach bags; beach umbrellas; billfolds; book bags; carryalls; change purses; clutch purses; coin purses; cosmetic bags sold empty; drawstring pouches; duffel bags; evening handbags; fanny packs; handbags; leather and imitation leather bags; suitcases; luggage; wallets; leather straps; luggage tags; parasols; purses; shoulder bags’;
– Class 25: ‘Clothing, namely, tops, bottoms, shirts, pants, headwear, shorts, underwear, jackets’;
– Class 28: ‘Skateboards; skateboard parts and equipment, namely, skateboards, decks, trucks, bolts, ball bearings, wheels, grip tape’.
5 On 29 December 2020, EUIPO’s examiner issued a notification of provisional refusal of protection of the mark applied for. By decision of 2 June 2021, following the observations on the provisional refusal submitted by the applicant on 3 May 2021, that examiner rejected the trade mark application on the basis of Article 7(1)(b) and (f) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, in that it related to the goods referred to in paragraph 4 above.
6 On 28 June 2021, the applicant filed an appeal with EUIPO against the examiner’s decision.
7 By the contested decision, the Board of Appeal upheld the appeal in part and annulled the examiner’s decision in so far as the mark applied for had been refused on the basis of Article 7(1)(f) of Regulation 2017/1001. In contrast, the appeal was dismissed for the remainder, as the Board of Appeal upheld the examiner’s decision in so far as the examiner had refused the mark applied for on the basis of Article 7(1)(b) of Regulation 2017/1001.
8 In addition, the Board of Appeal remitted the case back to the first instance for further examination of the distinctive character acquired through use of the mark applied for, within the meaning of Article 7(3) of Regulation 2017/1001, and of Article 2(2) of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37).
9 In particular, first, as regards the ground of refusal based on Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal found, as did the examiner, that the mark applied for lacked distinctive character with regard to the goods which it designated, as the relevant public would perceive it solely as a promotional and laudatory message and not as an indication of the commercial origin of the goods at issue.
10 Second, as regards the ground of refusal based on Article 7(1)(f) of Regulation 2017/1001, the Board of Appeal considered that the examiner had erred in considering that, owing to its offensive character, the mark applied for was contrary to public policy or to accepted principles of morality and that its registration should therefore be refused. According to the Board of Appeal, the sign in question will not be perceived as an offensive message, but rather as a slightly vulgar message promoting the high quality of the goods at issue.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision in so far as the Board of Appeal dismissed the appeal in part;
– order EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, and, second, infringement of the general principles of legal certainty, equal treatment and sound administration.
The first plea, alleging infringement of Article 7(1)(b) of Regulation No 2017/1001, read in conjunction with Article 7(2) thereof
14 In support of its first plea, the applicant alleges that the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) thereof, in finding that the mark applied for was devoid of any distinctive character.
15 EUIPO disputes the applicant’s arguments.
16 According to Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
17 For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
18 The distinctive character of a mark must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
19 It is in the light of those considerations that it must be examined whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) thereof.
20 Thus, in the context of that examination, it is necessary, first of all, to define the relevant public and territory, then, to examine the perception of the mark applied for by that public and, finally, to assess the distinctive character of that mark in relation to the goods at issue.
The definition of the relevant public and territory
21 As regards the definition of the relevant public, first, the Board of Appeal found that the goods at issue were directed at the general public, which would display an average level of attention with regard to the goods in Classes 9, 18 and 25 and a level of attention varying from average to slightly higher than average with regard to the goods in Class 28. Those findings are not challenged by the applicant.
22 Second, the Board of Appeal followed the examiner’s approach of examining the sign at issue on the basis of the understanding of the English-speaking part of the relevant public. In that regard, the Board of Appeal stated that that part of the relevant public included consumers residing, inter alia, in Ireland, Malta, the Scandinavian countries, Finland, the Netherlands, Cyprus and Portugal who had at least a basic knowledge of English.
23 The applicant acknowledges, in paragraph 26 of the application, that the Board of Appeal was right to find that the understanding of the English-speaking part of the public was relevant in the present case. By contrast, the applicant complains that the Board of Appeal erred in assuming that that public included consumers who resided in Ireland, Malta, the Scandinavian countries, Finland, the Netherlands, Cyprus and Portugal. In particular, the applicant calls into question the understanding of the sign at issue by consumers in those countries, pointing out that English is not their mother tongue and that that sign is not part of the basic vocabulary of that language.
24 EUIPO disputes the applicant’s arguments.
25 In that regard, it must be stated that, since English is the official language of Ireland and the Republic of Malta, the sign at issue is necessarily understood by the inhabitants of those countries. Therefore, the Board of Appeal did not make an error of assessment in finding that the relevant territory included the consumers of those countries.
26 According to case-law, Article 7(2) of Regulation 2017/1001 must be interpreted as meaning that a mark must be refused registration if it is covered by one of the grounds for refusal laid down in Article 7(1) of that regulation in part of the European Union. Such a part may comprise a single Member State (see judgment of 20 September 2011, Couture Tech v OHIM (Representation of the Soviet coat of arms), T‑232/10, EU:T:2011:498, paragraph 22 and the case-law cited).
27 Since English-speaking consumers in Ireland and Malta constitute part of the relevant public of the European Union, the existence of a ground for refusal in that part of that public is, according to the case-law referred to in paragraph 26 above, sufficient for registration of the mark applied for to be refused.
28 Accordingly, in those circumstances, the applicant’s arguments concerning the determination of the relevant public and territory must be rejected, without there being any need to rule on the applicant’s claims concerning the perception of the sign at issue by residents of the Scandinavian countries, the Netherlands, Finland, Cyprus and Portugal.
The perception by the relevant public of the mark applied for
29 As regards the perception of the mark applied for by the relevant public, the Board of Appeal, like the examiner, found that the English word ‘fucking’ was a somewhat vulgar intensifier, whereas the English word ‘awesome’ meant ‘excellent or outstanding’. The Board of Appeal concluded that the mark applied for as a whole would be understood by the relevant public as a promotional expression indicating that ‘the goods [were] outstanding, incredible, astonishing and that they [would] fulfil the highest expectations of the consumers’.
30 The applicant does not dispute the findings of the Board of Appeal as regards the meaning of the words ‘fucking’ and ‘awesome’ making up the sign at issue. By contrast, it complains that the Board of Appeal erred in its assessment of the meaning of that sign as a whole by relying solely on the meaning of the individual elements of which it is composed. According to the applicant, the expression ‘fucking awesome’ is assumed to have no determined meaning because, first, it cannot be found in any dictionary and, second, it may have, in virtually all circumstances, both a positive and a negative connotation.
31 EUIPO disputes the applicant’s arguments.
32 As a preliminary point, it must be borne in mind that in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82 and the case-law cited).
33 In the present case, first, it must be borne in mind that, as the Board of Appeal found, the sign at issue consists of the word ‘fucking’, a somewhat vulgar intensifier and the word ‘awesome’ which refers to something which is excellent or outstanding.
34 Second, it must be held, as the Board of Appeal found, that the combination of dictionary terms which has a clear meaning, namely, in the present case, the words ‘fucking’ and ‘awesome’, is consistent with English lexical and grammatical rules and that there is nothing unusual in its syntax which would enable it to be regarded as more than a simple combination of those words. It therefore conveys a clear and unequivocal message which is immediately perceptible and does not require any interpretation by the English-speaking consumer. As the Board of Appeal found, that combination will be perceived by the relevant public as a promotional message indicating the astonishing quality of the goods.
35 That finding cannot be called into question by the applicant’s arguments.
36 First, contrary to what the applicant claims, the fact that the expression ‘fucking awesome’ does not appear in dictionaries does not support the conclusion that it does not have a specific meaning.
37 On the one hand, for the reasons set out in paragraph 34 above, that expression will be understood as a simple combination of words which themselves appear in dictionaries and have a precise meaning. The fact that the sign as a whole does not appear in dictionaries is not in itself likely to change the perception of the relevant public.
38 On the other hand, in any case, it is clear from the case-law that whether or not the word element of a sign is present in dictionaries is irrelevant for the purposes of the assessment of its distinctive character, because a distinctive character of a word sign should not be inferred from the fact that the word element of that sign does not appear in dictionaries as such (see, to that effect, judgment of 27 June 2013, International Engine Intellectual Property Company v OHIM (PURE POWER), T‑248/11, not published, EU:T:2013:333, paragraph 33 and the case-law cited).
39 Therefore, the applicant’s argument relating to the absence, in dictionaries, of the word element of the sign at issue must be rejected.
40 Second, the applicant cannot criticise the Board of Appeal for attributing a specific meaning to the expression ‘fucking awesome’, when the latter can have both a positive and a negative connotation.
41 As was pointed out by the Board of Appeal, notwithstanding the fact that another meaning of the sign at issue might be conceivable, it is sufficient to state, for the purposes of the application of Article 7(1)(b) of Regulation 2017/1001, that at least a non-negligible part of the relevant public will perceive the sign at issue as a promotional message indicating the astonishing quality of the goods. Therefore, the Board of Appeal correctly carried out the analysis of the distinctive character of the sign at issue by taking into account the positive concept conveyed by the expression ‘fucking awesome’.
42 Therefore, the applicant’s argument relating to the multitude of conceivable meanings of the sign at issue must be rejected.
The distinctive character of the mark applied for in relation to the goods at issue
43 As regards the distinctive character of the mark applied for in relation to the goods at issue, the Board of Appeal found, in essence, that that mark was purely promotional and laudatory and did not contain any additional element which could allow it to function as an indication of the commercial origin of those goods. The Board of Appeal concluded that the trade mark applied for was devoid of any distinctive character.
44 The applicant submits that the mark applied for has sufficient distinctive character to be registrable for the goods at issue. In that regard, first, the applicant submits, in essence, that the sign at issue makes no reference to a specific characteristic or to the quality of the goods. Second, according to the applicant, the mark applied for will not be understood as an exclusively laudatory and praising message because, due to the specific choice of its words, it has a certain originality or impact and sets off a cognitive process or requires interpretation on the part of the relevant public.
45 EUPO disputes the applicant’s arguments.
46 First of all, as regards the applicant’s argument concerning the absence of any reference, in the sign at issue, to a specific characteristic or to the quality of the goods, it must be borne in mind that, for a finding of no distinctive character, it is sufficient for the semantic content of the word sign at issue to indicate to the consumer that a characteristic of the goods or services, whilst not specific, comes from promotional or advertising information which the relevant public will perceive as such, rather than as an indication of the commercial origin of the goods or services (judgments of 17 March 2016, Mudhook Marketing v OHIM (IPVanish), T‑78/15, not published, EU:T:2016:155, paragraph 25, and of 14 July 2016, Volkswagen v EUIPO (ConnectedWork), T‑491/15, not published, EU:T:2016:407, paragraph 32). In addition, the mere fact that the semantic content of the mark applied for does not convey any information about the nature of the goods or services concerned is not sufficient to make that sign distinctive (judgment of 30 June 2021, Ceramica Flaminia v EUIPO – Ceramica Cielo (goclean), T‑290/20, not published, EU:T:2021:405, paragraph 32).
47 Thus, the fact that the sign at issue conveys a promotional message, without specifying the particular characteristics of the goods, is not, in itself, capable of conferring on it a distinctive character. Consequently, it is necessary to reject the applicant’s arguments in that regard.
48 Next, as regards the applicant’s argument disputing the purely advertising function of the mark applied for, it must be borne in mind that the registration of marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks is not excluded as such by virtue of such use (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 35, and of 22 March 2017, Hoffmann v EUIPO (Genius), T‑425/16, not published, EU:T:2017:199, paragraph 26).
49 It also follows from the case-law that while all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, they can still be capable of indicating to the consumer the commercial origin of the goods or services at issue. That can be the case, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (see, to that effect, judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57, and of 22 March 2017, Genius, T‑425/16, not published, EU:T:2017:199, paragraph 28).
50 In the present case, it is true, as the applicant claims, that one of the word elements of the sign at issue, namely the word ‘fucking’, has a somewhat vulgar connotation. However, contrary to what the applicant claims, the use of that word does not make its combination with the word ‘awesome’ unusual or original. Nor does the expression ‘fucking awesome’ constitute a play on words, since it is a mere combination of two words which have a precise meaning, as determined in paragraph 34 above.
51 The choice of the words making up the sign at issue will simply indicate to the relevant public the use of informal language to convey a promotional message, but that use is not so astonishing as to add to that message, as is claimed by the applicant, an element of fascination or surprise, which would make it capable of indicating the commercial origin of the goods. Moreover, such an expression is very well known in informal language, which removes any originality in relation to the goods at issue.
52 It should be noted that that applies particularly for the part of the relevant public which, according to the applicant, constitutes the target group of consumers, namely young to middle-aged consumers who are interested in goods relating to skateboarding and fashion. Contrary to the applicant’s claims, in so far as the use of informal or vulgar language is not unusual for that public, that public will not attribute any particular meaning to the choice of the words making up the sign at issue, but will perceive it rather as an adaptation of a promotional message to that particular public.
53 Therefore, the applicant cannot validly claim that the sign at issue conveys a message which requires interpretation or which is capable of setting off a cognitive process in the minds of the relevant public. On the contrary, it follows from the foregoing that the mark applied for does not contain any element which would enable it, apart from its promotional function, to distinguish the goods it covers from goods of a different commercial origin.
54 Lastly, that finding cannot be called into question by the applicant’s other arguments.
55 First, the applicant claims that the Board of Appeal did not correctly apply the judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas?) (C‑541/18, EU:C:2019:725), in the light of which the probable or likely method of use of the sign at issue must be taken into account in the assessment of its distinctive character. According to the applicant, in accordance with that judgment, the sign at issue must be regarded as having distinctive character, because there is a high likelihood that the consumer will encounter that sign on the label of the goods designated by it and will therefore perceive it as an indication of origin.
56 In that regard, the Board of Appeal rightly pointed out that the judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas?) (C‑541/18, EU:C:2019:725), did not establish a general rule according to which a sign can be registered, in the clothing and related sectors, since it may be placed on a label on the inside of the goods.
57 It is also apparent from the case-law that the mere affixing of the sign applied for on goods, on a label or on a means of presentation does not automatically mean that the relevant public perceives that sign as an indication of the commercial origin of those goods and no longer as a promotional message. To accept the contrary would necessarily amount to allowing any applicant for an EU trade mark to circumvent the absolute ground for refusal under Article 7(1)(b) of Regulation 2017/1001 by merely relying, in respect of the mark applied for, on a significant method of affixing in the sector concerned (judgment of 21 April 2021, Robert Klingel v EUIPO (MEN+), T‑345/20, not published, EU:T:2021:209, paragraph 56).
58 Next, contrary to what the applicant claims, the Board of Appeal did not disregard its arguments relating to the method of affixing the sign applied for. The Board of Appeal found, in paragraph 40 of the contested decision, that, when affixed to labels sewn on the inside of the goods, the sign at issue would be perceived by consumers as a promotional message drawing attention to the high quality of the goods, and not as an indication of origin.
59 Furthermore, it must be pointed out that the applicant does not in any way specify the reasons why the affixing of the sign at issue on labels sewn on the inside of the goods or any other method of affixing that sign would alter the meaning of the mark applied for. It must be borne in mind, in that regard, that where an applicant claims that a trade mark applied for is distinctive, it is for that applicant to provide specific and substantiated information to show that the trade mark applied for has an intrinsic distinctive character since it is much better placed to do so, given its thorough knowledge of the market (see, to that effect, order of 11 September 2019, ruwido austria v EUIPO (transparent pairing), T‑649/18, not published, EU:T:2019:585, paragraph 46 and the case-law cited)
60 In that context, it must also be observed that the Board of Appeal has not erred in law by not taking into account the applicant’s arguments that, on the basis of the use of the sign at issue in the context of several collaborations and business relations, that sign would be perceived by the relevant public as a trade mark. Having regard to the nature of those arguments and the evidence submitted in that regard in the present case, it must be held that that evidence concerns the use or recognition of the mark applied for. Therefore, as is apparent from paragraph 44 of the contested decision, those arguments are irrelevant in the context of the examination of the inherent distinctive character of that mark and can be examined only in the context of the examination of distinctive character acquired through use which is not the subject of the present dispute.
61 Thus, the applicant cannot validly claim that the Board of Appeal erred in finding that the mark applied for lacked distinctive character on account of the failure to take into account the probable or likely method of use of that mark.
62 Therefore, the applicant’s argument relating to the errors of the Board of Appeal regarding the application of the judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas?) (C‑541/18, EU:C:2019:725), must be rejected.
63 Second, the applicant complains that the Board of Appeal applied too strict a standard when assessing the distinctive character of the mark applied for, because it ‘searched for an additional element’, specifically ‘a creative element’, whereas a sign does not have to be new, original or creative in order to be considered to have a distinctive character.
64 As EUIPO contends, that argument is based on a misreading of the contested decision. It is apparent from that decision that, in accordance with the case-law cited in paragraph 49 above, the Board of Appeal sought to establish if the mark applied for, apart from its promotional function, was capable of indicating the commercial origin of the goods which it covered. As is apparent from that case-law, a certain originality or resonance could, inter alia, be an indicator of the distinctive character of a sign, which justifies account being taken of those criteria by the Board of Appeal.
65 The applicant cannot therefore criticise the Board of Appeal for having applied too strict a standard for the sign at issue to be registrable as an EU trade mark.
66 Therefore, the applicant’s argument concerning the standard applied by the Board of Appeal in its analysis of the distinctive character of the sign must be rejected.
67 It follows from the foregoing that the mark applied for is devoid of any distinctive character in respect of the goods at issue and that the Board of Appeal was right to refuse its registration on the basis of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
68 Consequently, the first plea in law must be rejected as unfounded.
The second plea, alleging infringement of the general principles of legal certainty, equal treatment and sound administration
69 In support of its second plea, the applicant criticises the Board of Appeal for having infringed the general principles of legal certainty, equal treatment and sound administration. First, the applicant submits that that Board of Appeal did not take into account, without providing explanations in that regard, the registration of the American mark FUCKING AWESOME which is considered to have distinctive character in the eyes of the English-speaking public in the United States. Second, according to the applicant, the Board of Appeal should also have taken into account the registration of several EU trade marks which are comparable to the mark applied for. In that regard, the applicant also refers to the judgments delivered by the Courts of the European Union in which certain signs which were the subject of earlier registrations were considered to be laudatory, but having, at the same time, sufficient distinctive character to be registered.
70 EUIPO contends that the applicant’s arguments should be rejected.
71 In the present case, first, as regards the registration of the American mark FUCKING AWESOME, it must be borne in mind that, according to settled case-law, the EU trade mark regime is an autonomous legal system which pursues objectives peculiar to it; it applies independently of any national system. Consequently, the registrability or protectability of a sign as an EU mark must be assessed by reference only to the relevant EU rules. Accordingly, EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign at issue is registrable as a national mark (see judgment of 20 October 2021, Square v EUIPO ($Cash App), T‑210/20, not published, EU:T:2021:711, paragraph 95 and the case-law cited).
72 Therefore, the applicant cannot criticise the Board of Appeal for not having taken into account, for the purposes of assessing the registrability of the sign at issue, the American mark FUCKING AWESOME and for failing to provide explanations in that regard in the contested decision.
73 Second, as regards the registrations previously made with EUIPO which, according to the applicant, are comparable to the mark applied for, it should be borne in mind that, according to the case-law, the legality of the decisions of the Board of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice of EUIPO, which cannot, in any event, bind the Courts of the European Union (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and of 10 September 2015, Laverana v OHIM (BIO PROTEINREICHER PFLANZENKOMPLEX AUS EIGENER HERSTELLUNG), T‑571/14, not published, EU:T:2015:626, paragraph 22).
74 It is true 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. In the light of those two principles, EUIPO must, when examining an application for registration of a EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 and 74 and the case-law cited).
75 That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from 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 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 77 and the case-law cited).
76 In the present case, the mark applied for is caught by one of the grounds for refusal set out in Article 7(1) of Regulation 2017/1001. In so far as it was held in paragraph 67 above that the Board of Appeal was right to find that the registration of the mark applied for was incompatible with that regulation, the applicant cannot successfully rely on EUIPO’s previous decision-making practice in order to invalidate that finding.
77 Third, as regards the applicant’s references to several judgments delivered by the Courts of the European Union, it must be pointed out, as observed by EUIPO, that the applicant does not put forward clear and detailed arguments as to why the conclusions reached in those judgments are relevant to the present case. By contrast, those judgments concern signs which differ in various aspects from the sign in the present case, such as the structure, elements, characteristics, concepts conveyed and the connection with the respective goods or services. Thus, the findings of the General Court concerning other signs relied on by the applicant are not directly applicable to the present case and cannot imply that the contested decision is unlawful.
78 Next, the applicant cannot criticise the Board of Appeal for not having followed the more general approach put forward by the judgments referred to in paragraph 77 above, according to which the distinctive character of a sign is not to be excluded on the sole ground that it conveys a certain promotional message, without having verified whether that advertising message could have distinctive character. Contrary to what the applicant claims, the Board of Appeal carried out such a verification, at the end of which it found that, apart from the promotional message, the sign at issue did not contain any element which could enable it to fulfil the function of indicating the commercial origin of the goods at issue.
79 Therefore, the applicant’s references to the judgments of the General Court cannot establish that the contested decision is unlawful.
80 Consequently, the second plea and the action in its entirety must be rejected.
Costs
81 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.
82 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 (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders FA World Entertainment Inc. to pay the costs.
Delivered in open court in Luxembourg on 15 March 2023.