JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
26 June 2019 (*)
(EU trade mark – Applications for the EU word marks 200 PANORAMICZNYCH, 300 PANORAMICZNYCH, 400 PANORAMICZNYCH, 500 PANORAMICZNYCH and 1000 PANORAMICZNYCH – Absolute grounds for refusal – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001 – No distinctive character acquired through use – Article 7(3) of Regulation 2017/1001 – No misuse of powers)
In Joined Cases T‑117/18 to T‑121/18,
Agencja Wydawnicza Technopol sp. z o. o., established in Częstochowa (Poland), represented by C. Rogula, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Walicka, acting as Agent,
defendant,
ACTIONS brought against five decisions of the Fifth Board of Appeal of EUIPO of 15 December 2017 (Cases R 2194/2016-5, R 2195/2016-5, R 2200/2016-5, R 2201/2016-5 and R 2208/2016-5), regarding applications for registration of the word signs 200 PANORAMICZNYCH, 300 PANORAMICZNYCH, 400 PANORAMICZNYCH, 500 PANORAMICZNYCH and 1000 PANORAMICZNYCH as EU trade marks,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins, President, R. Barents and J. Passer (Rapporteur), Judges,
Registrar: E. Hendrix, Administrator,
having regard to the applications lodged at the Court Registry on 20 February 2018,
having regard to the responses lodged at the Court Registry on 4 July 2018,
having regard to the decision of 5 October 2018 joining Cases T‑117/18 to T‑121/18 for the purposes of the oral part of the procedure and of the decision which closes the proceedings,
further to the hearing on 5 December 2018,
gives the following
Judgment
Background to the dispute
1 On 1 April 2016, the applicant, Agencja Wydawnicza Technopol sp. z o. o., filed five applications for registration of EU trade marks 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), as amended (replaced by 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)).
2 Registration as a mark was sought for each of the word signs 200 PANORAMICZNYCH, 300 PANORAMICZNYCH, 400 PANORAMICZNYCH, 500 PANORAMICZNYCH and 1000 PANORAMICZNYCH.
3 The goods in respect of which registration was sought are in Class 16 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: ‘Magazines [periodicals]’.
4 By letters of 2 and 3 May 2016, the examiner informed the applicant that the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001) precluded registration of the marks applied for. In that regard, it found that the term ‘panoramicznych’ (panoramics) referred to a type of crossword for the Polish-speaking public and that the signs indicated that the magazines contained, respectively, 200, 300, 400, 500 and 1000 panoramic crosswords [Swedish-style crosswords].
5 By letters of 28 and 30 June 2016, the applicant submitted observations and provided evidence seeking to establish that the term ‘panoramicznych’ (panoramics) did not refer, in Polish, to a type of crossword and that, in any event, the marks applied for had acquired secondary distinctiveness.
6 By five decisions of 29 September 2016, the examiner maintained his position and refused to register the marks applied for in respect of ‘magazines [periodicals]’ on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009.
7 On 27 November 2016, the applicant filed a notice of appeal against each of the examiner’s decisions, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001). On 29 and 30 January 2017, the applicant filed statements setting out the grounds of its appeals.
8 On 16 May 2017, the Board of Appeal sent a letter to the applicant, pursuant to Article 63 of Regulation No 207/2009 (now Article 70 of Regulation 2017/1001), requesting that it file its observations regarding the details of applications and invalidity proceedings in Poland, in so far as they concerned marks that were identical to the marks applied for.
9 By letters of 26 June and 18 August 2017, the applicant submitted its observations to the Board of Appeal.
10 On 17 October 2017, the Board of Appeal informed the applicant that the documents that it had submitted did not concern the use of the word signs as marks, but their descriptive function, and that it could not be held that those signs had acquired secondary distinctiveness.
11 By letter of 17 November 2017, the applicant provided additional information on national proceedings relating to national trade marks that are identical to the marks applied for and on the question of secondary distinctiveness.
12 By five decisions of 15 December 2017 (taken together ‘the contested decisions’), the Fifth Board of Appeal dismissed the appeals on the grounds that the marks applied for were descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 and that the evidence provided by the applicant did not prove that the marks applied for had acquired distinctive character through use, under Article 7(3) of that regulation.
13 In the first place, in its assessment of the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001, the Board of Appeal found, in paragraphs 21 and 22 of the contested decisions, that, as the marks applied for contained a Polish word, the relevant public was the Polish-speaking public and that it consisted of the average consumer whose level of attention was that of a relatively well-informed, observant and circumspect average consumer. It stated, in paragraph 24 of the contested decisions, that the Polish term ‘panoramicznych’ (meaning ‘panoramics’), which is the genitive plural of the term ‘panoramiczna’ (panoramic), designated, inter alia, a type of crossword. It found, in essence, in paragraphs 26 and 31 of the contested decisions, that the meaning of the signs at issue was descriptive of the ‘magazines [periodicals]’, since the numerals 200, 300, 400, 500 or 1000 conveyed information regarding the number of crosswords contained in the magazines, which the relevant public would perceive immediately and without further thought, even though the term ‘crosswords’ was not in the marks applied for. The Board of Appeal considered, in paragraphs 28 and 32 to 34 of the contested decisions, that the descriptiveness of the marks applied for could not be called into question by the evidence provided by the applicant, such as the linguistic opinions, and that the registration of those marks as magazine titles did not make it possible to conclude that they had distinctive character. Moreover, the Board of Appeal added, in paragraphs 35 and 36 of the contested decisions, that that finding was not invalidated by EUIPO’s previous decision-making practice relating to the registration of marks containing numerals.
14 Furthermore, the Board of Appeal stated, in paragraphs 37 and 41 of the contested decisions, that the decisions of the Polish authorities relating to the word signs 100 PANORAMICZNYCH, 200 PANORAMICZNYCH and 300 PANORAMICZNYCH and the decisions of the Polish courts relating, in particular, to the figurative signs including the elements ‘100 panoramicznych’, ‘300 panoramicznych’ and ‘500 panoramicznych’ confirmed that the applicant’s signs containing numerals did not have distinctive character.
15 In the second place, the Board of Appeal found that the marks applied for had not acquired distinctive character through use for the purposes of Article 7(3) of Regulation 2017/1001. In essence, it found, in paragraphs 46 to 55 of the contested decisions, that the evidence provided by the applicant, such as the public opinion surveys, letters from a press distributor regarding sales, statements of advertising expenditure and invoices for intensive promotion and advertising, did not prove that the relevant public would perceive the signs as an indication of commercial origin rather than as descriptive information regarding the content of the magazines. Furthermore, the Board of Appeal found, in paragraphs 56 to 61 of the contested decisions, that the magazine covers provided by the applicant showed that the marks applied for had consistently been promoted in a specific graphic form, that they were used in those magazines as information about their content, not as an indication of their commercial origin, and that, on the contrary, the company name TECHNOPOL, which is part of the figurative sign appearing on those covers, was the indication of commercial origin. Consequently, the Board of Appeal concluded, in paragraph 65 of the contested decisions that, regardless of the popularity of the applicant’s series of magazines whose titles contain numerals, those magazines could not be found to have acquired distinctive character through use for the purposes of Article 7(3) of Regulation 2017/1001.
Forms of order sought
16 The applicant claims that the Court should:
– alter the contested decisions by upholding the appeals and registering the marks applied for on the ground that the word signs do not meet the conditions laid down in Article 7(1)(b) and (c) of Regulation 2017/1001 and/or that the marks applied for have acquired distinctive character through use for the purposes of Article 7(3) of Regulation 2017/1001;
– in the alternative, annul the contested decisions and request that EUIPO review the applications for registration on the ground that the word signs do not meet the conditions laid down in Article 7(1)(b) and (c) of Regulation 2017/1001 and/or that the marks applied for have acquired distinctive character through use for the purposes of Article 7(3) of Regulation 2017/1001;
– order EUIPO to pay the costs.
17 EUIPO contends that the Court should:
– dismiss the actions;
– order the applicant to pay the costs.
Law
Admissibility of certain documents produced for the first time before the General Court
18 EUIPO raises a plea of inadmissibility on the ground that the documents in Annexes A.7 and A.8 to the applications were produced by the applicant for the first time before the Court. At the hearing, EUIPO also submitted that Annex A.23 to the applications was inadmissible on the same ground.
19 It is settled case-law that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be rejected without it being necessary to assess their probative value (see judgments of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited, and of 12 March 2014, Tubes Radiatori v OHIM – Antrax It (Radiator), T‑315/12, not published, EU:T:2014:115, paragraph 27 and the case-law cited).
20 In the present case, it is in the first plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001, and in the fifth plea, alleging infringement of Article 7(3) of that regulation, that the applicant refers, first, to Annex A.7, showing a screenshot of the encyclopaedia website Wikipedia, and Annex A.8 to the applications, showing the ‘Panorama dnia’ page of the website ‘https://szarada.net’, which has daily crossword puzzles and, secondly, to Annex A.23 relating to a DVD containing a video recording of a study conducted among students in Warsaw (Poland) and a video recording showing a clip of the Polish television programme Śmiechu Warte.
21 At the hearing, the applicant did not dispute that those documents had not been produced during the administrative procedure before the adjudicating bodies of EUIPO.
22 Furthermore, the applicant likewise referred for the first time to Annex A.22, relating to a document entitled ‘Analysis and opinion [of Professor F.] on the distinctive character of numerals’, in the fifth plea.
23 Since the refusal of registration is based on the descriptiveness of the marks applied for, for the purposes of Article 7(1)(c) of Regulation 2017/1001, and the lack of distinctive character acquired through use, within the meaning of Article 7(3) of Regulation 2017/1001, it must be stated that the applicant had the opportunity to submit evidence during the administrative procedure before the adjudicating bodies of EUIPO (see paragraphs 5 and 9 to 11 above). It follows that the applicant’s argument that the additional annexes submitted with the applications were ‘perfectly justified because they [were] necessary to prove or illustrate the content of the action and rebut the Board of Appeal’s unsubstantiated allegations, which were made only in [the contested decisions]’, cannot succeed.
24 Consequently, Annexes A.7, A.8, A.22 and A.23 must be rejected as inadmissible.
Substance
25 In support of the actions, the applicant raises twelve pleas in law which may be grouped as follows. In the first place, in the first and second pleas, it alleges infringement of Article 7(1)(c) of Regulation 2017/1001. In the second place, in the third and fifth pleas, it alleges infringement of Article 7(3) of Regulation 2017/1001. In the third place, in the fourth and seventh pleas, it alleges a misuse of powers relating, respectively, to EUIPO’s registration of other signs containing numerals and to the fact that the Board of Appeal infringed the principle that the trade mark protection system is an autonomous system. In the fourth place, in the sixth and eighth to twelfth pleas in law, the applicant alleges, first, a misuse of powers, in that the Board of Appeal restricted the applicant’s freedom to choose the type of protection, secondly, infringement of Article 118 TFEU and a misuse of powers, in that the Board of Appeal deprived the applicant of an effective protection measure, thirdly, infringement of Article 4(a) of Regulation 2017/1001, in that the Board of Appeal distinguished the goods of one undertaking from those of another undertaking without taking market realities into account, fourthly, infringement of Article 4 of Regulation 2017/1001, in that the Board of Appeal did not correctly interpret the concept of graphic representation of the word mark, fifthly, a misuse of powers and infringement of essential procedural requirements, in that the Board of Appeal imposed unlawful conditions requiring new evidence and, sixthly, infringement of Article 36 TFEU and Article 14 of Regulation 2017/1001, in that the Board of Appeal did not correctly interpret the exclusivity granted by the registration of the trade mark.
The first and second pleas, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
26 First, the applicant submits that the Board of Appeal erred in its assessment as regards the identification of the relevant public, in so far as, contrary to the EUIPO examination guidelines, it considered the relevant public to be the average consumer of games magazines, not the average consumer of magazines in general, who is not necessarily interested in games magazines. The applicant adds that the average consumer who is relatively well informed and reasonably observant and circumspect, and reads magazines in general, does not necessarily have any knowledge of magazines containing crosswords.
27 Secondly, the applicant submits, in essence, that the evidence on which the Board of Appeal based its interpretation of the word ‘panoramiczna’ (panoramic), such as the website of the encyclopaedia Wikipedia and a crossword website, do not constitute reliable sources and that the probative value attached to them by the Board of the Appeal is not in line with the EUIPO examination guidelines on the examination of EU trade marks.
28 Thirdly, the applicant claims that, in any event, the Board of Appeal made an ‘incorrect, selective and partial’ assessment of the meaning of the marks applied for. Indeed, according to the applicant, the Board of Appeal defined not the word ‘panoramiczny’ (panoramics), but the expression ‘krzyżówka panoramiczna’ (panoramic crosswords) to conclude that those marks were descriptive. In that regard, the applicant claims that it deliberately omitted the Polish term ‘krzyżówki’ (crosswords) in order to confer fanciful character on the signs at issue that could have several meanings. It asserts that, by finding that the word ‘panoramiczny’ (panoramics) referred directly to crosswords and not to magazines, the Board of Appeal made an assessment of the evidence that was selective and lacked objectivity, and resulted in an incorrect analysis and an a priori conclusion, thus disregarding the linguistic opinions and opinions on games that the applicant provided. The applicant submits that the signs at issue do not contain clear information on the content of the magazines. In that regard, it claims that the term ‘panorama’ has multiple meanings and that it does not relate to crosswords (krzyżówka), with the result that the signs at issue contain a fanciful term and provoke reflection without indicating directly, specifically and clearly the content of the magazines. Moreover, the applicant states that there are a number of magazines whose titles are linked to their content, without that link being clear or direct, some of which contain the word ‘panorama’.
29 EUIPO disputes the applicant’s arguments.
30 Under Article 7(1)(c) of Regulation 2017/1001, 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 may not be registered. By prohibiting the registration as EU trade marks of such signs and indications, Article 7(1)(c) of Regulation 2017/1001 pursues an aim which is in the public interest, namely, that descriptive signs or indications 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 (see judgment of 10 February 2010, O2 (Germany) v OHIM (Homezone), T‑344/07, EU:T:2010:35, paragraphs 18 and 20 and the case-law cited).
31 Moreover, it follows from Article 7(2) of Regulation 2017/1001 that it is sufficient that the grounds for refusal obtain in only part of the European Union. Therefore, a sign is to be refused registration where it is descriptive in the language of one Member State, even if it is registrable in another Member State (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 40).
32 For a sign to fall within the scope of the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (see judgments of 12 June 2007, MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, not published, EU:T:2007:172, paragraph 29 and the case-law cited, and of 27 April 2016, Niagara Bottling v EUIPO (NIAGARA), T‑89/15, not published, EU:T:2016:244, paragraph 14 and the case-law cited).
33 In that regard, the fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in that provision are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Accordingly, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation 2017/1001 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 24 April 2012, Leifheit v OHIM (EcoPerfect), T‑328/11, not published, EU:T:2012:197, paragraph 16 and the case-law cited).
34 Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, pursuant to Article 7(1)(c) of Regulation 2017/1001, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (see judgment of 17 December 2015, Olympus Medical Systems v OHIM (3D), T‑79/15, not published, EU:T:2015:999, paragraph 17 and the case-law cited).
35 For EUIPO to refuse registration of a trade mark on the basis of Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications composing the mark referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (see judgment of 17 November 2016, Vince v EUIPO (ELECTRIC HIGHWAY), T‑315/15, not published, EU:T:2016:667, paragraph 31 and the case-law cited).
36 A word sign must already be refused registration if at least one of its possible meanings designates a characteristic of the goods or services at issue (see judgment of 23 September 2015, Mechadyne International v OHIM (FlexValve), T‑588/14, not published, EU:T:2015:676, paragraph 38 and the case-law cited).
37 Lastly, the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, second, by reference to the goods or services concerned (judgment of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38).
38 The applicant’s first and second pleas must be examined in the light of those principles.
39 In the first place, as regards the definition of the relevant public, it should be noted that, in paragraph 22 of the contested decisions and without, moreover, being challenged by the applicant, the Board of Appeal found that the relevant public was the Polish-speaking public, on the ground that the signs at issue were composed of a Polish word, namely ‘panoramicznych’ (panoramics). Moreover, contrary to what the applicant claims, the Board of Appeal did not commit an error of assessment in finding, in paragraph 21 of the contested decisions, that the ‘magazines [periodicals]’ were aimed at average consumers and that the relevant public’s level of attention was that of an average consumer who is relatively well informed and reasonably observant and circumspect.
40 The applicant’s argument that the grounds of the contested decisions conflict with the judgment of 29 April 2004, Procter & Gamble v OHIM (C‑473/01 P and C‑474/01 P, EU:C:2004:260, paragraph 33) cannot succeed. In that regard, although the Board of Appeal found that the average consumer was relatively well informed, rather than reasonably well informed, it did not conclude therefrom that the consumer’s level of attention should be given a different interpretation.
41 Moreover, even if the wording used by the Board of Appeal in the second sentence of paragraph 21 of the contested decisions were to be given a different interpretation, it is sufficient to recall that the level of attention of an average consumer, who is reasonably well informed and reasonably observant and circumspect, is likely to vary according to the category of goods or services in question (see judgment of 9 December 2010, Fédération internationale des logis v OHIM (Shade of brown), T‑329/09, not published, EU:T:2010:510, paragraph 20 and the case-law cited).
42 Furthermore, it should be recalled that, according to the settled case-law of the Court, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 49 and the case-law cited).
43 In the second place, it must be noted that each of the signs is composed of a numeral, namely 200, 300, 400, 500 or 1000, followed by the word element ‘panoramicznych’ (panoramics).
44 As regards the numeral included in each of the signs, it has previously been held that, where an application for registration refers, in particular, to a category of goods the content of which is easily and typically designated by the numeral indicating the number of units they contain, it is reasonable to believe that a sign composed of numerals will actually be recognised by the relevant class of persons as a description of that quantity, and therefore as a characteristic of those goods (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 56). That is manifestly the case here, without, moreover, that meaning being disputed by the applicant.
45 As regards the meaning of the word element ‘panoramicznych’, the Board of Appeal stated, in paragraphs 24 and 26 of the contested decisions, that the word ‘panoramicznych’ (panoramics) was the genitive plural of the term ‘panoramiczna’ (panoramic), deriving from the word ‘panorama’, and that the word ‘panoramic’ designated, inter alia, a type of crossword, with the result that, in so far as the goods in question are concerned, the marks applied for conveyed clear information as to the contents of a magazine (200, 300, 400, 500 or 1000 panoramic [Swedish-style] crosswords).
46 None of the applicant’s arguments can call that finding into question.
47 In so far as the applicant claims that, in relying on evidence in the form of electronic sources in order to determine the meaning of the word element ‘panoramicznych’ (panoramics), EUIPO did not follow the EUIPO examination guidelines, it should be recalled that, although the EUIPO examination guidelines lack binding force, they constitute both a reference source on EUIPO’s practice in respect of trade marks and a consolidated set of rules setting out the line of conduct which EUIPO itself proposes to adopt, with the result that, provided that those rules are consistent with legal provisions of higher authority, they constitute a self-imposed restriction on EUIPO, namely that of compliance with the rules which it has itself laid down (see judgment of 18 September 2015, Federación Nacional de Cafeteros de Colombia v OHIM – Hautrive (COLOMBIANO HOUSE), T‑387/13, not published, EU:T:2015:647, paragraphs 45 and 46 and the case-law cited).
48 However, first of all, it is clear from the text cited by the applicant itself that the version of the EUIPO examination guidelines which entered into force on 1 February 2014 did not restrict the possibility of using an internet search as evidence of a descriptive meaning only for new terms or slang words. Part B, Section 4, Chapter 4 of the EUIPO examination guidelines stated that ‘an internet search is also a valid means of evidence for the descriptive meaning, in particular for new terms or slang words’, but did not exclude the possibility of an internet search in other cases.
49 Moreover, and in any event, it should be noted that, in the version which entered into force on 1 October 2017, that wording was amended as follows: ‘an internet search is also a valid means of evidence for the descriptive meaning, in particular for new terms, technical jargon or slang words’. While it is true that the word ‘panoramic’ is not new, the other sources to which the Board of Appeal referred in the contested decisions demonstrate that, in the field of word puzzles, that word does indeed fall within the category of technical jargon. There is therefore no inconsistency with the EUIPO examination guidelines.
50 Lastly, it should be noted that, in any event, the Board of Appeal did not rely exclusively on the two sources of information mentioned by the applicant, namely the website of the encyclopaedia Wikipedia and the website ‘krzyzowki.net’ to assess the meaning of the word element ‘panoramicznych’ (panoramics). The Board of Appeal adopted the other evidence put forward in the grounds of the examiner’s decisions of 29 September 2016, and expressly referred to that evidence in paragraph 24 of the contested decisions, also making reference to various publications in the field of word puzzles, such as the Dictionary of terms for word puzzles and similar puzzles (1994), the Dictionary of word puzzle exercises, published on the internet, the Vademecum of professional word puzzles (1988) and a publication entitled Advice of a word puzzle professional. How to solve and devise intellectual exercises (1968).
51 Moreover, the applicant’s argument that the Board of Appeal failed to examine the linguistic opinions and the opinions on word puzzles must also be rejected, since they were expressly taken into account in paragraphs 28 and 29 of the contested decisions when examining the meaning of the word element ‘panoramicznych’ (panoramics). In its analysis of the opinions on word puzzles submitted by the applicant, the Board of Appeal stated that it was clear from those opinions that, as part of the expression ‘panoramic crosswords’, the term ‘panoramic’ designated a type of crossword. As observed by EUIPO, that finding is corroborated by the applicant since it states that it deliberately omitted the term ‘crosswords’ in order to confer fanciful character on the signs at issue. Therefore, the applicant’s argument that that term does not designate any kind of crossword and that the Board of Appeal was in fact referring to the meaning of the expression ‘krzyżówka panoramiczna’ must be rejected as unfounded.
52 Furthermore, it should be recalled that, according to the case-law cited in paragraph 36 above, a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services at issue. Consequently, the fact that the word ‘panoramics’ can have other meanings is, in this case, irrelevant to the Board of Appeal’s assessment.
53 In that context, it is also irrelevant that the Board of Appeal might have made an error when it cited, in paragraph 29 of the contested decisions, the definition of the word ‘panorama’ as it appears in the letter from the Rada Języka Polskiego Polskiej Akademii Nauk (Polish Language Council of the Polish Academy of Science) of 11 February 2002, which, according to the Board of Appeal, defines the word ‘panorama’ as follows: ‘1. a wide view, usually seen from a place high above it; also: a drawing, photograph, etc. showing that view; 2. a comprehensive presentation of a topic in a literary work or film; 3. a large fresco, usually depicting a battle, painted on the inside wall of a circular building; also: a building housing such a fresco’, whereas, according to the applicant, that definition is as follows: ‘2. A comprehensive presentation of a topic in a book, film, article, etc. …’. It is clear that, in both cases, that definition covers the other meanings, as mentioned in paragraph 52 above.
54 Moreover, as regards the other evidence, the Board of Appeal’s conclusion on the meaning of the word ‘panoramicznych’ cannot be called into question by one item of evidence in isolation, namely the opinion of the President of the Polish Gamers’ Association, according to which ‘the terms currently used in print, such as panorama, panoramiczne, panoramix are the fruit of editors’ creative imagination with reference to magazine names/titles, not game terminology’. Furthermore, that opinion is contradicted by the applicant itself, in so far as it submits that, on the website ‘https://szarada.net’, the word ‘panorama’, from which ‘panoramicznych’ is derived, is used to refer to a type of crossword.
55 It follows that the Board of Appeal was fully entitled to find, in paragraphs 24 and 26 of the contested decisions, that the term ‘panoramicznych’ referred, inter alia, to a type of crossword, and that its combination with a numeral designated a number of panoramic [Swedish-style] crosswords.
56 It must therefore be held that the Board of Appeal was right to conclude that, in the overall impression produced by the signs at issue, the relevant public, in particular crossword magazine readers, would, immediately and without further thought, perceive the combination of the element ‘200’, ‘300’, ‘400’, ‘500’ or ‘1000’ and the word element ‘panoramicznych’ as a reference, in one of its possible meanings, to a number of panoramic [Swedish-style] crosswords.
57 Furthermore, it should be borne in mind that a trade mark cannot be registered for a group of products, in this case ‘magazines [periodicals]’, if it is descriptive in relation to a part of those products constituting their non-distinct subgroup, namely magazines containing a number of crosswords (see, to that effect, judgment of 7 June 2001, DKV v OHIM (EuroHealth), T‑359/99, EU:T:2001:151, paragraph 33].
58 The same conclusion must be reached where, as in the present case, the marks applied for can be regarded as descriptive only for consumers of a non-distinct subgroup.
59 In view of all the foregoing, the first and second pleas must be rejected.
The third and fifth pleas, alleging, in essence, infringement of Article 7(3) of Regulation 2017/1001
60 In the third and fifth pleas, the applicant submits that the marks applied for have acquired ‘secondary distinctiveness through intensive and prolonged use’.
61 First, according to the applicant, this is corroborated by the document ‘Analysis and opinion [of Professor F.] on the distinctive character of numerals’ and by a study conducted among students.
62 Secondly, the marks applied for have a reputation in the light of the fact that they have been in use for more than 20 years, as is proven by the registration date of the magazine titles. Therefore, the relevant public is accustomed to making the connection between those slogans and the crosswords published by the applicant, which also makes it possible for that public to identify the commercial origin of the goods designated.
63 In that regard, the applicant submits that, in so far as the marks applied for are magazine titles protected against the registration of other magazines with the same title, that is equivalent to those signs being used by a single trader, in this case the applicant itself. It is clear from the judgment of 18 June 2002, Philips (C‑299/99, EU:C:2002:377), that the use of a sign by a single trader can be sufficient to confer secondary distinctiveness on that sign.
64 Thirdly, the secondary distinctiveness of the marks applied for is also demonstrated by the evidence relating to the applicant’s collaboration in the Polish television programme Śmiechu Warte, namely acknowledgements for the applicant’s collaboration, figures showing the popularity of the programme among Polish viewers and some invoices and a contract relating to the financing of the prizes given away during that programme and to the promotion of the signs at issue in that same context.
65 Fourthly, the secondary distinctiveness of the marks applied for is also demonstrated by the invoices for press, radio, television and billboard advertising.
66 Furthermore, it is necessary to take into account the specific way in which magazines, including crossword magazines, are sold, that is to say, the fact that, generally, the consumer communicates with the vendor only through a small window, and uses the word sign only phonetically to refer to the products he has chosen. Therefore, when choosing between the applicant’s products and those of other publishers, the consumer uses primarily the word signs at issue.
67 Moreover, the Board of Appeal was incorrect in stating, in paragraph 56 of the contested decisions, that the applicant had consistently promoted the marks applied for in a specific graphic form. First, the evidence relied on by the Board of Appeal itself demonstrates that the applicant also uses the word signs at issue on its website. Secondly, it is clear from the judgment of 7 July 2005, Nestlé (C‑353/03, EU:C:2005:432), that the presentation of the signs at issue in a graphic form precludes neither their use nor the fact that they have acquired secondary distinctiveness.
68 The Board of Appeal was also incorrect in finding that only the sign TECHNOPOL and the trade mark containing the word element ‘technopol’ constituted, in the present case, an indication of commercial origin. The Technopol logo is merely an indication of the quality of the goods at issue, which are distinguishable from competing goods both on account of their fanciful names and their reputation.
69 Moreover, by making the applicant subject to numerous requirements, including requirements regarding the submission of evidence, the Board of Appeal committed a significant abuse of powers and acted unlawfully. In that regard, in order to emphasise the lack of use of the signs at issue as trade marks, the Board of Appeal establishes a connection between inherent distinctiveness and secondary distinctiveness, which leads, in an unlawful manner, to negative consequences for the applicant.
70 Lastly, in the alternative, the applicant relies on Polish case-law, and in particular that of the Sąd Najwyższy (Supreme Court, Poland) which ruled, in its judgment of 21 February 2008 (No III CSK 264/07), that the signs on the magazines had acquired secondary distinctiveness.
71 EUIPO disputes the applicant’s arguments.
72 Under Article 7(3) of Regulation 2017/1001, the absolute grounds for refusal set out in Article 7(1)(b) and (c) of that regulation do not preclude the registration of a trade mark if that mark has become distinctive in relation to the goods and services for which registration is requested in consequence of the use which has been made of it.
73 According to settled case-law, Article 7(3) of Regulation 2017/1001 must be interpreted as meaning that a mark must have become distinctive through use before the application was filed. Accordingly, it is irrelevant that the mark has acquired distinctiveness through use after the application was filed but before EUIPO, in the person of the examiner or, as the case may be, the Board of Appeal, has determined whether there are any absolute grounds for refusing registration of that mark. It follows that EUIPO may not take account of any evidence of use relating to the period subsequent to the date of filing (see judgment of 21 November 2012, Getty Images v OHIM (PHOTOS.COM), T‑338/11, not published, EU:T:2012:614, paragraph 45 and the case-law cited; see also, to that effect, judgment of 11 June 2009, Imagination Technologies v OHIM, C‑542/07 P, EU:C:2009:362, paragraph 49). Accordingly, although the Court may take into account evidence which postdates the filing date of the application, this is subject to the condition that the evidence makes it possible to draw conclusions regarding the situation as it stood on that date (see judgment of 17 October 2017, Murka v EUIPO (SCATTER SLOTS), T‑704/16, not published, EU:T:2017:728, paragraph 75 and the case-law cited).
74 Furthermore, it is clear from case-law that the acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the goods or services concerned as originating from a particular undertaking because of the mark (judgments of 29 April 2004, Eurocermex v OHIM (Shape of a beer bottle), T‑399/02, EU:T:2004:120, paragraph 42; of 15 December 2005, BIC v OHIM (Shape of a lighter), T‑262/04, EU:T:2005:463, paragraph 61; and of 17 May 2011, Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), T‑7/10, not published, EU:T:2011:221, paragraph 42). However, the circumstances in which that requirement may be regarded as satisfied cannot be shown to exist solely by reference to general and abstract data (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 52, and of 17 May 2011, υγεία, T‑7/10, not published, EU:T:2011:221, paragraph 45).
75 The Court has stated that, in determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings (judgments of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 49; of 15 December 2005, Shape of a lighter, T‑262/04, EU:T:2005:463, paragraph 63; and of 17 May 2011, υγεία, T‑7/10, not published, EU:T:2011:221, paragraph 43).
76 In that regard, account must be taken of, inter alia, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons which, because of the mark, identifies the goods as originating from a particular undertaking; statements from chambers of commerce and industry or other trade and professional associations; and opinion polls (see judgment of 15 December 2005, Shape of a lighter, T‑262/04, EU:T:2005:463, paragraph 64 and the case-law cited, and judgment of 17 May 2011, υγεία, T‑7/10, not published, EU:T:2011:221, paragraph 44).
77 It is in the light of those considerations that it must be examined whether the Board of Appeal made an error of assessment in finding that the signs at issue had not acquired distinctive character through use, for the purposes of Article 7(3) of Regulation 2017/1001, before the application for registration was filed, namely on 1 April 2016, in accordance with the case-law cited in paragraph 73 above.
78 In that regard, it should be noted that the applicant submitted two categories of evidence, namely:
– public opinion polls and other documents relating to sales figures and to the popularity of the monthly magazines 100 PANORAMICZNYCH, 200 PANORAMICZNYCH, 300 PANORAMICZNYCH, 400 PANORAMICZNYCH, 500 PANORAMICZNYCH and 1000 PANORAMICZNYCH, and to the position of the latter on the word puzzles market in Poland;
– invoices and other documents relating to the advertising and promotion of those monthly magazines, including in the context of the applicant’s collaboration in the Polish television programme Śmiechu Warte.
79 It should also be recalled that Annexes A.22 and A.23 to the applications must be rejected as inadmissible in the present case for the reasons set out in paragraphs 18 to 24 above.
80 However, as regards the first category of evidence (see paragraph 78, first indent, above), of which the Board of Appeal’s assessment was, moreover, not disputed by the applicant, it must be held that the Board of Appeal was correct in finding, in paragraphs 48 to 54 of the contested decisions, that, although that evidence proved unequivocally that the applicant had been one of the biggest companies on the market for several years and that its monthly magazines were very popular with consumers, the evidence did not show that the signs at issue were perceived as an indication of commercial origin rather than as descriptive information on the content of those monthly magazines.
81 In that regard, it should be borne in mind that sales figures may be regarded only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as provided by declarations from professional associations or market studies (see judgment of 30 November 2017, Hanso Holding v EUIPO (REAL), T‑798/16, not published, EU:T:2017:854, paragraph 49 and the case-law cited).
82 Sales figures in themselves do not show that the public targeted by the goods at issue perceive the mark at issue as an indication of the commercial origin. Therefore, proof of distinctive character acquired through use cannot, as a rule, be furnished by the mere production of sales figures (see, to that effect, judgment of 30 November 2017, REAL, T‑798/16, not published, EU:T:2017:854, paragraph 50 and the case-law cited).
83 That is all the more so in the present case because the second category of evidence (see paragraph 78, second indent, above) does not include direct evidence of distinctive character acquired through use.
84 As regards, in the first place, the invoices and other documents relating to the applicant’s collaboration in the Polish television programme Śmiechu Warte, which was broadcast between 1994 and 2009 on Poland’s first television channel (TVP1), it should be noted, first, that the documents containing the acknowledgements for that collaboration and the figures demonstrating the popularity of that programme among Polish viewers fall, by their nature, within the same category as the first category of evidence.
85 Secondly, it must be stated that none of the signs in respect of which registration is sought appears on the invoices relating to the purchase, by the applicant, of camcorders that were given out as prizes in that television programme.
86 Thirdly, the same is true of the invoices relating to the applicant’s advertising which was broadcast on that programme. In addition, although those invoices mention, inter alia, the ‘broadcast of advertisements’ and the ‘broadcast of a 15/30-second “Technopol” promotional film’, they do not contain any indication of the content of those broadcasts. While it is true that the contract concluded between the applicant and Polish television in 2008 contains some details regarding the content of the applicant’s advertising on the television programme Śmiechu Warte, in that it indicates, inter alia, the wording used in that broadcast – the camcorders were financed by Technopol of Częstochowa, publisher of 100, 200, 300, 500 and 1000 panoramicznych crosswords – it should however be noted that, first, one of the signs in respect of which registration is sought, namely 400 PANORAMICZNYCH, is not mentioned in that wording, and secondly, it follows from paragraph 4(6) of that contract that it was concluded for the period from 3 March to 31 October 2008. Consequently, in so far as the applicant states that, according to paragraph 2(2) of that contract, the promotional film containing the wording cited above would be broadcast 52 times in the space of seven months during the period of validity of the contract and submits, on that basis, that ‘applied over a ten-year period, that criterion leads to the conclusion that the film was broadcast virtually a thousand times’, it must be held that, in the absence of contracts covering other periods, the applicant’s latter assertion is entirely unsubstantiated.
87 As regards, in the second place, the invoices relating to press, radio, television and billboard advertising, it should be noted that, although those invoices show the expenses incurred by the applicant for, inter alia, ‘advertising services’, ‘advertising placement’, ‘AMS advertising campaign’ and ‘promotion of [the applicant’s] crosswords’, the vast majority of the invoices at issue make no reference to the signs in respect of which registration is sought, let alone the content of the advertising or promotion requested.
88 In those circumstances, it must be concluded that, even if the second category of evidence shows that, for a number of years, the applicant spent significant sums on the promotion of its products, the majority of that evidence does not provide any information on the form and content of that promotion. Moreover, and above all, that category of evidence does not prove, in any event, that, as a result of that promotion, the relevant public perceives the signs at issue as an indication of commercial origin rather than a descriptive indication of the content of the magazines.
89 Nor can that conclusion be inferred from the mere fact that, following the registration in Poland of the signs at issue as magazine titles, those signs were reserved for use by a single trader, in this case the applicant. In that regard, it must be pointed out that, while it is true that the Court has held that extensive use of a sign which consists of the shape of those goods may be sufficient to give the sign a distinctive character, it added that that may be sufficient where a trader has been the only supplier of particular goods to the market, and in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associates that shape with that trader and no other undertaking, or believes that goods of that shape come from that trader (judgment of 18 June 2002, Philips, C‑299/99, EU:C:2002:377, paragraph 65). Those circumstances have not been proven to exist by the evidence produced by the applicant in the present case. Furthermore, the applicant is not the only supplier of magazines containing crosswords on the Polish market.
90 Moreover, as regards the document ‘Analysis and opinion [of Professor F.] on the distinctive character of numerals’, according to which ‘in the minds of consumers, whether they read crossword magazines or not, the use of a numeral to designate a magazine containing crosswords evokes only [the applicant]’, and according to which ‘consumers are well aware that crossword magazines with the numeral 100, 200, 300, 400, 500 or 1000 on the cover come from that publishing house’, a document which must, moreover, be rejected as inadmissible in the present cases (see paragraphs 18 to 24 above), it should be noted that, in addition to the fact that that document does not concern the signs in respect of which registration is sought in the present case, the document is not in any event sufficient, in the absence of other evidence, to demonstrate the secondary distinctiveness of those signs.
91 It follows that, although the applicant is correct in claiming that the acquisition of distinctive character may result both from the use, as part of a registered trade mark, of a component thereof and from the use of a separate mark in conjunction with a registered trade mark (see judgment of 18 April 2013, Colloseum Holding, C‑12/12, EU:C:2013:253, paragraph 27 and the case-law cited), and that the presentation of the signs at issue in the form indicated in paragraph 40 of the contested decisions, that is to say, as word elements of the figurative marks 100 PANORAMICZNYCH, 300 PANORAMICZNYCH or 500 PANORAMICZNYCH, therefore does not actually preclude use of the signs in respect of which registration was sought, the Board of Appeal was nevertheless fully entitled to find that, based on the evidence provided by the applicant, it was not possible to conclude that those signs had acquired distinctive character as a result of the use made of them.
92 In that regard, the Court has stated, moreover, that in both the cases set out in paragraph 91 above, it was important that, in consequence of such use, the relevant class of persons actually perceive the goods or service, designated exclusively by the mark in respect of which registration was sought, as originating from a given undertaking (see judgment of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraph 64 and the case-law cited).
93 Accordingly, regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition is that, as a consequence of that use, the sign for which registration as a trade mark is sought may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking (see judgment of 16 September 2015, Société des Produits Nestlé, C‑215/14, EU:C:2015:604, paragraph 65 and the case-law cited).
94 However, the applicant has in fact been unable to prove that that fundamental condition was satisfied in the present case.
95 That assessment cannot be called into question by the applicant’s reference to the judgment of the Sąd Najwyższy (Supreme Court, Poland) of 21 February 2008 (No III CSK 264/07). In that regard, it is sufficient to point out that the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, and it applies independently of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules, so that EUIPO and, if appropriate, the Courts of the European Union are not bound by a decision given in a Member State that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) (see, to that effect, judgment of 6 March 2012, ThyssenKrupp Steel Europe v OHIM (Highprotect), T‑565/10, not published, EU:T:2012:107, paragraph 27 and the case-law cited).
96 In the light of the foregoing, the third and fifth pleas must therefore be rejected.
The fourth and seventh pleas, alleging a misuse of powers by the Board of Appeal in relation, respectively, to EUIPO’s registration of other signs containing numerals and to the Board of Appeal’s infringement of the principle that the trade mark protection system is an autonomous system
97 In the first place, the applicant submits that, in its previous decision-making practice, EUIPO has already registered trade marks containing words associated with Arabic numerals, particularly in the automotive, medicinal products, magazine and finance sectors, which, according to the applicant, proves that those trade marks had distinctive character at the time of their registration. In those circumstances, by asserting that it could not use a potential error made in other trade mark registration procedures as grounds for registering the marks applied for, the Board of Appeal committed a ‘manifest abuse of rights’.
98 In the second place, the applicant submits that the Board of Appeal infringed the principle that the EU trade mark protection system is an autonomous system, on the ground that it based its refusal to register the marks applied for on the decisions of the Urząd Patentowy Rzeczypospolitej Polskiej (Polish Patent Office) relating to the word signs 100 PANORAMICZNYCH, 200 PANORAMICZNYCH and 300 PANORAMICZNYCH.
99 According to the applicant, in the light of Regulation 2017/1001, the only tangible evidence in the present case is EUIPO’s registration, in favour of the applicant, of the EU word mark 100 PANORAMICZNYCH under number 3418639. The marks applied for belong to the same family of marks, both in terms of the word element and the figurative elements, and are promoted in conjunction with the abovementioned EU trade mark, which is the most important tangible point of reference, which fully justifies the registration of the marks applied for.
100 The applicant adds that the failure to take full account of the autonomous EU trade mark protection system has compelled it to resort to other means of protection that are insufficient, interchangeable and not aimed at protecting trade marks, such as those falling within the general provisions of civil law, press law, copyright law and the prohibition of unfair commercial practices vis-à-vis consumers and of offences relating to unfair competition.
101 EUIPO disputes the applicant’s arguments.
102 As a preliminary point, it should be borne in mind that, under Article 72(2) of Regulation 2017/1001, the General Court may annul or alter a decision of a Board of Appeal of EUIPO only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the TFEU, infringement of this Regulation or of any rule of law relating to their application or misuse of power’.
103 In that regard, it is settled case-law that a decision may amount to a misuse of powers only where it appears, on the basis of objective, relevant and consistent factors, to have been taken in order to achieve an end other than that stated (see judgment of 17 February 2017, Unilever v EUIPO – Technopharma (Fair & Lovely), T‑811/14, not published, EU:T:2017:98, paragraph 41 and the case-law cited).
104 Secondly, as regards the applicant’s argument relating to an infringement of the principle that the EU trade mark protection system is an autonomous system, it is true, according to that principle, that the EU trade mark system is an autonomous system with its own set of objectives and rules peculiar to it which applies independently of any national system and that, consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules (see, to that effect, judgment of 6 March 2012, Highprotect, T‑565/10, not published, EU:T:2012:107, paragraph 27 and the case-law cited).
105 Nevertheless, it is clear from case-law that, with that proviso, registrations already made in the Member States are a factor which, without being given decisive weight and without being binding on the Board of Appeal in circumstances in which it considers that the mark applied for is in conflict with the absolute grounds for refusal laid down in Regulation 2017/1001, may be taken into consideration for the purposes of registering an EU trade mark (see, to that effect, judgment of 6 March 2012, Highprotect, T‑565/10, not published, EU:T:2012:107, paragraph 28 and the case-law cited).
106 Likewise, and with the same proviso, where trade mark applications have been refused in the Member States, such refusals may also be taken into consideration.
107 In the present case, the Board of Appeal found, in paragraph 38 of the contested decisions, that the assessments made by the national courts was one of the essential elements, since the ground for refusal concerned the territory of Poland, and the registrability and distinctive character of signs that were identical or similar to the marks applied for had been the subject of several national proceedings. In that regard, in paragraphs 39 to 41 of the contested decisions, it found that the decisions of the Polish authorities relating to the word signs 100 PANORAMICZNYCH, 200 PANORAMICZNYCH and 300 PANORAMICZNYCH, and the decisions of the Polish courts relating inter alia to the figurative signs 100 PANORAMICZNYCH, 300 PANORAMICZNYCH and 500 PANORAMICZNYCH confirmed that the applicant’s signs containing numerals, like the marks applied for, did not have distinctive character.
108 That being the case, the Board of Appeal refused to register the marks applied for on the basis of Article 7(1)(c) of Regulation 2017/1001, in so far as the signs were descriptive of ‘magazines [periodicals]’, and on the basis of Article 7(3) of Regulation 2017/1001, in so far as those marks had not acquired distinctive character through use.
109 It follows that although, in accordance with the case-law cited in paragraph 105 above, the Board of Appeal took into consideration the national decisions referred to in paragraph 107 above, it did not infringe the principle of autonomy laid down in the case-law cited in paragraph 104 above.
110 As regards the applicant’s argument relating to EUIPO’s registration of other signs containing numerals, it must be recalled that EUIPO is required 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, and that, in the light of those two principles, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with particular 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).
111 That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 75).
112 Consequently, a person who files an application for registration of a sign as a 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 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 76 and the case-law cited).
113 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 a 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, paragraph 77 and the case-law cited).
114 In addition, it should be borne in mind that 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 Courts of the European Union, and not on the basis of a previous decision-making practice of EUIPO which cannot, in any event, bind those Courts (see, to that effect, judgment of 2 June 2016, Revolution v EUIPO (REVOLUTION), T‑654/14, not published, EU:T:2016:334, paragraph 57 and the case-law cited).
115 In the present case, it has become apparent that, contrary to what may have been the position with regard to certain earlier applications for registration of signs composed of or containing numerals as trade marks, the applications for registration were caught, with regard to the goods in respect of which registration was sought and the relevant public’s perception, by one of the grounds for refusal set out in Article 7(1) of Regulation 2017/1001.
116 In those circumstances, the Board of Appeal was entitled to find, in paragraph 35 of the contested decisions, that, in the light of the conclusion which it had already reached in the preceding paragraphs of those decisions, to the effect that registration of the signs at issue as trade marks for the goods referred to in the applicant’s applications for registration was incompatible with Regulation 2017/1001, EUIPO’s previous registration of signs containing numerals did not constitute an argument capable of justifying the registration of the signs at issue.
117 It is true that, although the contested decisions take into account EUIPO’s earlier registration of marks containing numerals, neither the examiner’s decisions nor the contested decisions contain any grounds relating to the EU word mark 100 PANORAMICZNYCH, which was filed with EUIPO on 20 October 2003 and registered on 11 March 2005, with an expiry date of 20 October 2023 (‘the earlier mark’).
118 It should be noted in that regard that the earlier mark and the marks applied for are almost identical in that they all contain the word element ‘panoramicznych’ preceded by a numeral, namely 100 in the case of the earlier mark, and 200, 300, 400, 500 or 1000 in the case of the marks applied for. Furthermore, the earlier mark was registered by EUIPO in favour of the applicant, inter alia for ‘crosswords and rebuses magazines’ in Class 16.
119 In the light of the strong similarities between the earlier mark and the marks applied for, the fact that the proprietor is identical and the fact that the goods covered are partially, but crucially (see paragraphs 57 and 58 above) identical, it must be held that, in accordance with the case-law cited in paragraph 110 above, it fell to the adjudicating bodies of EUIPO – which themselves mention the decisions of the Polish authorities, concerning, inter alia, the Polish word mark that is identical to the earlier mark and the Polish figurative mark containing the element ‘100 panoramicznych’ – to take the earlier mark into account and, in the administrative procedure, to consider with particular care whether it should decide in the same way or not, regardless of whether the applicant had mentioned that mark in the administrative procedure.
120 Since the grounds of the examiner’s decisions and of the contested decisions disregard the earlier mark, it must be held that the adjudicating bodies of EUIPO did not fulfil that obligation in the present case, and the contested decisions are therefore vitiated by a procedural irregularity.
121 However, it is clear from the case-law that a procedural irregularity will entail the annulment of a decision in whole or in part only if it is shown that had it not been for the irregularity the contested decision might have been substantively different (see judgment of 1 February 2018, Philip Morris Brands v EUIPO – Explosal (Superior Quality Cigarettes FILTER CIGARETTES Raquel), T‑105/16, EU:T:2018:51, paragraph 78 and the case-law cited).
122 The Board of Appeal carried out a full and specific examination of the marks applied for before concluding, correctly, that they were descriptive of the goods at issue, as is clear from paragraphs 30 to 59 above, and that they had not acquired distinctive character through use, for the reasons set out in paragraphs 72 to 96 above. Therefore, the failure to take into account the earlier EU word mark 100 PANORAMICZNYCH has no bearing on the merits of the contested decisions (see, to that effect, judgment of 12 September 2013, ‘Rauscher’ Consumer Products v OHIM (Representation of a tampon), T‑492/11, not published, EU:T:2013:421, paragraph 34).
123 It follows that the Board of Appeal did not misuse its powers, within the meaning of the case-law cited in paragraph 103 above, or infringe the principle of equal treatment or the principle of legal certainty in refusing to register the marks applied for on the basis of Article 7(1)(c) of Regulation 2017/1001.
124 Lastly, it is sufficient to note that the alleged limited protection the applicant was forced to seek for its signs is entirely contingent on the assessment of the complaints examined previously, or indeed of the present actions in their entirety. A refusal to register a sign under Regulation 2017/1001 has the inevitable consequence that the applicant for registration must seek other means of protection for such a sign.
125 Consequently, the fourth and seventh pleas must also be rejected.
The sixth and eighth to twelfth pleas, alleging, respectively, a misuse of powers, infringement of Article 118 TFEU, infringement of Article 4(a) of Regulation 2017/1001, infringement of Article 4 of Regulation 2017/1001, infringement of essential procedural requirements and infringement of Article 36 TFEU and Article 14 of Regulation 2017/1001
126 In the first place, in so far as the applicant submits, in the sixth, ninth and tenth pleas, that the Board of Appeal misused its powers in that it restricted the applicant’s freedom to choose the type of protection and that it infringed Article 4 of Regulation 2017/1001, according to which an EU trade mark may consist of ‘any signs’ capable of ‘distinguishing the goods or services of one undertaking from those of other undertakings’, it is sufficient to note that the freedom of choice under Article 4 of Regulation 2017/1001 is limited in particular by Article 7 of that regulation, which sets out the absolute grounds for refusal to register a trade mark.
127 It is settled case-law that, although it is clear from the wording of Article 4 of Regulation 2017/1001 that any sign may be registered as an EU trade mark, that is so only subject to the express conditions, which are set out in Article 7 of that regulation, that they are distinctive in relation to the goods and services covered by the application for registration and are not merely descriptive of those goods and services (see, to that effect, judgment of 7 December 2017, Colgate-Palmolive v EUIPO (360°), T‑332/16, not published, EU:T:2017:876, paragraph 26 and the case-law cited).
128 Consequently, given that the Board of Appeal was fully entitled to find that the signs in respect of which registration was sought in the present case were caught by the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001 and that the evidence provided by the applicant did not show that the signs had acquired, in respect of the goods covered, distinctive character through use, for the purposes of Article 7(3) of that regulation, the applicant’s arguments in that regard cannot succeed.
129 In those circumstances, it cannot be claimed that the Board of Appeal failed to take market realities into account. Although the applicant rightly submits that, on the magazine market, magazine titles are the only way for the consumer to distinguish one product from another, this does not exempt those titles, including the signs in respect of which registration is sought in the present case, from the conditions set out in Article 7 of Regulation 2017/1001.
130 Furthermore, in so far as the applicant submits that the vast majority of the marks (magazine titles) contains a descriptive element, it is sufficient to recall the case-law cited in paragraph 114 above, according to which 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 Courts of the European Union, and not on the basis of a previous decision-making practice of EUIPO which cannot, in any event, bind those Courts (see, to that effect, judgment of 2 June 2016, REVOLUTION, T‑654/14, not published, EU:T:2016:334, paragraph 57 and the case-law cited).
131 In the second place, in so far as the applicant alleges, in the eighth and twelfth pleas in law, infringement of Article 118 TFEU and a misuse of powers, in that the Board of Appeal deprived it of an effective protection measure, and infringement of Article 36 TFEU and Article 14 of Regulation 2017/1001, in that the Board of Appeal did not correctly interpret the exclusivity granted by the registration of the trade mark, it should be pointed out, first, that under the first subparagraph of Article 118 TFEU, in the context of the establishment and functioning of the internal market, the European Parliament and the Council, acting in accordance with the ordinary legislative procedure, are to establish measures for the creation of European intellectual property rights to provide uniform protection of intellectual property rights throughout the European Union and for the setting up of centralised EU-wide authorisation, coordination and supervision arrangements.
132 The applicant cannot infer from such a provision that it has a subjective right to registration of a sign or a right to apply for the annulment of a decision refusing that registration on the basis of Article 7(1)(c) and Article 7(3) of Regulation 2017/1001. In that regard, EUIPO was, moreover, correct in contending that the system established by that regulation seeks to guarantee the protection of trade marks which satisfy the conditions of registration, and that the effectiveness of that system lies precisely in the guarantee that marks which do not satisfy those conditions will not be granted protection.
133 Secondly, as regards Article 36 TFEU and Article 14 of Regulation 2017/1001, it is sufficient to note that those provisions provide only for some of the effects of registration of a sign as an EU trade mark, and are therefore irrelevant in the context of the present cases which concern the conditions that must be satisfied prior to registration.
134 Thirdly, as regards the applicant’s argument that the procedure followed in its case was not ‘transparent, thorough, fair and equitable’, it must be stated, as observed by EUIPO, that that complaint is in no way substantiated by any additional explanations in the applications.
135 Lastly, in the third place, in so far as the applicant claims, in the eleventh plea, that the Board of Appeal misused its powers and infringed essential procedural requirements by imposing unlawful conditions requiring new evidence, it must be held that it was for the applicant to provide sufficient evidence, in particular in the light of Article 7(3) of Regulation 2017/1001. In that context, the fact that the adjudicating bodies of EUIPO gave the applicant – on their own initiative and in compliance with the principle of sound administration – several opportunities for submitting comments or evidence (see paragraphs 4, 5 and 8 to 11 above) does not constitute a misuse of powers, within the meaning of the case-law cited in paragraph 103 above, or an infringement of essential procedural requirements.
136 Furthermore, it must be held that, contrary to what is claimed by the applicant, the Board of Appeal did not make an error of assessment in finding, in paragraph 52 of the contested decisions, that the submission of public opinion surveys indicating that the target public perceives titles from the applicant’s numerical series (including the signs at issue) as coming from the applicant could help demonstrate the secondary distinctiveness of those signs. While it is true that the applicant submitted public opinion surveys to EUIPO, the Board of Appeal was correct in finding, in paragraph 54 of the contested decisions, that those opinions confirmed the high market share of the applicant’s crossword magazines, but did not prove that the signs at issue were perceived as a trade mark by the relevant public. Moreover, the applicant produced a survey to which the Board of Appeal referred in paragraph 52 of the contested decisions for the first time before the Court, which in any event justifies dismissing such a document as inadmissible (see paragraphs 18 to 24 above).
137 As regards the evidence produced by the applicant in due time, it follows from the foregoing (see inter alia paragraphs 72 to 96 above) that the Board of Appeal’s interpretation thereof is not vitiated by an error of assessment.
138 In the light of all the foregoing, the sixth and eighth to twelfth pleas must also be rejected and, consequently, the actions must be dismissed in their entirety.
Costs
139 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 (Eighth Chamber),
hereby:
1. Dismisses the actions;
2. Orders Agencja Wydawnicza Technopol sp. z o. o. to pay the costs, including the costs incurred by the European Union Intellectual Property Office (EUIPO).
Delivered in open court in Luxembourg on 26 June 2019.
[Signatures]