JUDGMENT OF THE GENERAL COURT (Second Chamber)
25 March 2014 (*)
(Community trade mark – International registration designating the European Union – Word mark Passion to Perform – Trade mark consisting of an advertising slogan – Absolute grounds for refusal – No distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 – Equal treatment)
In Case T‑291/12,
Deutsche Bank AG, established in Frankfurt am Main (Germany), represented by R. Lange, T. Götting and G. Hild, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by I. Harrington, acting as Agent,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 24 April 2012 (Case R 2233/2011-4) concerning an application for registration of the word sign Passion to Perform as a Community trade mark,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 3 July 2012,
having regard to the response lodged at the Court Registry on 20 September 2012,
further to the hearing on 14 January 2014,
gives the following
Judgment
Background to the dispute
1 On 4 January 2011, the applicant – Deutsche Bank AG – obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) an international registration designating the European Union for the word sign Passion to Perform.
2 On 24 February 2011, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received notification of that international registration.
3 The services in respect of which registration was sought are in Classes 35, 36, 38, 41 and 42 of the Nice Agreement of 15 June 1957 Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 35: ‘Advertising; business management; business administration; office functions’;
– Class 36: ‘Insurance; financial affairs; monetary affairs, real estate’;
– Class 38: ‘Telecommunications’;
– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’;
– Class 42: ‘Scientific and technological services, research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software’.
4 On 24 March 2011, the examiner informed Deutsche Bank of her objections to the registration of the mark applied for, which were based on its lack of distinctive character, pursuant to Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), read in conjunction with Rule 113 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). Deutsche Bank maintained its application for registration.
5 By decision of 29 August 2011, the examiner refused protection of the sign at issue for the European Union in relation to all services applied for, on the basis of Article 7(1)(b) of Regulation No 207/2009.
6 On 27 October 2011, Deutsche Bank filed a notice of appeal with OHIM against that decision pursuant to Articles 58 to 64 of Regulation No 207/2009.
7 By decision of 24 April 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal, holding that the mark applied for was devoid of distinctive character.
8 The Board of Appeal first noted, in paragraphs 10 and 11 of the contested decision, that, for an advertising slogan to be able to be registered as a Community trade mark it must be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services referred to. Next, the Board of Appeal found that the relevant public is composed of end consumers and commercial undertakings in the United Kingdom and in Ireland (paragraph 12 of the contested decision) and that its level of attention is low in view of the promotional nature of the mark applied for (paragraph 13 of the contested decision). It also found that the meaning of the individual elements of the sign applied for – as well as the meaning of the sign as a whole – is evident and wholly lacking in originality and that the mark applied for signifies, irrespective of the service, that Deutsche Bank promises its clients that it will perform with passion (paragraphs 14 to 18 of the contested decision). The Board of Appeal also stated that neither previous registrations – even if comparable – nor registrations of a quasi-identical mark by national offices suffice to confer a right to registration in respect of the mark applied for (paragraphs 19 to 21 of the contested decision). The Board of Appeal concluded, in paragraph 22 of the contested decision, that the mark applied for, which will only be perceived by the relevant public as a laudatory statement, is incapable of fulfilling its function of distinguishing the services as to their commercial origin and that it therefore fails to comply with Article 7(1)(b) of Regulation No 207/2009.
Forms of order sought by the parties
9 Deutsche Bank claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
10 OHIM contends that the Court should:
– dismiss the action;
– order Deutsche Bank to pay the costs.
Law
11 Deutsche Bank states that, in support of its action, it relies on a sole plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009. For the purposes of examining the arguments set out in the application initiating proceedings, however, it is necessary to group them under two pleas in law, alleging respectively: (i) infringement of Article 7(1)(b) of Regulation No 207/2009 and (ii) breach of the principle of equality.
The first plea in law: infringement of Article 7(1)(b) of Regulation No 207/2009
12 Deutsche Bank submits that the standard of proof required by the Board of Appeal for establishing the distinctive character of a mark consisting of an advertising slogan was too high and that the Board of Appeal applied Article 7(1)(b) of Regulation No 207/2009 incorrectly.
13 In the first place, Deutsche Bank argues that the criteria applied by the Board of Appeal for establishing the distinctive character of a mark consisting of an advertising slogan were too strict and that it did not analyse the market situation regarding the services at issue.
14 OHIM disputes Deutsche Bank’s arguments.
15 Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.
16 For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods for which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see Joined Cases C‑344/10 P and C‑345/10 P Freixenet v OHIM [2011] ECR I‑10205, paragraph 42 and the case-law cited; see also Case T‑460/05 Bang & Olufsen v OHIM (Shape of a loudspeaker) [2007] ECR II‑4207, paragraph 27).
17 Distinctiveness must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question who are reasonably well informed and reasonably observant and circumspect (see Freixenet v OHIM, cited at paragraph 16 above, paragraph 43 and the case-law cited). However, the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see, by analogy, Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26).
18 As regards 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, registration of such marks is not excluded as such by virtue of such use (Case C‑64/02 P OHIM v Erpo Möbelwerk [2004] ECR I‑10031, paragraph 41, and Case C‑398/08 P Audi v OHIM [2010] ECR I‑535, paragraph 35; see, by analogy, Case C‑517/99 Merz & Krell [2001] ECR I‑6959, paragraph 40).
19 As regards the assessment regarding the distinctive character of such marks, the Court has held that it is inappropriate to apply to slogans criteria that are stricter than those applicable to other types of sign (OHIM v Erpo Möbelwerk, cited at paragraph 18 above, paragraphs 32 and 44, and Audi v OHIM, cited at paragraph 18 above, paragraph 36).
20 The Court has accordingly held that an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 207/2009 (Audi v OHIM, cited at paragraph 18 above, paragraph 39; see also OHIM v Erpo Möbelwerk, cited at paragraph 18 above, paragraphs 31 and 32).
21 It follows that a mark consisting of an advertising slogan must be regarded as devoid of distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. On the other hand, such a mark must be recognised as distinctive, if, apart from its promotional function, it may be perceived immediately as an indication of the commercial origin of the goods or services in question (see judgment of 11 December 2012 in Case T‑22/12 Fomanu v OHIM (Qualität hat Zukunft), not published in the ECR, paragraph 22, and judgment of 6 June 2013 in Case T‑126/12 Interroll v OHIM (Inspired by efficiency), not published in the ECR, paragraph 24).
22 In the present case, it emerges from paragraphs 9 to 12 of the contested decision that, according to the Board of Appeal, registration of a trade mark consisting of signs that are also used as advertising slogans or indications of quality is not to be ruled out, but it is important to verify that there are elements of that mark which, beyond their plain advertising function, would enable the public to memorise the sign easily and instantly as a distinctive trade mark for the services designated. The Board of Appeal therefore formed the view (paragraph 12 of the contested decision) that it ought to consider whether the mark applied for could be perceived immediately as an indication of the commercial origin of the services in question. That examination led it to conclude that the mark applied for – which would be perceived by the relevant public only as a laudatory statement – is incapable of fulfilling its function of distinguishing the claimed services as to their commercial origin and accordingly fails to comply with Article 7(1)(b) of Regulation No 207/2009 (paragraph 22 of the contested decision).
23 Contrary to the assertions made by Deutsche Bank, the Board of Appeal thus interpreted Article 7(1)(b) of Regulation No 207/2009 in a manner consistent with the case-law, in so far as it found inter alia that a trade mark consisting of a word combination that may serve as an advertising slogan can also deliver an objective message, and did not require the mark to be more fanciful or original than other signs.
24 Moreover, as regards Deutsche Bank’s argument that the Board of Appeal was under a duty to assess the distinctiveness of the mark at issue in relation to the goods or services for which registration was sought, it can be seen from paragraph 17 of the contested decision that the Board of Appeal undertook such an analysis in relation to each category of service applied for.
25 The first part of the first plea in law must therefore be rejected.
26 In the second place, Deutsche Bank argues that the Board of Appeal was incorrect in finding that the mark applied for is not capable of indicating the origin of the services concerned. By its arguments, Deutsche Bank alleges: (i) error of assessment as to the level of attention of the public concerned; (ii) failure to take account of the various meanings of the mark applied for; (iii) failure to take account of the originality of that mark; and (iv) failure to take account of the registration of that mark in a great number of countries.
Error of assessment as to the level of attention of the public concerned
27 Deutsche Bank argues that the Board of Appeal was incorrect in finding that the level of attention of the relevant public is necessarily low with respect to marks consisting of advertising slogans, when in fact its level of attention is high in the present case as far as the insurance, financial, monetary and real estate services are concerned.
28 OHIM disputes Deutsche Bank’s arguments.
29 First of all, it should be borne in mind that distinctiveness must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see paragraph 17 above). The way in which the public concerned perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (Case T‑194/01 Unilever v OHIM (Ovoid tablet) [2003] ECR II‑383, paragraph 42).
30 In the present case, it can be seen from the contested decision that, on the basis of the language used by the mark sought, the Board of Appeal found that the relevant public is in the United Kingdom and in Ireland and that the services referred to are directed at both average end consumers and commercial undertakings, in particular as regards advertising services and financial affairs (paragraph 12 of the contested decision). The Board of Appeal went on to state that the level of attention of the public, including that of the professional public, is low when it comes to promotional indications, explaining that the word combination at issue is made up of words in common parlance, which can also be understood by end consumers, and does not constitute specialist terminology (paragraph 13 of the contested decision).
31 Deutsche Bank argues that, in order to reach that conclusion, the Board of Appeal relied on two judgments referred to in paragraph 13 of the contested decision and that it was incorrect to do so, as the first – the judgment of 17 November 2009 in Case T‑473/08 Apollo Group v OHIM (THINKING AHEAD), not published in the ECR – does not concern services for which the consumer showed a high level of attention, and the second – the judgment of 9 July 2008 in Case T‑58/07 BYK-Chemie v OHIM (Substance for Success), not published in the ECR – relates to a case in which the Board of Appeal’s assertion that the level of attention of the public was relatively low was not subject to dispute. Furthermore, according to Deutsche Bank, the Board of Appeal should have found that the relevant public is very attentive in the case of services in Class 36.
32 It is apparent from the settled case-law of the General Court, however, that the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether it involves average end consumers (Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II‑3411, paragraph 74; and see, to that effect, THINKING AHEAD, cited at paragraph 31 above, paragraph 33) or a more attentive public made up of specialists or circumspect consumers (see, to that effect, Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II‑5179, paragraph 24; Case T‑122/01 Best Buy Concepts v OHIM (BEST BUY) [2003] ECR II‑2235, paragraph 25; and judgment of 23 September 2011 in Case T‑251/08 Vion v OHIM (PASSION FOR BETTER FOOD), not published in the ECR, paragraph 20).
33 In the present case, therefore, the Board of Appeal was entitled to find that the relevant public, composed of average end consumers and, for certain services requested, of commercial undertakings, had a low level of attention with respect to the mark at issue, because of its promotional nature. Even if the Board of Appeal had found that the consumer might, in principle, be more attentive as regards the services in Class 36, its conclusion would have been the same, given the nature and content of the sign at issue.
34 The argument alleging error of assessment as to the level of attention of the public concerned must therefore be rejected as unfounded.
Failure to take account of the various meanings of the words of which the mark applied for is composed
35 Deutsche Bank submits that the Board of Appeal did not take into account the various possible meanings of the words making up the mark applied for. At the hearing, moreover, Deutsche Bank stated that it withdrew the arguments set out in paragraph 25 of its application initiating proceedings, by which it sought to dispute the definitions that the examiner had adopted of the various words of which the mark applied for is composed, in her letter of 24 March 2011 informing Deutsche Bank of her objections.
36 OHIM disputes Deutsche Bank’s arguments.
37 As can be seen from paragraph 14 of the contested decision, the Board of Appeal found that the English verb ‘to perform’ refers to professional performance and that the noun which precedes it – ‘passion’ – refers to ‘the passionate emotion … in the activity of “performing”’, and that the word combination has a clear meaning and does not become ‘vague or difficult to understand merely because each of its words has different other dictionary entries’. In paragraph 15 of the contested decision, the Board of Appeal accordingly found that the word combination taken as a whole means that Deutsche Bank promises its clients that it will perform with passion. In paragraph 18 of that decision, the Board of Appeal stated furthermore, in its analysis of the originality of the word sign applied for, that Deutsche Bank did not explain what its other meanings could be.
38 It must be borne in mind that, according to settled case-law, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Also, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered (Joined Cases C‑468/01 P to C‑472/01 P Procter & Gamble v OHIM [2004] ECR I‑5141, paragraph 44, and Case C‑136/02 P Mag Instrument v OHIM [2004] ECR I‑9165, paragraph 20). Nevertheless, that does not prevent the competent authority, responsible for ascertaining whether the trade mark for which registration is sought is capable of being perceived by the public as an indication of origin, from first examining in turn each of the individual features of the get-up of that mark. It may be useful, in the course of the competent authority’s overall assessment, to examine each of the components of which the trade mark concerned is composed (see Case C‑286/04 P Eurocermex v OHIM [2005] ECR I‑5797, paragraph 23 and the case-law cited).
39 In the present case, Deutsche Bank appended as Annex A5 to the application initiating proceedings extracts from a dictionary which it had already produced before the Board of Appeal, seeking to establish that each of the words making up the mark applied for could have several meanings and that the mark, taken as a whole, did not have any clear meaning – one of the features lending it distinctive character.
40 However, those documents do not call into question the finding made by the Board of Appeal that the word sign applied for, taken as a whole, cannot have any meaning other than that attributed to it by the Board of Appeal, namely, that Deutsche Bank promised its clients that it would perform with passion.
41 The semantic content of each of the words making up the word sign Passion to Perform is clear and precise and does not noticeably change where those words are combined in a single expression. The combination of the words ‘passion’, ‘to’ and ‘perform’, in grammatically correct English, conveys a clear and unequivocal message which does not require any interpretation on the part of the anglophone consumer and which means no more than performance of the services in question with passion. Moreover, Deutsche Bank does not manage to offer a credible alternative meaning for the mark applied for. Accordingly, contrary to the assertions made by Deutsche Bank, the average or professional consumer will not, when confronted with the word sign as a whole, think that the word ‘passion’ might refer, for example, to a ‘piece of music based on the gospel narrative of the Passion of Jesus Christ’ or to the fact of ‘being acted on by external agents or forces’, or even that the verb ‘perform’ might refer to the fact of performing a play.
42 Accordingly, the Board of Appeal did not make an error of assessment in finding that, taken as a whole, the mark applied for could have only one meaning, and the argument alleging failure to take account of the various meanings of the words making up the mark applied for must therefore be rejected.
Failure to take account of the originality of the mark applied for
43 Deutsche Bank submits that the mark applied for is sufficiently distinctive for the purposes of its registration as a Community trade mark. According to Deutsche Bank, the Board of Appeal did not take into account the originality resulting from the fact that the mark applied for is composed of two common words, each beginning with the letter ‘P’ in upper case, and that it consists of a very short phrase which is not a complete sentence. The originality of the mark at issue is also attributable to the fact that it consists of a word combination that is unusual, especially in relation to the services in Class 36, in which a word relating to emotion is conjoined with a word linked to intellect. Furthermore, Deutsche Bank stated at the hearing that it withdrew the arguments set out in paragraph 33 of its application initiating proceedings, by which it took issue with the Board of Appeal for finding that ‘the English relevant public is accustomed to seeing commercial laudatory slogans starting with the term “Passion”, followed by the … infinitive of a verb’, an assessment not to be found in the contested decision but in the examiner’s letter of 24 March 2011 informing Deutsche Bank of the objections to registration of the mark applied for.
44 OHIM disputes Deutsche Bank’s arguments.
45 First of all, it should be borne in mind that the examination of the second part of the first plea has shown that the relevant public is composed both of specialists – in particular, as regards advertising services and financial affairs – and of average end consumers; that the relevant public’s level of attention is low; and that the relevant public is in the United Kingdom and in Ireland.
46 As regards the meaning of the mark applied for, it emerges from the examination of the second part of the first plea that the mark applied for is composed of a grammatically correct combination of three English words to mean that Deutsche Bank promises its clients that it will perform with passion.
47 The mark applied for accordingly constitutes a promotional slogan which, as the Board of Appeal found in paragraph 15 of the contested decision, conveys the message that Deutsche Bank promises its clients that it will perform with passion.
48 Consequently, the Board of Appeal was correct, upon concluding its examination, to state that the mark applied for would be perceived by the relevant public merely as a laudatory statement; that it is incapable of fulfilling its function of distinguishing the claimed services as to their commercial origin; and that it accordingly fails to comply with Article 7(1)(b) of Regulation No 207/2009.
49 The arguments put forward by Deutsche Bank in order to demonstrate the originality or the resonance of the sign Passion to Perform do not invalidate that finding.
50 Accordingly, as regards the fact that the mark applied for is composed of two common words, each beginning with a letter in upper case, it should be borne in mind that Deutsche Bank simply applied for registration of a word mark, without claiming any special graphic representation of the letters ‘P’ for the purposes of Rule 3(1) of Regulation No 2868/95. The Board of Appeal could not therefore take account of that graphic feature in assessing the distinctiveness of the mark (see, to that effect, judgment of 29 March 2012 in Case T‑242/11 Kaltenbach & Voigt v OHIM (3D eXam), not published in the ECR, paragraph 34).
51 In any event, the Board of Appeal was correct in finding, in paragraph 14 of the contested decision, that the use of upper case is not unusual in titles. As for the fact that the Board of Appeal made that statement without supporting evidence, it should be borne in mind that there is nothing to prohibit OHIM from taking well-known facts into consideration in its assessment (see, to that effect, judgment of 13 April 2011 in Case T‑523/09 Smart Technologies v OHIM (WIR MACHEN DAS BESONDERE EINFACH), not published in the ECR, paragraph 41, and judgment of 20 March 2013 in Case T‑277/12 Bimbo v OHIM – Café do Brasil (Caffè KIMBO), not published in the ECR, paragraph 46). As it is, the Board of Appeal clearly refers to a well-known fact when it states that the presentation of the first letter of words in upper case is usual in titles or headlines, whatever the services or goods concerned.
52 As regards the fact that the mark at issue consists of a very short phrase which is not a complete sentence, it should also be noted that such a form is normal for advertising slogans, irrespective of the services concerned, and that that phrase respects the semantic and grammatical rules of everyday English.
53 Nor, moreover, does the fact that the mark applied for consists of a word combination in which a word relating to emotion is conjoined with a word linked to intellect appear unusual in relation to the services in question.
54 Furthermore, in order to establish that the word combination at issue is original in that it conjoins a word relating to emotion with a word linked to intellect – for the services in Class 36, in particular – Deutsche Bank did no more than produce several lists of advertising slogans. Most of those slogans, however, do not relate to the services at issue in the present case. In addition, several of the slogans produced which did relate to those services – even if they do not include the word ‘passion’ – refer only to emotion, such as the slogan ‘Access – Your flexible friend’ for credit cards or the slogan ‘Courtesy and Care’ for car insurance.
55 Lastly, Deutsche Bank challenges the statement in paragraph 16 of the contested decision that the mere fact that the word combination applied for does not convey any information about the nature of the goods or services concerned is not sufficient to make the sign at issue distinctive. Deutsche Bank submits that the mark applied for is different from the two marks concerned by the two General Court judgments referred to in the contested decision (Case T‑281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II‑1915, and judgment of 15 December 2009 in Case T‑476/08 Media-Saturn v OHIM (BEST BUY), not published in the ECR), in that it does not contain such a clear message. However, it is apparent from the examination of the second part of the first plea in law that the meaning of the mark applied for is clear and precise.
56 The argument alleging failure to take account of the originality of the mark applied for must therefore be rejected.
Earlier use and national registrations of the mark applied for
57 Deutsche Bank submits that the mark applied for has been registered in a large number of anglophone countries.
58 OHIM disputes Deutsche Bank’s arguments.
59 It should be observed, as the Board of Appeal stated in paragraph 20 of the contested decision, that the existence of identical or similar registrations at national level does not constitute grounds for allowing the registration of marks devoid of distinctive character. It is settled law that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it and applies independently of any national system (Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47, and Case T‑91/01 BioID v OHIM (BioID) [2002] ECR II‑5159, paragraph 45). Accordingly, the registrability of a sign as a Community trade mark falls to be assessed on the basis of the relevant EU legislation alone. Neither OHIM nor, as the case may be, the EU Courts are therefore bound by decisions adopted in any Member State, or indeed a third country, finding a sign to be registrable as a national trade mark (Case T‑16/02 Audi v OHIM (TDI) [2003] ECR II‑5167, paragraph 40, and Case T‑127/02 Concept v OHIM (ECA) [2004] ECR II‑1113, paragraphs 70 and 71). Deutsche Bank’s arguments relating to the existence of national registrations are therefore ineffective ab initio.
60 In any event, it should be noted – as OHIM states in its response – that Deutsche Bank gave no details at all regarding the grounds on which the national authorities had based their decisions to register the word sign at issue and which could, if appropriate, have been taken into account for the purposes of applying Article 7(1)(b) of Regulation No 207/2009.
61 The argument based on the earlier use and the national registrations of the mark applied for must therefore be rejected, as must in consequence the first plea in law in its entirety.
The second plea in law: breach of the principle of equality
62 Deutsche Bank submits that the Board of Appeal acted in breach of the principle of equality by refusing to register the mark applied for despite having agreed to the registration of similar marks such as the mark Pass on your passion.
63 OHIM disputes Deutsche Bank’s arguments.
64 In paragraph 19 of the contested decision, the Board of Appeal states that registrations of marks which may be similar do not constitute a basis for accepting registrations which are devoid of distinctive character and that, in any event, its decision is consistent with numerous decisions of the General Court and of the Boards of Appeal concerning similar slogans.
65 In the light of the principles of equal treatment and sound administration, it is true that OHIM must, when examining an application for registration of a Community 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 (Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraph 74).
66 However, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as 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 (Agencja Wydawnicza Technopol v OHIM, cited at paragraph 65 above, paragraphs 75 and 76).
67 In addition, for reasons of legal certainty and 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 (Agencja Wydawnicza Technopol v OHIM, cited at paragraph 65 above, paragraph 77).
68 In the present case, it can be seen from the contested decision that the Board of Appeal carried out a comprehensive and specific examination of the mark applied for before refusing its registration. Moreover, consideration of the first two pleas in law has disclosed that that examination led the Board of Appeal, correctly, to oppose registration of the mark applied for on the basis of the absolute ground for refusal referred to in Article 7(1)(b) of Regulation No 207/2009. As the examination of the mark at issue was unable in itself to lead to a different finding, Deutsche Bank’s arguments relating to the failure to take account of the registration of similar marks such as Pass on your passion cannot succeed. Accordingly, Deutsche Bank cannot usefully rely on an earlier OHIM decision for the purposes of invalidating the finding that the registration of the mark applied for is incompatible with Regulation No 207/2009.
69 The second plea in law must therefore be rejected, as must, in consequence, the action in its entirety.
Costs
70 Under Article 87(2) 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 Deutsche Bank has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Deutsche Bank AG to pay the costs.
Martins Ribeiro | Gervasoni | Madise |
Delivered in open court in Luxembourg on 25 March 2014.
[Signatures]