Judgment of the General Court (Third Chamber) of 1 September 2021 –
e*Message Wireless Information Services v EUIPO – Apple (e*message)
(Case T‑834/19)
(EU trade mark – Invalidity proceedings – EU figurative mark e*message – Absolute grounds for refusal – Descriptive character – Lack of distinctive character – Declaration of invalidity – Provisions applicable ratione temporis – Application of subsequent case-law – Article 17 of the Charter of Fundamental Rights – Principles of protection of legitimate expectations and of legal certainty)
1. EU trade mark – Appeals procedure – Action before the EU judicature – Legality of a decision issued by EUIPO’s Board of Appeal adjudicating in invalidity proceeding – Challenged by the adducing of new facts – Not permissible – Account taken, for the purposes of interpreting EU law, of EU national or international case-law not cited before the EUIPO bodies – Whether permissible
(European Parliament and Council Regulation 2017/1001, Art. 72)
(see para. 32)
2. EU trade mark – Decisions of EUIPO – Principle of equal treatment – Principle of sound administration – EUIPO’s previous decision-making practice – Principle of legality – Need for a strict and complete examination in each particular case
(Council Regulation No 40/94)
(see paras 39, 40)
3. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Figurative mark e*message
(Council Regulation No 40/94, Arts 7(1)(c) and 51(1)(a))
(see paras 49, 52, 54, 62, 68, 74-76)
4. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Assessment of the descriptive nature of a sign – Criteria
(Council Regulation No 40/94, Arts 7(1)(c) and 51(1)(a))
(see para. 51)
5. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Concept
(Council Regulation No 40/94, Arts 7(1)(c) and 51(1)(a))
(see para. 53)
6. EU trade mark – Procedural provisions – Examination of the facts of EUIPO’s own motion – Invalidity proceedings concerning absolute grounds for refusal – Examination restricted to the facts, evidence and arguments provided – Well-known facts taken into account
(European Parliament and Council Regulation 2017/1001, Art. 95(1))
(see paras 56, 64, 65)
7. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Registration contrary to Article 7 of Regulation No 40/94 – Relevant date for the examination of an absolute ground for nullity – Date of lodging the application for registration
(Council Regulation No 40/94, Arts 7(1) and 51(1)(a))
(see para. 69)
8. EU law – Principles – Protection of legitimate expectations – Conditions – Specific assurances given by the authorities – Compliance of the assurances with the applicable rules
(Charter of Fundamental Rights of the European Union, Art. 17; Council Regulation No 40/94, Art. 51(1))
(see paras 91, 94-96, 102)
9. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service – Aim – Need to preserve availability
(Council Regulation No 40/94, Arts 7(1)(c) and 51(1)(a))
(see para. 110)
Re:
| Action brought against the decision of the Fifth Board of Appeal of EUIPO of 10 September 2019 (Case R 2454/2018-5), relating to invalidity proceedings between Apple and e*Message Wireless Information Services. |
Operative part
The Court:
2. | | Orders e*Message Wireless Information Services GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Apple Inc. |