Judgment of the General Court (Seventh Chamber) of 20 July 2017.Windfinder R&L GmbH & Co. KG v European Union Intellectual Property Office.European Union trade mark — Application for the EU word mark Windfinder — Absolute grounds for refusal — No distinctive character — Descriptiveness — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009– Neologism — Insufficiently direct and specific connection with certain goods and services covered by the mark applied for — Power to alter decisions.Case T-395/16.

Judgment // 20/07/2017 // 4 min read
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Judgment of the General Court (Seventh Chamber) of 20 July 2017 — Windfinder R&L v EUIPO (Windfinder)

(Case T‑395/16)

(European Union trade mark — Application for the EU word mark Windfinder — Absolute grounds for refusal — No distinctive character — Descriptiveness — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 — Neologism — Insufficiently direct and specific connection with certain goods and services covered by the mark applied for — Power to alter decisions)

  1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — 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 207/2009, Art. 7(1)(c))

(see para. 27)

  1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Concept

(Council Regulation No 207/2009, Art. 7(1)(c))

(see paras 28-30)

  1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Concept — Mark composed of a word or neologism resulting from a combination of elements

(Council Regulation No 207/2009, Art. 7(1)(c))

(see paras 31, 32)

  1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — 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 207/2009, Art. 7(1)(c))

(see para. 33)

  1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Word mark Windfinder

(Council Regulation No 207/2009, Art. 7(1)(c))

(see paras 34, 48, 54, 55)

  1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Separate examination of the grounds for refusal in relation to each of the goods or services covered by the application for registration — Obligation to state the reasons for refusing to register — Scope

(Council Regulation No 207/2009, Arts 7(1)(c), and 75, first sentence)

(see paras 41-43)

  1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Concept — Criteria for assessment

(Council Regulation No 207/2009, Art. 7(1)(b))

(see paras 61-64)

  1. EU trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice

(Council Regulation No 207/2009)

(see paras 70, 71)

  1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Exception — Distinctive character acquired through use — Trade mark devoid of distinctive character throughout the EU — Acquisition of that character in part of the Union — Insufficient

(Council Regulation No 207/2009, Arts 1(2), and 7(3))

(see paras 76-81)

  1. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits

(Council Regulation No 207/2009, Art. 65(3))

(see paras 87, 89)

Re:

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 May 2016 (Case R 1206/2015-5), relating to the application for registration of the word sign Windfinder as an EU trade mark.

Operative part

The Court:

  1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 May 2016 (Case R 1206/2015-5) in so far as it refused registration of the word sign Windfinder for the goods and services at issue, with the exception of anemometers in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, and of meteorological information, meteorological forecast, meteorological information services and the supply of meteorological information in Class 42 of the Nice Agreement;

  2. Upholds the action brought by Windfinder R&L GmbH & Co. KG before that Board of Appeal in accordance with the conditions set out at paragraph 1 of the operative part;

  3. Dismisses the remainder of Windfinder R&L’s action;

  4. Orders Windfinder R&L and EUIPO each to bear their own costs.

Trade marks