Judgment of the General Court (Fourth Chamber) of 30 January 2019.Arezzo Indústria e Comércio SA v European Union Intellectual Property Office.EU trade mark — Application for EU word mark SCHUTZ — Absolute grounds for refusal — Descriptive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 (now Article 7(1)(b) and (c) of Regulation (EU) 2017/1001).Case T-256/18.

Judgment // 30/01/2019 // 3 min read
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Judgment of the General Court (Fourth Chamber) of 30 January 2019 –Arezzo Indústria e Comércio v EUIPO (SCHUTZ)

(Case T‑256/18)

(EU trade mark — Application for EU word mark SCHUTZ — Absolute grounds for refusal — Descriptive character — Article 7(1) (b) and (c) of Regulation (EC) No 207/2009 (now Article 7 (1) (b) and (c) of Regulation (EU) 2017/1001))

  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), replaced by European Parliament and Council Regulation 2017/1001, Art. 7(1)(c))

(see para. 17)

  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 — Meaning

(Council Regulation No 207/2009, Art. 7(1)(c), replaced by European Parliament and Council Regulation 2017/1001, Art. 7(1)(c))

(see paras 18, 19)

  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), replaced by European Parliament and Council Regulation 2017/1001, Art. 7(1)(c))

(see paras 20, 24, 29)

  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 SCHUTZ

(Council Regulation No 207/2009, Art. 7(1)(c), replaced by European Parliament and Council Regulation 2017/1001, Art. 7(1)(c))

(see paras 21, 25-27, 33-35)

  1. EU trade mark — Definition and acquisition of the EU trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Earlier registration of the mark in certain Member States or third countries — Decisions not binding EU bodies

(Council Regulation No 207/2009, replaced by European Parliament and Council Regulation 2017/1001)

(see para. 31)

  1. EU trade mark — Decisions of the Office — 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 207/2009, replaced by European Parliament and Council Regulation No 2017/1001)

(see para. 32)

Re:

Action brought against the decision of the Fourth Board of Appeal of EUIPO of 12 February 2018 (Case R 661/2017-4) relating to registration of the word sign SCHUTZ as an EU trade mark.

Operative part

The Court:

  1. Dismisses the action;

  2. Orders Arezzo Indústria e Comércio, SA to pay the costs.

Trade marks