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Corte di giustizia UEsentenza

Corte di giustizia UE n. 249/2016

ECLI:EU:C:2016:373
Testo integrale del provvedimento

Testo integrale del provvedimento

62016CO0077_EN

[OSCURATO:PERSONA] part

[OSCURATO:PERSONA] C‑77/16 P,

APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 11 February 2016, [OSCURATO:PERSONA] LP, established in Dallas, Texas ([OSCURATO:PERSONA]), represented by T. Raab and H. Lauf, Rechtsanwälte, appellant, the other party to the proceedings being:

[OSCURATO:PERSONA] (EUIPO),

defendant at first instance,

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]),

composed of F. Biltgen, President of the [OSCURATO:PERSONA], E. Levits (Rapporteur) and M. Berger, Judges, [OSCURATO:PERSONA]: M. [OSCURATO:PERSONA]Bordona, Registrar: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give a decision by reasoned order, in accordance with [OSCURATO:PERSONA] 181 of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA], makes the following

[OSCURATO:PERSONA]

1. By its appeal, [OSCURATO:PERSONA] LP (‘[OSCURATO:PERSONA]’) seeks to have set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 3 December 2015 in [OSCURATO:PERSONA] v OHIM (FORTIFY) (T‑628/14, EU:T:2015:925, ‘the judgment under appeal’), by which the [OSCURATO:PERSONA] dismissed its action seeking the annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 3 June 2014 ([OSCURATO:PERSONA] R 249/2014-2), concerning an application for registration of the word sign ‘FORTITY’ as an EU trade mark (‘the decision at issue’).

2. In support of its appeal, [OSCURATO:PERSONA] puts forward two grounds of appeal, alleging infringement, respectively: – of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), and – of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 99 of the same regulation and [OSCURATO:PERSONA] 37(b)(iv) of [OSCURATO:PERSONA] (EC) No 2868/95 of 13 December 1995 implementing [OSCURATO:PERSONA] (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) The appeal

3. Pursuant to [OSCURATO:PERSONA] 181 of its [OSCURATO:PERSONA] of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the [OSCURATO:PERSONA] may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the [OSCURATO:PERSONA], decide by reasoned order to dismiss that appeal in whole or in part.

4. On 21 April 2016, the [OSCURATO:PERSONA] took the following position: ‘1 I suggest that the [OSCURATO:PERSONA] should dismiss the appeal in the case in question as being in part manifestly inadmissible and in part manifestly unfounded and order [OSCURATO:PERSONA] to pay the costs, in accordance with [OSCURATO:PERSONA] 137 of the [OSCURATO:PERSONA] of Procedure, for the following reasons: The first ground of appeal, alleging infringement of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009 2 By its first ground of appeal, [OSCURATO:PERSONA] complains that the [OSCURATO:PERSONA] held that the sign at issue is descriptive since the consumer immediately, and without further thought, perceives it as describing one of the characteristics of the goods in question. 3 The first ground of appeal must be dismissed as being manifestly unfounded since the appellant in actual fact merely calls into question the assessment of the facts made by the [OSCURATO:PERSONA] in paragraphs 24 to 26 and 30 of the judgment under appeal and seeks a new assessment of the underlying dispute, without alleging distortion of the facts or evidence. 4 In addition, the first ground of appeal also presents itself as a pure and simple repetition of the first plea relied on before the [OSCURATO:PERSONA], with the result that it may also for that reason be considered to be manifestly inadmissible.

The second ground of appeal, alleging infringement of [OSCURATO:PERSONA] 7(1)(c) and [OSCURATO:PERSONA] 99 of [OSCURATO:PERSONA] 207/2009 and of [OSCURATO:PERSONA] 37(b)(iv) of [OSCURATO:PERSONA] 2868/95 5 By the second ground of appeal, the appellant complains that the [OSCURATO:PERSONA] erred in law by arbitrarily departing from the relevant previous decision-making practice of the [OSCURATO:PERSONA] of Appeal, and in particular from the decision concerning the registration as an EU trade mark of sign “FORTIFY” No 2871622 for the years 2004 to 2012. 6 In that regard, the [OSCURATO:PERSONA] held that, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, 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 (judgment of 10 March 2011 in [OSCURATO:PERSONA] v OHIM , C‑51/10 P, EU:C:2011:139, paragraphs 75 to 77). 7 In the present case, the [OSCURATO:PERSONA] rightly held that the [OSCURATO:PERSONA] of Appeal had duly given its reasons for not following the previous decision-making practice relied on by the appellant.

According to the [OSCURATO:PERSONA], the appellant is not entitled to rely on previous decisions of EUIPO in order to cast doubt on the conclusion reached by the [OSCURATO:PERSONA] of Appeal in the decision at issue. 8 In addition, the appellant submits, as it had already done in its application before the [OSCURATO:PERSONA], that the concept of protective software already existed, in its current form, at the time trade mark No 2871622 was registered and that, if the sign “FORTIFY” is descriptive of the goods in question, that issue ought to have been raised at the time of registration of that mark.

It considers that the assertion that linguistic and technical use in the field of antivirus software had allegedly changed during recent years, which places it at a disadvantage, is not based in any event on any fact which may be demonstrated.

Likewise, the burden of proof in this connection is unlawfully shifted, given that it is for the appellant to prove that the assertions of the [OSCURATO:PERSONA] of Appeal and the [OSCURATO:PERSONA] are in fact inaccurate. 9 In that regard, it suffices to note that the judgment under appeal does not refer to the content of that argument of the [OSCURATO:PERSONA] of Appeal in the decision at issue, but that it bases its analysis on the argument that the principles of equal treatment and sound administration must be reconciled with the due process of law.

Consequently, the person who seeks registration of a sign as a trade mark cannot rely, to his own benefit, on any unlawful act committed in favour of another in order to obtain an identical decision.

However, it must be stated that such an argument was not subject to criticism in the appeal. 10 For those reasons, the second ground of appeal, in so far as it alleges infringement of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009, seems to be manifestly unfounded. 11 In addition, the appellant does not explain the reasons why it takes the view that there was an infringement of [OSCURATO:PERSONA] 99 of [OSCURATO:PERSONA] 207/2009 and [OSCURATO:PERSONA] 37(b)(iv) of [OSCURATO:PERSONA] 2868/95, which, moreover, had not been invoked before the [OSCURATO:PERSONA]. 12 In that context, it should be recalled that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside.

In the present case, the appellant failed to mention the actual paragraphs of the judgment which it is contesting. 13 In addition, it follows from paragraph 28 of the application and from paragraph 28 of the appeal that the second ground of appeal constitutes a pure and simple repetition of the first plea relied on before the [OSCURATO:PERSONA]. 14 For those reasons, the second ground of appeal must consequently be dismissed as being in part manifestly unfounded and in part manifestly inadmissible.’

5. For the same reasons as those given by the [OSCURATO:PERSONA], it is necessary to dismiss the appeal. Costs

6. [OSCURATO:PERSONA] 137 of the [OSCURATO:PERSONA] of Procedure, applicable to the procedure on appeal pursuant to [OSCURATO:PERSONA] 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings.

In the present case, since the present order was adopted before the appeal was served on the defendant and therefore before the latter could have incurred costs, [OSCURATO:PERSONA] must be ordered to bear its own costs. [OSCURATO:PERSONA] part On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders:

1. The appeal is dismissed.

2. [OSCURATO:PERSONA] LP is ordered to bear its own costs.

Anonimizzato ex art. 52 D.Lgs. 196/2003
62016CO0077_EN [OSCURATO:PERSONA] part [OSCURATO:PERSONA] C‑77/16 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 11 February 2016, [OSCURATO:PERSONA] LP, established in Dallas, Texas ([OSCURATO:PERSONA]), represented by T. Raab and H. Lauf, Rechtsanwälte, appellant, the other party to the proceedings being: [OSCURATO:PERSONA] (EUIPO), defendant at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of F. Biltgen, President of the [OSCURATO:PERSONA], E. Levits (Rapporteur) and M. Berger, Judges, [OSCURATO:PERSONA]: M. [OSCURATO:PERSONA]Bordona, Registrar: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give a decision by reasoned order, in accordance with [OSCURATO:PERSONA] 181 of the [OSCURATO:PERSONA] of Procedure of the [OSCURATO:PERSONA], makes the following [OSCURATO:PERSONA] 1. By its appeal, [OSCURATO:PERSONA] LP (‘[OSCURATO:PERSONA]’) seeks to have set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 3 December 2015 in [OSCURATO:PERSONA] v OHIM (FORTIFY) (T‑628/14, EU:T:2015:925, ‘the judgment under appeal’), by which the [OSCURATO:PERSONA] dismissed its action seeking the annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 3 June 2014 ([OSCURATO:PERSONA] R 249/2014-2), concerning an application for registration of the word sign ‘FORTITY’ as an EU trade mark (‘the decision at issue’). 2. In support of its appeal, [OSCURATO:PERSONA] puts forward two grounds of appeal, alleging infringement, respectively: – of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), and – of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 99 of the same regulation and [OSCURATO:PERSONA] 37(b)(iv) of [OSCURATO:PERSONA] (EC) No 2868/95 of 13 December 1995 implementing [OSCURATO:PERSONA] (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) The appeal 3. Pursuant to [OSCURATO:PERSONA] 181 of its [OSCURATO:PERSONA] of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the [OSCURATO:PERSONA] may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the [OSCURATO:PERSONA], decide by reasoned order to dismiss that appeal in whole or in part. 4. On 21 April 2016, the [OSCURATO:PERSONA] took the following position: ‘1 I suggest that the [OSCURATO:PERSONA] should dismiss the appeal in the case in question as being in part manifestly inadmissible and in part manifestly unfounded and order [OSCURATO:PERSONA] to pay the costs, in accordance with [OSCURATO:PERSONA] 137 of the [OSCURATO:PERSONA] of Procedure, for the following reasons: The first ground of appeal, alleging infringement of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009 2 By its first ground of appeal, [OSCURATO:PERSONA] complains that the [OSCURATO:PERSONA] held that the sign at issue is descriptive since the consumer immediately, and without further thought, perceives it as describing one of the characteristics of the goods in question. 3 The first ground of appeal must be dismissed as being manifestly unfounded since the appellant in actual fact merely calls into question the assessment of the facts made by the [OSCURATO:PERSONA] in paragraphs 24 to 26 and 30 of the judgment under appeal and seeks a new assessment of the underlying dispute, without alleging distortion of the facts or evidence. 4 In addition, the first ground of appeal also presents itself as a pure and simple repetition of the first plea relied on before the [OSCURATO:PERSONA], with the result that it may also for that reason be considered to be manifestly inadmissible. The second ground of appeal, alleging infringement of [OSCURATO:PERSONA] 7(1)(c) and [OSCURATO:PERSONA] 99 of [OSCURATO:PERSONA] 207/2009 and of [OSCURATO:PERSONA] 37(b)(iv) of [OSCURATO:PERSONA] 2868/95 5 By the second ground of appeal, the appellant complains that the [OSCURATO:PERSONA] erred in law by arbitrarily departing from the relevant previous decision-making practice of the [OSCURATO:PERSONA] of Appeal, and in particular from the decision concerning the registration as an EU trade mark of sign “FORTIFY” No 2871622 for the years 2004 to 2012. 6 In that regard, the [OSCURATO:PERSONA] held that, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, 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 (judgment of 10 March 2011 in [OSCURATO:PERSONA] v OHIM , C‑51/10 P, EU:C:2011:139, paragraphs 75 to 77). 7 In the present case, the [OSCURATO:PERSONA] rightly held that the [OSCURATO:PERSONA] of Appeal had duly given its reasons for not following the previous decision-making practice relied on by the appellant. According to the [OSCURATO:PERSONA], the appellant is not entitled to rely on previous decisions of EUIPO in order to cast doubt on the conclusion reached by the [OSCURATO:PERSONA] of Appeal in the decision at issue. 8 In addition, the appellant submits, as it had already done in its application before the [OSCURATO:PERSONA], that the concept of protective software already existed, in its current form, at the time trade mark No 2871622 was registered and that, if the sign “FORTIFY” is descriptive of the goods in question, that issue ought to have been raised at the time of registration of that mark. It considers that the assertion that linguistic and technical use in the field of antivirus software had allegedly changed during recent years, which places it at a disadvantage, is not based in any event on any fact which may be demonstrated. Likewise, the burden of proof in this connection is unlawfully shifted, given that it is for the appellant to prove that the assertions of the [OSCURATO:PERSONA] of Appeal and the [OSCURATO:PERSONA] are in fact inaccurate. 9 In that regard, it suffices to note that the judgment under appeal does not refer to the content of that argument of the [OSCURATO:PERSONA] of Appeal in the decision at issue, but that it bases its analysis on the argument that the principles of equal treatment and sound administration must be reconciled with the due process of law. Consequently, the person who seeks registration of a sign as a trade mark cannot rely, to his own benefit, on any unlawful act committed in favour of another in order to obtain an identical decision. However, it must be stated that such an argument was not subject to criticism in the appeal. 10 For those reasons, the second ground of appeal, in so far as it alleges infringement of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009, seems to be manifestly unfounded. 11 In addition, the appellant does not explain the reasons why it takes the view that there was an infringement of [OSCURATO:PERSONA] 99 of [OSCURATO:PERSONA] 207/2009 and [OSCURATO:PERSONA] 37(b)(iv) of [OSCURATO:PERSONA] 2868/95, which, moreover, had not been invoked before the [OSCURATO:PERSONA]. 12 In that context, it should be recalled that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside. In the present case, the appellant failed to mention the actual paragraphs of the judgment which it is contesting. 13 In addition, it follows from paragraph 28 of the application and from paragraph 28 of the appeal that the second ground of appeal constitutes a pure and simple repetition of the first plea relied on before the [OSCURATO:PERSONA]. 14 For those reasons, the second ground of appeal must consequently be dismissed as being in part manifestly unfounded and in part manifestly inadmissible.’ 5. For the same reasons as those given by the [OSCURATO:PERSONA], it is necessary to dismiss the appeal. Costs 6. [OSCURATO:PERSONA] 137 of the [OSCURATO:PERSONA] of Procedure, applicable to the procedure on appeal pursuant to [OSCURATO:PERSONA] 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. In the present case, since the present order was adopted before the appeal was served on the defendant and therefore before the latter could have incurred costs, [OSCURATO:PERSONA] must be ordered to bear its own costs. [OSCURATO:PERSONA] part On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. The appeal is dismissed. 2. [OSCURATO:PERSONA] LP is ordered to bear its own costs.
Sentenza Corte di giustizia UE n. 249/2016 — Fons Iuris — Fons Iuris