Corte di giustizia UE n. 207/2018

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 27 November 2018 ( * ) (EU trade mark — Application for EU word mark [OSCURATO:PERSONA] — Absolute ground for refusal — No distinctive character — [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] (EC) No 207/2009 (now [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] (EU) 2017/1001) — Action manifestly lacking any foundation in law) [OSCURATO:PERSONA] T‑756/17, CMS [OSCURATO:PERSONA] von Rechtsanwälten und Steuerberatern mbH, established in Berlin (Germany), represented by P.-C. Thielen, lawyer, applicant, v [OSCURATO:PERSONA] (EUIPO), represented by S. Bonne, acting as Agent, defendant, ACTION brought against the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 29 [OSCURATO:PERSONA] 2017 ([OSCURATO:PERSONA] R 329/2017-5), concerning an application for registration of the word sign [OSCURATO:PERSONA] as an EU trade mark, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of A.M. [OSCURATO:PERSONA], [OSCURATO:PERSONA], M. Kancheva and G. [OSCURATO:PERSONA] (Rapporteur), [OSCURATO:PERSONA], [OSCURATO:PERSONA]: E. Coulon, having regard to the application lodged at the [OSCURATO:PERSONA] on 13 November 2017, having regard to the response lodged at the [OSCURATO:PERSONA] on 2 February 2018, makes the following [OSCURATO:PERSONA] to the dispute 1 On 14 October 2015, the applicant, CMS [OSCURATO:PERSONA] von Rechtsanwälten und Steuerberatern mbH, filed an application for registration of an EU trade mark with the [OSCURATO:PERSONA] (EUIPO) pursuant to [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark (OJ 2009 L 78, p. 1), as amended (replaced by [OSCURATO:PERSONA] (EU) 2017/1001 of the [OSCURATO:PERSONA] and of the [OSCURATO:PERSONA] of 14 June 2017 on the [OSCURATO:PERSONA] trade mark (OJ 2017 L 154, p. 1)). 2 Registration as a trade mark was sought for the word sign [OSCURATO:PERSONA]. 3 The goods and services in respect of which registration was sought are in Classes 9, 16, 35, 41 and 45 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description: –        Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus’; –        Class 16: ‘Paper; cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; newsletters in the field of the local and global practice and development of law and the professional exchange of information regarding same’; –        Class 35: ‘Advertising; business management; business administration; office functions; services to industrial and commercial enterprises, to members of liberal profession and to associations in business management and organisation; association services, namely, promoting the interests of member law firms through the professional exchange of information about the local and global practice and development of law; business information and inquiries; compilation and systematisation of information into computer databases; organisation of exhibitions for commercial or advertising purposes’; –        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; conducting and providing seminars, conferences and meetings in the field of law firm practice and management, legal services, law firm marketing, issues affecting law firms, and law firm and lawyer networking, and distributing printed, audio and/or electronic course materials in connection therewith; providing (online) newsletters, books, newspapers, articles, monographs, online databases, CD-ROMS, computer software, audio recording, audio-visual recording in the field of the local and global practice and development of law and the professional exchange of information regarding same for educational purposes; hosting educational and social event meetings, conferences and seminars regarding the local and global practice and development of law and permitting attendees to engage in the professional exchange of information on these topics; arranging and conducting of colloquiums, conferences, congresses, seminars and symposiums; publication of books, magazines, newspapers and pamphlets; publication of texts (other than publicity texts), providing of training’; –        Class 45: ‘Legal services; security services for the protection of property and individuals; providing information about the local and global practice of law and the development of law; litigation services; legal research; supplying professional information regarding the evolution and the practice of law on a general and local level; referrals for legal services; legal advice services to industrial and commercial enterprises, to members of liberal profession and to associations in business management and organisation’. 4 On 27 April 2016, the examiner issued a first decision which was annulled on 14 October 2016 by decision of the [OSCURATO:PERSONA] of Appeal of EUIPO due to a substantial procedural defect. 5 By decision of 13 December 2016, the examiner rejected the application for registration of the mark [OSCURATO:PERSONA] on the basis of [OSCURATO:PERSONA] 7(1)(b) and (c) of [OSCURATO:PERSONA] 207/2009 (now [OSCURATO:PERSONA] 7(1)(b) and (c) of [OSCURATO:PERSONA] 2017/1001), read in conjunction with [OSCURATO:PERSONA] 7(2) of that regulation (now [OSCURATO:PERSONA] 7(2) of [OSCURATO:PERSONA] 2017/1001), for the following goods and services (‘the goods and services at issue’): –        Class 9: ‘Computer software’; –        Class 16: ‘Printed matter; newsletters in the field of the local and global practice and development of law and the professional exchange of information regarding same’; –        Class 35: ‘Advertising; business management; business administration; office functions; association services, namely, promoting the interests of member law firms through the professional exchange of information about the local and global practice and development of law; business information’; –        Class 41: ‘Conducting and providing seminars, conferences and meetings in the field of law firm practice and management, legal services, law firm marketing, issues affecting law firms, and law firm and lawyer networking, and distributing printed, audio and/or electronic course materials in connection therewith; providing (online) newsletters, books, newspapers, articles, monographs, online databases, CD-ROMS, computer software, audio recording, audio-visual recording in the field of the local and global practice and development of law and the professional exchange of information regarding same for educational purposes; hosting educational and social event meetings, conferences and seminars regarding the local and global practice and development of law and permitting attendees to engage in the professional exchange of information on these topics; arranging and conducting of colloquiums, conferences, congresses, seminars and symposiums; publication of books, magazines, newspapers and pamphlets; publication of texts (other than publicity texts)’; –        Class 45: ‘Legal services; legal advice services to industrial and commercial enterprises, to members of liberal profession and to associations in business management and organisation; providing information about the local and global practice of law and the development of law; litigation services; legal research; supplying professional information regarding the evolution and the practice of law on a general and local level; referrals for legal services’. 6 On 13 February 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of [OSCURATO:PERSONA] 207/2009 (now Articles 66 to 68 of [OSCURATO:PERSONA] 2017/1001), against the examiner’s decision. 7 By decision of 29 [OSCURATO:PERSONA] 2017 (‘the contested decision’), the [OSCURATO:PERSONA] of Appeal of EUIPO dismissed the appeal. [OSCURATO:PERSONA] of Appeal stated that the relevant public would perceive the expression ‘world law group’ as meaning ‘a group or association of entities active in the field of law whose activities are global’ and therefore as a promotional statement reflecting the international character of the association of entities active in the field of law or at least its ambition to act beyond national borders. It found that the semantic content of the mark applied for indicated to the consumer a positive characteristic of the goods and services relating to their nature, purpose or geographical scope. It concluded that the mark applied for would be perceived by the relevant public as only providing promotional and laudatory information on the nature of the goods and services at issue and not as an indication of their origin and that it was therefore devoid of any distinctive character within the meaning of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 7(2) of that regulation. Forms of order sought 8 The applicant claims that the [OSCURATO:PERSONA] should: –        annul the contested decision; –        order EUIPO to pay the costs. 9 EUIPO contends that the [OSCURATO:PERSONA] should: –        dismiss the application; –        order the applicant to pay the costs. Law 10 [OSCURATO:PERSONA] 126 of the Rules of Procedure of the [OSCURATO:PERSONA], where it is clear that the [OSCURATO:PERSONA] has no jurisdiction to hear and determine an action or where the action is manifestly inadmissible or manifestly lacking any foundation in law, the [OSCURATO:PERSONA] may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings. 11 In the present case, the [OSCURATO:PERSONA] considers that it has sufficient information from the documents before it and decides to give a decision on the action without taking further steps in the proceedings, even though one of the parties has requested a hearing (see, to that effect, order of 7 June 2016, [OSCURATO:PERSONA] v EUIPO ([OSCURATO:PERSONA]) , T‑220/15, not published, EU:T:2016:346, paragraph 12 and the case-law cited.) 12 In support of its application, the applicant puts forward three pleas in law, the first alleging infringement of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009, the second alleging infringement of [OSCURATO:PERSONA] 7(1)(b) of that regulation, and the third alleging infringement of the principles of equal treatment and the protection of legitimate expectations. The first plea, alleging infringement of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009 13 The applicant submits that the trade mark applied for is not descriptive of the goods and services at issue within the meaning of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009. 14 In that regard, it is sufficient to note that, in the contested decision, the [OSCURATO:PERSONA] of Appeal did not rely on that provision and that that plea must therefore be rejected as ineffective. The second plea, alleging infringement of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 207/2009 15 The applicant claims that the [OSCURATO:PERSONA] of Appeal erred in finding that the mark applied for is perceived as providing promotional and laudatory information and therefore as being devoid of distinctive character within the meaning of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 207/2009. 16 [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 207/2009 provides that trade marks which are devoid of any distinctive character are not to be registered. According to settled case-law, a mark has distinctive character within the meaning of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 207/2009, when that mark serves to identify the goods or services in respect of which registration was applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgments of 12 July 2012, [OSCURATO:PERSONA] v OHIM , C‑311/11 P, EU:C:2012:460, paragraph 23 and the case-law cited, and of 20 September 2017, [OSCURATO:PERSONA] v EUIPO , C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 52 and the case-law cited). 17 The distinctiveness of a mark can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (see judgments of 12 July 2012, [OSCURATO:PERSONA] v OHIM , C‑311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited, and of 4 May 2017, [OSCURATO:PERSONA] v EUIPO , C‑417/16 P, not published, EU:C:2017:340, paragraph 32 and the case-law cited). 18 It must be borne in mind that, according to settled case-law, registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use. However, a trade mark which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is distinctive for the purposes of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 207/2009 only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the proprietor of the mark from those of a different commercial origin (judgments of 3 July 2003, [OSCURATO:PERSONA] v OHIM ([OSCURATO:PERSONA]) , T‑122/01, EU:T:2003:183, paragraph 21, and of 22 March 2018, [OSCURATO:PERSONA] v EUIPO ([OSCURATO:PERSONA]) , T‑235/17, not published, EU:T:2018:162, paragraph 46). 19 For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the goods or services relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will at first sight perceive as such, rather than as an indication of the commercial origin of the goods and services at issue (judgments of 30 June 2004, [OSCURATO:PERSONA] v OHIM (Mehr für [OSCURATO:PERSONA]) , T‑281/02, EU:T:2004:198, paragraph 31, and of 22 March 2018, [OSCURATO:PERSONA] , T‑235/17, not published, EU:T:2018:162, paragraph 47). 20 Thus, 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 only as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods or services in question (see judgments of 6 June 2013, [OSCURATO:PERSONA] v OHIM ([OSCURATO:PERSONA]) , T‑515/11, not published, EU:T:2013:300, paragraph 36 and the case-law cited, and of 24 April 2018, VSM v EUIPO ([OSCURATO:PERSONA]) , T‑297/17, not published, EU:T:2018:217, paragraph 34 and the case-law cited). 21 In the present case, the [OSCURATO:PERSONA] of Appeal found, without being challenged on that point by the applicant, that the relevant public consisted both of the general public and of professionals and that it was situated in the English-speaking territory of the [OSCURATO:PERSONA]. It held that the expression ‘world law group’ would be understood by the relevant public as meaning ‘a group or an association of entities active in the field of law whose activities are global’, which the applicant expressly acknowledges in the application. 22 [OSCURATO:PERSONA] of Appeal took the view that the meaning of the expression ‘world law group’ was clear to any English-speaking consumer who would immediately and without difficulty establish a direct and specific link between the mark applied for and the characteristics of the goods and services in question. According to the [OSCURATO:PERSONA] of Appeal, in the light of the rules of English syntax or grammar, that expression was not of an unusual nature likely to lead the relevant public to make an association of a different kind. [OSCURATO:PERSONA] of Appeal then examined the mark applied for in respect of the goods and services at issue and found that the relevant public, when confronted with the mark applied for, would see it as a promotional statement reflecting the international character of the association of entities active in the field of law or at least its ambition to act beyond national borders. 23 [OSCURATO:PERSONA] of Appeal found that, in view of the above definitions and the message conveyed by the mark applied for as a whole, the relevant public would unequivocally and without any mental effort perceive the mark applied for as a promotional message, the function of which is to communicate to consumers a value statement and an informative message concerning the characteristics of the goods and services in question and reflecting their positive aspects. 24 Finally, the [OSCURATO:PERSONA] of Appeal concluded that the mark applied for did not go beyond its obvious promotional and laudatory meaning, and did not enable the relevant public to memorise it easily and instantly as a distinctive mark in respect of the goods and services at issue. It concluded that the mark applied for was devoid of any distinctive character for the goods and services at issue within the meaning of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 207/2009. 25 It is clear that the applicant does not dispute the [OSCURATO:PERSONA] of Appeal’s finding that the meaning of the mark applied for has a promotional content, in so far as it refers to the positive characteristics of the goods and services at issue in relation to their nature, purpose or geographical scope. 26 In that regard, the applicant merely contends that the [OSCURATO:PERSONA] of Appeal erred in assuming that the mark applied for fails to go beyond its alleged purely promotional and laudatory meaning and maintains that the specific wording of the mark applied for will be immediately perceived by the relevant public as an indication of the origin of the goods and services in question and not only as a mere promotional or laudatory formula. 27 It is sufficient to note that, in order to support those claims, the applicant puts forward no argument seeking to establish either that the relevant public would not immediately perceive the mark applied for as having the promotional meaning relied on by the [OSCURATO:PERSONA] of Appeal or that the public would perceive it as having a different meaning. 28 In addition, the applicant complains that the [OSCURATO:PERSONA] of Appeal found that, since the mark applied for consists of indications which are also used as advertising slogans, it required a particular originality, resonance or a play on words to have a minimal level of distinctiveness. That view is borne out by the finding that there was nothing ‘fanciful’ about the mark applied for. According to the applicant, that position of the [OSCURATO:PERSONA] of Appeal is contrary to the case-law according to which registration of a sign as a trade mark is under no circumstances subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. There is no requirement for an advertising slogan to display fancifulness in order to have a minimal level of distinctiveness. 29 In that regard, in the contested decision, the [OSCURATO:PERSONA] of Appeal pointed out that the combination of the words in question was not a play on words in English and did not contain any element which made it easily memorable and that the mark applied for was not fanciful or original. It held that the mere fact that three ordinary English words were conjoined was insufficient to endow the mark with any distinctive character. 30 Suffice it to note that that assessment of the [OSCURATO:PERSONA] of Appeal complies with the requirements of the case-law. 31 It is true that, according to the case-law, in order to establish the distinctive character of a sign, it is not necessary to find that the sign is original or fanciful (see judgment of 13 July 2005, Sunrider v OHIM (TOP) , T‑242/02, EU:T:2005:284, paragraph 91 and the case-law cited; judgment of 25 May 2016, U-R LAB v EUIPO ([OSCURATO:PERSONA]) , T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 66). 32 However, according to settled case-law, 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 may be recognised as having distinctive character and the ability to indicate to the consumer the commercial origin of the goods or services at issue where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (judgment of 21 March 2014, FTI Touristik v OHIM (BigXtra) , T‑81/13, not published, EU:T:2014:140, paragraph 18; see, to that effect, judgment of 21 January 2010, Audi v OHIM , C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57). 33 In the present case, the [OSCURATO:PERSONA] of Appeal therefore correctly found that the mark applied for did not contain any play on words or any unusual element making it possible for the relevant public, beyond its obvious positive meaning, to memorise it easily and instantly as a trade mark in respect of the goods and services at issue and that it had no originality capable of endowing it with distinctive character such as to enable the relevant public to perceive it otherwise than as a mere promotional message. 34 Therefore, the [OSCURATO:PERSONA] of Appeal was correct to hold that the mark applied for was devoid of distinctive character in respect of all of the goods and services at issue within the meaning of [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 207/2009. 35 The other arguments put forward by the applicant are not capable of calling into question that conclusion of the [OSCURATO:PERSONA] of Appeal. 36 First, the applicant submits that the mark applied for will be perceived as an indication of the commercial origin of the goods and services at issue, and states that an internet search with the expression ‘world law group’ returns results about or relating to it. 37 Such an argument cannot succeed. It is sufficient to state that, if by that argument the applicant is seeking to claim that the sign [OSCURATO:PERSONA] has acquired distinctiveness through use, it has not invoked the application of [OSCURATO:PERSONA] 7(3) of [OSCURATO:PERSONA] 207/2009 (now [OSCURATO:PERSONA] 7(3) of [OSCURATO:PERSONA] 2017/1001), or provided any evidence to prove it. 38 Second, the applicant submits that the level of tolerance for marks which are of weak distinctive character is higher in the law and business sector than in other sectors, due to a practice of using trade names and company names ending with the word ‘group’, with the result that the relevant public is used to identifying the origin of goods and services in that manner. 39 It is sufficient to note that that claim is not based on any objective proof or prima facie evidence and that the applicant is confusing the function of a trade mark with that of a company name. 40 Third, the applicant refers to the expression ‘world bank group’, claiming that it would be perceived by the relevant public as an indication of the origin of certain goods and services and not as a description of them and stating that the sign [OSCURATO:PERSONA] has been registered by EUIPO as a trade mark. 41 In that regard, it is sufficient to note that the mark [OSCURATO:PERSONA] to which the applicant refers is a figurative mark whose assessment of distinctive character cannot be compared to that of the mark applied for. 42 It is clear from the above that the second plea must be rejected as being manifestly unfounded. The third plea, alleging breach of the principles of equal treatment and of the protection of legitimate expectations 43 The applicant submits that many marks similar to the mark applied for have been registered by EUIPO for legal services and, in particular, that the mark [OSCURATO:PERSONA] was registered for financial services. Therefore, the refusal to register the mark applied for in respect of the goods and services at issue constitutes a breach of the principles of equal treatment and the protection of legitimate expectations. 44 In the first place, according to settled case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. It must, when examining an application for registration of an EU 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 (judgment of 10 March 2011, [OSCURATO:PERSONA] v OHIM , C‑51/10 P, EU:C:2011:139, paragraph 74; see also judgments of 9 November 2016, [OSCURATO:PERSONA] v EUIPO ([OSCURATO:PERSONA]) , T‑290/15, not published, EU:T:2016:651, paragraphs 66 and 67 and the case-law cited, and of 19 April 2018, Rintisch v EUIPO — Compagnie laitière européenne (PROTICURD) , T‑25/17, not published, EU:T:2018:195, paragraph 93 and the case-law cited). 45 Nevertheless, 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 an EU 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 (judgments of 10 March 2011, [OSCURATO:PERSONA] v OHIM , C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76, and of 9 November 2016, [OSCURATO:PERSONA] , T‑290/15, not published, EU:T:2016:651, paragraph 68 and the case-law cited). 46 Moreover, for reasons of legal certainty and, specifically, of 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 an EU trade 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, [OSCURATO:PERSONA] v OHIM , C‑51/10 P, EU:C:2011:139, paragraph 77; see also judgments of 9 November 2016, [OSCURATO:PERSONA] , T‑290/15, not published, EU:T:2016:651, paragraph 69 and the case-law cited, and of 19 April 2018, PROTICURD , T‑25/17, not published, EU:T:2018:195, paragraph 93 and the case-law cited). 47 It also follows from the case-law that the considerations set out in paragraphs 44 to 46 of the present order apply even if the sign whose registration is sought as an EU trade mark is composed in a manner identical to that of a mark in respect of which EUIPO has already approved registration as an EU trade mark and which relates to goods or services identical or similar to those in respect of which registration of the sign in question is sought (order of 12 December 2013, [OSCURATO:PERSONA] (US) v OHIM , C‑70/13 P, not published, EU:C:2013:875, paragraph 45; see also judgment of 9 November 2016, [OSCURATO:PERSONA] , T‑290/15, not published, EU:T:2016:651, paragraph 70 and the case-law cited; judgment of 23 April 2018, [OSCURATO:PERSONA] v EUIPO ([OSCURATO:PERSONA]) , T‑354/17, not published, EU:T:2018:212, paragraph 49). 48 In the present case, since the [OSCURATO:PERSONA] of Appeal correctly concluded that the application for registration of the mark [OSCURATO:PERSONA] in respect of the goods and services at issue was caught by the ground for refusal set out in [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 207/2009, the applicant could not reasonably rely, for the purposes of invalidating that conclusion, on EUIPO’s previous decisions. 49 Moreover, it must be held that the earlier decisions relied on by the applicant were adopted by EUIPO’s examiners. In that regard, the [OSCURATO:PERSONA] of Appeal raised the point that the two previous decisions which had been invoked before it were decisions taken at first instance which had not been challenged. It suffices to observe that neither the [OSCURATO:PERSONA] of Appeal nor the [OSCURATO:PERSONA] can be bound by the decisions adopted by EUIPO’s examiners (see judgment of 9 November 2016, [OSCURATO:PERSONA] , T‑290/15, not published, EU:T:2016:651, paragraph 73 and the case-law cited; judgment of 28 June 2017, Colgate-Palmolive v EUIPO (AROMASENSATIONS) , T‑479/16, not published, EU:T:2017:441, paragraph 42). 50 It follows that the applicant’s argument alleging breach of the principle of equal treatment must be rejected as being manifestly unfounded. 51 In the second place, it must be borne in mind that, according to settled case-law, the decisions concerning the registration of signs as EU trade marks which the Boards of Appeal take under [OSCURATO:PERSONA] 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Consequently, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice of those Boards of Appeal (see judgments of 12 January 2006, Deutsche SiSi-Werke v OHIM , C‑173/04 P, EU:C:2006:20, paragraph 48 and the case-law cited, and of 9 November 2016, [OSCURATO:PERSONA] , T‑290/15, not published, EU:T:2016:651, paragraph 71 and the case-law cited; judgment of 22 March 2018, [OSCURATO:PERSONA] , T‑235/17, not published, EU:T:2018:162, paragraph 58). 52 It follows that EUIPO’s earlier decisions cannot give rise to legitimate expectations (judgments of 7 October 2015, [OSCURATO:PERSONA] v OHIM (Shape of a smiley with heart-shaped eyes) , T‑656/13, not published, EU:T:2015:758, paragraph 48, and of 9 November 2016, [OSCURATO:PERSONA] , T‑290/15, not published, EU:T:2016:651, paragraph 72). 53 Therefore, the applicant’s argument alleging breach of the principle of the protection of legitimate expectations must be rejected as being manifestly unfounded. 54 Accordingly, the third plea must be rejected as being manifestly unfounded. 55 In the light of all the foregoing the action must be dismissed as manifestly lacking any foundation in law. Costs 56 [OSCURATO:PERSONA] 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. On those grounds, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. The action is dismissed. 2. CMS [OSCURATO:PERSONA] von Rechtsanwälten und Steuerberatern mbH is ordered to pay the costs. Luxembourg, 27 November 2018. [OSCURATO:PERSONA] E. Coulon A.M. [OSCURATO:PERSONA] * Language of the case: English.