Corte di giustizia UE n. 2017/2019

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 8 May 2019 ( * ) (EU trade mark — Application for the EU word mark HEATCOAT — Absolute ground for refusal — Descriptiveness — [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] (EU) 2017/1001– Equal treatment — Principle of sound administration) [OSCURATO:PERSONA] T‑469/18, [OSCURATO:PERSONA], established in Columbus, Ohio ([OSCURATO:PERSONA]), represented by B. Brandreth QC, applicant, v [OSCURATO:PERSONA] (EUIPO), represented by P. Sipos and H. O’Neill, acting as Agents, defendant, ACTION brought against the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 16 May 2018 ([OSCURATO:PERSONA] R 36/2018-2), relating to an application for registration of the word sign HEATCOAT as an EU trade mark, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of G. [OSCURATO:PERSONA], [OSCURATO:PERSONA], S. [OSCURATO:PERSONA] and O. [OSCURATO:PERSONA]-[OSCURATO:PERSONA] (Rapporteur), [OSCURATO:PERSONA], [OSCURATO:PERSONA]: E. Coulon, having regard to the application lodged at the [OSCURATO:PERSONA] on 26 July 2018, having regard to the response lodged at the [OSCURATO:PERSONA] on 21 November 2018, having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to [OSCURATO:PERSONA] 106(3) of the Rules of Procedure of the [OSCURATO:PERSONA], gives the following [OSCURATO:PERSONA] to the dispute 1 On 15 June 2017, the applicant, [OSCURATO:PERSONA], 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 mark was sought for the word sign HEATCOAT. 3 The goods in respect of which registration was sought are Class 1 of the [OSCURATO:PERSONA] concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Carbon-based, electrically conductive, de-icing material layers and preparations for aircraft surfaces’. 4 By decision of 10 November 2017, the examiner refused the application for registration in respect of the goods referred to in paragraph 3 above on the basis of [OSCURATO:PERSONA] 7(1)(b) and (c) of [OSCURATO:PERSONA] 2017/1001 in conjunction with [OSCURATO:PERSONA] 7(2) of that regulation. 5 On 8 January 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of [OSCURATO:PERSONA] 2017/1001, against the examiner’s decision. 6 By decision of 16 May 2018 (‘the contested decision’), the [OSCURATO:PERSONA] of Appeal of EUIPO dismissed the appeal, taking the view that the sign in question was descriptive and devoid of any distinctive character with regard to the goods referred to in paragraph 3 above. 7 In the first place, the [OSCURATO:PERSONA] of Appeal found that the goods in question were aimed at a public consisting of professionals in the industrial sector, whose level of attention is high, and that, as the mark applied for consisted of elements derived from [OSCURATO:PERSONA], the assessment as to whether it was descriptive had to be carried out with regard to the [OSCURATO:PERSONA]-speaking public in the [OSCURATO:PERSONA] (paragraphs 14 and 15 of the contested decision). 8 In the second place, as regards the ground for refusal based on [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001, first, the [OSCURATO:PERSONA] of Appeal endorsed the findings of the examiner, who had, first of all, found that the mark applied for consisted of the words ‘heat’ and ‘coat’, then given possible definitions of those two terms and, lastly, found that the expression ‘heatcoat’ was apt to describe a coat/coating (de-icing material layers and preparations) of heat (carbon-based, electrically conductive) for aircraft surfaces and conveyed obvious and direct information regarding the nature and intended purpose of the goods concerned (paragraphs 18 and 20 of the contested decision). 9 Secondly, the [OSCURATO:PERSONA] of Appeal rejected the applicant’s arguments. It thus took the view that, when the relevant public was faced with the mark applied for in relation to the goods in question, it would immediately perceive, without any further reflection, that those goods were aimed at providing a ‘coat’ of ‘heat’ for aircraft surfaces and that that mark fell within the field of description, and not, as the applicant claimed, within that of allusion, evocation or suggestion (paragraphs 21 to 24 and 26 of the contested decision). According to the [OSCURATO:PERSONA] of Appeal, the fact that there might be more usual expressions, such as those mentioned by the applicant, namely ‘hot coating’ or ‘heated coating’, to describe the same characteristics of the goods at issue was irrelevant (paragraph 25 of the contested decision). 10 Thirdly, after stating, for the sake of completeness, that the descriptiveness threshold of the mark in question did not have to be somehow ‘higher’ in order to fall within the scope of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001 when the relevant public was a specialist public, as that public would, on the contrary, perceive the descriptive connotation of the sign in a more immediate way than members of the general public would, the [OSCURATO:PERSONA] of Appeal concluded that the mark applied for was descriptive (paragraphs 27 and 28 of the contested decision). 11 In the third place, as regards the ground for refusal based on [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 2017/1001, first, the [OSCURATO:PERSONA] of Appeal found that, since the contested mark was a purely descriptive indication in respect of the goods concerned, it was also devoid of any distinctive character for those goods within the meaning of that provision (paragraph 30 of the contested decision). Secondly, the [OSCURATO:PERSONA] of Appeal stated, for the sake of completeness, that the mark applied for had to be regarded as being devoid of any distinctive character because it was also a laudatory expression (paragraphs 31 and 32 of the contested decision). Thirdly, the [OSCURATO:PERSONA] of Appeal rejected the applicant’s argument that allegedly similar marks had been accepted by EUIPO (paragraphs 34 to 37 of the contested decision). Forms of order sought 12 The applicant claims that the [OSCURATO:PERSONA] should: –        annul the contested decision; –        order EUIPO to pay the costs, including those incurred before the [OSCURATO:PERSONA] of Appeal. 13 EUIPO contends that the [OSCURATO:PERSONA] should: –        dismiss the action; –        order the applicant to pay the costs. Law 14 In support of the action the applicant puts forward three pleas in law, alleging, in essence (i) infringement of [OSCURATO:PERSONA] 7(1)(c) and (2) and [OSCURATO:PERSONA] 95 of [OSCURATO:PERSONA] 2017/1001; (ii) infringement of [OSCURATO:PERSONA] 7(1)(b) and (2) of [OSCURATO:PERSONA] 2017/1001; and (iii) infringement of the principles of equal treatment and sound administration. The first plea in law, alleging infringement of [OSCURATO:PERSONA] 7(1)(c) and (2) and [OSCURATO:PERSONA] 95 of [OSCURATO:PERSONA] 2017/1001 15 The applicant pleads infringement of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001 and puts forward three complaints in that regard. In the first place, it submits that the [OSCURATO:PERSONA] of Appeal failed to apply the case-law that, where a trade mark consists of a neologism, it is not enough for each word to be descriptive, the neologism itself must be descriptive. In the second place, it maintains that the [OSCURATO:PERSONA] of Appeal erred in finding that the relevant public, when presented with the word ‘heatcoat’, would immediately perceive, without any further reflection, a characteristic of the goods in question. In the third place, it argues that the [OSCURATO:PERSONA] of Appeal erred in finding that the words ‘heat’ and ‘coat’, taken separately, were descriptive of a characteristic of those goods and in finding that the applicant had conceded that descriptiveness, which also, in the applicant’s view, constitutes infringement of [OSCURATO:PERSONA] 95 of [OSCURATO:PERSONA] 2017/1001. 16 EUIPO disputes the applicant’s arguments. 17 [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service must not be registered. [OSCURATO:PERSONA], [OSCURATO:PERSONA] 7(2) of [OSCURATO:PERSONA] 2017/1001 states that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability obtain in only part of the [OSCURATO:PERSONA]. 18 According to the case-law, [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (judgment of 23 October 2003, OHIM v Wrigley , C‑191/01 P, EU:C:2003:579, paragraph 31; see also, judgment of 21 September 2017, InvoiceAuction B2B v EUIPO ([OSCURATO:PERSONA]) , T‑789/16, not published, EU:T:2017:638, paragraph 29 and the case-law cited). 19 [OSCURATO:PERSONA], signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, under [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 23 October 2003, OHIM v Wrigley , C‑191/01 P, EU:C:2003:579, paragraph 30, and of 21 September 2017, [OSCURATO:PERSONA] , T‑789/16, not published, EU:T:2017:638, paragraph 30). 20 It follows that, for a sign to be caught by the prohibition set out in [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 20 July 2017, Windfinder R&L v EUIPO (Windfinder) , T‑395/16, not published, EU:T:2017:530, paragraph 29 and the case-law cited). Whether a sign is descriptive can be assessed only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (see judgment of 21 September 2017, [OSCURATO:PERSONA] , T‑789/16, not published, EU:T:2017:638, paragraph 32 and the case-law cited). 21 It is in the light of those considerations that it is necessary to examine the applicant’s arguments that the [OSCURATO:PERSONA] of Appeal erred in finding that the mark applied for was descriptive. 22 In the present case, in the first place, as regards the goods covered by the mark applied for, which are in Class 1 and are referred to in paragraph 3 above, it must be stated that they are material layers and preparations for de-icing aircraft surfaces. [OSCURATO:PERSONA] of Appeal took the view that those goods were aimed at a public consisting of professionals in the industrial sector in the [OSCURATO:PERSONA], whose level of attention was high. [OSCURATO:PERSONA], given that the mark applied for consists of [OSCURATO:PERSONA] terms, the [OSCURATO:PERSONA] of Appeal found that the absolute ground for refusal had to be examined by reference to the [OSCURATO:PERSONA]-speaking consumers in the [OSCURATO:PERSONA] (paragraphs 14 and 15 of the contested decision). Those findings on the part of the [OSCURATO:PERSONA] of Appeal, which have not, moreover, been disputed by the parties, are correct and must be upheld. 23 In the second place, as regards the [OSCURATO:PERSONA] of Appeal’s assessment as to the meaning of the mark applied for, it must be stated that that mark consists of two [OSCURATO:PERSONA] terms, namely ‘coat’ and ‘heat’. As the [OSCURATO:PERSONA] of Appeal correctly found, on the basis of the [OSCURATO:PERSONA] , the term ‘heat’ is a word element which, as a verb, means ‘to make hot, to warm’ or ‘to communicate heat to’ and, as a noun, means ‘the quality of being hot’. It also correctly found, in essence, that, according to the [OSCURATO:PERSONA] , the term ‘coat’, as a verb, meant ‘to provide with a layer or covering of something’ and, as a noun, meant ‘an outer layer or covering’ or ‘a single application of paint or similar material on a surface (paragraphs 16, 17 and 20 of the contested decision). The applicant does not call into question the meanings which the [OSCURATO:PERSONA] of Appeal found those terms to have. 24 Consequently, it is sufficient to state that, in view of the terms of which it consists, the meaning which the [OSCURATO:PERSONA] of Appeal found the mark applied for to have (paragraph 18 of the contested decision), as referred to in paragraph 8 above, namely that it is apt to describe a coat/coating (de-icing material layers and preparations) of heat (carbon-based, electrically conductive), is correct. 25 That finding cannot be called into question by the applicant’s arguments. Contrary to the applicant’s claims, the [OSCURATO:PERSONA] of Appeal did not fail to consider distinctly whether the ‘neologism’ ‘heatcoat’ created an impression sufficiently far removed from the meaning of the parts of which it consists. 26 In that regard, it must be pointed out that the [OSCURATO:PERSONA] of Appeal, after referring to the reasoning followed by the examiner and endorsing his findings (paragraph 20 of the contested decision), thus found that the relevant public would not perceive the mark applied for as anything other than the combination of the elements of which it consists (paragraph 18 of the contested decision). 27 The applicant submits, however, that the [OSCURATO:PERSONA] of Appeal combined one possible definition of each of the words ‘heat’ and ‘coat’ and, in the absence of any reasoned analysis, simply concluded that the relevant public would do the same. The applicant maintains that the sign HEATCOAT is not a grammatically usual way of combining two terms so as to give the suggested meaning for ‘heatcoat’ set out in paragraph 18 of the contested decision, namely ‘a coat ... of heat’. According to the applicant, that unusual nature lies, first, in the fact that that sign consists of a single word, and not of two words, and, secondly, to the extent that it can be seen as a composite, in the combination of two nouns, and not of an adjective and a noun. 28 First, it must be stated that, in spite of the applicant’s use of the term neologism to categorise the expression ‘heatcoat’, that expression, as the applicant, moreover, concedes, is not a new term that appears in [OSCURATO:PERSONA]-language dictionaries. It is true that the wording in paragraph 21 of the contested decision, namely that the conceptual content of a mark in the consumer’s perception does not necessarily coincide with its dictionary definition, is such that it could be understood as meaning that the [OSCURATO:PERSONA] of Appeal wished to state that that expression appeared in a dictionary. However, as EUIPO submits, it is clear from a combined reading of paragraphs 16 to 19 of the contested decision that the [OSCURATO:PERSONA] of Appeal intended to refer to the composition of the mark applied for, which consists of the juxtaposition of two terms which appear in a dictionary. [OSCURATO:PERSONA], contrary to what the applicant claims, the mark applied for does not consist of a single word because it is a neologism, but of the simple juxtaposition of two terms (see, to that effect, judgment of 17 January 2019, Ecolab USA v EUIPO (SOLIDPOWER) , T‑40/18, not published, EU:T:2019:18, paragraph 32). 29 Secondly, it is important to bear in mind that, although, according to the case-law, an analysis of the terms at issue in the light of the appropriate lexical and grammatical rules is admittedly relevant (see, to that effect, judgment of 19 April 2016, [OSCURATO:PERSONA] v EUIPO (Daylong) , T‑261/15, not published, EU:T:2016:220, paragraph 21 and the case-law cited), the fact that the mark applied for may have a structure which is grammatically incorrect as a means of describing goods is not, in itself, sufficient for it to be found that such a sign is not descriptive (see, to that effect, judgments of 7 June 2005, [OSCURATO:PERSONA]Gesellschaft v OHIM (MunichFinancialServices) , T‑316/03, EU:T:2005:201, paragraph 36, and of 2 December 2015, adp Gauselmann v OHIM ([OSCURATO:PERSONA]) , T‑529/14, not published, EU:T:2015:919, paragraph 32). 30 In the present case, any difference which may arise when the mark applied for is compared with expressions that comply with the rules of [OSCURATO:PERSONA] grammar and may therefore constitute expressions that describe the goods concerned, such as ‘heated coat’ or ‘heating coat’, expressions which are referred to by the applicant and in which suffixes are added to the word ‘heat’, is not capable of conferring on that mark a meaning which is sufficiently far removed from that produced by the mere combination of the elements that comprise it, even though those elements are nouns which have been placed side by side, in the light, moreover, of the order of the terms of which that mark consists, which complies with those rules. [OSCURATO:PERSONA], it must be pointed out that, according to the [OSCURATO:PERSONA] , the term ‘heat’ may be combined with another noun which follows it so as to indicate the use of heat, for example ‘heat pump’. 31 In the third place, as regards the descriptiveness of the mark applied for, the [OSCURATO:PERSONA] of Appeal found that, when the relevant public was faced with that mark in relation to the goods in question, it would immediately perceive, without any further reflection, that those goods were aimed at providing a ‘coat’ of ‘heat’ for aircraft surfaces (paragraph 23 of the contested decision). According to the applicant, the [OSCURATO:PERSONA] of Appeal did not give proper consideration to whether the sign HEATCOAT served to designate a characteristic of the goods in question. 32 First, the applicant claims that the message of the sign HEATCOAT is not immediately conveyed to the relevant public, because an adjectival phrase, such as, for example, ‘heated coat’ or ‘heatable coat’, would be required to convey a characteristic of the goods in question, and not the combination of the terms ‘heat’ and ‘coat’. However, it is sufficient to state that that argument relates to the meaning which the relevant public might, when faced with the mark applied for, perceive that mark as having and that it has already been rejected on the grounds set out in paragraphs 24 to 30 above. 33 Secondly, the applicant submits that the essential characteristic of the good in question, which will be perceived by the relevant public, is that they are layers or preparations which are carbon-based and electrically conductive. According to the applicant, even though it may be that the relevant public would take the view that heating could result as a consequence of the electrical conduction, that, however, requires a mental leap. [OSCURATO:PERSONA], it maintains that heating would, in those circumstances, be a consequence of a characteristic of those goods, namely that the goods are carbon-based and electrically conductive, and not one of their characteristics. 34 In that regard, it must be pointed out that the purpose of the goods at issue, which are electrically conductive material layers or preparations, is that of de-icing. The applicant maintains that there is, however, no direct relationship between the sign HEATCOAT and the goods in question given that de-icing systems are not restricted to heating. However, it must be stated that, since the applicant admits that de-icing may be carried out by means of heating, the existence of that possibility is sufficient for it to be held that there is a direct and specific link between the mark applied for and the goods in question, which are coats or coatings that are capable of being heated and thus of becoming ‘coats of heat’, in particular for aircraft surfaces. That is a fortiori true because the relevant public consists of professionals in the industrial sector, who are not capable of overlooking the possibility of de-icing by heating, by means of conductive elements with which, for example, some vehicles’ windows are equipped. 35 It follows that, contrary to the applicant’s claims, there is a link between the mark applied for and the goods concerned that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, the intended purpose of those goods, which is that of de-icing by means of heating and constitutes the expected result of using the goods in question. The intended purpose constitutes one of the characteristics referred to in [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001 (see paragraph 17 above). [OSCURATO:PERSONA], it is necessary to reject the applicant’s argument that the [OSCURATO:PERSONA] of Appeal’s analysis, which allegedly has ‘six stages’, stages which the applicant itself discerned, runs counter to such a finding. The reasoning followed by the [OSCURATO:PERSONA] of Appeal, which, first, defined the relevant public, then, ascertained the possible meaning of each of the terms of which the mark applied for consists, subsequently, examined the relevant public’s perception of the meaning of that mark as a whole and, lastly, analysed the possible link between the goods or their characteristics and the mark applied for, complies with the requirements of the case-law. 36 Consequently, the [OSCURATO:PERSONA] of Appeal was right in finding that the mark applied for was descriptive for the purposes of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001. 37 That finding cannot be called into question by the applicant’s argument that the [OSCURATO:PERSONA] of Appeal infringed [OSCURATO:PERSONA] 95 of [OSCURATO:PERSONA] 2017/1001 by erroneously finding that the applicant had admitted that the words ‘heat’ and ‘coat’, taken separately, were descriptive of a characteristic of the goods at issue. The applicant maintains that, on account of that error, the [OSCURATO:PERSONA] of Appeal failed to consider properly its arguments that the words ‘heat’ and ‘coat’ when combined make no sense as those words would require an additional suffix to be descriptive. 38 It must be pointed out that [OSCURATO:PERSONA] 95 of [OSCURATO:PERSONA] 2017/1001 provides that: ‘1. In proceedings before it [EUIPO] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. … 2. [EUIPO] may disregard facts or evidence which are not submitted in due time by the parties concerned.’ 39 In that regard, it must be stated that, although the applicant pleads infringement of [OSCURATO:PERSONA] 95 of [OSCURATO:PERSONA] 2017/1001, it does not set out the reason why the alleged error on the part of the [OSCURATO:PERSONA] of Appeal is capable of constituting an infringement of that article. 40 In any event, it must be held that, although the [OSCURATO:PERSONA] of Appeal stated, in paragraph 19 of the contested decision, that the applicant admitted that the words ‘heat’ and ‘coat’, taken separately, could be descriptive of characteristics of the goods at issue, that statement has its origin in the ambiguity of the wording which the applicant used in the grounds for its appeal. [OSCURATO:PERSONA], the fact remains that the [OSCURATO:PERSONA] of Appeal also referred, in the same paragraph of the contested decision, to the applicant’s argument concerning the necessity of adding an additional suffix. However, that argument must be rejected, as has already been stated in paragraphs 29 and 30 above. Consequently, it cannot be maintained that the [OSCURATO:PERSONA] of Appeal made, in that regard, any error which is capable of calling the legality of the contested decision into question. 41 In the light of all of the foregoing considerations, the first plea in law must be rejected. The second plea in law, alleging infringement of [OSCURATO:PERSONA] 7(1)(b) and (2) of [OSCURATO:PERSONA] 2017/1001 42 The applicant submits that the [OSCURATO:PERSONA] of Appeal’s finding under [OSCURATO:PERSONA] 7(1)(b) of [OSCURATO:PERSONA] 2017/1001 is tainted by the error which the [OSCURATO:PERSONA] of Appeal made under [OSCURATO:PERSONA] 7(1)(c) of that regulation. It claims, in essence, that the mark applied for has sufficient distinctive character to be registered as an EU trade mark. 43 EUIPO disputes the applicant’s arguments. 44 In that regard, it must be borne in mind that, as is apparent from [OSCURATO:PERSONA] 7(1) of [OSCURATO:PERSONA] 2017/1001, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign in question to be ineligible for registration as an EU trade mark (order of 13 February 2008, Indorata-Serviços e Gestão v OHIM , C‑212/07 P, not published, EU:C:2008:83, paragraph 27; see also judgment of 17 January 2019, Ecolab USA v EUIPO (SOLIDPOWER) , T‑40/18, not published, EU:T:2019:18, paragraph 52 and the case-law cited). 45 In the present case, since the mark applied for has been held to be descriptive of the goods in question and cannot, consequently, be registered as an EU trade mark as it comes within the scope of the ground for refusal set out in [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001, it is not necessary to examine the second plea in law, alleging infringement of [OSCURATO:PERSONA] 7(1)(b) and (2) of that regulation. The third plea in law, alleging infringement of the principles of equal treatment and sound administration 46 The applicant states that it accepts that the assessment of the registrability of a sign as an EU trade mark must be carried out solely on the basis of [OSCURATO:PERSONA] 2017/1001. However, it claims that, in the light of the principles of equal treatment and sound administration, EUIPO must take into account decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, as those principles must be applied in a manner which is consistent with respect for legality. It relies on the registration of two EU trade marks, namely THERMCOAT and CLIMATECOAT, and submits that, in the context of those applications, EUIPO did not make the errors which tainted the [OSCURATO:PERSONA] of Appeal’s reasoning in the present case. 47 EUIPO has not made any observations as regards those arguments. 48 It must be borne in mind that 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 (judgment of 10 March 2011, [OSCURATO:PERSONA] v OHIM , C‑51/10 P, EU:C:2011:139, paragraph 73). In the light of those two principles, EUIPO 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 (see judgment of 10 March 2011, [OSCURATO:PERSONA] v OHIM , C‑51/10 P, EU:C:2011:139, paragraph 74 and the case-law cited). 49 That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality (judgment of 10 March 2011, [OSCURATO:PERSONA] v OHIM , C‑51/10 P, EU:C:2011:139, paragraph 75). 50 Moreover, for reasons of legal certainty and, indeed, 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 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 (see judgment of 10 March 2011, [OSCURATO:PERSONA] v OHIM , C‑51/10 P, EU:C:2011:139, paragraph 77 and the case-law cited). 51 First of all, as the [OSCURATO:PERSONA] of Appeal pointed out in paragraph 38 of the contested decision, it should be noted that the marks referred to by the applicant are not the same as the mark applied for and cover goods which are different from those in question in the present case, so that the factual circumstances are different. 52 Next, it must be pointed out that the various trade marks relied on by the applicant, which also contain the term ‘coat’, were accepted by EUIPO’s examiner. Neither the [OSCURATO:PERSONA] of Appeal nor the [OSCURATO:PERSONA] can in any way be bound by the decisions adopted by that examiner. In particular, it would be contrary to the [OSCURATO:PERSONA] of Appeal’s task as a review body, as defined in recital 30 and Articles 66 to 71 of [OSCURATO:PERSONA] 2017/1001, for its competence to be limited to complying with the decisions of the first-instance adjudicating bodies of EUIPO (see judgment of 28 June 2017, Colgate-Palmolive v EUIPO (AROMASENSATIONS), T‑479/16, not published, EU:T:2017:441, paragraph 42 and the case-law cited). 53 Lastly, irrespective of what may have been the case with regard to the applications for registration of the marks referred to by the applicant, the application for registration of the mark applied for comes, in the light of the goods in respect of which registration was sought and the perception of the relevant public, within the scope of the ground for refusal set out in [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 2017/1001. 54 The third plea in law must therefore be rejected. 55 It follows from all of the foregoing that the action must be dismissed in its entirety. Costs 56 [OSCURATO:PERSONA] 134(1) of the Rules of Procedure of the [OSCURATO:PERSONA], 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: 1. Dismisses the action; 2. [OSCURATO:PERSONA] to pay the costs. [OSCURATO:PERSONA][OSCURATO:PERSONA] in open court in Luxembourg on 8 May 2019. E. Coulon S. [OSCURATO:PERSONA] * Language of the case: [OSCURATO:PERSONA].