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Corte di giustizia UEsentenza

Corte di giustizia UE n. 207/2018

ECLI:EU:C:2018:700
Testo integrale del provvedimento

Testo integrale del provvedimento

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

11 September 2018 ( * ) (Appeal — [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice — EU trade mark — Application for registration of the word mark DRIVEWISE — Dismissal of the application — [OSCURATO:PERSONA] (EC) No 207/2009 — [OSCURATO:PERSONA] 7(1)(c) — [OSCURATO:PERSONA] 7(2) — [OSCURATO:PERSONA] 75 — Descriptive character — Neologism composed of elements each of which is descriptive of the characteristics of the goods or services concerned — Intended purpose of the goods or services — Distortion — Duty to state reasons)

[OSCURATO:PERSONA] C‑542/17 P,

APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 14 September 2017,

[OSCURATO:PERSONA],

established in Northfield ([OSCURATO:PERSONA] of America), represented by G. Würtenberger and R. Kunze, Rechtsanwälte, appellant, the other party to the proceedings being:

[OSCURATO:PERSONA] (EUIPO),

represented by K. Markakis, acting as Agent, defendant at first instance,

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

composed of C.G. [OSCURATO:PERSONA], [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], A. Arabadjiev (Rapporteur) and S. Rodin, Judges,

[OSCURATO:PERSONA]: M. [OSCURATO:PERSONA],

[OSCURATO:PERSONA]: A. [OSCURATO:PERSONA],

having regard to the decision taken, after hearing the [OSCURATO:PERSONA], to give a decision by reasoned order in accordance with [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA], makes the following

[OSCURATO:PERSONA]

1 By its appeal, the appellant, [OSCURATO:PERSONA] (‘[OSCURATO:PERSONA]’) seeks an order setting aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 5 July 2017,

[OSCURATO:PERSONA]

v

EUIPO (DRIVEWISE)

(T‑3/16, not published, ‘the judgment under appeal’, EU:T:2017:467), in so far as the [OSCURATO:PERSONA], in that judgment, dismissed its claims for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 8 October 2015 ([OSCURATO:PERSONA] R 956/2015 2) concerning an application to register the word sign ‘DRIVEWISE’ as an EU trade mark (‘the decision at issue’).

Legal context 2 [OSCURATO:PERSONA] 7 of [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [[OSCURATO:PERSONA]] trade mark (OJ 2009 L 78, p. 1), entitled ‘Absolute grounds for refusal’, provides in paragraph 1(c): ‘1.

The following shall not be registered: ... (c) 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 services.’ 3 [OSCURATO:PERSONA] 7(2) of that regulation provides: ‘Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the [[OSCURATO:PERSONA]].’ 4 [OSCURATO:PERSONA] 75 of that regulation, entitled ‘Statement of reasons on which decisions are based’, reads as follows: ‘Decisions of the [OSCURATO:PERSONA] shall state the reasons on which they are based.

They shall be based only on reasons or evidence on which the parties concerned have had [an] opportunity to present their comments.’ Background to the dispute 5 On 13 November 2014, [OSCURATO:PERSONA] filed an application for registration of an EU trade mark at EUIPO under [OSCURATO:PERSONA] 207/2009. 6 The mark in respect of which registration was sought is the word sign ‘DRIVEWISE’. 7 The goods and services in respect of which registration was sought fall in particular within Classes 9 and 42 of the [OSCURATO:PERSONA] of 15 June 1957 concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description: – Class 9: ‘Computer software for mobile data devices; computer software for the collection, analysis, storage, management, manipulation and processing of multi-source information and data; computer software for data collection and data analytics; computer software for data analytics and databases; computer databases; computer software for creating searchable databases of information and data; telematics devices; parts and fittings for any of the aforesaid goods’; – Class 42: ‘Scientific and technological services and research and design relating thereto; design and development of computer hardware and computer software; computer software consultancy services; technical advisory services; technical advisory services relating to data processing; data analytics services; providing temporary use of non-downloadable computer software to analyse data and for consumer research; installation and maintenance of computer software; software writing services; data mining; information and advisory services relating to the aforementioned services, including the provision of all of these services online from a computer network or via the internet’. 8 By decision of 16 March 2015, the examiner rejected the application for registration of the mark DRIVEWISE on the basis of [OSCURATO:PERSONA] 7(1)(b) and (c) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 7(2) of that regulation, in respect of the goods and services at issue on the grounds that that mark was descriptive of those goods and services and therefore devoid of any distinct character. 9 On 18 May 2015, [OSCURATO:PERSONA] filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009, against the examiner’s decision. 10 By the decision at issue, the [OSCURATO:PERSONA] of Appeal of EUIPO dismissed that appeal.

The procedure before the [OSCURATO:PERSONA] and the judgment under appeal 11 By application lodged at the Registry of the [OSCURATO:PERSONA] on 4 January 2016, [OSCURATO:PERSONA] brought an action for the annulment of the decision at issue. 12 In support of its action, [OSCURATO:PERSONA] relied on two pleas in law, the first alleging infringement of [OSCURATO:PERSONA] 7(1)(b) and (c) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 7(2) of that regulation, and the second alleging infringement of [OSCURATO:PERSONA] 75 of that regulation. 13 By the judgment under appeal, the [OSCURATO:PERSONA] dismissed that action.

Forms of order sought by the parties before the [OSCURATO:PERSONA] of Justice 14 [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] should: – set aside the judgment under appeal; – uphold the action at first instance, and – order EUIPO to pay the costs. 15 EUIPO contends that the [OSCURATO:PERSONA] should: – dismiss the appeal and – order [OSCURATO:PERSONA] to pay the costs.

The appeal 16 In support of its appeal, [OSCURATO:PERSONA] relies on three grounds of appeal, the first alleging infringement of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 7(2) of that regulation, the second, alleging infringement of [OSCURATO:PERSONA] 75 of that regulation, and the third, alleging a distortion of the facts concerning the assessment of the descriptive character of the sign applied for. 17 The first ground of appeal is divided into two parts.

It is first of all necessary to examine the first part of the first ground of appeal in conjunction with the third ground of appeal, then the second part of the first ground of appeal, and finally the second ground of appeal.

The first part of the first ground of appeal and the third ground of appeal Arguments of the parties 18 By the first part of the first ground of appeal, [OSCURATO:PERSONA] alleges that the [OSCURATO:PERSONA] applied erroneous legal criteria in order to find that the mark DRIVEWISE was descriptive.

In that regard, it claims that the [OSCURATO:PERSONA] incorrectly assessed the characteristics of the goods and services covered by the application for registration and, in particular, their intended purpose in such a way that it did not carry out the assessment of the descriptive character of the sign applied for by reference to the goods and services for which registration of that sign was sought. 19 In addition, by its third ground of appeal, [OSCURATO:PERSONA] alleges that the [OSCURATO:PERSONA] distorted the characteristics of the goods and services at issue, in particular their intended purpose, and incorrectly assessed the descriptive character of the sign applied for by reference to goods and services other than those covered by the application for registration of the sign ‘DRIVEWISE’.

According to [OSCURATO:PERSONA], the goods and services to which the [OSCURATO:PERSONA] referred in the judgment under appeal and, in particular, those referred to in paragraph 23 of that judgment do not correspond to the goods and services in respect of which registration was sought. 20 EUIPO disputes those arguments.

Findings of the [OSCURATO:PERSONA] 21 In the first part of the first ground of appeal, [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] applied erroneous legal criteria in order to find that the mark DRIVEWISE was descriptive, in that the [OSCURATO:PERSONA] examined whether that mark had a descriptive character having regard, not to the goods or services at issue, but to other goods or services. 22 In that respect, it is clear from the arguments seeking to develop that part that, in criticising the [OSCURATO:PERSONA] for having carried out an assessment of the descriptive character of the sign applied for by reference to goods and services other than those covered by the application for registration of that sign, [OSCURATO:PERSONA] in fact disputes the factual assessments carried out by the [OSCURATO:PERSONA] with regard to the characteristics of the goods and services at issue and, in particular, those relating to their intended purpose. 23 It should be recalled that, in an appeal, the [OSCURATO:PERSONA] of Justice has no jurisdiction to establish the facts or to examine the evidence which the [OSCURATO:PERSONA] accepted in support of those facts, except when there is an allegation of distortion.

It is for the [OSCURATO:PERSONA] alone to assess the value to be attached to the evidence submitted to it.

That assessment does not therefore constitute, save where the clear sense of that evidence has been distorted, a point of law which, as such, is subject to review by the [OSCURATO:PERSONA] of Justice (see, to that effect, order of 14 December 2017, Verus v

EUIPO

, C‑101/17 P, not published, EU:C:2017:979, paragraph 28). 24 It should be added in that respect that a distortion of the facts and evidence is exceptional in nature (see judgment of 22 September 2016,

[OSCURATO:PERSONA]

v

EUIPO

, C‑442/15 P, not published, EU:C:2016:720, paragraph 21) and must be obvious from the documents submitted, without any need for a new assessment of the facts and the evidence (judgment of 18 March 2010, [OSCURATO:PERSONA] and Makarov v [OSCURATO:PERSONA] and Commission , C‑419/08 P, EU:C:2010:147, paragraph 32). 25 In the present case, although, in its third ground of appeal, [OSCURATO:PERSONA] claims that the characteristics of the goods and services at issue, in particular their intended purpose, were distorted, and consequently criticises the [OSCURATO:PERSONA] for having carried out an assessment by reference to goods and services other than those covered by the application to register the sign ‘DRIVEWISE’, it is not manifestly apparent from the description of the goods and services covered by the application for registration in paragraph 3 of the judgment under appeal that the goods and services to which the [OSCURATO:PERSONA] refers in that judgment, in particular those mentioned in paragraphs 23, 25 and 29, do not correspond to the goods and services in respect of which registration was sought. 26 [OSCURATO:PERSONA], it must be considered that the arguments of [OSCURATO:PERSONA] derive from an incorrect reading of the judgment under appeal, in particular paragraphs 13, 16, 17 and 19 of that judgment. 27 After confirming in paragraph 17 of that judgment that the assessment of the [OSCURATO:PERSONA] of Appeal concerns the goods and services at issue, as they appear in the application for registration, the [OSCURATO:PERSONA], in paragraph 19 of that judgment, stated that it was necessary to examine whether there is, from the relevant public’s point of view, a sufficiently clear and specific relationship between the sign applied for and the goods and services at issue, by expressly referring to the case-law recalled in paragraph 13 of the judgment under appeal, according to which the assessment of the descriptive character of a sign may only be carried out, first, by reference to the relevant public’s perception of it and, secondly, by reference to the goods and services concerned. 28 In addition, in paragraph 16 of that judgment, the [OSCURATO:PERSONA] states that, at the hearing, [OSCURATO:PERSONA] claimed for the first time that the goods and services at issue were directed only at professionals with a high level of attention and, in particular, engineers and IT specialists in the automobile industry responsible for developing data collection devices and combining them with software such as that covered by the mark applied for. 29 It is in the context of that analysis that the [OSCURATO:PERSONA], in paragraphs 23 and 25 of the judgment under appeal, examined the decision at issue and the arguments of [OSCURATO:PERSONA] and, in paragraph 29 of that judgment, upheld the [OSCURATO:PERSONA] of Appeal’s assessment that the sign applied for, taken as a whole, designates, in at least one of its possible meanings, the efficient, safe and optimum performance of a vehicle, by holding that the element ‘wise’, in combination with the element ‘drive’, may be used to describe goods or services covered by the mark applied for. 30 In doing so, the [OSCURATO:PERSONA] also relied on the interpretation of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009 as set out in the case-law of the [OSCURATO:PERSONA] of Justice and recalled in paragraph 28 of the judgment under appeal. 31 Therefore, it cannot be claimed that the [OSCURATO:PERSONA] distorted the facts and incorrectly assessed the descriptive character of the sign applied for by reference to goods and services other than those covered by the application for registration of the sign ‘DRIVEWISE’. 32 It follows from the foregoing that the first part of the first ground of appeal and the third ground of appeal must be rejected as manifestly unfounded.

The second part of the first ground of appeal Arguments of the parties 33 [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] disregarded the principle established by case-law, according to which a mark consisting of a neologism, composed of elements each of which is descriptive, is itself descriptive of the characteristics of the goods or services at issue, unless there is a perceptible difference between the neologism and the mere sum of its parts. 34 [OSCURATO:PERSONA], [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] should have provided evidence of the meaning of the term making up the sign applied for, ‘DRIVEWISE’, given that it is a neologism the meaning of which is not defined in the dictionaries.

According to [OSCURATO:PERSONA], there is no evidence that the relevant public would perceive that sign overall as being connected with the goods and services at issue.

In addition, the view could not be taken that that public would split the sign up in order to examine it. 35 EUIPO disputes those arguments.

Findings of the [OSCURATO:PERSONA] 36 With regard to the first complaint in the second part of the first ground of appeal, suffice it to state that the [OSCURATO:PERSONA], in paragraphs 31 to 38 of the judgment under appeal, carried out a detailed and exhaustive examination of the issue whether there is a perceptible difference between the neologism ‘drivewise’ and the mere sum of its parts. 37 After an in-depth examination, first, of the syntactic and grammatical aspects of that neologism in paragraphs 31 and 32 of the judgment under appeal and, secondly, of the perception of that neologism by the relevant public in paragraphs 33 to 35 of that judgment, the [OSCURATO:PERSONA] found that that neologism is not a word which, by reason of its unusual character with regard to the goods and services at issue, would have a meaning of its own that would take precedence over the meaning resulting from the simple juxtaposition of the words of which it is composed. 38 Thus, the [OSCURATO:PERSONA] did not err in law when it rejected [OSCURATO:PERSONA] line of argument. 39 Consequently, the first complaint must be rejected as manifestly unfounded. 40 With regard to the second complaint in the second part of the first ground of appeal, suffice it to recall that the proceedings before the EU Courts are inter partes and that, with the exception of pleas involving matters of public policy which the Courts are required to raise of their own motion, it is for the applicant to raise pleas in law against the decision under appeal and to adduce evidence in support of those pleas (see, to that effect, judgment of 22 September 2016,

[OSCURATO:PERSONA]

v

EUIPO

, C‑442/15 P, not published, EU:C:2016:720, paragraph 26 and the case-law cited).

Therefore, the [OSCURATO:PERSONA] cannot be reproached for not providing evidence relating to the meaning of the term making up the sign applied for, ‘DRIVEWISE’. 41 Consequently, the second complaint must be rejected as manifestly unfounded. 42 It is apparent from all of the above considerations that the second part of the first ground of appeal must be rejected as manifestly unfounded.

The second ground of appeal Arguments of the parties 43 [OSCURATO:PERSONA] claims that, in so far as the [OSCURATO:PERSONA] carried out an assessment of the descriptive character of the sign applied for by reference to goods and services other than those covered by the application to register that sign, it did not set out in any way the reasons why the sign applied for had to be regarded as descriptive of the goods and services at issue, and therefore infringed its duty to state reasons.

Therefore, the [OSCURATO:PERSONA], like the [OSCURATO:PERSONA] of Appeal, infringed [OSCURATO:PERSONA] 75 of [OSCURATO:PERSONA] 207/2009. 44 EUIPO disputes that line of argument.

Findings of the [OSCURATO:PERSONA] 45 It is apparent from the examination of the first part of the first ground of appeal and from the third ground of appeal that the [OSCURATO:PERSONA] did not distort the characteristics of the goods and services at issue, in particular their intended purpose, and therefore did not carry out its assessment by reference to goods and services other than those covered by the application to register the sign applied for.

The second ground of appeal should therefore be rejected as manifestly unfounded. 46 The appeal must therefore be rejected in its entirety as manifestly unfounded.

Costs 47 [OSCURATO:PERSONA] 137 of the Rules of Procedure, applicable to proceedings on appeal by virtue of [OSCURATO:PERSONA] 184(1) of those rules, a decision on costs is to be given in the order which closes the proceedings. 48 [OSCURATO:PERSONA] 138(1) of the Rules of Procedure, also applicable to proceedings on appeal by virtue of [OSCURATO:PERSONA] 184(1) of those rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

Since EUIPO has applied for costs and [OSCURATO:PERSONA] has been unsuccessful, the latter must be ordered to pay the costs.

On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders:

1. The appeal is dismissed as manifestly unfounded.

2. [OSCURATO:PERSONA] shall pay the costs.

Luxembourg, 11 September 2018.

A. [OSCURATO:PERSONA]

C.G. [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] * Language of the case: English.

Anonimizzato ex art. 52 D.Lgs. 196/2003
[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 11 September 2018 ( * ) (Appeal — [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice — EU trade mark — Application for registration of the word mark DRIVEWISE — Dismissal of the application — [OSCURATO:PERSONA] (EC) No 207/2009 — [OSCURATO:PERSONA] 7(1)(c) — [OSCURATO:PERSONA] 7(2) — [OSCURATO:PERSONA] 75 — Descriptive character — Neologism composed of elements each of which is descriptive of the characteristics of the goods or services concerned — Intended purpose of the goods or services — Distortion — Duty to state reasons) [OSCURATO:PERSONA] C‑542/17 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 14 September 2017, [OSCURATO:PERSONA], established in Northfield ([OSCURATO:PERSONA] of America), represented by G. Würtenberger and R. Kunze, Rechtsanwälte, appellant, the other party to the proceedings being: [OSCURATO:PERSONA] (EUIPO), represented by K. Markakis, acting as Agent, defendant at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of C.G. [OSCURATO:PERSONA], [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], A. Arabadjiev (Rapporteur) and S. Rodin, Judges, [OSCURATO:PERSONA]: M. [OSCURATO:PERSONA], [OSCURATO:PERSONA]: A. [OSCURATO:PERSONA], having regard to the decision taken, after hearing the [OSCURATO:PERSONA], to give a decision by reasoned order in accordance with [OSCURATO:PERSONA] 181 of the Rules of Procedure of the [OSCURATO:PERSONA], makes the following [OSCURATO:PERSONA] 1 By its appeal, the appellant, [OSCURATO:PERSONA] (‘[OSCURATO:PERSONA]’) seeks an order setting aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 5 July 2017, [OSCURATO:PERSONA] v EUIPO (DRIVEWISE) (T‑3/16, not published, ‘the judgment under appeal’, EU:T:2017:467), in so far as the [OSCURATO:PERSONA], in that judgment, dismissed its claims for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 8 October 2015 ([OSCURATO:PERSONA] R 956/2015 2) concerning an application to register the word sign ‘DRIVEWISE’ as an EU trade mark (‘the decision at issue’). Legal context 2 [OSCURATO:PERSONA] 7 of [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [[OSCURATO:PERSONA]] trade mark (OJ 2009 L 78, p. 1), entitled ‘Absolute grounds for refusal’, provides in paragraph 1(c): ‘1.      The following shall not be registered: ... (c)      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 services.’ 3 [OSCURATO:PERSONA] 7(2) of that regulation provides: ‘Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the [[OSCURATO:PERSONA]].’ 4 [OSCURATO:PERSONA] 75 of that regulation, entitled ‘Statement of reasons on which decisions are based’, reads as follows: ‘Decisions of the [OSCURATO:PERSONA] shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had [an] opportunity to present their comments.’ Background to the dispute 5 On 13 November 2014, [OSCURATO:PERSONA] filed an application for registration of an EU trade mark at EUIPO under [OSCURATO:PERSONA] 207/2009. 6 The mark in respect of which registration was sought is the word sign ‘DRIVEWISE’. 7 The goods and services in respect of which registration was sought fall in particular within Classes 9 and 42 of the [OSCURATO:PERSONA] of 15 June 1957 concerning the [OSCURATO:PERSONA] of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description: –        Class 9: ‘Computer software for mobile data devices; computer software for the collection, analysis, storage, management, manipulation and processing of multi-source information and data; computer software for data collection and data analytics; computer software for data analytics and databases; computer databases; computer software for creating searchable databases of information and data; telematics devices; parts and fittings for any of the aforesaid goods’; –        Class 42: ‘Scientific and technological services and research and design relating thereto; design and development of computer hardware and computer software; computer software consultancy services; technical advisory services; technical advisory services relating to data processing; data analytics services; providing temporary use of non-downloadable computer software to analyse data and for consumer research; installation and maintenance of computer software; software writing services; data mining; information and advisory services relating to the aforementioned services, including the provision of all of these services online from a computer network or via the internet’. 8 By decision of 16 March 2015, the examiner rejected the application for registration of the mark DRIVEWISE on the basis of [OSCURATO:PERSONA] 7(1)(b) and (c) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 7(2) of that regulation, in respect of the goods and services at issue on the grounds that that mark was descriptive of those goods and services and therefore devoid of any distinct character. 9 On 18 May 2015, [OSCURATO:PERSONA] filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of [OSCURATO:PERSONA] 207/2009, against the examiner’s decision. 10 By the decision at issue, the [OSCURATO:PERSONA] of Appeal of EUIPO dismissed that appeal. The procedure before the [OSCURATO:PERSONA] and the judgment under appeal 11 By application lodged at the Registry of the [OSCURATO:PERSONA] on 4 January 2016, [OSCURATO:PERSONA] brought an action for the annulment of the decision at issue. 12 In support of its action, [OSCURATO:PERSONA] relied on two pleas in law, the first alleging infringement of [OSCURATO:PERSONA] 7(1)(b) and (c) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 7(2) of that regulation, and the second alleging infringement of [OSCURATO:PERSONA] 75 of that regulation. 13 By the judgment under appeal, the [OSCURATO:PERSONA] dismissed that action. Forms of order sought by the parties before the [OSCURATO:PERSONA] of Justice 14 [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] should: –        set aside the judgment under appeal; –        uphold the action at first instance, and –        order EUIPO to pay the costs. 15 EUIPO contends that the [OSCURATO:PERSONA] should: –        dismiss the appeal and –        order [OSCURATO:PERSONA] to pay the costs. The appeal 16 In support of its appeal, [OSCURATO:PERSONA] relies on three grounds of appeal, the first alleging infringement of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009, read in conjunction with [OSCURATO:PERSONA] 7(2) of that regulation, the second, alleging infringement of [OSCURATO:PERSONA] 75 of that regulation, and the third, alleging a distortion of the facts concerning the assessment of the descriptive character of the sign applied for. 17 The first ground of appeal is divided into two parts. It is first of all necessary to examine the first part of the first ground of appeal in conjunction with the third ground of appeal, then the second part of the first ground of appeal, and finally the second ground of appeal. The first part of the first ground of appeal and the third ground of appeal Arguments of the parties 18 By the first part of the first ground of appeal, [OSCURATO:PERSONA] alleges that the [OSCURATO:PERSONA] applied erroneous legal criteria in order to find that the mark DRIVEWISE was descriptive. In that regard, it claims that the [OSCURATO:PERSONA] incorrectly assessed the characteristics of the goods and services covered by the application for registration and, in particular, their intended purpose in such a way that it did not carry out the assessment of the descriptive character of the sign applied for by reference to the goods and services for which registration of that sign was sought. 19 In addition, by its third ground of appeal, [OSCURATO:PERSONA] alleges that the [OSCURATO:PERSONA] distorted the characteristics of the goods and services at issue, in particular their intended purpose, and incorrectly assessed the descriptive character of the sign applied for by reference to goods and services other than those covered by the application for registration of the sign ‘DRIVEWISE’. According to [OSCURATO:PERSONA], the goods and services to which the [OSCURATO:PERSONA] referred in the judgment under appeal and, in particular, those referred to in paragraph 23 of that judgment do not correspond to the goods and services in respect of which registration was sought. 20 EUIPO disputes those arguments. Findings of the [OSCURATO:PERSONA] 21 In the first part of the first ground of appeal, [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] applied erroneous legal criteria in order to find that the mark DRIVEWISE was descriptive, in that the [OSCURATO:PERSONA] examined whether that mark had a descriptive character having regard, not to the goods or services at issue, but to other goods or services. 22 In that respect, it is clear from the arguments seeking to develop that part that, in criticising the [OSCURATO:PERSONA] for having carried out an assessment of the descriptive character of the sign applied for by reference to goods and services other than those covered by the application for registration of that sign, [OSCURATO:PERSONA] in fact disputes the factual assessments carried out by the [OSCURATO:PERSONA] with regard to the characteristics of the goods and services at issue and, in particular, those relating to their intended purpose. 23 It should be recalled that, in an appeal, the [OSCURATO:PERSONA] of Justice has no jurisdiction to establish the facts or to examine the evidence which the [OSCURATO:PERSONA] accepted in support of those facts, except when there is an allegation of distortion. It is for the [OSCURATO:PERSONA] alone to assess the value to be attached to the evidence submitted to it. That assessment does not therefore constitute, save where the clear sense of that evidence has been distorted, a point of law which, as such, is subject to review by the [OSCURATO:PERSONA] of Justice (see, to that effect, order of 14 December 2017, Verus v EUIPO , C‑101/17 P, not published, EU:C:2017:979, paragraph 28). 24 It should be added in that respect that a distortion of the facts and evidence is exceptional in nature (see judgment of 22 September 2016, [OSCURATO:PERSONA] v EUIPO , C‑442/15 P, not published, EU:C:2016:720, paragraph 21) and must be obvious from the documents submitted, without any need for a new assessment of the facts and the evidence (judgment of 18 March 2010, [OSCURATO:PERSONA] and Makarov v [OSCURATO:PERSONA] and Commission , C‑419/08 P, EU:C:2010:147, paragraph 32). 25 In the present case, although, in its third ground of appeal, [OSCURATO:PERSONA] claims that the characteristics of the goods and services at issue, in particular their intended purpose, were distorted, and consequently criticises the [OSCURATO:PERSONA] for having carried out an assessment by reference to goods and services other than those covered by the application to register the sign ‘DRIVEWISE’, it is not manifestly apparent from the description of the goods and services covered by the application for registration in paragraph 3 of the judgment under appeal that the goods and services to which the [OSCURATO:PERSONA] refers in that judgment, in particular those mentioned in paragraphs 23, 25 and 29, do not correspond to the goods and services in respect of which registration was sought. 26 [OSCURATO:PERSONA], it must be considered that the arguments of [OSCURATO:PERSONA] derive from an incorrect reading of the judgment under appeal, in particular paragraphs 13, 16, 17 and 19 of that judgment. 27 After confirming in paragraph 17 of that judgment that the assessment of the [OSCURATO:PERSONA] of Appeal concerns the goods and services at issue, as they appear in the application for registration, the [OSCURATO:PERSONA], in paragraph 19 of that judgment, stated that it was necessary to examine whether there is, from the relevant public’s point of view, a sufficiently clear and specific relationship between the sign applied for and the goods and services at issue, by expressly referring to the case-law recalled in paragraph 13 of the judgment under appeal, according to which the assessment of the descriptive character of a sign may only be carried out, first, by reference to the relevant public’s perception of it and, secondly, by reference to the goods and services concerned. 28 In addition, in paragraph 16 of that judgment, the [OSCURATO:PERSONA] states that, at the hearing, [OSCURATO:PERSONA] claimed for the first time that the goods and services at issue were directed only at professionals with a high level of attention and, in particular, engineers and IT specialists in the automobile industry responsible for developing data collection devices and combining them with software such as that covered by the mark applied for. 29 It is in the context of that analysis that the [OSCURATO:PERSONA], in paragraphs 23 and 25 of the judgment under appeal, examined the decision at issue and the arguments of [OSCURATO:PERSONA] and, in paragraph 29 of that judgment, upheld the [OSCURATO:PERSONA] of Appeal’s assessment that the sign applied for, taken as a whole, designates, in at least one of its possible meanings, the efficient, safe and optimum performance of a vehicle, by holding that the element ‘wise’, in combination with the element ‘drive’, may be used to describe goods or services covered by the mark applied for. 30 In doing so, the [OSCURATO:PERSONA] also relied on the interpretation of [OSCURATO:PERSONA] 7(1)(c) of [OSCURATO:PERSONA] 207/2009 as set out in the case-law of the [OSCURATO:PERSONA] of Justice and recalled in paragraph 28 of the judgment under appeal. 31 Therefore, it cannot be claimed that the [OSCURATO:PERSONA] distorted the facts and incorrectly assessed the descriptive character of the sign applied for by reference to goods and services other than those covered by the application for registration of the sign ‘DRIVEWISE’. 32 It follows from the foregoing that the first part of the first ground of appeal and the third ground of appeal must be rejected as manifestly unfounded. The second part of the first ground of appeal Arguments of the parties 33 [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] disregarded the principle established by case-law, according to which a mark consisting of a neologism, composed of elements each of which is descriptive, is itself descriptive of the characteristics of the goods or services at issue, unless there is a perceptible difference between the neologism and the mere sum of its parts. 34 [OSCURATO:PERSONA], [OSCURATO:PERSONA] claims that the [OSCURATO:PERSONA] should have provided evidence of the meaning of the term making up the sign applied for, ‘DRIVEWISE’, given that it is a neologism the meaning of which is not defined in the dictionaries. According to [OSCURATO:PERSONA], there is no evidence that the relevant public would perceive that sign overall as being connected with the goods and services at issue. In addition, the view could not be taken that that public would split the sign up in order to examine it. 35 EUIPO disputes those arguments. Findings of the [OSCURATO:PERSONA] 36 With regard to the first complaint in the second part of the first ground of appeal, suffice it to state that the [OSCURATO:PERSONA], in paragraphs 31 to 38 of the judgment under appeal, carried out a detailed and exhaustive examination of the issue whether there is a perceptible difference between the neologism ‘drivewise’ and the mere sum of its parts. 37 After an in-depth examination, first, of the syntactic and grammatical aspects of that neologism in paragraphs 31 and 32 of the judgment under appeal and, secondly, of the perception of that neologism by the relevant public in paragraphs 33 to 35 of that judgment, the [OSCURATO:PERSONA] found that that neologism is not a word which, by reason of its unusual character with regard to the goods and services at issue, would have a meaning of its own that would take precedence over the meaning resulting from the simple juxtaposition of the words of which it is composed. 38 Thus, the [OSCURATO:PERSONA] did not err in law when it rejected [OSCURATO:PERSONA] line of argument. 39 Consequently, the first complaint must be rejected as manifestly unfounded. 40 With regard to the second complaint in the second part of the first ground of appeal, suffice it to recall that the proceedings before the EU Courts are inter partes and that, with the exception of pleas involving matters of public policy which the Courts are required to raise of their own motion, it is for the applicant to raise pleas in law against the decision under appeal and to adduce evidence in support of those pleas (see, to that effect, judgment of 22 September 2016, [OSCURATO:PERSONA] v EUIPO , C‑442/15 P, not published, EU:C:2016:720, paragraph 26 and the case-law cited). Therefore, the [OSCURATO:PERSONA] cannot be reproached for not providing evidence relating to the meaning of the term making up the sign applied for, ‘DRIVEWISE’. 41 Consequently, the second complaint must be rejected as manifestly unfounded. 42 It is apparent from all of the above considerations that the second part of the first ground of appeal must be rejected as manifestly unfounded. The second ground of appeal Arguments of the parties 43 [OSCURATO:PERSONA] claims that, in so far as the [OSCURATO:PERSONA] carried out an assessment of the descriptive character of the sign applied for by reference to goods and services other than those covered by the application to register that sign, it did not set out in any way the reasons why the sign applied for had to be regarded as descriptive of the goods and services at issue, and therefore infringed its duty to state reasons. Therefore, the [OSCURATO:PERSONA], like the [OSCURATO:PERSONA] of Appeal, infringed [OSCURATO:PERSONA] 75 of [OSCURATO:PERSONA] 207/2009. 44 EUIPO disputes that line of argument. Findings of the [OSCURATO:PERSONA] 45 It is apparent from the examination of the first part of the first ground of appeal and from the third ground of appeal that the [OSCURATO:PERSONA] did not distort the characteristics of the goods and services at issue, in particular their intended purpose, and therefore did not carry out its assessment by reference to goods and services other than those covered by the application to register the sign applied for. The second ground of appeal should therefore be rejected as manifestly unfounded. 46 The appeal must therefore be rejected in its entirety as manifestly unfounded. Costs 47 [OSCURATO:PERSONA] 137 of the Rules of Procedure, applicable to proceedings on appeal by virtue of [OSCURATO:PERSONA] 184(1) of those rules, a decision on costs is to be given in the order which closes the proceedings. 48 [OSCURATO:PERSONA] 138(1) of the Rules of Procedure, also applicable to proceedings on appeal by virtue of [OSCURATO:PERSONA] 184(1) of those rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has applied for costs and [OSCURATO:PERSONA] has been unsuccessful, the latter must be ordered to pay the costs. On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. The appeal is dismissed as manifestly unfounded. 2. [OSCURATO:PERSONA] shall pay the costs. Luxembourg, 11 September 2018. A. [OSCURATO:PERSONA] C.G. [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] * Language of the case: English.
Sentenza Corte di giustizia UE n. 207/2018 — Fons Iuris — Fons Iuris