The European Union demands a "luxury" resolution

By resolution of January 22, 2014, the Second Board of Appeal of the EUIPO confirmed the denial of access to the registration of the following trademark

requested for a wide variety of products and services in classes 9, 35, 39, 40, 41, 42 and 45.

The reason for the rejection is because EUIPO considered that the trademark applied for lacks distinctive character and informs consumers about the quality of all the disputed products and services, without exception, carrying out a global motivation of all of them.

This resolution was annulled by the General Court (TG) (T-222 / 14) upon detecting an error in the statement of reasons after verifying whether the EUIPO had sufficiently examined and justified the lack of distinctive character of the sign at issue in relation to goods and services for which registration was refused of said sign as a Union trademark.

The appeal (C-437/15P) therefore focuses on the question of whether the EUIPO should rule on the capacity or inability of the sign to distinguish its business origin (i) in relation to each product or service, or (ii) on the contrary, if by detecting a characteristic common to all of them, a global analysis of them could be made.

As we know, the EUIPO has the obligation to give reasons for its resolutions with the aim of allowing, on the one hand, that interested parties can know the reasons why access to your trademark registration is denied in order to be able to defend their rights and, on the other hand, that the judge of the Union can exercise control over the law of the resolution.

Indeed, when the registration of a trademark is requested, the Office must carry out an examination of the capacity of the sign to distinguish the goods and services it designates. analyzing each and every one of them.

The exception to this rule rests on the fact that many times the products and services have a sufficiently direct and concrete link to the point that they can be grouped into homogeneous categories, in which case the Office may limit itself to a global motivation for each one. of them.

Well, the TG based itself on the order of March 18, 2010 (Case C-282/09 P), for toassess the different categories in which they could be placed the products and services of the denied trademark (cinema, advertising, storage and transportation of goods, etc.) being very different due to their nature, characteristics, destination and mode of use. For this reason, the Office should have ruled on at least each of the homogeneous categories of which the application is made up.

However, EUIPO maintains that, in the present case, the existence of a common characteristic is enough (that all the products and services in question are likely to have a more or less high quality) so that they form a single “category” and, therefore, global motivation can be allowed for all of them, thus avoiding a systematic repetition of the basic rationale for rejection, that is, the sign lacks distinctive character with respect to each of them.

For its part, the Court of Justice (CJ) annuls the TG's ruling on the grounds that it should have carried out:

1. A verification of whether, as a graphic-denominative whole, the brand can be perceived in a direct and immediate way as a statement of superior quality or a complimentary message, rather than as an indication of the commercial origin of the designated products and services.

If so, the rejection of the trademark would be fully justified without the need to proceed to examine the sign in relation to each product and service.

2. A verification of whether, denominatively, the term “deluxe” effectively conveys a notion of “superior quality” or could have a different meaning.

In the latter case, the trademark could have sufficient distinctive character in relation to some of the products or services, which would require a ruling on each of them, and different conclusions could be reached in each case.

In this way, the CJ considers that the TG has ignored the possibility that, despite their differences, all disputed goods and services may have a common characteristic that is relevant for the examination of absolute registration bans, which could justify their classification into a single homogeneous group, thus allowing for a global motivation of all of them.

The matter has been returned to the General Court, so we will have to wait for a final decision on the merits of the case.