Dometic Sweden v EUIPO (MOBILE LIVING MADE EASY) (EU trade mark - Judgment) [2018] EUECJ T-235/17 (22 March 2018)

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(EU trade mark — Application for the EU word mark MOBILE LIVING MADE EASY — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001) — Obligation to state reasons — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001))

Dometic Sweden AB, established in Solna (Sweden), represented by R. Furneaux and E. Humphreys, Solicitors,

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaite-Orlovskiene and J. Ivanauskas, acting as Agents,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 13 February 2017 (Case R 1832/2016-2), concerning an application for registration of the word sign MOBILE LIVING MADE EASY as an EU trade mark,

composed of A.M. Collins, President, M. Kancheva and G. De Baere (Rapporteur), Judges,

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 Article 106(3) of the Rules of Procedure of the General Court,

1 On 22 December 2015, the applicant, Dometic Sweden AB, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods and services in respect of which registration was sought are in Classes 5 to 7, 9, 11, 12, 19 to 22 and 37 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes 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 6: ‘Safes [strong boxes]; security boxes [safes]; ducts of metal for ventilating and air conditioning installations; nozzles of metal; metal flanges; metal sashes for windows; metallic insect screens for doors; metallic insect screens for windows; aluminium roll shutters; roller blinds of steel; refuse skips of metal’;

– Class 7: ‘Electric compressors; compressors for air conditioning apparatus; electrical generators using solar cells; power generators; power generators for vehicles; engine driven generators; current generators; alternators; electric vacuum cleaners; replacement bags of paper for vacuum cleaners; vacuum cleaners; electric suction cleaners; centrifugal pumps for pumping liquids for heating; centrifugal pumps for pumping liquids for cooling; air-cooled condensers; traps (steam-); rinsing machines; sewage treatment machines; pumps; pump control valves; vacuum pumps; vacuum generators; clamping devices being parts of machine tools; separators [machines]; valves (parts of machines)’;

– Class 9: ‘Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; voltage conversion apparatus; voltage monitor modules; capacitors; power adapters; charging apparatus; rechargers for electric accumulators; transducers; inverters for power supply; apparatus for controlling air conditioning installations, heating installations, toilets in vehicles and ships; thermostats for vehicles; temperature control apparatus [thermostats]; electrical sensors; electro-optical sensors; optical sensors; sensors for the determination of temperatures, positions and distances; humidity sensors; humidity switches; humidity measuring apparatus; apparatus for controlling humidity levels; computer software; application software; electronic safety accessories for retrofitting of vehicles; automatic vehicle speed control apparatus; digital cameras; cameras [photography]; camera mounts; rearview cameras for vehicles; dashboard cameras; video surveillance cameras for use in vehicles; alarms; remote controls; safety signals in the form of flashing beacons; security and gas alarms; gas sensors’;

– Class 11: ‘Lavatories; toilets; toilets with sterilizing functions; toilets with washing functions; bidets; toilets, portable; toilets for incorporation in portable buildings; toilet stool units with a washing water squirter; toilet cisterns; water flushing installations; sanitary installations including holding tanks, water supply and sanitation equipment; toilet tanks; wastewater treatment tanks; filter elements for the air vents of water supply tanks; installations for airing; aeration apparatus; electrically powered blowers for ventilation; ventilating exhaust fans; electric air conditioners; air conditioners for vehicles; air conditioners for ships; air conditioning filters; fans being parts for air conditioning installations; fans (air-conditioning-); installations for heating; heating apparatus for solid, liquid or gaseous fuels; gas fired heaters; electric water heaters; diesel fuel line heaters; defrosters for vehicles; heating apparatus for seat covers for use in vehicles; air conditioning apparatus for seat covers for use in vehicles; cool boxes (electric-); portable cold boxes (electric-); electric refrigerators; freezers; electric wine coolers and wine cellars; minibars; laundry dryers; electric laundry dryers; halogen lamps; lamps (electric-); electric rotisseries; gas broilers; roasting devices; kilns; stoves [cooking apparatus]; plates [parts of stoves]; plates [parts of ovens]; electric furnaces; gas fired furnaces; baking oven; microwave cookers; hobs; electric coffee brewers; coffee machines; sinks; sink units; water faucets; waste fittings for sanitary ware; range hoods; filters for range hoods; transportable instruments for processing sewage; air purifiers; demisters; pervaporisers; ice machines and apparatus; filters for water purifiers; lights for vehicles’;

– Class 12: ‘Sun-blinds and visors for vehicles; skylights [windows] for vehicles; windows for vehicles; covers (shaped-) for boats; covers (shaped-) for vehicles; blinds adapted for vehicles; jalousies for vehicle windows; vehicle hardware namely doors, hinges, latches, handles, handbrakes, transmission selectors, seat adjusters, trailer couplers and hitches, trailer coupler balls, trailer jacks, brakes, brake actuators; recreational vehicle accessories, namely, patio awnings, awnings for slide-out rooms; security systems for vehicles; seat covers for use in vehicles; heated seats, heated seat covers for use in vehicles’;

– Class 19: ‘Insect screens (non-metallic-) for doors; jalousies, not of metal’;

– Class 20: ‘Window shades; roller blinds for use indoors; benches (work)’;

– Class 21: ‘Refuse containers; heat retaining containers for food; cool boxes; wine coolers’;

– Class 22: ‘Canopies; canopies [awnings]; windbreakers [screening]; tents [awnings] for vehicles; tents [awnings] for caravans’;

– Class 37: ‘Installation, repair and maintenance services relating to recreational vehicles (RV), motorhomes, caravans, yachts and boats, passenger vehicles, vans and trucks as well as relating to products and accessories installed and used in the foregoing; installation, repair and maintenance services, especially of safes [strong boxes], security boxes [safes]’.

4 By decision of 10 August 2016, the examiner rejected the application to register the mark MOBILE LIVING MADE EASY in respect of all the goods and services in question, on the basis of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001), on the ground that it was devoid of any distinctive character.

5 On 5 October 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001), against the examiner’s decision.

6 By decision of 13 February 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. The Board of Appeal found that the sign applied for, MOBILE LIVING MADE EASY, was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. It took the view that the relevant public would perceive the expression ‘mobile living made easy’ as a promotional laudatory message which serves to highlight positive aspects of the goods and services concerned, namely that they make it easy to have a mobile, travelling life, and not as an indication of their commercial origin.

– give a decision on the costs relating to the proceedings before the Board of Appeal and the Court.

9 In support of its action, the applicant puts forward two pleas in law alleging, first, infringement of Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) and, second, infringement of Article 7(1)(b) of that regulation.

The first plea, alleging infringement of Article 75 of Regulation No 207/2009

10 The applicant complains that the Board of Appeal infringed Article 75 of Regulation No 207/2009 by using general reasoning for all the goods and services in question although they do not form one homogenous category.

11 Article 75 of Regulation No 207/2009 provides that decisions of EUIPO must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that deriving from Article 296 TFEU, as consistently interpreted in case-law, according to which the statement of reasons must disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable, on the one hand, interested parties to ascertain the reasons for the measure in order to defend their rights, and, on the other hand, the European Union judicature to exercise its power to review the legality of the decision (judgments of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 64 and 65, and of 3 March 2016, Ugly v OHIM — Group Lottuss (COYOTE UGLY), T‑778/14, not published, EU:T:2016:122, paragraph 66).

12 According to settled case-law, the duty to state reasons is an essential procedural requirement, which must be distinguished from the question whether the reasoning is correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgments of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited, and of 14 July 2017, Sata v EUIPO (4600), T‑214/16, not published, EU:T:2017:501, paragraph 59 and the case-law cited).

13 According to the case-law of the Court of Justice, first, the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services in respect of which trade mark registration is sought and, second, the decision by which the competent authority refuses to register a mark must, in principle, state reasons in respect of each of those goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 29 and the case-law cited).

14 However, as regards that last requirement, the Court of Justice has stated that the competent authority may use only general reasoning for all of the goods or services concerned where the same ground for refusal is given for a category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30 and the case-law cited).

15 In the contested decision, the Board of Appeal found, as regards the sign applied for MOBILE LIVING MADE EASY, that the expression ‘mobile living’ would be understood as meaning a life or lifestyle in which one has freedom of movement. It pointed out that the expression ‘mobile living’ referred to the situation in which people lived in or around a home that could be moved to different locations and that there was a broad range of vehicles, including those mentioned in relation to the services in Class 37 in the application for registration, that might serve as permanent or temporary accommodation, on water or land, for professional or leisure purposes. It took the view that the goods at issue could be goods that were installed or used in those vehicles and that the services related or might relate to the vehicles that were used for ‘mobile living’. It found that there was a clear link between the goods and services at issue and the expression ‘mobile living’ in the sense of a life or lifestyle in which one has freedom of movement. It added that the expression ‘made easy’ conveyed the message that the goods and services in question made ‘mobile living’ simple and uncomplicated.

16 Accordingly, the Board of Appeal, by stating that the link between all the goods and services at issue is that they ‘facilitate mobile life’, found that they all had a characteristic relevant to the examination of the absolute ground for refusal under Article 7(1)(b) of Regulation No 207/2009 and that they were all part of a homogenous category.

17 The applicant does not dispute the meaning of the expression ‘mobile living made easy’ which the Board of Appeal adopted or the possibility for the Board of Appeal, in accordance with the case-law cited in paragraph 14 above, to use general reasoning for all of the goods and services in question if they constitute a homogenous category.

18 It also does not claim that it was unable to understand how the Board of Appeal defined the homogenous category on which it relied in assessing whether the mark applied for had distinctive character or why the Board of Appeal found that the goods and services in question fell within that category.

19 The applicant submits that the goods and services at issue fall within distinct categories and not within a homogenous category such as that defined by the Board of Appeal and that therefore the Board of Appeal could not use general reasoning for all of the goods and services in question. By those arguments, the applicant in reality disputes the fact that the Board of Appeal found that all the goods and services in question fell within a homogenous category and therefore disputes the merits of the contested decision.

20 It follows that the statement of reasons for the contested decision enabled the applicant and the Court to understand how the Board of Appeal defined a homogenous category of goods and services in relation to which it used general reasoning.

21 It must therefore be held that the contested decision is sufficiently reasoned.

22 The applicant’s arguments seeking to dispute that all the goods and services in question were included in that category goes to the merits of the contested decision and will therefore be examined in the context of the second plea.

The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

24 The applicant submits that the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009 by finding that the sign MOBILE LIVING MADE EASY was devoid of any distinctive character.

25 Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered. According to settled case-law, a trade mark has distinctive character, within the meaning of Article 7(1)(b) of Regulation No 207/2009, if that trade mark serves to identify the goods or services in respect of which registration is sought 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, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 23 and the case-law cited, and of 20 September 2017, The Tea Board v EUIPO, C‑673/15 P to C‑676/15 P, EU:C:2017:702, paragraph 52 and the case-law cited).

26 The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark is sought and, second, by reference to the relevant public’s perception of that mark (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited).

27 In the first place, in the context of its first plea, the applicant submits the goods and services in question differ in their essential characteristics, purpose and suitability or desirability for ‘facilitating a mobile life’ and that the Board of Appeal could not therefore group them in one homogenous category.

28 In that regard, as has been stated in paragraph 14 above, the Court of Justice has accepted that, where the same ground for refusal is given for a category or group of goods or services, the reasoning may be general for all of the goods or services concerned and it has made clear that such a discretion extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 30 and 31 and the case-law cited).

29 In order to determine whether the goods and services covered by an application to register an EU trade mark are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogenous categories or groups, account must be taken of the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question whether or not the mark concerned by the application for registration is caught by one of the absolute grounds for refusal. Accordingly, the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant to the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 32 and 33).

30 As the Court of Justice has stated, it must be examined whether or not, in the light of the meaning of the word element of the mark applied for, the goods and services covered by the mark at issue constitute a homogenous group justifying recourse to general reasoning (see, to that effect, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 39).

31 The Court of Justice added that, despite their differences, all the goods and services at issue could have a common characteristic, relevant to the analysis that the Board of Appeal had to carry out, which could justify their placement within a single homogenous group and the use by the Board of Appeal of general reasoning in relation to them (see, to that effect, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 41).

32 In the present case, it is apparent from the contested decision that the Board of Appeal found that the goods and services referred to in the application for registration belonged to a homogenous category in the light of a common characteristic defined by reference to the meaning of the sign applied for, namely ‘which facilitates mobile life’.

33 In that regard, it pointed out that ‘[a]lthough the goods in the various classes have very different specific characteristics, they form[ed] one homogenous category concerning a general, but essential or desirable, feature for those who are moving around in e.g. their vehicles by land or water, namely, one way or another, the goods facilitate[d] mobile life (by providing means for the specific purposes of personal hygiene, safety, security, energy, cooking, preserving food and drink, thermal comfort or comfort in general)’ and that ‘[t]he same applie[d] with respect to the Class 37 services’.

34 The Board of Appeal thus took into account that the application to register covered goods and services with different characteristics. However, it took the view that those goods and services also had a general characteristic in common of facilitating mobile life.

35 It must be pointed out that the applicant does not dispute the point that the goods and services in question are linked to mobile life. It merely states that the goods in question fall within distinct categories on the basis of their characteristics, qualities and purposes with regard to ‘mobile life’ and that the Board of Appeal could not therefore find that they belonged to a ‘homogenous’ category. It thus lists various categories of goods which are ‘specifically adapted to mobile life’, which ‘have as their primary function being to facilitate mobile life’, which are ‘commonly’, ‘less commonly’ or ‘rarely’ found in land or water vehicles or which ‘have no obvious connection to mobile life’.

36 However, the fact that the Board of Appeal defined a homogenous category of goods and services ‘facilitating mobile life’ does not mean, contrary to what the applicant seems to suggest, that it took the view that they all contributed in the same way or with the same intensity to ‘mobile life’. In that regard, the Board of Appeal stated in the contested decision that the goods in question facilitated mobile life in ‘one way or another’.

37 Consequently, the applicant’s argument that the Board of Appeal was not entitled to define a homogenous category grouping together the goods and services in question must be rejected.

38 In the alternative, the applicant submits that some of the goods in question are sufficiently different in their characteristics, essential qualities or purpose for them not to fall within the homogenous category defined by the Board of Appeal and that they should have been assessed individually.

39 It must be borne in mind that the Board of Appeal pointed out that the services in Class 37 referred to in the application for registration related to recreational vehicles, motorhomes, caravans, yachts and boats, passenger vehicles, vans and trucks that could serve as permanent or temporary accommodation for professional or leisure purposes and that the goods in question could be installed or used in those vehicles. Consequently, goods which are installed or used in such vehicles must be considered to be goods which facilitate mobile life in one way or another.

40 The applicant’s arguments cannot call that finding on the part of the Board of Appeal into question.

41 The goods referred to in the application for registration are all either specifically intended to be used in the vehicles mentioned in paragraph 39 above or are capable of being specially adapted for installation in those vehicles.

42 That is true of the examples referred to by the applicant, namely the metal flanges, nozzles of metal, metal sashes for windows, and refuse skips of metal in Class 6, the electric compressors in Class 7, the optical sensors, electrical sensors, electro-optical sensors, charging apparatus, rechargers for electric accumulators, transducers, cameras [photography], camera mounts, rearview cameras for vehicles, dashboard cameras, and video surveillance cameras for use in vehicles in Class 9, the kilns and electric rotisseries in Class 11 and the workbenches in Class 20.

43 In that regard, the applicant’s contention that some of those goods do not have the primary function or purpose of facilitating mobile life is immaterial. It is sufficient that those goods are capable of being installed or used in vehicles serving as accommodation, such as caravans, motorhomes, and boats, for it to be held that they contribute to their use or functioning, for example as regards providing energy, security or cooking facilities, and, as a result, facilitate mobile life.

44 It follows that the Board of Appeal was right in finding that the goods and services in question form a homogenous category, in that they facilitate mobile life in one way or another.

45 In the second place, the applicant submits that the expression ‘mobile living made easy’ will not be perceived primarily as a promotional statement and that the mark applied for has a sufficient degree of distinctiveness.

46 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 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 Article 7(1)(b) of Regulation No 207/2009 only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question and accordingly enables the relevant public to distinguish, without any possibility of confusion, the goods or services of the proprietor of the mark from those which have a different commercial origin (judgments of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 21, and of 17 January 2013, Solar-Fabrik v OHIM (Premium XL and Premium L), T‑582/11 and T‑583/11, not published, EU:T:2013:24, paragraph 14).

47 For a finding of no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the product or service in question (judgments of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 31, and of 17 January 2013, Premium XL and Premium L, T‑582/11 and T‑583/11, not published, EU:T:2013:24, paragraph 15).

48 The Board of Appeal took the view that the sign did not contain any unusual variation of the English rules of syntax and grammar and that advertising slogans, such as that in the present case, were often written in a simplified form, so as to make them more concise and snappier. It pointed out that the mark applied for, taken as a whole in relation to the goods and services in question, sent a clear and unequivocal message, which was immediately apparent and did not require any interpretative effort on the part of the relevant English-speaking public. It concluded that the relevant public would perceive the expression ‘mobile living made easy’ as a promotional laudatory message, the function of which was to communicate an inspirational message of quality and that it would not perceive in the sign applied for any particular indication of commercial origin beyond the promotional information conveyed, which merely served to highlight positive aspects of the goods and services in question, namely that they made it easy to have a mobile, travelling life.

49 In that regard, it must be pointed out that it is common ground that the relevant public is the English-speaking public. Furthermore, it must be held that the meaning of the sign applied for does not depart from everyday language in such a way that the relevant public will recognise in it more that the mere juxtaposition of the expressions ‘mobile living’ and ‘made easy’, and that the relevant public will understand that sign as meaning ‘which facilitates mobile life’. That meaning, which is not, moreover, disputed by the applicant, is so obvious that that public does not need to think in order immediately to understand it.

50 That meaning has a promotional content, which communicates a message as regards quality, in the sense that the goods and services in question which are covered by the sign applied for are presented as ‘facilitating mobile life’. The sign applied for will not therefore be perceived by the relevant public as an indication of the origin of the goods and services in question, but as an advertising slogan.

51 That finding is, moreover, borne out by the fact that, as the Board of Appeal pointed out, advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier (judgment of 24 January 2008, Dorel Juvenile Group v OHIM (SAFETY 1st), T‑88/06, not published, EU:T:2008:15, paragraph 40).

52 Furthermore, the sign applied for does not include any unusual element capable of conferring distinctive character on that sign. As the Board of Appeal correctly pointed out, that sign does not include any elements that might, beyond its promotional meaning, enable the relevant public to memorise it easily and instantly as a trade mark for the goods and services in question.

53 It must therefore be held that the Board of Appeal was right to find that the sign applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

55 First, the applicant submits that, so far as concerns the goods which have no essential or desirable feature for leading a mobile life and are unrelated to the homogenous category defined by the Board of Appeal, the relevant public will perceive the sign applied for as an indication of commercial origin, in addition to perceiving it as promotional statement.

56 In that regard, it is sufficient to point out that it is clear from paragraphs 38 to 44 above that the applicant’s arguments that some of the goods in question do not fall within the homogenous category defined by the Board of Appeal have been rejected.

57 Secondly, the applicant refers to certain marks consisting of slogans which have been registered by EUIPO and have been regarded as having the minimum degree of distinctive character required for the purposes of Article 7(1)(b) of Regulation No 207/2009. It submits that to come to a different conclusion in the present case would constitute an infringement of the principle of legitimate expectations.

58 It must be borne in mind that the decisions concerning the registration of signs as EU trade marks which the Boards of Appeal take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (see judgment of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 48 and the case-law cited).

59 According to settled case-law, the right to rely on the principle of legitimate expectations extends to any person in a situation in which an EU institution has caused him to entertain justified expectations. Information which is precise, unconditional and consistent, in whatever form it is given, constitutes such an assurance. By contrast, a person may not plead infringement of that principle unless he has been given precise assurances (see judgment of 13 September 2017, Pappalardo and Others v Commission, C‑350/16 P, EU:C:2017:672, paragraph 39 and the case-law cited; see also, to that effect, judgment of 14 June 2012, Seven Towns v OHIM (Representation of seven squares of different colours), T‑293/10, not published, EU:T:2012:302, paragraph 38).

60 It is sufficient to state in that regard that the applicant cannot claim that the registration of trade marks that are different from the mark applied for causes it to have a legitimate expectation that the mark applied for has a minimum degree of distinctive character and should be registered.

61 It follows from the foregoing that the second plea must be rejected and the action must therefore be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.

62 Under Article 134(1) of the Rules of Procedure of the General Court, 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.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Dometic Sweden v EUIPO (MOBILE LIVING MADE EASY) (EU trade mark - Judgment) [2018] EUECJ T-235/17 (22 March 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T23517.html Cite as: [2018] EUECJ T-235/17, EU:T:2018:162, ECLI:EU:T:2018:162

Court of Justice of the European Communities (including Court of First Instance Decisions)