(Appeal— Article181 of the Rules of Procedure— EU trade mark— Word mark FORTIFY— Absolute ground for refusal— Descriptive character— Regulation (EC) No207/2009

ORDER OF THE COURT

26May 2016 (*)

(Appeal— Article181 of the Rules of Procedure— EU trade mark— Word mark FORTIFY— Absolute ground for refusal— Descriptive character— Regulation (EC) No207/2009— Article7(1)(c))

In Case C‑77/16P,

APPEAL under Article56 of the Statute of the Court of Justice of the European Union, brought on 11February 2016,

Hewlett Packard Development Company LP, established in Dallas, Texas (United States), represented by T.Raab and H.Lauf, Rechtsanwälte,

appellant,

the other party to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Tenth Chamber),

composed of F.Biltgen, President of the Chamber, E.Levits (Rapporteur) and M.Berger, Judges,

Advocate General: M.Campos Sánchez-Bordona,

Registrar: A.Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article181 of the Rules of Procedure of the Court,

makes the following

Order

1By its appeal, Hewlett Packard Development Company LP (‘Hewlett Packard’) seeks to have set aside the judgment of the General Court of the European Union of 3December 2015 in Hewlett Packard Development Company v OHIM (FORTIFY) (T‑628/14, EU:T:2015:925, ‘the judgment under appeal’), by which the General Court dismissed its action seeking the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3June 2014 (CaseR 249/2014-2), concerning an application for registration of the word sign ‘FORTITY’ as an EU trade mark (‘the decision at issue’).

2In support of its appeal, Hewlett Packard puts forward two grounds of appeal, alleging infringement, respectively:

–of Article7(1)(c) of Council Regulation (EC) No207/2009 of 26February 2009 on the European Union trade mark (OJ 2009 L78, p.1), and

–of Article7(1)(c) of Regulation No207/2009, read in conjunction with Article99 of the same regulation and Article37(b)(iv) of Commission Regulation (EC) No2868/95 of 13December 1995 implementing Regulation (EC) No40/94 on the Community trade mark (OJ 1995 L303, p.1)

The appeal

3Pursuant to Article181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

4On 21April 2016, the Advocate General took the following position:

‘1I suggest that the Court should dismiss the appeal in the case in question as being in part manifestly inadmissible and in part manifestly unfounded and order Hewlett Packard to pay the costs, in accordance with Article137 of the Rules of Procedure, for the following reasons:

The first ground of appeal, alleging infringement of Article7(1)(c) of Regulation No207/2009

2By its first ground of appeal, Hewlett Packard complains that the General Court held that the sign at issue is descriptive since the consumer immediately, and without further thought, perceives it as describing one of the characteristics of the goods in question.

3The first ground of appeal must be dismissed as being manifestly unfounded since the appellant in actual fact merely calls into question the assessment of the facts made by the General Court in paragraphs24 to 26 and 30 of the judgment under appeal and seeks a new assessment of the underlying dispute, without alleging distortion of the facts or evidence.

4In addition, the first ground of appeal also presents itself as a pure and simple repetition of the first plea relied on before the General Court, with the result that it may also for that reason be considered to be manifestly inadmissible.

The second ground of appeal, alleging infringement of Article7(1)(c) and Article99 of Regulation No207/2009 and of Article37(b)(iv) of Regulation No2868/95

5By the second ground of appeal, the appellant complains that the General Court erred in law by arbitrarily departing from the relevant previous decision-making practice of the Board of Appeal, and in particular from the decision concerning the registration as an EU trade mark of sign “FORTIFY” No2871622 for the years 2004 to 2012.

6In that regard, the General Court held that, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, 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 (judgment of 10March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10P, EU:C:2011:139, paragraphs75 to 77).

7In the present case, the General Court rightly held that the Board of Appeal had duly given its reasons for not following the previous decision-making practice relied on by the appellant. According to the General Court, the appellant is not entitled to rely on previous decisions of EUIPO in order to cast doubt on the conclusion reached by the Board of Appeal in the decision at issue.

8In addition, the appellant submits, as it had already done in its application before the General Court, that the concept of protective software already existed, in its current form, at the time trade mark No2871622 was registered and that, if the sign “FORTIFY” is descriptive of the goods in question, that issue ought to have been raised at the time of registration of that mark. It considers that the assertion that linguistic and technical use in the field of antivirus software had allegedly changed during recent years, which places it at a disadvantage, is not based in any event on any fact which may be demonstrated. Likewise, the burden of proof in this connection is unlawfully shifted, given that it is for the appellant to prove that the assertions of the Board of Appeal and the General Court are in fact inaccurate.

9In that regard, it suffices to note that the judgment under appeal does not refer to the content of that argument of the Board of Appeal in the decision at issue, but that it bases its analysis on the argument that the principles of equal treatment and sound administration must be reconciled with the due process of law. Consequently, the person who seeks registration of a sign as a trade mark cannot rely, to his own benefit, on any unlawful act committed in favour of another in order to obtain an identical decision. However, it must be stated that such an argument was not subject to criticism in the appeal.

10For those reasons, the second ground of appeal, in so far as it alleges infringement of Article7(1)(c) of Regulation No207/2009, seems to be manifestly unfounded.

11In addition, the appellant does not explain the reasons why it takes the view that there was an infringement of Article99 of Regulation No207/2009 and Article37(b)(iv) of Regulation No2868/95, which, moreover, had not been invoked before the General Court.

12In that context, it should be recalled that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside. In the present case, the appellant failed to mention the actual paragraphs of the judgment which it is contesting.

13In addition, it follows from paragraph28 of the application and from paragraph28 of the appeal that the second ground of appeal constitutes a pure and simple repetition of the first plea relied on before the General Court.

14For those reasons, the second ground of appeal must consequently be dismissed as being in part manifestly unfounded and in part manifestly inadmissible.’

5For the same reasons as those given by the Advocate General, it is necessary to dismiss the appeal.

Costs

6Under Article137 of the Court’s Rules of Procedure, applicable to the procedure on appeal pursuant to Article184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. In the present case, since the present order was adopted before the appeal was served on the defendant and therefore before the latter could have incurred costs, Hewlett Packard must be ordered to bear its own costs.

On those grounds, the Court (Tenth Chamber) hereby orders:

1.The appeal is dismissed.

2.Hewlett Packard Development Company LP is ordered to bear its own costs.

[Signatures]

* Language of the case: English.