The matter at hand

Deluxe Entertainment applied for a figurative EU trade mark containing the word element DELUXE for a wired range of goods and services in classes 9, 35, 37, 39 to 42 and 45.

The examiner refused the application in relation to all the goods and services on the grounds that the mark applied for, first, lacked distinctive character and, second, informed consumers about the quality of the goods and services concerned ex Article 7(1)(b) and (c) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark.

In the appeal brought before it, the Board of Appeal of EUIPO upheld the examiner’s decision on the same grounds. Deluxe Entertainment appealed this decision before the General Court, arguing inter alia that the Board of Appeal had not given reasons for the refusal to register the mark at issue in the light of each of the goods and services at issue.

The General Court upheld Deluxe’s action, considering that the goods and services at issue display such differences given their nature, their characteristics, their intended use and the way in which they are marketed, that they cannot be considered as a homogenous category making it possible for the Board of Appeal to adopt a general reasoning.

EUIPO appealed this decision before the ECJ, alleging that the General Court’s interpretation of the requirement of sufficient homogeneity does not comply with the case-law of the ECJ.

The judgment of the ECJ

First of all, the ECJ recalls, with reference to its judgments in BVBA Management (C‑239/05) and Isdin (C‑597/12 P), that “the competent authority may use only general reasoning for all of the goods and services concerned where the same ground for refusal is given for a category or group of goods or services” and that “such a power 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” (paragraph 30 and 31).

However, “it cannot be ruled out a priori that the goods and services covered by an application for registration all present a relevant characteristic for the analysis of an absolute ground for refusal and that they can be placed, for the purposes of examining the application for registration at issue in relation to that absolute ground for refusal, in a sufficiently homogenous single category or group” (paragraph 34).

In the matter at hand, all the goods and services covered by the application for registration present a characteristic which is relevant to the analysis of the absolute ground for refusal under Article 7(1)(b), namely the fact that they could be presented as having or providing superior quality. Therefore, according to the ECJ, they are all part of a sufficiently homogenous single category or group, for the purposes of the analysis of that absolute ground for refusal (paragraph 35).

Consequently, the General Court erred in law by failing to have regard to “the possibility 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” (paragraph 41).