e*Message Wireless Information Services v EUIPO - Apple (e*message) (EU trade mark - Judgment) [2021] EUECJ T-834/19 (01 September 2021)

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(EU trade mark – Invalidity proceedings – EU figurative mark e*message – Absolute grounds for refusal – Descriptive character – Lack of distinctive character – Declaration of invalidity – Provisions applicable ratione temporis – Application of subsequent case-law – Article 17 of the Charter of Fundamental Rights – Principles of protection of legitimate expectations and of legal certainty)

e*Message Wireless Information Services GmbH, established in Berlin (Germany), represented by A. Hotz, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Walicka and V. Ruzek, acting as Agents,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Apple Inc., established in Cupertino, California (United States), represented by V. Schmitz-Fohrmann, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 10 September 2019 (Case R 2454/2018‑5), relating to invalidity proceedings between Apple and e*Message Wireless Information Services,

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

having regard to the application lodged at the Court Registry on 5 December 2019,

having regard to the response of EUIPO lodged at the Court Registry on 21 April 2020,

having regard to the response of the intervener lodged at the Court Registry on 17 April 2020,

having regard to the observations lodged by the parties at the Court Registry on 7, 17 and 21 December 2020,

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 9 March 2000, the applicant, e*Message Wireless Information Services GmbH, filed an application for registration of a Community trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

3 The goods and services in respect of which registration was sought are in Classes 9, 38 and 42 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 9: ‘Computer programs recorded on data carriers and data files; computer software, included in Class 9, in particular for telecommunications and digital data transmission; video conference systems and installations, mainly comprising communications protocols, software and equipment for transmission of sound, image and/or multimedia data, and software and equipment for input and/or output of sound and/or image data (included in Class 9); multimedia equipment and components therefor (included in Class 9); equipment and software for video-on-demand (included in Class 9); routers; telecommunications equipment; gateways; exchanges for public and proprietary digital and analog networks; switches for public and proprietary digital and analog networks; digital networks; network management systems; telecommunications apparatus, in particular ISDN terminals and ISDN telephone installations; ISDN telecommunications boxes; ISDN cards, in particular for personal computers; PC cards; PCMCIA cards; modems; apparatus for recording, transmission, processing or reproduction of sound and/or images and/or data; apparatus and equipment for telecommunications technology; image and/or sound data carriers and/or data carriers of all kinds with or without programs and/or data files, in particular floppy disks, magnetic tapes, cassettes including video cassettes and tape streamers, hard disk memories and read-only memories (ROM), RAM and plug-in modules, optical memories (except exposed and unexposed films) including CD-ROMs and WROMs; audio CD-ROMs, music cassettes; data processing equipment and computers, including microcomputers, and peripheral equipment therefor, including visual display units, modems, printers, external memories; microprocessors and other electronic component parts for computers’;

– Class 38: ‘Telecommunications; provision of ISDN services; communications services, namely electronic computing centres, electronic mailbox systems and computer centres for arranging electronic data transfer; online services and services relating to computer networks, in particular the Internet, namely providing directories, operator services, protocol conversion, providing access points and network infrastructures for transmission of sound, image and/or data (included in Class 38); operation of a telecommunications network, in particular a mobile radiotelephone network or satellite-supported telecommunications network; on-line services, namely the supplying, transmission and sending of information and messages of all kinds; electronic mail’;

– Class 42: ‘Computer programming; writing and publishing reports in the field of computer science and data processing; conducting tests on goods in connection with electronic data processing systems, electronic data processing apparatus and electronic data processing programs; development and testing of electronic communications, word processing and data processing systems; providing, development, enhancing and adjusting of data processing programs and/or data files (including multimedia and home pages) for others, issuing of licences for data processing programs, including computer games and video games and data files; database services, namely leasing access time to a computer database and operating databases, as well as gathering and supplying of data, messages and information, including for the purpose of arranging transactions and services of all kinds’.

4 The contested mark was registered on 29 May 2001 under No 1548619 for the goods and services referred to in paragraph 3 above.

5 On 22 September 2016, the intervener, Apple Inc., filed an application for a declaration of invalidity in respect of the contested mark pursuant to Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), read in conjunction with Article 7(1)(b) and (c) of that regulation.

6 On 25 October 2018, the Cancellation Division granted the application for a declaration of invalidity in its entirety and declared the contested mark to be invalid.

7 On 14 December 2018, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

8 By decision of 10 September 2019 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal.

9 It took the view that the Cancellation Division had not erred in finding that the contested mark had to be declared invalid for all of the goods and services designated by it, pursuant to Article 59(1)(a) of 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), read in conjunction with Article 7(1)(b) and (c) of that regulation.

10 More specifically, as regards the relevant public, the Board of Appeal noted that the goods and services at issue were aimed partly at professional customers alone and partly at both the general public and professional customers. It stated that account had to be taken of the public in the English-speaking territory of the European Union and of professionals in the computer and telecommunications fields throughout the European Union, on the ground that the contested mark was an English term and that English was the language used in those fields. Next, it held that the contested mark, considered as a whole, was understood by the relevant public to be an expression with a meaning, namely ‘a message that is sent by electronic means’, and provided indications as to the nature, intended purpose and characteristics of the goods and services in question. Consequently, it concluded that that mark had to be regarded as being descriptive, within the meaning of Article 7(1)(c) of Regulation 2017/1001, for all of the goods and services that it designates. Furthermore, it took the view that, since it consisted of a purely descriptive and informative message, the meaning of which could be easily understood by the relevant public, the contested mark was also, at the time of filing of the application for registration, devoid of any distinctive character in respect of the goods and services concerned, in terms of Article 7(1)(b) of Regulation 2017/1001. Lastly, it found that the documents provided by the applicant were insufficient to prove that, after its registration, the contested mark had acquired distinctive character through use, within the meaning of Article 59(2) of Regulation 2017/1001.

14 The first plea alleges, in essence, that there is no valid enabling provision for declaring the contested mark to be invalid. The second plea alleges, in essence, misapplication of the current interpretation of Article 7(1)(b) and (c) of Regulation 2017/1001. The third and fourth pleas allege, in essence, errors in the assessment of the figurative elements of the contested mark in the examination of its descriptive character. The fifth plea alleges incorrect assessment of the distinctive character of the contested mark. The sixth and seventh pleas in law allege, in essence, an infringement of Article 17 of the Charter of Fundamental Rights of the European Union and of the principles of protection of legitimate expectations and of legal certainty.

The first plea in law, alleging that there is no valid enabling provision for declaring the contested mark to be invalid

15 The applicant claims that, in the contested decision, the Board of Appeal erred in relying on Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation, in declaring the contested mark to be invalid, since that regulation was not in force on the date on which the application for registration of the contested mark was filed, namely 9 March 2000, and was therefore not applicable on that date. It states that the contested mark was not registered under the provisions of Article 7 of Regulation 2017/1001, with the result that it could not be declared invalid pursuant to Article 59(1)(a) of that regulation. Furthermore, it considers that, since Regulation No 207/2009 was repealed by Regulation 2017/1001 and was no longer applicable as from 30 September 2017, the Cancellation Division and the Board of Appeal were correct not to base the declaration of invalidity of the contested mark on the provisions of Article 52(1)(a) and Article 7(1)(b) and (c) of Regulation No 207/2009, even though the intervener based its application on those provisions. It then goes on to submit that the contested mark could not be declared invalid under Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) and (c) thereof, because that regulation had been repealed by Regulation No 207/2009 with effect from 13 April 2009. It concluded that there was no legal basis for declaring the contested mark to be invalid, with the result that the invalidity was declared in breach of the principle of the rule of law.

17 In this regard, it should be noted that Regulation No 40/94 was repealed and replaced by Regulation No 207/2009, which came into force on 13 April 2009. The latter regulation, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), was itself repealed and replaced, with effect from 1 October 2017, by Regulation 2017/1001.

18 According to settled case-law, procedural rules are generally deemed to apply on the date on which they come into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), in contrast to substantive rules, which are usually interpreted as applying to situations existing before their entry into force only in so far as it follows clearly from their terms, objectives or general scheme that such an effect must be given to them (see judgment of 14 March 2019, Textilis, C‑21/18, EU:C:2019:199, paragraph 30 and the case-law cited).

19 Furthermore, it is apparent from the case-law that, as regards applications for a declaration of invalidity of trade marks, the date of the application for registration of those marks is determinative for the purposes of identifying the applicable substantive law (see judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

20 As the determination of absolute grounds for invalidity, in respect of which a trade mark may be declared invalid, is a substantive rule (see, to that effect, judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraphs 3 and 6), the substantive provisions applicable on the date of the application for registration of the contested mark govern those grounds and their consequences.

21 In the present case, the application for registration of the contested mark was made on 9 March 2000, on which date Regulation No 40/94 was in force.

22 Moreover, it is not apparent from the terms, objectives or general scheme of Regulation No 207/2009 or of Regulation 2017/1001 that Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7 thereof, or Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7 thereof, should apply to situations existing before their entry into force.

23 In those circumstances, the provision of substantive law that was applicable ratione temporis before EUIPO for the purpose of assessing the intervener’s application for a declaration of invalidity was Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7 of that regulation. Since those provisions allowed for the possibility of declaring invalid a mark that is devoid of any distinctive character or that is descriptive, the applicant cannot usefully claim that the contested mark could not be declared invalid for lack of a legal basis for such a decision. It is also irrelevant, contrary to the applicant’s assertion, that those provisions were no longer in force on the date on which the contested decision was adopted, in so far as those are the substantive rules applicable ratione temporis which were in force at the material time in the present case.

24 That being so, it is still necessary to examine whether, in the contested decision, the Board of Appeal actually applied the provisions which were applicable ratione temporis.

25 In that regard, it is clear from the contested decision (see, in particular, paragraphs 10, 12, 13, 20 and 93 of that decision) that the Board of Appeal relied on Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation, in order to confirm the Cancellation Division’s decision declaring the contested mark to be invalid. Therefore, as the applicant claims, the Board of Appeal referred to provisions which were not applicable in the present case.

26 However, that circumstance has no bearing on the legality of the contested decision (see, by analogy, judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 8).

27 First of all, it should be noted that the provisions of Article 59(1)(a) and of Article 7(1)(b) and (c) of Regulation 2017/1001, first, correspond to those of Article 51(1)(a) and Article 7(1)(b) and (c) of Regulation No 40/94 and, secondly, as regards the absolute grounds for refusal to register, have not undergone any amendment as to their wording, their context or their objective in relation to the equivalent provisions of Regulation No 40/94. Next, it is apparent from the first two recitals of Regulation 2017/1001 that that regulation constitutes the codification of Regulation No 207/2009, which itself codified Regulation No 40/94. Finally, it is apparent from paragraphs 17 and 22 of the contested decision that the Board of Appeal expressly took the date on which the application for registration of the contested mark had been filed as the relevant date for determining whether that mark should be declared invalid.

28 In those circumstances, it must be held that the Board of Appeal specifically carried out its assessment in the light of the conditions set out in the substantive provisions applicable in the present case, namely Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) and (c) of that regulation.

The second plea in law, alleging misapplication of the current interpretation of Article 7(1)(b) and (c) of Regulation 2017/1001

30 In the context of the second plea, the applicant submits that the Board of Appeal based its assessment on criteria arising from current registration practice as well as from the recent case-law of the EU Courts, instead of exploring whether there were absolute grounds for refusal to register the contested mark on the basis of the criteria and interpretation of the rules applicable at the date of filing of the application for registration as they were understood at that date. In addition, it claims that, as regards the absolute grounds referred to in Article 7(1)(b) and (c) of Regulation No 40/94, in the early 2000s both the EUIPO Boards of Appeal and the EU Courts were very favourably disposed towards registrations and that a minimal degree of inherent distinctiveness was considered sufficient to preclude the application of those two grounds for refusal. It submits that EUIPO’s usual practice at that time was to accept even applications for registration of figurative signs which had a graphic design of only minimal originality. Lastly, it asserts that, if the Board of Appeal had applied the principles and the case-law dating from the early 2000s, it would have found that there was no sufficiently direct and obvious link between the expression ‘e*message’ and the goods and services covered by the contested mark to confer a descriptive character on that expression.

32 In the first place, as regards the applicant’s arguments derived from the case-law taken into consideration by the Board of Appeal, it should be noted that the interpretation that the EU Courts give to a rule of law clarifies and specifies, if necessary, the meaning and scope of that rule, as it must or should have been understood or applied since its entry into force (see, to that effect, judgment of 5 July 2012, Greece v Commission, T‑86/08, EU:T:2012:345, paragraph 49 and the case-law cited, and, by analogy, Opinion of Advocate General Wahl in EUIPO v Cactus, C‑501/15 P, EU:C:2017:383, point 54). Also, it is apparent from the case-law that the legality of the Board of Appeal’s decisions is assessed on the basis of the applicable trade mark regulation, in this case Regulation No 40/94, as interpreted by the EU Courts (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited). Furthermore, in interpreting EU law, neither the parties nor the Court itself can be precluded from drawing on elements of EU case-law (judgment of 1 February 2012, Carrols v OHIM – Gambettola (Pollo Tropical CHICKEN ON THE GRILL), T‑291/09, EU:T:2012:39, paragraph 35).

33 It follows that the Board of Appeal did not err in basing the contested decision on, inter alia, the interpretation given by the Court of Justice and by the General Court to Article 7(1)(b) and (c) of Regulation No 40/94 in decisions delivered after the date on which the application for registration of the contested mark was filed, in so far as, by those decisions, the EU Courts merely interpreted the substantive rules applicable at the date on which that application had been filed, with the result that such decisions, which clarify the scope and conditions for application of Article 7(1)(b) and (c) of Regulation No 40/94, allow conclusions to be drawn about the legal situation at issue, as it presented itself on that date.

34 Contrary to what the applicant submits, that also applies, in principle, to the case-law relating to the interpretation of Article 7(1)(b) and (c) of Regulation No 207/2009 and of Article 7(1)(b) and (c) of Regulation 2017/1001, in so far as those provisions are identical to those in Article 7(1)(b) and (c) of Regulation No 40/94, since they constitute successive codifications of equivalent provisions. Accordingly, the case-law relating to the provisions of Article 7(1)(b) and (c) of Regulation No 207/2009 and of Article 7(1)(b) and (c) of Regulation 2017/1001 is, in principle, relevant to the equivalent provisions of Regulation No 40/94 (see, by analogy, judgment of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 32).

35 The applicant’s argument derived from the more registration-friendly nature of the case-law of the 2000s, as regards the absolute grounds for refusal of registration set out in Article 7(1)(b) and (c) of Regulation No 40/94, does not allow a different conclusion to be reached.

36 In that regard, first, it should be noted that the applicant merely cites a few principles arising from five judgments delivered several months after the date on which the application for registration at issue was filed. These are, as regards the Court of Justice, the judgment of 20 September 2001, Procter & Gamble v OHIM (C‑383/99 P, EU:C:2001:461), and, as regards the General Court, the judgments of 31 January 2001, Taurus-Film v OHIM (Cine Action) (T‑135/99, EU:T:2001:30); of 31 January 2001, Wrigley v OHIM (DOUBLEMINT) (T‑193/99, EU:T:2001:32); of 31 January 2001, Sunrider v OHIM (VITALITE) (T‑24/00, EU:T:2001:34); and of 5 April 2001, Bank für Arbeit und Wirtschaft v OHIM (EASYBANK) (T‑87/00, EU:T:2001:119).

37 It should be noted that the applicant does not explain how the principles arising from the judgments to which it refers would be more favourable to registrations, having regard to the absolute grounds for refusal of registration referred to in Article 7(1)(b) and (c) of Regulation No 40/94, than the subsequent interpretation of those provisions or of Article 7(1)(b) and (c) of Regulation No 207/2009 and of Article 7(1)(b) and (c) of Regulation 2017/1001. Nor does the applicant establish any link between, on the one hand, its generalised claims and, on the other hand, the principles noted and applied in the contested decision. In any event, no conclusion can be drawn from the judgment of 31 January 2001, DOUBLEMINT (T‑193/99, EU:T:2001:32), in so far as that judgment was set aside by the judgment of 23 October 2003, OHIM v Wrigley (C‑191/01 P, EU:C:2003:579).

38 Secondly, it is apparent from the contested decision that the Board of Appeal referred regularly to the interpretations of the Court of Justice and the General Court of Article 7(1)(b) and (c) of Regulation No 40/94 from the early 2000s and, therefore, to judgments which necessarily involved an assessment as to whether there were absolute grounds for refusal in relation to applications for registration filed either before the date of filing of the application for registration at issue or on a date soon after that on which that application was filed (see, for example, paragraphs 23 to 25, 27, 47, 49, 58, 65 to 67, 71, 73 and 76 of the contested decision).

39 In the second place, so far as the applicant’s arguments relating to EUIPO’s decision-making practice are concerned, it should be noted that the decisions that EUIPO is called upon to take concerning the invalidity of an EU trade mark, under the substantive provisions of Regulation No 40/94, which are applicable in the present case, come within the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU Courts, and not on the basis of a previous administrative practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).

40 Moreover, although EUIPO must take account of decisions already adopted and pay particular attention as to whether it should decide in the same way or not, respect for the principle of legality requires that the examination of any application for registration be stringent and full, in order to avoid improper registration of trade marks. That examination must take place in each particular case. Indeed, registration of a sign as an EU trade mark depends on specific criteria applicable to the factual circumstances of the case at hand, designed to ascertain whether the sign in question comes within the scope of a ground for refusal (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 76 and 77; of 16 January 2019, Poland v Stock Polska sp. z o.o. and EUIPO, C‑162/17 P, not published, EU:C:2019:27, paragraph 60; and of 6 December 2018, Vans v EUIPO – Deichmann (V), T‑817/16, not published, EU:T:2018:880, paragraph 132).

41 In the present case, the applicant relies on several decisions of the Boards of Appeal in support of its arguments, without those decisions having been produced before the Court as evidence.

42 Furthermore, in accordance with the case-law cited in paragraph 40 above, the examination must take place in each particular case in order to ascertain whether the sign in question comes within the scope of an absolute ground for refusal.

43 In any event, as regards the decisions relating to the signs INHOUSE-OUTSOURCING (Case R 57/1999‑3) and NETMEETING (Case R 26/1998‑3), apart from the fact that those signs consist of terms different from those forming the contested mark, the applicant does not submit any specific argument based on those decisions which would allow the assessments made by the Board of Appeal or the principles applied by the Board of Appeal in the contested decision to be called into question.

44 As regards the decisions relating to the figurative signs selecta (Case R 104/1998‑3) and DECOPROJEKT (Case R 810/2000‑3), by reference to which the applicant seeks to establish that, in the early 2000s, EUIPO’s usual practice was to accept applications for registration of figurative signs even when the graphic designs on which they were based lacked originality, it must be noted first of all, as the intervener also submits, that, in those decisions, the word elements of those signs were not considered to be descriptive in relation to the goods and services concerned, in contrast to the word elements of the contested mark. Therefore, in those decisions, the figurative elements examined merely reinforced the Board of Appeal’s conclusion regarding the word elements of the signs concerned. Next, there are differences between the figurative elements of those signs and those of the contested mark. Lastly, and as EUIPO submits, reliance on two decisions of the Boards of Appeal is not sufficient to establish what EUIPO’s decision-making practice was at a given time.

45 In so far as the applicant refers to decisions concerning the word signs E‑SECURITY (Case R 156/2001‑3), E‑SERVER (Case R 253/2002‑2) and e‑travel (Case R 412/2000‑2) in order to establish that the link between the expression ‘e*message’ and the goods and services covered by the contested mark was not assessed in accordance with the criteria resulting from decision-making practice and that that link was too vague and indeterminate to be capable of conferring a descriptive character on the contested mark, it should be noted, first of all, that, contrary to the applicant’s claim, the Board of Appeal did not take the view that any link between the expression ‘e*message’ and the goods and services covered by the contested mark was sufficient to establish that that mark was descriptive in character. It is apparent from paragraphs 25 and 51 of the contested decision that the Board of Appeal found, on the basis of the case-law, that, in order for registration of a sign to be refused on account of its descriptive character, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned to perceive immediately, and without further reflection, a description of those goods or services or of one of their characteristics.

46 Furthermore, first, the signs relied on by the applicant relate only partially to the same goods and services as those at issue in the present case and, secondly, they concern different terms and therefore convey a different meaning from that of the contested mark. Consequently, the decisions relating to those signs do not allow conclusions to be drawn as to the descriptive character of the contested mark.

47 In those circumstances, the applicant’s arguments derived from the decision-making practice of the Boards of Appeal cannot be accepted.

48 In the third place, the applicant argues that the expression ‘e*message’ is not descriptive of the goods and services covered by the contested mark, since it does not enable the relevant public to perceive immediately, and without further reflection, the description of a characteristic of those goods or services. According to the applicant, that expression does not enable the relevant public to identify immediately and precisely either the particular telecommunications service that may be offered to it, or the apparatus necessary for such a service, or the software essential to that service.

49 By way of those arguments, the applicant seeks, in essence, to call into question the findings in paragraphs 52 to 56 of the contested decision, according to which the contested mark, taken as a whole, immediately and without further reflection informs the relevant public of the fact that the services or goods which it designates may be used for, or may relate to, electronic messages. More specifically, as regards the goods at issue included in Class 9, according to the Board of Appeal, the contested mark informs the relevant public in plain terms that those goods are goods intended for the transmission, sending, receipt or storage of electronic messages, or that they are used for those purposes. Furthermore, as regards the services at issue included in Class 38, the Board of Appeal took the view that the contested mark informs the relevant public in plain terms that those services are necessary for the transmission and receipt of electronic messages and/or are intended for storage of electronic messages or used for that purpose. Lastly, as regards the services at issue included in Class 42, the Board of Appeal took the view that the contested mark informs the relevant public in plain terms that those services constitute a wide range of services which, for example, include the processing of electronic messages as well as ancillary and related services and databases for the storage of all types of electronic messages.

50 According to Article 7(1)(c) of Regulation No 40/94, which is applicable in the present case (see paragraphs 17 to 23 above), registration is denied to trade marks which consist exclusively of signs or of 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 service. By virtue of Article 7(2) of that regulation, Article 7(1) applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

51 In order for a sign to come within the scope of the prohibition set out in Article 7(1)(c) of Regulation No 40/94, it must demonstrate a sufficiently direct and specific relationship with the goods or services at issue to enable the relevant public immediately, and without further reflection, to perceive a description of the goods and services at issue or of one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25).

52 The applicant’s arguments are not capable of calling into question the Board of Appeal’s views set out in paragraph 49 above. More specifically, the applicant does not explain the reasons why it considers that, in order to be regarded as descriptive, the combination of the letter ‘e’ and the word element ‘message’ would have to allow immediate and precise identification of the specific telecommunications service that may be offered to the relevant public, the necessary apparatus or the software essential to that service.

53 Furthermore, it is irrelevant whether the characteristics of the goods or services which may be described are commercially essential or merely ancillary. The wording of Article 7(1)(c) of Regulation No 40/94 does not distinguish by reference to the characteristics that may be designated by the signs or indications forming the mark. Accordingly, in the light of the general interest underlying that provision, any undertaking must be able to use such signs or indications freely to describe any characteristic of its own goods, whatever its significance commercially (see judgment of 12 September 2007, ColArt/Americas v OHIM (BASICS), T‑164/06, not published, EU:T:2007:274, paragraph 21 and the case-law cited).

54 In the present case, the Board of Appeal took the view that the goods and services designated by the contested mark may be used for electronic messages or may refer to them. It therefore refers to a characteristic of those goods and services. The applicant does not set out any specific argument allowing a finding that that conclusion of the Board of Appeal is incorrect.

55 In so far as the applicant claims that the intervener did not provide any evidence, in particular any lexical evidence, that, on 9 March 2000, the expression ‘e*message’ was used in a descriptive sense, it should be noted that it is apparent from EUIPO’s file that, in the annex to its application for a declaration of invalidity, the intervener lodged several decisions of the examiners, which predated the date on which the application for registration at issue was filed, concerning the meaning of the letter ‘e’ and the term ‘message’. In those decisions, reference is made to explanations given in English-language dictionaries of the time, which is also apparent from the decision given in the present case by the Cancellation Division. In addition, as regards the word ‘message’, the intervener produced a printout from Oxford Dictionaries dating from September 2016. Given that that word is a word of basic English vocabulary, and was already so on the date on which the application for registration at issue was filed, a fact which the applicant does not dispute, such an extract could be taken into consideration by the adjudicating bodies of EUIPO.

56 Moreover, when a party has disputed the validity of a registered trade mark on the basis of evidence in support of its application for a declaration of invalidity, it is incumbent on the Board of Appeal to examine that evidence and to consider the existence of well-known facts which the examiner might have omitted to consider in the registration procedure (see judgment of 3 May 2018, Raise Conseil v EUIPO – Raizers (RAISE), T‑463/17, not published, EU:T:2018:249, paragraph 28 and the case-law cited).

57 Consequently, the applicant’s argument alleging a lack of evidence relating to the descriptive character of the word elements of the contested mark cannot be accepted.

The third and fourth pleas in law, alleging errors in the assessment of the figurative elements of the contested mark in the examination of its descriptive character

59 In the third plea, the applicant submits that, on account of its distinctive graphic design, the contested mark does not consist exclusively of descriptive signs or indications. It takes the view that the contested decision does not contain any finding as regards the relevant public’s perception of the figurative elements of the letter ‘e’ and of the word element ‘message’ or of the symbol ‘*’ on the date of filing of the application for registration at issue. It also submits that the intervener did not provide any evidence regarding that perception and that, accordingly, the Board of Appeal had no basis for assessing the graphic configuration of the contested mark at the date of filing of the application for registration of that mark. It also submits that, in invalidity proceedings in which the contested mark was registered a long time previously, it is appropriate, for reasons of legal certainty, to impose strict requirements for proving and confirming the existence of an absolute ground for refusal. In the fourth plea, the applicant submits that the Board of Appeal, referring to recent case-law, applied an incorrect standard, according to which the figurative elements had to be capable of diverting the relevant public’s attention from the descriptive meaning of the word element of the mark, in order to overcome the ground for refusal relating to its descriptive character. It refers, in that context, to the decision-making practice of the Boards of Appeal at the relevant time. Furthermore, it asserts that, on the date on which the application for registration of the contested mark was filed, that mark could be registered solely by virtue of its graphic design.

61 As a preliminary point, it should be noted that, in the context of the third and fourth pleas, the applicant does not dispute the Board of Appeal’s finding that the combination of the letter ‘e’ and the word ‘message’ means ‘a message that is sent by electronic means’ and that that combination is descriptive of the goods and services covered by the contested mark. By those pleas, the applicant confines itself to calling into question the Board of Appeal’s assessment concerning the figurative elements of the contested mark when examining the descriptive character of that mark. As that assessment is criticised in both the third plea and the fourth plea, it is appropriate to examine those pleas together.

62 It is apparent from the contested decision that the contested mark consists of the slightly stylised, orange, lower-case letter ‘e’ and the word element ‘message’, represented in slightly stylised, black, lower-case letters. The Board of Appeal also found that the letter ‘e’ is slightly larger than the word element ‘message’ and that an orange asterisk, ‘*’, appears between those two elements. It held, in essence, that those figurative elements are not such as to divert the relevant public’s perception away from the descriptive meaning of the combination of the letter ‘e’ and the word element ‘message’ in relation to the goods and services at issue and, consequently, that they do not confer any distinctive character on the contested mark. The stylisation of that mark is relatively classical and minimal and the typeface used is quite common. Moreover, the asterisk, being functional and decorative in nature, is perceived as a symbol separating the verbal elements of that mark and the combination of colours used is merely a variant of the numerous colours or combinations of colours used in commerce.

63 In the first place, the applicant submits that the Board of Appeal did not make any finding as regards the relevant public’s perception of the figurative elements of the contested mark on the date on which the application for registration was filed and that the intervener did not provide any evidence concerning that perception.

64 In that regard, it must be recalled that an EU trade mark is considered to be valid until such time as it has been declared invalid by EUIPO following invalidity proceedings. It thus enjoys a presumption of validity, which is the logical consequence of the evaluation carried out by EUIPO in examining an application for registration. Therefore, it is for the person who has filed the application for a declaration of invalidity to place before EUIPO the specific facts which would call the validity of the contested mark into question (see, to that effect, judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraphs 27 and 28).

65 Furthermore, in accordance with Article 95(1) of Regulation 2017/1001, which, as a procedural rule, was applicable to the appeal proceedings (judgment of 15 October 2020, smart things solutions v EUIPO – Samsung Electronics (smart:)things), T‑48/19, not published, EU:T:2020:483, paragraph 64), EUIPO limits its examination in invalidity proceedings to the grounds and arguments submitted by the parties. However, that provision does not prevent the bodies of EUIPO from basing their decisions not only on the facts and evidence provided by the parties but also on well-known facts (see, to that effect, judgment of 15 January 2013, Welte-Wenu v OHIM – Commission (EUROPEAN DRIVESHAFT SERVICES), T‑413/11, not published, EU:T:2013:12, paragraph 24), that is to say, facts which are likely to be known by any person or which may be learned from generally accessible sources (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO), T‑185/02, EU:T:2004:189, paragraph 29).

66 In the present case, it is apparent from EUIPO’s file and from the Cancellation Division’s decision that, in its application for a declaration of invalidity, the intervener set out a number of arguments concerning the figurative elements of the contested mark and the relevant public’s perception of those elements. In support of its arguments, it referred to, inter alia, the case-law, the EUIPO guidelines and a printout from a website concerning the typeface used in the contested mark, it being noted that that latter piece of evidence was rejected by the Cancellation Division on the ground that it post-dated the date on which the application for registration was filed (see paragraph 5 of the contested decision).

67 Furthermore, as has already been observed in paragraph 62 above, the Board of Appeal decided on all of the figurative elements of the contested mark, namely its stylisation, the typeface used, its colours and asterisk, on the basis of well-known facts, as, in essence, EUIPO states in its response. Regard being had to the case-law cited in paragraph 65 above, that latter circumstance cannot give rise to an inference that the contested decision is vitiated by error.

68 As regards the date to which those findings concerning the figurative elements of the contested mark relate, it is, admittedly, true that, in the relevant paragraphs of the contested decision, the Board of Appeal did not refer explicitly to the relevant public’s perception on the date of filing of the application for registration at issue. Nevertheless, it is apparent from paragraphs 17 and 22 of the contested decision that the Board of Appeal expressly took the date on which the application for registration of the contested mark was filed as the relevant date for determining whether that mark should be declared invalid. Furthermore, in paragraph 44 of the contested decision, it also referred to that date for the purposes of assessing the meaning of the combination of the letter ‘e’ and the word element ‘message’. There is no reason to take the view that the same was not true as regards the examination of the figurative elements of the contested mark. In any event, given the nature of the figurative elements concerned, as argued by EUIPO and the intervener, there is no reason to think that the perception that the relevant public had of those elements has changed since the date on which the application for registration at issue was filed.

69 In so far as the applicant claims that, in invalidity proceedings in which the contested mark was registered a long time previously, it is appropriate, for reasons of legal certainty, to impose strict requirements for proving the existence of an absolute ground for refusal, suffice it to note, first, that the only relevant date for the purpose of examining an application for a declaration of invalidity under Article 51(1)(a) of Regulation No 40/94 is the date on which the application for the mark at issue was filed (judgment of 3 June 2009, Frosch Touristik v OHIM – DSR touristik (FLUGBÖRSE), T‑189/07, EU:T:2009:172, paragraph 19) and, secondly, that the conditions for application of an absolute ground for refusal of registration in the context of invalidity proceedings do not change depending on that date or on the remoteness of that date.

70 In those circumstances, the Board of Appeal did not infringe the rules relating to the burden of proof and the applicant cannot validly criticise it on the ground that it did not have a factual basis for assessing the relevant public’s perception of the figurative elements of the contested mark on the date on which the application for registration of that mark was filed.

71 In the second place, the applicant submits that the Board of Appeal, referring to recent case-law, applied an incorrect standard, according to which the figurative elements had to be capable of diverting the relevant public’s attention away from the descriptive meaning of the word element of the contested mark in order to overcome the ground for refusal relating to its descriptive character. It refers, in this context, to the decision-making practice of the Boards of Appeal at the relevant time and, more specifically, to decisions concerning the figurative signs selecta (Case R 104/1998‑3) and DECOPROJEKT (Case R 810/2000‑3). In so far as that complaint essentially overlaps with certain arguments put forward by the applicant in the context of the second plea, it is sufficient to refer to the considerations set out in, inter alia, paragraphs 39 to 42 and 44 above.

72 In the third place, the applicant submits that, on the date on which the application for registration of the contested mark was filed, that mark was eligible for registration solely on account of its graphic design. According to the applicant, the orange letter ‘e’ with the asterisk, in view of its size, is clearly distinct from the word element ‘message’ written in black. It adds that the typeface used and the asterisk in superscript were unusual in a mark at the time when the application for registration at issue was filed.

73 Those arguments also do not allow the considerations set out in the contested decision and summarised in paragraph 62 above to be called into question.

74 It is true that the orange, slightly stylised lower-case letter ‘e’ is larger than the word element ‘message’, written in black, slightly stylised lower-case letters, and that an orange asterisk appears between those elements. However, the Board of Appeal’s assessment that that stylisation of the contested mark is minimal, and is therefore not such as to divert the relevant public’s perception from the descriptive meaning of the combination of the letter ‘e’ and the word element ‘message’, is not incorrect.

75 The figurative elements of the letter ‘e’ and of the word element ‘message’, namely their size, their colours and the typeface used, are limited to a graphic representation of those elements that was common even on the date on which the application for registration at issue was filed. The applicant’s claim that the typeface used was unusual in a mark at the relevant date is not convincing and, moreover, is not substantiated in any way. In addition, the asterisk is essentially functional, since it separates the letter ‘e’ and the word element ‘message’. Moreover, it was a typographical sign already in current use on the date on which the application for registration at issue was filed.

76 In those circumstances, the applicant’s argument that the contested mark was registered in compliance with Article 7(1)(c) of Regulation No 40/94 solely by reason of its figurative elements must be rejected.

77 Having regard to all of the foregoing considerations, the third and fourth pleas must be rejected.

The fifth plea in law, alleging incorrect assessment of the distinctive character of the contested mark

78 The applicant claims that the Board of Appeal erred in finding that the contested mark was devoid of distinctive character. It submits that the Board of Appeal based its analysis in that regard on criteria that were not applicable, as regards assessments both of the combination of a letter and a word element and of the figurative elements. Furthermore, it argues, the contested decision does not contain any finding as to the perception of the figurative elements of the contested mark on the date on which the application for registration of that mark was filed and the intervener has not provided any indication as to graphic representations of a word or figurative mark which were common on that date. According to the applicant, it is not possible in those circumstances to determine whether, on that date, the figurative elements of the contested mark were such as to divert the relevant public’s attention from a word element allegedly lacking in distinctive character.

80 It should be noted that each of the absolute grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and calls for separate examination (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 45 and the case-law cited). Nevertheless, according to the case-law, it is sufficient that one of those absolute grounds applies in order for a sign not to be capable of being registered as an EU trade mark (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29).

81 In the present case, it is apparent from the analysis of the first four pleas that the Board of Appeal’s assessment that the contested mark was descriptive in respect of all of the goods and services that it designates does not infringe Article 7(1)(c) of Regulation No 40/94. The fifth plea, alleging, in essence, an incorrect assessment of the distinctive character of the contested mark, is therefore ineffective.

The sixth and seventh pleas in law, alleging infringement of Article 17 of the Charter of Fundamental Rights and of the principles of protection of legitimate expectations and of legal certainty

83 In the sixth plea, the applicant claims that the Board of Appeal’s confirmation of the invalidity of the contested mark, which, it argues, constitutes the revocation of a lawful administrative act favourable to the applicant, by retroactively applying provisions which were not in force on the date on which the application for registration of that mark was filed, and although the earlier provisions were applied less restrictively at that date, is unlawful and infringes Article 17 of the Charter of Fundamental Rights as well as the principles of the protection of legitimate expectations and of legal certainty. It submits that, on registration of the contested mark, it lawfully acquired a property right protected by Article 17(2) of the Charter of Fundamental Rights. It adds that, over the past 19 years, it has made arrangements concerning its assets on the basis of the reliance which it placed on EUIPO’s registration decision being correct and on its permanence, and that that reliance is worthy of protection.

84 In the seventh plea, the applicant submits that, even if the Court were to conclude that the contested mark was registered contrary to Article 7(1)(b) or (c) of Regulation 2017/1001 or of Regulation No 40/94, the withdrawal of the registration of that mark is not permissible without restriction. It argues, in essence, that an unlawful favourable administrative act can be revoked with retroactive effect only if the decision to revoke is made within a reasonable period and if regard is had for the legitimate expectations of the person to whom the measure is addressed. It adds that the proprietor of the contested mark may rely on the examination carried out by EUIPO during the registration procedure to identify any absolute grounds for refusal to register that mark and on the examination criteria applied for that purpose.

86 In view of the overlaps between the sixth and seventh pleas, it is appropriate to examine those pleas together.

87 In the first place, the applicant submits, in essence, that the registration of the contested mark was lawful and that, therefore, the contested decision infringes Article 17(2) of the Charter of Fundamental Rights and the principles of protection of legitimate expectations and of legal certainty.

88 In that regard, it should be noted that, in its first five pleas in law, the applicant has failed to establish that the contested decision was wrong, at least in that the Board of Appeal considered that the contested mark had been registered in breach of the provisions of Article 7(1)(c) of Regulation No 40/94. More specifically, it should be emphasised that, although the Board of Appeal referred to provisions that did not apply at the relevant date, in reality it made its assessment in light of the conditions laid down by the substantive provisions applicable at that date, namely Article 51(1)(a) of Regulation No 40/94, read in conjunction with, at the very least, Article 7(1)(c) of that regulation. Furthermore, the arguments put forward do not allow a finding that the Board of Appeal applied new and more stringent examination criteria than those applicable at the time when the application for registration of the contested mark was filed or that it breached the rules relating to the burden of proof.

89 The adjudicating bodies of EUIPO cannot therefore be criticised for having declared that mark to be invalid on the ground of absolute invalidity.

90 Under Article 51(1)(a) of Regulation No 40/94, an EU trade mark is to be declared invalid, on application, in the case where that mark has been registered contrary to the provisions of Article 7 of that regulation. Therefore, when faced with an application for a declaration of invalidity, the Cancellation Division has no discretion and must declare the mark at issue to be invalid in the case where the conditions for application of an absolute ground for refusal of registration are satisfied, subject to application of the provisions of Article 51(2) of Regulation No 40/94, which in certain cases allow such a consequence to be avoided, if that mark acquired a distinctive character after its registration. On that last point, it should be noted that the Board of Appeal confirmed the Cancellation Division’s assessment that, in the present case, the acquisition of distinctive character through use had not been proved, it being noted that those assessments have not been called into question by the applicant before the Court.

91 Furthermore, it is apparent from the case-law that registration of a mark cannot protect the proprietor of that mark from the risk of it being declared invalid under Article 51(1) of Regulation No 40/94 and that the objective of that provision is precisely to enable any errors made by the examiner at the time when an application for registration is filed to be corrected (see, to that effect, judgment of 30 November 2017, Red Bull v EUIPO – Optimum Mark (Combination of the colours blue and silver), T‑101/15 and T‑102/15, EU:T:2017:852, paragraphs 135 and 136).

92 Moreover, according to Article 54(2) of Regulation No 40/94 (which became Article 55(2) of Regulation No 207/2009, itself now Article 62(2) of Regulation 2017/1001), the effect of a declaration of invalidity of a trade mark is that that mark is deemed not to have had, from the outset, the effects specified in Regulation No 40/94.

93 Those provisions were in force both on the date on which the application for registration at issue was filed and on the date on which the contested mark was registered and their content was clear and unambiguous. It follows that the applicant was deemed to have been aware of the limitations imposed on the contested mark in that regard.

94 Next, it should be noted that the right to rely on the principle of protection of legitimate expectations extends to any person with regard to whom an institution has given rise to justified hopes. A person may not plead infringement of this principle unless he or she has been given precise, unconditional and consistent assurances by a competent authority of the European Union (see judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 79 and the case-law cited).

95 According to the case-law, registration of an EU trade mark cannot create a legitimate expectation on the part of the proprietor of that mark as regards the outcome of subsequent invalidity proceedings, since the applicable rules expressly allow for the possibility of subsequent challenge to that registration in an application for a declaration of invalidity or in a counterclaim in infringement proceedings (judgment of 19 May 2010, Ravensburger v OHIM – Educa Borras (Memory), T‑108/09, not published, EU:T:2010:213, paragraph 25). It is also apparent from the case-law that the fact that a mark was initially registered by EUIPO is not such as to bind EUIPO in the future, since the registration of a mark does not preclude that mark from being declared invalid if it was registered in breach of one of the absolute grounds for refusal set out in Article 7 of Regulation No 40/94 (see, to that effect, judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 82).

96 As regards the infringement of Article 17 of the Charter of Fundamental Rights, it should be noted that the protection of intellectual property is enshrined in Article 17(2) of the Charter of Fundamental Rights. However, there is no indication in that provision or in the case-law that the protection of intellectual-property rights must be protected as absolute rights (see, to that effect, judgment of 29 July 2019, Spiegel Online, C‑516/17, EU:C:2019:625, paragraph 56 and the case-law cited). According to the case-law, the EU trade mark exists, inter alia, within the limits imposed by Article 4, in conjunction with Articles 7 and 8, of Regulation No 40/94 (see, to that effect, judgment of 3 July 2013, Cytochroma Development v OHIM – Teva Pharmaceutical Industries (ALPHAREN), T‑106/12, not published, EU:T:2013:340, paragraph 45 and the case-law cited). Moreover, the applicant does not put forward any argument which makes it possible to establish that the limitation of the intellectual-property right in the form presented in this case is contrary to Article 52(1) of the Charter of Fundamental Rights.

97 In those circumstances, the applicant cannot validly claim that the registration of the contested mark was lawful and that, in upholding the Cancellation Division’s decision, the Board of Appeal infringed Article 17 of the Charter of Fundamental Rights and the principles of protection of legitimate expectations and of legal certainty.

98 In the second place, the applicant submits, in essence, that, even if the contested mark was registered contrary to Article 7(1)(b) or (c) of Regulation No 40/94, an unlawful favourable administrative act can be revoked with retroactive effect only if the decision to revoke is made within a reasonable period of time and only if account is taken of the legitimate expectations of the person to whom that act is addressed.

99 As a preliminary point, and contrary to the applicant’s submission, it should be noted that in invalidity proceedings, where the conditions for invalidity are satisfied, the Cancellation Division does not proceed to revoke an administrative act but adopts a new decision declaring the mark at issue to be invalid for the goods and services concerned, which is noted in the register when it becomes final. That is apparent both from Article 64(5) and (6) of Regulation 2017/1001, which was in force when the bodies of EUIPO adopted their decisions in the present case, and from the equivalent provisions of Regulation No 40/94 (see Article 56(5) and (6)) and of Regulation No 207/2009 (see Article 57(5) and (6)). Also, as already stated (see paragraph 92 above), the effect of such a decision is that the mark concerned is deemed not to have had, from the outset, the effects intended by Regulation No 40/94 and the decision has, henceforth, a retroactive effect.

100 Irrespective of the terms used, the applicant seeks, by its arguments, to call into question the legality of the contested decision in so far as the Board of Appeal confirmed the Cancellation Division’s decision in declaring the contested mark to be invalid with retroactive effect.

101 To that end, first, the applicant alleges infringement of the principle of protection of legitimate expectations.

102 As is apparent from the case-law referred to in paragraph 94 above, the right to avail oneself of the principle of protection of legitimate expectations extends to any person in regard to whom an institution has given rise to justified hopes. Moreover, a person may not plead infringement of that principle unless he or she has been given precise, unconditional and consistent assurances by a competent authority of the European Union.

103 In the present case, the applicant submits that the contested decision was adopted on the basis of new examination criteria that were stricter than those applicable on the date on which the application for registration at issue was filed. By this complaint, the applicant reiterates arguments that were also raised in the context of the second plea and which are unfounded (see paragraphs 32 to 47 above). In any event, by its very nature, such a complaint is not indicative of any guarantees that might be capable of forming a basis for the applicant’s legitimate expectations. The same is true of the argument that, in invalidity proceedings relating to long-standing registrations, strict requirements must be imposed in order to establish whether there is an absolute ground for refusal, an argument which, incidentally, was also put forward by the applicant in the context of the third plea, and has been rejected (see paragraph 69 above).

104 In addition, the applicant claims that it relied on the examination carried out by EUIPO during the registration procedure and that it had relied on the registration of the contested mark. In that regard, it should be reiterated that, in accordance with the case-law referred to in paragraph 95 above, the registration of an EU trade mark cannot give rise to a legitimate expectation on the part of the proprietor of that mark as to the outcome of subsequent invalidity proceedings, since the applicable legislation expressly provides the possibility of subsequent challenge to that registration in the context of an application for a declaration of invalidity.

105 In those circumstances, the applicant’s arguments alleging infringement of the principle of protection of legitimate expectations, on the assumption that the contested mark was registered contrary to Article 7(1)(b) or (c) of Regulation No 40/94, cannot succeed.

106 Secondly, the applicant submits, in essence, that the declaration of invalidity did not occur within a reasonable period of time after the contested mark had been registered.

107 In that regard, it must be noted that the applicable provisions do not set out a period within which an application for a declaration of invalidity on the ground of absolute nullity must be filed, a fact which the applicant itself acknowledges.

108 Furthermore, as has already been stated in paragraph 90 above, in so far as it is apparent from the examination of an application for a declaration of invalidity that the conditions for the application of an absolute ground for refusal of registration have been met, the Cancellation Division can only declare the contested mark to be invalid, pursuant to Article 51(1) of Regulation No 40/94, subject to application of the provisions of Article 51(2) of that regulation. That conclusion is supported by the case-law cited in paragraph 39 above, from which it follows that the decisions adopted by EUIPO, concerning the invalidity of an EU trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion.

109 It is also apparent from the case-law cited in paragraph 91 above that the requirement of legal certainty constitutes the general interest pursued by Article 51(1) of Regulation No 40/94 and that the objective of that provision is precisely to make it possible to rectify any errors committed by the examiner at the time of filing of an application for registration.

110 As regards Article 7 of Regulation No 40/94, to which Article 51(1)(a) of that regulation refers, it should be noted, first, that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and requires separate examination and, secondly, that those grounds for refusal must be interpreted in the light of the general interest underlying each of them (see judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 59 and the case-law cited). According to the case-law, the notion of general interest underlying Article 7(1)(b) of Regulation No 40/94 is, manifestly, indissociable from the essential function of the trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him or her, without any possibility of confusion, to distinguish the product or service from others which have a separate origin (see judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 60 and the case-law cited). As regards Article 7(1)(c) of Regulation No 40/94, it pursues a general-interest purpose which requires that signs or indications that are descriptive of the characteristics of goods or services in respect of which registration is sought may be freely used by all. Accordingly, that provision prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).

111 Subject to the particular case referred to in Article 51(2) of Regulation No 40/94, the legislature therefore gave precedence to the general interest as pursued by Article 51(1)(a) of Regulation No 40/94 and by Article 7(1)(b) and (c) of that regulation over any private interest that a proprietor of an EU trade mark might be able to assert, and without providing that invalidity proceedings must be initiated within a certain period.

112 In view of that regulatory framework, and also in view of the fact that, in the present case, the application for a declaration of invalidity was filed on 22 September 2016, EUIPO cannot be criticised on the ground that its adjudicating bodies delivered decisions only on 25 October 2018 (the Cancellation Division) and on 10 September 2019 (the Board of Appeal) on the invalidity of a mark that had been registered on 29 May 2001, following an application filed on 9 March 2000.

113 The judgments relied on by the applicant, namely the judgments of 9 March 1978, Herpels v Commission (54/77, EU:C:1978:45), of 3 March 1982, Alpha Steel v Commission (14/81, EU:C:1982:76), and of 26 February 1987, Consorzio Cooperative d’Abruzzo v Commission (15/85, EU:C:1987:111), do not allow any different conclusion to be reached.

114 Those judgments concern cases in which the administration proceeded on its own initiative to revoke acts which it considered to be wrong or incorrect. Therefore, they cover situations in which the administration decided on the moment at which to adopt decisions to revoke unlawful acts, with retroactive effect. Such decisions are indeed subject to strict conditions, including the observance of a reasonable period of time, in order to reconcile the principle of legality with the principle of legal certainty.

115 In the present case, however, as has already been stated, the Cancellation Division, exercising circumscribed powers and following a specific procedure, declared the contested mark to be invalid upon the submission of an application to EUIPO, in respect of which the applicable rules do not, either expressly or impliedly, specify any time limit. In that regard, it should be noted that, under Article 51(1) of Regulation No 40/94, a decision declaring a trade mark to be invalid is conditional on the filing of an application with EUIPO or on the filing of a counterclaim in infringement proceedings and, therefore, it cannot be adopted by EUIPO of its own motion. The present case can therefore be distinguished, on that ground, from those concerned in the judgments relied on by the applicant.

116 In the third place, it should be noted that it is apparent from the applicant’s reply to the Court’s questions that, in those arguments alleging infringement of Article 17 of the Charter of Fundamental Rights and of the principles of protection of legitimate expectations and of legal certainty, the applicant does not raise a plea of illegality in respect of Article 51(1)(a) of Regulation No 40/94 pursuant to Article 277 TFEU.

117 Having regard to all of the foregoing, the sixth and seventh pleas in law must be rejected and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second and third heads of claim.

118 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.

119 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and by the intervener.

2. Orders e*Message Wireless Information Services GmbH to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Apple Inc.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> eMessage Wireless Information Services v EUIPO - Apple (emessage) (EU trade mark - Judgment) [2021] EUECJ T-834/19 (01 September 2021) URL: http://www.bailii.org/eu/cases/EUECJ/2021/T83419.html Cite as: EU:T:2021:522, ECLI:EU:T:2021:522, [2021] EUECJ T-834/19

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