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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Seon Technologies v EUIPO (FRAUD FIGHTERS) (EU trade mark - Judgment) [2025] EUECJ T-314/24 (26 March 2025) URL: http://www.bailii.org/eu/cases/EUECJ/2025/T31424.html Cite as: EU:T:2025:340, [2025] EUECJ T-314/24, ECLI:EU:T:2025:340 |
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JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
26 March 2025 (*)
( EU trade mark - International word registration designating the European Union FRAUD FIGHTERS - Absolute ground for refusal - Descriptive character - Article 7(1)(c) of Regulation (EU) 2017/1001 - Equal treatment - Principle of sound administration - Duty to state reasons - Article 94(1) of Regulation 2017/1001 )
In Case T‑314/24,
Seon Technologies Kft., established in Budapest (Hungary), represented by M. Brandusa and G. Baksay-Nagy, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,
defendant,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, G. Hesse and B. Ricziová (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
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,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Seon Technologies Kft., seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 April 2024 (Case R 2209/2023‑1) ('the contested decision').
Background to the dispute
2 On 9 February 2023, the applicant designated the European Union with the International Bureau of the World Intellectual Property Organization (WIPO) in respect of the international registration of the word sign FRAUD FIGHTERS bearing the number 1727782.
3 The goods and services in respect of which protection of the international registration in the European Union was sought were in Classes 9, 42 and 45 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 corresponded, for each of those classes, to the following description:
– Class 9: 'Encryption software; downloadable software; application software; authentication software; privacy software; cryptography software; antispyware software; business software; AI software; antimalware software; data communications software; data compression software; privacy protection software; computer software platforms; cloud computing software; business technology software; threat detection software; risk detection software; information retrieval software; downloadable software applications; artificial intelligence software; content control software; character recognition software; data management software; machine learning software; downloadable application software; artificial intelligence software for analysis; machine learning software for surveillance; machine learning software for analysis; artificial intelligence software for surveillance; application software for smart phones; application software for mobile phones; application software for wireless devices; computer software supplied from the Internet; computer software supplied on the Internet; computer software downloaded from the Internet; artificial intelligence and machine learning software; software for network and device security; interactive software based on artificial intelligence; computer software for system cleaning and optimization; downloadable computer software for remote monitoring and analysis; computer software for the collection of positioning data; computer software for the compilation of positioning data; computer software for the processing of positioning data; computer software for the transmission of positioning data; computer software for authorising access to data bases; computer software for accessing, browsing and searching online databases; software for searching and retrieving information across a computer network; computer software for the detection of threats to computer networks; computer software for testing vulnerability in computers and computer networks; software for the integration of artificial intelligence and machine learning in the field of big data; computer programmes for data processing; computer programmes stored in digital form; security software; downloadable computer security software; operational risk management software';
– Class 42: 'Anti-spamming service; design and development of electronic data security systems; computer security threat analysis for protecting data; data security consultancy; computer programming services for electronic data security; data security services; provision of computer security risk management programs; development of computer programs; development and creation of computer programmes for data processing; analytical services relating to computer programmes; research relating to computer programs; creation of computer programmes for data processing; design of software for data and multimedia content conversion from and to different protocols; providing temporary use of on-line non-downloadable software for the transmission of data; providing user authentication services using biometric hardware and software technology for e-commerce transactions; development of software for data and multimedia content conversion from and to different protocols; advice and development services relating to computer software; updating of computer software relating to computer security and prevention of computer risks; IT services for data protection; cloud-based data protection services; maintenance of computer software relating to computer security and prevention of computer risks; providing information, advice and consultancy services in the field of computer software; technical consultancy relating to the application and use of computer software; technical consultancy relating to the installation and maintenance of computer software; design and development of operating software for computer networks and servers; maintenance of software used in the field of e-commerce; providing information about the design and development of computer software; programming of computer software for evaluation and calculation of data; programming of computer software for reading, transmitting and organising data; design and development of operating software for accessing and using a cloud computing network; research relating to the development of computer programs and software; platforms for artificial intelligence as software as a service [SaaS]; development of software solutions for Internet providers and Internet users; installation of access control as a service (ACaaS) software; technical support services relating to computer software and applications; providing technical advice relating to computer hardware and software; development and testing of computing methods, algorithms and software; providing information in the field of computer software design; providing information in the field of computer software development; research in the field of computer programs and software; advisory services relating to the use of computer software; updating and maintenance of computer software and programs; design and development of computer hardware and software; software design and development; development of computer software application solutions; development of computer software application solutions; research and consultancy services relating to computer software; installation and maintenance of Internet access software; troubleshooting in the nature of diagnosing computer hardware and software problems; consultancy in the field of security software; installation and customisation of computer applications software; support and maintenance services for computer software; consultancy in the field of software design; development of software for secure network operations; installation, repair and maintenance of computer software; software as a service [SaaS]; professional advisory services relating to computer software; maintenance of computer software; updating and upgrading of computer software; design and development of antivirus software; updating of computer software for others; computer software consultancy; computer software development for others; maintenance and repair of software; diagnosis of faults in computer software; design and writing of computer software; rental and maintenance of computer software; computer software technical support services; hosting services, software as a service, and rental of software; computer programming and software design; software as a service [SaaS] featuring software for machine learning; advisory services relating to computer programming; troubleshooting in the nature of diagnosing computer software problems; consultancy relating to software maintenance; updating of computer software; design services relating to computer hardware and to computer programmes; repair of software [maintenance, updating]; software design for others; computer software programming services; installation of computer software; smartphone software design; software development; software engineering; computer software design; software creation; electronic monitoring of credit card activity to detect fraud via the Internet';
– Class 45: 'Information services relating to safety; advisory services in relation to safety; consultancy services in the field of the safety needs of commercial and industrial companies; security assessment of risks; consultation in relation to data protection compliance'.
4 By decision of 7 September 2023, the examiner refused protection of the international registration in the European Union on the basis of Article 7(1)(b) and (c) 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(2) of that regulation.
5 On 3 November 2023, the applicant lodged an appeal with EUIPO against the examiner's decision.
6 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the link between the international registration applied for and all the goods and services in question was sufficiently close for that international registration to fall within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, and, consequently, the prohibition laid down in Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– declare that Article 7(1)(b) and Article 7(1)(c) of Regulation 2017/1001 do not preclude registration of the international registration applied for in respect of the goods and services in question;
– order EUIPO to pay the costs.
8 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
Law
The jurisdiction of the Court
9 As regards the applicant's second head of claim, it should be noted that it requests that the Court declare that Article 7(1)(b) and Article 7(1)(c) of Regulation 2017/1001 do not preclude registration of the international registration applied for in respect of the goods and services in question. In that regard, it is sufficient to bear in mind that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue declaratory judgments (see, to that effect, order of 9 December 2003, Italy v Commission, C‑224/03, not published, EU:C:2003:658, paragraphs 20 and 21, and judgment of 4 February 2009, Omya v Commission, T‑145/06, EU:T:2009:27, paragraph 23). It follows that the second head of claim must be rejected on the ground of lack of jurisdiction.
Substance
10 The applicant relies on four pleas in law, alleging, first, infringement of Article 7(1)(c) and Article 7(2) of Regulation 2017/1001, second, infringement of Article 7(1)(b) and Article 7(2) of that regulation, third, breach of the principles of equal treatment and sound administration and, fourth, infringement of Article 94(1) of Regulation 2017/1001.
The first plea, alleging infringement of Article 7(1)(c) and Article 7(2) of Regulation 2017/1001
11 By its first plea, the applicant complains, in essence, that the Board of Appeal made errors of law and a manifest error of assessment in the application of the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001, read in combination with Article 7(2) of that regulation, and vitiated, in that respect, its decision by a failure to state reasons.
12 Under Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or 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 are not to be registered. Pursuant to Article 7(2) of that regulation, Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
13 For a sign to fall within the scope of the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or 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 and the case-law cited).
14 A sign's descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
15 In the present case, as regards the definition of the relevant public, the Board of Appeal first found that the majority of the goods and services in question targeted professional consumers, such as IT security specialists with a high level of attention. It then observed that, in situations where the public at large were to be targeted by the services in question, the level of attention of that public would also be high. Lastly, it stated that, since the international registration applied for consisted of two English terms, the assessment of the descriptive character of that international registration had to be carried out with regard to the English-speaking part of the relevant public in the European Union, at least with regard to the Irish and Maltese public.
16 The applicant does not dispute those assessments.
– The meaning of the international registration applied for
17 In the contested decision, the Board of Appeal approved the examiner's choice to rely on the definitions of the English terms 'fraud' and 'fighters' in the online Collins Dictionary according to which the first of those terms designated 'deliberate deception, trickery, or cheating intended to gain an advantage, intentional deception to cause a person to give up property or some lawful right' and the second designated 'one that fights or is inclined to fight'. That board of appeal inferred therefrom that the expression 'fraud fighters', which was nothing more than the sum of the parts of which it consisted and which was grammatically correct, would be understood, in the context of the goods and services in question, by the relevant public as meaning 'someone fighting against fraud'.
18 The applicant disputes those assessments. It submits that, by relying exclusively or excessively on the definitions of the terms 'fraud' and 'fighters' in the dictionary, the Board of Appeal did not adequately take into consideration the overall impression produced by the unique combination of those two terms, although the context, their connotation and their specific use within the IT industry may significantly alter the perception of the expression 'fraud fighters' in the context of the goods and services in question, in particular, by professionals of that industry who make up the primary public. In that respect, the applicant notes that that expression is not an ordinary expression and is therefore not found in English-language dictionaries.
19 EUIPO disputes the applicant's arguments.
20 It must be stated that, contrary to what the applicant claims, it follows from the contested decision, as summarised in paragraph 17 above, that the Board of Appeal did take into account the overall impression produced by the expression 'fraud fighters' in itself and in the context of the IT industry.
21 Furthermore, contrary to what the applicant submits, the fact that the expression 'fraud fighters' is not found in English-language dictionaries is irrelevant in the present case. In order to be refused registration pursuant to Article 7(1)(c) of Regulation 2017/1001, it is not necessary for a mark to appear in a dictionary or for it to be used in everyday language (judgment of 8 May 2024, Listan v EUIPO (Silent Loop), T‑501/23, not published, EU:T:2024:300, paragraph 45). The terms 'fraud' and 'fighter' each have a clear meaning, which, moreover, the applicant does not dispute and their combination complies with English grammatical rules. Accordingly, the expression 'fraud fighters' does not create, even in the context of the IT industry, on the part of the relevant English-speaking public an impression far removed from that produced by the mere juxtaposition of the parts of which it consists, as, in essence, the Board of Appeal noted.
22 Therefore, the applicant's arguments must be disregarded.
– The link between the international registration applied for and the goods and services in question
23 The Board of Appeal found that the expression 'fraud fighters' would be understood by the relevant public as simply indicating that the goods and services in question were provided by and for persons combating fraud, that they made it possible to combat fraud or that they were linked to that combat and that, to the extent that they could be used to combat fraud, they could also themselves be regarded as fraud fighters. The Board of Appeal therefore took the view that the international registration applied for described the kind and intended purpose of the goods and services in question and that it had a sufficiently direct and specific relationship with them to fall within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
24 The applicant disputes those assessments and claims that no sufficiently direct or sufficiently specific link exists between the international registration applied for and the goods and services in question.
25 EUIPO disputes the applicant's arguments.
26 In that respect, it must be borne in mind that the goods and services in question concern software and IT-related services, such as operating system software, computer programming, software design and IT security services and information services relating to safety and security risk assessment. As the Board of Appeal observed in the contested decision, without being contradicted by the applicant, there is a myriad of illegal activities in relation to IT systems. Therefore, in the light of the meaning of the international registration applied for in respect of the relevant public (see paragraph 21 above) and the nature of the goods and services in question, the Board of Appeal was right in finding that that international registration would be understood either as a message that those goods and services consisted in the provision of technical means to combat fraud or were provided by and for those dedicated to such a task, or as indicating that those goods and services, due to their specific software and design specifications, could also themselves be regarded as fraud fighters. Accordingly, the international registration applied for would immediately be understood by the relevant public as describing the possible kind and intended purpose of the goods and services in question, as well as their intended users, contrary to what the applicant claims by referring to the 'suggestive' nature of that international registration. Consequently, the Board of Appeal was fully entitled to find that that international registration had a sufficiently direct and specific relationship with the goods and services in question and that it was descriptive, within the meaning of Article 7(1)(c) of Regulation 2017/1001.
27 The applicant's arguments do not make it possible to call into question the merits of the Board of Appeal's assessment in that regard.
28 First, as regards the applicant's argument that the Board of Appeal did not examine the existence of a link between the international registration applied for and each of the goods and services in question, it should be borne in mind that, as regards the competent authority's obligation to state reasons for refusing to register a trade mark in respect of each of the goods or services for which that registration is sought, that 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 (judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 29 and 30, and of 22 March 2023, Casa International v EUIPO – Interstyle (casa), T‑650/21, not published, EU:T:2023:155, paragraph 54). However, 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 (judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 31, and of 22 March 2023, casa, T‑650/21, not published, EU:T:2023:155, paragraph 54).
29 In the present case, when the Board of Appeal assessed the descriptive character of the international registration applied for in respect of the goods and services in question by regrouping those goods and services, it established to the requisite standard that there was a sufficiently direct and specific link between those goods and services, to the point where those goods and services formed a sufficiently homogeneous group of goods and services allowing general reasoning, in accordance with the case-law cited in paragraph 28 above. It stated, first, that the goods in Class 9 consisted of a wide range of computer software, such as operating system software or applications, second, that the services in Class 42 were services related to software and IT, such as computer programming, software design and IT security services, and, third, that the services in Class 45 included services such as information services relating to safety and security risk assessment. That board of appeal then stated that the goods and services in question had specific software and design specifications which would aid their users to thwart online fraud and that, since those goods and services were IT‑related, the capability to combat fraud could be an essential characteristic for them.
30 In addition, it must be noted that the applicant does not claim that, contrary to the Board of Appeal's assessments, the goods and services in question do not form a sufficiently homogeneous category.
31 Second, although the applicant submits that the expression 'fraud fighters' describes the potential consumers of the goods and services in question rather than the essential characteristics of those goods and services, it must be stated that not only did the Board of Appeal refer to that possibility, as is clear from the summary of its assessment set out in paragraph 23 above, but that it has not made an error of law in that regard.
32 It should be borne in mind that, by using the terms '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' in Article 7(1)(c) of Regulation 2017/1001, the EU legislature made it clear, first, that those terms must all be regarded as corresponding to characteristics of goods or services and, second, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 42 and the case-law cited). Furthermore, it has already been held that account had to be taken of the intended users of the goods covered by the mark applied for as a characteristic of those goods (judgment of 8 May 2024, Tiendanimal v EUIPO (CRIADORES), T‑314/23, not published, EU:T:2024:299, paragraph 28).
33 Third, as regards the applicant's argument that most of the software is not developed or marketed for the purpose of combating fraud and that only some of the goods and services in question provide complex anti-fraud and additional specialised functions, it must be borne in mind that, for Article 7(1)(c) of Regulation 2017/1001 to apply, it is sufficient for the sign to be descriptive of one of the possible intended purposes of the goods and services at issue which the relevant public is liable to take into account when making a choice and which accordingly constitutes an essential characteristic thereof (judgment of 12 June 2024, Nike Innovate v EUIPO – Puma (FOOTWARE), T‑130/23, not published, EU:T:2024:373, paragraph 67).
34 As for the goods in question in Class 9, the applicant does not expressly indicate that they may not serve to prevent fraud or combat fraud. In any event, it provides no explanation as to the purposes unrelated to fraud prevention, which, according to the applicant, those goods serve, nor does it adduce any evidence establishing or at least indicating that they could not serve to combat fraud. On the contrary, Annex A.3 to the application shows that the applicant's goods are used in combating fraud. As regards the services in question in Classes 42 and 45, the applicant concedes that they may in fact serve to combat fraud.
35 Moreover, it must be stated that the applicant does not identify among the goods and services in question those which it claims are not developed or marketed to combat fraud or which it sustains did not have complex or specialised functions for that purpose. In addition, the applicant's claim summarised in paragraph 33 above is not substantiated, either by evidence or explanations concerning the allegedly different functions of the goods and services in question.
36 Fourth, the applicant submits that the expression 'fraud fighters' is not customarily used in the industry concerned to describe anti-fraud software and software-related services and that other terms are used for that purpose.
37 However, in order for EUIPO to refuse to register a trade mark under Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (judgment of 8 June 2022, Vitronic v EUIPO (Enforcement Trailer), T‑433/21, not published, EU:T:2022:344, paragraph 60).
38 Furthermore, it has also been held that it was irrelevant whether there were other, more usual, signs or indications for designating the same characteristics of the goods or services referred to in the application for registration than those of which the mark applied for consists. Although Article 7(1)(c) of Regulation 2017/1001 provides that, if the ground for refusal of registration set out therein is to apply, the mark must consist 'exclusively' of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not require that the signs or indications in question should be the only way of designating such characteristics (judgment of 8 June 2022, Enforcement Trailer, T‑433/21, not published, EU:T:2022:344, paragraph 59).
39 Fifth, as regards the applicant's argument that the Board of Appeal does not rely on any evidence to assess the relevant public's perception of the international registration applied for and to show that it was necessary that others in the industry use similar names to describe their own goods or services, it must be stated, as observed by EUIPO, that, first, it is not necessary to show that there is already a descriptive use of the sign by the applicant or its competitors. Such evidence is not necessary, since the wording of Article 7(1)(c) of Regulation 2017/1001 refers to the possibility of a sign to be perceived as a designation of a characteristic of the goods or services. Second, the application of that provision does not depend on there being a real, current or serious need to leave a sign or indication free for the benefit of third parties (see, to that effect, judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 35).
40 Sixth, in respect of the applicant's arguments that, on the one hand, the Board of Appeal did not take into account the fact that, in the software industry, the combination of the term 'fighters' and of another term had become an attractive branding structure, and, on the other, signs including the term 'fighter' or 'fighters' had been registered by EUIPO in respect of goods in Class 9 or services in Class 42, it must be held that the only evidence to which the applicant refers in support of those arguments consists of a list of seven registrations, listed in paragraph 19 of the statement of grounds of the appeal which it lodged before the Board of Appeal. Those decisions relate to six registrations of marks containing the term 'fighters' in combination with other terms, which are significantly far removed from the term 'fraud', and to the registration of the word sign FraudView. It cannot be inferred from those seven decisions, concerning signs different from the international registration applied for, that that registration is not descriptive of the goods and services in question.
41 Seventh, concerning the applicant's argument that the international registration applied for has been registered or has not had an absolute ground for refusal of registration raised against it in many English-speaking countries and that it has been registered in Hungary, it must be borne in mind that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal of EUIPO must be evaluated solely on the basis of Regulation 2017/1001, as it is interpreted by the EU judicature (see judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58 and the case-law cited). Accordingly, EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47).
42 It follows from all of the foregoing that the Board of Appeal did not make an error of assessment in finding that the international registration applied for fell within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. In addition, the examination of the present plea has not revealed any shortcomings in the statement of reasons for the contested decision in that regard.
43 Therefore, the first plea must be rejected.
The second plea, alleging infringement of Article 7(1)(b) and Article 7(2) of Regulation 2017/1001
44 By its second plea, the applicant submits that the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 and Article 7(2) of that regulation by incorrectly finding that the international registration applied for lacked distinctive character in respect of the goods and services in question on the basis of the ground for refusal concerning descriptive character. According to the applicant, the international registration applied for does have distinctive character.
45 EUIPO disputes the applicant's arguments.
46 In the contested decision, the Board of Appeal referred to the case-law which states that a descriptive mark is, on that account, necessarily devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001 and, in particular, found that, given that the international registration applied for was descriptive of the goods and services in question, it could not, for that reason, be granted protection in the European Union under Article 7(1)(b) of Regulation 2017/1001 and Article 7(2) of that regulation.
47 In that regard, it must be borne in mind that it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation 2017/1001 applies for the sign applied for not to be registrable as an EU trade mark (judgment of 23 October 2024, Nike Innovate v EUIPO (SUPPORT-FIT), T‑1072/23, not published, EU:T:2024:729, paragraph 44).
48 As is apparent from the examination of the first plea, the Board of Appeal did not make an error of assessment in finding that the international registration applied for fell within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation. Since that ground is in itself sufficient to justify the refusal of registration, there is no need, in the present case, to examine the merits of the second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001 and Article 7(2) of that regulation.
The third plea, alleging breach of the principles of equal treatment and sound administration
49 The applicant submits that the Board of Appeal breached the principles of equal treatment and sound administration by dismissing the appeal brought before it, since, first, the international registration applied for has been registered for goods and services in Classes 9, 42 and 45 in Hungary as well as in a number of third countries and, second, similar signs have been registered by EUIPO.
50 EUIPO disputes the applicant's arguments.
51 In the contested decision, the Board of Appeal found that the earlier registrations relied on by the applicant concerned signs different from the sign at issue in the present case. In its view, although some of those signs contained the term 'fraud' and others the term 'fighters', none of them consisted of the same combination and had the same meaning as the expression 'fraud fighters' in relation to the goods and services in question, with the result that they could not be regarded as analogous. Moreover, the Board of Appeal took the view that the principles of equal treatment and sound administration always had to be consistent with respect for the principle of legality and that the examination of any application for registration had to be stringent and full and had to be undertaken in each individual case. It also stated that, as regards registrations of marks outside the EU system, the EU trade mark regime was an autonomous system, which applied independently of any national system.
52 First, as regards registration of similar signs by EUIPO, it should be borne in mind that, since the application by EUIPO of the principles of equal treatment and sound administration must be consistent with respect for the principle of legality, a person who files an application for registration of a sign as an EU trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73, 75 and 76). In addition, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, 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 (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77, and of 25 September 2015, August Storck v OHIM (2good), T‑366/14, not published, EU:T:2015:697, paragraph 40).
53 In any event, it follows from the contested decision that the Board of Appeal examined the earlier registrations relied on by the applicant and explained, in essence, that the signs to which those registrations related could not be regarded as analogous to the international registration applied for. It correctly noted that, although some of those signs contained the term 'fraud' and others the term 'fighters', none of them consisted of the same combination of those terms and had the same meaning as the expression 'fraud fighters' in relation to the goods and services in question.
54 Second, the applicant's argument claiming that the international registration applied for has been registered in respect of goods and services in Classes 9, 42 and 45 in Hungary as well as in a number of third countries must be rejected on the basis of the case-law cited in paragraph 41 above.
55 Therefore, the third plea must be rejected.
The fourth plea, alleging infringement of Article 94(1) of Regulation 2017/1001
56 The applicant submits that the Board of Appeal failed to comply with its duty to state reasons laid down in Article 94(1) of Regulation 2017/1001. First, that board of appeal did not take account of the evidence produced in Annex 1 to the statement of grounds of the appeal brought before it, namely the list of the best fraud-detection software. Second, the Board of Appeal did not clearly define the relevant public and did not assess the market reality and consumer habits and perceptions in the industry of the goods and services in question. Third, that board of appeal did not provide any specific evidence, such as market research, in support of its finding that the expression 'fraud fighters' would immediately be understood by the relevant public as descriptive of those goods and services.
57 EUIPO disputes the applicant's arguments.
58 Under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. The duty to state reasons in decisions is an essential procedural requirement which must be distinguished from the question whether the reasoning is well founded, which is concerned with the substantive legality of the measure at issue. 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 judgment of 20 February 2013, Langguth Erben v OHIM (MEDINET), T‑378/11, EU:T:2013:83, paragraph 15 and the case-law cited).
59 In the present case, in so far as the applicant's arguments relied on in connection with that plea in fact concern the merits of the grounds of the contested decision, they must be disregarded as ineffective.
60 In any event, contrary to what the applicant claims, the Board of Appeal clearly defined, in paragraphs 18 and 20 of the contested decision, the relevant public and stated adequate reasons, in paragraphs 21 to 30 of the contested decision, for its assessment of the perception by that public of the international registration applied for when that registration is affixed to the goods and services in question.
61 That statement of reasons enabled both the applicant and the Court to understand the Board of Appeal's reasoning and thus met the requirements of Article 94(1) of Regulation 2017/1001.
62 Therefore, the fourth plea must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
63 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.
64 Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing is convened. Since no hearing was held, it is appropriate to decide to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Seon Technologies Kft. and the European Union Intellectual Property Office (EUIPO) to bear their own costs.
Kowalik-Bańczyk | Hesse | Ricziová |
Delivered in open court in Luxembourg on 26 March 2025.
V. Di Bucci | S. Papasavvas |
Registrar | President |
* Language of the case: English.
© European Union
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