Administration of the State Border Guard Service of Ukraine v European Union Intellectual Property Office (T-82/24)

Contents

Judgment of the General Court (Third Chamber)13 November 2024^note(EU trade mark — Application for EU figurative mark RUSSIAN WARSHIP, GO F**K YOURSELF — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001 — Political slogan — Equal treatment — Principle of sound administration — Article 71(1) of Regulation 2017/1001)In Case T‑82/24,Administration of the State Border Guard Service of Ukraine, established in Kyiv (Ukraine), represented by P. Holý, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,THE GENERAL COURT (Third Chamber),composed, at the time of the deliberations, of P. Škvařilová-Pelzl, acting as President, I. Nõmm and G. Steinfatt (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

1By its action under Article 263 TFEU, the applicant, Administration of the State Border Guard Service of Ukraine, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 December 2023 (Case R 438/2023‑1) (‘the contested decision’).

Background to the dispute

2On 16 March 2022, the predecessor-in-title to the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:

3The mark applied for covers the goods and services in Classes 9, 14, 16, 18, 25, 28 and 41 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 corresponding, for each of those classes, to the following description:– Class 9: ‘Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting, monitoring and controlling devices; Magnets, magnetizers and demagnetizers; Optical devices, enhancers and correctors; Recorded content; Safety, security, protection and signalling devices; Software for use as a wallet for downloadable multimedia files containing artwork, text, audio, and video relating to the Russia military aggression against Ukraine authenticated by non-fungible token (NFTs)’;– Class 14: ‘Jewellery; Gemstones, pearls and precious metals, and imitations thereof; Key rings and key chains, and charms [thereof]; Time instruments; Chronometric instruments; Ceramic discs for use as tokens of value; Coins; Collectible coins; Commemorative coins; Commemorative shields; Commemorative statuary cups made of precious metal; Decorative articles [trinkets or jewellery] for personal use; Fancy keyrings of precious metals; Identification bracelets [jewellery]; Identity plates of precious metal; Monetary coin sets for collecting purposes; Non-monetary coins; Works of art of precious metal’;– Class 16: ‘Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Decoration and art materials and media; Coasters of paper; Coasters of cardboard; Banners of paper; Bibs of paper; Dinner mats of cardboard; Disposable napkins; Paper handtowels; Kitchen rolls [paper]; Table runners of paper; Table napkins of paper; Paper and cardboard; Printed matter, and stationery and educational supplies; Works of art and figurines of paper and cardboard, and architects’ models’;– Class 18: ‘Luggage, bags, wallets and other carriers; Umbrellas and parasols; Adhesive tags of leather for bags; Card holders made of imitation leather; Card holders made of leather; Cases of leather or leatherboard; Labels of leather; Leather and imitations of leather’;– Class 25: ‘Clothing; Footwear; Headgear; Parts of clothing, footwear and headgear’;– Class 28: ‘Sporting and physical exercise equipment; Toys, games, and playthings’;– Class 41: ‘Publishing, reporting, and writing of texts; Education, entertainment and sports’.

4On 13 September 2022, the transfer of the mark applied for to the applicant was entered in the register.

5By decision of 22 December 2022, the examiner rejected the application for registration in its entirety on the basis of Article 7(1)(f) 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.

6On 21 February 2023, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.

7On 13 June 2023, the President and Rapporteur of the First Board of Appeal issued a communication to the applicant, informing it that, following a preliminary examination of the case and without prejudice to the applicability of Article 7(1)(f) of Regulation 2017/1001, the sign in question appeared to lack any distinctive character within the meaning of Article 7(1)(b) of that regulation. The applicant submitted its observations on 13 July 2023.

8By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark applied for was devoid of distinctive character for the goods and services at hand and thus had to be refused registration under Article 7(1)(b) of Regulation 2017/1001.

Forms of order sought

9The applicant claims that the Court should:– annul the contested decision;– order EUIPO to pay the costs.

10EUIPO contends that the Court should:– dismiss the action;– order the applicant to pay the costs in case an oral hearing is convened.

Law

11The applicant relies on three pleas in law, alleging, first, infringement of Article 7(1)(b) of Regulation 2017/1001, second, failure to observe the principles of equal treatment and of sound administration and, third, infringement of Article 71(1) of Regulation 2017/1001.

First plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001

12The applicant criticises the Board of Appeal for having misapplied Article 7(1)(b) of Regulation 2017/1001 in finding that the mark applied for is devoid of any distinctive character for all the goods and services at issue.

13According to Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

14For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (see judgment of 8 February 2011, Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, EU:T:2011:33, paragraph 44 and the case-law cited).

15The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been sought and, second, by reference to the relevant public’s perception of the mark (see judgment of 25 September 2014, Giorgis v OHIM – Comigel (Shape of two packaged goblets), T‑474/12, EU:T:2014:813, paragraph 13 and the case-law cited).

16The signs which are devoid of any distinctive character that are referred to in Article 7(1)(b) of Regulation 2017/1001 are deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services covered by that mark, thus enabling the consumer who acquired those goods or services to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgment of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37; see also judgments of 15 September 2009, Wella v OHIM (TAME IT), T‑471/07, EU:T:2009:328, paragraph 14 and the case-law cited, and of 13 March 2024, Quality First v EUIPO (MORE-BIOTIC), T‑243/23, not published, EU:T:2024:162, paragraph 19 and the case-law cited).

The relevant public

17In paragraph 26 of the contested decision, the Board of Appeal held that the goods and services covered by the mark applied for overwhelmingly consisted of everyday goods and services which all targeted mainly the public at large, although some of those goods and services may also be targeted at business professionals. Depending on the characteristics of the goods and services at issue, the level of attention displayed by the relevant public varies from low to high.

18There is no need to call those assessments into question which, moreover, have not been disputed by the applicant.

The distinctive character of the mark applied for

19In paragraphs 27 to 37 of the contested decision, the Board of Appeal held that the phrase forming the subject matter of the mark applied for was one of the symbols of Ukraine’s fight against Russian occupation. According to the Board of Appeal, it is associated with a soldier of the Ukrainian army and the country and the historical event in the context of which it was uttered. Thus, the relevant public would see only the political message conveyed by that sentence and would not perceive or mentally register the sign as a trade mark, namely as an indication of the commercial origin of the goods and services which it designates. On the contrary, the sign at issue would be perceived by the relevant public as being promotional, in the sense of promoting bravery in the face of overwhelming odds, and not as promoting any trade or commercial entity. It is therefore a political slogan devoid of distinctive character. In that regard, the applicant’s identity is irrelevant. According to the Board of Appeal, the message expressed in Russian and English will be understood by the Russian-speaking public in the European Union. The English phrase contains basic English words, easily understood by any Russian speaker with a basic knowledge of English.

20According to the applicant, in the first place, the Board of Appeal, first, wrongly classified the mark applied for as a ‘political slogan’. According to the applicant, that mark is a war cry uttered by the Ukrainian border guard serviceman on Snake Island on 24 February 2022, the first day of the full-scale Russian invasion of Ukraine. Thus, it is instead an original phrase that can be traced to a single source and a defined moment in time. Second, even though the mark applied for was subsequently used to rally support for Ukraine, because it is so uniquely connected to the Ukrainian response to the military aggression of the Russian Federation, it is inappropriate to apply to that sign, for the assessment of its distinctive character, stricter criteria than those applicable to other types of signs. The fact that a sign is considered as a political slogan does not automatically deprive it of any distinctive character in relation to any product or service. The relevant public in the European Union is accustomed to associating political slogans at the origin of goods or services, without those slogans having acquired distinctiveness through use.

21In the second place, the applicant submits that the mark applied for is inherently distinctive in relation to every single category of goods and services covered by the application for registration, because an average consumer in the European Union is not aware what the sign, in a foreign language, is about and few of those consumers heard that phrase before the filing of the mark application. The three weeks which elapsed between the event which gave rise to the phrase used in the mark applied for and the filing of the mark application were therefore not enough for the sign to have been widely used or to have been perceived as lacking any distinctive character by the time when the application for registration was filed. By failing to assess the distinctive character of the mark applied for in relation to the specific goods and services covered by it, the Board of Appeal came to an incorrect conclusion about the application of the case-law relating to advertising slogans to the present case. According to the applicant, the Board of Appeal has misapplied the case-law on advertising slogans, even though the mark applied for does not have an intrinsic advertising function and is therefore not a promotional formula. It therefore failed to assess the distinctiveness of the mark applied for by taking into account all the relevant circumstances of the present case.

22In the third place, according to the applicant, the Board of Appeal should have taken into account the fact that the mark applied for was directly and unambiguously associated with the Ukrainian border guard who was the author of the phrase used in that mark and with the applicant. EUIPO’s practice shows that, in the case of marks consisting of political slogans, the identity of the applicant for the mark may be taken into account in the assessment of the distinctive character of those marks, in order to prevent other undertakings from misleading the public. In finding, in the present case, that the identity of the applicant for the mark had no bearing on the assessment of the distinctive character of the mark applied for, the Board of Appeal failed to take account of one of the crucial circumstances of the present case.

23The applicant submits that, where a sign is so closely and unambiguously associated with a particular person or legal entity which stand behind the creation of that sign or at the origin of its creation, the relevant public considers those persons as the commercial origin of the goods or services bearing that sign and associates the goods or services with those persons. On account of its symbolic nature, consumers in the European Union cannot logically associate the mark applied for with any other source but the Ukrainian State and its defenders. Accordingly, when an average consumer buys a product marketed under the mark applied for, he or she would establish a mental connection between the product and the author of the phrase and believe that, by purchasing that product, he or she supports Ukraine. That is a usual way of thinking among the relevant consumers, given that they have been exposed to similar practices by various organisations over the years.

24EUIPO disputes the applicant’s arguments.

25In the first place, the applicant submits unsuccessfully that the Board of Appeal has erred in classifying the mark applied for as a ‘political slogan’.

26As the Board of Appeal explained in paragraph 31 of the contested decision, the phrase in the mark applied for was widely used, immediately after its first use, in order to rally support for Ukraine and had thereby become, very quickly, a symbol of Ukraine’s fight against the aggression of the Russian Federation. Accordingly, that phrase was used in a political context, repetitively and with the aim of expressing and promoting support to Ukraine. That situation corresponds perfectly to the definition of the expression ‘political slogan’ put forward by the applicant itself in paragraph 22 of the application, namely, an expression, used in a political or social context, repetitive of an idea or purpose, with the goal of persuading the public or a target group within it.

27Whilst the applicant submits that the phrase used in the mark applied for is not a political slogan because it is, on the contrary, an expressive reaction to an imminent threat of mortal danger, the fact remains that, directly after the event which gave rise to that reaction, that phrase became a political slogan in the sense indicated in paragraph 26 above.

28The applicant is also incorrect to criticise the Board of Appeal for taking the view that a political slogan is necessarily and automatically devoid of any distinctive character. The Board of Appeal did find, in paragraph 31 of the contested decision, that it followed from the fact that the phrase used in the mark applied for immediately became a political slogan that the sign had to be regarded as being connected to the historical event in the context of which that phrase had been uttered. However, it then explained, referring to the specific features of the mark applied for, that consumers would only see the political message clearly apparent from the sign and therefore, that mark would not be perceived by the relevant public as an indication of the commercial origin of the goods and services which it covered. It follows that the Board of Appeal neither applied automatic reasoning, in the sense that any political slogan would necessarily be devoid of distinctive character, nor applied stricter criteria than for signs which do not consist of political slogans.

29In the second place, first and as the Board of Appeal correctly found in paragraph 36 of the contested decision, the meaning of the phrase in Russian in the mark applied for will be understood by the part of the relevant public that has a command of Russian. The sign also contains a phrase composed of basic English words which will be easily understood by the English-speaking part of the relevant public, namely, in particular, the relevant public in Ireland and Malta, and by the part of the relevant public which has a basic knowledge of English.

30The phrase used in the mark applied for has been used very intensively in a non-commercial context and will necessarily be associated very closely with that context by the relevant public. As the Board of Appeal correctly pointed out, the phrase used in the mark applied for very quickly became one of the symbols of Ukraine’s fight against Russian aggression, associated with a soldier of the Ukrainian army and, thus, with Ukraine. Given the extent of the media coverage of that event, that phrase will be associated with that recent historical moment, well known to the average EU consumer.

31As to the complaint that the Board of Appeal made certain statements without supporting evidence, it should be borne in mind that nothing prohibits EUIPO from taking well-known facts into consideration in its assessment (see, to that effect, judgment of 13 April 2011, Smart Technologies v OHIM (WIR MACHEN DAS BESONDERE EINFACH), T‑523/09, not published, EU:T:2011:175, paragraph 41 and the case-law cited). The applicant has not disputed the fact that the phrase used in the mark applied for had, immediately after the event of 24 February 2022, been widely disseminated by the media, so that it quickly became the symbol of Ukraine’s fight against Russian aggression. The applicant merely stated that three weeks were not sufficient for the sign at issue to be widely used and that there was no evidence that it had been intensively used, in the European Union, during the three weeks following the Russian invasion of Ukraine, while accepting that the news of that invasion had been a major topic in the media at the time. Furthermore, the predecessor-in-title to the applicant itself submitted, in the application for registration filed on 16 March 2022, namely, on the date which, in accordance with the case-law (see, to that effect, judgment of 21 May 2014, Bateaux mouches v OHIM (BATEAUX-MOUCHES), T‑553/12, not published, EU:T:2014:264, paragraph 23 and the case-law cited), is relevant in order to assess the existence of an absolute ground for refusal, that the phrase used in the mark applied for was an emblematic phrase which had become famous in every country in the world in the three weeks following the start of the Russian Federation’s military aggression against Ukraine.

32Second, the applicant’s criticism that the Board of Appeal misapplied the case-law on advertising slogans, even though the mark applied for does not have an intrinsic advertising function and is therefore not a promotional formula, cannot succeed, since that criticism is the result of a misreading of the contested decision.

33In paragraphs 22 to 24 of the contested decision, the Board of Appeal referred to the case-law relating to advertising slogans. However, it did not in any way apply that case-law directly to the present case. Rather, it drew from that case-law the principle that the relevant public was not very attentive with regard to a sign which did not immediately indicate to them the origin or intended use of their intended purchase, since they would not perceive it or mentally register it as a mark, and implemented that principle in the present case. It also stated, in paragraph 31 of the contested decision, that the phrase used in the mark applied for was one of the symbols of Ukraine’s fight for freedom and against Russian occupation and, in paragraph 33 of the contested decision, that consumers would see only the political message that is clearly apparent from the mark applied for. It further stated, in paragraph 34 of the contested decision, that the mark applied for would not be perceived as promoting a trade or commercial entity, but at most as promoting bravery in the face of overwhelming odds.

34It follows, first, that the Board of Appeal did not consider the mark applied for to be an advertising slogan.

35Second, the Board of Appeal did not err in law in finding that the general principle, that the relevant public is not very attentive with regard to a sign which does not immediately indicate the origin of the goods and services concerned given that they would not perceive it or mentally register it as a mark, also applied to signs whose main message was of a political nature.

36In view of the essential function of a mark, as noted in paragraph 16 above, a sign is incapable of fulfilling that function if the average consumer does not perceive, in its presence, the indication of the origin of the goods or services, but only a political message.

37Third, where the same ground for refusal is given for a category or group of goods or services, the competent authority may use only general reasoning for all of the goods or services concerned (see judgment of 21 March 2014, FTI Touristik v OHIM (BigXtra), T‑81/13, not published, EU:T:2014:140, paragraph 43 and the case-law cited). Although the case-law has made it clear that such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services, it has nevertheless stated that it is necessary to take into account, in order to determine whether the goods and services are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogenous categories and groups, the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question whether or not the mark concerned by the application for registration comes under one of the absolute grounds for refusal (see judgment of 13 May 2020, Koenig & Bauer v EUIPO (we’re on it), T‑156/19, not published, EU:T:2020:200, paragraph 60 and the case-law cited). In addition, the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant for the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services (see judgment of 13 May 2020, we’re on it, T‑156/19, not published, EU:T:2020:200, paragraph 61 and the case-law cited). It follows that such an assessment must be carried out in concreto for the examination of each application for registration and, as the case may be, for each of the different absolute grounds for refusal which may apply (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 33).

38In the present case, the Board of Appeal found, in paragraphs 34 and 37 of the contested decision, that the mark applied for would not be perceived by the relevant public as indicating a commercial origin. Furthermore, it stated, in paragraph 36 of the contested decision, that the phrase in the mark applied for would first and foremost be interpreted as a political message and that that perception would be identical for all the goods or services covered by that mark.

39It follows that the Board of Appeal found that the goods and services covered by the mark applied for form a sufficiently homogeneous group, having regard to the absolute ground for refusal which, in its view, has caught registration of that mark.

40Given that the Board of Appeal was right in finding that the mark applied for would not be perceived by the relevant public as indicating a commercial origin, but as a political message promoting support for Ukraine’s fight against the military aggression of the Russian Federation, it could validly group all the goods and services covered by the mark applied for in a single category, despite having different inherent characteristics.

41Therefore, in view of the specific nature of the mark applied for and its identical perception by the relevant public with regard to all the goods and services covered by the application for registration, it was without committing an error of assessment that the Board of Appeal found that those goods and services form part of a single group to which the ground for refusal, which it upheld, applies in the same way.

42In the third place, according to settled case-law, the distinctive character of a trade mark within the meaning of Article 7(1)(b) of Regulation 2017/1001 must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).

43The applicant’s argument that the mark applied for is directly and unambiguously associated with the Ukrainian border guard who is the author of the phrase used in that mark and will thus be perceived by the relevant public as a distinctive sign identifying the goods and services to which it refers as originating from the applicant falls, at most, within the scope of Article 7(3) of Regulation 2017/1001, and not within the scope of Article 7(1)(b) of that regulation, since its examination entails an assessment of the qualities that the mark applied for may have acquired through use with the relevant public so that the latter identifies the goods and services in question as originating from the applicant. That argument cannot therefore be taken into account when assessing inherent distinctiveness of that mark (see, to that effect, judgment of 24 September 2019, Crédit Mutuel Arkéa v EUIPO – Confédération nationale du Crédit mutuel (Crédit Mutuel), T‑13/18, EU:T:2019:673, paragraph 62). The applicant has neither relied on Article 7(3) of Regulation 2017/1001 nor claimed that the mark applied for had acquired distinctive character through the use which had been made of it, within the meaning of that provision.

44The above shows that the Board of Appeal was right to find that the mark applied for is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

45It follows that the applicant’s first plea in law must be rejected as being unfounded.

Second plea in law, alleging failure to observe the principles of equal treatment and sound administration

46According to the applicant, the Board of Appeal failed to comply with the principles of equal treatment and sound administration by applying criteria for assessing the distinctive character of the mark applied for which differed from those applied in the context of assessing the distinctive character of similar signs, in particular political slogans, in the past.

47Considering that the Board of Appeal pointed out that the mark applied for had become non-distinctive in relation to any goods or services because it had been intensively used in a non-trade context, similar marks, consisting of political slogans, or other signs subject to intense use in a non-trade, political or historical context, should not have been registered for any goods or services whatsoever.

48EUIPO disputes the applicant’s arguments.

49EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73, and order of 12 December 2013, Getty Images (US) v OHIM, C‑70/13 P, not published, EU:C:2013:875, paragraph 41; see also judgment of 4 July 2018, Deluxe Entertainment Services Group v EUIPO (deluxe), T‑222/14 RENV, not published, EU:T:2018:402, paragraph 65 and the case-law cited).

50Although, in the light of the principles of equal treatment and of sound administration, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with special care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality, such that there cannot be equality in an unlawful act, and a person who files an application for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed in his or her favour or for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered. Accordingly, such an examination must be undertaken in each individual case because 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 (see judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77 and the case-law cited, and of 14 February 2019, Bayer Intellectual Property v EUIPO (Representation of a heart), T‑123/18, EU:T:2019:95, paragraph 34 and the case-law cited).

51According to the case-law of the Court, those considerations apply even if the sign whose registration is sought is composed in a manner identical to that of a mark in respect of which registration has already been approved and which refers to goods or services identical or similar to those in respect of which registration of the sign in question is sought (order of 12 December 2013, Getty Images (US) v OHIM, C‑70/13 P, not published, EU:C:2013:875, paragraph 45).

52Accordingly, the legality of the decisions of the Board of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of EUIPO which cannot, in any event, bind those Courts (see judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited, and of 26 June 2019, Agencja Wydawnicza Technopol v EUIPO (200 PANORAMICZNYCH and Others), T‑117/18 to T‑121/18, EU:T:2019:447, paragraph 114 and the case-law cited).

53In the present case, as is apparent from paragraph 44 above, the Board of Appeal correctly concluded, on the basis of a full and specific examination and taking into account the relevant circumstances of the case, that the mark applied for is caught by the ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001 and therefore the applicant cannot usefully rely, in order to cast doubt on that conclusion, on previous decisions of EUIPO or on a decision-making practice of EUIPO which the Board of Appeal did not follow.

54In the light of the foregoing, the second plea in law must be rejected as being unfounded.

Third plea in law, alleging infringement of Article 71(1) of Regulation 2017/1001

55The applicant submits that the Board of Appeal infringed Article 71(1) of Regulation 2017/1001 by refusing to examine, in the contested decision, the absolute ground for refusal laid down in Article 7(1)(f) of that regulation, on which the examiner based its rejection decision of 22 December 2022.

56The applicant does not question the right of the Board of Appeal to invoke a new ground for refusal. However, it submits that it is entitled to obtain a decision from the Board of Appeal on the merits of the reasons given by the examiner, given that it invested time and efforts to file the appeal and paid official fees for that decision to be reviewed. The existence of that entitlement is supported by recital 30 of Regulation 2017/1001.

57EUIPO disputes the applicant’s arguments.

58Under Article 71(1) of Regulation 2017/1001, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal and may, in doing so, exercise any power within the competence of the department which was responsible for the decision appealed. It follows from that provision that, through the effect of the appeal against an examiner’s decision refusing registration, the Board of Appeal may carry out a new, full examination of the merits of the application for registration, in terms of both law and fact (see judgment of 13 February 2019, Nemius Group v EUIPO (DENTALDISK), T‑278/18, not published, EU:T:2019:86, paragraph 29 and the case-law cited). The Board of Appeal is competent to reopen the examination of the application in the light of the absolute grounds for refusal set out in Article 7 of Regulation 2017/1001, without being limited by the examiner’s reasoning and without having to provide specific reasons in that regard (see, to that effect, judgment of 17 January 2017, Netguru v EUIPO (NETGURU), T‑54/16, not published, EU:T:2017:9, paragraph 82 and the case-law cited).

59In addition, in accordance with Article 95(1) of Regulation 2017/1001, when examining the absolute grounds for refusal, EUIPO examiners and, on appeal, the Boards of Appeal of EUIPO are required to examine the relevant facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of EUIPO may be led to base their decisions on facts which have not been put forward by the applicant for the mark (judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 50, and of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a grey chequerboard pattern), T‑360/12, not published, EU:T:2015:214, paragraph 59), provided that the applicant’s right to be heard is observed (see, to that effect, judgment of 13 February 2019, DENTALDISK, T‑278/18, not published, EU:T:2019:86, paragraph 31). In that regard, Article 70(2) of Regulation 2017/1001 allows the Board of Appeal of EUIPO to invite the parties ‘as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications issued by itself’.

60In the present case, the applicant was informed, by the communication of 13 June 2023 (see paragraph 7 above), that the sign also appeared to be devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 and was invited to submit its observations in that regard. The Board of Appeal duly took into account those observations in the contested decision, as is apparent, for example, from paragraph 32 thereof. It follows that the applicant’s right to be heard was observed in the present case.

61Following a full and specific examination of the application for registration of the mark applied for, the Board of Appeal dismissed, by the contested decision, the applicant’s appeal challenging the rejection of that application by the examiner on the basis of Article 7(1)(b) of Regulation 2017/1001 and held that it was therefore no longer necessary to examine whether the mark applied for should also be refused registration under Article 7(1)(f) of that regulation.

62In doing so, the Board of Appeal exercised the broad discretion conferred on it by Article 71(1) of Regulation 2017/1001 and exercised the examiner’s powers in order to carry out a new, full examination of the merits of the application for registration, in terms of both law and fact.

63It is apparent from the wording of Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be capable of registration as an EU trade mark (see judgment of 2 March 2022, Pluscard Service v EUIPO (PLUSCARD), T‑669/20, not published, EU:T:2022:106, paragraph 67 and the case-law cited).

64Since the Board of Appeal correctly concluded that the mark applied for is caught by the ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001, it did not err in law in taking the view that it was no longer necessary to examine whether the mark applied for should also be refused registration under Article 7(1)(f) of that regulation.

65Accordingly, the third plea in law must be rejected as being unfounded and, consequently, the action must be dismissed in its entirety.

Costs

66Under 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.

67Since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, each party is to bear its own costs, given that no hearing was organised.

Operative part

On those grounds,THE GENERAL COURT (Third Chamber)hereby:

1.Dismisses the action;

2.Orders Administration of the State Border Guard Service of Ukraine and the European Union Intellectual Property Office (EUIPO) each to bear their own costs.

Delivered in open court in Luxembourg on 13 November 2024.