JUDGMENT OF THE GENERAL COURT (First Chamber)

22 September 2016 (*)

(EU trade mark — Invalidity proceedings — EU figurative mark NANO — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EC) No 207/2009 — Article 52(1) and (2) of Regulation No 207/2009)

In Case T‑237/15,

Edward Łabowicz, residing in Kłodzko (Poland), represented by M. Żygadło, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

defendant,

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

Pure Fishing, Inc., established in Spirit Lake, Iowa (United States), represented by J. Dickerson, Solicitor,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 5 March 2015 (Case R 2426/2013-1), relating to invalidity proceedings between Pure Fishing and Mr Łabowicz,

THE GENERAL COURT (First Chamber),

composed, at the time of the deliberation, of H. Kanninen, President, I. Pelikánová (Rapporteur) and E. Buttigieg, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 15 May 2015,

having regard to the response of EUIPO lodged at the Court Registry on 16 September 2015,

having regard to the response of the intervener lodged at the Court Registry on 28 August 2015,

having regard to the fact that no request for a hearing was submitted by the main 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

 Background to the dispute

1        On 6 February 2008, the applicant, Mr Edward Łabowicz, filed an application for registration of an EU 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought are in Class 28 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 to the following description: ‘Fishing lines and tippets; floats for fishing; fishing weights’.

4        The mark was registered on 13 March 2009 under the number 6649818.

5        On 11 December 2012, the intervener, Pure Fishing, Inc., submitted to EUIPO an application for a declaration that the abovementioned mark was invalid, pursuant to Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(b) and (c) of that regulation, in respect of all the goods covered by that mark, invoking the existence of absolute grounds for invalidity.

6        By decision of 21 October 2013, the Cancellation Division declared the contested mark invalid in respect of all the goods for which it had been registered.

7        On 3 December 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

8        By decision of 5 March 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal on the ground that the contested mark came, at the time when registration of it was sought, within the scope of the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 207/2009.

9        First, as a preliminary point, the First Board of Appeal took the view that, contrary to what the applicant claimed, the decision of the Second Board of Appeal of EUIPO of 15 April 2013 (Case R 1241/2012-2), which had been given in opposition proceedings between the applicant and the intervener in which the contested mark had been relied on as an earlier mark (‘the NANOFIL decision’), was not final and did not therefore have any effect on the proceedings before it.

10      Secondly, as regards the relevant public, the Board of Appeal found that the goods in question were aimed at end consumers and at specialist retailers in the field of fishing, who formed a well informed and observant public.

11      Thirdly, the Board of Appeal found that the term ‘nano’ in the contested mark corresponded to a term which exists in many languages of the European Union, including, inter alia, German and English. Consequently, for reasons of procedural economy, the Board of Appeal based its examination on the German- and English-speaking public.

12      Fourthly, on the basis of extracts from German and English dictionaries; the case-law of the General Court; previous decisions of the Boards of Appeal of EUIPO and the evidence submitted by the intervener, the Board of Appeal found that the word ‘nano’, even on its own, was in general understood, by the relevant public, as referring either to nanotechnology or to a very small object.

13      Fifthly, as regards the existence of a link between the word ‘nano’ and the goods covered by the contested mark, the Board of Appeal found, on the basis of evidence submitted by the intervener, that, at the time when the application for registration of the contested mark was filed, nanotechnology was already being used to manufacture fishing equipment or to improve the characteristics of that equipment. It deduced from that that the word ‘nano’ would be perceived by the relevant public as referring to the fact that the goods in question had been manufactured or improved using nanotechnology and, consequently, as having a clear descriptive meaning with regard to those goods.

14      Sixthly, the Board of Appeal found that, since the figurative aspect of the contested mark had no specific conceptual content, it had no effect on the assessment of the descriptiveness of that mark.

15      Seventhly and in conclusion, the Board of Appeal found that the Cancellation Division had correctly ruled that, at the time of the application for registration, the contested mark came within the scope of the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009.

16      Eighthly, according to the Board of Appeal, inasmuch as the contested mark consisted, first, of a word element which was incapable of being protected and, secondly, of simple figurative elements which were not capable of attracting the consumer’s attention, it was devoid of any distinctive character and therefore came, at the time of the application for registration, within the scope of the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009.

 Forms of order sought

17      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

18      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 The scope of the applicant’s request for the contested mark to remain on the register

19      EUIPO observes that, in paragraph 6 of the application, the applicant requests the Court ‘to remain the registration’ of the contested mark. It takes the view that, if that request were to be construed as meaning that what is being sought is the confirmation of the registration of that mark, then it would be inadmissible inasmuch as it would be requesting the Court to issue a direction to EUIPO.

20      In that regard, it is apparent from an analysis of the application as a whole that the reference, in paragraph 6, to the ‘remaining of the registration’ of the contested mark does not constitute a head of claim with an independent scope, but is a straightforward reference to the consequences of the annulment of the contested decision, which the applicant is requesting. First, the ‘remaining of the registration’ of the mark at issue is not one of the heads of claim which the applicant set out at the beginning of the application and which are summarised in paragraph 17 above. Secondly, nothing in the application allows the inference to be drawn that the applicant is, in actual fact, seeking from the Court an outcome other than the annulment of the contested decision and an order for costs against EUIPO, and, in particular, nothing in the application allows the inference to be drawn that he is seeking for a direction to be issued to EUIPO.

21      Accordingly, the plea of inadmissibility put forward by EUIPO is devoid of purpose.

 Substance

22      In support of his action, the applicant puts forward, in essence, three pleas in law, alleging (i) infringement of Article 7(1)(c) of Regulation No 207/2009; (ii) infringement of Article 7(1)(b) of Regulation No 207/2009; and (iii) infringement of Articles 76 and 83 of Regulation No 207/2009 and of Articles 6 and 14 of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed at Rome on 4 November 1950 (‘the ECHR’).

23      EUIPO and the intervener dispute the merits of the applicant’s pleas.

 The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

24      The applicant submits that the Board of Appeal erred in finding that the contested mark was, for the purposes of Article 7(1)(c) of Regulation No 207/2009, descriptive of the goods covered.

25      EUIPO and the intervener dispute the merits of the applicant’s arguments.

26      Article 7(1)(c) of Regulation No 207/2009 provides that 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 must not be registered.

27      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).

28      Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, pursuant to Article 7(1)(c) of Regulation No 207/2009, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).

29      The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the target public’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (judgment of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 39).

30      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (judgment of 14 June 2007, Europig v OHIM (EUROPIG), T‑207/06, EU:T:2007:179, paragraph 27).

31      In the present case, it must be pointed out at the outset that the applicant does not dispute the Board of Appeal’s definition of the relevant public, which has been referred to in paragraph 10 above. Since that definition is not, moreover, marred by error, it must be relied on when examining that public’s perception of the contested mark.

32      By contrast, the applicant disputes the finding that the word ‘nano’, affixed on its own to a piece of fishing equipment, will be perceived as referring to manufacturing using nanotechnology or to the size of that product. He takes the view that none of the evidence which was referred to by the Board of Appeal and has been summarised in paragraph 12 above justifies that claim, which the Board of Appeal should not therefore have upheld.

33      In the first place, the applicant submits, in that regard, that the extract from the English dictionary referred to in paragraph 16 of the contested decision should not be taken into consideration, since that extract irrationally indicates that the term ‘nano’ is an abbreviation of the word ‘nanotechnology’, whereas it, in actual fact, derives from the Greek word ‘nanos’.

34      According to the applicant, the same conclusion applies so far as concerns the decisions of the General Court and the Boards of Appeal of EUIPO regarding marks containing the element ‘nano’, which are cited in paragraphs 17 and 18 of the contested decision. In that regard, the applicant submits that the Board of Appeal should have considered that EUIPO has dealt with several hundred applications for registration of marks containing that element, more than two-thirds of which have been registered, including marks in respect of goods and services which are not linked to science. The applicant maintains that the contested decision thus constitutes an unjustified and erroneous departure from a long-standing practice.

35      First, it must be pointed out in that regard that the fact that the prefix ‘nano’ derives originally from the Greek word ‘nanos’ does not mean that the term ‘nano’ may not, at a later stage, in the perception of the relevant public, have become a common abbreviation of the word ‘nanotechnology’. Consequently, the extract from the English dictionary, which confirms that that is so in the present case, is not invalidated by any irrational error and could therefore be taken into consideration by the Board of Appeal.

36      Secondly, according to settled case-law, the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited).

37      In the present case, the Board of Appeal correctly pointed out, in paragraph 17 of the contested decision, that, as is apparent from the judgments of 19 November 2008, Galderma v OHIM — Lelas (Nanolat) (T‑6/07, not published, EU:T:2008:515, paragraph 48) and 10 February 2015, Innovation First v OHIM (NANO) (T‑379/13, not published, EU:T:2015:84, paragraphs 51 and 56), the term ‘nano’ is capable of being understood as a designation for nanotechnology, goods manufactured using nanotechnology or goods which are small in size.

38      Consequently, the applicant cannot rely on an alleged decision-making practice of the Boards of Appeal of EUIPO.

39      What is more, the existence of the decision-making practice invoked by the applicant is not established, since, with the exception of the NANOFIL decision, he has not identified the decisions or applications for registration which are part of that decision-making practice. In addition, he errs in referring to a practice regarding signs ‘containing’ the word element ‘nano’ since the presence of, inter alia, additional word elements is capable of having a fundamental impact on the overall perception of the sign concerned and, therefore, on its registrability.

40      In the second place, as regards the relationship between the term ‘nano’, as referring to nanotechnology, and the goods covered in the present case, the applicant submits that the evidence which was submitted by the intervener before EUIPO and cited in paragraphs 23 and 26 of the contested decision merely shows that fishing equipment and other everyday articles can be manufactured using nanotechnology. He maintains that, it is not, by contrast, apparent from that evidence that the term ‘nano’, used on its own, is perceived by the relevant public as an abbreviation of, or synonym for, the word ‘nanotechnology’ or that it is in practice used in that way. He takes the view that the element ‘nano’, in its descriptive function, is always used in conjunction with a noun which clarifies its meaning. Furthermore, he submits that the widely-used and commonly-understood abbreviation of the term ‘nanotechnology’ is ‘nanotech’.

41      The applicant adds that, currently, nanotechnology is used in manufacturing most industrial goods and its use does not necessarily result in goods the quality of which is superior to that of goods manufactured using other technologies. Consequently, according to the applicant, the consumer does not know and does not seek to know whether nanotechnology has been applied to certain elements of a product and will not therefore be inclined to interpret the term ‘nano’ as referring to the use of that technology. The applicant maintains that that is particularly so because the specific impact of nanotechnology on the characteristics of a product is generally known to manufacturers, but not to consumers, for whom the term ‘nano’ therefore conveys only an abstract concept.

42      Furthermore, the applicant disputes the Board of Appeal’s finding that he states on his website that his goods are manufactured using nanotechnology. He maintains that such information is not apparent from the documents which the intervener provided before EUIPO, which implies, according to the applicant, that the Board of Appeal erred, or even acted in bad faith, in finding to the contrary

43      First, in that regard, it is apparent from the extracts from websites included in the case-file relating to the proceedings before EUIPO, which are referred to in paragraph 23 of the contested decision, that nanotechnology was used to manufacture fishing equipment such as that at issue in the present case at the time when the application for registration of the contested mark was filed and that that fact was communicated to the relevant public by means of, inter alia, articles intended for fans of fishing, which pointed out the advantages resulting from the use of that technology. Consequently, contrary to what the applicant claims, those extracts establish that the relevant public was aware that nanotechnology was used in manufacturing fishing equipment and was aware of the impact of that fact on its functional qualities, which implies that that public was likely to perceive the use of nanotechnology as an important characteristic of the equipment in question.

44      Contrary to what the applicant claims, that latter finding is confirmed by the extract from his website, which is included in EUIPO’s case-file and is referred to in paragraph 26 of the contested decision. In the upper part of that extract, a new product is advertised to the public under the name ‘nano’ and is referred to as a ‘nanotech fishing line’. It is apparent from that reference that the line in question has been manufactured using nanotechnology. Consequently, the Board of Appeal did not err or act in bad faith in making that finding.

45      Secondly, in the extracts from websites referred to in paragraph 23 of the contested decision, the term ‘nano’ is, on a number of occasions, used in expressions connected with nanotechnology, such as ‘nanotubes’, ‘nano coating’, ‘nano-thin films’ or ‘nanocomposites’. That fact implies that the relevant public was in fact likely to interpret the term ‘nano’, used in the context of fishing equipment, as referring to that technology.

46      Lastly, that latter finding is not affected by the claim, which is not, moreover, substantiated by the applicant, that the term ‘nanotechnology’ is commonly referred to by the abbreviation ‘nanotech’. It is quite possible for the same term to have a number of abbreviations which are understood and commonly used by the public.

47      In view of the foregoing, the Board of Appeal was right to find, in paragraphs 24 and 25 of the contested decision, that the relevant public understood the term ‘nano’, used with regard to fishing equipment, as referring to the fact the goods in question had been manufactured using nanotechnology.

48      In the third place, according to the applicant, the term ‘nano’ is not, in general, commonly used in everyday life, with the result that it will not be perceived by the relevant public as describing, in a direct and specific manner, the qualities of a product, but, at most, as conferring a positive image on that product by means of the evocation of an abstract term. He maintains that, according to the case-law, such an evocation is not covered by the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009.

49      In that regard, it is indeed true that when an undertaking extols, indirectly and in an abstract manner, the excellence of its goods by way of a sign without, however, directly and immediately informing the consumer of one of the qualities or specific characteristics of the goods or services which it is offering, it is a case of evocation and not designation for the purposes of Article 7(1)(c) of Regulation No 207/2009 (see, to that effect, judgments of 31 January 2001, Sunrider v OHIM (VITALITE), T‑24/00, EU:T:2001:34, paragraph 24, and 9 October 2002, Dart Industries v OHIM (UltraPlus), T‑360/00, EU:T:2002:244, paragraph 27).

50      However, as is apparent from paragraphs 31 to 47 above, the contested mark does not, for the relevant public, evoke the excellence of the goods covered indirectly and in an abstract manner, but, on the contrary, refers in a direct, specific, normal and comprehensible manner to a characteristic which is capable of having an influence on their functional qualities, namely to the fact that they have been manufactured using nanotechnology. Consequently, the case-law referred to in paragraph 49 is not applicable in the present case.

51      The Board of Appeal was therefore right to find that the term ‘nano’ was descriptive of the goods covered, inasmuch as it referred to the fact that they had been manufactured using nanotechnology.

52      In the fourth place, the applicant submits that none of the evidence referred to in the contested decision makes it possible to conclude that the term ‘nano’ is or can be used to describe the size of fishing equipment, when it is not used to indicate the size of everyday consumer goods. In that respect, the applicant also submits that the analysis of the lack of distinctive character of the element ‘nano’, as an indication of size, in certain composite signs, which was carried out in paragraph 19 of the contested decision, is invalidated by the Board of Appeal’s negligent approach, given that those signs have been registered as EU trade marks.

53      In that regard, it is indeed true that the Board of Appeal observed, in paragraphs 16 to 22 of the contested decision, that the element ‘nano’, in general, referred either to nanotechnology or to the small size of a product. Nonetheless, in paragraphs 23 to 26 of the contested decision, which are devoted to the examination of the perception of that element with regard to the goods covered, the Board of Appeal took into account solely the first of those meanings, which refers to nanotechnology.

54      Consequently, the applicant’s arguments disputing the finding that the element ‘nano’ is capable of being used to describe the size of the goods must be rejected as irrelevant.

55      In the fifth place, the applicant does not dispute the Board of Appeal’s finding, in paragraph 27 of the contested decision, that the figurative aspect of the contested trade mark had no effect on the assessment of its descriptive character. Since that finding is not, moreover, marred by error, it must be taken into account.

56      In view of all of the foregoing, the Board of Appeal was right to find that the contested mark was, for the purposes of Article 7(1)(c) of Regulation No 207/2009, descriptive of the goods covered.

57      Consequently, the first plea must be rejected.

 The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

58      The applicant complains that the Board of Appeal misinterpreted and misapplied Article 7(1)(b) of Regulation No 207/2009 in finding that the element ‘nano’ in the contested mark was devoid of any distinctive character in relation to the goods covered.

59      Article 7(1) of Regulation No 207/2009 makes it clear that, for a sign to be ineligible for registration as an EU trade mark, it is sufficient that one of the absolute grounds for refusal listed in that provision applies (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29).

60      In the present case, it has been held in paragraph 56 above that the contested mark is, for the purposes of Article 7(1)(c) of Regulation No 207/2009, descriptive of the goods covered. Accordingly, there is no need to examine the second plea, alleging infringement of Article 7(1)(b) of that regulation.

 The third plea, alleging infringement of Articles 76 and 83 of Regulation No 207/2009 and Articles 6 and 14 of the ECHR

61      The applicant submits that the Board of Appeal infringed procedural rules, in particular Articles 76 and 83 of Regulation No 207/2009, and also Articles 6 and 14 of the ECHR, which concern the right to a fair hearing and the prohibition of discrimination respectively, in two respects.

62      In the first place, the applicant thus submits that the Board of Appeal erred in refusing to take into account the NANOFIL decision, the Opposition Division’s decision in the same case and the response which EUIPO submitted to the Court in the action which the intervener brought against the NANOFIL decision. He maintains that the two decisions and the written pleading in question relate to the distinctive character of the element ‘nano’ and are based on the same main items of evidence as those at issue in the present case. Consequently, according to the applicant, the Board of Appeal based its decision on an incomplete and unreliable analysis of the distinctiveness of the element ‘nano’ and radically changed its views, which resulted in two different decisions being made in respect of the same subject, without any explanation in that regard being given in the contested decision.

63      The applicant disputes, in that context, the Board of Appeal’s reliance on the argument that the NANOFIL decision was not final. He maintains, in that regard, that the Board of Appeal relied, in paragraph 18 of the contested decision, on the decision of the Fourth Board of Appeal of EUIPO of 13 May 2013 (Case R 1981/2011-4), relating to invalidity proceedings between Franko Dosen and Thomas Gramm (‘the Nano-Pad decision’). He states that the Nano-Pad decision was also not final.

64      In the second place, according to the applicant, another infringement of the procedural rules concerned arises out of the fact that, as regards the distinctive character of trade marks containing the word element ‘nano’, the contested decision departs from EUIPO’s established practice, as evidenced by the treatment of several hundred applications for registration of marks containing that element, more than two-thirds of which have been registered, including marks in respect of goods and services which are not linked to science. The applicant maintains that the contested decision thus constitutes an unjustified and erroneous departure from a long-standing practice.

65      EUIPO and the intervener dispute the merits of the applicant’s arguments.

66      It should be noted at the outset, as regards the right to a fair hearing guaranteed by Article 6 of the ECHR, that the Court has precluded the possibility of relying on a right to a fair ‘hearing’ in proceedings before the Boards of Appeal of EUIPO, since proceedings before the Boards of Appeal are administrative and not judicial in nature (see judgment of 20 April 2005, Krüger v OHIM — Calpis (CALPICO), T‑273/02, EU:T:2005:134, paragraph 62 and the case-law cited). Consequently, the applicant’s arguments relating to an alleged infringement of that right must be rejected.

67      As regards the alleged infringement of Articles 76 and 83 of Regulation No 207/2009 and of the prohibition of discrimination laid down in Article 14 of the ECHR, it must be pointed out that, according to the case-law, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74).

68      However, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to 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 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 (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 to 77).

69      In the first place, in the present case, the applicant does not dispute that the NANOFIL decision was not final at the time when the contested decision was adopted and that the proceedings in the action which the intervener had brought before the Court against that decision had been stayed specifically pending the outcome of the invalidity proceedings relating to the contested mark. Accordingly, the Board of Appeal could decide, as a precaution, to disregard the NANOFIL decision and the other evidence relating to it as precedents to be taken into consideration pursuant to the case-law cited in paragraph 67 above.

70      In that regard, it must be stated that the Nano-Pad decision, which is dated 13 May 2013 and is referred to in the contested decision, had been challenged before the Court. Following the withdrawal of the application for a declaration of invalidity brought before EUIPO, that case was settled by the finding that there was no need to adjudicate (order of 26 January 2015, Dosen v OHIM — Gramm (Nano-Pad), T‑396/13, not published, EU:T:2015:85). Accordingly, the Nano-Pad decision of 13 May 2013 not only never became final, but even became inoperative following the withdrawal of the application for a declaration of invalidity. Consequently, the Board of Appeal could not, in the contested decision dated 5 March 2015, base its reasoning on that decision. However, it is not apparent either from the contested decision or from the examination of the first plea in paragraphs 26 to 57 above that the reference to the Nano-Pad decision has a significant influence on the outcome of the assessment of the descriptiveness of the contested mark, with the result that the Board of Appeal’s error as regards taking it into consideration has no impact on the lawfulness of the contested decision.

71      In the second place, it is, in any event, apparent from the examination of the first plea in paragraphs 26 to 57 above that the Board of Appeal’s finding that the contested mark came, having regard to the goods at issue and the perception of the relevant public, within the scope of the ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009 is not marred by error and is, in particular, consistent with the relevant case-law of the Court.

72      Accordingly, pursuant to the case-law cited in paragraph 68 above, the applicant cannot legitimately rely on the difference between the NANOFIL decision and the contested decision as regards the assessment of the distinctive character of the element ‘nano’ and cannot, moreover, claim that that obliged the Board of Appeal to provide a detailed statement of reasons.

73      In the third place, for the same reasons, the applicant cannot rely on the allegedly established decision-making practice of EUIPO referred to in paragraph 64 above, the existence of which he has not, moreover, established, as has been held in paragraph 39 above.

74      In the light of the foregoing, the applicant errs in invoking infringement of Articles 76 and 83 of Regulation No 207/2009 and Article 14 of the ECHR.

75      Consequently, the third plea must be rejected and the action must therefore be dismissed in its entirety.

 Costs

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

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Mr Edward Łabowicz to pay the costs.

Kanninen

Pelikánová

Buttigieg

Delivered in open court in Luxembourg on 22 September 2016.

[Signatures]