29.8.2016

EN

Official Journal of the European Union

C 314/31

(Case T-361/16)

(2016/C 314/43)

Language of the case: English

Parties

Applicant: TBWA\London Ltd (London, United Kingdom) (represented by: D. Farnsworth, Solicitor)

Defendant: European Union Intellectual Property Office (EUIPO)

Details of the proceedings before EUIPO

Trade mark at issue: EU word mark ‘MEDIA ARTS LAB’ — Application for registration No 13 238 308

Contested decision: Decision of the Second Board of Appeal of EUIPO of 19 April 2016 in Case R 958/2015-2

Form of order sought

The applicant claims that the Court should:

—annul the contested decision insofar as it upheld the conclusion of the examiner that the mark applied for was descriptive and lacked distinctive character for those goods and services for which it was held to be descriptive and lacking in distinctive character;

—allow the EU trade mark application number 13 238 308 to proceed to publication; and

—order the Office to bear its own costs and pay the Applicant’s costs.

Pleas in law

—The Office has not taken proper account of the services for which the Application has been made;

—The Office has not properly considered the mark applied for as a whole. Rather, it has broken the mark down into parts using definitions of MEDIA ARTS and MEDIA LAB and stated that these parts are descriptive. It has not addressed the effect of the mark as a whole;

—The Office has failed to accept that the mark is considerably more impenetrable than the PIPELINE decision that they rely upon;

—Despite (and in breach of) the principle of equality of treatment, the Office has not followed its previous practice of accepting marks with the word MEDIA for advertising in combination with other ‘unusual’ locations.