JUDGMENT OF THE GENERAL COURT (First Chamber)
12 March 2019 (*)
(EU trade mark — Application for EU word mark SMARTSURFACE — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EU) 2017/1001 — No distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑463/18,
Novartis AG, established in Basle (Switzerland), represented by L. Junquera Lara, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 25 May 2018 (Case R 1765/2017‑2), relating to an application for registration of the word sign SMARTSURFACE as an EU trade mark,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 30 July 2018,
having regard to the response lodged at the Court Registry on 20 November 2018,
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
Background to the dispute
1 On 21 March 2017, the applicant, Novartis AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2 Registration as a mark was sought for the word sign SMARTSURFACE.
3 The goods in respect of which registration was sought are in Class 9 of the Nice Agreement on 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: ‘Contact lenses’.
4 By decision of 27 July 2017, the examiner rejected the application for registration of the mark SMARTSURFACE in respect of the goods in question on the basis of Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001), on the ground that it was descriptive, and on that of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001), on the ground that it was devoid of distinctive character.
5 On 9 August 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001), against the examiner’s decision.
6 By decision of 25 May 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. Ruling, in the first place, on the descriptive character, within the meaning of Article 7(1)(c) of Regulation 2017/1001, of the mark applied for, the Board of Appeal noted that the relevant public was English-speaking, composed of the general public and a professional public, such as ophthalmologists and researchers. It found that that public would perceive, instinctively and without any interpretative effort, the mark applied for as referring to the surface of a contact lens having sophisticated characteristics such as responsiveness to the environment or adaptation to environmental changes in light and moisture, that is to say, in the context of contact lenses, as a descriptive reference to one of the primary features of such lenses. It concluded that the mark applied for was descriptive. It also rejected the applicant’s arguments relating to the existence of a family of trade marks containing the word ‘smart’ and earlier registrations containing that word. Ruling, in the second place, on the issue of distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001, of the mark applied for, it found that the relevant public would perceive that mark as merely conveying information indicating, in a clear and straightforward manner, an essential feature of the goods in question. It added that the mark is a simple juxtaposition of two frequently used words and that that juxtaposition does not introduce any element of intrigue or surprise or require any particular interpretative or cognitive effort. It also found that the mark was not a play on words or a rhyme. It concluded that the mark applied for was devoid of distinctive character.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– rule that Article 7(1)(b) and (c) of Regulation 2017/1001 does not preclude registration of the mark applied for in respect of the goods 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.
Law
Admissibility
Admissibility of the applicant’s second head of claim
9 It must be noted that, by its second head of claim, the applicant seeks to obtain a declaratory judgment from the Court.
10 However, it follows from Article 72(2) and (3) of Regulation 2017/1001 that an action brought before the Court under those provisions seeks to have the lawfulness of decisions of the Boards of Appeal examined and to obtain, as the case may be, the annulment or alteration of those decisions, with the consequence that such an action cannot have the objective of obtaining confirmatory or declaratory rulings in respect of those decisions (judgments of 10 June 2008, Gabel Industria Tessile v OHIM — Creaciones Garel (GABEL), T‑85/07, EU:T:2008:186, paragraph 17, and of 15 June 2010, Actega Terra v OHIM (TERRAEFFEKT matt & gloss), T‑118/08, not published, EU:T:2010:234, paragraph 10).
11 The applicant’s second head of claim must therefore be rejected as inadmissible.
The reference made to observations submitted before EUIPO
12 The applicant refers to the submissions which it made before the examiner and the Board of Appeal and asserts that they should be regarded as part of its application.
13 It should be borne in mind that, under Article 177(1)(d) of the Rules of Procedure of the General Court, the application must contain a summary of the pleas in law relied on.
14 In addition, it is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (judgment of 14 September 2004, Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION), T‑183/03, EU:T:2004:263, paragraph 11; see also judgment of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 21 (not published) and the case-law cited).
15 It is not for the Court to assume the role of the parties by seeking to identify the relevant pleas and arguments in the documents to which they refer (see judgment of 5 February 2016, kicktipp, T‑135/14, EU:T:2016:69, paragraph 22 (not published) and the case-law cited).
16 It is therefore in the light of the arguments set out in the application alone that the latter must be examined, and any other arguments which are not in the application must be declared inadmissible.
Substance
17 In support of its action, the applicant relies, in essence, on two pleas in law alleging, first, infringement of Article 7(1)(c) and 7(2) of Regulation 2017/1001 and, secondly, infringement of Article 7(1)(b) and 7(2) of that regulation.
First plea in law, alleging infringement of Article 7(1)(c) and 7(2) of Regulation 2017/1001
18 The applicant claims that the Board of Appeal infringed Article 7(1)(c) and 7(2) of Regulation 2017/1001 by finding that the mark applied for was descriptive.
19 It must be recalled that, 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, may not be registered. Article 7(2) of that regulation states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
20 According to case-law, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 2017/1001, regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 2 May 2012, Universal Display v OHIM (UniversalPHOLED), T‑435/11, not published, EU:T:2012:210, paragraph 15; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
21 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics (see judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16 and the case-law cited).
22 According to the case-law, a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation 2017/1001, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that regard, an analysis of the term in question from the point of view of the relevant lexical and grammatical rules is also relevant (see, to that effect, judgments of 25 February 2010, Lancôme v OHIM, C‑408/08 P, EU:C:2010:92, paragraph 62 and the case-law cited, and of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt), T‑56/15, EU:T:2016:618, paragraph 34 and the case-law cited).
23 The descriptiveness of a sign may be assessed only in relation, first, to the goods or services concerned and, second, to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 18 March 2016, Karl-May-Verlag v OHIM — Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 55).
– The definitions taken into consideration by the Board of Appeal
24 The Board of Appeal observed that the mark applied for, SMARTSURFACE, is a juxtaposition of the English words ‘smart’ and ‘surface’, the definitions of which, as found in the Oxford English Dictionary, it reproduced in the contested decision. The definition of the word ‘smart’ reproduced is as follows: ‘of a device or machine: appearing to have a degree of intelligence; able to react or respond to differing requirements’. The definition of the word ‘surface’ reproduced is as follows: ‘the outermost part of a solid object considered with respect to its form, texture, or extent; an exterior of a particular form or finish’.
25 In the first place, the applicant submits that the Board of Appeal introduced a definition of the word ‘smart’ which had not been upheld by the examiner and to which it had not had the opportunity to respond. As a result, it argues, the examination and appeal procedures are vitiated by patent unfairness. In addition, it asserts both that the words ‘smart’ and ‘surface’ can, taken separately, be understood in accordance with the definitions accepted by the Board of Appeal and that it does not accept those definitions.
26 Article 94(1) of Regulation 2017/1001 provides that decisions of the Office must be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.
27 In that regard, as is apparent from the examiner’s decision, the latter provided the following definition of the neologism ‘smartsurface’: ‘clever or bright face of an object that may use digital communication technology to provide many of the functions of a computer’. She stated, more specifically, that that term could refer to the ‘clever or bright face of an object’. The examiner concluded that the mark applied for would be easily understood by the relevant public as referring to the fact that the goods in question are contact lenses with a surface which has special features or a coating improving the function or comfort of the lenses.
28 In order to ascertain whether that assessment was correct, the Board of Appeal had to examine the meaning of the words ‘smart’ and ‘surface’. As regards, in particular, the word ‘smart’, it reproduced, for that purpose, the definition in the Oxford English Dictionary, reproduced in paragraph 24 above. It did the same in respect of the word ‘surface’, and the definitions of those words enabled it to confirm the examiner’s assessment that the mark applied for is descriptive.
29 In those circumstances, the use by the Board of Appeal of the dictionary definitions for the purpose of shedding light on the meaning of the word ‘smart’ cannot be regarded as a reason on which the applicant should have had an opportunity to present its comments, within the meaning of Article 94 of Regulation 2017/1001. The reference in the contested decision to the definition of the word ‘smart’ contained in a dictionary that was not mentioned in the examiner’s decision did not therefore infringe that provision (see, to that effect, judgment of 8 September 2010, Micro Shaping v OHIM (packaging), T‑64/09, not published, EU:T:2010:360, paragraph 17 and the case-law cited).
30 It follows that the applicant cannot criticise the Board of Appeal for having failed to invite it to submit observations on the definition referred to above. Its allegations that the procedures before EUIPO were unfair are therefore entirely unfounded.
31 In the second place, the applicant claims that it was unable to verify the accuracy of the definition of the word ‘smart’ accepted by the Board of Appeal, as the hyperlink in the contested decision (i) did not work and (ii) was linked to a website, access to which required a subscription. In addition, that website contained a link to another website containing a definition of the word ‘smart’ which differed from that taken into consideration by the Board of Appeal.
32 Admittedly, as the applicant claims, the online version of the Oxford English Dictionary, referred to by the Board of Appeal in paragraph 18 of the contested decision, is not accessible to all internet users and certain data must be entered in order to gain access thereto.
33 However, first, the meaning of the word ‘smart’, inasmuch as it refers to intelligence, is easily found in generally accessible sources, and, secondly, as is apparent from paragraph 25 above, the applicant does not put forward any argument in order to challenge the definition of the word ‘smart’ provided by the Board of Appeal in the contested decision.
34 Consequently, the applicant cannot claim that the Board of Appeal erred in law in basing the contested decision on the definitions of the words ‘smart’ and ‘surface’ reproduced in that decision.
– The descriptive character of the mark applied for
35 In the present case, the Board of Appeal observed that the goods in question, that is to say, contact lenses, were intended for a professional public, such as ophthalmologists and researchers, together with the general public. It also found that the sign SMARTSURFACE is made up of English words, with the result that the perception of the English-speaking public of the European Union should be taken into account. The applicant does not dispute those findings.
36 The Board of Appeal observed that the mark applied for is a juxtaposition of the English words ‘smart’ and ‘surface’, the definitions of which, set out in paragraph 24 above, it reproduced in the contested decision. In the light of those definitions, it found that, having regard to the goods in question, consumers would perceive, instinctively and without any interpretative effort, the sign SMARTSURFACE as designating the surface of a contact lens having sophisticated characteristics such as responsiveness to the environment or adaptation to environmental changes in light and moisture. It added that the meaning given by the examiner to the mark applied for would be recognised by the relevant public, in the context of contact lenses, as a descriptive reference to one of the main characteristics of those lenses.
37 The applicant disputes the finding that the relevant public would be able to establish a sufficiently direct and specific relationship between the mark applied for and the goods in question to enable that public to perceive immediately, and without further thought, a description of those goods or of one of their characteristics. However, none of the arguments raised by the applicant is capable of calling into question the finding of the Board of Appeal in this regard.
38 First, the applicant claims that EUIPO observed that the category ‘contact lenses’ could ‘include all kinds of contact lenses’. By doing so, the applicant submits, the Board of Appeal wrongly extended the scope of the goods in question by including goods incorporating digital technology. In addition, the applicant alleges that EUIPO incorrectly found that the word ‘smart’ was descriptive in respect of the goods in question because it means ‘clever or bright’, whereas those are qualities that can be attributed only to persons, not to objects, unless the intention is to attribute human intelligence to objects.
39 It must be held that those complaints are in fact directed against grounds which do not appear in the contested decision, but in the examiner’s decision of 27 July 2017 or in the letter, addressed to the applicant on 29 March 2017, stating the reasons for the refusal to register the mark applied for.
40 Under Article 72(1) of Regulation 2017/1001, actions may be brought before the European Union judicature only against decisions of the Boards of Appeal, with the result that it is only pleas directed against the decision of the Board of Appeal itself that are admissible in such an action (see judgment of 2 February 2016, Benelli Q.J. v OHIM — Demharter (MOTOBI B PESARO), T‑171/13, EU:T:2016:54, paragraph 23 and the case-law cited).
41 The applicant’s complaints recalled in paragraph 38 above must therefore be rejected as inadmissible.
42 Secondly, the applicant claims that contact lenses do not contain any digital or computer technology.
43 In the present case, it is clear that the contested decision does not contain any ground based on the presence of such technology in contact lenses. On the contrary, the Board of Appeal expressly rejected a similar argument raised by the applicant before it, by stating that the relevant public could not reasonably expect contact lens surfaces to be intelligent in the same way as a smartphone, smartTV, a smartbook or similar high-tech goods.
44 The applicant’s argument is therefore irrelevant for the purposes of challenging the lawfulness of the contested decision.
45 Furthermore, the Board of Appeal was correct to note that, even though contact lenses do not have features comparable to those of computers, they still make use of highly sophisticated technology enabling them to adapt to various conditions such as, inter alia, the humidity of the eye or the environment.
46 Thirdly, the applicant criticises the Board of Appeal on the ground that it failed to establish in what way consumers would immediately think of contact lenses when encountering the mark applied for. It submits that nothing in the words ‘smart’ and ‘surface’, or in the combination of those words, informs consumers immediately of the characteristics of the contact lenses. The association between the mark applied for and contact lenses is therefore not immediate and requires a thought process involving several steps in order to reach that conclusion. According to the applicant, the Board of Appeal presumes the presence of a cognitive process that consumers will not undertake.
47 It should be noted that the sign SMARTSURFACE is a neologism, that is to say, a juxtaposition of two common English words, ‘smart’ and ‘surface’, in an order which follows the lexical and grammatical rules of the English language.
48 In addition, it should be borne in mind that, as the applicant states both that it does not accept the Board of Appeal’s definitions of the words ‘smart’ and ‘surface’, without, however, setting out any argument in that regard, and that it does not dispute the meaning given to these words by the Board of Appeal, there is no need to call those definitions into question.
49 Consequently, as the applicant has failed to establish any error on the part of the Board of Appeal, it is appropriate to find, as the latter did, that, for the purposes of the case-law set out in paragraph 21 above, English-speaking consumers will immediately establish a sufficiently direct and specific relationship between the mark applied for and contact lenses such as to enable them to perceive, immediately and without further thought, a description of a quality of the goods in question, that is to say, as the Board of Appeal rightly observed, the responsive, adaptive and sophisticated nature of the surface of the contact lenses, depending on the environment.
50 Fourthly, the applicant submits that the Board of Appeal failed to examine a number of the arguments which it had raised against the examiner’s reasoning.
51 It must be held that the applicant does not identify the arguments which it claims that the Board of Appeal failed to examine. Its claim must therefore be rejected as inadmissible.
52 Fifthly, the applicant claims that many registered EU marks contain the word ‘smart’ and that some of those marks are used to designate contact lenses, with the result that the relevant public is accustomed to seeing such goods marketed under a mark made up of the word ‘smart’ and another word. It adds that the mark applied for will be perceived as belonging to a series of EU mark registrations of which it is the proprietor, which constitutes a family of marks containing the word ‘smart’ and designating contact lenses.
53 It must be noted at the outset that the concept of a family of marks does not come under absolute grounds for refusal, but only under relative grounds for refusal, with the result that the Board of Appeal had to assess whether the mark applied for was distinctive in the light of its inherent characteristics, without taking into consideration the other allegedly similar marks of which the applicant was the proprietor (see, to that effect, judgment of 24 November 2015, Intervog v OHIM (meet me), T‑190/15, not published, EU:T:2015:874, paragraph 36).
54 In addition, according to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called on to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as an EU trade mark 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 practice of EUIPO (judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 66; of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 45; and of 18 November 2015, Instituto dos Vinhos do Douro e do Porto v OHIM — Bruichladdich Distillery (PORT CHARLOTTE), T‑659/14, EU:T:2015:863, paragraph 78).
55 Admittedly, it is also clear from the case-law that, having regard to the principle of equal treatment, which requires that comparable situations must not be treated differently and that different situations must not be treated in the same way unless such treatment is objectively justified, and to the principle of sound administration, EUIPO must, when examining an application for registration of an EU trade mark, have regard for 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).
56 However, the manner 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, AgencjaWydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 to 77).
57 In the present case, as observed in paragraph 49 above, the Board of Appeal correctly found that English-speaking consumers would immediately establish a sufficiently direct and specific relationship between the mark applied for and contact lenses such as to enable them to perceive immediately, and without further thought, a description of a quality of the goods in question.
58 Therefore, the Board of Appeal also acted correctly in finding that the mark applied for was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 and that its registration was caught by the ground for refusal laid down in that provision. The fact that the applicant invoked earlier decisions concerning the registration of other marks cannot, as a result, invalidate that finding.
59 Furthermore, the Board of Appeal set out the reasons why it took the view that the fact that the applicant had invoked marks made up of the word ‘smart’ and another word was not relevant to the applicant’s appeal. It that regard, it observed that, although marks composed in that way had been registered, many others had been refused registration and the other marks designating contact lenses of which the applicant is the proprietor could not be closely associated with those goods, in contrast to the mark applied for.
60 It follows from the foregoing that the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of Article 7(1)(b) and 7(2) of Regulation 2017/1001
61 The applicant claims, in essence, that the Board of Appeal erred in finding that the mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
62 In that regard, it should be pointed out that, as is apparent from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal listed in that provision applies in order for the sign not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).
63 Accordingly, given that, in respect of the goods in question, it is apparent from the examination of the first plea in law that the sign registration of which is sought is descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 and that that ground is in itself sufficient to justify the refusal to register the mark applied for, there is no need, in any event, to examine the validity of the plea in law alleging infringement of Article 7(1)(b) and 7(2) of that regulation.
64 It follows that the action must be dismissed in its entirety.
Costs
65 Under Article 134(1) of the Rules of Procedure, 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, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Novartis AG to pay the costs.
Delivered in open court in Luxembourg on 12 March 2019.