JUDGMENT OF THE GENERAL COURT (Second Chamber)
23 September 2015 (*)
(Community trade mark — Application for Community word mark INFOSECURITY — Absolute ground for refusal — Descriptive character — No distinctive character — No distinctive character acquired through use — Article 7(1)(b) and (c) and Article 7(3) of Regulation (EC) No 207/2009 — Obligation to state reasons)
In Case T‑633/13,
Reed Exhibitions Ltd, established in Richmond (United Kingdom), represented by S. Malynicz, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Poch and S. Hanne, acting as Agents,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 10 September 2013 (Case R 1544/2012-5) concerning an application for registration of the word sign INFOSECURITY as a Community trade mark,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni and L. Madise (Rapporteur), Judges,
Registrar: S. Bukšek, Administrator,
having regard to the application lodged at the Court Registry on 22 November 2013,
having regard to the response lodged at the Court Registry on 25 March 2014,
further to the hearing on 3 March 2015,
gives the following
Judgment
Background to the dispute
1 On 27 July 2011, the applicant, Reed Exhibitions Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a Community trade mark was sought for the word sign INFOSECURITY.
3 The goods and services in respect of which registration was sought are in Classes 16, 35 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 correspond, for each of those classes, to the following description:
– Class 16: ‘Printed matter; printed publications; printed publications relating to strategy and technique of information security; brochures, catalogues, guides, leaflets, advertising and promotional materials; instructional and teaching materials; printed information relating to trade shows, exhibitions, expositions, fairs, conferences, seminars and business and educational events’;
– Class 35: ‘Organisation, arranging and conducting of exhibitions, trade shows and expositions for business purposes; provision and dissemination of information relating to all the aforesaid services including materials relating to exhibitions, trade shows and expositions for business purposes; provision and dissemination of information, assistance and advice for exhibition attendants, visitors and exhibitors; including all such information provided electronically, including on a website; organisation, arranging and conducting of business to business consumer fairs, forums and events within the context of exhibitions, trade shows and expositions for business purposes; job fairs; recruitment services; recruitment and job advertising services, including the provision of the aforesaid services online or over the internet or other computer networks; job boards and provision of job listings, including on a website; promotional, advertising and marketing services; provision of space on websites for advertising goods and services; provision of incentive schemes and information relating to incentive schemes; business introductory and meetings services and business networking schemes; information relating to business networking and meetings; information relating to business introductory services; provision of information and advisory services relating to businesses and business; provision of business information relating to strategy and technique of information security’;
– Class 41: ‘Organisation, arranging and conducting of exhibitions, conferences, conventions, seminars, workshops, expositions and events; provision and dissemination of information relating to all the aforesaid services including materials relating to exhibitions, conferences, conventions, seminars, workshops, expositions and events; provision and dissemination of information, assistance and advice for exhibition and conference attendants, visitors and exhibitors all relating to exhibitions, conferences, expositions and events; including all such information and advice provided electronically, including on a website; education and training services; publication of materials all relating to exhibitions, conferences, conventions, seminars, workshops, expositions and events; publishing of online electronic publications; publishing of magazines and news magazines by electronic means; publication, in electronic or non-electronic format, of texts, books, reviews and magazines; provision of publications, magazines, journals, reviews, books, and newsletters on the Internet in the field of strategy and technique of information security’.
4 By a first communication of 21 September 2011, the examiner informed the applicant that the mark INFOSECURITY was partially ineligible for registration on the grounds for refusal set out in Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009 because the mark applied for was, with regard to the goods and services referred to in the communication, descriptive and devoid of any distinctive character. The examiner invited the applicant to submit any observations it might have within a period of two months.
5 By letter of 18 November 2011, the applicant submitted its observations on the examiner’s objections.
6 By a second communication of 31 January 2012, the examiner stated that his partial refusal of registration on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009 was maintained. However, the examiner invited the applicant to provide, within two months of receipt of the communication, evidence as regards any distinctive character that the mark applied for might have acquired through use for the purposes of Article 7(3) of Regulation No 207/2009.
7 By letter of 30 March 2012, the applicant requested that OHIM grant it an extension of the time-limit in order to gather the evidence.
8 By letter of 2 April 2012, OHIM confirmed to the applicant that it had been granted an extension of the time-limit to enable it to gather sufficient evidence.
9 By letter of 5 April 2012, the applicant sent the evidence to OHIM.
10 By decision of 18 June 2012, the examiner allowed registration of the mark applied for in respect of the following goods and services:
– Class 35: ‘Recruitment services; recruitment and job advertising services, including the provision of the aforesaid services online or over the internet or other computer networks; job boards and provision of job listings, including on a website; promotional, advertising and marketing services; provision of space on websites for advertising goods and services; provision of incentive schemes and information relating to incentive schemes’.
11 By contrast, the examiner refused, on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009, registration of the other goods and services covered by the mark applied for.
12 On 17 August 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision in so far as that decision was unfavourable to it.
13 By letter of 18 October 2012, the applicant sent additional evidence for the purposes of proving, inter alia, that the mark applied for had acquired distinctive character through use under Article 7(3) of Regulation No 207/2009. That evidence included, inter alia, three statements and a grid chart showing the competitive position of the applicant’s Infosecurity exhibition in relation to those of its competitors.
14 By decision of 10 September 2013 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal.
15 The Board of Appeal, in essence, after finding as regards the relevant public that that public consisted of (i) reasonably well-informed and reasonably observant average consumers and (ii) professionals whose awareness will be higher than average, throughout the European Union and who will have sufficient knowledge of the English language (paragraphs 9 and 10 of the contested decision), first of all, found that the link between the term ‘infosecurity’ and the goods and services at issue was sufficiently close for the sign to be regarded as descriptive for the purposes of Article 7(1)(c) and Article 7(2) of Regulation No 207/2009 (paragraph 17 of the contested decision). The Board of Appeal then found that, since the sign INFOSECURITY was a purely descriptive indication in respect of all the goods and some of the services applied for, it was, according to the case-law, devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 (paragraph 21 of the contested decision), inter alia because it was incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods and services at issue (paragraph 22 of the contested decision). Lastly, the Board of Appeal rejected the applicant’s arguments that the mark applied for had acquired distinctive character through use for the purposes of Article 7(3) of Regulation No 207/2009. The Board of Appeal observed, in essence, that, despite the use of the term ‘infosecurity’ demonstrated by the applicant, the evidence provided did not prove that, from the relevant public’s perspective, the sign INFOSECURITY had, in itself, acquired distinctive character and would be perceived by the relevant public as a trade mark capable of distinguishing the applicant’s goods and services from those of other undertakings (paragraph 35 of the contested decision).
Forms of order sought
16 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
17 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
18 In support of its application for annulment, the applicant raises three pleas in law alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009; secondly, infringement of Article 7(1)(b) of Regulation No 207/2009; and thirdly, infringement of Article 7(3) of Regulation No 207/2009.
First plea in law: infringement of Article 7(1)(c) of Regulation No 207/2009
19 The applicant disputes the Board of Appeal’s assessment that the mark applied for is descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009. The applicant claims, in essence, first, that the Board of Appeal failed to take account of the fact that the sign INFOSECURITY, considered as a whole, has no meaning in relation to the goods and services concerned (first part of the plea in law), and, secondly, that the Board of Appeal assessed the descriptiveness of the mark applied for incorrectly, inter alia, in that it failed to examine descriptiveness in relation to each of the goods and services concerned (second part of the plea in law).
20 Under Article 7(1)(c) of Regulation No 207/2009, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Article 7(2) of Regulation No 207/2009 states that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
21 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 which is in the public interest, namely that such signs or indications may be freely used by all (judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31, and 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 62). The concept of public interest underlying Article 7(1)(c) of Regulation No 207/2009, inter alia, prevents those signs or indications from being reserved to one undertaking alone because they have been registered as trade marks and an undertaking from monopolising the use of a descriptive term to the detriment of other undertakings, including its competitors, whose choice of available vocabulary for describing their own goods would thereby be reduced (judgments of 6 March 2007 in Golf USA v OHIM (GOLF USA), T‑230/05, EU:T:2007:76, paragraph 32, and 30 April 2013 in ABC-One v OHIM (SLIM BELLY), T‑61/12, EU:T:2013:226, paragraph 18).
22 The signs referred to in Article 7(1)(c) of Regulation No 207/2009 are those that are incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquires the product 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 (judgments of 27 February 2002 in Ellos v OHIM (ELLOS), T‑219/00, ECR, EU:T:2002:44, paragraph 28, and 22 May 2008 in Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, EU:T:2008:165, paragraph 27).
23 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 and services in question to enable the public concerned immediately to perceive, without further thought, a description of the category of goods and services in question or one of their characteristics (judgments of 22 June 2005 in Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, ECR, EU:T:2005:247, paragraph 25, and RadioCom, cited in paragraph 22 above, EU:T:2008:165, paragraph 29).
24 The distinctiveness of a sign may only be assessed, first, in relation to the perception of the mark by the relevant section of the public and, secondly, in relation to the goods or services concerned (judgment of 27 February 2002 in Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, ECR, EU:T:2002:41, paragraph 38; see also judgment of 2 May 2012 in Universal Display v OHIM (UniversalPHOLED), T‑435/11, EU:T:2012:210, paragraph 19 and the case-law cited).
25 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 No 207/2009, 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, the analysis of the term in question in the light of the appropriate lexical and grammatical rules is also relevant (judgment in UniversalPHOLED, cited in paragraph 24 above, EU:T:2012:210, paragraph 18; see also judgment of 7 July 2011 in Cree v OHIM (TRUEWHITE), T‑208/10, EU:T:2011:340, paragraph 16 and the case-law cited).
26 As regards the target public, paragraph 9 of the contested decision states that the goods and services at issue are directed at both average consumers and a professional public, so that the relevant public consists of average consumers in the European Union, deemed to be reasonably well informed and reasonably observant and circumspect, and professionals whose awareness will be higher than average. The Board of Appeal also stated, in paragraph 10 of the contested decision, that taking into account the nature of the goods and services at issue and the relevant public, it was to be assumed that the public addressed would have sufficient knowledge of the English language even if they were not native English speakers. The Board of Appeal inferred that the relevant territory was the whole of the European Union.
27 The Court confirms those findings by the Board of Appeal, which are, moreover, not disputed by the applicant.
28 Accordingly, for the purposes of Article 7(1)(c) of Regulation No 207/2009, it is necessary to consider, on the basis of a given meaning of the word sign in question, whether, from the point of view of the target public, there is a sufficiently direct and specific relationship between the sign INFOSECURITY and the goods and services in respect of which registration is sought (see, to that effect, judgment of 26 November 2003 in HERON Robotunits v OHIM (ROBOTUNITS), T‑222/02, ECR, EU:T:2003:315, paragraph 38, and judgment in UniversalPHOLED, cited in paragraph 24 above, EU:T:2012:210, paragraph 21 and the case-law cited).
First part of the first plea in law: that the word sign INFOSECURITY, considered as a whole, has no meaning
29 The applicant submits, first, that the term ‘infosecurity’, considered as a whole, does not exist in the English language and is not defined in dictionaries. The applicant adds, secondly, that the term ‘infosecurity’ does not comply with the syntactical rules of the English language and constitutes, in this respect, an ‘unusual lexical invention’.
30 In so far as the applicant disputes the descriptiveness of the term ‘infosecurity’, considered as a whole, in relation to the goods and services concerned, the Court makes the following findings.
31 In the first place, so far as the meaning of the term ‘info’ is concerned, as stated in paragraph 11 of the contested decision, that term refers to the current and normal abbreviation of the word ‘information’.
32 In the second place, so far as the meaning of the term ‘security’ is concerned, that term may be perceived, as stated in paragraph 11 of the contested decision, as referring to ‘the state or condition of being or feeling secure … the state or condition of being protected from or not exposed to danger’.
33 Those definitions (see paragraphs 31 and 32 above), which, moreover, have not been expressly disputed by the applicant, can only be confirmed.
34 It follows from those considerations that the target public is capable of understanding the meaning of each of the terms ‘info’ and ‘security’, considered in isolation (see, to that effect, judgments in PAPERLAB, cited in paragraph 23 above, EU:T:2005:247, paragraph 30, and UniversalPHOLED, cited in paragraph 24 above, EU:T:2012:210, paragraph 25).
35 In the third place, contrary to what is claimed by the applicant, the term ‘infosecurity’, considered as a whole, in the field to which the Community trade mark application relates, has — as the Board of Appeal correctly held in paragraph 12 of the contested decision — a clear and unambiguous meaning, namely ‘information security’. The sign at issue will be understood as containing direct information on the content and subject-matter of the goods and services concerned, namely goods and services relating to the field of information security.
36 In accordance with the case-law referred to in paragraph 25 above, 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 No 207/2009, 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 those goods, 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.
37 In the present case, it is clear that the simple combination of the words ‘info’ and ‘security’, each of which is respectively descriptive of the content and subject-matter of the goods and services concerned, is itself descriptive of the content and subject-matter of those goods and services and that the association of the terms ‘info’ and ‘security’ in the sign INFOSECURITY is in no way unusual since it is not uncommon in English to link abbreviations with nouns (see, to that effect, judgment in PAPERLAB, cited in paragraph 23 above, EU:T:2005:247, paragraph 32; order of 29 September 2008 in Powderject Research v OHIM (POWDERMED), T‑166/06, EU:T:2008:408, paragraph 24; judgments of 15 January 2013 in BSH v OHIM (ecoDoor), T‑625/11, ECR, EU:T:2013:14, paragraph 24, and 8 February 2013 in Piotrowski v OHIM (MEDIGYM), T‑33/12, EU:T:2013:71, paragraph 51).
38 Consequently, the applicant’s argument that there is a perceptible difference between the mark applied for, INFOSECURITY, and the elements of which it is composed, and that the term ‘infosecurity’ is a combination of ‘info’ and ‘security’ that does not comply with the rules of the English language and constitutes therefore an ‘unusual lexical invention’, must be dismissed as unfounded.
39 In this connection, it must be recalled that, in paragraph 26 of the judgment of 12 January 2000 in DKV v OHIM (T‑19/99, ECR, EU:T:2000:4), the General Court held that coupling together the terms ‘company’ and ‘line’, without any graphic or semantic modification, did not imbue them with any additional characteristic such as to render the sign, taken as a whole, capable of distinguishing the applicant’s services from those of other undertakings, and it added that the fact that the sign COMPANYLINE as such does not appear in dictionaries — whether as one word or otherwise — did not in any way alter that finding (a point confirmed in paragraph 23 of the judgment of 19 September 2002 in DKV v OHIM, C‑104/00 P, ECR, EU:C:2002:506).
40 The same applies in the present case, so that the fact — relied on by the applicant — that the sign INFOSECURITY does not appear in dictionaries and is an invented word does not in any way alter the assessment that that sign is descriptive of the goods and services concerned for the purposes of Article 7(1)(c) of Regulation No 207/2009.
41 In those circumstances, the term ‘infosecurity’ is descriptive in relation to the goods and services concerned by suggesting that their subject-matter or content relates to information security or, at the very least, by being capable of so doing (see, by analogy, judgment of 6 December 2013 in Banco Bilbao Vizcaya Argentaria v OHIM (VALORES DE FUTURO), T‑428/12, EU:T:2013:629, paragraph 29).
42 In those circumstances, the first part of the plea in law must be dismissed.
Second part of the first plea in law: that the contested mark was found, incorrectly, to be descriptive
43 The applicant claims, in essence, first, that the Board of Appeal failed in its obligation to state reasons by not providing sufficient reasons for its finding that the mark applied for was descriptive in relation to each of the goods and services covered by the application for registration, and, secondly, that the Board of Appeal concluded, incorrectly, that the mark applied for was descriptive in respect of all those goods and services.
44 In the contested decision, the Board of Appeal referred to all the goods and services concerned (paragraphs 15 and 17), in stating, in paragraph 16 of the contested decision, that when the sign INFOSECURITY was used in relation to those goods and services, the public concerned would immediately be informed of one of their ‘crucial characteristics’, namely their subject-matter. The Board of Appeal concluded that the mark applied for had to be regarded as directly descriptive of the subject-matter and content of those goods and services and, therefore, had to be refused registration.
45 As regards the applicant’s first complaint, that the contested decision is vitiated by a failure to state reasons, according to the case-law, where registration of a mark is sought in respect of various goods or services, the Board of Appeal must determine specifically, in relation to each of those goods or services, that none of the grounds for refusal of registration listed in Article 7(1) of Regulation No 207/2009 applies to the mark in question, and may reach conclusions which differ depending upon the goods or services in question (judgment of 2 April 2009 in Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, ECR, EU:T:2009:100, paragraph 27; see also, by analogy, judgment of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraphs 33 and 73). It follows that, when refusing registration of a trade mark, the Board of Appeal is required to state, in its decision, the conclusion reached by it in respect of each of the goods and services specified in the application for registration.
46 However, although the decision to refuse registration of a trade mark must, as a rule, state the reasons in respect of each of the goods or services concerned, the competent authority may none the less limit itself to using general reasoning where the same ground for refusal is given for a category or group of goods or services that have a sufficiently direct and specific link to each other to the extent that they form a sufficiently homogeneous category or group of goods or services (judgment in ULTIMATE FIGHTING CHAMPIONSHIP, cited in paragraph 45 above, EU:T:2009:100, paragraph 28; see also judgment in VALORES DE FUTURO, cited in paragraph 41 above, EU:T:2013:629, paragraph 49 and the case-law cited).
47 In the present case, first, the Board of Appeal gave the same ground for refusal for all the goods and services in respect of which registration of the mark applied for was refused, namely the descriptiveness of the mark in relation to the subject-matter and content of those goods and services (paragraphs 16 to 18 of the contested decision), and, secondly, there is a sufficiently direct and specific link between the goods and services refused registration since they are all media for the dissemination of information in writing (including in print or electronically) or orally (including organisation of conferences, fairs and exhibitions).
48 Accordingly, having carried out an overall examination covering all the goods and services refused registration, the Board of Appeal was entitled to formulate a single conclusion based on the same ground for refusal covering all the goods and services concerned, without infringing its obligation to state reasons.
49 As regards the applicant’s second complaint, alleging an error of assessment as to the descriptiveness of the mark applied for, first, as stated in paragraph 44 above, the Board of Appeal referred, in paragraphs 15 and 17 of the contested decision, to all the goods and services covered by the application for registration in stating that when the sign INFOSECURITY was used in relation to those goods and services, the public concerned would immediately be informed of one of their ‘crucial characteristics’, namely their subject-matter.
50 It follows that, contrary to what is claimed by the applicant, the Board of Appeal did indeed carry out an examination of the descriptiveness of the mark applied for in relation to all the goods and services concerned.
51 Secondly, the Board of Appeal did not make an error of assessment in deciding that the sign INFOSECURITY described the subject-matter of all the goods and services concerned, namely the provision of information orally and in writing in relation to information security. As the Board of Appeal correctly held in paragraph 17 of the contested decision, the expression ‘infosecurity’ will immediately inform the relevant public that the goods and services concerned ‘are aimed at the area of protecting information from safety threats’ and, therefore, directly describes their subject-matter.
52 That conclusion cannot be called into question by the applicant’s argument that some of the goods and services concerned, namely ‘printed information relating to trade shows, exhibitions, expositions, fairs, conferences, seminars and business and educational events’ (Class 16), ‘information relating to business introductory services’ (Class 35) or ‘publishing of online electronic publications’ (Class 41), do not have any direct links with the mark applied for.
53 It is clear that, in connection with those goods and services, the mark applied for immediately indicates to the relevant public the content or subject-matter of that information and those publications, namely information security.
54 In so far as the applicant alleges that the Board of Appeal concluded, incorrectly, that the subject-matter constituted a ‘crucial characteristic’, for the purposes of Article 7(1)(c) of Regulation No 207/2009, of goods and services such as publications and exhibitions, it should be stated, as did the Board of Appeal in paragraph 16 of the contested decision, that consumers choose to attend exhibitions or to consult publications mainly on the basis of their content or subject-matter.
55 In those circumstances, the subject-matter or content of goods or services such as the publications or the exhibitions does indeed constitute a ‘crucial characteristic’, or at the very least one of their ‘characteristics’ within the meaning of Article 7(1)(c) of Regulation No 207/2009 (see, by analogy, judgments of 10 October 2006 in PTV v OHIM (map&guide), T‑302/03, ECR, EU:T:2006:296, paragraphs 47 and 49; 17 September 2008 in Prana Haus v OHIM (PRANAHAUS), T‑226/07, EU:T:2008:381, paragraphs 33 and 38; and 6 February 2013 in Maharishi Foundation v OHIM (TRANSCENDENTAL MEDITATION), T‑412/11, EU:T:2013:62, paragraphs 81 to 86), regardless of whether it is ‘crucial’ or not (see, to that effect, judgment in SLIM BELLY, cited in paragraph 21 above, EU:T:2013:226, paragraph 37).
56 It follows that no error of assessment vitiates the legality of the contested decision as to the descriptiveness, for the purposes of Article 7(1)(c) of Regulation No 207/2009, of the mark applied for.
57 The second part of the plea in law must therefore be dismissed.
58 It follows from all the foregoing that the first plea in law, inasmuch as it alleges infringement of Article 7(1)(c) of Regulation No 207/2009, must be dismissed in its entirety.
Second plea in law: infringement of Article 7(1)(b) of Regulation No 207/2009
59 The applicant claims, in essence, that the Board of Appeal considered the distinctiveness of the mark applied for in the light of Article 7(1)(b) of Regulation No 207/2009 too briefly, finding merely that the mark applied for was an indication devoid of any distinctive character of the goods and services covered by the application for registration, without providing adequate reasoning. The applicant adds, lastly, that the Board of Appeal wrongly failed to take account of the fact that it was the proprietor of an earlier Community trade mark identical to the mark applied for, namely the trade mark INFOSECURITY, registered under number 1230531 and covering the same classes of goods and services.
60 Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.
61 According to settled case-law, it is evident from the wording of Article 7(1) of Regulation No 207/2009 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 registrable as a Community trade mark (see order of 13 February 2008 in Indorata-Serviços e Gestão v OHIM, C‑212/07 P, EU:C:2008:83, paragraphs 27 and 28 and the case-law cited, and judgment in UniversalPHOLED, cited in paragraph 24 above, EU:T:2012:210, paragraph 41 and the case-law cited).
62 In the present case, since the Board of Appeal was fully entitled to find that the ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009 applied, there is no need to examine the plea in law alleging infringement of Article 7(1)(b) of that regulation.
63 The applicant’s argument that it obtained registration of a trade mark identical to the mark applied for in respect of goods and services in the same classes is ineffective in that regard.
64 In any event, suffice it to recall, first, that, according to settled case-law, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a Community 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 decision-making practice (judgment of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 47, and order in Indorata-Serviços e Gestão v OHIM, cited in paragraph 61 above, EU:C:2008:83, paragraphs 43 and 44).
65 Secondly, it should be recalled that observance of the principle of equal treatment must be reconciled with observance, specifically, of the principle of legality. According to the latter principle, no person may rely to his advantage on an unlawful act committed in another procedure (judgments of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 75 and 76, and 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 65).
66 It follows from the foregoing that the second plea in law, inasmuch as it alleges infringement of Article 7(1)(b) of Regulation No 207/2009, must be dismissed.
Third plea in law: infringement of Article 7(3) of Regulation No 207/2009
67 Article 7(3) of Regulation No 207/2009 provides that Article 7(1)(b) to (d) does not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. It should be recalled that Article 7(3) does not provide an independent right to have a trade mark registered. It is an exception to the grounds for refusal listed in Article 7(1)(b) to (d) of Regulation No 207/2009 (see judgment of 6 July 2011 in Audi and Volkswagen v OHIM (TDI), T‑318/09, ECR, EU:T:2011:330, paragraph 40 and the case-law cited).
68 In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product or service concerned as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (see judgment of 13 September 2012 in Sogepi Consulting y Publicidad v OHIM (ESPETEC), T‑72/11, EU:T:2012:424, paragraph 63 and the case-law cited).
69 The identification, by the relevant class of persons, of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the product or service concerned from those of other undertakings (see, to that effect, judgment of 29 September 2010 in CNH Global v OHIM (Representation of a tractor in red, black and grey), T‑378/07, ECR, EU:T:2010:413, paragraph 29; see also, by analogy, judgment of 18 June 2002 in Philips, C‑299/99, ECR, EU:C:2002:377, paragraph 64).
70 In that regard, the expression ‘use of the mark as a trade mark’ must be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking (judgment of 28 October 2009 in BCS v OHIM — Deere (Combination of the colours green and yellow), T‑137/08, ECR, EU:T:2009:417, paragraph 26; see also, by analogy, judgment of 7 July 2005 in Nestlé, C‑353/03, ECR, EU:C:2005:432, paragraph 29).
71 In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may inter alia also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgment in Philips, cited in paragraph 69 above, EU:C:2002:377, paragraph 60).
72 It is in the light of those considerations that the Court must examine whether the Board of Appeal was correct in finding that the applicant had not proved that the mark applied for had acquired distinctive character through use.
73 In the contested decision, the Board of Appeal referred, in paragraph 25, to the initial evidence produced by the applicant before the Examination Division by letter of 5 April 2012, namely the following:
– financial and events data for the applicant’s Infosecurity exhibitions in the Netherlands and Belgium between 2007 and 2011 (Attachment 1 to the letter);
– sales revenues, promotional expenditure and visitor numbers from 2007 to 2011 relating to the applicant’s exhibition which takes place in London every April (Attachment 2 to the letter);
– marketing materials (Attachment 3 to the letter);
– lists of publications and radio and television networks which featured the applicant’s exhibition in various articles and news stories between 2008 and 2011 inclusive (Attachment 4 to the letter);
– articles dated 2010 and 2011 about the applicant’s exhibition (Attachments 5 to 8 to the letter);
– a copy of the 2010 report entitled ‘Information Security Breaches Survey Report’, commissioned for the applicant’s Infosecurity exhibition and launched at that exhibition in 2010 (Attachment 9 to the letter);
– press articles from 2006 to 2009 mentioning the applicant’s exhibition (Attachments 10 to 14 to the letter);
– a press article stating that the applicant’s exhibition has the highest attendance rates in Europe of any information security and safety exhibition (Attachment 15 to the letter);
– post-exhibition visitor survey for 2011 (Attachments 16 and 17 to the letter);
– summary of annual revenue generated by sales of the magazine INFOSECURITY from 2007 to 2010 inclusive (Attachment 18 to the letter);
– examples of front covers of the applicant’s magazine and pages from the website www.infosecurity-magazine.com together with a press release (Attachment 19 to the letter).
74 The Board of Appeal then referred, in paragraph 26 of the contested decision, to some additional evidence produced before it by the applicant by letter of 18 October 2012, namely two statements — one from the managing director of an independent consortium of professionals within information security professions (Attachment 2 to the letter), and the second from the assistant professor in the department of informatics of the University of Milan (Attachment 3 to the letter) — and the documents included by the applicant in Attachment 4 to its letter of 18 October 2012, namely:
– a press release issued following the Infosecurity 2012 exhibition, referring to increased attendance at the exhibition and quoting statements from well-known organisations and dignitaries who attend the exhibition;
– a grid chart showing the competitive position of the applicant’s Infosecurity exhibitions in relation to those of its competitors;
– the summary of a 2012 study carried out by the applicant and a large audit firm entitled ‘Information security breaches survey’ and the audit firm’s press release about that study.
75 The Board of Appeal found, first of all, in paragraph 27 of the contested decision, that the initial evidence did not establish, in accordance with the case-law, use of the mark as a trade mark, since the term ‘infosecurity’ appeared to be used more as a company name or as a component of another figurative sign, namely:
.
76 The Board of Appeal then found that the organisation and success of the applicant’s exhibition entitled ‘Infosecurity’ were not, on their own, sufficient to prove that the sign INFOSECURITY had acquired distinctive character or that it was perceived as a trade mark by the relevant public (paragraphs 28 and 29 of the contested decision).
77 Lastly, the Board of Appeal observed that the additional evidence produced by the applicant, and in particular the statements produced, were not sufficient to establish that the mark applied for had acquired distinctive character through use (paragraphs 30 to 33 of the contested decision).
78 The Board of Appeal concluded from the foregoing that, despite the use demonstrated by the applicant of the term ‘infosecurity’, the evidence produced before the Examination Division and before the Board of Appeal did not prove that, from the relevant public’s perspective, the mark applied for had acquired distinctive character and that it would be perceived as a sign capable of distinguishing the applicant’s goods and services from those of other undertakings (paragraph 35 of the contested decision).
79 The applicant formulates, in essence, two complaints against the decision of the Board of Appeal.
80 The applicant submits, first, that the use of the mark applied for as a component of another sign or as a trading name can amount to use of the mark as a trade mark and, secondly, that the Board of Appeal was wrong to find that the success and reputation of the exhibition entitled ‘Infosecurity’ were not sufficient to constitute use of the mark as a trade mark.
Use of the mark applied for within another figurative sign or as a trade name
81 The applicant argues, first of all, that the Board of Appeal was wrong to hold that the mark applied for could not acquire distinctive character through its use in another figurative sign.
82 However, it should be stated that the addition of the element ‘europe’ to the element ‘infosecurity’ alters how the mark applied for, as a mark, is perceived by the relevant public, since, as stated in the contested decision, its association with the term ‘infosecurity’ may be perceived as a reference to the European edition of the Infosecurity exhibition, and not as a trade mark.
83 In those circumstances, the Board of Appeal was fully entitled to find, in paragraph 27 of the contested decision, that the use of the term ‘infosecurity’ in the figurative sign infosecurity Europe could not constitute use of that term as a trade mark for the purposes of Article 7(3) of Regulation No 207/2009.
84 The applicant submits, next, that the Board of Appeal was wrong in finding that the expression ‘infosecurity’ was used ‘more as a company name’ because it was in most cases accompanied by the word ‘Europe’ or by the indication of a year.
85 In this connection, the applicant submits that that finding is ‘factually incorrect’ and that, ‘in any event, use of a mark as a trading name may lead to the acquisition of distinctive character’.
86 However, it must be held that, in so far as the applicant asserts that the Board of Appeal’s finding that the mark applied for is used as a company name is ‘factually incorrect’, it cannot reasonably claim that use of the mark applied for as a trade name may lead to the acquisition of distinctive character. The applicant cannot rely on the mark applied for having acquired distinctive character as a result of its use as a trade name while disputing, in the case in point, the existence of such use.
87 The applicant’s argument that, in essence, the mark applied for could have acquired distinctive character through use as a result of being used as a trade name must therefore be dismissed.
88 In any event, even if that use did take place, such use as a trade name does not, contrary to what is claimed by the applicant, suffice on its own to establish that a significant proportion of the relevant public perceives a link between the services delivered under the sign at issue and a particular undertaking (see, by analogy, judgment of 17 May 2011 in Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), T‑7/10, EU:T:2011:221, paragraph 62).
89 Indeed, unlike a trade mark, the purpose of a trade name is not, of itself, to distinguish goods or services (see judgment of 11 September 2007 in Céline, C‑17/06, ECR, EU:C:2007:497, paragraph 21 and the case-law cited).
90 In those circumstances, the Board of Appeal was fully entitled to hold, in paragraph 27 of the contested decision, that the use of the mark applied for within another figurative sign or as a trade name in the initial evidence produced could not establish that distinctive character had been acquired through use.
Effect of the claimed success and reputation of the Infosecurity exhibition
91 The applicant submits that the Board of Appeal was wrong in holding that the success and reputation of its Infosecurity exhibition, demonstrated by the initial evidence (see paragraph 9 above) and the additional evidence (see paragraph 13 above), were not sufficient to establish that the mark applied for was perceived as a trade mark by the relevant public and not as the title of an exhibition.
92 The applicant relies, on the one hand, on paragraph 28 of the contested decision in which the Board of Appeal stated that ‘based on the documentation filed before it and the Examination Division, it is clear that the applicant has been organising an exhibition called “INFOSECURITY” … and that this exhibition is very successful’ and, on the other, on the additional evidence and, in particular, on the statements produced before the Board of Appeal, which, it is claimed, the Board of Appeal wrongly disregarded. The applicant concludes by providing a ‘summary of the evidence provided’ and stating that the Board of Appeal failed to consider the substantial amount of that evidence.
93 In the first place, in so far as the applicant relies on the success and reputation of its Infosecurity exhibition, which success is, moreover, not disputed by the Board of Appeal, it must be stated that the fact that an exhibition is successful does not mean that its title is perceived as a trade mark in the sense that it would enable the relevant class of persons immediately to identify the undertaking behind that exhibition and to dissociate that exhibition from exhibitions of other undertakings on identical subjects (see paragraph 68 above). That is a fortiori the case where, as in the present case, the title of the exhibition is directly descriptive of its content.
94 According to the case-law, the relevant class of persons cannot perceive the goods or service designated by the mark applied for as originating from a particular undertaking where the sign at issue is used in a manner directly descriptive of the type of goods or service concerned (see judgment of 9 July 2014 in Pågen Trademark v OHIM (gifflar), T‑520/12, EU:T:2014:620, paragraph 43 and the case-law cited).
95 That is indeed the case here, since it is established that the sign INFOSECURITY is used in order to designate the applicant’s exhibition dedicated to information security, that is to say, in a directly descriptive way.
96 Consequently, the Board of Appeal was fully entitled to hold, in paragraph 28 of the contested decision, that the fact that the applicant’s exhibition was successful was not, on its own, sufficient to prove that the mark applied for had acquired distinctive character or that it was perceived as a trade mark and not as the title of an exhibition.
97 In the second place, in so far as the applicant claims that some of the additional evidence was disregarded, wrongly, by the Board of Appeal, it should be noted that the applicant produced three statements before the Board of Appeal, the first of which came from an independent consortium of professionals within information security professions, the second from an assistant professor in the department of informatics of the University of Milan (see paragraph 74 above) and the third from a partner of a large audit firm (Attachment 5 to the letter of 18 October 2012).
98 The first two statements, which are drafted in almost identical terms, state, in essence, that during the last 15 years, the applicant has built up a significant reputation in its Infosecurity exhibition and its eponymous magazine to the extent that, for the majority of people working in the information security sector, the term ‘infosecurity’ refers only to the applicant’s exhibition and magazine. The third statement sets out in slightly different terms the conclusions in the first two statements.
99 First, the applicant submits that the fact that it coordinated and drafted the statements does not affect their evidential value. Secondly, it submits that the fact that the statements were made and signed in 2012 does not preclude their being capable of establishing the acquisition of distinctive character through use over the period preceding the application for registration. Thirdly, it complains that the Board of Appeal did not take into consideration the confidential statement provided by a partner of a large audit firm.
100 So far as the first two statements are concerned, it must be pointed out as regards the dates of those statements that, contrary to what is indicated in the contested decision, the fact that they were signed after the application for registration was filed does not mean that they are devoid of evidential value for the purposes of assessing the acquisition of distinctive character through use as at the date when the application for registration of the contested mark was filed (see, to that effect, judgment in Combination of the colours green and yellow, cited in paragraph 70 above, EU:T:2009:417, paragraph 49). Similarly, as regards the Board of Appeal’s objection as to the absence of spontaneity on the part of those making the statements and the applicant’s role in the drawing up of the statements submitted, it is important to point out that — contrary to what is suggested in the contested decision — the fact that those statements were made following a request by the applicant and that the applicant may have coordinated the preparation of those statements does not, in itself, cast doubt on their content and evidential value (judgment in Combination of the colours green and yellow, cited in paragraph 70 above, EU:T:2009:417, paragraph 50).
101 However, notwithstanding the foregoing, it is clear that the Board of Appeal was correct in regarding those two statements as insufficient ‘[a]s sole evidence of the relevant public’s actual perception of the mark’ (paragraph 31 of the contested decision). Regardless of the circumstances in which they were drawn up and, in particular, of their date, they express an opinion only as to how the sign is perceived by professionals, whereas the relevant public also includes final consumers (see, to that effect, judgment of 12 September 2007 in Glaverbel v OHIM (Texture of a glass surface), T‑141/06, EU:T:2007:273, paragraph 44). In those circumstances, they do not establish that the mark applied for acquired distinctive character through use for average consumers, which consumers — the applicant agrees — form part of the relevant public.
102 The same is true of the confidential statement from a partner of a large audit firm produced by the applicant. According to the applicant, that statement was not taken into consideration by the Board of Appeal inasmuch as it was not expressly referred to in the contested decision. However, there is nothing in that statement that might establish how the mark applied for is actually perceived by the average consumer. Furthermore, it is apparent from the additional evidence provided by the applicant (see paragraph 13 above) that the audit firm in question was involved in the carrying out of a commercial study with the applicant. In this connection, in reply to a question posed at the hearing in relation to that study, the applicant’s representative did not exclude the possibility that that audit firm may be connected to the applicant through client relationships. In those circumstances, the value of that statement is limited. According to the case-law, account is to be taken, as a priority, of statements made by non-profit-making associations such as, for example, statements from chambers of commerce and industry or other trade and professional associations (see, by analogy, judgment of 4 May 1999 in Windsurfing Chiemsee, C‑108/97 and C‑109/97, ECR, EU:C:1999:230, paragraph 51, and judgment in Combination of the colours green and yellow, cited in paragraph 70 above, EU:T:2009:417, paragraph 49).
103 In those circumstances, even if that statement was not taken into account by the Board of Appeal, it would not have affected the Board of Appeal’s assessment.
104 Lastly, it is clear that, besides the statements, the additional evidence produced before the Board of Appeal (see paragraph 74 above) does not establish that the relevant public perceived, before the date of the application for registration, the mark applied for as an indication of the commercial origin of the goods and services designated (judgment of 20 September 2007 in Imagination Technologies v OHIM (PURE DIGITAL), T‑461/04, EU:T:2007:294, paragraph 79).
105 First, since the press release issued following the Infosecurity 2012 exhibition and entitled ‘Infosecurity 2012 Best Ever Event’ relates solely to the exhibition held in 2012 and not to exhibitions prior to the application for registration, there is no analogy with those exhibitions inasmuch as it can be inferred from reading that press release that the 2012 edition is clearly distinguishable from the earlier editions, in particular because of a significant increase in attendance, which — according to the press release’s own wording — made it the applicant’s ‘best ever event’.
106 Secondly, as regards the documents produced by the applicant concerning a 2012 survey entitled ‘Information Security Breaches Survey’, since that survey relates in large part to the nature of cyber risks and their costs for the undertaking, it does not in any way establish that the mark is capable of being perceived as a trade mark by the relevant public and, inter alia, average consumers.
107 It follows that the Board of Appeal was fully entitled to find, in paragraphs 30 to 33 of the contested decision, that the additional evidence produced before it by the applicant was not capable of calling into question its assessment that the mark applied for had not acquired distinctive character through use.
108 In the third place, that conclusion cannot be called into question by the reference made by the applicant in paragraph 50 of its application, in the form of a summary, to the ‘evidence’ claimed to have been provided during the administrative proceedings and seeking to establish:
– first, the position as leader in Europe of the Infosecurity exhibition in the information security sector;
– secondly, the large number of participants at the Infosecurity exhibitions, demonstrated, according to the applicant, by the attendance in 2012 of approximately 13 000 visitors over three days at the main Infosecurity exhibition and the attendance in 2011 of more than 21 000 visitors at the various Infosecurity exhibitions in Europe;
– thirdly, the European and international media coverage of the Infosecurity exhibitions, demonstrated, according to the applicant, by approximately 1 000 publications in the English-language general and trade press;
– fourthly, the quality and reputation of speakers at the Infosecurity exhibitions, including, according to the applicant, the heads of security of US multinational undertakings and high profile individuals from the British political sphere;
– fifthly, the size of the budget in terms of marketing and advertising spent on the Infosecurity exhibitions (approximately GBP 500 000, according to the applicant) on wide press and other media coverage, and multisectoral coverage of advertising material (information security and information technology, banking, finance, healthcare, education, telecommunications, government administration);
– sixthly, ownership and management of websites linked to the Infosecurity exhibitions and magazines (www.infosecurity.be, www.infosecurity.co.uk and www.infosecurity.nl) for many years, including prior to the filing of the Community trade mark application.
109 The applicant submits merely, in this connection, in paragraph 51 of its application, that ‘[t]he Board of Appeal … failed to consider the substantial amount of evidence provided … on acquired distinctiveness of the [contested mark]’.
110 However, the applicant’s argument that the Board of Appeal failed to consider the ‘substantial amount of evidence provided’ for the purposes of demonstrating that the mark applied for had acquired distinctive character would amount — at least implicitly — to requiring the Court to examine all the documents produced in the course of the administrative proceedings and the arguments relating thereto, even though those documents were not identified in the application by a reference to the document produced in the administrative proceedings.
111 It is not for the Court to place itself in the parties’ position and seek the relevant information in the annexes (see, by analogy, judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 14 and the case-law cited).
112 In those circumstances, the line of argument referred to in paragraphs 108 and 109 above must be dismissed as unsubstantiated in so far as it is supported only by a general and implicit reference to evidence submitted in the administrative proceedings (see, by analogy, judgment of 11 September 2014 in Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, EU:T:2014:769, paragraph 19).
113 In any event, even if the evidence to which the applicant refers (see paragraph 108 above) could be taken into account, it would not be sufficient for the mark applied for to be regarded as having acquired distinctive character through use.
114 In the first place, the applicant’s possible position as leader on the market in question, even if it were established, does not necessarily lead to the relevant public identifying the commercial origin of the Infosecurity exhibition because of its title, as it might do because of a trade mark (see paragraph 96 above), particularly where the sign INFOSECURITY may be used as a trade name or in order to designate the title of an exhibition (see paragraphs 81 to 90 above). The same is true of the evidence relating to attendance at the Infosecurity exhibition.
115 In the second place, it is apparent from the applicant’s summary that its advertising and marketing investments are allocated to specific sectors such as the information security sector, but also to the banking, finance and government administration sectors. That does not prove that the average consumer, who also forms part of the relevant public, is — like the professional public — also targeted by that advertising. Moreover, as regards the sums invested by the applicant, it is impossible, in the present case, to measure the relative significance of the applicant’s advertising investments in the absence of data which make it possible to compare them with the overall volume of advertising on the market for the goods and services at issue in the European Union (see, by analogy, judgment of 8 July 2009 in Mars v OHIM — Ludwig Schokolade (Shape of a chocolate bar), T‑28/08, EU:T:2009:253, paragraph 62 and the case-law cited).
116 In the third place, the reputation of the speakers at the Infosecurity exhibitions and the existence of publications in the international press referring to the Infosecurity exhibition are not sufficient to establish that the sign is perceived as a trade mark by consumers, particularly where, as in the present case, the sign at issue is directly descriptive of the goods and services covered by the application for registration.
117 In the fourth place, in so far as the applicant relies on ownership and management of websites (www.infosecurity.be, www.infosecurity.nl and www.infosecurity.co.uk), it is clear that since the mark applied for corresponds to a domain name, the fact that internet users visit the site on which the goods and services are offered does not suffice to prove that that mark has been ‘used’ within the meaning of Article 7(3) of Regulation No 207/2009 (judgment of 21 November 2012 in Getty Images v OHIM (PHOTOS.COM), T‑338/11, EU:T:2012:614, paragraph 58). Although registration of a trade mark which consists of signs or indications that are also used to designate a domain name is not excluded, as such, by virtue of such use, a sign which fulfils functions other than that of a trade mark is distinctive for the purposes of Article 7(1)(b) of Regulation No 207/2009 only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (see judgment of 12 December 2007 in DeTeMedien v OHIM (suchen.de), T‑117/06, EU:T:2007:385, paragraphs 35 and 36 and the case-law cited). That, however, is not so in the present case, since the mark applied for may be perceived immediately as a trade name or as the title of an exhibition (see paragraphs 81 to 90 above).
118 It is apparent from the foregoing that the third plea in law, alleging infringement of Article 7(3) of Regulation No 207/2009, must be dismissed and, therefore, the action must be dismissed in its entirety.
Costs
119 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, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Reed Exhibitions Ltd to pay the costs.
Martins Ribeiro | Gervasoni | Madise |
Delivered in open court in Luxembourg on 23 September 2015.
[Signatures]