Language of document :

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

21 November 2012 (*)

(Community trade mark – Application for the Community word mark PHOTOS.COM – Absolute grounds for refusal – Lack of distinctive character – Descriptive character – No distinctiveness acquired through use – Article 7(1)(b) and (c) and Article 7(3) of Regulation (EC) No 207/2009)

In Case T‑338/11,

Getty Images (US), Inc., established in New York, New York (United States), represented by P. Olson, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 6 April 2011 (Case R 1831/2010-2) concerning an application for registration of the word mark PHOTOS.COM as a Community trade mark,

THE GENERAL COURT (Fifth Chamber),

composed of S. Papasavvas, (Rapporteur), President, V. Vadapalas and K. O’Higgins, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 30 June 2011,

having regard to the response lodged at the Court Registry on 22 November 2011,

having regard to the decision of 16 January 2012 refusing leave to lodge a reply,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,

gives the following

Judgment

1        On 15 September 2009, the applicant – Getty Images (US), Inc. – filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        The mark in respect of which registration was sought is the word mark PHOTOS.COM.

3        The goods and services in respect of which registration was sought are in Classes 9, 42 and 45 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 – after the restriction made in the course of the procedure before OHIM – to the following description:

–        Class 9: ‘Computer software; computer software to enable searching of data; computer software relating to, downloaded via, or supplied from the internet; downloadable images; physical representations of images stored electronically for electronic manipulation, electronic transfer and/or electronic enhancement; electronic notice boards; magazines, newsletters, newspapers, brochures, weekly publications and other printed matter downloaded via the internet, intranet, extranet or mail servers; computer games programmes downloaded via the internet; CD ROMs; DVDs; videos; tapes; cassettes; computer accessories; screen savers; computer software; computer programs for accessing and interacting with computer networks, computer on line systems, databases, internet, intranet, extranet, LANs, web servers, and e-commerce servers and mail servers; machine readable data; electronic publications (downloadable) provided on line from databases or the internet’;

–        Class 42: ‘Installation and maintenance of computer software; information services relating to all the aforesaid services; all the aforesaid services also provided on-line from a computer database or the internet’;

–        Class 45: ‘Licensing of images and footage’.

4        By decision of 2 August 2010, the examiner refused the application for registration under Article 37 of Regulation No 207/2009 on the grounds that the mark applied for was descriptive and devoid of distinctive character for the purposes of Article 7(1)(b) and (c) and Article 7(2) of that regulation.

5        On 23 September 2010, the applicant lodged with OHIM a notice of appeal under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision to refuse registration of the mark for the goods and services referred to in paragraph 3 above.

6        By decision of 6 April 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal on the basis of Article 7(1)(b) and (c) and Article 7(3) of Regulation No 207/2009.

7        First, the Board of Appeal found, in essence, that the word sign PHOTOS.COM is descriptive in so far as it reproduces the characteristic structure of a domain name, of which the element ‘photos’ – which constitutes a second level domain – immediately informs the consumer that the goods and services covered by the trade mark application are related to photography or have it as their subject matter, and the element ‘.com’ – which is a top level domain (TLD) – would be understood by a substantial part of the relevant public as indicating an internet address. The Board of Appeal also pointed out that the addition of the element ‘.com’ to a descriptive sign cannot make it eligible for registration as a Community trade mark.

8        Secondly, the Board of Appeal found that, in the absence of any additional distinctive elements, the sign lacks distinctive character, because it merely indicates that the goods and services covered, or further information concerning those goods and services, can be obtained on-line from the website www.photos.com, but does not enable the commercial origin of the goods and services to be identified. The Board of Appeal also found that the fact that the applicant is the holder of a domain name which corresponds to the trade mark application at issue does not confer on it any right to claim protection under the EU legislation on the Community trade mark. Lastly, the Board of Appeal found that the applicant had failed to establish that the sign applied for had acquired distinctive character through the use which has been made of it, for the goods and services covered and in relation to the English-speaking part of the European Union. In that regard, the Board of Appeal noted that the evidence produced by the applicant in order to establish that the mark applied for had acquired distinctive character through use, for the purposes of Article 7(3) of Regulation No 207/2009, related almost exclusively to the use of the domain name ‘photos.com’ and did not demonstrate that the relevant public perceives the sign at issue as a trade mark.

 Forms of order sought by the parties

9        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

10      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

11      In support of its action, the applicant invokes four pleas in law, alleging: (i) infringement of Article 7(1)(c) of Regulation No 207/2009; (ii) infringement of Article 7(1)(b) of that regulation; (iii) breach of the principles of equal treatment and the protection of legitimate expectations; and (iv) infringement of Article 7(3) of Regulation No 207/2009.

12      It is appropriate, in the present case, to examine the second plea first and then the fourth, first and third pleas.

 The second plea in law: infringement of Article 7(1)(b) of Regulation No 207/2009

13      The applicant claims, in essence, that the Board of Appeal erred in finding that the mark applied for was devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. It submits, in that respect, that the Board of Appeal disregarded the fact that the application for the Community mark corresponds to the domain name previously registered by the applicant. According to the applicant, domain names – which are, in fact, exclusive – enable the origin of the goods or services covered by a mark to be clearly identified and, accordingly, Article 7(1)(b) of Regulation No 207/2009 is not applicable to them.

14      OHIM contests the applicant’s arguments.

15      Under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered. In addition, Article 7(2) of that regulation states that ‘[Article 7(1)] shall apply notwithstanding that the grounds of non-registrability obtain in only part of the [European Union]’.

16      Settled case-law establishes that the distinctiveness of a trade mark for the purposes of Article 7(1)(b) of Regulation No 207/2009 means that the mark in question makes it possible to identify the goods or the services for which registration is sought as originating from a given undertaking and accordingly to distinguish the goods or services from those of other undertakings, and that the mark is therefore able to fulfil the essential function of the trade mark (see judgment of 12 December 2007 in Case T‑117/06 DeTeMedien v OHIM (suchen.de), not published in the ECR, paragraph 24 and the case-law cited).

17      The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see Case C‑25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 25 and the case-law cited).

18      In the present case, it should be noted, first, that the Board of Appeal found – without being contradicted on that point by the applicant – that, as the sign at issue is intelligible both in English and in French, it is appropriate, in assessing the distinctive character of that sign, to focus on the English- and French-speaking parts of the European Union. In addition, since that sign can also be understood in other languages of the European Union, the Board of Appeal correctly found that the vast majority of the inhabitants of the European Union would understand its meaning. Furthermore, the Court confirms the Board of Appeal’s assessment that, in the light of the goods and services covered by the Community trade mark application, the relevant public is made up of both professionals and the public at large.

19      Accordingly, the targeted public by reference to which the existence of an absolute ground for refusal must be assessed is the average consumer in the European Union, drawn both from the general public and from professional circles and deemed to be reasonably well-informed, observant and circumspect, although the level of attention which can be expected from a professional is inevitably higher.

20      Secondly, it should be pointed out that – as the Board of Appeal observed – the mark applied for is composed of the term ‘photos’, which is an informal abbreviation of the word ‘photographie’ in French or ‘photograph’ in English, in its plural form, and the element ‘.com’, which constitutes an extension of a domain name in so far as it is a generic TLD. Consequently, as the Board of Appeal observed, without being contradicted by the applicant, the sign at issue reproduces the characteristic structure of a domain name and will be perceived as such by the relevant public.

21      In addition, it should be noted that the two components of the sign at issue, taken individually, are devoid of intrinsic distinctive character. In particular, the Court upholds the Board of Appeal’s assessment that the first component of the sign, namely the word ‘photos’, immediately informs the relevant public that the goods and services covered by the application are related to photography or have photography as their subject matter. It follows that that element is devoid of distinctive character in relation to the goods or services concerned.

22      As regards the element ‘.com’, it is important to note that this will immediately be recognised by the relevant public as referring to an internet site. In that respect, it should be pointed out that – as the Board of Appeal noted in its assessment – it is a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, the element ‘.com’ may also indicate that the goods and services covered by the trade mark application can be obtained or viewed on-line, or are internet-related. Accordingly, the element in question must also be considered to be devoid of distinctive character in respect of the goods or services concerned.

23      It follows from the foregoing that the sign applied for is made up of a combination of commonplace or technical elements which are not capable of distinguishing the applicant’s goods and services from those of other undertakings. Each of those elements is, therefore, devoid of distinctive character in respect of the goods or services concerned. Although the applicant does not dispute that the trade mark application concerns a word mark which constitutes a neologism, it nevertheless maintains that the fact that the neologism is a domain name means that there is a perceptible difference between that neologism and the sum of its two components.

24      In that regard, it is appropriate to examine the word sign PHOTOS.COM as a whole. According to settled case-law, the distinctiveness of trade marks composed of words and a typographical sign, such as that at issue in the present proceedings, may, in part, be assessed by examining each of its terms or elements, taken separately, but must in any event depend on an appraisal of the composite whole. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that in combination they cannot present a distinctive character (see suchen.de, paragraph 31 and the case-law cited).

25      The parties agree on the fact that the word mark PHOTOS.COM, considered as a whole, reproduces the characteristic structure of a second-level domain name (‘photos’) and a TLD (‘com’), separated by a dot. As the Board of Appeal pointed out, that mark has no additional features – in particular, graphic features – because the dot is typically used to separate the second level domain from the TLD.

26      Furthermore, the addition of the element ‘.com’ to the word ‘photos’, which is descriptive and devoid of distinctive character, does not render the sign distinctive as a whole. As the Board of Appeal pointed out, the distinctive part of a domain name is not the TLD, which is generic, but the second-level domain – which, in the present case, is devoid of distinctive character.

27      Additionally, it is important to note that, even if the registration of a sign as a Community mark is not conditional upon a finding of a certain level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark, the fact remains that – as the Board of Appeal found – there is no additional element to support the conclusion that the combination created by the commonplace and customary components ‘photos’ and ‘.com’ is unusual, fanciful or might have its own meaning, especially in the perception that the relevant public might have of the goods and services concerned (see, to that effect, suchen.de, paragraph 32).

28      Accordingly, in the absence of special characteristics peculiar to the sign at issue, the relevant public’s perception of that sign will be no different from its perception of the combination of the two words comprising the sign. It follows that, as the Board of Appeal rightly pointed out, the relevant public will not be able to distinguish the goods and services covered by the trade mark application from goods and services of a different commercial origin. Consequently, the sign is devoid of distinctive character.

29      That finding cannot be invalidated by the applicant’s arguments that, by dint of its unique and exclusive character, inherent in the way in which the internet operates, a domain name can enable consumers to distinguish the goods and services covered by the trade mark application and, in particular, to understand that the images come from the photo-magazine available on the internet site owned by the applicant: http://www.photos.com.

30      It should be borne in mind that a sign which fulfils functions other than that of a trade mark in the traditional sense is distinctive for the purposes of Article 7(1)(b) of Regulation No 207/2009 only if it can immediately be perceived as indicating the commercial origin of the goods or services covered and, accordingly, it enables the relevant public to distinguish, without any possibility of confusion, the goods or services of the proprietor of the mark from goods or services of a different commercial origin (see, to that effect, judgment of 28 September 2010 in Case T‑388/09 Rosenruist v OHIM (Representation of two curves on a pocket), not published in the ECR, paragraph 22).

31      In the present case, even though the mark applied for also indicates a domain name, it must first be observed that in view of its characteristics – in particular, its structure, the lack of distinctiveness of its components and the fact that it is a word mark – the relevant public will immediately perceive the sign applied for as the domain name for an internet site where photos can be downloaded, and not as indicating the commercial origin of the goods and services concerned. That finding is supported by the fact that, as the average consumer is no more than reasonably attentive, if the sign does not immediately indicate to him the origin of the goods or service designated, but merely gives him purely promotional, abstract information, he will not take the time either to think about the sign’s various possible functions or to see it as a trade mark (see, to that effect, suchen.de, paragraph 37).

32      Secondly, a distinction must be drawn between rights derived from the registration of a domain name, on the one hand, and rights derived from the registration of a sign as a Community trade mark, on the other. Accordingly, the fact that the applicant owns the domain name ‘photos.com’ does not mean that, as a consequence, that name can be registered as a Community trade mark. For that to be possible, it must satisfy all the conditions laid down in Regulation No 207/2009 in that regard (see, to that effect, suchen.de, paragraph 44).

33      The applicant refers to the fact that the consumer merely has to enter the name of the sign at issue on any internet browser – without having to enter the internet address of its website – to be directed to its website www.photos.com and to have access to those goods and services. However, the applicant’s contention that this proves that the sign indicates the commercial origin of the goods and services offered on its website must be rejected as unfounded. The distinctive character of a mark which corresponds to a domain name cannot be assessed by reference to the steps taken by an internet user to access the goods or services covered by the trade mark application and available on the internet, but – as was pointed out in paragraph 17 above – by reference to the goods or services in respect of which registration is sought and to the perception of the relevant public. Besides, the applicant’s argument must be rejected in any event as ineffective in that it does not call into question the Board of Appeal’s assertion that the sign in itself does not enable the specific commercial origin of the goods and services covered to be identified, because the relevant public will perceive it as a source of information for goods related to photography which are accessible on the internet.

34      In the light of the foregoing, it must be held that the Board of Appeal was entitled to find that, from the point of view of the relevant public, the word sign PHOTOS.COM is devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 as regards the goods and services concerned.

35      The second plea in law must therefore be rejected.

36      However, under Article 7(3) of Regulation No 207/2009, Article 7(1)(b) to (d) of that regulation 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. Accordingly, it is necessary to examine the fourth plea in law raised by the applicant.

 The fourth plea in law: infringement of Article 7(3) of Regulation No 207/2009

37      The applicant submits that, since 2003, and therefore before the date on which the application for registration of the mark was filed, the applicant and its predecessor have used the mark PHOTOS.COM continuously to identify an internet-based, subscription photo and/or image database service. It argues that the Board of Appeal was wrong to conclude that the mark applied for had not acquired distinctive character because of the use made of it and that the contested decision is based on ‘misunderstanding and misconception’ of the evidence produced in that connection.

38      OHIM disputes the applicant’s arguments.

39      It should be borne in mind that Article 7(3) of Regulation No 207/2009 does not establish a separate right to have a trade mark registered. It allows an exception to the grounds for refusal listed in Article 7(1)(b) to (d) of that regulation. Its scope must therefore be construed in the light of those grounds for refusal (see judgment of 17 May 2011 in Case T‑7/10 Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), not published in the ECR, paragraph 39 and the case-law cited).

40      It is also apparent from the case-law that, for a mark to have acquired distinctiveness through use, it is necessary that at least a significant proportion of the relevant public can, by virtue of that mark, identify the goods or services concerned as originating from a particular undertaking. Also, in order to have the registration of a mark accepted under Article 7(3) of Regulation No 207/2009, the distinctive character acquired in consequence of the use of that mark must be demonstrated in the substantial part of the European Union in which it lacked distinctiveness under Article 7(1)(b) to (d) of that regulation (see Case T‑262/04 BIC v OHIM (Shape of a lighter) [2005] ECR II‑5959, paragraphs 61 and 62 and the case-law cited).

41      In determining whether a mark has acquired distinctive character because of the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the goods concerned as originating from a particular undertaking, and accordingly to distinguish them from goods of other undertakings (Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee [1999] ECR I‑2779, paragraph 49).

42      In that regard, account must be taken of, in particular, 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, by virtue of the mark, identify the goods or services as originating from a particular undertaking; statements from chambers of commerce and industry or other trade and professional associations; and opinion polls (Shape of a lighter, paragraph 64 and the case-law cited).

43      If, on the basis of those factors, the competent authority finds that, by virtue of the trade mark, the relevant class of persons, or at least a significant proportion thereof, identifies the goods or services as originating from a particular undertaking, it must in any event conclude that the condition laid down in Article 7(3) of Regulation No 207/2009 for registering the mark is satisfied. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely on the basis of general, abstract data (see υγεία, paragraph 45 and the case-law cited).

44      Furthermore, it should be noted that the distinctive character of a mark, including distinctiveness acquired through use, must be assessed in relation to the goods in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods in question, who is reasonably well informed and reasonably observant and circumspect (see judgment of 14 September 2009 in Case T‑152/07 Lange Uhren v OHIM (Geometric shapes on a watch-face), not published in the ECR, paragraph 127 and the case-law cited).

45      Lastly, according to settled case-law, Article 7(3) of Regulation No 207/2009 must be interpreted as meaning that a mark must have become distinctive through use before the application was filed. Accordingly, it is irrelevant that the mark may have acquired distinctiveness through use after the application was filed but before OHIM – in the person of the examiner or, as the case my be, the Board of Appeal – determined whether there are any absolute grounds for refusing registration of that mark. It follows that OHIM may not take account of any evidence of use relating to the period subsequent to the date of filing (see Case T‑247/01 eCopy v OHIM (ECOPY) [2002] ECR II‑5301, paragraph 36; judgment of 20 September 2007 in Case T‑461/04 Imagination Technologies v OHIM (PURE DIGITAL), not published in the ECR, paragraph 77; and judgment of 30 June 2011 in Case T‑463/08, Imagion v OHIM (DYNAMIC HD), not published in the ECR, paragraph 43). That interpretation is the only one compatible with the logic of the system of absolute and relative grounds for refusal with regard to the registration of Community trade marks, according to which the date of filing of the application for registration determines the priority of one mark over another (PURE DIGITAL, paragraph 77).

46      It is in the light of those considerations that it must be considered whether, in the present case, the Board of Appeal erred in law in rejecting the applicant’s argument that the mark applied for should have been accepted for registration by virtue of Article 7(3) of Regulation No 207/2009 and in finding that the evidence adduced in support of that argument was insufficient.

47      In that regard, it should be noted that the applicant submitted the following evidence:

–        extracts from the results of internet searches for ‘photos.com’ using a search engine, conducted from Denmark, Finland, Sweden and the United Kingdom between 23 September 2002 and 5 January 2008;

–        a declaration on oath by the director of its legal department that the mark applied for had acquired distinctive character through use throughout the territory of the European Union since its registration as a domain name in 1995, as attested by the evidence appended to that declaration;

–        printouts from the website www.photos.com from the period between September 2002 and January 2008;

–        the world ranking of its website in 2010 according to a specialist site;

–        two documents listing the number of visitors who consulted the site between May 2008 and September 2009 and, classed by EU Member State, between June 2006 and December 2008;

–        a document listing European subscribers or licence holders since October 2009;

–        data regarding its revenue and annual turnover registered in the European Union between 2005 and 2008;

–        two advertisements of the website www.photos.com by the British Association of Picture Libraries and Agencies;

–        copies of articles published online mentioning ‘Photos.com’ and including images which, according to those articles, come from ‘Photos.com’;

–        a sample of a newsletter from May 2007; and

–        advertisements from German, French and English-language specialist publications.

48      As regards, in the first place, the results of internet searches using a search engine, it must be held that – contrary to the assertions made by the applicant – such documents do not establish that the mark applied for had acquired distinctive character through use in relation to the list of goods and services covered by that mark. While it emerges from the results of the research in question that the word mark PHOTOS.COM was recommended on discussion fora, blogs or specialist sites by subscribers in Denmark, Finland, Sweden and the United Kingdom as offering a significant number of quality photographs, it is none the less impossible to establish a link between the sign at issue and all the goods and services covered by the application for registration.

49      It follows that, while the documents in question give some indication as to the consultation of the applicant’s website, and thus the use of its domain name and the promotion of its content by a certain number of users located in four Member States of the European Union, they are not sufficient evidence that the sign at issue has acquired distinctiveness through use and has accordingly become distinctive as a mark in a substantial part of the territory of the European Union. In addition, contrary to the applicant’s assertions, in default of data regarding the market share held by the owner of the mark applied for because of the mark, or the intensity, frequency and duration of use of the mark, those documents cannot serve to establish that a significant proportion of the relevant public were able, by virtue of that mark, to identify the goods or services concerned as originating from a particular undertaking.

50      As regards, in the second place, the declaration on oath by the director of the applicant’s legal department, it should be recalled that, in order to assess the probative value of such a document, it is first necessary to check the plausibility and truthfulness of the information it contains. In that regard, account must be taken, inter alia, of the origin of the document; the circumstances of its preparation; the party to whom it is addressed; and of whether it seems from its content to be sensible and reliable (see Shape of a lighter, paragraph 78 and the case-law cited).

51      In so far as that declaration was not made by a third party, but by a person connected to the applicant through an employment relationship, it cannot in itself constitute sufficient evidence that the mark applied for has acquired distinctive character through use. In consequence, it must be treated as merely indicative and needs to be corroborated by other evidence (see, to that effect, Shape of a lighter, paragraph 79).

52      In that respect, the Court notes that the declaration refers to the greater part of the evidence produced by the applicant before the Board of Appeal, the probative value of which has been appraised by the Board of Appeal. The Court must therefore examine the Board of Appeal’s finding that that evidence did not establish that the mark applied for had acquired distinctive character through use.

53      In that regard, it should be noted, first, that, although the applicant produced a list of European members who had subscribed or purchased a licence on its website for the months from October to December 2009, it must be held that that list is not relevant in the present case, because it relates to a period subsequent to the date on which the application for registration of the mark was filed (15 September 2009). As the Board of Appeal correctly found, and as was noted in paragraph 45 above, evidence of use relating to a period subsequent to that date cannot be taken into account for the purposes of assessing whether distinctive character has been acquired through use.

54      Secondly, as regards the photos which, according to the applicant, come from the website www.photos.com and appear in press articles available on-line or published in independent magazines, the sample newsletter from May 2007 and the advertisements published in specialist magazines, it must be held that this evidence does not enable the commercial origin of the goods and services covered by the trade mark application to be identified as those items merely mention the word sign ‘PHOTOS.COM’ without reference to those goods and services.

55      Contrary to the applicant’s claims, and as the Board of Appeal noted, the statements from third parties contained in those press articles, concerning the possibility for ‘users to buy individual images from its vast library of stock photos on PHOTOS.COM’, do not make it possible to determine whether they concern a trade mark or the website on which those photos are available. For the same reason, it is necessary to reject the applicant’s argument that the mere statement ‘photo credit: Photos.com’ in newspapers and on internet sites intended for the European public – from which the applicant produced extracts – demonstrates that the relevant public will recognise the commercial origin of the goods and services covered and will attribute this to the mark applied for.

56      Thirdly, as regards the printouts from the website www.photos.com which, according to the applicant, demonstrate the use of its website from September 2002 until January 2008, it must be observed that those printouts are not relevant for the purposes of assessing the distinctive character acquired by the mark applied for in the territory of the European Union, because – with one exception – they concern the territory of the United States, as is apparent from the currency indicated for taking out a subscription, namely the US dollar. The applicant’s contention that the fact that visitors to its website can convert the currency indicated into euro proves that its website is also intended for European consumers cannot be accepted.

57      Moreover, the applicant has provided no evidence of distinctiveness acquired through use in relation to English- and French‑speaking EU consumers. All it produced was a printout from the Italian version of its site setting out information in Italian regarding the services covered by the subscription, and the price in euro. However, that evidence is not representative of the relevant public and is not sufficient to show that, in a significant part of the territory of the European Union, the mark had acquired distinctive character through use in respect of the goods and services covered by the trade mark application, despite the fact that the applicant’s website can be consulted in various languages of the European Union. It is apparent from the case-law that, in order to have the registration of a mark accepted under Article 7(3) of Regulation No 207/2009, the distinctive character acquired in consequence of the use of that mark must be demonstrated in the substantial part of the European Union in which it lacked distinctiveness under Article 7(1)(b) of that regulation (Case T‑91/99 Ford Motor v OHIM (OPTIONS) [2000] ECR II‑1925, paragraph 27).

58      Furthermore, although the registration of a mark composed of signs or indications which are also used to designate a domain name is not thereby excluded as such, a sign which fulfils functions other than that of a trade mark is distinctive only if it can be perceived immediately as an indication of the commercial origin of the goods or services in question (see, to that effect, suchen.de, paragraphs 35 and 36 and the case-law cited). However, contrary to the claims made by the applicant, the fact that its website is accessible worldwide, so that anyone can access it from anywhere and obtain information on the goods and services offered, does not mean that the domain name which the applicant owns has also fulfilled the function of a trade mark for the goods and services for which the registration is sought. As the Board of Appeal correctly found, the documents referred to in paragraph 56 above are not relevant for the purposes of demonstrating that those visitors to the website actually used the services offered by the mark applied for. In so far as the trade mark application corresponds to a domain name, the fact that internet users visit the site on which the goods and services are offered is not sufficient to establish that use has been made of that mark for the purposes of Article 7(3) of Regulation No 207/2009.

59      That conclusion also applies to the two lists of visitors to the applicant’s website between May 2008 and September 2009, and between June 2006 and December 2008. Furthermore, as the Board of Appeal correctly pointed out, those documents do not make any reference either to the date on which the data included were generated or to the person responsible for preparing those data, with the result that it cannot be inferred that they were collated by a third party. Accordingly, the Board of Appeal was correct in finding that, just as no account can be taken of the evidence subsequent to the date on which application for registration was filed, neither can account be taken of those undated documents for the purposes of establishing distinctiveness acquired through use, given that the distinctive character must have existed at a specific date, namely the date on which the application was filed.

60      Nor can the Court accept the applicant’s argument that the fact that the declaration made by the director of its legal department attests to the date on which the data concerning the number of visitors to its website were generated is sufficient to mean that those data constitute solid proof concerning the use made of the mark applied for on the internet. Even supposing that that declaration indicated the date on which the lists of visitors were compiled for the purposes of the case-law cited in paragraph 51 above, the fact remains that the lists, in themselves, are devoid of probative value, because, in accordance with paragraph 58 above, the number of visitors to the applicant’s website cannot establish that that mark has acquired distinctive character through use.

61      Fourthly, as regards the documents produced by the applicant providing information on the world ranking of its website and the number of visitors recorded, it should be pointed out that that ranking bears a date subsequent to the date on which the application for registration of the mark was filed (30 December 2010), and that it does not establish that the expression ‘photos.com’ has been used other than in relation to the applicant’s website. Indeed, those documents contain no reference to the mark PHOTOS.COM.

62      Lastly, as regards the data concerning the volume of sales and the annual revenues registered for the countries of the European Union, the mere production of information on sales volumes does not as such – as the Board of Appeal noted – explicitly show that the relevant public perceives the sign at issue as an indication of the commercial origin of the goods and services covered. Although the applicant’s sales turnover between 2005 and 2008 throughout the European Union emerges from those documents, such data fails – contrary to the applicant’s contention – to establish a link with the goods and services covered by the trade mark application. Moreover, the figures relating to the volume of sales and the annual revenues attained do not enable an assessment to be made of the market share held by the applicant, by virtue of the mark applied for, in respect of the goods and services concerned.

63      In the light of all the foregoing, it must be held that – as the Board of Appeal correctly pointed out – the evidence produced by the applicant relates almost exclusively to the use of the domain name ‘photos.com’. However, use of the sign at issue other than as a trade mark does not constitute proof of distinctive character acquired through use. Furthermore, the applicant has not demonstrated that the use made of the mark applied for has been representative, such as to show the market share held by the applicant, by virtue of that mark, in the English-speaking parts of the European Union.

64      Consequently, as it is not possible to draw any firm conclusions concerning the factors mentioned in paragraph 42 above from the evidence produced, the Board of Appeal was entitled to find that the documents produced by the applicant were insufficient to prove that, for the purposes of Article 7(3) of Regulation No 207/2009, the mark applied for had acquired distinctive character through the use made of it.

65      The fourth plea must therefore be rejected.

66      With regard to the first plea, it should be borne in mind that Article 7(1) of Regulation No 207/2009 makes it clear that, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal listed in that provision applies (see judgment of 12 September 2007 in Case T‑164/06 ColArt/Americas v OHIM (BASICS), not published in the ECR, paragraph 31 and the case-law cited).

67      It follows that, since the General Court has concluded, after examining the second and fourth pleas respectively, that the Board of Appeal was fully entitled to find that the mark applied for was devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009 and that it had not been demonstrated that that mark had acquired distinctive character through the use made of it for the purposes of Article 7(3) of that regulation, there is no need to examine the first plea raised by the applicant, alleging infringement of Article 7(1)(c) of Regulation No 207/2009.

 The third plea in law: breach of the principles of equal treatment and the protection of legitimate expectations

68      The applicant submits that, in failing to take account of the earlier registrations of two identical Community trade marks belonging to it for goods and services similar to those covered by the mark applied for, the Board of Appeal acted in breach of the principles of equal treatment and the protection of legitimate expectations. According to the applicant, those registrations give rise to a presumption that the mark at issue is eligible for registration, and that presumption is supported by the fact that none of its competitors has contested the validity of those registrations. Furthermore, the applicant asserts that the registrations in question took place without proof of distinctive character acquired through use being required.

69      It should be noted that, according to case-law, OHIM is under a duty to exercise its powers in accordance with the general principles of EU law. In the light of the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and must consider with especial care whether it should decide in the same way or not. However, the way in which those principles 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 comprehensive, in order to prevent trade marks from being improperly registered. Accordingly, such an 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 (see, to that effect, judgment of 10 March 2011 in Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM, not published in the ECR, paragraphs 73 to 77 and the case-law cited).

70      In the present case, it has been held, in relation to the second plea in law, that the Board of Appeal was fully entitled to find that, having regard to the goods at issue and the way in which the sign would be perceived by the relevant class of persons, the application for registration was covered by the ground for refusal laid down in Article 7(1)(b) of Regulation No 207/2009. It follows that the applicant cannot, in support of its allegations of breach of the principles of equal treatment and the protection of legitimate expectations, usefully rely on earlier OHIM decisions (see, to that effect, Agencja Wydawnicza Technopol v OHIM, paragraphs 78 and 79).

71      The third plea must therefore be rejected as unfounded and, in consequence, the action must be dismissed in its entirety.

 Costs

72      Under Article 87(2) 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 (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Getty Images (US), Inc. to pay the costs.

Papasavvas

Vadapalas

O’Higgins

Delivered in open court in Luxembourg on 21 November 2012.

[Signatures]


* Language of the case: English.