Language of document :

JUDGMENT OF THE GENERAL COURT (Second Chamber)

6 February 2013 (*)

(Community trade mark – Application for Community word mark TRANSCENDENTAL MEDITATION – Absolute grounds for refusal – Decision of the Board of Appeal remitting the case to the Examination Division – Article 65(4) of Regulation (EC) No 207/2009 – Admissibility – Descriptive character – Article 7(1)(c) of Regulation No 207/2009 – Relevant public)

In Case T‑412/11,

Maharishi Foundation Ltd, established in Saint-Hélier (Jersey), represented by A. Meijboom, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 24 March 2011 (Case R 1293/2010‑2), concerning an application for registration of the word sign TRANSCENDENTAL MEDITATION as a Community trade mark,

THE GENERAL COURT (Second Chamber),

composed of N.J. Forwood, President, F. Dehousse (Rapporteur) and J. Schwarcz, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 28 July 2011,

having regard to the response lodged at the Court Registry on 28 November 2011,

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 Court, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 4 June 2009 the applicant, Maharishi Foundation 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) under 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 trade mark was sought for the word sign TRANSCENDENTAL MEDITATION.

3        The goods and services for which registration was sought are in Classes 16, 41, 44 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, to the following description:

–        Class 16: Instructional and teaching material (except apparatus);

–        Class 41: Education; providing of training; entertainment;

–        Class 44: Medical services; hygienic and beauty care for human beings;

–        Class 45: Personal and social services rendered by others to meet the needs of individuals.

4        By decision of 20 May 2010, the examiner rejected the application for registration on the basis of Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 for the goods and services listed in paragraph 3 above, and found that the applicant had failed to submit proof that the mark applied for had acquired distinctive character through use, within the meaning of Article 7(3) of Regulation No 207/2009, in the part of the European Union where it lacked such character, that is, in Ireland, Malta and in the United Kingdom.

5        On 13 July 2010, the applicant filed an appeal against the examiner’s decision with OHIM under Articles 58 to 64 of Regulation No 207/2009.

6        By decision of 24 March 2011 (‘the contested decision’), the Second Board of Appeal of OHIM considered, in essence, first, that the application for registration of the mark should be rejected pursuant to Article 7(1)(b) and (c), and Article 7(2) of Regulation No 207/2009 and, secondly, with regard to the application of Article 7(3) of Regulation No 207/2009, that it was appropriate to remit the case to the Examination Division pursuant to Article 64(2) of that regulation.

7        First, with regard to the relevant public, it is apparent from paragraph 17 of the contested decision that the Board of Appeal considered that the goods and services in question were directed at the public at large, with the exception of ‘instructional and teaching material’, which is directed at professionals in the educational sector. Furthermore, the Board of Appeal found that the number of countries where basic English can be understood is greater than the number of countries where English is the native language. Accordingly, it considered that the relevant consumers went beyond the general public in Ireland, Malta and the United Kingdom and encompassed almost the whole European Union, with the exception of Bulgaria and Greece. It referred to the case-law of the General Court, which has already confirmed that a basic understanding of the English language by the general public, in any event in the Scandinavian countries, the Netherlands and Finland, is a well-known fact. The same applies to Malta, where English is one of the official languages, and to Cyprus. Consequently, the relevant public includes, at the very least, the consumers of those countries. It added that, in any event, bearing in mind that the words ‘transcendental’ and ‘meditation’ are words with a Latin origin present in almost all languages of the European Union, in identical or very close terms which would allow the public to recognise them (‘meditación transcendental’ in Spanish, ‘transcendentni meditace’ in Czech, ‘transcendental meditation’ in Danish, English and Swedish, ‘transzendentale meditation’ in German, ‘transsendentaalne meditatsioon’ in Estonian, ‘meditazione trascendentale’ in Italian, ‘transcendentala meditacija’ in Latvian, ‘transcendentali meditacija’ in Lithuanian, ‘transzcendens meditáció’ in Hungarian, ‘transcendente meditatie’ in Dutch, ‘medytacja transcendentalna’ in Polish, ‘meditação transcendental’ in Portuguese, ‘meditatie transcendentala’ in Romanian, ‘transcendentálna meditácia’ in Slovak, ‘transcedentalna meditacija’ in Slovenian and ‘transsendenttinen meditaatio’ in Finnish), the relevant consumers, in the present case, went beyond the general public in Ireland, Malta and the United Kingdom, and encompassed almost the whole European Union, with the exception of Bulgaria and Greece.

8        Then, after referring to the meanings of the English words ‘transcendental’ and ‘meditation’ and after noting that the relevant public would be able to understand at least one meaning of ‘transcendental meditation’, that is, the action of meditating on issues relating to a spiritual realm, the Board of Appeal found that ‘transcendental meditation’ was a grammatically correct combination of words that is perfectly suitable to identify the subject-matter of the instructional and teaching material applied for in Class 16 and the education services applied for in Class 41. According to it, the expression ‘transcendental meditation’ in relation to those goods and services will be immediately understood by consumers as a mere indication that those goods (for example, books or other publications) and services (for example, courses) provide consumers with guidance about the action of meditating about issues relating to a spiritual realm. That expression will also be understood by the relevant public, without further thought, as a mere description of the activity of which the remaining services applied for in Classes 41, 44 and 45 consist. Thus, the expression ‘transcendental meditation’ will directly inform consumers that those services consist of the action of meditating about issues relating to a spiritual realm, and consequently in each case for training, entertainment, medical, hygienic, beauty-care, social or personal purposes. The Board of Appeal therefore found that there was a sufficiently direct and specific relationship between the mark TRANSCENDENTAL MEDITATION and the goods and services in question, and that, as a whole, that mark was therefore descriptive for those goods and services and that the trade mark application thus had to be rejected under Article 7(1)(c) of Regulation No 207/2009.

9        Furthermore, the Board of Appeal considered that the sign ‘transcendental meditation’ also lacked any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, for the goods and services in question, not only because a descriptive mark necessarily lacks distinctiveness, but also because it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them 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 of the goods or services in question.

10      The Board of Appeal added that the fact that transcendental meditation is a meditation technique invented by Maharishi Mahesh Yogi does not change the fact that those words, as well as their combination, had a meaning in English, that that expression was a generic name since it is the only way to refer to a specific meditation technique, and that such a combination transmits a message to the general public that directly informs them about the content of the goods and services applied for. Furthermore, in that situation, allowing the registration of the trade mark applied for would amount to conferring a monopoly on the technique itself.

11      Finally, the Board of Appeal examined the argument that the mark has acquired distinctive character through use, under Article 7(3) of Regulation No 207/2009. It noted, first, that the additional evidence submitted to it, in relation to Ireland, Malta and the United Kingdom, should be assessed and that, under Article 64(1) of Regulation No 207/2009, it could either exercise any power within the competence of the department which was responsible for the contested decision, or remit the case to that department for further prosecution. It then took the view that, given the reasoning contained in paragraph 17 of its decision (see paragraph 7 above), the examiner erroneously restricted the relevant territory to Ireland, Malta and the United Kingdom, as the trade mark applied for was descriptive of the goods and services at issue or lacked distinctive character in relation to them in the territories of other Member States of the European Union, for which the applicant should be invited to submit evidence of acquired distinctiveness through use.

12      It therefore found it appropriate to remit the case to the Examination Division for further prosecution pursuant to Article 64(2) of Regulation No 207/2009.

13      In the operative part of the contested decision, the Board of Appeal indicated that it allowed the appeal and remitted the case to the Examination Division for further prosecution.

 Forms of order sought

14      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

15      OHIM contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

 Admissibility of the action

16      OHIM claims that the contested decision is not yet final as the Board of Appeal has referred the case back to the examiner. The sign applied for will thus be registered if the conditions laid down in Article 7(3) of Regulation No 207/2009 are complied with, and the Applicant will not be allowed to challenge such a decision. OHIM asserts that Article 65 of Regulation No 207/2009 suggests that an action for annulment can only be brought against final decisions disposing of all the substantive issues, but leaves it to the Court to decide whether such an action can be brought against decisions disposing of the substantive issues in part only.

17      The Court points out that Article 64 of Regulation No 207/2009 provides:

‘1. Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

2. If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.

...’

18      Article 65 of that regulation provides:

‘1. Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals.

4. The action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision.

…’

19      It follows from Article 65(4) of that regulation that, where a decision of the Board of Appeal upholds the claims of the party concerned in their entirety, that party does not have standing to bring an action before the Court (see, to that effect, the order of 14 July 2009 in Case T‑300/08 Hoo Hing v OHIM – Tresplain Investments (Golden Elephant Brand), not published in the ECR, paragraph 27).

20      In the present case, the applicant requested the Board of Appeal to annul the examiner’s decision.

21      It is true that it is apparent from the operative part of the contested decision that the Board of Appeal allowed the applicant’s appeal and decided to remit the case to the Examination Division.

22      However, the operative part must be read in the light of the grounds constituting its essential basis, in so far as they are necessary for the purposes of determining the exact meaning of what was stated in the operative part (see, to that effect and by analogy, Case T-262/09 Safariland v OHIM — DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR) [2009] ECR II‑1629, paragraph 41, and the case-law cited).

23      However, it is apparent from paragraph 28 of the contested decision that the Board of Appeal upheld the conclusion of the examiner that the trade mark must be rejected under Article 7(1)(c) of Regulation No 207/2009. Likewise, at paragraph 35 of the contested decision, it stated that the mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of that regulation. It therefore confirmed the conclusion of the examiner, according to which the trade mark must be refused registration under Article 7(1)(b) and 7(2) of Regulation No 207/2009.

24      Clearly, therefore, the contested decision resolves the issue raised with regard to Article 7(1)(b) and (c) of Regulation No 207/2009 unfavourably for the applicant by confirming the decision of the examiner in that regard. The new examination before the Examination Division should not include the issues of the descriptive character and the absence of intrinsic distinctive character within the meaning of Article 7(1) of that regulation, since the referring body is bound by the ratio decidendi of the contested decision, in accordance with Article 64(2) of Regulation No 207/2009.

25      It must therefore be considered that, with regard to Article 7(1)(b) and (c) of Regulation No 207/2009, the Board of Appeal did not fully uphold the applicant’s claims within the meaning of Article 65(4) of Regulation No 207/2009, as interpreted by the abovementioned case-law (see paragraph 19 above).

26      Furthermore, the contested decision has legal effects for the applicant. In the context of the examination of Article 7(1) of Regulation No 207/2009, the Board of Appeal enlarged the relevant territory to all the Member States of the European Union, with the exception of Bulgaria and Greece (paragraph 17 of the contested decision).

27      It is apparent from the case-law that a mark can be registered under Article 7(3) of Regulation No 207/2009 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it initially had descriptive character for the purposes of Article 7(1)(c) (see, to that effect, order in Case C‑553/08 P Powerserv Personalservice v OHIM [2009] ECR I‑11361, paragraph 60, and the case-law cited).

28      Consequently, distinctiveness acquired through use must be demonstrated in all the Member States in which the existence of the ground for refusal has been established (see judgment of 9 December 2010 in Case T-307/09 Earle Beauty v OHIM (NATURALLY ACTIVE), not published in the ECR, paragraph 49, and the case-law cited), even if it could be considered unreasonable to require proof of such acquisition for each individual Member State (see, to that effect, Case C‑98/11 P Chocoladefabriken Lindt & Sprüngli v OHIM (2012) ECR I‑0000, paragraph 62).

29      Accordingly, in the present case, the enlargement of the relevant territory carried out in the context of Article 7(1) of Regulation No 207/2009 by the Board of Appeal has a direct effect on the evidence that the applicant must submit, before the Examination Division, in the context of Article 7(3) of Regulation No 207/2009.

30      The contested decision, which expresses the position of the Board of Appeal with regard to Article 7(1) of Regulation No 207/2009 and binds the Examination Division, thus produces legal effects with regard to the applicant.

31      In light of the foregoing, the present plea of inadmissibility raised by OHIM must be rejected.

 Admissibility of the annexes to the application

32      OHIM contends that Annexes A 1 to A 8 were not submitted during the administrative phase of the proceedings and that, apart from Annexes A.4 and A.7, which consist of entries in dictionaries, they are therefore inadmissible.

33      It should be noted that Annexes A 2, A 3, A 6 and A 8, produced after the contested decision, were not submitted to OHIM.

34      Annex A 4 contains the number of occurrences of the term ‘transcendantal’ in the newspaper ‘Le Figaro’ and it is not apparent from the OHIM administrative file that that document was submitted to it.

35      Annexe A 5 contains the definitions in various dictionaries of the term ‘transcendental’. Even if certain definitions were submitted during the administrative phase of the proceedings, Annex A 5 was not produced as such before OHIM.

36      Accordingly, those documents, produced for the first time before the General Court, cannot be taken into consideration. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative force (see, by analogy, Case C-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 19, and NATURALLY ACTIVE, paragraph 28 above, paragraph 12). Facts which are pleaded before the Court without having previously been produced before the adjudicating bodies of OHIM can affect the legality of such a decision only if OHIM should have taken them into account of its own motion (judgment of the General Court of 29 September 2010 in Case T‑200/08 Interflon v OHIM – Illinois Tool Works (FOODLUBE), not published in the ECR, paragraph 11).

37      Annex A 1 contains the contested decision and cannot therefore be held inadmissible.

38      Annex A 7 contains the translations of the mark applied for in various languages and its admissibility is accepted by OHIM. It should be noted that those translations were referred to in the contested decision. The reference to those translations therefore forms part of the factual context of the proceedings before the Board of Appeal. The case-law, according to which, since those translations were not produced previously before OHIM, they should be declared inadmissible without it being necessary to assess their probative force (see paragraph 36 above), is therefore not applicable to them.

39      It is therefore appropriate to exclude Annexes A 2 to A 6 and A 8, produced for the first time before the General Court, without it being necessary to assess their probative force.

 Substance

40      In support of its action, the applicant relies on four pleas in law, alleging infringement of Article 75 and Article 7(1)(a) of Regulation No 207/2009, Article 7(1)(b), Article 7(1)(c) and Article 7(3) of that regulation respectively.

 The first plea, alleging infringement of Article 75 and Article 7(1)(a) of Regulation No 207/2009

41      First, the applicant claims that the Board of Appeal, without explicitly deciding on Article 7(1)(a) of Regulation No 207/2009, nevertheless took the view that the sign applied for was generic, which was incorrect.

42      Under Article 7(1)(a) of Regulation No 207/2009, signs which do not conform to the requirements of Article 4 of that regulation are not to be registered. Article 4 provides that ‘[a] Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings’. 

43      In the present case, it suffices to note that the contested decision is not based on Article 7(1)(a) of Regulation No 207/2009. The application of that provision is not, therefore, the subject of the present dispute, for the purposes of Article 65 of that regulation and, therefore, of the review of the legality that the Courts of the European Union are under a duty to exercise in the present case (see, to that effect, the judgment of 12 March 2008 in Case T‑341/06 Compagnie générale de diététique v OHIM (GARUM), not published in the ECR, paragraph 25, and Case T‑201/09 Rügen Fisch v OHIM – Schwaaner Fischwaren (SCOMBER MIX), not published in the ECR, paragraph 34). Furthermore, it is in the context of the examination with regard to Article 7(1)(b) and (c) of Regulation No 207/2009 that the contested decision describes the expression ‘transcendental meditation’ as generic, to demonstrate the descriptive and non-distinctive character of the mark applied for.

44      That complaint is therefore inadmissible.

45      Secondly, the applicant claims that the Board of Appeal failed to permit it to present its comments in that regard.

46      However, it must be held that that assertion is incorrect, since the applicant had the opportunity to discuss the exact meaning of the sign applied for during the administrative phase. Moreover, it is apparent from paragraph 3 of the contested decision that it challenged before the examiner the allegation that the term at issue could be described as generic. The applicant was therefore able to present its comments in that regard.

47      That complaint must therefore be rejected as unfounded.

48      Accordingly, the present plea must be rejected as partially inadmissible and partially unfounded.

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

49      It is appropriate to examine the applicant’s arguments based on the lack of descriptive character of the sign at issue and, consequently, the application of Article 7(1)(c) of Regulation No 207/2009 to the present case (third plea), before its arguments based on the distinctiveness of that sign (second plea), since the Board of Appeal based the partial refusal to register the mark applied for, primarily and essentially, on that provision.

50      It should be noted that, 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, may not 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 European Union.

51      Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, which consists of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see, to that effect, Case C‑173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I‑551, paragraph 62, and Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑0000, paragraph 37, and the case-law cited).

52      The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve, in normal usage from the point of view of the target public, to designate – either directly or by reference to one of their essential characteristics – the goods or service in respect of which registration is sought (see, to that effect, Case C-383/99 P Procter & Gamble v OHIM [2001] ECR 1‑6251, paragraph 39, and Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-2383, paragraph 24).

53      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 with the goods or 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 (PAPERLAB, paragraph 52 above, paragraph 25). Furthermore, to come within Article 7(1)(c) of Regulation No 207/2009, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods or services concerned (Case T‑28/10 Euro-Information v OHIM (EURO AUTOMATIC PAYMENT) [2011] ECR II‑1535, paragraph 50).

54      It is also important to bear in mind that the distinctiveness of a sign may be assessed, firstly, only in relation to the understanding of the sign by the relevant public and, secondly, in relation to the goods or services concerned (Case T-160/07 Lancôme v OHIM – CMS Hasche Sigle (COLOR EDITION) [2008] ECR II-1733, paragraph 44, and judgment of 6 March 2012 in Case T‑565/10 ThyssenKrupp Steel Europe v OHIM (Highprotect), not published in the ECR).

55      Furthermore, since the word mark at issue is composed of a number of elements, it is necessary to ascertain whether the descriptive character which the components have been found to have is also established for the word element as a whole (see, to that effect and by analogy, Case C‑273/05 P OHIM v Celltech [2007] ECR I‑2883, paragraphs 76 and 79).

56      The present plea must be examined in the light of those considerations.

–       The relevant public

57      First, it should be noted that the goods covered by the registration applied for, which fall within Class 16 of the Nice Agreement, include instructional and teaching material (except apparatus). The services covered, which fall within Classes 41, 44 and 45 of the Nice Agreement, concern, in particular, education, training, entertainment, medical services and personal and social services rendered by others to meet the needs of individuals. The Board of Appeal held that the goods and services at issue were intended for the public at large, with the exception of ‘instructional and teaching material’, which is intended for professionals in the educational sector, and which is not disputed by the applicant.

58      Furthermore, the trade mark applied for is made up of two English words. Unlike the examiner, the Board of Appeal took the view that the relevant consumers went beyond the general public in Ireland, Malta and the United Kingdom, and encompassed almost the whole European Union, with the exception of Bulgaria and Greece (paragraphs 17 and 49 of the contested decision) (see paragraphs 7 and 11 above).

59      In the context of its fourth plea, relating to Article 7(3) of Regulation No 207/2009, the applicant challenges that enlargement of the concept of relevant consumer. Therefore, it implicitly challenges the assertion of the Board of Appeal, at paragraphs 17 and 49 of the contested decision, that the examiner erroneously restricted the relevant territory to Ireland, Malta and the United Kingdom, as the trade mark applied for was descriptive of the goods and services at issue or lacked distinctive character in relation to them in the territories of other Member States of the European Union, for which the applicant should be invited to submit evidence of acquired distinctiveness through use. It therefore disputes, in essence, that the ground of refusal exists throughout the European Union, with the exception of Bulgaria and Greece.

60      It is therefore appropriate to rule on the enlargement by the Board of Appeal, in the present case, of the concept of the relevant consumer and, consequently, on the relevant territory as defined by the Board of Appeal to determine whether the ground of refusal exists, before examining whether or not the mark applied for is descriptive.

61      It is apparent from the case-law that the number of countries where basic English can be understood is greater than the number of countries where English is the native language. The Court has already confirmed that a basic understanding of the English language by the general public, in any event, in the Scandinavian countries, the Netherlands and Finland, is a well-known fact (judgment of 26 November 2008 in Case T‑435/07 New Look v OHIM (NEW LOOK), not published in the ECR, paragraph 23). The same applies to Malta, where English is one of the official languages, and to Cyprus (NATURALLY ACTIVE, paragraph 28 above, paragraph 26). Consequently, the relevant public includes, at the very least, the consumers of those countries.

62      Moreover, it is apparent from the case-law that a word sign consisting of English words the combination of which is grammatically correct, as in the present case, may have a meaning not only for an English-speaking public, but also for a public which has sufficient knowledge of the English language (see, to that effect, NATURALLY ACTIVE, paragraph 28 above, paragraph 27 and the case-law cited).

63      It follows that the Board of Appeal did not err in including in the relevant public consumers in countries other than those where English is the native language, and in particular consumers in countries where a knowledge of basic English is a matter of common knowledge.

64      Furthermore, the Board of Appeal added that, bearing in mind that the words ‘transcendental’ and ‘meditation’ were words with a Latin origin present in almost all languages of the European Union, in identical or very close terms which would allow the public to recognise them, the relevant consumers, in the present case, went beyond the general public in Ireland, Malta and the United Kingdom, and encompassed almost the whole European Union, with the exception of Bulgaria and Greece.

65      That finding should be upheld,

66      First, while it is apparent from paragraph 17 of the contested decision that, contrary to the practice in English, the translation of the word ‘meditation’ is placed before the translation of the adjective ‘transcendental’ in Spanish, French, Italian, Polish, Portuguese and Romanian, the public in the Member States in which those languages are spoken, and particularly the public in romance language countries, is accustomed to inversion of the normal syntax of words, for rhetorical, poetic or other purposes. With regard to the Polish public, although, admittedly the Board of Appeal used the expression ‘medytacja transcendentalna’, it is apparent from a simple consultation of the internet that use of the inverse expression ‘transcendentalna medytacja’ is not uncommon in Polish. In the present case, the inversion observed in certain languages, compared with the normal position of the words ‘transcendental’ and ‘meditation’ in English, is therefore not such as to hinder comprehension of the expression in question by the relevant public of the Member States concerned.

67      Secondly, while there are certain differences, both visually and with regard to pronunciation, between the words translated into the various languages referred to, as the various translations mentioned by the Board of Appeal in paragraph 17 of the contested decision (see paragraph 7 above) demonstrate, those differences do not outweigh the fact that they have a common Latin stem. That is even more so where, as in the present case, an expression is made up of two long words, of at least four syllables each, in almost all the languages concerned. Furthermore, as OHIM correctly points out in its pleadings, the question is whether the expression ‘transcendental meditation’, rather than each of its two words considered separately, can be understood as being equivalent to the other expressions cited in paragraph 17 of the contested decision. However, taking those expressions into account in their entirety, the visual and phonetic differences that can affect either of their two words recede in favour of an overall resemblance that is strong or very strong.

68      Therefore, OHIM is right to maintain that a consumer in the Member States who does not speak English will, nevertheless, understand the information contained in the sign applied for, because of the closeness of that sign to its equivalent in their national language.

69      Therefore, it must be held that, as the Board of Appeal found, the relevant public, in relation to which it is appropriate to assess the absolute ground of refusal, is not only the average consumer in countries in which basic English can be understood, that is, Ireland, Cyprus, Malta, the Scandinavian countries, the Netherlands, Finland and the United Kingdom, pursuant to the case-law referred to in paragraphs 61 and 62 above, but also the consumer in almost the whole European Union, with the exception of Bulgaria and Greece.

–       The descriptive character of the mark applied for

70      The sign applied for as a word mark is made up of two elements, namely the words ‘transcendental’ and ‘meditation’. It is appropriate, therefore, for the purposes of the application of 7(1)(c) of Regulation No 207/2009, to examine, on the basis of a given meaning of the word sign at issue, whether, from the point of view of the intended public, there is a sufficiently direct and specific relationship between the sign and the categories of goods or services for which registration is sought.

71      At the outset, it should be pointed out that the expression ‘transcendental meditation’ complies with the rules of syntax and word composition of the English language and that the adjective ‘transcendental’ qualifies the substantive ‘meditation’.

72      With regard to the meaning of the elements making up the mark applied for, as the Board of Appeal pointed out in paragraphs 18 and 20 of the contested decision, one of the meanings of the word ‘transcendental’ makes reference to that which relates to the spiritual realm, as is apparent from the Oxford Dictionary of English, and ‘meditation’ refers to the action or practice of meditating, namely to ‘focus one’s mind for a period of time, in silence or with the aid of chanting, for religious or spiritual purposes or as a method of relaxation’. Thus, the juxtaposition of the two words refers to the action or practice of focusing one’s mind for a period of time, in silence or with the aid of chanting, for religious or spiritual purposes or as a method of relaxation, on issues relating to a spiritual realm.

73      The arguments of the applicant seeking to challenge that definition must be rejected.

74      The applicant claims that the word ‘transcendental’ does not belong to the everyday vocabulary of the average consumer and that it has a very particular meaning, used in philosophy and mathematics. However, even if there may be other, more technical, meanings of the word ‘transcendental’, the Board of Appeal correctly took the view that the average consumer would understand the expression ‘transcendental meditation’ as the action of meditating on issues relating to a spiritual realm.

75      Furthermore, according to the applicant, the word ‘transcendental’ means ‘super-rational, superhuman, supernatural’, none of which make sense when combined with the word ‘meditation’. Accordingly, the expression ‘transcendental meditation’ is not descriptive of the mantra meditation which is the meditation technique at issue in the present case.

76      However, it should be noted that the fact that the mark applied for can, as the applicant claims, have other meanings does not preclude the application of the absolute ground of refusal referred to in Article 7(1)(c) of Regulation No 207/2009. According to settled case-law, a word sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (Case C‑191/01 P OHIM v Wrigley [2003] ECR I-12447, paragraph 32, and EURO AUTOMATIC PAYMENT, paragraph 53 above, paragraph 50).

77      In the present case, as the Board of Appeal pointed out, the average consumer is able to understand at least one possible meaning of the expression ‘transcendental meditation’, that is, the action of meditating on issues relating to a spiritual realm. Accordingly, even if that does not give a precise idea of the meditation technique at issue in the present case and even if certain questions remain subjective, such as how the meditation is carried out or what issues relate to a spiritual realm, the fact remains that the consumer will have a direct, certain and unambiguous understanding of that expression.

78      Therefore, the assertion of the applicant that the combination of the words making up the mark applied for makes no sense, is based on its own technical, philosophical or mathematical understanding of the words at issue, or that of certain professors, and must be rejected with regard to the relevant public.

79      It follows that the Board of Appeal was correct to find that the expression ‘transcendental meditation’ referred to the action or practice of focusing one’s mind for a period of time, in silence or with the aid of chanting, for religious or spiritual purposes or as a method of relaxation, on issues relating to a spiritual realm.

80      It is now appropriate to assess whether, having regard to that meaning and the relevant public, the expression ‘transcendental meditation’ is descriptive of the goods and services for which registration of the mark is sought.

81      First, with regard to the ‘instructional and teaching material’ falling within Class 16 of the Nice Agreement, the Board of Appeal correctly found, at paragraph 25 of the contested decision, that the mark applied for was perfectly suitable to identify the subject-matter of the material.

82      In relation to those goods, namely, for example, books or other publications, the relevant public will perceive, without further thought, the thematic content of the goods in question, namely the application of a method of meditation. Furthermore, for professionals in the educational sector, familiar with existing meditation techniques, the word sign applied for may have a more precise meaning, referring to the meditation technique at issue in the present case. It is thus apparent from the contested decision that certain dictionaries define the expression ‘transcendental meditation’ as a technique for detaching oneself from anxiety and promoting harmony and self-realisation by meditation, repetition of a mantra, and other yogic practices, promulgated by an international organisation founded by the Indian guru Maharishi Mahesh Yogi.

83      Accordingly, when faced with those goods, that informed public will immediately and without further thought perceive the subject-matter of the instructional and teaching material at issue.

84      The mark applied for thus has a sufficiently direct and specific relationship with the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the characteristics of those goods. The Board of Appeal therefore correctly concluded that the mark is descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009 with regard to the instructional and teaching material.

85      Secondly, with regard to the services referred to in the application, the Board of Appeal considered that the expression ‘transcendental meditation’ ‘will also be understood by the relevant public without further thought as a mere description of the activity of which the remaining services applied for in Classes 41, 44 and 45 consist.’

86      First, concerning the services of education, training and entertainment falling within Class 41 of the Nice Agreement, for example courses, the Board of Appeal found that they provide consumers with guidance about the action of meditating on issues relating to a spiritual realm.

87      In that regard, it should be noted that, from the point of view of the average consumer, the expression ‘transcendental meditation’ gives a description of the activity that is the subject-matter of the services at issue, even if part of the public does not know how transcendental meditation is actually practised.

88      The Board of Appeal, therefore, correctly found that there was a direct and specific relationship between the word sign applied for and the subject-matter of those services.

89      Secondly, with regard to ‘medical services; hygienic and beauty care for human beings’ falling within Class 44 and the ‘personal and social services rendered by others to meet the needs of individuals’ falling within Class 45 of the Nice Agreement, the Board of Appeal considered that the expression ‘transcendental meditation’ directly informs consumers that those services consist of the action of meditating on issues relating to a spiritual realm and, consequently, in each case for medical, hygienic, beauty-care, social or personal purposes.

90      The Court points out that the expression ‘transcendental meditation’ provides sufficient information to the relevant public to allow it to immediately perceive, without further thought, that those services are centred or based on the type of meditation known as transcendental meditation for medical, social or personal purposes or that they use that type of meditation for such purposes. The relationship between the word sign applied for and the subject-matter or the purpose of the services in question is therefore sufficiently direct to be descriptive of those services, in spite of the fact that the relevant public does not know how the meditation is practised or what the method used exactly consists of.

91      It follows from all of the above that the sign applied for conveys a message which can be immediately understood by the relevant public and which can serve, in trade, to indicate the subject-matter or purpose, and therefore the characteristics of the goods and services for which registration has been sought. Contrary to what the applicant maintains, there is, therefore, for the relevant public, a relationship that is sufficiently direct and specific with the goods and services concerned.

92      Finally, the applicant maintains that the mark applied for is used to describe a type of meditation offered by the organisation Transcendental Meditation and to distinguish its teaching services. However, such an argument does not affect the descriptiveness of the mark applied for in the present case, as established in paragraphs 80 to 91 above.

93      Therefore, the Board of Appeal correctly concluded that the word sign applied for is descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009 with regard to the goods and services at issue in the present case and the relevant public as defined above (see paragraph 69 above).

94      It follows from all of the above that this plea must be dismissed.

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

95      It is evident from 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 not to be registrable as a Community trade mark (see, to that effect, Case C‑104/00 P DKV v OHIM [2002] ECR I‑7561, paragraph 29, and order of 13 February 2008 in Case C‑212/07 P Indorata-Serviços e Gestão v OHIM, not published in the ECR, paragraphs 27 and 28; COLOR EDITION, paragraph 54 above, paragraph 51).

96      Likewise, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) of the regulation (see, by analogy, Case C-265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 19, and judgment of 23 November 2011 in Case T-59/10 Geemarc Telecom v OHIM – Audioline (AMPLIDECT), not published in the ECR, paragraph 26).

97      In the light of the rejection of the third ground examined above and the descriptive character of the sign at issue, it is unnecessary to examine the second plea raised by the applicant, alleging infringement of Article 7(1)(b) of that regulation.

 The fourth plea, alleging infringement of Article 7(3) of Regulation No 207/2009

98      Under Article 7(3) of Regulation No 207/2009, Article 7(1)(b) and (c) thereof 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.

99      It follows that a mark can be registered under Article 7(3) of Regulation No 207/2009 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it initially had descriptive character for the purposes of Article 7(1)(c) (see, to that effect, order in Powerserv Personalservice v OHIM, paragraph 27 above, paragraph 60, and the case-law cited).

100    In the present case, the Board of Appeal did not examine the additional documents produced before it by the applicant and remitted the question to the Examination Division. Therefore, the examination with regard to Article 7(3) of Regulation No 207/2009 has not yet been carried out by OHIM.

101    The Court cannot substitute itself for OHIM in that regard and therefore cannot rule on the arguments presented on this point by the applicant (see, to that effect and by analogy, judgment of 4 October 2007 in Case T‑481/04 Advance Magazine Publishers v OHIM – Capela and Irmãos (VOGUE), not published in the ECR, paragraph 22.

102    That plea must therefore be rejected as inadmissible.

103    It follows from all the foregoing that the action must be dismissed in its entirety.

 Costs

104    Under Article 87(2) of the Rules of Procedure of the 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 Maharishi Foundation Ltd to pay the costs.

Forwood

Dehousse

Schwarcz

Delivered in open court in Luxembourg on 6 February 2013.

[Signatures]


* Language of the case: English