JUDGMENT OF THE GENERAL COURT (Second Chamber)
13 September 2016 (*)
(EU trade mark — Application for a sound mark — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009)
In Case T‑408/15,
Globo Comunicação e Participações S/A, established in Rio de Janeiro (Brazil), represented by E. Gaspar and M.-E. De Moro-Giafferri, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 18 March 2015 (Case R 2945/2014-5), concerning an application for registration of a sound mark as an EU trade mark,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro (Rapporteur), President, S. Gervasoni and L. Madise, Judges,
Registrar: M. Marescaux, Administrator,
having regard to the application lodged at the Court Registry on 24 July 2015,
having regard to the response lodged at the Court Registry on 5 October 2015,
further to the hearing on 15 March 2016,
gives the following
Judgment
Background to the dispute
1 On 28 April 2014, the applicant, Globo Comunicação e Participações S/A, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the sound sign as represented graphically below:
3 The goods and services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9, 16, 38 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 9: ‘Magnetic data carriers; recording discs; compact discs, DVDs and other digital recording media; computer software; applications for tablets and smartphones’;
– Class 16: ‘Paper, cardboard (raw, semi-worked or for stationery); printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging, namely sacks, bags, film and sheets; printers’ type; printing blocks, publications; books; magazines’;
– Class 38: ‘Television broadcasting services’;
– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; entertainment services in the form of television programmes; production of television entertainment features[; e]ntertainment services, namely television news, educational, sports and comedy programmes, television soaps, television variety shows; production of television programmes; production of online entertainment’.
4 By letter of 15 May 2014, the examiner informed the applicant that the mark applied for could not be registered, on the ground that it did not satisfy the conditions set out in Article 7(1)(b) of Regulation No 207/2009. She stated, in particular, that that mark consisted of a simple and banal ringing sound and that it could not be perceived as an indicator of the commercial origin of the goods. The examiner therefore requested that the applicant submit its observations to her within a period of two months.
5 By letter of 11 July 2014, the applicant replied, in essence, that although the mark applied for was short, it was not, however, simple and had to be regarded as a short melody which would be perceived as an indicator which referred to its own goods and services.
6 By decision of 19 September 2014, the examiner rejected that application, taking the view that the mark applied for came within the scope of the ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 since it was devoid of any distinctive character.
7 On 19 November 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.
8 By decision of 18 May 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO, first, dismissed the appeal as regards the alleged distinctive character of the mark applied for under Article 7(1)(b) of Regulation No 207/2009 and, secondly, referred back to the examiner the examination of the question raised by the applicant as to whether that mark had acquired distinctive character through use under Article 7(3) of that regulation in relation to the television broadcasting services in Class 38 and entertainment services in Class 41.
9 The Board of Appeal found, in paragraph 17 of the contested decision, that the goods and services at issue were aimed at both the general public and professionals, with the result that the level of attention varied from average to high.
10 The Board of Appeal stated, in paragraphs 18 and 19 of the contested decision, that, in order to be capable of indicating to the consumer the commercial origin of the goods or services at issue, the mark applied for had to have characteristics which enabled it to be easily remembered by him. It pointed out that, although it is not necessary for the sign to be original or fanciful, the fact remains that it should not be banal or totally insignificant.
11 The Board of Appeal added, in paragraph 20 of the contested decision, that a trade mark consisting of sounds resembling a ringing sound could perform an identifying function only if it included elements capable of distinguishing it from other marks. However, in the present case, the Board of Appeal found, in paragraph 21 of that decision, that the mark applied for consisted of the repetition of a sound that resembled a ringtone which was banal in every respect, notwithstanding the fact that the mark consisted of a stave with a treble clef with a tempo of 147 crotchets per minute, repeating two G sharps. The Board of Appeal found, in paragraph 22 of the contested decision, that such nuances in relation to the classic form of a ringing sound were not sufficient to reject the objection based on Article 7(1)(b) of Regulation No 207/2009 because they were liable to escape the target consumer’s attention and, in paragraph 23 of that decision, that it was also inaccurate to claim that the mark applied for was characterised by many specific elements which were immediately perceptible to the target consumer.
12 The Board of Appeal took the view, in paragraph 24 of the contested decision, that the mark applied for was a very simple sound motif, that is to say, in essence, a banal and commonplace ringing sound which would generally go unnoticed and would not be remembered by the target consumer.
13 The Board of Appeal therefore concluded, in paragraph 28 of the contested decision, that the mark applied for was devoid of any distinctive character as regards all the goods and services covered by the application for registration.
14 Following the contested decision, the applicant made a further restriction on 22 July 2015 by withdrawing, first, the ‘[m]agnetic data carriers ; recording discs; compact discs’ in Class 9 and, secondly, all of the goods in Class 16.
15 The list of goods and services covered by the application for registration is thus, at the stage of the action, the following:
– Class 9: ‘DVDs and other digital recording media; computer software; applications for tablets and smartphones’;
– Class 38: ‘Television broadcasting services’;
– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; entertainment services in the form of television programmes; production of television entertainment features[; e]ntertainment services, namely television news, educational, sports and comedy programmes, television soaps, television variety shows; production of television programmes; production of online entertainment’.
Forms of order sought
16 The applicant claims that the Court should:
– declare the action admissible;
– declare that the contested mark is valid for the purpose of designating the list of goods and services referred to in paragraph 15 above;
– annul the contested decision in part, in so far as it rejected the trade mark application on the basis of Article 7(1)(b) of Regulation No 207/2009;
– order EUIPO to pay the costs.
17 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The admissibility of documents produced for the first time before the General Court
18 EUIPO submits that Annexes A 29, A 29 bis, A 29 ter, A 50, A 51 bis, A 52, A 52 bis, A 53, A 53 bis, A 54, A 54 bis, A 55, A 55 bis, A 56, A 56 bis, A 57, A 58, A 58 bis, A 59, A 59 bis, A 60 and A 60 bis to the application are inadmissible on the ground that they were not produced in the course of the administrative proceedings.
19 In that regard, it should be recalled that the purpose of an action brought before the General Court is to review the legality of the decisions of the Boards of Appeal of EUIPO in accordance with Article 65 of Regulation No 207/2009. It is therefore not the General Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it (judgments of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraphs 136 and 138, and 10 November 2004, Storck v OHIM (Shape of a sweet), T‑396/02, EU:T:2004:329, paragraph 24).
20 Consequently, the review of the legality of the contested decision will be carried out in the light solely of the evidence which was produced during the administrative proceedings and appears in EUIPO’s case file (see, to that effect, judgment of 15 July 2014, Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, not published, EU:T:2014:667, paragraph 25).
Substance
21 In support of its action, the applicant puts forward, in essence, two pleas in law, alleging, first, infringement of the obligation to state reasons and, secondly, infringement of Article 7(1)(b) of Regulation No 207/2009.
The first plea, alleging infringement of the obligation to state reasons
22 The applicant complains that the Board of Appeal infringed its obligation to state reasons, which is set out in Article 75 of Regulation No 207/2009, by not examining the distinctive character of the mark applied for in relation to each of the goods and services covered by that application, a point which it specifically elaborated on at the hearing.
23 In that regard, it must be borne in mind that the duty upon EUIPO to state reasons for refusing to register a trade mark in relation to each of the goods or services for which such registration is sought also arises from the essential requirement for any decision of EUIPO refusing the benefit of a right conferred by EU law to be subject to judicial review which is designed to secure effective protection for that right and which, accordingly, must cover the legality of the reasons for the decision (see, by analogy, judgment of 15 February 2007, BVBA Management, Training en Consultancy, C‑239/05, EU:C:2007:99, paragraph 36 and the case-law cited).
24 However, where the same ground of refusal is given for a category or group of goods or services, EUIPO may use only general reasoning for all of the goods and services concerned (see, to that effect, order of 11 December 2014, FTI Touristik v OHIM, C‑253/14 P, not published, EU:C:2014:2445, paragraph 48; see also, by analogy, judgment of 15 February 2007, BVBA Management, Training en Consultancy, C‑239/05, EU:C:2007:99, paragraph 37).
25 Accordingly, the competent authority may use only general reasoning where the ground of refusal is given for a category or group of goods or services that have a sufficiently direct and specific link to each other to the extent that they form a sufficiently homogeneous category or group of goods or services (judgments of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 28, and 23 September 2015, Reed Exhibitions v OHIM (INFOSECURITY), T‑633/13, not published, EU:T:2015:674, paragraph 46; see also, to that effect, order of 11 December 2014, FTI Touristik v OHIM, C‑253/14 P, not published, EU:C:2014:2445, paragraph 48).
26 In the present case, first, it must be stated that the Board of Appeal gave the same ground of refusal for all the goods and services in respect of which registration of the mark applied for was refused, namely the banality of the sign with regard to goods or services which might or might not be associated with telephone ringtones or the ringing of an alarm clock and the fact that it appears difficult to conceive of a sound mark being used in relation to silent goods (see paragraphs 26 and 27 of the contested decision).
27 Secondly, there is, as EUIPO has correctly stated, a sufficiently direct and specific link between the goods and services at issue, which are media for the dissemination of information electronically (‘DVDs and other digital recording media; computer software; applications for tablets and smartphones’ in Class 9; ‘production of online entertainment’ in Class 41), orally (‘[e]ducation; providing of training’ in Class 41) or by means of television (‘[t]elevision broadcasting services’ in Class 38; ‘entertainment; sporting and cultural activities; entertainment services in the form of television programmes; production of television entertainment features[; e]ntertainment services, namely television news, educational, sports and comedy programmes, television soaps, television variety shows; production of television programmes’ in Class 41) (see, to that effect, judgment of 23 September 2015, INFOSECURITY, T‑633/13, not published, EU:T:2015:674, paragraph 47).
28 Accordingly, it must be held that the Board of Appeal could, after carrying out an overall examination covering all the goods and services at issue, formulate a single conclusion based on the same ground for refusal covering all the goods and services concerned, without infringing its obligation to state reasons.
29 It follows from all of the foregoing that the first plea must be rejected.
30 It will still be necessary, in the context of the second plea, to ascertain whether the Board of Appeal was right in finding that the mark applied for was devoid of any distinctive character in relation to all the goods and services at issue.
The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
31 The applicant complains that the Board of Appeal made an error of assessment as regards the distinctive character of the mark applied for by refusing to register that mark pursuant to Article 7(1)(b) of Regulation No 207/2009. Taking the view that, in the context of the examination of their distinctive character, sound marks should be subject to the same criteria as word or figurative marks, the applicant claims, in essence, that the brevity of the sound mark applied for cannot deprive it of its distinctive character and that that mark, albeit short, is not, however, simple, but is characterised by a sequence of notes resulting in the repetition of a specific sound, which is longer when it is repeated and which makes it easier for the consumer to identify and remember the mark. It adds that the mark applied for consists of a sound jingle which is neither ordinary nor normal.
32 First, it must be borne in mind that sound signs are not by nature incapable of distinguishing the goods or services of one undertaking from those of another undertaking (see, by analogy, judgment of 27 November 2003, Shield Mark, C‑283/01, EU:C:2003:641, paragraph 36).
33 In those circumstances, Article 4 of Regulation No 207/2009 must be interpreted as meaning that sounds may constitute a trade mark, provided that they may also be represented graphically (see, by analogy, judgment of 27 November 2003, Shield Mark, C‑283/01, EU:C:2003:641, paragraph 37).
34 It is not disputed that the notation of musical notes on a stave, accompanied by a clef, rests and accidentals, constitutes a ‘graphical representation’ for the purposes of Article 4 of Regulation No 207/2009.
35 Even if such a representation is not immediately intelligible, the fact remains that it may be easily intelligible, thus allowing the competent authorities and the public, in particular traders, to know precisely the sign in respect of which registration as a trade mark is sought (see, by analogy, judgment of 27 November 2003, Shield Mark, C‑283/01, EU:C:2003:641, paragraphs 62 and 63; see also Rule 3(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995, L 303, p. 1), as amended).
36 Secondly, it must borne in mind that, under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character must not be registered.
37 For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the goods in respect of which registration has been applied for as coming from a particular undertaking, and thus to distinguish those goods from those which come from other undertakings (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 34, and 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 29).
38 According to settled case-law, the trade marks covered by Article 7(1)(b) of Regulation No 207/2009 are those which are considered to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 16 September 2004, SAT.1 v OHIM, C‑329/02 P, EU:C:2004:532, paragraph 23; 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 60, and 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraph 56; see also judgment of 13 April 2011, Air France v OHIM (Shape of a parallelogram), T‑159/10, not published, EU:T:2011:176, paragraph 13 and the case-law cited).
39 The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark is sought and, secondly, by reference to the relevant public’s perception of that mark (see judgments of 12 February 2004, Henkel, C‑218/01, EU:C:2004:88, paragraph 50 and the case-law cited, and 9 September 2010, OHIM v Borco-Marken-Import Matthiesen, C‑265/09 P, EU:C:2010:508, paragraph 32 and the case-law cited; judgments of 13 April 2011, Shape of a parallelogram, T‑159/10, not published, EU:T:2011:176, paragraph 14, and 28 April 2015, Volkswagen v OHIM (EXTRA), T‑216/14, not published, EU:T:2015:230, paragraph 15).
40 A minimum degree of distinctive character is, however, sufficient to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 inapplicable (judgments of 13 June 2007, IVG Immobilien v OHIM (I), T‑441/05, EU:T:2007:178, paragraph 42; 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 30, and 13 April 2011, Shape of a parallelogram, T‑159/10, not published, EU:T:2011:176, paragraph 15).
41 However, it must be borne in mind that the Court of Justice has held in its case-law that, whilst the criteria for assessing distinctiveness are the same for the various categories of trade mark, it may become apparent, when applying those criteria, that the relevant public’s perception is not necessarily the same in relation to each of those categories and that, therefore, it may prove more difficult to establish the distinctiveness of the marks in certain categories than of those in other categories (see order of 28 June 2004, Glaverbel v OHIM, C‑445/02 P, EU:C:2004:393, paragraph 23 and the case-law cited).
42 In that regard, it must be pointed out that, although the public is used to perceiving word or figurative marks as signs which identify the commercial origin of goods and services, the same is not necessarily true when the sign consists solely of a sound element.
43 It must, however, be held that, as regards certain goods or services, it may not be unusual for the consumer to identify them by means of a sound element. Accordingly, it must, in particular, be held that, as EUIPO correctly stated at the hearing, in certain economic sectors such as that of television broadcasting, it is not only not unusual, but also even common for the consumer to identify a product or service in that sector as a result of a sound element which makes it possible to distinguish that product or service as coming from a particular undertaking.
44 Similarly, it must be held that, as regards certain goods and services linked, in particular, first, to tools for communicating or entertaining by means of television broadcasting or radio broadcasting and to telephony and, secondly, to IT media, computer software or to the media sector in general, sound elements, such as jingles or melodies, are used in order to enable the product or service at issue to be identified aurally as coming from a particular undertaking.
45 Furthermore and in any event, it is necessary for the sound sign in respect of which registration is sought to have a certain resonance which enables the target consumer to perceive and regard it as a trade mark and not as a functional element or as an indicator without any inherent characteristics. That consumer must thus regard the sound sign as having the ability to identify, in the sense that it will be identifiable as a trade mark.
46 Consequently, a sound sign which did not have the capacity to mean more than the mere banal combination of notes of which it consists would not enable the target consumer to perceive it as functioning to identify the goods and services at issue, since it would be reduced to a straightforward ‘mirror effect’, in the sense that, as EUIPO correctly stated at the hearing, it would refer only to itself and to nothing else. It would not therefore be capable of engendering in the target consumer a certain form of attention which would enable him to perceive that sign’s necessary identifying function.
47 It is in the light of those considerations that the applicant’s arguments that the mark applied for has distinctive character must be examined.
48 In the present case, the applicant does not dispute the Board of Appeal’s assessment, in paragraph 17 of the contested decision, that the goods and services at issue are aimed at both the general public and professionals, the level of attention of which thus varies from average to high. That assessment must be accepted.
49 As regards the assessment of the distinctive character of the mark applied for, the Board of Appeal found, in paragraph 21 of the contested decision, that the mark applied for consisted of the repetition of a sound which resembled a ringtone.
50 By stating, in the application, that the mark applied for could be described as ‘a sound which resembles a telephone ringtone’ or as ‘a particular electronic ringing sound evoking sonar equipment, which consists of the repetition of two notes’, the applicant does not, as EUIPO correctly points out, dispute the abovementioned description of the mark applied for given by the Board of Appeal.
51 It is important to point out, in that regard, that a sound sign which is characterised by excessive simplicity and is no more than the simple repetition of two identical notes is not, as such, capable of conveying a message that can be remembered by consumers, with the result that consumers will not regard it as a trade mark, unless it has acquired distinctive character through use (see, to that effect, judgment of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22).
52 Accordingly, the mark applied for will be perceived by the relevant public only as a mere function of the goods and services covered and not as an indication of their commercial origin. As the Board of Appeal correctly pointed out in paragraph 24 of the contested decision, the mark applied for will generally go unnoticed and will not be remembered by the relevant consumer.
53 The mark applied for therefore amounts to the ringing of an alarm or telephone regardless of the context in which it is used and regardless of the medium used and that ringing sound does not have any inherent characteristic which is separate from the repetition of the note of which it consists and would serve to identify anything other than that ringing of an alarm or telephone.
54 The applicant repeated, at the hearing, that the unusual nature of a telephone ringtone as an identifier of the origin of a service gave the mark applied for its distinctive character.
55 In that regard, it is sufficient to point out that the allegedly unusual use of a telephone ringtone as an indicator of the origin of goods and services is not sufficient for it to be held that the sign is capable of identifying such an origin where, as in the present case, its excessive simplicity makes that sign incapable of identifying the origin of the goods or services, since, as EUIPO correctly observed in reply to a question put by the Court, that sign is monotonal and can refer only to itself.
56 The applicant also claims that, inasmuch as it is apparent from the score that it is a stave with a treble clef with a tempo of 147 crotchets per minute, repeating two G sharps, namely a first G crotchet with an accent (one beat), followed by a second G (dotted minim) (three beats) tied to a semibreve (four beats), the Board of Appeal could not find that those nuances were liable to escape the target consumer’s attention. It must, however, be held that, notwithstanding that description, the mark applied for, the sound of which was also played to the Court at the hearing, amounts to the repetition of two identical notes and, contrary to what the applicant claims, no nuances may be heard.
57 As the Board of Appeal correctly pointed out in paragraph 20 of the contested decision, a trade mark consisting of sounds resembling a ringing sound cannot perform an identifying function unless it includes elements capable of distinguishing it from other sound marks; it should, however, be pointed out that it is not necessary for that mark to be original or fanciful.
58 The mark in respect of which registration is sought must therefore make it possible for the target public to identify it as an indicator of the origin of the goods or services at issue, a condition that is not, in the present case, satisfied by the mark applied for, which may be equated with the ‘standard’ ringing sound with which all electronic devices equipped with a timer and all telephony apparatus are provided, with the result that that public will be unable, without prior knowledge, to identify that ringing sound as an indicator of goods and services which come from the applicant.
59 It follows that, contrary to what the applicant claims, the mark applied for cannot be equated with a jingle which is unusual on the ground that it includes two rings.
60 Furthermore, the applicant observes that the mark applied for is widely known in Brazil and within the Brazilian communities residing in a number of Member States, which identify that mark as a distinctive sign of the Globo television channel.
61 In that regard, it is sufficient to point out that, by that line of argument, the applicant is submitting that the mark applied for has acquired distinctive character as a result of the prolonged use which has been made of it, a line of argument which is admittedly relevant in the context of Article 7(3) of Regulation No 207/2009, a matter which is before the examiner (see paragraphs 29 and 30 of the contested decision and paragraph 8 above), but not in the context of Article 7(1)(b) of that regulation.
62 The applicant also claims that the mark applied for is not devoid of any distinctive character inasmuch as it and other similar sound marks have been registered in France and the United States.
63 In that regard, it must be borne in mind that, according to settled case-law, the EU trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules (judgments of 12 June 2007, MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, not published, EU:T:2007:172, paragraph 57, and 10 May 2012, Amador López v OHIM (AUTOCOACHING), T‑325/11, not published, EU:T:2012:230, paragraph 45).
64 Furthermore, as regards the assessment of whether the mark applied for lacks distinctive character with regard to the goods and services at issue, the Board of Appeal found, in paragraph 26 of the contested decision, that the same ground of refusal of registration, namely the fact that the mark applied for could not be perceived as an indication of commercial origin, applied to all of those goods and services, since the banality of the sign remained the same, whether the mark was associated with goods or services which might be associated with telephone ringtones or the ringing of an alarm clock or not.
65 The Board of Appeal added in paragraph 27 of the contested decision:
‘In addition, with regard to the goods in Class 16 which are, by definition, silent (except, perhaps, for musical greeting cards) as well [as to] the following services in Class 41 ‘Education; providing of training; sporting and cultural activities’, the Board adds that it appears difficult to conceive of using the trade mark at issue in relation to those goods or services. How could a sound mark be associated with the sale of paper for example? Furthermore, from practical experience, the Board finds that, in any event, with regard to the goods in Class 16, the consumer is not used to recognising the origin of those goods on the basis of a sound or melody. The same is true of the providing of training and education activities in Class 41.’
66 In that regard, as is apparent from paragraph 52 above, the mark applied for will be perceived by the relevant public only as a mere function of the goods and services covered and not as an indication of their commercial origin.
67 Consequently, it must be held that, even though the goods in Class 9 are not expressly referred to in paragraph 27 of the contested decision, they are covered by the Board of Appeal’s finding in paragraph 25 of the contested decision, that the mark applied for will not be perceived as an indication of the origin of the goods. As EUIPO has correctly stated, the mark applied for will be understood as indicating merely that the data carrier, computer program or application for electronic devices is being started.
68 As regards the television broadcasting services in Class 38 and all the services which may be provided in the form of television programmes and are in Class 41, the sound mark, owing to its banality, will be perceived by the target public rather as indicating the beginning or end of a television programme.
69 It follows that the Board of Appeal did not err as regards the examination of the distinctive character of the mark applied for in relation to the goods and services at issue.
70 The applicant claims, lastly, that EUIPO has registered similar sound marks, namely the sound of a bell or a xylophone, with the result that the fact that the mark applied for is simple does not, in the present case, constitute a sufficient reason for refusing registration on the ground of an alleged lack of distinctive character.
71 In that regard, first, it must be pointed out that, in accordance with settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of any previous practice of the Boards of Appeal (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and judgment of 27 February 2015, Universal Utility International v OHIM (Greenworld), T‑106/14, not published, EU:T:2015:123, paragraph 36).
72 Secondly, it has indeed been held that EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74, and 28 April 2015, EXTRA, T‑216/14, not published, EU:T:2015:230, paragraph 30).
73 However, the principles of equal treatment and of sound administration 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 (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76, and 28 April 2015, EXTRA, T‑216/14, not published, EU:T:2015:230, paragraph 31).
74 Moreover, for reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77, and 28 April 2015, EXTRA, T‑216/14, not published, EU:T:2015:230, paragraph 32).
75 In this case, it is apparent from the contested decision that the Board of Appeal carried out a full and specific examination of the mark applied for before refusing to register it. In addition, it is apparent from the examination of the applicant’s complaints that that examination led the Board of Appeal, correctly, to oppose registration of the mark applied for on the basis of the absolute ground for refusal referred to in Article 7(1)(b) of Regulation No 207/2009. Since the examination of the mark applied for in the light of that provision could not, in itself, lead to a different conclusion, the applicant’s claims relating to the registration of other sound marks cannot succeed. The applicant may not therefore reasonably rely on previous decisions of EUIPO in order to cast doubt on the conclusion that the registration of the mark applied for is incompatible with Regulation No 207/2009.
76 It follows from all of the foregoing that the second plea must be rejected and that the action must be dismissed in its entirety.
Costs
77 It must be borne in mind that, under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Globo Comunicação e Participações S/A to pay the costs.
Martins Ribeiro | Gervasoni | Madise |
Delivered in open court in Luxembourg on 13 September 2016.
[Signatures]