JUDGMENT OF THE GENERAL COURT (Second Chamber)
9 March 2010 (*)
(Community trade mark – International registration designating the European Community – Word mark NATURE WATCH – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 40/94 (now Article 7(1)(c) of Regulation (EC) No 207/2009))
In Case T‑77/09,
hofherr communikation GmbH, established in Innsbruck (Austria), represented by S. Warbek, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
ACTION brought against the decision of the First Board of Appeal of OHIM of 4 December 2008 (Case R 1410/2008-1) concerning the international registration, designating the European Community, of the word sign NATURE WATCH,
THE GENERAL COURT (Second Chamber),
composed of I. Pelikánová (Rapporteur), President, K. Jürimäe and S. Soldevila Fragoso, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 17 February 2009,
having regard to the response lodged at the Court Registry on 5 June 2009,
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, to rule without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,
gives the following
Judgment
Background to the dispute
1 The applicant, hofherr communikation GmbH, is the proprietor of international registration No 957541 concerning the word mark NATURE WATCH and designating the European Community.
2 On 17 April 2008, the international registration was notified to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Article 3bis of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22).
3 The services for which registration was sought with regard to the European Community, following the restriction made during the procedure before OHIM, fall within Classes 41 and 43 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, in respect of each of those classes, to the following description:
– Class 41: ‘Arranging and organisation of cultural and sportive events; sport camp services; providing recreation facilities; recreation information; rental of audio equipment; rental of sports equipment’;
– Class 43: ‘Hotels; boarding and lodging; rental of tents; tourist homes’.
4 By a decision of the Examiner of 5 August 2008, the application for registration was refused. The Examiner considered that the trade mark for which registration was sought did not comply with Article 7(1)(b) and (c) and (2) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now Article 7(1)(b) and (c) and (2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). On 29 September 2008 the applicant filed a notice of appeal at OHIM against that decision.
5 By decision of 4 December 2008 (‘the contested decision’) the First Board of Appeal of OHIM dismissed the appeal. Taking as its basis the perception which the English-speaking general public of the Community would have of the trade mark for which registration was sought, the Board of Appeal held that the sign NATURE WATCH designates the act of watching, keeping awake and being vigilant for the purpose, inter alia, of observing nature. According to the Board of Appeal, that sign is descriptive of the services covered by the international registration for the purpose of Article 7(1)(c) of Regulation No 40/94, since cultural, sporting and recreational activities may involve nature observation and, consequently, the expression ‘nature watch’ indicates to the public that the services falling within Class 41 and the tent rental services in Class 43 concern equipment suitable for nature observation. As regards the other services in Class 43, that expression indicates that they may facilitate that activity.
6 The Board of Appeal also held that the sign NATURE WATCH would be perceived as a promotional message referring to the fact that the services at issue were offered in the context of enhancing an understanding of nature, rather than as an indication of the commercial origin of those services. It inferred from this that the trade mark applied for was also devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision and authorise the registration of the trade mark applied for;
– order OHIM to pay the costs.
8 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
9 The applicant raises two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation No 40/94 and the second alleging infringement of Article 7(1)(b) thereof.
10 OHIM disputes the merits of the pleas submitted by the applicant. It also contends that the first head of claim is inadmissible in so far as it requests the Court to authorise registration of the trade mark applied for.
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
11 According to the applicant, the expression ‘nature watch’ is not purely descriptive of the services referred to in the application for registration. Even if the words ‘nature’ and ‘watch’ are generally known, their association may be understood only following further thought about the message communicated, since the expression ‘nature watch’ might also describe the goods and services provided, for example, by an environmental organisation, a research institution, a medical institution, a management consulting agency or a watchmaker. Thus the mark applied for is unusual, inventive and singular.
12 Furthermore, the meaning of the trade mark applied for which was relied on by the Board of Appeal does not describe the nature of the services referred to in the application for registration, since it does not indicate how those services are provided.
13 Nor is the trade mark applied for descriptive of the intended purpose of the services concerned, inter alia as regards the form and the place of their provision and the target customers. It is evident that the trade mark applied for must be interpreted in order to arrive at the meaning relied on by the Board of Appeal and that it is therefore not an indication of the intended purpose of the services referred to in the application for registration. In that context, the description of the services referred to in the trade mark application does not include any information from which their intended purpose may be inferred.
14 To conclude the summary of its general arguments, the applicant maintains that the activity of observing nature cannot be regarded as a characteristic of the services referred to in the application for registration, since observation is an action of the consumer but is not the object of the services themselves.
15 As far as the various services referred to in the application for registration are concerned, the applicant submits, first, that the mark applied for does not directly describe the services of arranging and organising cultural and sporting events, the content of those services or any of their characteristics. Sports activities primarily concern physical effort and competition, and not nature observation. Cultural activities, for their part, are dominated by the cultural aspect. That includes anything which is made by man, rather than by nature. In those circumstances, it is almost absurd to associate the expression ‘nature watch’ with a cultural activity.
16 Like sports activities, sport camps are also focussed on competition, where the boarding and lodging services may be considered to be supplementary services. In respect of sports equipment rental, there are no sports articles specific to nature observation.
17 Secondly, neither hotel, boarding or lodging services, nor the supplementary services offered in that context, have as their object nature observation, which means that the trade mark applied for is not directly descriptive of the services of running a hotel.
18 Thirdly, the rental of tents enables the setting-up of a place to sleep, rather than a place to observe nature. Consequently, even if it is possible that a consumer may rent a tent with the intention of pitching it in the natural environment, the association between the trade mark applied for and the tent rental service is not sufficiently direct.
19 Fourthly, the services relating to tourist homes are simply estate agency services. While it is conceivable that the homes concerned may be situated in the natural environment and therefore allow the occupant to observe nature, that is not a certainty. In any event, the mere possibility for an occupant to observe nature from a tourist home is not the essential characteristic of the related services.
20 OHIM disputes the merits of the applicant’s arguments.
Findings of the Court
21 Under Article 7(1)(c) of Regulation No 40/94, the signs and indications which may serve, in normal usage from the point of view of the relevant public, to designate the goods or service in respect of which registration is sought or one of their essential characteristics are deemed incapable, by their very nature, of fulfilling the indication-of-origin function of the trade mark (Case C-191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 30; Case T-289/02 Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS) [2004] ECR II‑2851, paragraph 45; and Case T-207/06 Europig v OHIM (EUROPIG) [2007] ECR II‑1961, paragraph 26).
22 Although it follows from the foregoing that Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the categories of goods or services in respect of which registration is applied for may be freely used by all (see, as regards Article 3(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which corresponds to Article 7(1)(c) of Regulation No 40/94, Joined Cases C‑108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 25), the fact remains that its application does not depend on there being a real, current or serious need to leave a sign or indication free for the benefit of third parties (Windsurfing Chiemsee, paragraph 35, and Case T-106/00 Streamserve v OHIM(STREAMSERVE) [2002] ECR II-723, paragraph 39). Consequently, it is necessary only to consider, on the basis of the relevant meaning of the trade mark applied for, whether there is a sufficiently direct and specific relationship to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (STREAMSERVE, paragraph 40, and EUROPIG, paragraph 27). Moreover, in that examination, the trade mark applied for must be considered as a whole (see, to that effect, Case C-273/05 P OHIM v Celltech [2007] ECR I-2883, paragraphs 78 to 80).
23 In the present case, the parties do not dispute that the Board of Appeal was correct to hold that the relevant public consists of all of the English-speaking consumers in the Community. Since the definition of the relevant public accepted by the Board of Appeal is also consistent with Regulation No 40/94, as interpreted by the Community courts, it must be relied upon in the examination of the merits of the action.
24 The applicant also does not dispute the meaning of the expression ‘nature watch’ relied on by the Board of Appeal, namely the act of watching, keeping awake and being vigilant for the purpose, inter alia, of observing nature. It claims, however, that the consumer must interpret the trade mark applied for, and must therefore give the matter close thought to arrive at that meaning.
25 As the Board of Appeal noted, the trade mark applied for is a meaningful expression made up of two English words.
26 Furthermore, since descriptive character must be assessed in relation to the services in respect of which the application for registration is made, the fact that the trade mark applied for may be descriptive of other goods or services is irrelevant. When the consumer concerned perceives the trade mark applied for in conjunction with one of the services referred to in the application for registration, he will not inquire as to the meaning which that same mark may have in relation to other goods or services.
27 In those circumstances, and given that the applicant has not submitted arguments in greater detail on that issue, it cannot be held that the consumer concerned must, when he perceives the mark, give the matter further thought in order to arrive at the meaning relied on by the Board of Appeal.
28 The applicant also claims that the meaning relied on by the Board of Appeal is not descriptive of the services referred to in the application for registration.
29 However, first, contrary to what the applicant submits, the indications which may be used to designate the nature or the intended purpose of a service are not only those which indicate how and where the service in question is provided and at which customers it is directed. On the one hand, the nature of a service may also be described by indications relating to the various elements or aspects which the provision of that service entails for the target consumer. On the other hand, the indication that a service is suitable for the exercise of an activity serves to describe the intended purpose of that service.
30 Secondly, the applicant correctly points out that nature observation is an action of the consumer concerned. The fact none the less remains that that consumer will perceive as descriptive any indications that the rendering of a service enables nature to be observed or is suitable for that purpose, provided that those characteristics are relevant to the service concerned.
31 Thirdly, as far as the various categories of services referred to in the application for registration are concerned, it must be noted that nature observation is a recreational pastime. Consequently, the trade mark applied for is descriptive of the nature of the services ‘providing of recreation facilities; recreation information’ in Class 41 of the Nice Agreement, since it identifies the recreational activity concerned by the services at issue.
32 Moreover, consumers often use audio equipment to observe or watch nature, in particular to listen to or record sounds produced by fauna. Therefore, when it is used to designate the service ‘rental of audio equipment’ in Class 41 of the Nice Agreement, the trade mark applied for will be perceived as referring to the fact that the equipment rented is suitable for that purpose. It is therefore descriptive of the intended purpose of the object concerned by the service offered.
33 Nature observation may also require the use of sports equipment, since that activity normally involves travelling around in natural surroundings, on foot, by bicycle or by other means of essentially non-motorised transport. Consequently, where the trade mark applied for is used to designate the service ‘rental of sports equipment’ in Class 41 of the Nice Agreement, the consumer concerned will perceive it as meaning that the objects rented are suitable for travel in the natural environment, the fact that the equipment at issue is not exclusively intended for nature observation being irrelevant in that context. Consequently, in that case also, the trade mark applied for will be perceived as being descriptive of the intended purpose of the service offered.
34 Cultural events, as OHIM submits, may include aspects linked to nature observation, in particular in the case of artistic activities performed in the open air or the observation of cultural assets in natural surroundings. Consequently, when associated with the service ‘Arranging and organisation of cultural … events’ in Class 41 of the Nice Agreement, the trade mark applied for will be perceived as referring to the fact that the cultural events concerned will involve, to a certain extent, nature observation, a characteristic of the service offered.
35 Similar reasoning can be applied in relation to the services ‘arranging and organisation of … sportive events; sport camp services’, also in Class 41 of the Nice Agreement. Contrary to what the applicant claims, while sports activities generally involve physical effort, often that is not in a competitive context but as recreation, for enjoyment and well‑being. In that situation, the exercise of a sports activity in the open air often includes, in addition to the physical aspect, a nature‑observation aspect, intended to stimulate and educate the participant. Accordingly, where it is used to identify services relating to sports events or camps, the trade mark applied for will be perceived by the consumer concerned as referring to non-competitive sports activities carried out in the open air and including a nature‑observation aspect. It will therefore be perceived as being descriptive of the nature of the services offered.
36 As regards the services in Class 43 of the Nice Agreement, Article 7(1)(c) of Regulation No 40/94 provides, inter alia, that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the intended purpose of rendering of the service are not to be registered.
37 In the case of the services ‘hotels; boarding and lodging’ and ‘tourist homes’, the trade mark applied for will be perceived by the consumer concerned as referring to the fact that the place of the rendering of the services either directly allows nature observation or facilitates it, because there are natural phenomena close by which merit observation. Those characteristics describe the intended purpose of the services offered. They are, moreover, relevant for the consumer concerned, in as much as that consumer is likely to take them into consideration when he chooses temporary lodging or boarding services.
38 As regards the ‘rental of tents’, the classification of that service in Class 43 of the Nice Agreement suggests that it includes, in addition to rental of the tent itself, the rental of the site on which the tent is pitched. In that case, the line of argument expounded in paragraph 37 above is applicable. If the rental does not cover the site, but only the tent, the consumer concerned will perceive the mark applied for as referring to the fact that the object rented is suitable for nature observation, in particular in that it can be easily transported into the natural environment to serve as shelter for the observer. In that case, the trade mark applied for will thus be descriptive of the intended purpose of the object concerned by the service offered.
39 In the light of all the foregoing, it must be held that there is a sufficiently direct and specific relationship from the point of view of the relevant public between the trade mark applied for and all the services referred to in the application for registration. Consequently, the Board of Appeal did not err when it confirmed the refusal of registration under Article 7(1)(c) of Regulation No 40/94. The first plea must therefore be rejected.
The second plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94
40 It is apparent from the wording of Article 7(1) of Regulation No 40/94 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a Community trade mark (Case C-104/00 P DKV v OHIM [2002] ECR I‑7561, paragraph 29). There is therefore no need to examine the second plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94.
41 Consequently, the action must be dismissed in its entirety and it is not necessary to rule on the admissibility of the applicant’s first head of claim, requesting the Court to authorise registration of the trade mark applied for.
Costs
42 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 hofherr communikation GmbH to pay the costs.
Pelikánová | Jürimäe | Soldevila Fragoso |
Delivered in open court in Luxembourg on 9 March 2010.
[Signatures]