JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
2 April 2009 (*)
(Community trade mark – Application for the Community word mark ULTIMATE FIGHTING CHAMPIONSHIP – Absolute grounds for refusal – Lack of distinctive character – Descriptive character – Duty to state reasons – Articles 7(1)(b) and (c) and 73 of Regulation (EC) No 40/94)
In Case T‑118/06,
Zuffa, LLC, established in Las Vegas, Nevada (United States), represented by S. Malynicz, Barrister, M. Blair and C. Balme, Solicitors,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
ACTION brought against the decision of the First Board of Appeal of OHIM of 30 January 2006 (Case R 931/2005‑1) concerning registration of the word sign ULTIMATE FIGHTING CHAMPIONSHIP as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of J. Azizi, President, E. Cremona and S. Frimodt Nielsen (Rapporteur), Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 12 April 2006,
having regard to the response lodged at the Registry of the Court on 13 July 2006,
having regard to the order of the President of the Third Chamber of 13 November 2008 joining the present case with Case T‑379/05 for the purposes of the oral procedure,
further to the hearing on 16 December 2008,
gives the following
Judgment
Background to the dispute
1 On 25 July 2002, the applicant, Zuffa, LLC, filed an application under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, for registration of a Community word mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
2 The mark in respect of which registration was sought is the word mark ULTIMATE FIGHTING CHAMPIONSHIP.
3 The goods and services in respect of which registration of the mark was sought are, in particular, in Classes 9, 16, 25, 28 and 41 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended (‘the Nice Agreement’), and correspond, for each of those classes, to the following description:
– ‘Pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital video discs; digital versatile discs; CD-ROM discs all featuring mixed martial arts competitions, events and programs; computer game programs; computer software; motion picture films in the field of mixed martial arts; eyeglasses; sunglasses’ in Class 9;
– ‘Books and printed instructional and teaching manuals in the field of sports and entertainment; note paper dispensers; general features, sports, fitness and entertainment magazines; newspapers in the field of sports, fitness and entertainment; calendars; mounted and unmounted photographs; trading cards; road maps; books and journals featuring athletic contests and games; catalogues for the sale of athletic merchandise; envelopes; cartoon prints on paper and cardboard; blank and picture poster cards; note cards; note pads; greeting cards; cookbooks; adult and children’s activity and colouring books; puffy stickers; adhesive stickers; photograph albums; memorandum books; pens; pencils; folders and portfolios for papers; notebooks and binders; letter openers; memo holders; pennants made of paper and mounted on sticks; diaries; clipboards; book covers; book marks; bulletin boards; erasable memo boards; pen and pencil holders; paper clip holders; paper weights; paper napkins and towels; posters; event programs; writing paper and stationery; drawing paper; gift wrapping paper; luminous paper; graphics paper; stickers; paper banners; decals and windshield decals strips; collector decals and collector decals with display sheets; bumper stickers and strips; memo pads; non-electric erasers; electric erasers; stationery holders; maps; desk sets; colour lithograph sticker books; postcard books; holographic greeting and trading cards; pencil bags; pencil sharpeners; gift wrapping paper sets; decorative gift boxes; comic books; bookmarks; posterbooks; paper, party and lawn signs; stamp pads; rubber stamps for impressing illustrated images; score, check and autograph books; adhesive tape dispensers for stationery or household use; corrugated cardboard storage boxes and corrugated closet wardrobes and storage boxes; reflective paper stock’ in Class 16;
– ‘Clothing and wearing apparel, namely, warm-up suits, sweatshirts, sweatpants; tee-shirts; polo shirts; golf shirts; sports shirts; tank tops; vests; pants for babies; baby booties; belts; neckties; suspenders; bandanas; beach sandals; infant and toddler sleepwear; robes; nightshirts and night gowns; pyjamas and loungewear; bathing suits; beach wear; diaper sets; toddler short sets; jogging suits; rompers; boys short sets; socks; playsuits; coveralls; wristbands; union suits; henley suits; shorts; skirts; blouses; pants; slacks; shirts; jackets; referees and umpires uniforms; athletic uniforms; team uniform reproductions; sweaters; parkas; turtlenecks; mittens and gloves; underwear; jerseys; bowties; headwear and scarves; ear muffs; earbands and headbands; hosiery; rainwear, namely rain ponchos and jackets; footwear, namely shoes, boots and slippers; bath thongs; shell suit; hats; caps; visors; aprons; cloth and ski bibs; canvas footwear; knickers; wind resistant jackets; masquerade costumes; blazers; legwarmers; jeans; leotards; workout and sports apparel, namely shorts, jackets, slacks, shirts’ in Class 25;
– ‘Rubber balls; action figures and accessories; action skill games; bean bag dolls; plush toys; balloons; golf balls; tennis balls; bath toys; Christmas tree ornaments; boards games; building blocks; equipment sold as a unit for playing card games; dolls and doll clothing; doll playsets; children’s play cosmetics; crib toys; electric action toys; manipulative games; golf gloves; golf ball markers; jigsaw puzzles; kites; mobiles; music box toys; party favours in the nature of small toys; inflatable pool toys; multiple activity toys; wind-up toys; target games; disc-type toss toys; bows and arrows; toy vehicles; toy cards; toy trucks; toy bucket and shovel sets; roller skates; toy model hobbycraft kits; toy rockets; toy guns; toy holsters; musical toys; badminton sets; bubble making wands and solution sets; toy figurines; toy banks; puppets; yo-yos; skateboards; scooters; face masks; hand-held electronic games; playing cards; plastic water-filled snow globes’ in Class 28;
– ‘Live stage shows; presentation of live performances; theatre productions; amusement park and theme park services; entertainer services; pleasure-ground services; educational and entertainment services rendered in or relating to theme parks; production, presentation, distribution and rental of television and radio programs; production, presentation, distribution and rental of motion picture films; production, presentation, distribution and rental of sound and video recordings; entertainment information; production of entertainment shows and interactive programs for distribution via television, cable, satellite, audio and video media, cartridges, laser discs, computer discs and electronic means; production and provision of entertainment, news and information via communication and computer networks’ in Class 41.
4 By decision of 31 May 2005, the examiner refused the trade mark application, pursuant to Article 38 of Regulation No 40/94, in respect of all the goods and services in Classes 9, 16, 25, 28 and 41, on the ground that the mark applied for was descriptive as well as devoid of any distinctive character and that it could not be registered by reason of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 40/94.
5 On 29 July 2005, the applicant filed an appeal against the examiner’s decision under Articles 57 to 62 of Regulation No 40/94.
6 By decision of 30 January 2006 (‘the contested decision’), the First Board of Appeal annulled the examiner’s decision, dismissed the applicant’s appeal in so far as it challenged the examiner’s finding that the mark ULTIMATE FIGHTING CHAMPIONSHIP was devoid of any distinctive character or was descriptive in respect of all the goods and services in Classes 9, 16, 25, 28 and 41 referred to in the trade mark application, and remitted the case to the examiner with regard to the question whether the conditions under Article 7(3) of Regulation No 40/94 were met.
7 The Board of Appeal first of all held that the public targeted was the average English-speaking consumer who attends live shows and entertainment and buys consumer goods, such as clothing, stationery or toys (see paragraph 13 of the contested decision).
8 The Board of Appeal then went on to point out that the trade mark applied for was a combination of English words which, taken together, had a clear and unequivocal meaning: ‘ULTIMATE’ means ‘conclusive, final’, ‘FIGHTING’ means ‘combat, contest’ and ‘CHAMPIONSHIP’ is a competition held to determine a champion. The expression ‘ultimate fighting championship’ would thus be understood by any person conversant in the English language as meaning ‘a competition organised in ultimate fighting’, since the words ‘ultimate fighting’ would be perceived as designating a type of combat which ends when one of the combatants is no longer able to fight (see paragraphs 14 and 15 of the contested decision).
9 In addition, the Board of Appeal held that the services in Class 41 covered by the trade mark application related directly to the organisation of sporting events. The mark ULTIMATE FIGHTING CHAMPIONSHIP was descriptive of those services because it indicated the content of such events. For the goods in other classes, the mark applied for could not be considered to be descriptive but was nevertheless devoid of any distinctive character. The mark ULTIMATE FIGHTING CHAMPIONSHIP would not be perceived as indicating the commercial origin of the goods covered by the application, but as designating a sporting event in generic terms. In matters of sporting tournaments or championships, consumers were, moreover, used to the terms ‘European Football Championship ‘or ‘Masters Golf Tournament’, for example, identifying the event in question and were used to products, for example, clothes bearing the name of that event, also bearing the manufacturer’s name (see paragraphs 16 to 25 of the contested decision).
10 Finally, after having pointed out, at paragraph 20 of the contested decision, that it could not be ruled out that, following a process of education, the targeted public would familiarise itself with the name of a sporting activity to the extent of associating it with a particular undertaking, the Board of Appeal remitted the case to the examiner in respect of the question whether the mark ULTIMATE FIGHTING CHAMPIONSHIP had acquired distinctiveness through use (see paragraphs 26 to 28 of the contested decision).
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision in so far as it dismisses its application on the basis of Article 7(1)(b) and (c) of Regulation N 40/94;
– order OHIM to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The subject-matter of the dispute
13 At the hearing, in response to questions from the Court, OHIM acknowledged that the examiner had not yet ruled on whether the mark applied for (ULTIMATE FIGHTING CHAMPIONSHIP) had acquired distinctiveness through use, within the meaning of Article 7(3) of Regulation No 40/94, pending the decision of the Court bringing the present proceedings to an end. Consequently, the applicant retains an interest in requesting annulment of the contested decision, since the form of order which it seeks has not become devoid of purpose.
14 When questioned on that point at the hearing, the parties also confirmed that the question as to whether the mark applied for (ULTIMATE FIGHTING CHAMPIONSHIP) had acquired distinctiveness though use, within the meaning of Article 7(3) of Regulation No 40/94, was not relevant to the present dispute.
The legality of the contested decision
Arguments of the parties
15 Essentially, the applicant claims that, in adopting the contested decision, the Board of Appeal infringed Article 7(1)(b) and (c) of Regulation No 40/94. In that regard, it states that the Board of Appeal erred in its assessment of the meaning of the sign ULTIMATE FIGHTING CHAMPIONSHIP and in its assessment of the relationship between the sign ULTIMATE FIGHTING CHAMPIONSHIP and the goods and services covered by the trade mark application. In addition, it submits that certain names of sporting competitions may be used as trade marks and are not devoid of distinctive character.
16 OHIM contests all of the applicant’s claims.
Findings of the Court
17 Although, in the present case, the applicant has not invoked a failure to state reasons, compliance with the duty to state reasons, which applies to all acts subject to judicial review by the Community Courts, is a matter of public policy that must be raised, if necessary, of the Court’s own motion (see, to that effect, Case 18/57 Nold v High Authority [1959] ECR 41, at p. 52; Case C-166/95 P Commission v Daffix [1997] ECR I-983, paragraph 24; and Case T‑388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II‑4301, paragraph 59). The Court finds it necessary to consider of its own motion whether the contested decision contains an adequate statement of reasons. The parties were questioned at the hearing on the adequacy of the statement of the reasons given in the contested decision.
18 Under Article 73 of Regulation No 40/94, decisions of OHIM must state the reasons on which they are based and may be based only on reasons on which the parties concerned have had an opportunity to present their comments. In addition, Rule 50(2)(h) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides that the Board of Appeal’s decision must contain the reasons therefore. The duty to state reasons set out in those provisions has the same scope as that enshrined in Article 253 EC (see Joined Cases T-124/02 and T-156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II-1149, paragraph 72, and Case T-168/04 L & D v OHIM – Sämann (Aire Limpio) [2006] ECR II-2699, paragraph 113 and the case-law cited).
19 It is settled case-law that the statement of reasons required under Article 253 EC must set out clearly and unequivocally the reasoning of the body which adopted the act in question. Accordingly, the duty incumbent on the Board of Appeal to set out the reasons for its decisions has two purposes: first, to allow interested parties to know the justification for the measures taken so as to enable them to protect their rights and, second, to enable the Community Courts to review the legality of those decisions (see VITATASTE and METABALANCE 44, paragraph 73, and Aire Limpio, paragraph 114 and the case-law cited).
20 Whether the statement of reasons for a decision satisfies those requirements is a matter to be assessed by reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see VITATASTE and METABALANCE 44, paragraph 73 and the case-law cited).
21 In that regard, under Article 4 of Regulation No 40/94, the decisive factor for a sign capable of being represented graphically to be eligible for registration as a Community trade mark is its capacity to distinguish the goods of one undertaking from those of another. It follows, in particular, that the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 40/94, respectively the absence of distinctive character and the descriptive character of the sign, can be assessed only in relation to the goods or services in respect of which registration of the sign is sought (see Case T-135/99 Taurus-Film v OHIM (Cine Action) [2001] ECR II-379, paragraph 25, and Case T-136/99 Taurus-Film v OHIM(Cine Comedy) [2001] ECR II-397, paragraph 25 and the case-law cited).
22 Consequently, the existence of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation No 40/94 must form the subject of a specific assessment, taking account of all the relevant facts and circumstances, by reference, first, to the goods or services in respect of which registration has been sought and, second, to the perception of the relevant persons, namely the consumers of those goods or services (see Case T-315/03 Wilfer v OHIM (ROCKBASS) [2005] ECR II-1981, paragraph 51 and the case-law cited, and Case T‑441/05 IVG Immobilien v OHIM (I) [2007] ECR II‑1937, paragraph 41; see also, by way of analogy, Case C-218/01 Henkel [2004] ECR I-1725, paragraphs 50 and 51).
23 Furthermore, each of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 must be interpreted in the light of the public interest underlying each of them, each being independent of the others and calling for separate examination (see Joined Cases C-456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 45 and the case-law cited). The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending on which ground for refusal is at issue (see Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑0000, paragraphs 54 and 55 and the case-law cited, and Case T‑302/03 PTV v OHIM (map&guide) [2006] ECR II‑4039, paragraph 33).
24 In that context, the public interest underlying Article 7(1)(b) of Regulation No 40/94 relates, first, to the need not unduly to restrict the availability of the sign for which registration is sought for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought and, second, to guarantee the identity of the origin of the marked products or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish those goods or services from others which have a separate origin. Such a guarantee constitutes the essential function of the trade mark (see, to that effect, Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraphs 23, 26 and 27, and the case-law cited, and Eurohypo v OHIM, paragraphs 59 and 62).
25 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 characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly precludes such signs or indications from being reserved to one undertaking alone on the ground that they have been registered as trade marks (see ROCKBASS, paragraph 50 and the case-law cited).
26 It follows that there is a clear overlap between the respective scopes of the grounds set out in Article 7(1)(b) and (c) of Regulation No 40/94. In particular, it is clear from the case-law that a word mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) of Regulation No 40/94 is, for that reason, liable in principle to be regarded as also lacking distinctive character with regard to those same goods or services within the meaning of Article 7(1)(b) of that regulation. However, that is a matter which must be separately demonstrated (see, to that effect, Eurohypo v OHIM, paragraphs 69 and 70).
27 It follows that, where registration of a mark is sought in respect of various goods or services, the Board of Appeal must determine specifically that none of the grounds for refusal of registration listed in Article 7(1) of Regulation No 40/94 applies to the mark in question, in relation to each of those goods or services claimed, and may reach conclusions which differ depending upon the goods or services in question (see, by way of analogy, Case C-363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraphs 33 and 73). Therefore, when refusing registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated. However, where the same ground for refusal is given for a category or group of goods or services, the competent authority may limit itself to using general reasoning for all of the goods or services concerned (see, by way of analogy, Case C‑239/05 BVBA Management, Training en Consultancy [2007] ECR I-1455, paragraph 38).
28 In that context, the option for the Board of Appeal to use general reasoning for a series of goods or services can extend only to goods or services which have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision in question, first, to explain adequately the reasoning followed by the Board of Appeal for each of the goods and services belonging to that category and, second, to be applied without distinction to each of the goods or services concerned. The mere fact that the goods and services in question are in the same class under the Nice Agreement is not sufficient, for that purpose, since those classes often contain a wide variety of goods or services which do not necessarily have a sufficiently direct and specific link to each other (see, to that effect, Case T‑329/06 Enercon v OHIM (E), not published in the ECR, paragraphs 34 and 35, and Case T‑297/07 TridonicAtco v OHIM(Intelligent Voltage Guard), not published in the ECR, paragraphs 22 to 24; also see, to that effect and by way of analogy, Case T-392/04 Gagliardi v OHIM – Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), not published in the ECR, paragraphs 91 and 92).
29 In the present case, the trade mark applied for covers more than 215 goods falling within four separate classes under the Nice Agreement, as well as at least 13 kinds of different services, including pre-recorded audio cassettes, cookery books, baby booties, bows and arrows, or the provision of information in the field of sports via computer networks (see paragraph 3 above). The goods and services covered by the trade mark applied for thus demonstrate such differences between them, by reason of their nature, characteristics, intended purpose and methods of marketing, that they cannot be regarded as constituting a homogenous category that would allow the Board of Appeal to adopt a general statement of reasons in their regard.
30 The Board of Appeal merely distinguished between the services in Class 41, on the one hand, for which it indicated that the trade mark applied for was descriptive (see paragraph 17 of the contested decision), and all the goods covered by the applicant’s trade mark application, on the other hand, for which it indicated that the trade mark applied for could not be regarded as descriptive, but that it was in any event devoid of distinctive character, since it would be perceived, not as an indicator of origin, but as a generic term identifying a sporting event (see paragraph 18 of the contested decision).
31 By reason of its very broad nature, such a statement of reasons is clearly not sufficient to enable the Court to exercise its power to review the validity of the contested decision.
32 As regards the services in Class 41 of the Nice Agreement, the Board of Appeal pointed out that, since the words ‘ultimate fighting championship’ indicated the contents of those services, the trade mark applied for was descriptive as far as those services were concerned. However, it is apparent from the list in paragraph 3 above that the services covered by the mark applied for – which include live stage shows, entertainer services, educational and entertainment services rendered in or relating to theme parks, rental of motion picture films, entertainment information, interactive programs for distribution via television – do not have a sufficiently direct and specific link to each other to the extent that they form a sufficiently homogenous category as to enable the Board of Appeal to have recourse to a general statement of reasons in their regard. First, the mere fact that the goods or services in question come within the same class of the Nice Agreement is not sufficient (see paragraph 28 above). Second, the heterogeneity of those services is such that the statement of reasons set out by the Board of Appeal is excessively general and abstract, regard being had to the nature and characteristics of those services.
33 As regards all the goods in Classes 9, 16, 25 and 28 of the Nice agreement, in respect of which the Board of Appeal pointed out that the sign ULTIMATE FIGHTING CHAMPIONSHIP, as it could not be perceived as an indication of origin but could only be regarded as alluding to a sporting event, was devoid of distinctive character, the heterogeneity of those goods is even more significant than that of the services in Class 41, with the result that they do not have a sufficiently direct and specific common link to each other to the extent of forming such a sufficiently homogenous category as to allow the Board of Appeal to have recourse to a general statement of reasons in their regard, and the reasoning contained in the contested decision is, as far as they are concerned, excessively general and abstract with regard to their nature and characteristics.
34 Consequently, the division into two categories by the Board of Appeal leaves in place a very strong heterogeneity between the goods and services rearranged in that manner, with the result that they cannot, by reason of that distinction alone, constitute homogenous categories capable of justifying the Board of Appeal’s recourse to a general statement of reasons with regard to each of those categories.
35 In those circumstances, the reasons set out by the Board of Appeal for each of the two categories which it established fail sufficiently to explain the reasoning followed by it with regard to each of the goods and services in respect of which registration of the mark ULTIMATE FIGHTING CHAMPIONSHIP has been sought.
36 It follows that the contested decision is vitiated by an inadequate statement of reasons and must for that reason be annulled.
Costs
37 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 30 January 2006 (Case R 931/2005-1) in so far as it dismisses the appeal brought by Zuffa, LLC, on the basis of Article 7(1)(b) and (c) of Council Regulation (EC) N0 40/94 of 20 December 1993 on the Community trade mark;
2. Orders OHIM to pay the costs.
Azizi | Cremona | Frimodt Nielsen |
Delivered in open court in Luxembourg on 2 April 2009.
[Signatures]