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Language of document : ECLI:EU:T:2010:35

Case T-344/07

O2 (Germany) GmbH & Co. OHG

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Application for the Community word mark Homezone – Absolute grounds for refusal – Distinctive character – Descriptive character – Article 7(1)(b) and (c) of Regulation (EC) No 40/94 (now Article 7(1)(b) and (c) of Regulation (EC) No 207/2009))

Summary of the Judgment

1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods – Aim – Need to preserve availability – Scope of the examination

(Council Regulation No 40/94, Art. 7(1)(c))

2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods – Meaning

(Council Regulation No 40/94, Art. 7(1)(c))

3. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods

(Council Regulation No 40/94, Art. 7(1)(c))

1. By prohibiting the registration as Community trade marks of descriptive signs and indications, Article 7(1)(c) of Regulation No 40/94 on the Community trade mark 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 prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks. For the purposes of the application of that provision, it needs to be examined whether, in at least one of its possible meanings, the sign at issue designates a characteristic of the goods and services concerned.

(see paras 20, 22)

2. For a trade mark which consists of a word or a neologism produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 40/94 on the Community trade mark, it is not sufficient that each of those components may be found to be descriptive, but the word or neologism itself must also be found to be so.

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 40/94, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful.

(see paras 26-27)

3. It has not been established that the word mark Homezone, one possible meaning of which is ‘home area’ or ‘local area’, and for which registration as a trade mark is sought in respect of telecommunications services in Class 38 of the Nice Agreement, could designate a telecommunications service in that class or one of its characteristics, for the purposes of Article 7(1)(c) of Regulation No 40/94 on the Community trademark, since that sign is capable of designating the reduced tariff of the mobile telephone service for the user who is inside a zone which he himself defined without specifying how that sign involved a reference to the idea of a tariff and, as a result, was capable of designating a telecommunications service characterised by a specific tariff system. Consequently, it cannot be considered that that mark is also descriptive of the other services in Class 38 on the sole ground that those services are associated with the mobile telephone service which involves the ‘homezone’ tariff option.

Nor has it been established that the word mark Homezone, for which registration is sought in respect of ‘apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; data processing equipment and computers’ in Class 9 could designate those goods or one of their characteristics. The capacity of those goods to make possible the operation of a mobile telephone service characterised by tariffs calculated on the basis of the location of the beneficiary of that service does not point to the existence of a direct and specific link which the relevant public could establish between the term ‘homezone’ and the goods in question. Consequently, it does not establish the descriptiveness of the sign Homezone, the meaning of which as regards such goods or some of their characteristics is, furthermore, unrelated to any notion of tariffs.

For the same reason, it has not been established that the word mark Homezone, in respect of which registration was sought for ‘engineering services; computer programming; computer programming services; providing of expert opinion; technical consultancy and providing of expertise; rental of data processing equipment and computers; technical design and planning of telecommunications equipment’ in Class 42, could designate those goods or one of their characteristics.

Finally, it has not been established that the word mark Homezone, in respect of which registration was sought for ‘network operator, information broker and provider services, namely arranging and leasing access time to computer databases; research in the field of telecommunications engineering; updating of database software; storage of data in computer databases; installation and maintenance of database software; leasing of access times to data bases’ in Class 42, could designate those goods or one of their characteristics. The ground to the effect that those services are ‘necessary to collect and process the parameters of the service (for example, the localisation and boundaries of the homezone determined by the user) and the customer data required for billing purposes’ does not make it possible to determine, for each of the categories of service in question, how those services are necessary for the collection and processing of the parameters of the mobile telephone service and the data required for billing purposes, from the point of view of geographical localisation and the boundaries of the homezone of the user, it also does not establish that the sign Homezone is descriptive of such services or of some of their characteristics. It is not apparent from that reasoning that the relevant public will perceive, immediately, and without further thought, the sign Homezone as being descriptive of one of the characteristics of those services.

(see paras 33, 37, 48-49, 53, 60-61, 66, 68)