JUDGMENT OF THE GENERAL COURT (Third Chamber, Extended Composition)
28 March 2019 (*)
(EU trade mark — Applications for EU figurative marks Simply.Connected. — Absolute ground for refusal — Lack of distinctive character — Scope of the examination to be carried out by the Board of Appeal — Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001)) — Article 64 of Regulation (EC) No 207/2009 (now Article 71 of Regulation 2017/1001)
In Cases T‑251/17 and T‑252/17,
Robert Bosch GmbH, established in Stuttgart (Germany), represented by S. Völker and M. Pemsel, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Mensing and D. Hanf, acting as Agents,
defendant,
ACTIONS brought against the decisions of the Fifth Board of Appeal of EUIPO of 9 March 2017 (Case R 948/2016-5) and 10 March 2017 (Case R 947/2016-5), concerning applications for registration of the figurative signs Simply.Connected. as EU trade marks,
THE GENERAL COURT (Third Chamber, Extended Composition),
composed of S. Frimodt Nielsen (Rapporteur), President, V. Kreuschitz, I.S. Forrester, N. Półtorak and E. Perillo, Judges,
Registrar: E. Coulon,
having regard to the applications lodged at the Court Registry on 28 April 2017,
having regard to the responses lodged at the Court Registry on 13 July 2017,
having regard to the measures of organisation of procedure of 26 September 2018,
having regard to the fact that the matters have been assigned to the Third Chamber, Extended Composition, of the Court,
having regard to the decision of 17 January 2019 joining the present cases,
having regard to the fact that no request for a hearing was submitted by the parties within 3 weeks of service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the disputes
1 On 19 November 2015, the applicant, Robert Bosch GmbH, filed two applications for registration of EU trade marks 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 The first mark in respect of which registration was sought (‘the first mark applied for’, Case T‑251/17) is the following figurative sign:
3 The second mark in respect of which registration was sought (‘the second mark applied for’, Case T‑252/17) is the following figurative sign:
4 The goods and services in respect of which the two registrations were sought are identical. They are in Classes 7, 9, 11, 12, 36 to 38, 41 and 42 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 7: ‘Electric engines (other than for land vehicles), starters (other than for land vehicles), generators, ignition systems for internal combustion engines, glow plugs, sparking-plugs, lambda probes, igniting distributors, ignition coils, magnetos, spark plug connectors, injection pumps, fuel pumps, engine speed governors, injectors and nozzle carriers; valves for machines; fuel filters, oil filters, air filters; hydraulic pumps, hydraulic motors, hydraulic valves, hydraulic cylinders, hydraulic reservoirs, hydraulic filters; pneumatic valves, power steering, air brakes, pneumatic devices, namely pneumatic compressors, compressed air reservoirs, control valves, brake valves; exhaust‑gas turbo-chargers; electronic control devices for production technology, resistance welding systems, servo drives and drive spindles, robot controllers; modular elements for use in automatic assembly/manufacturing engineering, including workstation equipment, namely work tables and work benches, machine mounting plates, safety and protection devices, swivel workstations, lifting devices, table presses, material delivery and sequencing systems, namely assembly lines and conveying chains, vibrating conveyors, tilt mechanisms and programmable electric devices, including grabs and swan-neck robots; burring machines (mechanical, thermal and electrochemical); packing machines; electric power tools and plug-in tools therefor; electric kitchen machines, and accessories therefor; washing machines for crockery, washing apparatus, radio frequency generators; igniting devices for internal combustion engines; parts and accessories for the aforesaid goods, included in class 7’;
– Class 9: ‘Sensors; programmable controllers; electric and electronic measuring, checking (supervision) and control apparatus for installing in motor vehicles; apparatus for the recording, processing, sending, receiving and display of signals, data, images and sounds, electric and electromagnetic data carriers; video cameras, monitors, loudspeakers, antennas for radios and television receivers, telephones, car aerials, portable radiotelephones, car telephones; alarm systems; locating and navigation equipment for installation in land, air and water vehicles; electric power units, electric filters, semi-conductor components, optoelectronic components; printed, engraved and potted circuits, integrated circuits, relays, fuses, cables for electric, electronic and optical signals, cable linkages, electric switches, electronic beam adjusters, sensors, detectors, switchgear/switchboxes, solar cells and solar generators; analysis apparatus for automobiles, namely analysis of exhaust gases, soot particles, brake function, diagnostic instruments and simulation devices, test apparatus for engines and motors, workshop test instruments for injection pumps, starter motors and generators; batteries, chargers, battery testers, amplifiers, transformers, cable drums; computerised driving dynamics regulation systems; parts and accessories for the aforementioned goods’;
– Class 11: ‘Heating, cooking, grilling, warming and refrigerating apparatus; gas lighters; included in class 11; headlamps and lights, including for vehicles; refrigerating apparatus and machines; ventilating installations; hair driers (dryers); electric coffee brewers; roasters; baking ovens; electric egg cookers; toasters; air conditioning installations; control and regulating apparatus for gas heaters; clothes dryers; parts and fittings for the aforesaid goods in class 11’;
– Class 12: ‘Restraints for fitting in motor vehicles, namely belt tighteners, airbags; windscreen defrosting systems; servo brakes and air brakes for land and air vehicles, antilock brake systems; traction control systems; gear controls; windscreen wipers; hydraulic steering mechanisms for land, air and water vehicles; motors, electric, for land vehicles; and parts and fittings, all included in class 12 for the aforesaid goods’;
– Class 36: ‘Insurance services’;
– Class 37: ‘Installation, maintenance and commissioning of parts and accessories of motor vehicles, car radio systems, radio telephones, power hand tools, workshop appliances and devices, power generators, of household and kitchen appliances, radio and television systems, sanitary devices, heating and air-conditioning systems and furniture; repair and maintenance of motor vehicles at motor sports events’;
– Class 38: ‘Broadcast service, transmission of sound, data and images via satellites’;
– Class 41: ‘Training and instruction of third parties in electrical engineering and electronics’;
– Class 42: ‘Construction and design planning and consultancy; creation and installation of programs for data processing; conducting development initiatives, testing and research; technical consultancy and providing of expertise; planning, development and technical testing of space projects; technical monitoring of buildings and installations’.
5 By letters of 16 March 2016, the EUIPO examiner informed the applicant that the two marks applied for were partly caught by the absolute grounds for refusal laid down in Article 7(1)(b), (c) and (2) of Regulation No 207/2009 (now Article 7(1)(b), (c) and (2) of Regulation 2017/1001).
6 By letters of 18 April 2016, the applicant submitted its observations.
7 By decisions of 25 April 2016, the examiner refused, on the basis of Article 7(1)(b), (c) and (2) of Regulation No 207/2009, to register the two marks applied for in respect of the goods and services covered by those marks in Classes 9, 37, 38 and 41 and the services of ‘creation and installation of programs for data processing’ and ‘technical consultancy’ in Class 42.
8 By contrast, no objection was raised to the goods and services covered by the applications for registration that fell in Classes 7, 11, 12 and 36 and the services of ‘construction and design planning and consultancy’, ‘conducting development initiatives, testing and research’, ‘providing of expertise’, ‘planning, development and technical testing of space projects’, or ‘technical monitoring of buildings and installations’ that fell in Class 42.
9 On 23 May 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against each of the examiner’s two decisions.
10 By decisions of 9 March 2017 (case R 948/2016-5, concerning the first trade mark applied for, ‘the first contested decision’) and 10 March 2017 (case R 947/2016-5, concerning the second mark applied for, ‘the second contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeals on identical grounds.
11 First, the Board of Appeal took the view that the word elements comprising the marks applied for would be understood as a slogan devoid of distinctive character which meant ‘just connected’ or ‘above all connected’ to a network. In that regard, the Board of Appeal found that the relevant public would not attach any significance to the full stops at the end of each word element since consumers tended to perceive sequences of letters in a manner that seemed sensible to them regardless of punctuation and use of upper- or lower-case letters. Similarly, neither the rounded rectangle without a top right-hand corner which surrounded the word elements nor the familiar symbol for a wireless connection (consisting of the representation of three concentric waves) conferred on the signs at issue a distinctive character since, being customary in the context of the goods and services at issue, they would not be perceived consciously (paragraphs 17 to 19 of the contested decisions). In those circumstances, the signs at issue could not be perceived as indications of the commercial origin of the goods and services covered by the applications for registration (paragraph 20 of the contested decisions).
12 Second, the Board of Appeal, taking into account almost all of the goods and services referred to in paragraph 4 above and having grouped them into categories, found that consumers would expect, as the case might be, either a normal connection to a network or the interconnection of the goods through the ‘Internet of Things’, and that the goods and services in question were all directly related to the provision of such wireless connections (paragraphs 25 and 26 of the contested decisions). The signs at issue would therefore be perceived as a laudatory indication of an abstract quality of the goods and services covered by the applications for registration (paragraph 27 of the contested decisions).
Forms of order sought
13 The applicant claims that the Court should:
– annul the two contested decisions;
– order EUIPO to pay the costs, including those incurred in the appeal proceedings.
14 EUIPO contends that the Court should:
– dismiss the actions;
– order the applicant to pay the costs of the two cases.
Law
15 In support of each of the two actions, which are presented in identical terms, the applicant relies on three pleas in law. The first alleges infringement of the combined provisions of Article 64 of Regulation No 207/2009 and Article 263 TFEU. The second alleges infringement of Article 7(1)(b) of Regulation No 207/2009. By the third plea, the applicant submits that the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009.
The first plea in law, alleging infringement of the combined provisions of Article 64 of Regulation No 207/2009 and Article 263 TFEU
16 The applicant submits that the Board of Appeal examined the goods and services in Classes 7, 11, 12 and 36 and those in Class 42 other than the services of creation and installation of programs for data processing and technical consultancy. However, the examiner did not object to the registration of those goods and services. In so doing, the Board of Appeal exceeded the limits of its jurisdiction and, to that extent, the contested decisions should be annulled (judgment of 18 November 2014, Lumene v OHIM (THE YOUTH EXPERTS), T‑484/13, not published, EU:T:2014:963).
17 EUIPO disputes that line of argument.
18 First, it must be stated at the outset that, as EUIPO correctly submits, Article 263 TFEU is not applicable to appeals before the Boards of Appeal and that, consequently, in so far as it is based on infringement of that provision, the first plea must be rejected as ineffective.
19 Second, as the applicant states, and in contrast to the claims of the appellant before the Board of Appeal in the case that led to the judgment of 18 November 2014, THE YOUTH EXPERTS (T‑484/13, not published, EU:T:2014:963), the applicant asked the Board of Appeal to set aside the examiner’s decisions only in so far as they adversely affected it.
20 It is not disputed that, in the contested decisions, the Board of Appeal examined the distinctive character of the marks applied for in respect of goods and services to which the examiner had not objected.
21 As stated in paragraph 7 above, the examiner refused to register the two marks applied for in respect of the goods and services concerned in Classes 9, 37, 38 and 41 and in respect of the services of ‘creation and installation of programs for data processing’ and ‘technical consultancy’ in Class 42. It follows that the marks applied for may be registered in respect of the other goods and services listed in paragraph 4 above, namely those in Classes 7, 11, 12 and 36 and the services of ‘construction and design planning and consultancy’, ‘conducting development initiatives, testing and research’, ‘providing of expertise’, ‘planning, development and technical testing of space projects’ and ‘technical monitoring of buildings and installations’ in Class 42 (see paragraph 8 above).
22 However, some of those goods and services which were not in issue were nevertheless examined by the Board of Appeal in the contested decisions and were grouped into categories (a), (f), (g), (h), (i) and (j) established by the Board in paragraphs 23 and 24 of the contested decisions. In paragraphs 26 and 27 of the contested decisions, the Board found that the marks applied for were likewise devoid of any distinctive character in respect of the goods and services in categories (a), (f), (g), (h), (i) and (j) which were established in the contested decisions and included goods and services that were not in issue.
23 It is therefore common ground that the Board of Appeal examined goods and services to whose registration the examiner had not objected and which the appeals before it did not concern. Although the parties agree that the Board was not entitled to carry out such an examination, they disagree about the implications.
24 According to the applicant, which relies on the judgment of 18 November 2014, THE YOUTH EXPERTS (T‑484/13, not published, EU:T:2014:96), it should be found that, in examining the goods and services to which the examiner had not raised any objection, the Board of Appeal exceeded its jurisdiction and vitiated the contested decisions, which should be annulled to that extent.
25 In EUIPO’s view, however, the examination by the Board of Appeal of the distinctive character of the marks applied for in respect of goods and services that were not in issue did not enlarge the scope of the appeals. The considerations concerning those goods and services should therefore be regarded as utterly superfluous and consequently as having no bearing on the legality of the contested decisions, and so the first plea should be rejected.
26 First, it should be observed that the operative part of the contested decisions simply dismisses the appeals brought before the Board of Appeal. However, as has been pointed out in paragraph 19 above, the applicant’s appeals before the Board related only to the goods and services in respect of which the examiner objected to the registration of the marks applied for.
27 Second, clearly, under Article 64(1) of Regulation No 207/2009, following the examination on the merits of the appeal, the Board of Appeal is to decide thereon and may, in doing so, exercise any power within the competence of the department which was responsible for the decision appealed against. It follows from that provision that, through the effect of the appeal against an examiner’s decision refusing registration, the Board of Appeal may carry out a new, full examination of the merits of the application for registration, in terms of both law and fact, which is to say, in the present case, itself decide on the application for registration by either rejecting it or declaring it to be founded, thereby either upholding or reversing the decision appealed against (judgment of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 21; see also, by analogy, judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraphs 56 and 57).
28 That power to carry out a new, full examination of the merits of the application for registration, in terms of both law and fact, is, however, conditional on the admissibility of the appeal before the Board of Appeal (judgment of 3 July 2013, NEO, T‑236/12, EU:T:2013:343, paragraph 22; see also, by analogy, order of 2 March 2011, Claro v OHIM, C‑349/10 P, not published, EU:C:2011:105, paragraph 44).
29 In that regard, the first sentence of Article 59 of Regulation No 207/2009 states that ‘any party to proceedings adversely affected by a decision may appeal’. It follows from that provision that, as the applicant did in this case, parties to proceedings before EUIPO may appeal to the Board of Appeal against a decision taken by a lower department of EUIPO only in so far as that decision has rejected their claims or applications. In so far as the decision of the lower department of EUIPO has, on the contrary, upheld the claims of a party, that party does not have standing to appeal to the Board of Appeal (judgment of 3 July 2013, NEO, T‑236/12, EU:T:2013:343, paragraph 23; see also, to that effect, judgment of 14 December 2011, Völkl v OHIM — Marker Völkl (VÖLKL), T‑504/09, EU:T:2011:739, paragraph 55 and the case-law cited).
30 It is clear from the first sentence of Article 59 of Regulation No 207/2009 that, where, as in the present case, the examiner has rejected an application for registration of an EU trade mark only in respect of a part of the goods and services covered by that application, while allowing registration in respect of a part of the goods and services covered by it, the appeal brought by the applicant for the trade mark before the Board of Appeal can lawfully relate only to the goods and services concerned by the examiner’s refusal to allow registration.
31 However, in the present case, as has been pointed out in, inter alia, paragraphs 19 and 26 above, the applicant filed appeals with the Board of Appeal seeking annulment of the examiner’s decisions to the extent that its applications for registration had been rejected. The Board was therefore wrong, in the contested decisions, to examine the applicability in the present case of Article 7(1)(b) of Regulation No 207/2009 in respect of goods and services to which the examiner had not raised any objection. Under the case-law cited in paragraph 28 above, the Board of Appeal has no discretion to extend the scope of an appeal to matters that the appellant would not have standing to put before it.
32 Nevertheless, it is clear from the operative part of the contested decisions that, in the present case, the Board of Appeal merely dismissed the appeals (see paragraph 26 above). Under Article 58 of Regulation No 207/2009, such rejection has only the effect of rendering the examiner’s decisions enforceable, subject to proceedings being brought as provided for in Article 64(3) of Regulation No 207/2009.
33 Moreover, when questioned on that point in relation to a measure of organisation of procedure, EUIPO confirmed that the fact that the Board of Appeal took account of goods and services to which the examiner had not objected did not, per se, have any bearing on the applicant’s rights to register the marks applied for in respect of those goods and services. According to EUIPO, those rights could be called into question only if the examiner, of his own motion, resumed the examination of absolute grounds for refusal which could prevent the registration of the marks applied for on points he had not previously raised. The examiner would then be impelled to take new decisions against which separate appeals from those at issue in the present proceedings could be brought before the Boards of Appeal.
34 It follows that the considerations in the contested decisions which relate to the examination of goods and services to which the examiner had raised no objection go beyond the scope of the appeals which had been duly brought before the Board of Appeal, and accordingly, those considerations have no bearing whatsoever on either the scope or effects of the contested decisions. Consequently, it must be held that those considerations are not in the nature of a decision and their annulment would be of no consequence.
35 The first ground of appeal must therefore be rejected as ineffective.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
36 By its second plea, the applicant claims that, in the contested decisions, the Board of Appeal infringed Article 7(1)(b) of Regulation No 207/2009.
The contested decisions
37 The reasons for the finding by the Board of Appeal that the marks applied for were devoid of any distinctive character in respect of the goods and services at issue are set out in paragraphs 14 to 30 of the contested decisions.
38 In particular, in paragraphs 14 and 15 of the contested decisions, the Board of Appeal found that the goods and services at issue were directed both at the general public, whose level of attention is average, and at traders, and only peripherally at fitters and a specialist public, whose level of attention is generally higher. However, even the level of attention paid by well-informed consumers could be relatively low when it came to promotional indications which do not appear decisive. The same applies to the level of attention paid by the average consumer to a message which he perceives as promotional.
39 In paragraphs 17 and 19 of the contested decisions, the Board of Appeal accepted the meaning of the word elements making up the signs at issue determined by the examiner. Thus, the word element ‘simply’ was correctly understood as meaning ‘just’, and the word element ‘connected’ as meaning ‘connected’. The word elements in the marks applied for, Simply.Connected., therefore constitute a slogan meaning ‘just connected’. Neither the full stop after each of the two word elements nor the figurative elements, namely the frame with its open top right‑hand corner and the familiar symbol of a wireless connection to a network, confer a different meaning on the signs in question. Those figurative elements are thus customary and non-distinctive.
40 In paragraph 18 of the contested decisions, the Board of Appeal rejected the applicant’s argument that the superposing of the word elements and the fact that both of them begin with a capital letter and are followed by a full stop should lead to their being considered separately.
41 In paragraph 20 of the contested decisions, the Board of Appeal stated that the marks applied for, taken in their entirety, expressed the idea that the goods and services at issue were ‘especially’ or ‘above all’ ‘connected’ to a network, the direct message conveyed by the word elements being further corroborated by the presence of the figurative symbol of a wireless connection. The signs at issue would thus be perceived as a slogan describing a desirable characteristic of the goods and services at issue and not as an indication of their commercial origin. According to the Board of Appeal, the message conveyed is simple, easily understandable and grammatically correct and is as commonplace as the figurative elements making up the signs.
42 In paragraphs 22 to 24 of the contested decisions, the Board of Appeal considered that it needed to ascertain whether, from the point of view of the relevant public, there was a sufficiently direct and specific relationship between the signs at issue and the goods and services at issue. To that end, the Board of Appeal grouped those goods and services into categories. It divided the goods at issue in Class 9 into three distinct categories: category (c) ‘Apparatus and parts for the recording, processing, sending, receiving and display of signals, data, images and sounds’; category (d) ‘Measuring, checking (supervision) and control apparatus; analysis apparatus’; and category (e) ‘Goods that serve for power supply’. Next, it divided the services in Class 37 into two categories: category (k) ‘Installation, maintenance and commissioning of parts and accessories for various goods’ and category (l) Repair and maintenance of motor vehicles at motor sports events’. It further took the view that the services at issue in Classes 38 and 41 were each in a separate category for each class: category (m) ‘Broadcast service, transmission of sound, data and images via satellites’ and category (n) ‘Training and instruction of third parties in electrical engineering and electronics’. Lastly, it found that the contested services in Class 42 should be divided into two categories: category (o) ‘Creation and installation of programs for data processing’ and category (p) ‘Technical consultancy’.
43 In paragraph 25 of the contested decisions, the Board of Appeal found, for all categories, that the concept of connection should be assessed by reference to the concept of ‘Internet of Things’, referring to the interconnection of physical objects in a network comparable to the Internet, so as to allow them to be controlled at a distance or to make them capable of communicating and exchanging information. The aim of the Internet of Things was to minimise the information gap between the real and virtual worlds. In that regard, being connected was a desirable characteristic for those goods and services.
44 In paragraph 26 of the contested decisions, the Board of Appeal found, for the goods grouped in categories (c), (d) and (e), that the marks applied for would inform consumers that those goods, which included parts and accessories of other goods, ‘especially’ or ‘above all’ served the purpose of connecting to a network. The same applied to the services in the categories (m), (o) and (p). Purchasers of the services in category (k) would understand the signs at issue to mean that those services concerned the construction, maintenance and commissioning of goods that were especially connected to a network. Services in category (l) could also be performed using a connection to a network, for example if any failures were communicated to the workshop in order to allow it to provide the parts needed for the repair. Finally, the services in category (n) clearly related to the electrical engineering and electronics requirements and procedures for connecting to a network.
45 In paragraph 27 of the contested decisions, the Board of Appeal inferred from its previous findings that, in the mind of the relevant public, the connection between the goods and services covered by the marks applied for and the content of the slogan constituted by the signs at issue was clear and required no further mental steps. The signs at issue would be perceived by the relevant English-speaking public in the European Union as a laudatory indication of the abstract characteristics of the goods and services covered by the applications for registration.
The principles relating to the application of Article 7(1)(b) of Regulation No 207/2009
46 Article 7(1)(b) of Regulation No 207/2009 provides that trade marks which are devoid of any distinctive character must not be registered.
47 To possess distinctive character for the purposes of Article 7(l)(b) of Regulation No 207/2009, a trade mark must serve to identify the goods or services in respect of which registration has been applied for as originating from a particular undertaking, and thus to distinguish the goods or services from those of 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 of 15 May 2014, Louis Vuitton Malletier v OHIM, C‑97/12 P, not published, EU:C:2014:324, paragraph 50).
48 In that respect, it must be recalled that signs devoid of any distinctive character are deemed incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or service designated by the mark, thus enabling the consumer who acquires the goods or service to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (judgments of 27 February 2002, REWE-Zentral v OHIM (LITE), T‑79/00, EU:T:2002:42, paragraph 26, and of 20 November 2002, Bosch v OHIM (Kit Pro and Kit Super Pro), T‑79/01 and T‑86/01, EU:T:2002:279, paragraph 19).
49 The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question who are reasonably well informed and reasonably observant and circumspect (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35; of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 25; and of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43).
50 The examination of absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought and the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services. However, the competent authority may use only general reasoning for all of the goods or services concerned where the same ground of refusal is given for a category or group of goods or services. That power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services. The mere fact that the goods or services concerned are within the same class of the Nice Agreement is not sufficient for a finding that such homogeneity exists, as those classes often contain a large variety of goods and services which are not necessarily interlinked in a sufficiently direct and specific way (see order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraphs 37 to 40 and the case-law cited).
Examination of the applicant’s claims
51 At the outset, the definition of the relevant public adopted by the Board of Appeal (see paragraph 38 above) — which is not disputed by the applicant in any case — must be confirmed.
52 The claims advanced by the applicant in support of the second plea are divided into five parts. The first part alleges an incorrect determination of the content of the word elements of the marks applied for. The second part alleges that the link between the word elements of the marks applied for is linguistically unusual. By the third part, the applicant submits that there is not a sufficiently direct link between the signs applied for and the goods and services at issue. The fourth part alleges the existence of unusual linguistic changes. Lastly, the fifth plea alleges an error in the overall assessment of the signs applied for.
– The first part, alleging an incorrect determination of the content of the word elements of the marks applied for
53 The applicant admits that the term ‘simply’ can be understood as ‘just, simply’ and the word ‘connected’ as referring to a ‘connection to a network’. By contrast, the Board of Appeal wrongly considered that the overall message conveyed by the signs applied for meant ‘just connected’ or ‘above all connected’. The Board of Appeal disregarded the superposing of the two words and the presence of a full stop after each of them. Those typographical characteristics mean that the word elements of the signs applied for must not be seen as expressing a single message consisting of two words but as two distinct, separate words: first, ‘simply’ and second, ‘connected’.
54 The applicant submits that in that regard, the Board of Appeal was wrong to refer to the judgment of 15 September 2005, BioID v OHIM (C‑37/03 P, EU:C:2005:547). The sign examined in that judgment, BioID®, was followed by a full stop placed after all the word elements, with the result that the Court held, in that case, that that full stop did not constitute, per se, an indication of the commercial origin of the goods and services covered by that mark. In the present case, the applicant does not claim that the full stops placed after each of the word elements constitute, per se, an indicator of commercial origin, but does submit that those full stops, and the superposing of the two words, influence the perception of the word elements.
55 Similarly, the applicant considers that the case-law to which the Board of Appeal referred in paragraph 18 of the contested decisions is irrelevant to the present case. In those judgments (judgments of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46; of 13 February 2008, Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, not published, EU:T:2008:33; and of 6 September 2013, Eurocool Logistik v OHIM — Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399), the General Court ruled on how the relevant public would break down word signs which suggested a specific meaning to it or resembled words with which it was familiar. However, in the present case, the word elements are separated by their relative position and by punctuation.
56 Finally, the omission of elements contained in the marks applied for, such as, in the present case, the full stops that follow each word element and the fact that the two word elements are positioned on different lines infringes the rule of law that a trade mark must be considered in the form in which registration was sought (judgment of 14 May 2013, Unister v OHIM (fluege.de), T‑244/12, EU:T:2013:243).
57 For all those reasons, the applicant is of the opinion that the Board of Appeal was incorrect to consider that the word elements of the marks applied for conveyed a single message.
58 EUIPO disputes that line of argument.
59 It is common ground that the signs at issue, reproduced in paragraphs 2 and 3 above, consist of the superposing of the words ‘simply’ and ‘connected’, each starting with a capital letter and followed by a full stop. Nonetheless, contrary to the applicant’s submissions, those typographical characteristics are not such as to prevent a cursory reading of those two words since the usual direction of reading, for the relevant English-speaking public as for all speakers of languages using the Latin alphabet, is from left to right and from top to bottom. The Board of Appeal was therefore correct to consider that the signs at issue would be effortlessly perceived by the relevant public as a sequence of the word elements ‘simply’ and ‘connected’.
60 The applicant claims, however, that the presence of a capital letter at the beginning of each word element and a full stop after it is likely to preclude the words in question from being read and understood as two parts of a single message, ‘simply connected’. According to the applicant, those typographical elements are such as to prevent the relevant public from associating the word elements and to compel it to read and understand them as two separate and self-contained words.
61 In that respect, it should be noted, as observed by the Board of Appeal in paragraph 20 of the contested decisions, that the sequence of words ‘simply’ and ‘connected’ is common in English and immediately understandable. By contrast, it is common knowledge that the adverb ‘simply’ cannot be used absolutely since adverbs are attached to the word whose meaning they modify, which may be a verb (such as, in this case, ‘connected’), an adjective or another adverb. It is therefore unlikely that, when seeing the sequence of elements ‘Simply.’ and ‘Connected.’, the relevant public would perceive the signs at issue as consisting of two distinct and independent words rather than as an expression combining those words in accordance with the normal rules of syntax and conveying an immediately comprehensible meaning.
62 The fact that the Board of Appeal relied on a number of precedents where a sign was broken down into a sequence of words which made sense (judgments of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46; of 13 February 2008, ATURION, T‑146/06, not published, EU:T:2008:33; and of 6 September 2013, EUROCOOL, T‑599/10, not published, EU:T:2013:399), and not, as in the present case, the association of two words which are separated graphically, is irrelevant. Indeed, in accordance with a well-established principle of case-law, which was applied in those cases and must also be observed here, it must be held that the relevant public will understand the meaning produced by signs composed of several apparently separate word elements or a single word element by grouping several words together when that understanding requires no particular intellectual effort.
63 That is indeed the case here, since the sequence of words ‘simply’ and ‘connected’ accords with the customary order of those words in English and means ‘simply connected’, without requiring the English-speaking public to make any further effort. Given that obvious meaning, it is implausible to assume, as does the applicant, that the relevant public will infer from typographic characteristics such as the superposing of words and the presence of capital letters and a full stop that that meaning is not correct.
64 It follows that the first part of the second plea must be rejected.
– The second part, alleging that the link between the word elements of the marks applied for is linguistically unusual
65 According to the applicant, the signs for which registration is sought are composed of two sentences, each consisting of a single word. The first sentence consists of an adverb, ‘simply’, and the second of a verb, ‘connected’. Such constructions are, in its view, clearly contrary to the rules of grammar. In accordance with the case-law, that perceptible difference to the language commonly used by the relevant public to designate the goods or services covered or their essential characteristics confers a distinctive character on the marks applied for, which is sufficient to enable them to be registered as trade marks (judgment of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, and order of 30 April 2015, Castel Frères v OHIM, C‑622/13 P, not published, EU:C:2015:297).
66 According to the applicant, the relevant public does not use the sentences contained in the signs for which registration is sought to designate the goods and services covered or their essential characteristics. The marks applied for therefore possess the minimum distinctive character necessary under the case-law (judgment of 25 September 2015, Bopp v OHIM (Representation of a green octagonal frame), T‑209/14, not published, EU:T:2015:701).
67 EUIPO disputes that line of argument.
68 The reasons for rejecting the first part of the second plea rest on the fact that it seems more likely that the relevant public will perceive the signs in question as a meaningful sequence of two juxtaposed words in the customary order in English, rather than two meaningless independent sentences of which the first consists of a solitary adverb, despite the superposing of the words and the use of capital letters and full stops (see paragraphs 59 to 63 above).
69 Those considerations likewise mean that the applicant must fail in its claims that the signs at issue will be perceived as two sentences each containing a single element, which constitutes a perceptible difference by comparison with the rules of English grammar and the language commonly used by the relevant public that is sufficient to confer a distinctive character on the trade marks applied for.
70 The second part of the second plea must therefore also be rejected.
– The third part, alleging the absence of a sufficiently direct and specific link with the goods and services covered
71 The applicant submits that, even if the assumption — which it refutes — were to be made that the relevant public would understand the signs for which registration is sought as meaning ‘just connected [to a network]’ or ‘above all connected [to a network]’, as did the Board of Appeal, that would be meaningless in relation to the goods and services at issue. While the applicant acknowledges that such goods as laptops, mobile phones, tablets and earphones are indeed capable of being connected to a network, especially the Internet, it argues in respect of the goods and services at issue in Classes 9, 37, 38, 41 and 42 that the relevant consumer would not be likely to perceive the signs at issue as having a descriptive meaning.
72 Thus, in respect of the goods in Class 9, consumers are not aware, in the applicant’s view, that ‘antennas for radios and television receivers’, ‘car aerials’, ‘electric filters’, ‘semi-conductor components’, ‘printed, engraved and potted circuits, integrated circuits, relays, fuses, cables for electric, electronic and optical signals, cable linkages, electric switches’, ‘batteries’ and ‘amplifiers, transformers, cable drums’ can be connected to a network. The same is true of all the goods in Class 9 in respect of which the examiner refused the applications for registration.
73 Similarly, the applicant submits in respect of the services in Class 37 that the Board of Appeal’s assertion in paragraph 26 of the contested decisions that the relevant public would perceive the signs in question in relation to ‘construction’, ‘maintenance’ and ‘commissioning of parts and accessories of various goods’ as describing a characteristic of those goods, namely that they are intended to be connected to a network, is incorrect. On the one hand, in the applicant’s view, the Board of Appeal failed to demonstrate that. It is impossible to see how the car parts and accessories, car radio systems, etc. to which the services in Class 37 relate are goods which are typically connected to a network. In particular, the Board of Appeal’s assertion is completely absurd when it comes to ‘power hand tools’ and ‘sanitary devices’. On the other hand, the meaning put forward by the Board of Appeal, that is to say ‘simply connected [to a network]’, does not contain any reference to the characteristics of the services in themselves. The relevant public would not expect a network connection to be established when goods are being constructed, maintained or commissioned.
74 Neither, in the applicant’s view, are the communication services in Class 38 ‘simply connected’. Those services serve the sole purpose of carrying out transmission by telecommunication. Accordingly, the signs for which registration is sought do not describe in a sufficiently direct manner the content or the characteristics of those services, contrary to the findings of the Board of Appeal in paragraph 26 of the contested decisions.
75 The applicant is also of the opinion that the training and instruction services in Class 41 do not have a sufficiently direct and specific link with the signs for which registration is sought either. Such services do not focus narrowly on merely establishing connections, contrary to the Board of Appeal’s finding in paragraph 26 of the contested decisions.
76 Lastly, the same applies to the services of ‘creation and installation of programs for data processing’ and ‘technical consultancy’ in Class 42. In the applicant’s view, insufficient reasons are given for the Board of Appeal’s statement in paragraph 26 of the contested decisions that the services in question ‘could serve the purpose of establishing a connection to a network’. In addition, in the applicant’s view, that statement is incorrect since the relevant public could not assume without giving the matter prior thought that the services at issue served the sole purpose of establishing a connection to a network.
77 EUIPO disputes that line of argument.
78 First, it must be noted that the Board of Appeal did not dismiss the appeal on the basis of Article 7(1)(c) of Regulation No 207/2009, but on the basis of Article 7(1)(b) of Regulation No 207/2009. Although the Board refers to Article 7(1)(c) of Regulation No 207/2009 in paragraph 5 of one of the two contested decisions as one of the bases for its decision, all of the reasoning which follows that paragraph is placed under the single heading ‘Article 7(1)(b) of [Regulation No 207/2009]’. It follows that the Board of Appeal was not required to establish the descriptive character of the signs at issue for the goods and services at issue.
79 Second, it should be observed that, as has been recalled in paragraphs 41 to 45 above, the Board of Appeal stated adequate reasons for the signs at issue being perceived by the consumers of the goods and services at issue as a laudatory slogan referring to a quality that could be ascribed to them.
80 As a preliminary step, the Board of Appeal grouped the goods and services covered into homogeneous groups within the meaning of the case-law cited in paragraph 50 above, that is to say, as having sufficient qualities or characteristics for the same reason to be applied to the entire category. It should be noted that the applicant does not dispute the relevance of those categories. In view of the development of the Internet of Things, the Board of Appeal was correct to state that the relevant public would see the signs at issue as indicating the ability of the goods at issue to be connected and would perceive the services at issue as relating to such connections.
81 Thus, contrary to the applicant’s submissions, the goods at issue in Class 9, as rightly noted by the Board of Appeal, are parts and fittings of other goods which may be either directly connected to a network (this is true of ‘antennas for radios and television receivers’ and ‘car aerials’) or incorporated into connected objects.
82 The Board of Appeal was likewise entitled to find that purchasers of the services at issue in Class 37 would understand the signs at issue either as relating to goods capable of being connected to a network or as capable of being performed using a network connection (for example, by reporting faults to a car repair workshop so that it can provide the parts needed for the repair).
83 The applicant itself acknowledges that the services at issue in Class 38 serve to carry out transmission by telecommunication. Such operations obviously require a connection and the signs at issue are likely to be perceived as describing that connection in a laudatory manner.
84 The applicant disputes the Board of Appeal’s assessment that the services of ‘training and instruction of third parties in electrical engineering and electronics’ clearly relate to the electrical engineering and electronic requirements and procedures for connecting to a network. However, it is clear that, in view of the subject of the training services in question (electronics and electrical engineering), the relevant public will, as far as those services are concerned, understand the signs at issue as a slogan relating to the content of that training.
85 Finally, the Board of Appeal also rightly found that the services at issue in Class 42, namely the ‘creation and installation of programs for data processing’ and ‘technical consultancy’, are likely to serve the purpose of connecting to a network. Although the applicant does not contest that explicitly, it criticises the Board of Appeal for not having demonstrated that those services served the sole purpose of establishing a connection to a network.
86 In that respect, it should be noted that the laudatory connotation of the word elements of an EU trade mark does not preclude its ability to indicate to consumers the origin of the goods or services which it covers. Therefore, such a mark may be perceived by the relevant public simultaneously as a promotional formula and as an indication of the commercial origin of goods or services (see judgment of 4 July 2018, EUIPO v Deluxe Entertainment Services Group (deluxe), T‑222/14 RENV, not published, EU:T:2018:402, paragraphs 36 and 48 and the case-law cited).
87 However, it should be borne in mind that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 25 April 2013, Bayerische Motoren Werke v OHIM (ECO PRO), T‑145/12, not published, EU:T:2013:220, paragraph 34 and the case-law cited). That case-law, which was first developed in connection with Article 7(1)(c) of Regulation No 207/2009, is also applicable by analogy to Article 7(1)(b) of that regulation (judgment of 28 June 2017, Colgate-Palmolive v EUIPO (AROMASENSATIONS), T‑479/16, not published, EU:T:2017:441, paragraph 24).
88 It follows from the foregoing that the applicant has no ground to claim that the slogan ‘Simply.Connected.’ has no possible meaning that designates a characteristic attributable to the goods and services at issue which it is likely to sell under the trade marks applied for (see, to that effect, judgment of 20 November 2007, Tegometall International v OHIM — Wuppermann (TEK), T‑458/05, EU:T:2007:349, paragraphs 89 to 93 and the case-law cited).
89 Consequently, the third part of the second plea must be rejected.
– The fourth part, alleging the existence of unusual changes allowing registration of the marks applied for
90 In the applicant’s view, even were the assumption — which it refutes — to be made that, first, the signs for which registration is sought could be considered as meaning ‘simply connected [to a network]’ and, second, that there is a sufficiently direct and specific link between that meaning and the goods and services at issue, their unusual juxtaposition would suffice to confer the minimum distinctive character necessary for registration. The marks sought consist of two juxtaposed sentences, each composed of a single word, namely ‘simply’ and ‘connected’. The English-speaking public is not accustomed to such a construction, which produces an overall impression that is greater than the sum of its parts. The Board of Appeal was therefore wrong to state in paragraph 20 of the contested decisions that ‘the sequence of words Simply.Connected. [was], in particular, a simple, immediately understandable and grammatically correct message that [did] not contain any linguistically unusual elements’.
91 The applicant denies, moreover, that the relevant public is likely to describe the goods and services at issue or their essential characteristics as ‘simply connected’ within the meaning that the Board of Appeal attributed to those terms in the contested decisions.
92 EUIPO disputes that line of argument.
93 In the fourth part of its second plea, the applicant once more bases its argument on the superposing of the word elements of the sign at issue.
94 However, for the reasons set out in paragraph 59 above, that superposing is not unusual. It should be added that when the relevant public considers the sign overall, the superposing of the elements ‘simply’ and ‘connected’ may appear to be required by the need to keep them within the rectangle with the rounded corners that frames them. It is hence unlikely that the relevant public would be likely to attribute any distinctive character to that superposing.
95 The argument that the relevant public will not describe the goods and services at issue or their essential characteristics as ‘simply connected’ is irrelevant since the Board of Appeal did not base its rejection of the appeal on Article 7(1)(c) of Regulation No 207/2009.
96 The fourth part of the second plea must accordingly be rejected as being in part unfounded and in part irrelevant.
– The fifth part, alleging an error in the overall assessment of the signs applied for
97 According to the applicant, by proceeding as it did in paragraphs 17 to 19 of the contested decisions, the Board of Appeal failed to assess the signs in their entirety. It ought to have taken into account, first, the incomplete square with the rounded corners and, second, the three waves, which are included in each of the signs for which registration is sought. That original graphic form, in combination with the word elements to which the Board of Appeal unduly limited its analysis, is easily and instantly memorisable by the relevant public, with the result that the marks applied for allow it to distinguish the commercial origin of the goods and services at issue.
98 EUIPO disputes that line of argument.
99 First, it must be noted that in paragraph 17 of the contested decisions, the Board of Appeal took account of the presence of those two figurative elements and held that they had no effect on the meaning of the signs at issue in the mind of the relevant public. In paragraph 19 of the contested decisions, the Board found that, given the below-average level of attention paid by the relevant public to a slogan, the figurative element forming a frame would not be noticed and is, consequently, devoid of distinctive character. In that same paragraph and in paragraph 29 of the contested decisions, the Board further took the view that the presence of three concentric waves symbolising connection to a wireless network reinforces the meaning conveyed by the word elements.
100 Second, all the findings reached by the Board of Appeal in that regard must be upheld. An overall assessment of the signs in question confirms that the word elements have greater impact than the figurative elements examined in paragraph 99 above, and those signs, taken in their entirety, will not be perceived as indications of the commercial origin of the goods and services at issue.
101 It follows that the fifth part of the second plea must be rejected and, consequently, so must the second plea in its entirety.
The third plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
102 The applicant submits that, although in paragraph 5 of one of the contested decisions the Board of Appeal stated that Article 7(1)(b) and (c) of Regulation No 207/2009 precluded registration of the marks applied for, it subsequently conducted its assessment on the sole basis of Article 7(1)(b) of that regulation. According to the applicant, the statement in paragraph 30 of the contested decisions that the application for registration of the marks applied for must also be rejected pursuant to Article 7(1)(b) of Regulation No 207/2009 is plainly incorrect and should probably read as indicating Article 7(1)(c) of Regulation No 207/2009. However, that statement is not substantiated in the contested decisions.
103 Furthermore, the applicant disputes whether the marks applied for can be regarded as descriptive within the meaning of that provision in view of the goods and services at issue.
104 EUIPO disputes that line of argument.
105 It should be noted that the contested decisions do not include assessments of whether the signs at issue are descriptive. Moreover, in paragraph 28 of the contested decisions, the Board of Appeal dismissed as ineffective the argument alleging a failure to state the reasons for the signs applied for being found to be descriptive, since the absolute ground for refusal of registration specified in Article 7(1)(b) of Regulation No 207/2009 did not depend on the descriptive character of signs.
106 Furthermore, in paragraph 29 of the contested decisions, the Board of Appeal stated:
‘The applicant’s remaining arguments [also] fail to undermine the examiner’s findings. In particular, the graphic design does not endow the sign applied for with the requisite distinctive character either. The target public would not perceive [in case T‑252/17 only: the colour blue,] the simple frame and the full stops — taken to be punctuation marks — as distinctive characteristics indicating the commercial origin. Furthermore, the figurative element in the top right-hand corner corresponds to the symbol for wireless connections and therefore only reinforces the concept of being connected that is expressed in the word elements. The sign thus lacks any elements which could confer on it in the target public’s perception any distinctiveness beyond its laudatory character. As the sign applied for as a whole only performs a promotional function, the consumer will not infer the origin of the goods and services.’
107 Paragraph 30 of the contested decisions reads as follows:
‘For those reasons, the mark likewise cannot be registered owing to the ground for refusal specified in Article 7(1)(b) of [Regulation No 207/2009].’
108 The applicant bases its argument on the presence of the adverb ‘likewise’ in paragraph 30 of the contested decisions and considers, given the reference to Article 7(1)(c) in paragraph 5 of one of the contested decisions, that the Board of Appeal made a clerical error. In the applicant’s view, in paragraph 30 of the contested decisions, the Board of Appeal intended to state that the absolute ground for refusal provided for in Article 7(1)(c) of Regulation No 207/2009 also precluded registration of the marks applied for. Since the Board did not explain clearly in the contested decisions why that other absolute ground for refusal was likewise applicable, the Board vitiated those decisions by a failure to state reasons.
109 However, it must be noted that the Board of Appeal did not base its assessment on the descriptive character of the marks applied for, and the adverb ‘also’ in paragraph 30 of the contested decisions must be understood as referring to the additional reasons set out in paragraph 29 of those decisions.
110 The third plea is hence based on an erroneous reading of paragraph 30 of the contested decisions in so far as it alleges that an obvious correction must be made to paragraph 30 thereof. Since the Board of Appeal did not base its assessment on Article 7(1)(c) of Regulation No 207/2009, the claims of a failure to state reasons and an error of assessment concerning the applicability of that provision must be rejected as ineffective.
111 It follows from all the foregoing that the actions must be dismissed.
Costs
112 Under Article 134(1) of the Rules of Procedure, 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 (Third Chamber, Extended Composition)
hereby:
1. Joins Cases T‑251/17 and T‑252/17 for the purposes of the judgment;
2. Dismisses the applications;
3. Orders Robert Bosch GmbH to pay the costs.
Frimodt Nielsen | Kreuschitz | Forrester |
Delivered in open court in Luxembourg on 28 March 2019.
[Signatures]