Case T-28/10

Euro-Information – Européenne de traitement de l’information

v

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

(Community trade mark – Application for Community word mark EURO AUTOMATIC PAYMENT – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009)

Summary of the Judgment

1.      Community trade mark – Appeals procedure – Actions before the Community judicature – Jurisdiction of the General Court – Amendment of a decision by the Office – Assessment having regard to the competences conferred on the Board of Appeal

(Council Regulation No 207/2009, Art. 65(3))

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 – Criteria

(Council Regulation No 207/2009, Art. 7(1)(c))

3.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Examination of the grounds for refusal having regard to each of the goods or services covered by the application for registration – Duty to state reasons for refusal of registration – Scope

(Art. 253 EC; Council Regulation No 207/2009, Arts 7(1) and 75)

4.      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 207/2009, Art. 7(1)(c))

1.      A head of claim asking the Court to alter the decision of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) within the meaning of Article 65(3) of Regulation No 207/2009 on the Community trade mark, by adopting the decision which the Board of Appeal ought to have taken, is inadmissible. The competent bodies of the Office do not adopt formal decisions recording the registration of a Community trade mark which could be the subject of an appeal. Consequently the Board of Appeal does not have power to take cognisance of an application that it should register a Community trade mark. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to amend the decision of a Board of Appeal to that effect.

(see paras 13-14)

2.      Under Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered. Such descriptive signs are deemed incapable of fulfilling the indication-of-origin function of the trade mark. The signs and indications referred to in the said article are those which may serve in normal usage from the point of view of the relevant public to designate, either directly or by reference to one of their essential characteristics, goods or services in respect of which registration is sought.

It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics. Accordingly, the descriptive character of a mark must be assessed, first, in relation to the goods or services for which registration of the sign is sought, and, second, by reference to the perception of the relevant public comprising the consumers of those goods or services.

The fact that the trade mark applied for may have other meanings does not preclude the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009. A word sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(see paras 38-41, 50)

3.      With regard to the substantive requirements for the examination of an application for a Community trade mark, regarding the obligation to state reasons, first, an examination of the absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and, second, 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. That duty to state reasons arises from the essential requirement for any decision of an authority refusing the benefit of a right conferred by Community law to be subject to judicial review which is designed to secure effective protection for that right and which, accordingly, must cover the legality of the reasons for the decision. However, where the same ground of refusal is given for a category or group of goods or services, that authority may use only general reasoning for all the goods and services concerned.

None the less, the fact that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is able to use general reasoning with regard to the application of an absolute ground for refusal to a category or group of goods or services must not frustrate the objective of the duty to state reasons under Article 253 EC and the first sentence of Article 75 of Regulation No 207/2009, which is to subject a decision refusing registration of a Community trade mark to effective judicial review. Accordingly, the goods or services concerned must be interlinked in a sufficiently direct and specific way, to the point where they form a category or group of goods or services sufficiently homogeneous to permit OHIM to use general reasoning. The mere fact that the goods or services in question come within the same class of the Nice Agreement is not sufficient for that purpose, since the classes often contain a wide variety of goods or services which are not necessarily interlinked in a sufficiently direct and specific way.

With regard to the substantive examination of an application for a Community trade mark, under Regulation No 207/2009, the Office must examine the application in relation to all the goods or services on the list of goods or services for which registration is sought, on the understanding that, if the list includes one or more categories of goods or services, the Office is not under any obligation to make an assessment of each of the goods or services coming within each category, but must direct its examination to the category in question, as such.

Therefore, with regard to the substantive requirements for the examination of an application for a Community trade mark, the Office may carry out a general examination for each category of goods or services only if the goods or services concerned 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.

(see paras 54-57)

4.      The word sign EURO AUTOMATIC PAYMENT, registration of which is sought in respect of goods and services falling, respectively, in Classes 9 and 36 of the Nice Agreement, is descriptive of the goods referred to in the application for a Community trade mark, within the meaning of Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark, from the point of view of English-speaking consumers in the Community, whether professional or non-professional.

When confronted with ‘memory or microprocessor cards, magnetic stripe cards, magnetic stripe or microprocessor identification cards, magnetic stripe or microprocessor payment, credit or debit cards and electronic payment cards’ falling within Class 9 and having common characteristics, including that of enabling payments to be made in euros, the relevant public will immediately think, without further reflection, that the purpose of the cards is to make automatic payments in euros.

When confronted with ‘magnetic data carriers; optical data carriers; information processing apparatus; intercommunication apparatus; (IT) interfaces; (IT) readers; (registered program) software; software designed for account management; monitors (computer programs); computers; computer peripheral devices; registered computer programs; registered operating system programs (for computers); central processing units (processors); IT programmes and equipment to enable full remote banking, finance company and insurance services, namely computer apparatus and instruments; secure payment software for online electronic communication networks; electronic payment apparatus and instruments; computer equipment for electronic payment; software for electronic payment transactions; electronic payment cards, electric and electronic devices for the management of financial transactions’ within Class 9 and belonging to the area of computers, and with ‘radiotelephony sets; (audio, video) receivers; telephone apparatus; portable telephones; prepayment devices for television apparatus; (telecommunication) transmitters’ within Class 9 and belonging to the area of telecommunications, the relevant public will immediately think, without further reflection, that the goods are connected to a communication network, incorporating an automatic payment mechanism enabling payments in euros to be made directly through that network.

The trade mark applied for is descriptive of the intended use of ‘automated payment machines’ and ‘automated banking machines’ in that it informs the relevant public of the essential characteristics of those goods, namely that they have, or are likely to have, a mechanism which enables automatic payments to be made in euros.

The trade mark applied for is descriptive of the intended use of ‘counterfeit coin detectors’, ‘automatic dispensers’, ‘ticket dispensers’ and ‘bar code readers’ in Class 9, in so far as the goods in question incorporate an automatic payment mechanism or are likely to be incorporated in such a mechanism.

The trade mark applied for is descriptive of the intended use of ‘banknote dispensers’ in Class 9. Banknote dispensers are capable of offering a wide range of functionalities going beyond the mere withdrawal of cash, such as carrying out payments or transfers or, providing statements of account. Therefore the relevant public will perceive as descriptive indications that certain goods are capable of enabling automatic payments in euros to be made, provided that that characteristic is relevant in relation to the type of goods concerned.

The relevant public will perceive the trade mark applied for as describing an essential characteristic of ‘statement of account and account summary dispensers’ in Class 9, namely that they are likely to incorporate a mechanism for automatic payment in euros. Those latter products on the one hand and ‘banknote dispensers’ on the other are likely to be merged in a single machine, so that, like the latter, the former are likely to offer the same functionalities.

With regard to services in Class 36, they are all offered in the banking, financial and computing sectors for the purpose of commercial and financial transactions and, moreover, those services all entail a payment operation either by means of a card or, as the case may be, by electronic means. From the viewpoint of the relevant public, there is a sufficiently direct and specific relationship between, on the one hand, the word sign EURO AUTOMATIC PAYMENT and, on the other, the particular quality of all the services in Class 36, which is that they are likely to enable automatic payments in euros to be made or received, as the case may be, by electronic means, which is closely connected with the concept of automaticity in the context of commercial and financial transactions in the banking, financial and computing sectors.

(see paras 42, 62-64, 66, 71-72, 76, 78-79, 82-83, 85, 88)