JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
13 July 2022 (*)
(EU trade mark – International registration designating the European Union – Word mark WE DO SUPPORT – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑634/21,
Rimini Street, Inc., established in Las Vegas, Nevada (United States), represented by E. Ratjen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi and D. Hanf, acting as Agents,
defendant,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, T. Perišin and I. Dimitrakopoulos (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after 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
1 By its action under Article 263 TFEU, the applicant, Rimini Street, Inc., seeks annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 August 2021 (Case R 710/2021-4) (‘the contested decision’).
Background to the dispute
2 On 29 September 2020, the applicant obtained international registration No 1559178 designating the European Union, from the International Bureau of the World Intellectual Property Organization (WIPO). That international registration was notified to EUIPO on 5 November 2020. It concerns the word sign WE DO SUPPORT.
3 The international registration at issue had been effected for services in Class 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, those services corresponding to the following description: ‘Computer software consulting services; technical support services, namely, providing maintenance services for enterprise and database software; technical support services, namely, providing troubleshooting of enterprise and database software problems; maintenance of computer software; technical support services, namely, troubleshooting computer software problems’.
4 On 30 November 2020, the examiner of EUIPO issued a provisional refusal of protection in respect of all the services at issue, in so far as the application in question fell foul of the provisions of Article 7(1)(b) and (2) of 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).
5 By decision of 3 March 2021, following the observations submitted by the applicant on 29 January 2021, the examiner confirmed the refusal of protection of the contested international registration in the European Union for the services at issue.
6 On 19 April 2021, the applicant filed an appeal with EUIPO against the examiner’s decision.
7 By the contested decision, the Board of Appeal dismissed the applicant’s appeal.
8 First, the Board of Appeal found, in essence, that the services at issue could be aimed both at the public at large and the professional public specialising in corporate IT systems whose level of attention was nevertheless relatively low with regard to purely promotional indications. Given that the contested international registration is composed of English words, the Board of Appeal decided to take into consideration, within the relevant public, the English-speaking part of consumers in the European Union, in particular in Ireland and Malta, where English is an official language, as well as the Netherlands and Sweden, where it is a matter of common knowledge that English is well understood.
9 Secondly, the Board of Appeal found, first of all, that the sign WE DO SUPPORT consisted in three word elements, namely, ‘we’, ‘do’ and ‘support’. Next, it noted that, according to the online dictionary Lexico, the element ‘we’ was ‘used by a speaker to refer to himself or herself and one or more other people considered together’, that the term ‘do’ was ‘used to give emphasis to a positive verb’ and that the word ‘support’ meant ‘give assistance to’ and was also a noun. Lastly, it found that the composition of the words making up that sign, taken as a whole, complied with the rules of English grammar and conveyed the meaning ‘we provide support’.
10 Thirdly, the Board of Appeal found, in essence, that, concerning the services at issue the expression ‘we do support’ was merely promotional in nature in that it was laudatory of those services, that is it referred to the idea that the relevant public might find and obtain support services from the holder of the contested international registration, and was not capable of indicating their commercial origin.
11 The Board of Appeal concluded that the contested international registration was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 and refused its protection in the European Union.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
13 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), read in conjunction with Article 7(2) of Regulation 2017/1001. It submits, in essence, that the contested international registration has sufficient distinctiveness with regard to the services at issue in order to be able to be registered.
15 Since the contested international registration was notified to EUIPO on 5 November 2020, that plea must be interpreted as alleging infringement of Article 7(1)(b) and (2) of Regulation 2017/1001.
16 EUIPO disputes the applicant’s arguments.
17 Under Article 7(1)(b) of Regulation No 2017/1001, trade marks which are devoid of any distinctive character must not be registered. Pursuant to Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
18 For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation No 2017/1001, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
19 The distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation 2017/1001, must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, secondly, by reference to the perception of the relevant public (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
20 As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 35, and of 22 March 2017, Hoffman v EUIPO (Genius), T‑425/16, not published, EU:T:2017:199, paragraph 26).
21 As regards the assessment of the distinctive character of such marks, the Court has held that it was inappropriate to apply to them criteria which are stricter than those applicable to other types of sign (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 36, and of 22 March 2017, Genius, T‑425/16, not published, EU:T:2017:199, paragraph 27).
22 It also follows from the case-law that while all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, convey by definition, to a greater or lesser extent, an objective message, even a simple one, they can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process on the part of that public (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57, and of 22 March 2017, Genius, T‑425/16, not published, EU:T:2017:199, paragraph 28).
23 Accordingly, a mark consisting in an advertising slogan must be regarded as devoid of any distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (judgments of 6 June 2013, Interroll v OHIM (Inspired by efficiency), T‑126/12, not published, EU:T:2013:303, paragraph 24, and of 22 March 2017, Genius, T‑425/16, not published, EU:T:2017:199, paragraph 29).
24 In that context, it is also necessary to take account of the fact that average consumers are not in the habit of making assumptions about the origin of goods on the basis of slogans (judgment of 25 May 2016, U-R LAB v EUIPO (THE DINING EXPERIENCE), T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 78) and the fact that the level of attention of the professional public may be relatively low when it comes to promotional indications which a well-informed public does not see as decisive (judgment of 29 January 2015, Blackrock v OHIM (INVESTING FOR A NEW WORLD), T‑59/14, not published, EU:T:2015:56, paragraph 27).
25 It is in the light of those considerations that it must be examined whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 in concluding that the contested international registration was devoid of any distinctive character.
26 In the first place, as regards the relevant public, the Board of Appeal’s assessments as recalled in paragraph 8 above, which moreover are not disputed by the applicant, cannot be called into question.
27 In the second place, as regards the perception of the contested international registration by the relevant public, in support of the considerations recalled in paragraph 9 above the Board of Appeal stated that the word ‘we’ referred to the holder of the contested international registration, the term ‘do’ was inherent in the provision of the services and the element ‘support’ indicated the nature of those services, namely IT assistance. It deduced that the contested international registration conveyed an evident and clear message, namely that the holder of that international registration provides assistance, and that, although the applicant submitted other meanings, they also constituted laudatory slogans that lack any original sequence or structure in the words.
28 The applicant submits, first, that the contested international registration conveys a message likely to set off a cognitive process on the part of the relevant public. According to the applicant, that international registration gives, first of all, the impression that it is the services at issue themselves which assist, which causes a personalisation capable of reinforcing distinctiveness. Next, assuming that that international registration is understood as meaning that it is its holder who provides the support services, the question of in what way the support services are provided, and also that of their object, is left open. Lastly, due to the presence of the element ‘do’ in the international registration in question, the grammatical arrangement of that mark also contributes to the distinctiveness, in so far as it is an exaggeration according to which the holder of the registration is the only one to offer such services.
29 Secondly, the applicant submits that the Board of Appeal agreed with the examiner’s assessment that the contested international registration could mean ‘our business consists in giving a close and efficient assistance to consumers’ and accepted that that mark could have several other meanings, namely ‘we support you’, ‘we support everybody … with our experience’, ‘we support people … with our knowledge’, ‘we support any individual, organisation or public with our donation’, but considered that ‘the fact that the sign at issue can have several meanings … [was] not sufficient to make it distinctive if it [were] not immediately perceived by the relevant public as an indication of the commercial origin’. In so doing, the Board of Appeal disregarded the case-law according to which having several meanings is an important factor to be taken into account in the examination of Article 7(1)(b) of Regulation 2017/1001. In addition, the applicant considers that all those meanings are only evident with the addition of other words which are not part of that international registration and are the result of interpretation.
30 EUIPO disputes the applicant’s arguments.
31 As a preliminary point, it should be noted that in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82 and the case-law cited).
32 In the present case, first, it should be noted that the Board of Appeal correctly found in paragraph 16 of the contested decision that the contested international registration was a combination of the terms ‘we’, ‘do’ and ‘support’.
33 Secondly, it should be noted that the Board of Appeal also did not err in finding in paragraph 17 of the contested decision, without this being challenged by the applicant, that according to the online dictionary mentioned in that paragraph, the element ‘we’ was ‘used by a speaker to refer to himself or herself and one or more other people considered together’, the term ‘do’ was, inter alia, ‘used to give emphasis to a positive verb’ and the word ‘support’ meant, in particular, ‘give assistance to’ and was also a noun.
34 Thirdly, it must be held that the Board of Appeal was also correct in finding, in essence, without being challenged by the applicant on that point, that the contested international registration, considered as a whole, would immediately be understood by the relevant public as meaning ‘we provide support’.
35 In that regard, it should be noted that the contested international registration is composed of common English words and is correct from a grammatical point of view in English. In accordance with the case-law, the combination of common English words in a single sign, which is in conformity with the rules of English grammar, conveys a clear and unequivocal message which is immediately apparent and does not require any interpretative effort on the part of an English-speaking consumer (see, to that effect, judgment of 25 March 2014, Deutsche Bank v OHIM (Passion to Perform), T‑291/12, not published, EU:T:2014:155, paragraph 41).
36 The other arguments relied on by the applicant are not such as to call into question that conclusion.
37 The applicant cannot validly maintain that the contested international registration conveys a message likely to set off a cognitive process on the part of the relevant public. First of all, it should be noted, as did the Board of Appeal in paragraph 23 of the contested decision, that the element ‘we’ refers to the holder of the contested international registration. It is apparent from the case-law that the word ‘we’, when it is used in slogans, generally refers to the provider of services (see, to that effect, judgments of 24 April 2018, VSM v EUIPO (WE KNOW ABRASIVES), T‑297/17, not published, EU:T:2018:217, paragraphs 39 to 41, and of 13 May 2020, Koenig & Bauer v EUIPO (we’re on it), T‑156/19, not published, EU:T:2020:200, paragraph 38). Accordingly, the applicant cannot claim that the presence of that word in the contested international registration causes a personalisation giving the impression that it is the services that assist and thereby contributes to strengthening the distinctive character of that mark.
38 Next, even if as the applicant submits, the issue of knowing in what way the assistance is provided, and for what purpose, is left open, it should be noted that the mere lack of information in the mark applied for concerning the manner in which the services at issue are provided or their objective cannot be sufficient to make it distinctive (see, by analogy, judgment of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 31 and the case-law cited). Since the relevant public is not very attentive to a sign whose semantic content is merely promotional information of a more general nature, it will not take the time either to enquire into the sign’s various possible functions or mentally to register it as a trade mark (see, to that effect, judgment of 5 December 2002, Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS), T‑130/01, EU:T:2002:301, paragraph 29). Therefore, the Court must reject the applicant’s argument that the lack of information in the contested international registration on the way in which the assistance is provided confers on it a distinctive character.
39 Lastly, in so far as the applicant claims that the grammatical arrangement of the contested international registration contributes, on account of the presence of the word ‘do’, to its distinctive character, it should be noted that, as is apparent from paragraph 35 above, that international registration complies with the grammar rules of the English language, with the result that the international registration will not require any interpretative effort on the part of the relevant public. In addition, the use of that word to emphasise the word ‘support’ and, therefore, the provision of support, results from a word combination which does not exhibit originality and conveys an ordinary laudatory or advertising message. In any event, it must be held, as the Board of Appeal found in paragraph 23 of the contested decision, that the word ‘do’ is inherent in the provision of a service, with the result that it merely indicates that the holder of the contested international registration provides support. Thus, contrary to what the applicant claims, the addition of that word in the international registration in question is not such as to contribute to its distinctive character.
40 The Court must also reject the applicant’s argument that the Board of Appeal accepted that the contested international registration could have several meanings, but found that that fact was not sufficient to render it distinctive if that international registration was not immediately perceived by the relevant public as an indication of commercial origin, thereby disregarding the case-law according to which the fact that the mark applied for has several meanings is an important factor to be taken into account in the examination of Article 7(1)(b) of Regulation 2017/1001.
41 In that regard, it should be noted that the Board of Appeal did not agree with the applicant’s argument that the contested international registration could have several meanings, but simply analysed each of the interpretations proposed by the applicant and correctly noted that they were also laudatory slogans devoid of any distinctive character.
42 In any event, it should be recalled that, contrary to what the applicant claims, the fact that a mark is likely to have several meanings does not necessarily imply per se that it has a distinctive character when it is perceived immediately by the relevant public as a promotional message and not as an indication of the commercial origin of the goods and contested services at issue (see, to that effect, judgment of 8 October 2015, Société des produits Nestlé v OHIM (NOURISHING PERSONAL HEALTH), T‑336/14, not published, EU:T:2015:770, paragraph 41). Accordingly, the fact that the mark applied for can have a number of meanings is one of the characteristics which is likely to endow the sign, in principle, with distinctive character and it is not the decisive factor for establishing that that sign has distinctive character (see judgment of 24 April 2018, WE KNOW ABRASIVES, T‑297/17, not published, EU:T:2018:217, paragraph 55 and the case-law cited).
43 It is also necessary to reject the applicant’s argument that the contested international registration is capable of having several meanings which require the addition of other words and are the result of an interpretation such as to confer distinctive character on it.
44 In that regard, it should be noted that, as is apparent from paragraph 34 above, the contested international registration will be immediately understood by the relevant public as meaning ‘we provide support’.
45 Even if, as the applicant submits, the contested international registration could be perceived by the relevant public as referring indirectly to the knowledge, experience, donations and closeness and efficiency of the service provider, such an interpretation does not differ significantly from the meaning referred to in paragraph 34 above, but is part of the same conceptual context of a general advertising message lacking originality or resonance. In addition, it does not require any interpretative effort, but is rather an ordinary meaning of the sign, given that the ability to provide support is clearly apparent from the respective abilities of the service provider, such as its knowledge, experience and efficiency.
46 The Board of Appeal was, therefore, right to state, in paragraph 18 of the contested decision, that the contested international registration, taken as a whole, will be perceived by the relevant public as meaning ‘we provide support’.
47 In the third place, as regards the distinctive character of the contested international registration in relation to the services at issue, the Board of Appeal found, in essence, that the international registration was purely promotional in so far as it was laudatory of those services, namely it referred to the idea that the relevant public might find and obtain support services within the field of computer software from the holder of that international registration and was not capable of indicating their commercial origin.
48 The applicant submits, in essence, that the contested international registration has sufficient distinctive character with regard to the services at issue in order to be able to be registered.
49 EUIPO disputes the applicant’s arguments.
50 In the present case, in the light of the foregoing, it must be found that, in connection with computer software consulting and technical support services, the contested international registration is likely to be perceived by the relevant public as indicating that it may find and obtain customer support services in the field of computer software from the holder of that international registration. That international registration expresses the idea that its holder will deal with assistance in the field of computer software by providing the customer, for example, with advice and technical assistance, such as the maintenance of computer software or the troubleshooting of computer software problems, if he or she has the need for such and the services in question will be perceived as reliable and trustworthy where the provider assists the customer (see, by analogy, judgment of 13 May 2020, we’re on it, T‑156/19, not published, EU:T:2020:200, paragraph 38).
51 Accordingly, the expression ‘we do support’ will naturally be perceived by the relevant public as a mere promotional formula or a slogan intended to highlight the positive qualities of the services for the presentation of which it is used (see, to that effect and by analogy, judgment of 30 June 2004, Mehr für Ihr Geld, T‑281/02, EU:T:2004:198, paragraph 29 and the case-law cited) and, therefore, of the provider of those services.
52 In the light of the foregoing, the applicant’s complaints must be rejected and it is necessary to uphold the Board of Appeal’s conclusion that the contested international registration, beyond its obvious promotional meaning, contains no distinctive element that might enable the relevant public to memorise it easily and instantly as a sign intended to distinguish the commercial origin of the services at issue.
53 That conclusion cannot be called into question by the applicant’s implicit argument that the Board of Appeal, in essence, required the contested international registration to have enhanced distinctiveness, whereas a minimum degree of distinctive character was sufficient for the registration of that sign as a trade mark. In that regard, it should be noted that, while, as is apparent from settled case-law (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 39, and of 30 April 2015, Steinbeck v OHIM – Alfred Sternjakob (BE HAPPY), T‑707/13 and T‑709/13, not published, EU:T:2015:252, paragraph 21), a minimum degree of distinctive character is sufficient for the registration of a sign, the fact remains that in the present case, as the Board of Appeal rightly found, the contested international registration is devoid of any distinctive character.
54 As is apparent from paragraph 51 above, the contested international registration is a mere laudatory slogan which does not possess any originality or resonance requiring at least some interpretation or setting off a cognitive process on the part of the relevant public, and the applicant has not shown that beyond its promotional function that international registration will be perceived as an indication of commercial origin.
55 It follows that the contested international registration is devoid of any distinctive character with regard to the services at issue and that the Board of Appeal was fully entitled to refuse to register it on the basis of Article 7(1)(b) of Regulation 2017/1001.
56 The applicant’s single plea in law must, therefore, be rejected as unfounded.
57 It follows from all the foregoing that the action must be dismissed in its entirety.
Costs
58 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Rimini Street, Inc., to pay the costs.
Costeira | Perišin | Dimitrakopoulos |
Delivered in open court in Luxembourg on 13 July 2022.