JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
17 October 2007 (*)
(Community trade mark – Application for Community figurative mark WinDVD Creator – Absolute grounds for refusal – Articles 4 and 7(1)(b) and (c) of Regulation (EC) No 40/94)
In Case T‑105/06,
InterVideo Inc., established in Fremont, California (United States), represented by K. Manhaeve, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by O. Mondéjar, acting as Agent,
defendant,
ACTION against the decision of the Second Board of Appeal of OHIM of 31 January 2006 (Case R 987/2005-2), relating to registration of the figurative sign WinDVD Creator as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of M. Jaeger, President, V. Tiili and O. Czúcz, Judges,
Registrar: K. Andová, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 7 April 2006,
having regard to the response lodged at the Court Registry on 23 June 2006,
further to the hearing on 6 March 2007,
gives the following
Judgment
Background to the dispute
1 On 9 November 2004, the applicant filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The trade mark for which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration has been sought fall within class 9 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 to the following description: ‘Computer software for use in downloading, transmitting, receiving, extracting, encoding, decoding, playing, storing and organising audio, video, text and other data via local and global computer, cable and wireless networks’.
4 By decision of 20 June 2005, the examiner rejected the application for registration on the basis of Article 7(1)(b) and (c) of Regulation No 40/94. She found, in particular, that the trade mark applied for was able to serve in trade to designate the kind and intended purpose of the goods in question, and that it was devoid of any distinctive character.
5 On 12 August 2005, pursuant to Articles 57 to 62 of Regulation No 40/94, the applicant filed notice of appeal against the examiner’s decision.
6 By decision of 31 January 2006 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal on the ground that the trade mark applied for was devoid of any distinctive character. Taking the view that the relevant public was made up of English-speaking consumers who were familiar with specific computer language, the Board of Appeal held that there was nothing unusual about the structure of the trade mark in question, composed of two acronyms and a noun of the English language, and that, furthermore, those three elements described characteristics of the goods covered by the application. According to the Board of Appeal, the word ‘win’ would, in fact, be understood as meaning ‘Windows’, which is confirmed by the on-line dictionary www.acronymfinder.com. Thus, the expression ‘windvd creator’ taken as a whole is descriptive in that it immediately informs the relevant consumers that the goods covered by the application make it possible to create DVDs using the Windows operating system. Finally, the Board of Appeal pointed out that a word mark descriptive of characteristics of the goods was, on that account, necessarily devoid of any distinctive character.
Forms of order sought by the parties
7 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
8 OHIM contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
Arguments of the parties
9 The applicant claims that OHIM has infringed Articles 4 and 7(1)(b) and (c) of Regulation No 40/94. It points out that, in accordance with the case-law and Article 4 of the regulation, the essential function of a trade mark is to distinguish the commercial origin of goods designated by the mark from those which have another origin. According to the applicant, fulfilling that function is the only condition to which registration of a trade mark is subject, a condition which is without doubt satisfied in the present case. In its opinion, Article 7(1)(b) and (c) of Regulation No 40/94 is specifically intended to preclude the registration of trade marks which are incapable of fulfilling such a function. The distinctiveness of a trade mark should be assessed in the light of the understanding that the relevant public has of it in relation to the goods or services in question. However, in the present case, OHIM defined the relevant public incorrectly, the latter being, according to the applicant, the public at large or average consumers.
10 The applicant submits that the distinctive character of a trade mark should be assessed not only in the eyes of the public which buys the goods, but in the eyes of the entire public encountering the trade mark. In any event, even if the relevant public were limited to personal computer users, that public could not be regarded in general as being familiar with computer language. Furthermore, although the use of the personal computer is increasingly common amongst the general public, only very few users are acquainted with its technical aspects, including specific computer language.
11 As regards the assessment of the descriptive character of the trade mark in question carried out by the Board of Appeal, the applicant does not dispute the meaning of the acronym ‘DVD’ (digital versatile disc), or the meaning of the word ‘creator’ (a person or a thing that creates, originator). However, on the basis of the perception of the trade mark in question on the part of the general public as well as – in any event – personal computer users, the applicant disputes the claim that the word ‘win’ will automatically be understood as an acronym for the Microsoft Windows operating system. In its submission, the reference made by the examiner and the Board of Appeal to a specialised online acronym dictionary is not sufficient to prove the accuracy of such a subjective interpretation. In fact, the word ‘win’ will rather be understood as a reference to the English verb ‘to win’.
12 The applicant adds that, as regards a compound trade mark, the assessment of its distinctive or descriptive character should be based on the overall perception of that sign by the relevant public. Not only is the word ‘win’, as well as the entire trade mark, devoid of any meaning in relation to those goods, but the composition of the trade mark applied for, with two components ‘win’ and ‘dvd’ written together followed by a separate third component ‘creator’, also constitutes a non-existent and new expression. Furthermore, the trade mark in question constitutes an unusual and new expression which is not commonly used in trade. The applicant observes that the registration sought would not prevent competitors from using the different components of the trade mark separately.
13 Furthermore, the position adopted by OHIM is all the more difficult to understand as in the past it has agreed to register, with respect to class 9, word marks more descriptive than that applied for in this case, and which include ‘dvd’ or ‘win’, such as DVD Workshop, SoftDVD, DVDRWIN and WinDVD Universal Player.
14 OHIM observes that the goods concerned are software products which have a specific nature enabling them to perform operations which may be complex. Thus, only experienced personal computer users will be interested in buying the goods in question. Therefore, in ascertaining whether the sign which is the subject of the trade mark application is distinctive, the perception of that group of potential purchasers must be taken into account.
15 According to OHIM, the word ‘win’ is merely a commonly used abbreviation for Windows, as is also apparent from a dictionary of acronyms. That meaning is easily understood by the relevant public, made up of personal computer users who buy software to perform operations such as encoding or decoding data. In that regard, OHIM observes that the majority of purchasers of personal computer software are aware of the existence of Windows as a mark which designates computer software, since it is an operating system which is very widely distributed. Furthermore, OHIM observes that it was correctly pointed out in the contested decision that the applicant itself describes its goods as software using Windows 2000 and Windows XP as platforms.
16 OHIM challenges the applicant’s argument that the perception of the public in general should be taken into account. It argues that the fact that some people with no interest in purchasing or using the goods in question may have allegedly been exposed to the mark through advertising does not result in that group becoming the relevant public. In any event OHIM observes that, within the public in general, there is a significant number of relatively experienced personal computer users who would immediately recognise ‘win’ as an abbreviation for ‘windows’. In that regard, OHIM points out that, according to the case-law of the Court of Justice, a word sign must be refused registration under Article 7(1)(c) of Regulation No 40/94, if at least one of its possible meanings designates a characteristic of the goods or services in question.
17 OHIM points out that in the present case, in the absence of unusual variations, in particular as to syntax or meaning, the mere association of the elements ‘win’, ‘dvd’ and ‘creator’, each of which is descriptive of characteristics of the goods designated in the application, itself remains descriptive of those characteristics. As the Board of Appeal correctly observed, the sign in question describes in particular the intended use of the goods concerned, by indicating that ‘when the software is used with Windows (Microsoft), DVDs are created by means of downloading, transmitting, receiving, extracting, encoding, decoding, playing, storing and organising audio, video, text and other data via local and global computer, cable and wireless networks’. Consequently, there is a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive a description of the characteristics of the goods for the purpose of Article 7(1)(c) of Regulation No 40/94.
18 Finally, OHIM maintains that the applicant pleads infringement of Article 4 of Regulation No 40/94 without submitting any argument in support of its claim. Therefore that claim should be dismissed.
Findings of the Court
19 Since the Board of Appeal justified the refusal to register under Article 7(1)(b) of Regulation No 40/94 on the ground that Article 7(1)(c) thereof is applicable in this case, it is sufficient to examine whether the mark applied for is descriptive for the purpose of Article 7(1)(c).
20 There is a clear overlap in the scope of the grounds set out in Article 7(1)(b), (c) and (d) of Regulation No 40/94. In particular, a word mark which is descriptive of the characteristics of goods or services for the purposes of Article 7(1)(c) of the regulation is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) of the regulation (see, by analogy, Case C-265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 19).
21 Under Article 7(1)(c) of Regulation No 40/94 ‘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.
22 The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I‑6251, paragraph 39, and Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II‑2383, paragraph 24).
23 A sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by the relevant public (Case T-356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II‑1963, paragraph 25).
24 In this case, the applicant’s application for registration covers the following goods: ‘computer software for use in downloading, transmitting, receiving, extracting, encoding, decoding, playing, storing and organising audio, video, text and other data via local and global computer, cable and wireless networks’.
25 In answer to a written question from the Court, the applicant stated that the software concerned enables the end user to create and edit his own DVDs.
26 So far as concerns the relevant public, the Board of Appeal held that it consisted of English-speaking personal computer users who are familiar with specific computer language.
27 The applicant submits that that definition cannot be accepted and that the relevant public consists instead of average consumers and, thus, the general public.
28 Without examining the applicant’s argument that the relevant public must include all consumers likely to encounter the mark applied for, it is sufficient to state that potential purchasers of the goods in question are average consumers.
29 It is well known that consumers in general commonly use computers. Furthermore, the question as to the kind of operations themselves that the software concerned is designed to perform is irrelevant. What is important is the way in which those operations are presented to the end user. In that regard, it is clear from the applicant’s answer to the written question from the Court that the software as such is easy to use even for beginners. Thus, the end user will not be deemed to be a computer expert or to have specific technical knowledge even if the operations performed by software he uses may be complex.
30 Therefore, the relevant public consists of average consumers who are members of the general public, as any consumer may be interested in purchasing the goods concerned. Furthermore, according to Article 7(2) of Regulation No 40/94, paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. Thus, the relevant public, with respect to which the absolute ground for refusal should be assessed, is English-speaking average consumers, since the sign at issue is composed of elements of the English language.
31 Account must also be taken of the fact that the level of awareness of the relevant public in the field of computer goods is relatively high in relation to signs, and in particular marks, likely to indicate a commercial origin guaranteeing the compatibility of the goods purchased with their computing equipment (see, to that effect, Case T-130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II‑5179, paragraph 24).
32 According to the case-law, for a sign to be caught by the prohibition 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 and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (PAPERLAB, paragraph 25).
33 Furthermore, if a mark which consists of a neologism or a word produced by a combination of elements is to be regarded as descriptive for the purpose of Article 7(1)(c) of Regulation No 40/94, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must also be found to be so (see Joined Cases T-367/02 to T-369/02 Wieland-Werke v OHIM (SnTEM, SnPUR, SnMIX) [2005] ECR II‑47, paragraph 31, and the case-law cited).
34 In addition, a sign consisting of a neologism or of a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 40/94, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (see SnTEM, SnPUR, SnMIX, paragraph 32, and the case-law cited). In that connection, the analysis of the term in question in the light of the appropriate lexical and grammatical rules is also relevant (see, to that effect, Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II-4995, paragraph 39, and Case T-173/03 Geddes v OHIM (NURSERYROOM) [2004] ECR II‑4165, paragraph 21).
35 In this case, it must be observed that the sign at issue, WinDVD Creator, is composed of three word elements, namely two abbreviations and one noun of the English language.
36 In that connection, the Board of Appeal stated, without being contradicted by the applicant, that the acronym DVD will be understood by the consumer as ‘digital versatile disc’ and that for the consumer the general meaning of the word ‘creator’ will be ‘a person or a thing that creates, originator’.
37 Since the goods covered by the application for registration are computer programs which enable their users to create DVDs the words ‘dvd’ and ‘creator’, which refer to the creation of DVDs, are therefore clearly descriptive of one of the characteristics of the goods concerned.
38 Therefore, for the purposes of determining whether the sign at issue is descriptive, the crucial question is whether, from the point of view of relatively observant average consumers, the word ‘win’ changes the meaning of the trade mark applied for with respect to the goods concerned.
39 In that connection, the applicant challenges the Board of Appeal’s assessment that ‘win’ refers to Windows. In particular, it disputes the value of the reference found by the Board of Appeal in the on-line dictionary of acronyms on the ground that it is a commercial website.
40 Without there being any need to examine the nature of the internet site to which the Board of Appeal refers, it should be recalled that the Boards of Appeal are tasked with determining the perception that the relevant public will have of the mark for which registration is sought. The Boards of Appeal may thus be led to assess what that perception will be. In order to do this, the Boards of Appeal can rely on matters of common knowledge and, where appropriate, on the particular understanding of those matters by their members, subject to the adversely affected party’s proving an error in assessing that common knowledge of those matters (see, to that effect, judgment of 17 October 2006 in Case T-499/04 Hammarplast v OHIM – Steninge Slott (STENINGE SLOTT), not published in the ECR, paragraph 53).
41 It must be recalled that, under Article 74(1) of Regulation No 40/94, OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark registration of which is sought falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been alleged by the applicant for the mark (Case C-25/05 P Storck v OHIM [2006] ECR I‑5719, paragraph 50).
42 Whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, such is not the case where they allege facts which are well known. An applicant for a trade mark against whom OHIM relies on such well-known facts may challenge their accuracy before the Court of First Instance (Storck v OHIM, paragraphs 51 and 52).
43 Accordingly, it is necessary to examine whether the Board of Appeal was right to hold that it was common knowledge that the average consumer would associate the word ‘win’ with the operating system Windows.
44 It is common ground that Windows, the operating system of Microsoft Corporation, is commonly used in the information technology field by average personal computer users. There is no doubt that among those personal computer users, including even those who use a computer for their personal or professional activities on a daily basis, there are many who are unfamiliar with both the technical details of the functioning of the Windows operating system and information technology language in general. Although it is true that not all personal computer users have such specific knowledge in the field, the word ‘win’ where it appears in relation to computers, and in particular software, will automatically and immediately be understood by the majority as an abbreviation or a shortened reference to Windows. Thus, an average personal computer user will be led to believe that the word ‘win’ refers to the Windows system in the context of information technology.
45 Furthermore, the fact that ‘win’ may also be understood as a reference to the English verb ‘to win’ or as having no particular meaning does not call into question the finding that the sign at issue is descriptive of the characteristics of the goods it designates. A word sign must be refused registration under Article 7(1)(c) of Regulation No 40/94 if at least one of its possible meanings designates a characteristic of the goods or services concerned (Case C-191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 32, and NURSERYROOM, paragraph 19).
46 Therefore, there is a direct link between the sign WinDVD Creator and the goods concerned, since the sign, taken as a whole, constitutes a direct reference to the intended use and, therefore, one of the characteristics of the goods in respect of which registration is sought. The sign immediately and unequivocally informs the relevant consumers that the goods covered by the application for registration are used to make DVDs.
47 As regards the applicant’s argument that the sign WinDVD Creator is invented or new, it is apparent that the combination of its constituent elements is not unusual in its structure. On the contrary, by placing the words ‘win’, ‘dvd’, and ‘creator’ side by side in the right order according to English grammar, the sign at issue does not create, in the mind of the relevant public, an impression which is sufficiently far removed from that produced by the simple juxtaposition of the words to alter its meaning or scope. Furthermore, as regards the unusual way of writing the sign at issue, the first two components, ‘win’ and ‘dvd’, are juxtaposed without spaces and are followed by the third term, ‘creator’, which is separate. Of those three elements, the first and last begin with a capital letter while the second, ‘dvd’, is written in capitals. That form of writing does not amount to evidence of any creative aspect making the sign as a whole capable of distinguishing the products of one undertaking from those of other undertakings. Thus it is not a lexical invention.
48 Furthermore, the figurative element of the sign consists solely of the use of a typeface which is not very distinctive, the effect of which is to place more emphasis on its verbal elements. In the light of the recurrent nature of the typographical features of the mark applied for, and the absence of any particular distinctive element, the typeface used and the differences in the boldness of the characters do not enable the trade mark applied for to constitute a clear and exclusive reference, in the mind of the relevant public, to the origin of the goods covered by the application for registration. Thus, the figurative elements are so ordinary that they do not endow the trade mark applied for as a whole with any distinctive character. Those elements do not possess any feature, in particular in terms of fancifulness or as regards the way in which they are combined, allowing that mark to fulfil its essential function in relation to the goods covered by the trade mark application (see, to that effect, Case C-37/03 P BioID v OHIM [2005] ECR I‑7975, paragraphs 71 and 74).
49 It is clear from the foregoing that the Board of Appeal rightly held that the mark WinDVD Creator described in English in a simple and direct manner the function or intended use of the goods in respect of which registration had been sought.
50 As regards the applicant’s argument that OHIM has registered other marks containing ‘dvd’ and ‘win’, which it submits were ‘clearly more descriptive’, it should be noted that, according to settled case-law, the legality of the decisions of the Boards of Appeal and the registrability of a sign as a Community trade mark must be assessed solely on the basis of Regulation No 40/94 and not on the basis of a previous decision-making practice of OHIM (Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I‑551, paragraph 48).
51 Therefore, OHIM is not in any way bound by its previous decisions, and the applicant’s argument based on various earlier registrations, allegedly made by OHIM, of marks containing ‘dvd’ and ‘win’ is irrelevant.
52 It follows from the foregoing considerations that the Board of Appeal did not infringe Article 7(1)(c) of Regulation No 40/94 by holding that the sign at issue was descriptive of the goods in question and that for that reason it could not be registered as a Community trade mark.
53 Since a word mark descriptive of the characteristics of goods or services for the purpose of Article 7(1)(c) of Regulation No 40/94 is, according to the case-law cited in paragraph 20 above, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b), the argument alleging infringement of Article 7(1)(b) of Regulation No 40/94 cannot be accepted.
54 Finally, under Article 4 of Regulation No 40/94 the condition which determines whether a Community trade mark may consist of a sign capable of being represented graphically is the sign’s capability of distinguishing the goods or services of one undertaking from those of another undertaking. As was stated in paragraphs 20 and 53 above, a sign which is descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94 is necessarily devoid of any distinctive character. Therefore, such a sign also cannot fulfil the condition laid down in Article 4 of that regulation. It follows that the applicant’s argument alleging infringement of Article 4 of Regulation No 40/94 must also be dismissed.
55 Accordingly, the action must be dismissed in its entirety.
Costs
56 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs, if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby:
1. Dismisses the action.
2. Orders InterVideo Inc. to pay the costs.
Delivered in open court in Luxembourg on 17 October 2007.