JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
18 January 2018 (*)
EU trade mark — Application for EU word mark Dual Edge — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001)
In Case T‑804/16,
LG Electronics, Inc., established in Seoul (South Korea), represented by M. Graf, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 2 September 2016 (Case R 832/2016-2), relating to an application for registration of the word sign Dual Edge as an EU trade mark,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, E. Bieliūnas and A. Marcoulli (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 16 November 2016,
having regard to the response lodged at the Court Registry on 13 February 2017,
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
Background to the dispute
1 On 12 August 2015, the applicant, LG Electronics, Inc., filed an application for registration of an EU trade mark 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 Registration as a mark was sought for the word sign Dual Edge.
3 The goods in respect of which registration was sought are in 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: ‘Smart phones; portable communications apparatus; monitors for computers; monitors for commercial purposes; audio components; apparatus for recording, transmission or reproduction of sound and images; application software; software for mobile phones; television receivers (TV sets); wearable smart phones; cases for mobile phones; stands for mobile phones; stylus for smart phones; portable mobile phone chargers; headphones; earphones; wireless headphones’.
4 By decision of 4 March 2016, the examiner rejected the application for registration in part on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009 (now Article 7(1)(b) and (c) and Article 7(2) of Regulation No 2017/1001). The goods referred to in paragraph 3 above in respect of which the application was rejected are the following: ‘Smart phones; portable communications apparatus; monitors for computers; monitors for commercial purposes; apparatus for recording, transmission or reproduction of sound and images; television receivers (TV sets); wearable smart phones; cases for mobile phones; stands for mobile phones; stylus for smart phones.’
5 On 3 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 the examiner’s decision.
6 By decision of 2 September 2016 (‘the contested decision’), the Second Board of Appeal dismissed the appeal. First, it held that the mark applied for was descriptive, within the meaning of Article 7(1)(c) of Regulation No 207/2009. Thus, it found, at paragraph 20 of the contested decision, that the mark applied for would immediately be understood as designating mobile phones and display apparatus with dual display incorporated along the rims of those devices. The Board of Appeal explained, in paragraph 22 of the contested decision, that that finding was confirmed by examples of actual use on the market of expressions similar to the mark applied for, used for similar or identical goods. Secondly, the Board of Appeal held, in paragraph 29 of the contested decision, that the mark applied for had no distinctive character, since it would be seen by the relevant public as a descriptive term and an obvious laudatory expression.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
8 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
Admissibility
9 As a preliminary point, it should be borne in mind that, according to settled case-law, in order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and points of law on which it is based must be apparent from the text of the application itself, at the very least as a summary, provided that it is coherent and comprehensible. In that regard, whilst the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed thereto, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law which, in accordance with the provisions referred to above, must appear in the application (judgment of 11 September 2014, Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, not published, EU:T:2014:769, paragraph 18). Accordingly, it is not for the Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer (see judgment of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 22 (not published) and the case-law cited).
10 In the present case, as EUIPO states in its response, the applicant refers the Court to all of the arguments put forward in its observations submitted on 17 November 2015 to the examiner and in its statement of 4 July 2016 addressed to the Board of Appeal.
11 It follows that the application, in so far as it makes a general reference to the documents referred to in paragraph 10 above, is inadmissible.
Substance
12 In support of its action, the applicant must be regarded as raising two pleas in law, alleging, respectively, first, infringement of Article 7(1)(b) of Regulation No 207/2009 and, secondly, infringement of Article 7(1)(c) of that regulation.
13 The Court considers it appropriate first to examine the second plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009.
Second plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
14 The applicant complains that the Board of Appeal was wrong to conclude that the word sign at issue was descriptive as regards the goods referred to in the application for registration.
15 Article 7(1)(c) of Regulation No 207/2009 provides that 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. Furthermore, Article 7(2) of Regulation No 207/2009 provides that the first paragraph is to apply notwithstanding the fact that the grounds of non-registrability obtain in only part of the European Union.
16 The Court recalls that the general interest underlying Article 7(1)(c) of Regulation No 207/2009 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31, and of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 37).
17 By using, in Article 7(1)(c) of Regulation No 207/2009, the terms ‘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’, the EU legislature made it clear, first, that those terms must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 49).
18 The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 207/2009 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50). Thus, a sign may be refused registration on the basis of Article 7(1)(c) of Regulation No 207/2009 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 10 July 2014, BSH v OHIM, C‑126/13 P, not published, EU:C:2014:2065, paragraph 22 and the case-law cited).
19 The case-law has also stated that, for the purposes of applying Article 7(1)(c) of Regulation No 207/2009, it is necessary to consider whether, from the viewpoint of the relevant public, there is a sufficiently direct and specific relationship between the sign for which registration as a mark is sought and the goods or services concerned that enables that public immediately to perceive, without further thought, a description of those goods or services, or one of their characteristics (judgment of 19 April 2016, Spirig Pharma v EUIPO (Daylong), T‑261/15, not published, EU:T:2016:220, paragraph 19; see also, to that effect, judgment of 28 June 2012, XXXLutz Marken v OHIM, C‑306/11 P, not published, EU:C:2012:401, paragraph 79).
20 Furthermore, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive but it is sufficient that the sign could be used for such purposes for it to be caught by the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009 (see judgment of 14 June 2017, LG Electronics v EUIPO (Second Display), T‑659/16, not published, EU:T:2017:387, paragraph 21 and the case-law cited).
21 Lastly, it should also be noted that the descriptiveness of a sign may be assessed only, first, by reference to the way in which it is understood by the relevant public and, secondly, by reference to the goods or services concerned (judgment of 30 September 2015, Ecolab USA v OHIM (GREASECUTTER), T‑610/13, EU:T:2015:737, paragraph 19).
22 The plea in law alleging infringement of Article 7(1)(c) of Regulation No 207/2009 must be examined in the light of those principles.
23 In the present case, first, as regards the definition of the relevant public, the Board of Appeal found, in paragraph 16 of the contested decision, that the products covered by the mark applied for are intended for the average consumer who is reasonably well informed and reasonably observant and circumspect. It also took the view, in paragraph 15 of the contested decision, that, in so far as the mark applied for was composed of two English words, it was addressed to the English-speaking public in the European Union. Therefore, the Board of Appeal assessed the existence of absolute grounds for refusal with regard to English-speaking consumers.
24 There is no reason to call into question those findings of the Board of Appeal, which, moreover, are not contested by the applicant.
25 Secondly, concerning the structure and the meaning of the mark applied for, the applicant argues that it consists of a newly coined term, with the result that it cannot be artificially split into two words, namely ‘dual’ and ‘edge’. Furthermore, the mark applied for is an invented word that does not appear in any dictionary.
26 In that regard, it must be recalled that, as regards verbal expressions which consist of a combination of elements, the issue of their descriptiveness may be assessed, in part, in relation to each of those elements, taken separately, but must, in any event, also be established in relation to the whole which they comprise (see judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 23 and the case-law cited). Since the relevant public will perceive the mark applied for as a whole, it is any descriptiveness of the mark as a whole, and not of the various elements of that mark considered separately, which is important.
27 In the present case, the Board of Appeal observed, in paragraphs 18 and 19 of the contested decision, that the mark applied for consisted of the combination of two English words, namely, first, ‘dual’, meaning ‘relating to two, double’, and, secondly, ‘edge’, meaning ‘the border, brim, or margin of a surface, object etc.’ Those meanings, set out in the Collins English Dictionary, are not disputed by the applicant.
28 In addition, whilst the Board of Appeal did not expressly attribute a meaning to the expression ‘dual edge’, it analysed the descriptiveness of that expression and noted, in paragraph 21 of the contested decision, that no analysis was required in order to ascertain the possible meaning of that expression, since it was merely a combination of two words whose meanings, referred to in paragraph 27 above, were not disputed. Therefore, the Board of Appeal must be regarded as having implicitly attributed to the word sign applied for the meaning ‘two edges’, as is, moreover, accepted by the applicant.
29 In those circumstances, contrary to the applicant’s assertions, the Board of Appeal did not artificially separate the expression ‘dual edge’.
30 Furthermore, concerning the applicant’s argument that the term ‘dual edge’ did not appear in the dictionary, EUIPO correctly noted that that does not invalidate the assessment that the sign applied for is descriptive of the goods covered, within the meaning of Article 7(1)(c) of Regulation No 207/2009. In that regard, it is sufficient to note that it is not necessary that the word sign composing the mark applied for actually be in use at the time of the application for registration in a way that is descriptive of the goods and services concerned (see, to that effect, judgment of 16 May 2017, Marsh v EUIPO (LegalPro), T‑472/16, not published, EU:T:2017:341, paragraph 25 and the case-law cited).
31 Thirdly, concerning the relationship between the mark applied for and the goods covered, the Board of Appeal found, in paragraph 20 of the contested decision, that, in respect of the goods concerned, the expression ‘dual edge’ will be immediately perceived by the relevant public as meaning that those goods are mobile phones and display apparatus with dual displays incorporated along the rims of those telephones or apparatus or goods used in connection with those devices. The Board of Appeal added, in paragraph 22 of the contested decision, that that conclusion was confirmed by the examples of actual use on the market of expressions similar to the mark applied for, used for similar or identical goods, such examples not having given rise to any observation on the part of the applicant.
32 The applicant disputes the Board of Appeal’s assessment, arguing that the meaning of an object with ‘two edges’ is vague and unclear and, therefore, does not refer to any characteristic of the goods covered by the mark applied for. On that point, the applicant notes that the word sign does not include any reference to a screen. From this it concludes that the term ‘dual edge’ is at most merely suggestive, since it was capable of evoking the characteristic found by the Board of Appeal only after some imagination and reflection on the part of the relevant public.
33 First of all, it should be noted that, as the applicant submits, the mark applied for does not contain any element showing that the term ‘dual edge’ refers to the screens of the devices concerned. That conclusion, relevant in so far as the mark applied for designates mobile phones, must, however, be placed in context inasmuch as the mark applied for covers monitors, namely monitors for computers, monitors for commercial purposes and television receivers (TV sets).
34 Furthermore, the Board of Appeal substantiated its finding that a direct link would be made by the relevant public between the mark applied for and one of the characteristics of the goods covered by the fact, noted in paragraph 22 of the contested decision, that the term ‘dual edge’ was actually used on the market to designate mobile phone screens placed along the edges of a device.
35 The Board of Appeal refers in that respect to the evidence produced by the examiner which consists of articles available on the internet. Those articles refer to the placing on the market, by various manufacturers, of telephones with a dual-edge curved screen display, dual-edge display or curved edge.
36 It is apparent from those articles that the expression ‘dual edge’ was used on the market, at the time of the application for registration, to designate an innovative characteristic of screens and, here, of mobile phone screens, namely the fact that those screens are curved on two sides. That actual use on the market was raised as an objection both by the examiner and by the Board of Appeal. However, the applicant did not dispute that point or even produce any observation on that subject during the administrative procedure or the proceedings.
37 Although the expression ‘dual edge’ referred to a technology which was new at the time of the application for registration of the trade mark applied for, it may, nonetheless, be pointed out that it is not necessary that the sign in respect of which registration is applied for actually be in use at the time of the application for registration in a way that is descriptive but it is sufficient that the sign could be used for such purposes for it to be caught by the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009 (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 38, and of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 58).
38 It follows from this that, contrary to what the applicant claims, the link between the mark applied for and the goods covered is not merely suggestive. On the contrary, the mark applied for refers directly and specifically to a characteristic of some of the goods covered, namely mobile phones, portable communications apparatus, apparatus for recording, transmission or reproduction of sound and images, monitors for computers, monitors for commercial purposes and television receivers (TV sets).
39 In those circumstances, having regard to the public interest underlying Article 7(1)(c) of Regulation No 207/2009, referred to in paragraph 16 above, which is to ensure that signs which are descriptive of one or more characteristics of the goods or services for which registration as a mark is sought may be freely used by all traders offering such goods or services, it must be held that in relation to the goods referred to in paragraph 38 above the expression ‘dual edge’ will be liable to be recognised by the relevant class of persons as a description of one of their characteristics, namely the fact that they have an integrated screen on two sides of the device.
40 That conclusion was correctly extended by the Board of Appeal to goods used in connection with mobile phones, namely cases for mobile phones, stands for mobile phones and stylus for smart phones, since this concerns ancillary goods, closely connected with those phones.
41 As to the argument expounded in paragraphs 35 to 41 of the application that EUIPO had already authorised the registration of trade marks including the word elements ‘dual’ or ‘edge’ for goods in Class 9, it should be pointed out that the legality of the decisions of the Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of EUIPO’s previous decision-making practice, which, in any event, cannot bind the EU judicature (see, to that effect, judgment of 30 April 2013, Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, not published, EU:T:2013:225, paragraph 33 and the case-law cited).
42 Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered, and that examination must be undertaken in each individual case since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77, and of 10 September 2015, Laverana v OHIM (BIO organic), T‑610/14, not published, EU:T:2015:613, paragraph 22).
43 In the present case, it is clear from the foregoing examination that the Board of Appeal correctly found, on the basis of a full analysis and taking account of the relevant public’s perception, that the mark applied for was caught by the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009. It follows that, in accordance with the case-law cited in paragraph 41 above, that assessment may not be called into question on the sole ground that the Board of Appeal allegedly did not, in the present case, follow EUIPO’s decision-making practice (see, to that effect, judgment of 17 May 2017, adp Gauselmann v EUIPO (MULTI FRUITS), T‑355/16, not published, EU:T:2017:345, paragraph 40 and the case-law cited).
44 In any event, as EUIPO submits in its response, the examples of EU trade marks referred to in the application are irrelevant since they contain only one of the two words, ‘dual’ or ‘edge’, together with another word element.
45 It follows from all of the foregoing that the Board of Appeal did not commit an error of assessment in concluding that the mark applied for is descriptive in relation to all the goods covered. Consequently, the second ground of appeal must be rejected.
First plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
46 As regards the first plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, inasmuch as the word sign Dual Edge has distinctive character, it must be borne in mind that, as is clear from the wording of Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign to be ineligible for registration as an EU trade mark (see, to that effect, order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 27, and judgment of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 67).
47 In the present case, since the mark applied for has been held to be descriptive of the goods covered, it is unnecessary to examine the merits of the second plea alleging infringement of Article 7(1)(b) of Regulation No 207/2009, which must be rejected as ineffective.
48 It follows from all of the foregoing that the action must be dismissed.
Costs
49 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 (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders LG Electronics, Inc. to pay the costs.
Tomljenović | Bieliūnas | Marcoulli |
Delivered in open court in Luxembourg on 18 January 2018.