JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
12 March 2014 (*)
(Community trade mark – Applications for Community word marks IP ZONE, EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009)
In Joined Cases T‑102/11, T‑369/12, T‑370/12 and T‑371/12,
American Express Marketing & Development Corp., established in New York (New York, United States), represented by V. Spitz, A. Gaul, T. Golda and S. Kirschstein-Freund, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo and P. Bullock, acting as Agents,
defendant,
ACTIONS brought against the decisions of the Second Board of Appeal of OHIM of 1 December 2010 (Case R 1125/2010‑2) and 12 June 2012 (Cases R 1451/2011‑2, R 1452/2011‑2 and R 1453/2011‑2) concerning the applications for registration of the sign IP ZONE and the signs EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE, respectively, as Community trade marks,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis, President, O. Czúcz and A. Popescu (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the applications lodged at the Court Registry on 22 February 2011 (Case T‑102/11) and on 20 August 2012 (Cases T‑369/12, T‑370/12 and T‑371/12),
having regard to the responses lodged at the Court Registry on 20 May 2011 (T‑102/11) and on 30 October 2012 (Cases T‑369/12, T‑370/12 and T‑371/12),
having regard to the order of 1 July 2013 joining Cases T-102/11, T‑369/12, T‑370/12 and T‑371/12 for the purposes of the oral procedure and the judgment,
further to the hearing on 21 November 2013,
gives the following
Judgment
Background to the dispute
1 On 21 October 2009 and 1 November 2010, the applicant, American Express Marketing & Development Corp., filed four Community trade mark applications at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The marks in respect of which registration was sought are the word signs IP ZONE, EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE.
3 The services in respect of which registration was applied for are in Class 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘hosting an on-line portal for disclosing, selling, buying, licensing and general transactions for intellectual property’.
4 By decisions of 4 May 2010 (Case T‑102/11) and 18 May 2011 (Cases T‑369/12, T‑370/12 and T‑371/12), the examiner refused registration of the marks applied for on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.
5 On 21 June 2010 and 18 July 2011, the applicant filed appeals at OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decisions.
6 By decisions of 1 December 2010 (Case T‑102/11) and of 12 June 2012 (Cases T‑369/12, T‑370/12 and T‑371/12) (together, ‘the contested decisions’), the Second Board of Appeal of OHIM dismissed the applicant’s actions.
7 After stating that the relevant public was made up of English-speaking professionals in the European Union, the Board of Appeal, essentially, found that the marks applied for, taken as a whole, would be understood by the relevant public as meaning ‘a place dedicated to intellectual property’ with respect to the mark IP ZONE, and ‘an area devoted to intellectual property in Europe’ with respect to the marks EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE. The Board of Appeal consequently held that the marks applied for were descriptive of the services in question, with the result that, in accordance with Article 7(1)(c) of Regulation No 207/2009, they could not be registered.
8 Concerning the application of Article 7(1)(b) of Regulation No 207/2009, in the decision contested in Case T‑102/11 the Board of Appeal held that, as the mark IP ZONE was not understood as an indication of the origin of the services at issue, it was for that reason devoid of distinctive character within the meaning of that article. In the decisions contested in Cases T‑369/12, T‑370/12 and T‑371/12, the Board of Appeal held that, as the marks EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE were descriptive of the services claimed, they were for that reason devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decisions;
– in the alternative, amend the contested decisions and rule that the actions are well founded;
– order OHIM to pay the costs.
10 OHIM contends that the Court should:
– dismiss the actions;
– order the applicant to pay the costs.
11 At the hearing, in answer to a question put by the Court, the applicant withdrew its second head of claim, and formal note of that withdrawal was taken in the minutes of the hearing.
Law
12 In support of its action for annulment of the contested decisions, the applicant relies on two pleas in law, alleging: (i) infringement of Article 7(1)(c) of Regulation No 207/2009; and (ii) infringement of Article 7(1)(b) of that regulation.
13 With regard to the plea in law alleging infringement of Article 7(1)(c) of Regulation No 207/2009, the applicant claims, in essence, that the Board of Appeal erred in finding that the word signs at issue were descriptive in relation to the services covered by the applications for registration.
14 Under Article 7(1)(c) of Regulation No 207/2009, ‘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’ may not be registered. In addition, Article 7(2) of Regulation No 207/2009 states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
15 According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 31; Case T‑219/00 Ellos v OHIM (ELLOS) [2002] ECR II‑753, paragraph 27; and judgment of 7 July 2011 in Case T‑208/10 Cree v OHIM (TRUEWHITE), not published in the ECR, paragraph 12).
16 Furthermore, signs or indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see OHIM v Wrigley, paragraph 30, and TRUEWHITE, paragraph 13).
17 It follows that, for a sign to come within the scope of the prohibition set out in that provision, 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 (see TRUEWHITE, paragraph 14 and the case-law cited).
18 It should also be noted that a sign’s descriptive nature may only be assessed, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (Case T‑34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II‑683, paragraph 38, and TRUEWHITE, paragraph 17).
19 In the present case, with regard to the relevant public, it must be stated that the Board of Appeal found, in paragraph 10 of the decision contested in Case T‑102/11 and in paragraph 15 of the decisions contested in Cases T‑369/12, T‑370/12 and T‑371/12, that the services at issue were aimed at professionals in the field of intellectual property. Moreover, the Board of Appeal stated that the public in relation to which the absolute ground of refusal had to be assessed was an English-speaking public, since the word signs at issue are made up of English words.
20 That definition of the relevant public, which had not been expressly challenged in the actions brought, was called into question by the applicant during the hearing. In that regard, it claimed, first, that the hosting of an on-line portal was not carried out by professionals in the field of intellectual property, but rather by IT experts and, second, that the services provided by that portal were also addressed to the general public.
21 Those arguments, on the assumption that they are admissible, cannot be accepted.
22 It cannot validly be claimed that the services at issue – ‘hosting an on‑line portal for disclosing, selling, buying, licensing and general transactions for intellectual property’ – are not principally intended for professionals in the field of intellectual property, in so far as these are very specific services which refer expressly to the field of intellectual property.
23 Moreover, even if it were to be accepted, as the applicant claims, that the services in question are also intended for the general public, it must be observed that OHIM, with a view to guaranteeing the effectiveness of the prohibition of the registration of descriptive marks set out in Article 7(1)(c) of Regulation No 207/2009, which is intended to ensure the possibility, for all economic operators, to use freely the terms, even technical terms, designating the characteristics of the goods and services which they market, is entitled to take account of the presence, within the general public, of a more limited category of persons made up of consumers for whom the goods and services covered by the mark applied for are particularly intended (see, to that effect, judgment of 17 September 2008 in Case T‑226/07 Prana Haus v OHIM (PRANAHAUS), not published in the ECR, paragraphs 26 to 29, and Case T‑286/08 Fidelio v OHIM (Hallux) [2010] ECR II‑6239, paragraph 41).
24 Consequently, the Court finds that the Board of Appeal acted correctly in taking the view that the relevant public was made up of English-speaking professionals in the field of intellectual property.
25 Concerning the descriptive character, for the purposes of Article 7(1)(c) of Regulation No 207/2009 it is necessary to consider, on the basis of a given meaning of the word signs in question, whether, from the point of view of the public addressed, there is a sufficiently direct and specific relationship between the signs IP ZONE, EUROPE IP ZONE, IP ZONE EUROPE and EUROPEAN IP ZONE and the services in respect of which registration is sought (see, to that effect, Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II‑4995, paragraph 38, and TRUEWHITE, paragraph 19 and the case‑law cited).
26 All of the marks applied for consist of the acronym IP and the noun ‘zone’. Those elements are preceded by the geographical term ‘Europe’ in the mark applied for in Case T‑369/12 and followed by that term in the mark applied for in Case T‑370/12. The mark applied for in Case T‑371/12 is made up of the geographical adjective ‘European’, the acronym IP and the noun ’zone’.
27 In that regard, it should be noted at the outset that the applicant does not challenge the Board of Appeal’s findings that the word ’Europe’ is the term commonly used to describe the European continent (see paragraph 25 of the decision contested in Case T‑369/12 and paragraph 27 of the decision contested in Case T‑370/12). Furthermore, the applicant does not dispute that the geographical adjective ‘European’ will be understood by the relevant English-speaking public as meaning ‘relating to, characteristic of Europe or its inhabitants’.
28 By contrast, the applicant claims that the element ‘ip’ of the signs at issue may evoke different meanings on the part of the relevant public.
29 That argument cannot be accepted.
30 As the Board of Appeal correctly found in paragraph 17 of the decision contested in Case T‑102/11, in paragraph 25 of the decisions contested in Cases T‑369/12 and T‑370/12, and in paragraph 26 of the decision contested in Case T‑371/12, the possible meaning of the acronym IP should not be examined in the abstract, but in relation to the services covered by the marks applied for and to the consumers for whom they are intended.
31 It should be borne in mind that the services concerned consist of ‘hosting an on-line portal for disclosing, selling, buying, licensing and general transactions for intellectual property’ and that, as found in paragraph 24 above, the relevant public is made up of English‑speaking professionals in the field of intellectual property, that is to say, a public which regularly uses the abbreviation IP to refer to the words ‘intellectual property’.
32 The applicant also submits that, even if one of the possible meanings of a term is descriptive, that does not necessarily lead to the conclusion that that term is descriptive, since it may have other meanings which do not clearly and directly describe the nature or characteristics of the services concerned. Suffice it to note in this regard, that, according to settled case‑law, the fact that the mark applied for may have several meanings does not preclude application of the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (OHIM v Wrigley, paragraph 32).
33 Second, so far as concerns the applicant’s argument that, even if the word ‘zone’ corresponded to a particular area different to those surrounding it, the public in question would not perceive immediately, and without further thought, that term as being a description of an on‑line portal, suffice it to state that the Board of Appeal correctly found in paragraph 20 of the decision contested in Case T‑102/11, in paragraph 28 of the decision contested in Case T‑369/12, and in paragraph 29 of the decisions contested in Cases T‑370/12 and T‑371/12, that the signs at issue, taken as a whole, will be unequivocally understood by the relevant public as describing an area devoted to intellectual property. By contrast, the Board of Appeal did not in any way find that the word ‘zone’, by itself, described an on‑line portal. That argument therefore cannot be upheld either.
34 Third, with regard to the applicant’s argument that the contested decisions did not state that the marks at issue were descriptive of the services in question – hosting an on‑line portal – but more generally descriptive of a website devoted to intellectual property or a virtual information zone on intellectual property, it must be observed that, in paragraph 22 of the decision contested in Case T‑102/11, in paragraph 28 of the decision contested in Case T‑369/12, and in paragraph 29 of the decisions contested in Cases T‑370/12 and T‑371/12, the Board of Appeal found that the relevant public would perceive the expression ‘IP ZONE’ as being a reference to an ‘area dedicated to intellectual property’. The Court finds that that definition, even if it is not particularly precise, clearly includes the services at issue, namely ‘hosting an on-line portal for disclosing, selling, buying, licensing and general transactions for intellectual property’. That argument must therefore also be rejected.
35 Lastly, so far as concerns the applicant’s reference to the fact that the mark IP ZONE has been registered in the United States to designate services linked to the provision of access to an intellectual-property database, suffice it to recall that the Community trade mark regime is an autonomous system with its own set of objectives peculiar to it; it is self-sufficient and applies independently of any national system (Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47, and judgment of 21 January 2009 in Case T‑399/06 giropay v OHIM (GIROPAY), not published in the ECR, paragraph 46). Consequently, the capacity of a sign to be registered or protected as a Community mark must be assessed by reference solely to the relevant European Union rules. Therefore, neither OHIM nor, as the case may be, the European Union Courts are bound by a decision adopted by a Member State, or indeed by a decision adopted by a third country (the United States, in the present case), finding that a sign is capable of registration as a national trade mark.
36 It follows from all of the foregoing that the first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, must be rejected.
37 So far as concerns the second plea in law, it should be borne in mind that, according to consistent case-law, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies for the sign at issue not to be capable of registration as a Community trade mark (see Joined Cases T‑367/02 to T‑369/02 Wieland‑Werke v OHIM (SnTEM, SnPUR, SnMIX) [2005] ECR II‑47, paragraph 45 and the case‑law cited). Consequently, it is not necessary to rule on the second plea in law, which alleges infringement of Article 7(1)(b) of Regulation No 207/2009.
38 Accordingly, the action must be dismissed in its entirety.
Costs
39 Under Article 87(2) 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 OHIM.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the actions;
2. Orders American Express Marketing & Development Corp. to pay the costs.
Delivered in open court in Luxembourg on 12 March 2014.
[Signatures]