JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 December 2023 (*)
(EU trade mark – Application for EU figurative mark bet365 – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EU) 2017/1001)
In Case T‑764/22,
bet365 Group Ltd, established in Stoke-on-Trent (United Kingdom), represented by J. van Manen and E. van Gelderen, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, U. Öberg and E. Tichy-Fisslberger, Judges,
Registrar: R. Ukelyte, Administrator,
having regard to the written part of the procedure,
further to the hearing on 15 September 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, bet365 Group Ltd, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 September 2022 (Case R 622/2022-4) (‘the contested decision’).
Background to the dispute
2 On 27 May 2022, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covered goods and services in, inter alia, Classes 9, 16, 28, 35, 36, 38, 41 and 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, corresponding, for each of those classes, to the following description:
– Class 9: ‘Computer software; computer software for betting, gaming and gambling services and database management; electronic publications; computer games; electronic interactive computer games; computer software and computer programs for distribution to, and for use by, users of betting and gaming services; computer games programmes downloaded via the internet [software]; computer games software; computer programs for playing games; computer software downloaded from the internet; compact discs and DVDs; gaming apparatus adapted for use with television receivers; computer software for use in downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organising data including audio and video data; downloadable audio, visual, audio-visual recordings provided via the internet; downloadable electronic publications provided on-line from databases or the internet; downloadable ring tones, graphics, screen savers; virtual reality software; virtual reality hardware; virtual reality glasses; virtual reality headsets; betting terminals’;
– Class 16: ‘Printed matter and printed publications; magazines, manuals, newsletters, instructional and teaching material; calendars; tickets; printed cards’;
– Class 28: ‘Games and playthings; gaming apparatus (other than adapted for use with television receivers); games involving gambling; tokens for games; chips and dice [gaming equipment]; lottery tickets; scratch cards for playing lottery games; coin-operated fruit machines; gaming apparatus adapted for use with television receivers’;
– Class 35: ‘Advertising; business management; business administration; office functions; on-line data processing services; economic forecasting; opinion polling; marketing research; modelling for advertising or sales promotion; sponsorship search’;
– Class 36: ‘Financial services; financial services relating to betting, gaming, gambling, lotteries or book making; provision of financial information relating to betting, gaming, gambling, lotteries or book making services; information, advice and assistance relating to the aforementioned services’;
– Class 38: ‘Providing access to multiple user network systems allowing access to gaming and betting information and services over the internet, other global networks or via telephony (including mobile telephones); telecommunications services; transmission of radio or television programmes; data streaming services; streaming of live television and radio; online video service, offering live streaming of cultural, entertainment and sports events; providing internet chat room services; provision of on-line forums; transmission and communication services; transmission of sound and/or pictures; computer aided transmission of messages and images; electronic mail services; telecommunication services relating to the internet or via telephony including mobile telephones; telecommunication of information (including web pages); provision of telecommunications links to computer databases and websites on the internet or via telephony including mobile telephones; telecommunications information; factual information services relating to telecommunications; information and advisory services relating to the aforesaid services’;
– Class 41: ‘Provision of betting, gambling and gaming services through physical and electronic sites and telephonic centres; betting, lottery or book making services; credit card betting, gaming, gambling, lottery or book making services; organising and conducting lotteries; electronic betting, gaming, gambling and lottery services provided by means of the internet, or via a global computer network, or on-line from a computer network database, or via telephony including mobile telephones, or via a television channel; interactive poker, bingo and skills games and gaming including single and multi player gaming formats; presentation and production of poker and bingo competitions, tournaments, games and gaming; entertainment, sporting and cultural activities; organisation and conducting competitions; remote gaming services provided through telecommunication links; gambling information provided on-line from a computer database or via the internet; gaming services for entertainment purposes; electronic games services provided by means of the internet; organisation of games; game services provided on-line; services for the operation of computerised bingo and skills games; information relating to gaming provided on-line from a computer database or the internet; information and advisory services relating to the aforesaid services; factual information services relating to sport; entertainment; sporting and cultural activities; virtual reality amusement arcade services’;
– Class 42: ‘Computer advisory, consultancy and design services, leasing, rental and hire of computer software, computer programming’.
4 By decision of 16 February 2022, the examiner rejected the application for registration of that mark on the basis of Article 7(1)(b) and (c), read in conjunction with Article 7(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 On 13 April 2022, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6 By the contested decision, the Board of Appeal upheld the examiner’s decision and dismissed the appeal on the ground that the mark applied for conveyed obvious and direct information regarding characteristics of the goods and services at issue and thus established a sufficiently close link with the goods and services at issue, at least for the English-speaking public in the European Union. Consequently, it took the view that the trade mark applied for was descriptive within the meaning of Article 7(1)(c), read in conjunction with Article 7(2), of Regulation 2017/1001. Furthermore, the Board of Appeal took the view that, since the mark applied for was descriptive, it was also devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. In addition, the Board of Appeal remitted the case to the Examination Division in order for it to take a decision on the applicant’s subsidiary claim pursuant to Article 7(3) of Regulation 2017/1001.
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 action;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
9 The applicant relies on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001, and, second, infringement of Article 7(1)(b) of that regulation.
The first plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
10 In support of the first plea, the applicant relies on four complaints, relating, first, to the examination of the mark applied for as a whole, second, to the meaning of the expression ‘bet365’, third, to the importance of the figurative elements, and, fourth, to the descriptive relationship with the goods and services concerned.
11 Article 7(1)(c) of Regulation 2017/1001 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. Under 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.
12 Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
13 In order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
14 A sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
15 It is in the light of those considerations that the Court must examine the arguments put forward by the applicant regarding the Board of Appeal’s assessment set out in the contested decision.
The relevant public
16 In paragraphs 15 to 18 of the contested decision, the Board of Appeal took the view, having regard to the nature of the goods and services in the classes referred to in paragraph 3 above, that the relevant public consisted both of the public at large and of a professional public, whose level of attention varied from average to above average. According to the Board of Appeal, given that the sign applied for consisted of English words, account had to be taken of the English-speaking public in the European Union. Furthermore, it noted that Article 7(2) of Regulation 2017/1001 provides that the absolute grounds for refusal set out in Article 7(1) of that regulation apply notwithstanding that those grounds of non-registrability obtain in only part of the European Union and that an obstacle to registration pertaining to the English-speaking public of the European Union is therefore sufficient in order to reject a trade mark application.
17 The applicant does not dispute those assessments of the Board of Appeal, which are, moreover, correct.
The first complaint, relating to the examination of the mark applied for as a whole
18 The applicant maintains that the Board of Appeal failed to examine the mark applied for as a whole, in other words by considering its word element ‘bet365’ together with its figurative elements. The Board of Appeal erred in taking the view that it was a word mark with minor decorative details and applied the wrong legal test by examining only whether the figurative elements of the mark applied for made it possible to diverge from the simple perception of its word element. The case-law relied on in paragraph 49 of the contested decision, resulting from the judgment of 8 November 2018, Perfect Bar v EUIPO (PERFECT Bar) (T‑759/17, not published, EU:T:2018:760, paragraph 30 and the case-law cited), has not been confirmed by the Court of Justice and, in any event, is not applicable in the present case.
19 EUIPO disputes the applicant’s arguments.
20 According to the case-law, as regards a compound trade mark, the assessment of its descriptive character cannot be limited to an evaluation of each of its words or components, considered in isolation, but must, on any view, be based on the overall perception of that mark by the relevant public and not on the presumption that elements individually devoid of descriptive character cannot, on being combined, have a descriptive character. The mere fact that each of those elements, considered separately, is devoid of any descriptive character does not mean that their combination cannot present such character (see, to that effect, judgment of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraphs 41 and 42 and the case-law cited).
21 In the present case, it should be noted that the mark applied for is a figurative mark consisting of the word element ‘bet365’, placed on a rectangular green background, with the word ‘bet’ in white lower-case letters and the number 365 in yellow (see paragraph 2 above).
22 It is apparent from the contested decision that, in order to assess the descriptive character of the mark applied for, the Board of Appeal examined each of the various elements of that mark in turn, namely the elements ‘bet’ and ‘365’ (paragraphs 22 to 28 of the contested decision), the combination of those elements (paragraphs 29 to 36 and 40 to 47 of the contested decision) and the colours, typeface and rectangular background (paragraph 50 of the contested decision).
23 In addition, the Board of Appeal examined those elements together. First, it took the view that the fact that the elements ‘bet’ and ‘365’ were depicted in a different colour helped the consumer to break down the sign’s word element into two easily recognisable components (see paragraph 25 of the contested decision). Second, it took the view that the whole of the expression ‘bet365’ would be perceived by the relevant public as conveying the idea that ‘the goods and services enable, or relate to, betting every day of the year’ (paragraph 40 of the contested decision). Third, it took the view that the figurative elements, such as the colours, the typeface and the rectangular background, corresponded to ‘standard graphic elements’ (paragraph 50 of the contested decision) which were not ‘sufficient to endow it, as a whole, with any distinctive character that would distract the relevant public’s perception from the non-distinctive meaning of the word element “bet365”, or to create a lasting impression of the trade mark’ (paragraph 58 of the contested decision).
24 It follows that, as EUIPO contends, the Board of Appeal examined the mark applied for as a whole in order to assess its descriptive character.
25 That conclusion is not called into question by the fact that, in paragraph 49 of the contested decision, the Board of Appeal relied on the case-law arising from the judgment of 8 November 2018, PERFECT Bar (T‑759/17, not published, EU:T:2018:760, paragraph 30 and the case-law cited). Irrespective of whether that case-law is applicable in the present case, the Board of Appeal carried out, in the contested decision, an examination of the descriptive character of the mark applied for on the basis of the overall perception of that mark by the relevant public, in accordance with the case-law cited in paragraph 20 above, which is, moreover, referred to in paragraph 39 of the contested decision.
26 The applicant’s first complaint must therefore be rejected as unfounded.
The second complaint, relating to the meaning of the expression ‘bet365’
27 The applicant submits that the expression ‘bet365’ is a made-up word, not used in ordinary language, and does not necessarily mean ‘betting every day of the year’, such a meaning requiring a measure of interpretation on the part of the average consumer. Even though there are normally 365 days in a year, that figure lends itself to other interpretations, being capable of being understood, inter alia, as the area code for certain regions in Germany and Romania. Moreover, the fact that the element ‘bet365’ was accepted as a trade mark in several countries, including English-speaking countries, proves its distinctive character.
28 EUIPO disputes the applicant’s arguments.
29 A mark consisting 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 those characteristics, unless there is a perceptible difference between 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 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 judgment of 25 February 2010, Lancôme v OHIM, C‑408/08 P, EU:C:2010:92, paragraph 62 and the case-law cited). In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (see judgment of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 27 and the case-law cited).
30 In the present case, the Board of Appeal took the view that the mark applied for consisted of the English word ‘bet’ and the number 365 (paragraph 22 of the contested decision). It took the view, without being contradicted on that point by the applicant, that, according to the online Macmillan Dictionary, the word ‘bet’ meant ‘to risk an amount of money by saying what you think will happen, especially in a race or game[;] you lose the money if you are wrong and win more if you are right’ (paragraph 26 of the contested decision). Furthermore, it took the view that the number 365 would be understood as the number of days in a calendar year (paragraph 27 of the contested decision).
31 In addition, the Board of Appeal took the view that the expression ‘bet365’ would immediately, and without intellectual effort, be perceived by the relevant public as the mere combination of the verb and the numeral indicating the number of days in the calendar year, which, together, conveyed the idea that the goods and services covered by the mark applied for enabled, or related to, betting every day of the year (paragraph 40 of the contested decision).
32 Those findings of the Board of Appeal, which are not called into question by the applicant’s arguments, are free from error and must be upheld.
33 As regards the applicant’s argument that the number 365 could be interpreted as meaning the area code for certain regions in Germany and Romania, it is sufficient to bear in mind that, in order to be refused registration on the ground of its descriptive character, it is necessary – and sufficient – that at least one of the possible meanings of a word sign designates a characteristic of the goods and services concerned (see judgment of 15 March 2018, SSP Europe v EUIPO (SECURE DATA SPACE), T‑205/17, not published, EU:T:2018:150, paragraph 24 and the case-law cited).
34 One of the possible meanings of the number 365, or even its most likely meaning, is the number of days in a year. In that regard, the Court has already noted that the relationship between that number and the days in the year is a well-known fact, generally known by the public concerned (see, to that effect, judgment of 23 October 2015, Hansen v OHIM (WIN365), T‑264/14, not published, EU:T:2015:803, paragraph 19).
35 Furthermore, the applicant is incorrect to maintain that the expression ‘bet365’ is a made-up word and that the meaning of the expression ‘bet365’ requires a measure of interpretation on the part of the average consumer. First, the word ‘bet’, as noted in paragraph 30 above, has a very specific meaning and the number 365, as noted in paragraph 34 above, is generally associated with the days in a year. Second, as mentioned in paragraphs 40 and 41 of the contested decision, the expression ‘bet365’ contains nothing uncommon, does not introduce any ambiguity, does not have any particular semantic depth, nor can it be considered a play on words. By contrast, that expression may easily be perceived as the simple juxtaposition of the word ‘bet’ and the numeral indicating the number of days in a calendar year, especially since each of those two elements is represented in a different colour, which, as the Board of Appeal found in paragraph 25 of the contested decision, will help the relevant public to break down the expression ‘bet365’ into two easily identifiable components.
36 The Board of Appeal therefore did not err in taking the view, in paragraph 40 of the contested decision, that the expression ‘bet365’ would be perceived by the relevant public as conveying the idea that the goods and services enable, or relate to, betting every day of the year.
37 Furthermore, as regards the argument based on the decision-making practice of the national offices in certain countries concerning the registration of trade marks with an identical sign, it is sufficient to note that the applicant merely claims that the word and figurative elements at issue were registered in several countries, without, however, identifying either the marks or the countries to which it refers.
38 In any event, it should be borne in mind that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and applies independently of any national system, and the legality of decisions of the Boards of Appeal of EUIPO must be evaluated solely on the basis of Regulation 2017/1001, as it is interpreted by the EU Courts (see judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58 and the case-law cited). Accordingly, EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47).
39 The applicant’s second complaint must therefore be rejected as unfounded.
The third complaint, relating to the importance of the figurative elements
40 The applicant submits that the overall impression of the mark applied for is dominated by the three-colour motif (green, white and yellow), which is not descriptive of the goods and services covered, but determines the distinctive character of the sign. Moreover, signs consisting of three colours are distinctive and are routinely registered as an EU trade mark. The Board of Appeal was therefore incorrect to consider the mark applied for to be a word mark with a ‘certain degree of stylisation’ and to have relied, in support of that idea, on the judgment of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL) (T‑290/15, not published, EU:T:2016:651), which cannot be applied to the present case.
41 The applicant maintains that the mere fact that the word element of a composite mark is not particularly distinctive cannot preclude its registration, as demonstrated by a series of registered figurative marks. Similarly, the EUIPO Guidelines mention the case of a figurative mark similar to the mark applied for, which was registered with the word element ‘spa365’. In addition, the Board of Appeal used ambiguous criteria, not provided for in Regulation 2017/1001, in taking the view that the figurative elements of the mark applied for were ‘decorative’ and ‘non-eye catching’. In addition, the green rectangle and the white and yellow elements that dominate the mark applied for are such as to distinguish it since they have been used for that purpose for more than 20 years.
42 EUIPO disputes the applicant’s arguments.
43 In the present case, the mark applied for comprises the word element ‘bet365’, placed against a rectangular green background. The word ‘bet’ is represented in white lower-case letters and the number 365 in yellow typeface.
44 The Board of Appeal found, in paragraph 50 of the contested decision, that those figurative elements, namely the three contrasting colours, the typeface and the rectangular background, corresponded to standard graphic elements that will be understood by the relevant public as decorative.
45 As regards the typeface used, it must be found, as the Board of Appeal did, that it corresponds to a standard graphic element and that the rectangular background is a very simple geometric shape, which has no uncommon element. The applicant does not, moreover, put forward any specific argument capable of calling those findings into question.
46 As regards the three colours present in the mark applied for, it must be borne in mind that, according to settled case-law, whilst colours are capable of conveying certain associations of ideas, and of arousing feelings, they possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 40).
47 The colours green, yellow and white of the mark applied for do not have any particular characteristics and are not, in themselves, sufficiently exceptional that they would be perceived by the relevant public as particularly striking and memorable in relation to the goods and services concerned. They will therefore only be perceived by the relevant public as being aesthetic elements. Moreover, the applicant has not shown why the combination of those three colours would render the mark distinctive.
48 It follows that the Board of Appeal was correct to find, in paragraph 50 of the contested decision, that the figurative elements of the mark applied for will be perceived only as decorative elements. Consequently, the applicant is incorrect to allege that the case-law arising from the judgment of 9 November 2016, SMARTER TRAVEL (T‑290/15, not published, EU:T:2016:651), was misapplied to the present case.
49 That finding is not called into question by the applicant’s argument that the Board of Appeal used ambiguous criteria, not provided for in Regulation 2017/1001, in taking the view that the figurative elements of the mark applied for were ‘decorative’ and ‘non eye-catching’.
50 The Board of Appeal merely found, in paragraph 50 of the contested decision, that, since the figurative elements corresponded to standard graphic elements that did not possess any eye-catching, that is to say attractive, feature and since they did not make it possible to divert the relevant public’s attention from the descriptive message conveyed by its word element, they would be perceived by the relevant public as decorative, that is to say, as elements which have a decorative purpose and which do not convey any specific message, and are, consequently, of minor importance in the sign as a whole. Thus, the Board neither applied new criteria nor used ambiguous terms.
51 As regards the applicant’s arguments based on EUIPO’s previous decision-making practice, it should be borne in mind that the decisions concerning registration of a sign as an EU trade mark which EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous administrative practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
52 EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, including the principles of equal treatment and of sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73). In the light of those principles, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. The way in which those principles are applied must be consistent with respect for the principle of legality (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 and 75).
53 In any event, the applicant merely relies on a number of earlier decisions concerning marks with a three-colour motif and figurative marks the word element of which is allegedly descriptive, without, however, putting forward any specific argument to demonstrate actual similarity with the mark applied for, with the result that it is not possible for the Court to examine the contested decision in the light of the principles of equal treatment and sound administration, reconciled with the principle of legality.
54 As regards the mark referred to in the EUIPO Guidelines, the word element of which is ‘spa365’, it should be found, as contended by EUIPO, that the figurative element in that mark, consisting of a kind of leaf, is in no way similar to the figurative elements at issue in the present case, with the result that such a mark cannot be relied on in support of the applicant’s arguments.
55 As regards the applicant’s argument based on the distinctive character of the figurative elements on account of their use for more than 20 years, it is sufficient to note that the application for registration of the mark applied for is not based on special use, under Article 7(3) of Regulation 2017/1001, or on an alleged reputation of the mark.
56 The applicant’s third complaint must therefore be rejected as unfounded.
The fourth complaint, relating to the descriptive relationship with the goods and services concerned
57 The applicant submits that, should the sign nonetheless be considered descriptive, it cannot be descriptive of all the goods and services covered by the mark applied for, in particular the following:
– Class 9: ‘Computer software; computer software for betting, gaming and gambling services and database management; electronic publications; computer games; electronic interactive computer games; computer software and computer programs for distribution to, and for use by, users of betting and gaming services; computer games programmes downloaded via the internet [software]; computer games software; computer programs for playing games; computer software downloaded from the internet; compact discs and DVDs; gaming apparatus adapted for use with television receivers; computer software for use in downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organising data including audio and video data; downloadable audio, visual, audio-visual recordings provided via the internet; downloadable electronic publications provided on-line from databases or the internet; downloadable ring tones, graphics, screen savers; virtual reality software; virtual reality hardware; virtual reality glasses; virtual reality headsets’;
– Class 16: ‘Printed matter and printed publications; magazines, manuals, newsletters, instructional and teaching material; calendars; tickets; printed cards’;
– Class 35: ‘Advertising; business management; business administration; office functions; on-line data processing services; economic forecasting; opinion polling; marketing research; modelling for advertising or sales promotion; sponsorship search’;
– Class 36: ‘Financial services; information, advice and assistance relating to the aforementioned services’;
– Class 38: ‘Telecommunications services; transmission of radio or television programmes; data streaming services; streaming of live television and radio; online video service, offering live streaming of cultural, entertainment and sports events; providing internet chat room’;
– Class 41: ‘Game services provided on-line; information and advisory services relating to the aforesaid services; factual information services relating to sport; entertainment; sporting and cultural activities’;
– Class 42: ‘Computer advisory, consultancy and design services, leasing, rental and hire of computer software, computer programming’.
58 EUIPO disputes the applicant’s arguments, contending that there is a sufficiently direct and specific relationship between the mark applied for and the goods and services in the classes in question.
59 As is apparent from the case-law referred to in paragraph 13 above, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics.
60 Where registration of a mark is sought in respect of various goods or services, the Board of Appeal must determine specifically that none of the grounds for refusal of registration listed in Article 7(1) of Regulation 2017/1001 applies to the mark in question, in relation to each of those goods or services claimed, and may reach conclusions which differ depending upon the goods or services in question. Therefore, when refusing registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated (see, to that effect, judgment of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 27; see also, by analogy, judgment of 15 February 2007, BVBA Management, Training en Consultancy, C‑239/05, EU:C:2007:99, paragraphs 32, 34 and 38).
61 As regards the competent authority’s obligation to state reasons for refusing to register a trade mark in respect of each of the goods or services for which that registration is sought, the competent authority may use only general reasoning for all of the goods and services concerned where the same ground for refusal is given for a category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30 and the case-law cited). However, such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 31 and the case-law cited).
62 In the present case, as is apparent from paragraph 36 above, the mark applied for would be perceived by the relevant public as conveying the idea that the goods and services enabled, or related to, betting every day of the year.
63 Therefore, the Board of Appeal did not err in taking the view that the mark applied for could be understood by the relevant public immediately, and without further thought, as designating the goods and services in Classes 9, 28, 36, 38 and 41. There is either a sufficiently direct and specific relationship between the goods and services covered by those classes and the mark applied for to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question, or those goods and services are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services, within the meaning of the case-law cited in paragraph 61 above, with the result that the Board of Appeal could use only general reasoning.
64 Similarly, there is a sufficiently direct and specific relationship between betting every day, the meaning of the sign bet365, and the service of ‘sponsorship search’ covered by Class 35.
65 Consequently, it must be found that the mark applied for must be regarded as descriptive of the goods and services in Classes 9, 28, 36, 38 and 41 and of the service of ‘sponsorship search’ in Class 35.
66 By contrast, the Court finds that there is not a sufficiently direct and specific relationship between, on the one hand, the goods and services making it possible to bet every day of the year, in respect of which the mark applied for is descriptive, and, on the other hand, ‘printed matter and printed publications; magazines, manuals, newsletters, instructional and teaching material; calendars; tickets; printed cards’ in Class 16; ‘advertising; business management; business administration; office functions; on-line data processing services; economic forecasting; opinion polling; marketing research; modelling for advertising or sales promotion’ in Class 35; and ‘computer advisory, consultancy and design services, leasing, rental and hire of computer software, computer programming’ in Class 42.
67 In that regard, it must be borne in mind that, by using, in Article 7(1)(c) of Regulation 2017/1001, 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 corresponding to 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 (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 49).
68 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 2017/1001 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. Thus, a sign can be refused registration on the basis of that provision 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, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50 and the case-law cited).
69 Moreover, although it is immaterial whether such a characteristic is commercially essential or secondary (judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 20), a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, must nevertheless be ‘objective’ and ‘inherent to the nature of that product’ or service and ‘intrinsic and permanent’ with regard to that product or service (see, to that effect, judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 44).
70 In the present case, it must be stated that there is nothing in the file to establish that there is a sufficiently direct and specific link between the gaming and betting sector, on the one hand, and the goods and services in Classes 16, 35 and 42 referred to in paragraph 66 above, on the other. Those goods and services can be provided in a large number of sectors, of which the gaming and betting sector is only one example. Thus, gambling and betting do not constitute an ‘intrinsic’ characteristic which is ‘inherent to the nature’ of the goods and services concerned.
71 It follows that the first plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001, must be upheld and the contested decision annulled as regards the goods and services in Classes 16, 35 and 42 referred to in paragraph 66 above.
72 By contrast, in the light of the considerations set out in paragraphs 62 to 65 above, the first plea must be rejected as to the remainder.
The second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
73 Since the first plea has been upheld and the contested decision annulled as regards the goods and services in Classes 16, 35 and 42 referred to in paragraph 66 above, it is not necessary to examine the second plea as regards those goods and services.
74 As regards the other goods and services, it must be borne in mind that it is clear from Article 7(1) of Regulation 2017/1001 that it is sufficient for one of the absolute grounds for refusal listed therein to apply for the sign at issue to be ineligible for registration as an EU trade mark. It is therefore also not necessary to examine the merits of the second plea relied on by the applicant, alleging infringement of Article 7(1)(b) of that regulation, as regards those goods and services.
75 Therefore, the contested decision must be annulled in respect of the goods and services in Classes 16, 35 and 42 referred to in paragraph 66 above and the action dismissed as to the remainder.
Costs
76 Under Article 134(2) of the Rules of Procedure of the General Court, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared. Since EUIPO and the applicant have each been partially unsuccessful, they should be ordered to bear their own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 September 2022 (Case R 622/2022-4) in so far as it concerns ‘printed matter and printed publications; magazines, manuals, newsletters, instructional and teaching material; calendars; tickets; printed cards’ in Class 16; ‘advertising; business management; business administration; office functions; on-line data processing services; economic forecasting; opinion polling; marketing research; modelling for advertising or sales promotion’ in Class 35; and ‘computer advisory, consultancy and design services, leasing, rental and hire of computer software, computer programming’ in Class 42;
2. Dismisses the action as to the remainder;
3. Orders each party to bear its own costs.
Costeira | Öberg | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 6 December 2023.
V. Di Bucci | | M. van der Woude |