JUDGMENT OF THE GENERAL COURT (Third Chamber)
28 June 2016 (*)
(European Union trade mark — Application for European Union word mark SOCIAL.COM — Absolute grounds for refusal — Descriptive character — Lack of distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)
In Case T‑134/15,
salesforce.com, Inc., established in San Francisco, California (United States), represented by A. Nordemann and M. Maier, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Fischer, acting as Agent,
defendant,
ACTION against the decision of the Fourth Board of Appeal of EUIPO of 20 January 2015 (Case R 1752/2014-4), concerning an application for registration of the word mark SOCIAL.COM as a European Union trade mark,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas, President, E. Bieliūnas (Rapporteur) and I.S. Forrester, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Registry of the General Court on 23 March 2015,
having regard to the response lodged at the Court Registry on 29 June 2015,
further to the hearing on 15 March 2016,
gives the following
Judgment
Background to the dispute
1 On 23 October 2013, the applicant, salesforce.com, Inc., lodged 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).
2 The mark for which registration was sought is the word sign SOCIAL.COM.
3 The goods and services in respect of which registration was sought are in Classes 9, 35, 41, 42 and 45 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, for each of those classes, inter alia, to the following description:
– Class 9: ‘Computer programs (recorded, downloadable); games programs for computers; computer software (recorded or downloadable), in particular for the scanning, displaying, processing and output of multimedia data on computer networks, including the internet, and on mobile terminals; electronic publications (downloadable)’;
– Class 35: ‘Advertising, in particular television advertising, online advertising on computer networks, radio advertising, advertising by mail order, bill-posting, print and internet advertising; advertising via mobile radio networks; advertising on mobile phone television; advertising on the internet for others; advertising agency services; planning and design of advertising activities; presentation of companies on the internet and other media; distribution of samples; sales promotion (for others), public relations; market research, including in particular for others, on digital networks (webvertising); telemarketing services; market research and analysis services; PR agency services, namely public relations; rental of advertising space on the internet; arranging advertising events; multimedia agency services; merchandising agency services, namely advertising, sales research and market studies and analysis; auctioneering on the internet; arranging and conducting of exhibitions and trade fairs for industrial, commercial and advertising purposes; organisation consultancy, in particular development of business concepts; assistance to commercial or industrial firms in the conduct of their business; arranging of trading and economical contacts, also over the internet; arranging of contracts, for others, for the providing of services; arranging of contracts, for others, for the buying and selling of goods; arranging of commercial transactions, for others, including within the framework of e-commerce; arranging of contracts, for others, for the providing of services with regard to lotteries and competitions; administrative order processing; consultancy with regard to products and claims management (office functions) via service hotlines for consumers, in particular for internet users (call centre services); conducting research in computer files, in databases, on the internet and on computer networks, for others, with regard to business matters and into offers for goods and services; maintenance and compilation of data and information in computer databases; systematic ordering of data in computer databases; compilation of statistics; office functions for the administration and indexing of data and information; office functions for the creating of indexes with regard to information, websites and other information sources; compilation of data, in particular image, audio and/or video data in computer databases’;
– Class 41: ‘Publication of newspapers, periodicals and books, and of printed instructional and information material (other than for advertising purposes), in electronic form and/or on the internet; rental of printed publications; online publication of printed matter (other than for advertising purposes); editing of (mobile) websites; digital picture service; production of television, mobile phone television and radio programs; conducting entertainment events, cultural events, live cultural and sporting events, training events in connection with applications for posting images, links, videos, text, for retrieving, sorting, filtering and moderating user generated content and online communications, for managing content on social media websites and social networks; online games services (on computer networks); conducting games on the internet, including on the mobile internet; entertainment in the form of information on entertainment services via computer networks’;
– Class 42: ‘Scientific and technological services and research and design relating thereto; industry analysis and research services; design and development of computer hardware and software; computer software consultancy; computer system design and analysis including for posting images, links, videos, text and other brand content, for retrieving, sorting, filtering and moderating user generated content and online communications, for managing brand content on social media websites and social networks, and for analysing, retrieving and managing the performance of brand engagement; creating and maintaining web sites for others; data conversion of computer programs and data [not physical conversion]; maintenance of computer software; monitoring of computer systems by remote access; providing search engines for the internet; rental of computer software; provision of downloadable software and/or providing temporary use of non‑downloadable software for generating embeddable code for websites, for the purpose of creating, customising, deploying, scheduling, tracking, analysing and managing online content on users' websites, on social media websites and other online forums, and for analysing, monitoring and managing the performance of brand engagement of others; provision of downloadable software and/or providing temporary use of non‑downloadable software for creating and deploying customised interactive content on social profiles’;
– Class 45: ‘Licensing of computer systems and software; brand engagement and online communications investigations; monitoring online content for others’.
4 By decision of 21 May 2014, the examiner rejected the application for registration in respect of all of the goods and services referred to in paragraph 3 above on the basis of Article 7(1)(b) and (c) and also Article 7(2) of Regulation No 207/2009, on the ground that the sign at issue was descriptive and devoid of any distinctive character.
5 On 8 July 2014, the applicant filed an appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision.
6 By decision of 20 January 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. The Board of Appeal found that the connection existing between the sign in respect of which registration had been applied for, on the one hand, and the goods and services concerned, on the other, was sufficiently close for it to be held that the sign at issue came within the scope of Article 7(1)(c) of Regulation No 207/2009. In particular, it held that, although the word ‘social’ could have various meanings in English, depending on the context, it was undisputable that very clear general dictionary definitions of that word exist, and that the normal and immediate meaning which the relevant public would attribute to it is connected to the concept of ‘society’. Next, the Board of Appeal found that the element ‘.com’ was a generic term and would be perceived as referring merely to an internet address or web domain. Lastly, it took the view that the sign SOCIAL.COM, as a whole, would be understood as a meaningful expression, namely ‘internet-based social interaction’, and that, having regard to the goods and services in question, it would be seen as a direct and specific reference to the modern, well-known terms ‘social media’ and ‘social networks’, which refer to computer-mediated tools which allow information, ideas, photographs and videos to be created, shared or exchanged in virtual communities and networks. The Board of Appeal also held that a descriptive word mark was necessarily devoid of any distinctive character with regard to those same goods or services within the meaning of Article 7(1)(b) of Regulation No 207/2009. Finally, the Board of Appeal held that the applicant had not provided any evidence that the sign applied for had acquired a distinctive character by use, in accordance with Article 7(3) of Regulation No 207/2009.
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.
9 At the hearing, the applicant indicated that its arguments, according to which the mark applied for had acquired a distinctive character before the date of the application for registration, was raised for information only and that the infringement of Article 7(3) of that regulation was not the subject matter of the present dispute.
Law
10 In support of its action the applicant raises two pleas in law, respectively alleging infringement of Article 7(1)(c) of Regulation No 207/2009 and Article 7(1)(b) thereof.
11 Regarding the first plea in law, it should be noted that, 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.
12 According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, which requires that the signs or indications that are descriptive of the characteristics of the goods or services in respect of which registration is sought may be freely used by all (see judgment of 12 June 2007 in MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, not published, EU:T:2007:172, paragraph 27 and the case-law cited).
13 In addition, signs or indications which serve, in trade, to designate the characteristics of the product or service for which registration is sought are, under 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, thus enabling the consumer who acquired the product 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, at the time of making a subsequent purchase (see judgment of 12 June 2007 in LOKTHREAD, T‑339/05, not published, EU:T:2007:172, paragraph 28 and the case-law cited).
14 Consequently, for a sign to fall within the scope of the prohibition in that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (see judgment of 12 June 2007 in LOKTHREAD, T‑339/05, not published, EU:T:2007:172, paragraph 29 and the case-law cited). In that regard, it must be stated that the fact that the 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. Thus, a sign can 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 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50 and the case-law cited).
15 It must be added that a word sign must be refused registration under Article 7(1)(c) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgment of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
16 Finally, it should be noted that the descriptiveness of a sign may be assessed only, first, in relation to the relevant public’s understanding of that sign and, second, in relation to the goods or services in question (see judgment of 12 June 2007 in LOKTHREAD, T‑339/05, not published, EU:T:2007:172, paragraph 32 and the case-law cited).
17 In the present case, as regards the relevant public, the Board of Appeal held that the goods and services covered by the mark applied for were specialised goods and services, intended both for average consumers and a professional public having a level of attention of average to high respectively. Furthermore, it stated that, as the mark applied for was composed of English words, the relevant public was the English-speaking public in the European Union. That assessment of the Board of Appeal, which is not challenged by the applicant, must be confirmed.
18 Therefore, it must be determined whether, from the point of view of the relevant public, there is a sufficiently direct and specific relationship between the sign SOCIAL.COM and the goods and services for which the registration was sought, within the meaning of the case-law cited in paragraph 14 above.
19 In that connection, it must be observed that the mark applied for is composed of the word ‘social’ and the element ‘.com’.
20 As regards the first component of that sign, the Board of Appeal’s assessment according to which, although the English word ‘social’ may have various specific context-related meanings, clear general dictionary definitions exist, must be endorsed. Accordingly, the relevant public will perceive the word ‘social’ as having its normal and immediate meaning, which is related to the concept of ‘society’.
21 In those circumstances, the applicant’s argument, according to which the meaning of the word ‘social’ depends on the subtleties of the situation and the context in which it is used, so that there are other meanings than that adopted by the Board of Appeal, must be dismissed as being irrelevant and, in any event, as devoid of any foundation in law, as the applicant does not indicate which of the alternative meanings should have been adopted by the Board of Appeal or the reasons for which one of those meaning would have been relevant.
22 As far as concerns the applicant’s argument that the Board of Appeal failed to provide sufficient reasons for its decision to adopt as the main meaning of the word ‘social’ that related to the concept of ‘society’, it is sufficient to state that, in paragraph 10 of the contested decision, the Board of Appeal explained why the connection between the word ‘social’ and the concept of ‘society’ was preferred. The contested decision states that, although that word has various specific context-related meanings, very clear general dictionary definitions exist. In that connection, the contested decision contains four definitions of the word ‘social’. Furthermore, the Board of Appeal indicated that the source of those definitions was the Oxford English Dictionary. Finally, the Board of Appeal found that those four definitions supported the definitions presented by the examiner and extracts taken from the Oxford Learner’s Dictionaries.
23 As regards the second component of the sign at issue, namely the element ‘.com’, it must be stated that it will be immediately recognised by the relevant public as referring to a website. It is a technical and generic element whose use is necessary in the normal structure of the address of an internet site. Furthermore, the element ‘.com’ may also serve to indicate that the goods and services covered by the mark may be obtained or consulted online or are connected to the internet (see, to that effect, judgment of 21 November 2012 in Getty Images v OHIM (PHOTOS.COM), T‑338/11, not published, EU:T:2012:614, paragraph 22).
24 As far as concerns the sign SOCIAL.COM, taken as a whole, it must be observed, as the Board of Appeal found, that it will be understood as an overall internet-related concept in relation to society, that is to say an ‘internet-based social interaction’. Thus, having regard to the goods and services concerned, it will be perceived as a reference to the contemporary expressions ‘social media’ and ‘social networks’, which refer to computer-mediated tools which allow the creation, sharing or exchange of information, ideas, photographs and videos in virtual networks and communities.
25 In that context, first, the applicant’s argument that the expressions ‘social media’ and ‘social networks’ are vague terms for which the Board of Appeal did not provide any definitions must be rejected. First of all, the expressions ‘social media’ and ‘social networks’ are contemporary, well-known expressions, widely used by the relevant public. Next, contrary to the applicant’s assertions, the Board of Appeal did provide a description of those expressions which refers to ‘computer-mediated tools which allow people to create, share or exchange information, ideas, photographs and videos in virtual networks and communities’. Finally, it suffices to state that the element ‘.com’ strengthens the perception of the sign at issue as referring to social interaction on the internet.
26 Second, the applicant’s argument that the Board of Appeal should have carried out a detailed examination of the goods and services for which registration of the mark was sought when it established a link between the sign SOCIAL.COM and the relevant goods and services must be rejected.
27 It must be recalled that, according to settled case-law, although the decision to refuse to register a trade mark must, in principle, state reasons in respect of each of the goods and services concerned, the competent authority may, where the same ground of refusal is given for a category or group of goods or services, use only general reasoning for all of the goods or services which are sufficiently directly and specifically connected, to the point that they comprise a category or group of goods or services of sufficient homogeneity (see judgment of 10 September 2015 in Laverana v OHIM (ORGANIC WITH PLANT FLUID FROM OUR OWN PRODUCTION), T‑608/14, not published, EU:T:2015:621, paragraph 19 and the case-law cited).
28 In the present case, it must be observed, first of all, that, in paragraph 8 of the contested decision, the Board of Appeal stated that the goods and services concerned ‘consist[ed] of or relat[ed] to computer programmes and games programmes, software related in particular to multimedia data on computer networks, such as the internet and on mobile terminals, and downloadable electronic publications in Class 9, as well as a wide range of, inter alia, consultancy, commercial transactions, office functions and online and mobile telephone advertising services in Class 35, printed and electronic publication services as well as other internet, entertainment and social media services in Class 41, a wide variety of scientific and technical services in Class 42 including in particular design and development of computer hardware and software in particular for managing brand content of social media websites and social networks, and certain computer and online services in Class 45’.
29 Next, it is clear from paragraphs 13 and 14 of the contested decision that the Board of Appeal found that all the goods and services concerned were related to social media or social networks. As EUIPO rightly held, they are technical core elements of social media platforms, or possible content subject to social media or administrative support services for the proper functioning and maintenance of social media platforms and social networks.
30 Thus, all the goods and services covered by the mark applied for and which are the subject of the present dispute are related to social media or social networks in a sufficiently direct manner and form a group of goods and services of sufficient homogeneity.
31 In that context, the applicant’s argument that certain goods and services among the goods and services covered by the mark applied for, in particular, the arranging of contacts, scientific and technological services and research and design relating thereto, design and development of computer hardware and software, licensing of computer systems and software and digital picture services could be seen as not being directly related to the concept of ‘social interaction on the internet’, if a detailed examination had been carried out by the Board of Appeal, must be rejected. It must be held that the connection of those goods and services with the concept of ‘social interaction on the internet’ is established by the fact that they concern goods and services which may be necessary to ensure the proper functioning and maintenance of social media platforms or social networks or are used for the development of goods and services offered by those social media or social networks.
32 Therefore, the Board of Appeal was not required to carry out an examination of the descriptive nature of the mark applied for with respect to each of the goods and services concerned.
33 In view of all the above, it must be held that the Board of Appeal correctly considered the word mark SOCIAL.COM as being descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009.
34 As to the arguments put forward by the applicant for illustrative purposes in the context of that plea, that the mark applied for had acquired a distinctive character through its use even before the date of application for registration, it must be recalled that the mark applied for was rightly held to be descriptive of the products it designated, as is clear from paragraphs 17 to 33 above. The applicant for registration of a descriptive mark cannot claim, outside the conditions set out in Article 7(3) of Regulation No 207/2009, that such a mark has become distinctive in consequence of its use (see, to that effect, judgment of 21 May 2015 in Mo Industries v OHIM (Splendid), T‑203/14, not published, EU:T:2015:301, paragraph 42).
35 Consequently, those arguments must be rejected as irrelevant and the first plea must be dismissed.
36 As regards the second plea, alleging an infringement of Article 7(1)(b) of Regulation No 207/2009, it must be recalled that, as is clear from Article 7(1) of Regulation No 207/2009, for a sign to be ineligible for registration as a European Union trade mark, it is sufficient that one of the absolute grounds for refusal applies (see judgment of 26 October 2000 in Community Concepts v OHIM (Investorworld), T‑360/99, EU:T:2000:247, paragraph 26 and the case-law cited).
37 It is clear from the examination of the first plea that the Board of Appeal rightly held that the sign applied for was descriptive of the goods and services concerned and that, therefore, it could not be registered as a European Union trade mark as it falls within Article 7(1)(c) of Regulation No 207/2009.
38 It is therefore unnecessary to rule on the second plea.
39 It follows from all of the foregoing that the action must be dismissed.
Costs
40 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 (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders salesforce.com, Inc., to pay the costs.
Papasavvas | Bieliūnas | Forrester |
Delivered in open court in Luxembourg on 28 June 2016.
[Signatures]