JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
7 November 2019 (*)
(EU trade mark — Application for an EU figurative mark representing a bell — Absolute ground for refusal — Obligation to state reasons — Article 94 of Regulation (EU) 2017/1001 — Lack of distinctive character — Article 7(1)(b) of Regulation 2017/1001)
In Case T‑240/19,
A9.com, Inc., established in Palo Alto, California (United States), represented by A. Klett, C. Mikyska and R. Walther, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 February 2019 (Case R 1309/2018-2), concerning an application for registration of a figurative sign representing a bell as an EU trade mark,
THE GENERAL COURT (Ninth Chamber),
composed, at the time of deliberation, of S. Gervasoni, President, L. Madise and R. da Silva Passos (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 9 April 2019,
having regard to the response lodged at the Court Registry on 18 July 2019,
having regard to the fact that no request for a hearing was submitted by the parties within 3 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 6 March 2018, the applicant, A9.com, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 following figurative sign:
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: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; downloadable software and software applications permitting users to identify and communicate with persons at their door; downloadable software and software applications permitting users to monitor their home, office, and other facilities; downloadable applications for monitoring a user’s home, office, and other facilities, for use over the Internet, mobile devices, wireless Internet networks or systems, and other computer and electronic communication networks; software and software applications permitting users to monitor the interior and exterior of homes, retail stores, or offices for security and surveillance; downloadable software and software applications for monitoring a user’s home, office and other facilities, for use over the Internet, mobile devices, wireless Internet networks or systems and other computer and electronic communication networks’.
4 On 5 April 2018, one of EUIPO’s examiners raised objections in respect of the mark applied for. The applicant responded to those objections on 4 June 2018.
5 By decision of 22 June 2018, one of EUIPO’s examiners refused registration, on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, of the mark applied for in respect of all the goods in question.
6 On 10 July 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
7 By decision of 4 February 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
8 In the first place, it found that the goods concerned were aimed at the general public, the level of attention of which was average, and at professionals, who displayed a high level of attention. It added that the relevant public was the public in the European Union.
9 In the second place, the Board of Appeal found that the mark applied for, which represented a bell with a white contour on a black background, would be seen by the relevant public as an icon signifying an alarm, a reminder or a (bell) sound. Next, it pointed out that, in connection with the goods concerned, the relevant public would perceive the mark applied for as an informative symbolic message that represented a feature of the goods. Furthermore, the Board of Appeal took the view that the overall impression created by the mark applied for did not appear to be unusual and did not include any characteristic element or eye-catching feature that was likely to confer on it a minimum degree of distinctive character which could enable the relevant public to perceive that mark as an indication of the commercial origin of the goods. It concluded that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
10 In the third place and lastly, the Board of Appeal stated that it was sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation 2017/1001 applied for the mark applied for not to be registrable as an EU trade mark. It concluded that there was no need to assess whether the ground for refusal laid down in Article 7(1)(c) of that regulation was applicable to the mark applied for.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant submits that the mark applied for is neither devoid of any distinctive character nor descriptive of the goods concerned. It also maintains that the contested decision is vitiated since the Board of Appeal did not carry out a specific examination of each of the goods covered by the mark applied for.
14 It must therefore be held that the applicant is relying on three pleas in law, alleging, in essence: (i) infringement of the obligation to state reasons referred to in the first sentence of Article 94(1) of Regulation 2017/1001; (ii) infringement of Article 7(1)(b) of that regulation; and (iii) infringement of Article 7(1)(c) of that regulation.
The first plea, alleging infringement of the obligation to state reasons referred to in the first sentence of Article 94(1) of Regulation 2017/1001
15 The applicant submits that the contested decision is vitiated by a ‘procedural error’ since the Board of Appeal neither substantiated its refusal of registration in respect of each of the goods covered by the mark applied for nor provided a sufficient and clear statement of the reasons which led it to categorise those goods in certain groups. Furthermore, the applicant maintains that the Board of Appeal confined itself to referring to the examiner’s decision.
16 EUIPO disputes the applicant’s arguments.
17 In that regard, it must first of all be borne in mind that, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. According to the case-law, that obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU, and its objective is to allow those concerned to know the reasons for the measure adopted in order to be able to defend their rights and to enable the courts to review the legality of the decision (see judgment of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 14 and the case-law cited).
18 It must be stated, first, that the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought and, secondly, that the decision by which the competent authority refuses registration of a mark must, in principle, state reasons in respect of each of those goods or services (order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 37, and judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 29).
19 However, where the same ground of refusal is given for a category or group of goods or services, the reasoning may be general for all of the goods or services concerned (see, to that effect, judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30, and of 28 March 2019, Robert Bosch v EUIPO (Simply. Connected.), T‑251/17 and T‑252/17, EU:T:2019:202, paragraph 50).
20 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 (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 31). The mere fact that the goods or services concerned are in the same class of the Nice Agreement is not sufficient for a finding that such homogeneity exists, as those classes often contain a large variety of goods or services which are not necessarily interlinked in a sufficiently direct and specific way (see judgment of 28 March 2019, Simply. Connected., T‑251/17 and T‑252/17, EU:T:2019:202, paragraph 50 and the case-law cited).
21 In order to determine whether the goods and services covered by an application for registration of an EU trade mark are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogeneous categories or groups, for the purposes of the case-law cited in paragraph 20 above, account must be taken of the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question of whether or not the mark concerned by the application for registration comes under one of the absolute grounds for refusal (judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 32, and of 19 June 2019, Brita v EUIPO (Shape of a faucet), T‑213/18, not published, EU:T:2019:435, paragraph 36).
22 Furthermore, the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant for the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services (judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 33, and of 19 June 2019, Shape of a faucet, T‑213/18, not published, EU:T:2019:435, paragraph 37).
23 Lastly, it must be borne in mind that a claim that there is no, or only an inadequate, statement of reasons constitutes a plea of infringement of an essential procedural requirement, which, as such, is different from a plea that the grounds of the decision are inaccurate, the latter plea being a matter to be reviewed by the Court when it examines the substance of that decision (see, to that effect, judgments of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraph 67; of 23 September 2015, Mechadyne International v OHIM (FlexValve), T‑588/14, not published, EU:T:2015:676, paragraph 59, and of 11 April 2019, Adapta Color v EUIPO — Coatings Foreign IP (Bio proof ADAPTA), T‑224/17, not published, EU:T:2019:242, paragraph 40).
24 In the present case, the Board of Appeal found that the mark applied for would be perceived by the relevant public as an icon signifying an alarm, a reminder or a (bell) sound.
25 Furthermore, it found that the mark applied for constitutes an informative symbolic message that represents a feature of the goods concerned.
26 In that regard, it categorised the goods referred to in paragraph 3 above into five groups, it being noted that some goods may simultaneously fall within a number of groups.
27 First, according to the Board of Appeal, ‘scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images’ are apparatus that may contain an alarm or alert function.
28 Secondly, the Board of Appeal observed that ‘apparatus for reproduction of sound’ may reproduce the sound of a bell.
29 Thirdly, the Board of Appeal pointed out that ‘magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, fire-extinguishing apparatus’ are products that may be equipped with an anti-theft alarm.
30 Fourthly, the Board of Appeal stated that the software applications which are installed on mobile phones, tablet computers, standard computers or other digital electronic devices are often represented by icons that make the application easily accessible for its user and that can be designed in various ways. Next, it found that the relevant public would perceive the bell icon at issue ‘on computers (included in “calculating machines, data processing equipment, computers”)’ as an indication of access to a program or application having an alert or alarm function.
31 Fifthly, the Board of Appeal ruled on the ‘computer software; downloadable software and software applications permitting users to identify and communicate with persons at their door; downloadable software and software applications permitting users to monitor their home, office, and other facilities; downloadable applications for monitoring a user’s home, office, and other facilities, for use over the Internet, mobile devices, wireless Internet networks or systems, and other computer and electronic communication networks; software and software applications permitting users to monitor the interior and exterior of homes, retail stores, or offices for security and surveillance; downloadable software and software applications for monitoring a user’s home, office and other facilities, for use over the Internet, mobile devices, wireless Internet networks or systems and other computer and electronic communication networks’. In that regard, it explained that the inclusion of a bell on a square-shaped background was a natural way of designing icons that, when used in relation to those goods, would be seen as representing an application having an alert or alarm function. It added that that was especially the case for software permitting users to monitor the interior and exterior of premises.
32 It follows that the Board of Appeal provided general reasoning for each of the five groups of goods that it identified.
33 However, first of all, it is common ground that the Board of Appeal created the abovementioned groups of goods in the course of its examination of whether a specific absolute ground for refusal, namely the lack of any distinctive character, applied to the mark applied for (see paragraph 22 above).
34 Next, it must be stated that the placement of the goods in those groups, such as described in paragraphs 27 to 31 above, was carried out on the basis of the characteristics which are common to the goods within each of the groups that the Board of Appeal identified, namely the fact that those goods contain or may contain an alarm or alert function (see paragraphs 27 and 31 above), are or may be equipped with software that has such a function (see paragraph 30 above) or with an anti-theft alarm (see paragraph 29 above) or are capable of reproducing the sound of a bell (see paragraph 28 above).
35 Lastly, it is apparent from the contested decision that the Board of Appeal relied on those characteristics in order to assess whether the mark applied for was caught by the absolute ground for refusal provided for in Article 7(1)(b) of Regulation 2017/1001.
36 Consequently, in accordance with the case-law referred to in paragraph 22 above, the Board of Appeal carried out the placement of the goods at issue in those groups on the basis of the characteristics which are common to them and which are relevant for the analysis of whether a specific absolute ground for refusal may apply to the mark applied for in respect of those goods.
37 The goods within each group are therefore, for the purposes of the case-law referred to in paragraph 20 above, interlinked in a sufficiently direct and specific way, to the point where they form sufficiently homogeneous groups of goods. The Board of Appeal was thus entitled to use only general reasoning for each of the groups of goods identified.
38 That finding is not called into question by the fact that the Board of Appeal did not expressly state that the goods in question had such a sufficiently direct and specific link to each other to the point that they formed a homogeneous category. Such an omission is not sufficient to hold that there has been infringement of the obligation to state reasons since that sufficiently direct and specific link between the goods in question is sufficiently clear from the contested decision (see, to that effect, judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 36).
39 In the present case, as regards the goods covered by the mark applied for, first, it must be borne in mind that it is stated in the contested decision that the relevant public will perceive the contested sign as an informative symbolic message that represents a feature of the goods themselves. Secondly, as has been stated in paragraph 34 above, the Board of Appeal highlighted characteristics which the goods within each of the abovementioned five groups of goods have in common. Consequently, the applicant’s argument regarding, in essence, the lack of clarity as regards the reasons which led the Board of Appeal to categorise the goods in certain groups is not convincing.
40 Lastly, the applicant’s argument that the Board of Appeal erred in confining itself to referring to the examiner’s decision must be rejected as unfounded. It is sufficient to state that the contested decision contains specific reasoning and does not merely refer to the reasoning contained in the examiner’s decision.
41 It follows from all of the foregoing considerations that the statement of reasons in the contested decision allowed the applicant to understand the way in which the Board of Appeal had defined the homogeneous categories of goods in relation to which it used general reasoning and has enabled the Court to review the merits of the Board of Appeal’s assessment in that regard.
42 It must thus be held that the contested decision is sufficiently reasoned.
43 The first plea in law must therefore be rejected.
The second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
44 The applicant submits that the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 by finding that the mark applied for was devoid of any distinctive character.
45 In the first place, the applicant disputes, in essence, that there is a sufficient relationship between the mark applied for and the goods covered by the application for registration. In particular, it submits, first, that those goods serve the purpose of control, surveillance and communication and, secondly, that their main function is to provide the relevant public with a control system enabling them to monitor their homes or other vulnerable spots at any time. It therefore claims that the characteristics highlighted by the Board of Appeal do not constitute either the intended purpose or the main function of the goods covered by the mark applied for. Furthermore, it maintains that, even if the goods in question were capable of producing sound signals, that is not one of their characteristics or their intended purpose.
46 In the second place, the applicant claims that the mark applied for has a sufficient degree of distinctiveness and that a sign cannot be required to display imaginativeness or even conceptual tension which would create surprise and thus make a striking impression in order to have the minimum level of distinctiveness required by Article 7(1)(b) of Regulation 2017/1001.
47 EUIPO disputes the applicant’s arguments.
48 Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered.
49 According to settled case-law, a trade mark has distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001, if that trade mark serves to identify the goods or services in respect of which registration is sought as originating from a particular undertaking and thus to distinguish those goods or services from those of other undertakings (see judgments of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 23 and the case-law cited, and of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 31 and the case-law cited).
50 In that regard, it must be borne in mind that signs which are devoid of any distinctive character, which are covered by Article 7(1)(b) of Regulation 2017/1001, are regarded as incapable of performing the essential function of a trade mark, namely, that of identifying the commercial origin of the goods at issue, thus enabling the consumer who acquired the goods designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 14; of 5 April 2017, Anta (China) v EUIPO (Representation of two lines forming an acute angle), T‑291/16, not published, EU:T:2017:253, paragraph 15, and of 4 July 2017, Pirelli Tyre v EUIPO (A pair of curved strips positioned on the side of a tyre), T‑81/16, not published, EU:T:2017:463, paragraph 46).
51 The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of the mark on the part of the relevant public, which consists of consumers of those goods or services (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35; of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43, and of 24 February 2016, Coca-Cola v OHIM (Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 35).
52 It is in the light of those considerations that it must be examined whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 by finding that the mark applied for was devoid of any distinctive character.
53 It must be pointed out at the outset that, as regards the relevant public, the Board of Appeal found, in paragraph 13 of the contested decision, that the goods in respect of which registration had been sought were aimed at the general public with an average level of attention as well as at professionals displaying a high level of attention. It added that the relevant public was the public in the European Union. Those findings on the part of the Board of Appeal, which have not, moreover, been disputed by the applicant, are correct and must therefore be upheld.
54 In the first place, it is common ground that the mark applied for represents a bell with a white outline on a square-shaped black background with rounded corners.
55 Furthermore, it must be pointed out that the applicant does not dispute the Board of Appeal’s finding that the mark applied for will be perceived by the relevant public as an icon signifying an alarm, a reminder or a (bell) sound.
56 In the second place, as regards, first, the software and applications referred to in paragraph 31 above, the purpose of which is to provide the relevant public with a control, communication and surveillance system, it must be stated that such goods necessarily have the function of alerting the user if a specific event, such as a person’s presence at the entrance or an intrusion, takes place. It cannot therefore reasonably be called into question that the relevant public will perceive an icon representing a bell as a message indicating that such goods have a bell, alert, notification or alarm function. It follows that the applicant’s argument that the relationship between the mark applied for and those goods is too vague and indeterminate is not convincing.
57 As regards, secondly, the Board of Appeal’s findings regarding the other goods, which have been referred to in paragraphs 27 to 30 above, it must first of all be stated that it is a matter of common knowledge that each of those goods includes or may include the characteristic attributed to it by the Board of Appeal. By way of example, it cannot seriously be disputed that ‘measuring, signalling, checking (supervision) [or] life-saving apparatus and instruments’ are or may be equipped with an alarm or alert function, that ‘apparatus for reproduction of sound’ may reproduce the sound of a bell and that ‘cash registers’ may contain an anti-theft alarm.
58 Furthermore, the applicant claims that the main function of the goods covered by the mark applied for is to provide the relevant public with a control system enabling them to monitor their homes or other vulnerable spots at any time. Consequently, as regards the goods in respect of which that claim is justified, it is sufficient to point out that, for the reasons set out in paragraph 56 above, the relevant public will perceive the mark applied for as a message informing it that such goods have a bell, alert, notification or alarm function.
59 Next, it is true that the characteristics highlighted by the Board of Appeal (see paragraphs 27 to 30 above) do not necessarily constitute the main function of all of the goods covered by the mark applied for. With regard to those goods, which include the magnetic data carriers, computer software, calculating machines, fire-extinguishing apparatus and computers referred to by the applicant, the icon of a bell is capable of providing an informative message regarding one of a number of characteristics of those goods. However, a mark that has been applied for cannot be recognised as having distinctiveness solely on the ground that the informative message that it conveys concerns, as in the present case, one of a number of characteristics of the goods that it covers. Moreover, it has been held that the finding that the sign at issue does not provide any information about the nature of the goods concerned is not sufficient to make that sign distinctive (see, to that effect, judgments of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 30, and of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 31).
60 Furthermore, the applicant is not justified in claiming that the Board of Appeal failed to explain why the production of sound can be perceived as a characteristic and the intended purpose of magnetic data carriers, computer software, calculating machines and fire-extinguishing apparatus. It is sufficient to state that, contrary to the applicant’s claims, the Board of Appeal did not find that those goods were capable of reproducing a sound. As has been stated in paragraphs 29, 30 and 31 above, the Board of Appeal took the view that those goods contained or might contain, in the case of magnetic data carriers and fire-extinguishing apparatus, an anti-theft alarm and, in the case of computer software and calculating machines, an alert or alarm function or even a piece of software equipped with such a function. It was only with regard to ‘apparatus for reproduction of sound’ that the Board of Appeal found that those goods might reproduce the sound of a bell (see paragraph 28 above).
61 Lastly, the applicant’s argument that, in essence, the mark applied for is not descriptive of the goods concerned on the ground that it does not enable the relevant public to identify those goods immediately and without further reflection cannot, in any event, be accepted. It must be pointed out that registration of the mark applied for was refused on the basis of Article 7(1)(b) of Regulation 2017/1001 and not on the basis of Article 7(1)(c) of that regulation.
62 There is thus a sufficient link between the characteristics of the goods identified by the Board of Appeal (see paragraph 27 to 31 above) and the relevant public’s perception of the mark applied for to call into question the existence of a distinctive character on the part of that mark.
63 Consequently, it is necessary to uphold the Board of Appeal’s findings that an icon representing a bell will be perceived, in connection with the goods covered by the mark applied for, as a message informing the relevant public of a characteristic of those goods, namely the fact that they contain or may contain an alarm or alert (or notification) function, are or may be equipped with a piece of software containing such a function or with an anti-theft alarm or are capable of reproducing the sound of a bell.
64 In the third place, as regards the sign representing a bell, it is true that a finding that a mark has distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark enables the relevant public to identify the origin of the goods which it covers and to distinguish them from those of other undertakings (see judgment of 29 September 2009, Representation of half a smiley smile, T‑139/08, EU:T:2009:364, paragraph 27 and the case-law cited; judgments of 5 April 2017, Representation of two lines forming an acute angle, T‑291/16, not published, EU:T:2017:253, paragraph 29, and of 4 July 2017, A pair of curved strips positioned on the side of a tyre, T‑81/16, not published, EU:T:2017:463, paragraph 49).
65 However, a sign which is excessively simple and is constituted by a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, for example, according to the case-law, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use (see judgment of 29 September 2009, Representation of half a smiley smile, T‑139/08, EU:T:2009:364, paragraph 26 and the case-law cited; judgments of 5 April 2017, Representation of two lines forming an acute angle, T‑291/16, not published, EU:T:2017:253, paragraph 30, and of 4 July 2017, A pair of curved strips positioned on the side of a tyre, T‑81/16, not published, EU:T:2017:463, paragraph 50).
66 The fact that the sign at issue does not represent a basic geometrical figure does not, however, as such, suffice to support the view that it has the minimum distinctive character necessary for registration as an EU trade mark. The sign must also have certain characteristics that can be easily and instantly memorised by the relevant public and would make it possible for that sign to be perceived immediately as an indication of the commercial origin of the goods at issue (see, to that effect, judgment of 15 December 2016, Novartis v EUIPO (Representation of a grey curve and represention of a green curve), T‑678/15 and T‑679/15, not published, EU:T:2016:749, paragraphs 40 and 41 and the case-law cited; judgments of 5 April 2017, Representation of two lines forming an acute angle, T‑291/16, not published, EU:T:2017:253, paragraph 31, and of 28 March 2019, Coesia v EUIPO (Representation of two oblique red curves), T‑829/17, not published, EU:T:2019:199, paragraph 44).
67 In that regard, it must be stated that, at present, it is a matter of common knowledge that icons representing basic bells are commonly used in order to inform users of an event, by means of alerts, notifications, alarms or reminders, or in order to represent a (bell) sound, bell or ringtone, especially in the context of operating systems, software, applications and telecommunications.
68 In the present case, as the examiner had, moreover, already pointed out, the mark applied for consists of a device representing a simple and banal bell, which does not have any particular degree of stylisation or additional element that has distinctive character. The applicant does not, moreover, dispute the ‘basic’ nature of the bell in question. Comparing it with an earlier registration, it states that the earlier mark ‘also depicts a “basic” form of a bell’, which suggests that the applicant itself takes the view that the mark applied for consists of a simple sign.
69 As for the black square with rounded corners which constitutes the background on which that bell is represented, it will, as EUIPO points out, be perceived solely as a purely decorative component the only purpose of which is to highlight the bell device.
70 Consequently, it is necessary to uphold the findings in the contested decision that the overall impression created by the mark applied for is not unusual and that that mark does not have any characteristic element or eye-catching feature which is likely to be remembered by the relevant public. The applicant has not, moreover, provided any information that makes it possible for those findings to be called into question.
71 It follows that the mark applied for will be perceived as a message conveying information about a characteristic of the goods at issue and not as an indication of the commercial origin of those goods. The mark applied for will not serve to identify the goods in respect of which registration is sought as originating from a particular undertaking and thus to distinguish those goods from those of other undertakings, in accordance with the definition of distinctive character which results from the settled case-law cited in paragraph 49 above.
72 It follows from all of those considerations that the Board of Appeal was right in finding, in paragraph 31 of the contested decision, that the mark applied for is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
73 That finding is not called into question by the applicant’s argument that the contested decision is contrary to EUIPO’s previous decision-making practice. More specifically, the applicant submits that the distinctive character of the mark applied for is proved by the existence of earlier marks that have been registered by EUIPO, which are structurally similar to the mark applied for in that they represent a bell or other symbol that is capable of indicating a sound. The applicant relies on 4 examples of earlier registrations in support of that argument.
74 In that regard, it must be stated that the Board of Appeal took into consideration the previous decisions that EUIPO had adopted regarding applications for registration of similar marks. In the contested decision, the Board of Appeal responded not only to the applicant’s arguments relating to the earlier registrations relied on, but also provided examples of signs in respect of which EUIPO had refused registration.
75 Furthermore, so far as concerns the registrations that had previously been made at EUIPO, it must be borne in mind that it is settled case-law that neither the Board of Appeal nor the Court can be bound by the decisions adopted by the examiner. In particular, it would be contrary to the Board of Appeal’s task as a review body, as defined in recital 30 and in Articles 66 to 71 of Regulation 2017/1001, for its competence to be restricted by the requirement to respect the decisions of the first-instance adjudicating bodies of EUIPO (see, to that effect, judgments of 9 November 2016, Smarter Travel Media v EUIPO (SMARTER TRAVEL), T‑290/15, not published, EU:T:2016:651, paragraph 73, and of 28 June 2017, Colgate-Palmolive v EUIPO (AROMASENSATIONS), T‑479/16, not published, EU:T:2017:441, paragraph 42).
76 In addition, it must be pointed out that, according to settled case-law, the legality of 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 2017/1001, as interpreted by the Courts of the European Union, and not on the basis of EUIPO’s previous decision-making practice, which cannot, in any event, bind those Courts (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47, and of 10 September 2015, Laverana v OHIM (BIO PROTEINREICHER PFLANZENKOMPLEX AUS EIGENER HERSTELLUNG), T‑571/14, not published, EU:T:2015:626, paragraph 22).
77 It is true that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. In the light of those two principles, EUIPO must, when examining an application for registration of an EU trade mark, 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. However, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. 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. That examination must be undertaken in each individual case. 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, paragraphs 73 to 77, and of 14 December 2018, Dermatest v EUIPO (ORIGINAL excellent dermatest), T‑803/17, not published, EU:T:2018:973, paragraph 59).
78 The considerations set out in paragraph 77 above apply even if the sign in respect of which registration as an EU trade mark is sought is composed in a manner identical to that of a mark in respect of which EUIPO has already approved registration as an EU trade mark and relates to goods or services identical or similar to those in respect of which registration of the sign in question is sought (see order of 12 December 2013, Getty Images (US) v OHIM, C‑70/13 P, not published, EU:C:2013:875, paragraph 45 and the case-law cited). Consequently, the same principles must apply in the case of earlier signs which are not identical, but at best similar.
79 In the present case, it must be pointed out that, of the 4 earlier registrations relied on by the applicant, only 2 represent a bell. Furthermore, only one of those 2 marks representing a bell covers goods in Class 9. The applicant is not therefore justified in claiming that it is common practice to register marks representing a bell icon in respect of the goods covered by the application for registration.
80 In any event, the Court holds that the Board of Appeal was right in finding, as a result of a stringent and full examination, that the mark applied for is caught by the ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001. It is thus to no avail that the applicant has relied, for the purposes of invalidating that finding, on earlier registrations on the part of EUIPO.
81 Consequently, the second plea must be rejected as unfounded.
The third plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
82 The applicant claims that the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 by finding that the mark applied for was descriptive of the goods covered by that mark.
83 However, it must be pointed out that the Board of Appeal did not examine whether the mark was, for the purposes of Article 7(1)(c) of Regulation 2017/1001, descriptive of the goods at issue.
84 As the Board of Appeal correctly pointed out, it is evident from Article 7(1) of Regulation 2017/1001, that it is sufficient that one of the absolute grounds of refusal applies for a sign not to be registrable as an EU trade mark (see, to that effect, judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29; of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74 and the case-law cited, and of 5 February 2019, Gruppo Armonie v EUIPO (ARMONIE), T‑88/18, not published, EU:T:2019:58, paragraph 35 and the case-law cited).
85 It was in those circumstances that, after refusing registration of the mark applied for on the basis of Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal applied the principle set out in paragraph 84 above and did not examine whether Article 7(1)(c) of Regulation 2017/1001 was applicable to the mark applied for.
86 In any event, since it is clear from the examination of the second plea that the Board of Appeal was right in finding that the mark applied for is devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, there is no need to examine the plea alleging infringement of Article 7(1)(c) of that regulation (see, to that effect, judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraphs 28 and 29, and of 5 February 2019, ARMONIE, T‑88/18, not published, EU:T:2019:58, paragraph 36).
87 In the light of the foregoing considerations, the action must be dismissed.
Costs
88 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 (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders A9.com, Inc. to pay the costs.
Gervasoni | Madise | Da Silva Passos |
Delivered in open court in Luxembourg on 7 November 2019.