JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
20 September 2007(*)
(Community trade mark – Application for the Community word mark PURE DIGITAL – Absolute grounds for refusal – Article 7(1)(b) and (c) of Regulation (EC) No 40/94 – Distinctive character acquired through use – Article 7(3) of Regulation No 40/94)
In Case T-461/04,
Imagination Technologies Ltd, established in Kings Langley, Hertfordshire (United Kingdom), represented by M. Edenborough, Barrister, and P. Brownlow and N. Jenkins, Solicitors,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by D. Schennen and subsequently by D. Botis, acting as Agents,
defendant,
APPLICATION for annulment of the decision of the Second Board of Appeal of OHIM of 16 September 2004 (Case R 108/2004-2), concerning an application for the registration of the word mark PURE DIGITAL as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of M. Jaeger, President, J. Azizi and E. Cremona, Judges,
Registrar: J. Plingers, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 1 December 2004,
having regard to the response lodged at the Court Registry on 11 February 2005,
further to the hearing on 13 September 2006,
gives the following
Judgment
Background to the dispute
1 On 1 October 2001, Imagination Technologies Ltd (‘the applicant’) filed an application to register a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The mark applied for is the word sign PURE DIGITAL. The goods and services for which registration was sought are in Classes 9 and 38 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended (‘the Nice Agreement’), and correspond to the following description:
– Class 9: ‘Electric and electronic apparatus for use with multi-media entertaining systems; installation apparatus for receiving, recording and displaying sound, video and digital information; digital video adapters and interactive video adapters for use with computers, video apparatus; computer hardware, software for use with multi-media and graphics applications; speakers, amplifiers, decoders, DVDs and digital radio systems; computer hand-held devices and communication devices; cards, sound cards, cartridges, tapes, discs, cassettes and other data carriers all for the recordal of data, sound and images; in-car entertainment system namely in-car navigation needs, in-car radios or graphics run on any display system in a car; parts and fittings and electronic components for all the aforesaid goods’;
– Class 38: ‘Telecommunication of information, computer programmes and computer and video games and programmes; electronic mail services; provision of telecommunication access to computer databases and the internet.’
3 On 12 December 2003, the examiner refused the application for registration, on the ground that the mark in question was descriptive and devoid of any distinctive character within the meaning of Article 7(1)(b) and (c) of Regulation No 40/94. In the light of the evidence provided by the applicant, the examiner also rejected application of Article 7(3).
4 On 29 January 2004, the applicant filed an appeal against the examiner’s decision.
5 By decision of 16 September 2004 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal, thus confirming the refusal to register the mark applied for.
Forms of order sought by the parties
6 The applicant claims that the Court should:
– annul the contested decision and the examiner’s decision;
– remit the application for registration to OHIM or, alternatively, to the Board of Appeal;
– order OHIM to pay the costs incurred by the applicant in connection with this action and the costs which it incurred in respect of the appeal before the Board of Appeal and the proceedings which took place before the examiner.
7 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to bear the costs.
The application for annulment of the Board of Appeal’s decision
Preliminary observations
8 It must be pointed out that, although the contested decision does not expressly state that registration of the mark applied for must be refused on the ground that it is devoid of distinctive character and is descriptive, the Board of Appeal maintained that one of the issues to be dealt with in the present case was that of assessing whether the examiner was correct in law to refuse to register the mark applied for on the basis of Article 7(1)(b) and (c) of Regulation No 40/94. In addition, it is apparent from paragraphs 10 to 14 of the contested decision that the Board of Appeal upheld the examiner’s view as regards both grounds for refusal. In particular, in the contested decision, the Board of Appeal found that a consumer would perceive the sign to be an indication of the kind of goods and services covered, which is a paraphrase of Article 7(1)(c) of that regulation.
9 It follows from this that the contested decision must be considered to be based on, inter alia, the absolute grounds for refusal referred to in Article 7(1)(b) and (c) of Regulation No 40/94.
10 In support of its application for annulment of the contested decision, the applicant relies on three pleas in law. In the first plea, headed ‘The mark is distinctive per se’, the applicant alleges that the Board of Appeal did not consider that the mark applied for was distinctive per se. However, it must be pointed out that, in spite of the heading of that plea, the applicant is, in actual fact, submitting that the mark applied for is not covered by the grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 40/94 and that, contrary to the findings of the Board of Appeal, the mark is not descriptive in respect of some goods mentioned in the specification of the goods and services in Class 9 of the Nice Agreement. The first plea may, therefore, be construed as alleging infringement not only of Article 7(1)(b) of Regulation No 40/94 (the first part of the plea), but also of Article 7(1)(c) of that regulation (the second part of the plea). The second plea alleges infringement of Article 38(2) of Regulation No 40/94 in that the Board of Appeal did not take into account the possibility of requesting the disclaimer provided for by that provision. The third plea alleges infringement of Article 7(3) of Regulation No 40/94 inasmuch as the Board of Appeal should have acknowledged that the mark had become distinctive through the use which the applicant had made of it.
The first plea: infringement of Article 7(1) of Regulation No 40/94
11 In the present case, it is necessary to examine, first, whether the Board of Appeal correctly applied Article 7(1)(c) of Regulation No 40/94.
The second part of the first plea, alleging infringement of Article 7(1)(c)
– Arguments of the parties
12 The applicant submits, first, that the word element ‘pure digital’ cannot be regarded, as a whole, as descriptive, given that it is a lexical invention that bestows distinctive power on the mark in accordance with the rule in BABY-DRY (Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 44).
13 Secondly, the applicant maintains that, even if the mark is considered to be descriptive of some of the goods detailed in the specification of the goods and services in Class 9 of the Nice Agreement, the Board of Appeal should not have refused registration for all the goods mentioned in that specification. The goods mentioned in the specification of the goods and services in Class 9 of the Nice Agreement include goods that are not digital. Therefore, by definition, the mark is not descriptive of a sub-set of the goods in that specification.
14 In that regard, in relation to the goods for which the mark is not descriptive, the applicant maintains that a consumer would not be deceived and that the mark does not therefore infringe Article 7(1)(g) of Regulation No 40/94, with the result that the objection raised by OHIM is unjustified. According to the applicant, when a mark that has some descriptive connotation (such as ORANGE for telecommunications, SHELL for petroleum, or SWAN for lager) is used distinctively in relation to some goods or services, it is, to some extent, deceptive because the telephones are not orange, SHELL does not sell shells and the lager does not have anything to do with swans. On the other hand, it has not been proven that the term ‘pure digital’ is liable to deceive the average consumer. In any event, OHIM should have given the applicant an opportunity to respond to that allegation.
15 Lastly, the applicant complains that OHIM held that the descriptiveness also related to the services in Class 38 of the Nice Agreement. The mark in question can be descriptive only of goods, but not of the provision of services, unlike, for example, laudatory terms such as ‘fast’ or ‘efficient’, which could meaningfully qualify services.
16 OHIM submits that the Board of Appeal was right to find that the word element ‘pure digital’ was descriptive within the terms of Article 7(1)(c) of Regulation No 40/94 and submits that the applicant’s arguments should therefore be rejected.
– Findings of the Court
17 Under Article 7(1)(c) of Regulation No 40/94, ‘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. Furthermore, Article 7(2) of Regulation No 40/94 states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
18 As is apparent from settled case-law, Article 7(1)(c) of Regulation No 40/94 prohibits the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision therefore pursues an aim in the public interest, which requires that such signs and indications may be freely used by all (see Case T-334/03 Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM) [2005] ECR II-65, paragraph 23, and the case-law cited).
19 Furthermore, the signs referred to by Article 7(1)(c) of Regulation No 40/94 are signs 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 to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (Case T-219/00 Ellos v OHIM (ELLOS) [2002] ECR II-753, paragraph 28).
20 The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services in respect of which registration is sought (Procter & Gamble v OHIM, cited in paragraph 12 above, paragraph 39).
21 Accordingly, a sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by a specific intended public (EUROPREMIUM, cited in paragraph 18 above, paragraph 26).
22 In the present case, the goods and services for which registration has been sought are, in particular, goods in the areas of audiovisual equipment and computing (Class 9 of the Nice Agreement) and telecommunication services connected with the use of a computer (Class 38 of the Nice Agreement).
23 As regards the relevant public, the Board of Appeal did not expressly define it in the contested decision. However, as the mark sought is made up of two everyday English words, examined in that language by the Board of Appeal, and in the absence of any dispute by the parties in that regard, it must be held that the relevant public consists of average English-speaking consumers or consumers who have a basic knowledge of the English language (Case T-173/03 Geddes v OHIM (NURSERYROOM) [2004] ECR II-4165, paragraph 18, and Joined Cases T-178/03 and T‑179/03 CeWe Color v OHIM (DigiFilm and DigiFilmMaker) [2005] ECR II-3105, paragraph 28).
24 As regards the meaning of the word element ‘pure digital’, it is apparent from paragraphs 10 and 11 of the contested decision that that sign consists of two everyday English words, the first of which, ‘pure’, has a sufficiently clear meaning which requires no explanation and the second of which, ‘digital’, is a technical word used particularly in connection with computers and telecommunications. According to the Board of Appeal, the word element thus created immediately gives rise in the mind of the relevant consumer to the idea that the goods and services covered by the mark use digital technology.
25 As regards the nature of the relation between the word element ‘pure digital’ and the goods and services concerned, the Board of Appeal found, in paragraph 14 of the contested decision, that that term was an indication of the kind of goods and services concerned and that it was therefore descriptive.
26 Accordingly, for the purposes of Article 7(1)(c) of Regulation No 40/94 it is necessary to consider whether there is, from the point of view of the relevant public, a sufficiently direct and specific association of the word element ‘pure digital’, understood as an allusion to goods and services which use digital technology, with the goods and services in respect of which registration is sought (Case T-222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II-4995, paragraph 38).
27 First, as regards the word ‘digital’, this, as correctly observed by OHIM in its response and by the Board of Appeal in paragraph 10 of the contested decision, clearly relates to ‘the use of binary code to represent information’ and thus refers to digital technology, which is characterised by the fact that a digital signal can be copied precisely without any loss of quality, contrary to the copying of an analogue signal, which will lead to a deterioration in the quality of the signal.
28 With regard to the goods in Class 9 of the Nice Agreement for which registration was sought, the Court observes that digital technology is an essential characteristic thereof. The functioning of certain goods such as computers, software and decoders is based on the use of binary code. Other goods, such as the storage media of compact disks or digital video disks (‘DVD’), are necessarily digital in nature. Furthermore, it must be pointed out that, in the field of consumer electronics, digital technology is increasingly used in many applications (radio, television and telephone communication). It must also be stated that, of the list of goods referred to in the application for registration, some differ in nature according to whether they use digital technology or not. Thus, an analogue radio or television cannot receive programmes intended for a digital radio or television. Consequently, the word ‘digital’ has to be regarded as indicating an essential characteristic of those goods, namely the use of digital technology, which the relevant public is liable to take into account when making a choice.
29 Likewise, as regards the services in Class 38 of the Nice Agreement, which are connected with computer programmes, telecommunication and radio broadcasting, the word ‘digital’ enables the public concerned to discern immediately and without further reflection the description of a fundamental characteristic thereof, namely that the provision of those services requires the use of digital technology or, at the very least, that that technology is increasingly widespread and sought after by consumers.
30 Secondly, the word ‘pure’, as has been correctly stated by the examiner, the Board of Appeal in paragraph 11 of the contested decision, and OHIM in its response, may be understood as an adverb meaning ‘purely’ or ‘only’ which qualifies the intensity of the digital sound or image in the sense that the word ‘pure’ indicates that the signal is solely digital.
31 It follows that the word ‘pure’ is descriptive in that the relevant consumer will perceive it as a qualifier describing an essential characteristic of the goods and services referred to in the trade mark application, namely that they emit or use a purely digital signal.
32 It must be stated that the applicant has neither disputed the correctness of the meaning chosen by the Board of Appeal nor submitted that the word ‘pure’ has another meaning. In any event, it must be borne in mind that, in order to come within Article 7(1)(c) of Regulation No 40/94, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods or services concerned (EUROPREMIUM, cited in paragraph 18 above, paragraph 30).
33 As the word mark in question consists of more than one element, it is none the less necessary to determine whether the descriptive character established in respect of its constituent elements also exists as regards the word element considered as a whole (Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-2383, paragraph 27).
34 In the present case, it must be stated, first, that the adjective ‘pure’ has been placed before the word ‘digital’ in compliance with English syntax, with the result that the association of the words ‘pure’ and ‘digital’ is not syntactically unusual and is, on the contrary, a familiar expression in English for designating the goods covered or representing their essential characteristics (see, to that effect, Procter & Gamble v OHIM, cited in paragraph 12 above, paragraphs 42 and 43, and ROBOTUNITS, cited in paragraph 26 above, paragraph 39). As the Board of Appeal also observed in paragraph 12 of the contested decision, the sign in question is ‘an ordinary, definite and down-to-earth term from which the relevant consumer can easily ascertain the character of the goods and services’. Therefore, the applicant’s argument that the word element ‘pure digital’ is a lexical invention that bestows distinctive character on the mark must be rejected.
35 Secondly, it must be pointed out that, as OHIM correctly observed, the addition of the word ‘pure’ does not diminish the descriptiveness of the word ‘digital’. On the contrary, it reinforces the descriptiveness by intensifying an essential characteristic of the goods and services in question. Likewise, the association of the words ‘pure’ and ‘digital’ strengthens the meaning of each of those words (see, to that effect, Case T-183/03 Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION) [2004] ECR II-3113, paragraphs 27 and 28).
36 The Board of Appeal was therefore right to take the view, in paragraph 14 of the contested decision, that the word sign PURE DIGITAL would be perceived by consumers as an indication of the kind of computer, broadcasting and communication goods and services and not as an indication of the commercial origin thereof.
37 It is apparent from the above that there is a sufficiently specific and direct association of the word element ‘pure digital’, viewed in its entirety, with the goods and services covered by the application for registration for that word element to be covered by the prohibition laid down in Article 7(1)(c) of Regulation No 40/94.
38 None of the arguments put forward by the applicant is capable of calling that finding in question.
39 As regards the applicant’s argument that the list of goods in Class 9 of the Nice Agreement which are referred to in the trade mark application includes goods which are not digital and in respect of which the mark should, therefore, have been registered, it must first be pointed out that the list of goods in Class 9 of the Nice Agreement which are referred to in the application for registration does not contain any restriction relating to analogue technology and that, on the contrary, the word ‘digital’ is mentioned three times in that list. Accordingly, the contested decision must be upheld in so far as it rejects registration of all the goods in Class 9 of the Nice Agreement (see, to that effect, Case T‑359/99 DKV v OHIM (EuroHealth) [2001] ECR II-1645, paragraph 33).
40 That argument must also be rejected on the ground that the applicant merely states that the Board of Appeal should not have refused registration of the mark for all the goods in Class 9 of the Nice Agreement without specifying those which, in its opinion, are not digital and in respect of which the mark is accordingly registrable.
41 Even if it were to be accepted that the applicant refers implicitly, in that regard, to the goods mentioned in the appeal which it lodged against the examiner’s decision, namely ‘home cinema processors, multi-channel amplifiers, hi-fi speakers, sub-woofers, home cinema speakers and integrated home cinema sound systems and tuners’, the argument cannot, in any event, succeed. Firstly, the Board of Appeal correctly found that ‘home cinema processors’ and ‘multi-channel amplifiers’ did not appear in the specification of the goods for which registration of the mark had been sought. As a sign’s descriptiveness must, as is apparent from well-established case-law, be assessed by reference to the goods or services concerned (see Case T-289/02 Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS) [2004] ECR II-2851, paragraphs 41 and 42, and the case-law cited), the applicant cannot validly rely on that argument.
42 Secondly, as was correctly observed by the Board of Appeal and by OHIM, the argument is incorrect given that, from the point of view of the relevant public, home cinema systems, which consist of a television, a DVD player, an amplifier and speakers, utilise digital technology or, at the very least, are capable of utilising it.
43 Therefore, the applicant’s argument must be rejected as unfounded and the Board of Appeal was right to reject the registration of the word mark PURE DIGITAL for all the goods in Class 9 of the Nice Agreement.
44 As regards the applicant’s argument that OHIM should have given it an opportunity to respond to the allegation that the mark was deceptive, this is clearly irrelevant as it is apparent from the contested decision that the Board of Appeal did not base its assessment of the descriptiveness of the mark on the absolute ground of refusal for registration relating to the deceptiveness of the mark, which is referred to in Article 7(1)(g) of Regulation No 40/94, but on the ground that the non-digital goods in respect of which the mark applied for should, according to the applicant, have been registered were not included in the specification of the goods and services referred to in the application for registration.
45 In any event, the examples cited in that regard by the applicant with the aim of establishing the deceptiveness of a mark whose descriptive connotation is used distinctively are irrelevant. The descriptive connotation of the marks mentioned (ORANGE, SHELL, SWAN) does not designate an essential characteristic of the goods or services covered by those marks, by contrast with the descriptive connotation of the word element ‘pure digital’, which indicates clearly that the computer, broadcasting and communication goods and services utilise, or are capable of using, digital technology.
46 It follows from the foregoing that the second part of the first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94, must be rejected.
The first part of the first plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94
– Arguments of the parties
47 First, the applicant submits that, since the word ‘digital’ is an adjective, it may only be qualified by an adverb, namely ‘purely’ and not by an adjective such as ‘pure’. As the grammatically correct construction would thus be ‘purely digital’, the mark ‘PURE DIGITAL’ is therefore a syntactically unusual juxtaposition, pursuant to the rule in BABY-DRY (Procter & Gamble v OHIM, cited in paragraph 12 above, paragraph 43).
48 Secondly, the applicant observes that, even if the Board of Appeal considered that the grammatical construction ‘pure digital’ was correct, it should have acknowledged that it is not banal. Even if the mark is understood to convey the sense of ‘nothing else but digital’, it is nevertheless distinctive. Since the adjective ‘pure’ cannot qualify the word ‘digital’, inasmuch as an electric signal either is digital or is not, it follows that in the present case the use of such a redundant word confers a ‘scintilla of distinctiveness’ on the mark when considered as a whole.
49 Furthermore, the applicant disputes the finding that the mark as a whole lacks distinctive character because its individual components separately lack distinctive character. Such an analysis, it contends, is contrary to the case-law resulting from Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, according to which it is, rather, the mark as a whole which must be considered. The applicant also submits that, in accordance with that case-law, the trade mark applied for indubitably enables the relevant public to identify the origin of the goods or services and to distinguish them from those of other undertakings (SAT.1 v OHIM, paragraph 41). That conclusion can also be drawn from the annexes, in which the applicant’s goods are listed under the mark PURE DIGITAL in the context of other similar goods identified by marks such as NORDOST, CYRUS, ATACAMA, ISOTEK, TIVOLI, REVOLVER and PMC.
50 OHIM supports the approach which the Board of Appeal adopted in the contested decision and disputes the applicant’s arguments.
– Findings of the Court
51 It must be borne in mind that, as is evident from Article 7(1) of Regulation No 40/94, it is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as a Community trade mark (see Case T-322/03 Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN) [2006] ECR II-835, paragraph 110, and the case-law cited).
52 Accordingly, the first plea must be rejected without the need to adjudicate on the first part, alleging infringement of Article 7(1)(b) of Regulation No 40/94.
53 In any event, it is clear that the arguments put forward by the applicant in the first part of the plea are manifestly unfounded.
54 First, as is apparent from the case-law, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 40/94 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) of that regulation (see WEISSE SEITEN, cited in paragraph 51 above, paragraph 111, and the case-law cited).
55 Secondly, as regards the argument to the effect that the mark PURE DIGITAL is a grammatically unusual juxtaposition, pursuant to the rule in BABY-DRY, in that the word ‘digital’, as an adjective, can be qualified only by an adverb, with the result that the correct grammatical construction in English would be ‘purely digital’, it must be borne in mind that a trade mark’s distinctiveness must be assessed by reference to, first, the goods or services in respect of which registration is sought and, secondly, the perception which the relevant public has of it (see Case T-15/05 De Waele v OHIM (Shape of a sausage) [2006] ECR II‑1511, paragraph 20, and the case-law cited). Having regard to the goods and services in respect of which registration is sought and the understanding which the relevant public has of the sign at issue, the applicant’s arguments are manifestly irrelevant.
56 The criterion as to the contravention of a grammatical rule, laid down by the Court of Justice in Procter & Gamble v OHIM, cited in paragraph 12 above, is a formal criterion which is not conclusive for the purpose of establishing whether or not a mark is distinctive. As is apparent from the BABY-DRY case-law, on which the applicant relies, the assessment whether a word element such as ‘baby-dry’ is capable of distinctiveness depends on whether, from the standpoint of an English-speaking consumer, the word element in question may be viewed as a normal way of referring to the goods or of representing their essential characteristics in common parlance. The unavoidable conclusion is that, in the light of that criterion, the word element ‘pure digital’ is not a syntactically unusual construction, but is, on the contrary, a familiar expression in English for designating the goods concerned or for describing their essential characteristics. Moreover, the evidence annexed to OHIM’s response confirms that the expression ‘pure digital’ is used to designate goods of the same kind as the goods in issue.
57 Thirdly, the argument that the adjective ‘pure’ is superfluous in the present case and that the use of such a redundant word confers a ‘scintilla of distinctiveness’ on the mark when considered as a whole must also be rejected. As was found in paragraphs 30 to 34 above, the adjective ‘pure’ does not in any way diminish the descriptiveness of the word ‘digital’, but on the contrary, reinforces it as the association of the two words strengthens the meaning of each of them (APPLIED MOLECULAR EVOLUTION, cited in paragraph 35 above). Far from conferring a ‘scintilla of distinctiveness’ on the word element ‘pure digital’, the association of the words ‘pure’ and ‘digital’, as was correctly observed by the Board of Appeal, denotes nothing more than the application of digital technology. It is thus plainly banal and laudatory in that it merely promotes the idea that the goods and services covered utilise only digital technology.
58 Fourthly, as regards the advertising leaflet annexed by the applicant to its application, in which its goods are listed under the mark PURE DIGITAL next to other similar goods identified by marks such as NORDOST, CYRUS, ATACAMA, ISOTEK, TIVOLI, REVOLVER and PMC, it is sufficient to state that, unlike the mark PURE DIGITAL, the marks mentioned above instantly exhibit a high degree of distinctiveness in that the words constituting those marks have no connection with the goods concerned. By contrast, as the Board of Appeal correctly observed in paragraph 11 of the contested decision, the word element ‘pure digital’ refers only to the essential characteristics of the goods and services covered and in no way allows the consumer to perceive their commercial origin.
59 It follows from the foregoing that the first part of the first plea must also be rejected.
60 Therefore, the first plea must be rejected.
The second plea: infringement of Article 38(2) of Regulation No 40/94
Arguments of the parties
61 The applicant maintains that OHIM was wrong to ignore the offer of a disclaimer pursuant to Article 38(2) of Regulation No 40/94 on the ground that the word ‘digital’ is not distinctive. It claims that the inclusion of the word might give rise to doubts as to the scope of protection of the trade mark, in particular whether or not the goods and services could properly be described as digital in nature. Accordingly, the applicant submits that OHIM should have considered and subsequently accepted the offer of a disclaimer, so as to overcome the harm caused by the circumstances envisaged in Article 38(2) of Regulation No 40/94.
62 OHIM takes the view that the applicant is mistaken both as to the conditions in which Article 38(2) of Regulation No 40/94 applies and the legal consequences thereof. OHIM observes that the applicant merely refers to the possibility of such a disclaimer or expects OHIM to impose a disclaimer on it.
Findings of the Court
63 Under Article 38(2) of Regulation No 40/94, where the trade mark contains an element which is not distinctive, and where the inclusion of that element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, OHIM may request, as a condition for registration of that trade mark, that the applicant state that he disclaims any exclusive right to such element.
64 It follows that for that provision to apply at least one of the elements of which the mark consists must be distinctive. As has been established above, both the two elements of which the mark sought consists and the mark considered as a whole are devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. OHIM cannot therefore be criticised for not considering the offer of a disclaimer within the meaning of Article 38(2) of Regulation No 40/94.
65 It follows from the foregoing that the second plea must be rejected as unfounded.
The third plea: infringement of Article 7(3) of Regulation No 40/94
Arguments of the parties
66 The applicant submits that the Board of Appeal erred in law by ignoring the evidence of use simply because the sign for which use was shown did not correspond exactly to the form for which registration was sought.
67 The applicant contends, first, that it is accepted practice that an application for a word mark in black capital letters is to be understood to encompass an application for that word mark in other scripts and colours, and with lower and upper case letters. It further submits that an application for a phrase that is written upon a single line would also encompass the same phrase written upon two or more lines, so long as the words were not artificially split.
68 Secondly, the applicant submits that, to argue by analogy when considering revocation for non-use of the mark as referred to in Article 15(2)(a) of Regulation No 40/94, it is permissible to show genuine use of a variant that does not differ in elements that alter the distinctive character of the mark as registered. Since such use is permissible to maintain a registration, such use of a variant must likewise be permissible to show acquired distinctiveness. By definition, the variant cannot differ in elements that alter the distinctive character, and so all such use must contribute to the creation and enhancement of that distinctive character.
69 The applicant claims that, in the present case, there are only minimal differences between the mark applied for and the mark as used. OHIM should have taken into consideration the evidence of use, since in none of these cases do the variants differ in elements that alter the distinctive character of the mark applied for. By way of example, the applicant mentions its use of the signs PURE Digital and PURE DIGITAL, with each word written – in the latter case one above the other – in a different font and, occasionally, in blue.
70 The applicant also criticises OHIM for dismissing evidence of use, in particular for digital radios, merely because the use was not in relation to all of the goods and services contained in the specification of the goods in respect of which registration of the mark was sought. According to the applicant, the use shown of the mark is immense, with over GBP 30 million worth of retail sales occurring in the United Kingdom in the three years prior to September 2004, the vast majority of which was in relation to digital radios, such large sales being prima facie evidence that the mark has acquired distinctive character.
71 Further, the applicant claims that OHIM should not have dismissed the evidence of use merely because it related to a date after the application had been filed. Case T-247/01 eCopy v OHIM(ECOPY) [2002] ECR II-5301, paragraphs 36 to 43, does not provide support for the proposition relied upon by OHIM since, on that occasion, the Court erred in that it failed to consider Article 51(2) of Regulation No 40/94.
72 In fact, there is no requirement in that provision for the relevant use to have occurred after the date of registration of the mark, only that ‘after registration’ it has acquired a distinctive character. Similarly, it is possible for the mark to be acquiring distinctive character during the application process, so that it becomes distinctive by the time it is actually registered. That is less offensive than the situation envisaged in Article 51 of Regulation No 40/94, in which all the relevant use occurs after the date of registration. The applicant claims that it would be illogical, even from a commercial point of view, to place a narrow interpretation upon Article 51(2), such that a mark that was originally non-distinctive upon filing, but which had become distinctive before the date of actual registration, could be revoked, while one that had only become distinctive after that date could not.
73 It follows that the distinctive character of a mark needs to be determined at the date on which the decision is taken. Finally, the applicant maintains that there is no difference logically between a mark that has proceeded to registration quickly, but in error, and then subsequently became distinctive, and one that has proceeded slowly, during which time it acquired a distinctive character. Both marks make it possible for the consumer to identify the origin of the goods and services.
74 OHIM challenges the applicant’s arguments and maintains that the assessment of the Board of Appeal is correct, since the applicant should have shown not only use of the sign applied for, but in addition the fact that the relevant consumer understood the sign not as a descriptive term, but also as a trade mark.
Findings of the Court
75 Under Article 7(3) of Regulation No 40/94, the absolute grounds for refusal referred to Article 7(1)(b) to (d) of that regulation do not preclude registration of a trade mark if the mark has become distinctive, in relation to the goods or services for which registration is requested, in consequence of the use which has been made of it.
76 As regards the applicant’s argument relating to failure to take into account the evidence of use simply because the sign for which use was shown did not correspond exactly to the form for which registration was sought, it is sufficient to state that the Board of Appeal dismissed the evidence relating to the use of the mark on different grounds, namely that that evidence did not show that the mark applied for had acquired distinctive character for the consumer, on the one hand, and that it referred to a date after the trade mark application had been filed, on the other hand. It follows that the applicant’s argument is irrelevant.
77 As for the argument relating to failure to take into account the evidence of use on the ground that it related to a date after the application had been filed, it must be borne in mind that, according to settled case-law, a mark must have become distinctive through use before the application was filed (ECOPY, cited in paragraph 71 above, paragraph 36; Case T-8/03 El Corte Inglés v OHIM– Pucci (EMILIO PUCCI) [2004] ECR II-4297, paragraphs 71 and 72; and Case T-262/04 BIC v OHIM (shape of a lighter) [2005] ECR II-5959, paragraph 66). As was stated in ECOPY, cited in paragraph 71 above, at paragraphs 37 to 39, that interpretation is the only one compatible with the logic of the system of absolute and relative grounds for refusal in regard to the registration of Community trade marks, according to which the date of filing of the application for registration determines the priority of one mark over another. That interpretation also makes it possible to avoid a situation in which the applicant for a mark may take undue advantage of the length of the registration procedure in order to prove that his mark has become distinctive through use subsequent to the filing of the application.
78 The applicant errs in maintaining that it may rely on Article 51(2) of Regulation No 40/94 in order to challenge the soundness of that interpretation. That provision provides that, where a Community trade mark has been registered in breach of the provisions of Article 7(1)(b) to (d) of Regulation No 40/94, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character. That provision is justified by reason of the legitimate expectations of the proprietor of the mark who may, on the basis of those expectations, have made investments in the period which has elapsed since registration. By contrast, there are no legitimate expectations in the case where there is a mere application for registration, with the result that there is no call to take account of possible use of the mark subsequent to the filing of the application for registration.
79 It follows that the Board of Appeal was entitled in law to take the view that the evidence adduced by the applicant had to be dismissed inasmuch as it related to the period 2002 to 2004, which is subsequent to the date of the application for registration, namely 1 October 2001. Furthermore, that evidence does not allow any conclusions to be drawn on the usage of the mark as at the time when the application was filed (see, by analogy, orders in Case C-259/02 La Mer Technology [2004] ECR I-1159, paragraph 31, and in Case C-192/03 P Alcon v OHIM [2004] ECR I-8993, paragraph 41).
80 The third plea must accordingly be rejected as unfounded.
The other heads of claim
81 It follows from the foregoing that there is no longer any need to adjudicate on the applicant’s heads of claim for, first, annulment of the examiner’s decision and, second, remittal of the application for registration to OHIM (see, to that effect, judgment of 30 November 2006 in Case T-43/05 Camper v OHIM – JC (BROTHERS by CAMPER) not published in the ECR, paragraph 99).
82 It follows from all of the above considerations that the action must be dismissed.
Costs
83 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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, and OHIM has applied for costs, the applicant must be ordered to pay the costs.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders the applicant to pay the costs.
Delivered in open court in Luxembourg on 20 September 2007.