Joined Cases T-405/07 and T-406/07
Caisse fédérale du Crédit mutuel Centre Est Europe (CFCMCEE)
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark – Applications for Community word marks P@YWEB CARD and PAYWEB CARD – Absolute ground for refusal – Partial lack of distinctiveness – Article 7(1)(b) of Regulation (EC) No 40/94)
Summary of the Judgment
1. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Examination of the grounds for refusal in relation to each of the products or services referred to in the application for registration – Duty to state reasons for a refusal of registration – Scope
(Art. 253 EC; Council Regulation No 40/94, Arts 7(1) and 73)
2. Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks devoid of any distinctive character
(Art. 253 EC; Council Regulation No 40/94, Arts 7(1) and 73)
1. Article 7(1) of Regulation No 40/94 on the Community trade mark is to be interpreted as meaning that, first, an examination of the absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and that, secondly, the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services. This duty to state reasons also arises from the essential requirement for any decision of an authority refusing the benefit of a right conferred by Community law to be subject to judicial review which is designed to secure effective protection for that right and which, accordingly, must cover the legality of the reasons for the decision. However, where the same ground of refusal is given for a category or group of goods or services, that authority may use only general reasoning for all of the goods and services concerned.
None the less, the fact that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is able to use general reasoning with regard to the application of an absolute ground for refusal to a category or group of goods or services must not frustrate the objective of the duty to state reasons under Article 235 EC and the first sentence of Article 73 of Regulation No 40/94, which is to subject a decision refusing registration of a Community trade mark to effective judicial review. Accordingly, the goods or services concerned must be interlinked in a sufficiently direct and specific way, to the point where they form a category or group of goods or services sufficiently homogeneous to permit OHIM to use general reasoning. However, the mere fact that the goods or services in question come within the same class of the Nice Agreement is not sufficient for that purpose, since the classes often contain a wide variety of goods or services which are not necessarily interlinked in a sufficiently direct and specific way.
(see paras 54-55)
2. As regards the word signs P@YWEB CARD and PAYWEB CARD, the registration of which as Community trade marks is sought for certain goods in Class 9 of the Nice Agreement, it was not established to the requisite legal standard that those signs are incapable of fulfilling the essential function of a trade mark, namely indicating the commercial origin of the goods described as ‘magnetic data media’.
As regards the other goods in that class, with the exception of ‘integrated circuit cards (smart cards), magnetic encoded cards, magnetic or smart identity cards, magnetic or smart payment cards, both credit and debit’ and ‘coin-operated mechanisms for television sets’, the requirements of Article 253 EC or the first sentence of Article 73 of Regulation No 40/94 on the Community trade mark are not satisfied by the reasoning that, having regard to the fact that the trade marks sought are mainly intended to induce the consumer to purchase the goods and to use the services in question in order to be able to make on-line card payments, the goods all have the specific and necessary function of ensuring the operation of telecommunication services and banking and financial services which are indispensable to such payments. That reasoning does not enable the contested decisions to be submitted to effective judicial review of the legality of the finding that the trade marks sought were not distinctive, within the meaning of Article 7(1)(b) of Regulation No 40/94, in relation to the goods in question. Thus, on the basis of that very general and vague reasoning, and having regard to the great variety and the heterogeneity of the goods, the essential characteristics of which are not described in the contested decisions, it is impossible to verify whether there is a sufficiently direct and specific link between the various goods and cards enabling their holder to access a communication network to transmit information and to carry out transactions on-line, in order thus to determine whether the goods constitute a homogeneous group of goods which may be the subject of general reasoning.
As regards services described as ‘news agencies, in particular in the banking sector, communications by radio, communications by telephone, sending of telegrams, broadcasting of television programmes, radio broadcasting, television broadcasting, leasing of telecommunications equipment, leasing of equipment for the transmission of messages, leasing of telephones, cellular telephone communication, telephone services’, within Class 38 of the Nice Agreement for which registration of those signs is also sought, the requirements of Article 253 EC or the first sentence of Article 73 of Regulation No 40/94 are not satisfied by the reasoning that those services relate to a group of processes for transmitting electronic information and have an immediate link with the function and use of the internet and, more generally, new information technologies such that the ability to make payments on that network by means of a smart card constitutes a quality of those services. That reasoning does not enable the contested decisions to be subjected to effective judicial review. Thus, that general reasoning does not make clear either the reasons why those services come within a homogeneous group which could justify general reasoning or the reasons why, as regards the signs in question, they present, from the point of view of the reasonably well informed and reasonably observant and circumspect consumer, a sufficiently direct and specific link with on-line card payments.
(see paras 59, 65, 67-68, 70, 88-89, 91, 95)