JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
19 December 2019 (*)
(EU trade mark — International registration designating the European Union — Figurative mark ring — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EU) 2017/1001)
In Case T‑270/19,
Amazon Technologies, Inc., established in Seattle, Washington (United States), represented by A. Klett and C. Mikyska, lawyers
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 February 2019 (Case R 2211/2018-5), relating to the international registration designating the European Union in respect of the figurative mark ring,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira (Rapporteur), President, D. Gratsias and M. Kancheva, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 23 April 2019,
having regard to the response lodged at the Court Registry on 16 July 2019,
having regard to the fact that no request for a hearing was submitted by the parties within three 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 21 September 2017, Ring Inc., the subsequent legal successor of which being first A9.com, Inc. and then the applicant, Amazon Technologies, Inc., designated the European Union for international registration No 1401009 of the figurative mark ring. That registration was notified to the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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 The trade mark that is the subject of the international registration designating the European Union is the following figurative sign:
3 The goods and services in respect of which registration was sought as an EU trade mark are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9, 35, 37, 42 and 45 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, in particular, for Class 9, to the following description:
– Class 9: ‘Consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled doorbells; electronic doorbells; electronic doorbells with a camera allowing persons to identify who is at their door from remote locations; motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; 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; speakers; wireless local area network enabled speakers; customisable electronic speakers; computer application software for use in controlling and managing speakers, wireless local area network enabled speakers, customisable electronic speakers; luminous signs; electric signs; electronic signs; backlit signs; lighting controllers; lighting control apparatus; electric control devices for lighting fixtures; computer software for sharing videos; computer application software for sharing videos; computer application software for mobile phones and other mobile devices, namely, software for sharing videos’.
4 By decision of 18 September 2018, the examiner partially refused the application for registration as an EU trade mark on the grounds of Article 7(1)(b) and (c) and (2) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001) in so far as it concerned the following goods in Class 9: ‘Consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled doorbells; electronic doorbells; electronic doorbells with a camera allowing persons to identify who is at their door from remote locations; motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance’.
5 On 13 November 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the examiner’s decision.
6 By decision of 12 February 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal and upheld the examiner’s decision.
7 In the first place, the Board of Appeal held that the relevant public, in view of the nature of the goods for which registration as an EU trade mark was refused, was composed, one the one hand, of the average consumer who is reasonably well informed and reasonably observant and circumspect and, on the other hand, of a professional public with a high level of attention. The Board of Appeal also held that since the mark applied for consisted of a readily identifiable English word, the relevant public consisted not only of the public in the Member States in which English is an official language, that is, Ireland, Malta and the United Kingdom, but also the public in the Member States where English is largely understood, such as Denmark, the Netherlands, Finland and Sweden, especially as regards the professional public.
8 In the second place, the Board of Appeal observed that the mark applied for consisted of the English word ‘ring’ and that that word meant to ‘make a clear resonant or vibrating sound’.
9 In the third place, the Board of Appeal stated that the goods in question had a sufficiently direct and specific link between them such that they formed a homogeneous group.
10 In the fourth place, the Board of Appeal held that the mark applied for, associated with the goods in question, would be perceived by the relevant public as an indication that all the goods in question are likely to emit a clear resonant or vibrating sound. The Board of Appeal also held that, since the mark applied for merely informed consumers of the functionality of the goods in question, it was purely descriptive.
11 In the fifth place, the Board of Appeal also held that the graphic elements used were not such that they could divert the relevant public’s attention away from the descriptive information provided by the word element ‘ring’.
12 In the sixth place, the Board of Appeal stated that it was not bound by EUIPO’s previous decision-making practice.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs, including those incurred before the Board of Appeal.
14 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
15 The applicant relies, in essence, on three pleas in law.
16 The first plea alleges infringement of Article 7(1)(b) of Regulation 2017/1001. The second plea alleges infringement of Article 7(1)(c) of Regulation 2017/1001. The third plea alleges infringement of the first sentence of Article 94(1) of Regulation 2017/1001.
17 The Court considers it appropriate to examine, in the first place, the third plea, in the second place, the second plea and, if necessary, the first plea.
The third plea, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001
18 The applicant claims, essentially, that the Board of Appeal failed to fulfil its obligation to state reasons, first, by failing to substantiate its refusal to register all the goods in question, and by not giving reasons for categorising them into one homogeneous group.
19 EUIPO disputes the applicant’s arguments.
20 It should be recalled that, under the first sentence of Article 94 of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based.
21 The obligation to state reasons, as thus laid down, has the same scope as that deriving from Article 296 TFEU, according to which the statement of reasons must disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable the persons concerned to ascertain the reasons for it and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see judgment of 18 March 2016, Karl-May-Verlag v OHIM — Constantin Film Produktion(WINNETOU), T‑501/13, EU:T:2016:161, paragraph 53 and the case-law cited).
22 According to the case-law, where registration of a mark is sought in respect of various goods or services, the Board of Appeal must determine specifically that none of the grounds for refusal of registration applies to the mark in question. Therefore, when refusing registration of a trade mark, the Board of Appeal is obliged to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated (see judgment of 2 April 2009, Zuffa v OHIM, (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 27 and the case-law cited).
23 However, as regards that last requirement, the Court of Justice has stated that the competent authority may use only general reasoning for all of the goods and services concerned where the same ground for refusal is given for a category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30 and the case-law cited).
24 The Court of Justice then made clear that such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 31 and the case-law cited).
25 In order to determine whether the goods and services are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogeneous categories and groups, 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 whether or not the mark concerned by the application for registration comes under one of the absolute grounds for refusal (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 32).
26 Accordingly, 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 to 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 (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 33).
27 In the light of those considerations it must be assessed whether, as claimed by the applicant, the Board of Appeal failed, in this case, to fulfil its obligation to state reasons.
28 In the first place, as regards the complaint that the Board of Appeal did not give reasons why the goods in question formed a homogeneous group, it must be pointed out, first, that the Board of Appeal, in paragraph 28 of the contested decision, drew attention to the examiner’s assessment, according to which the goods in question had a sufficiently direct and specific link to each other to the extent that they formed a homogeneous group. All the goods could sound and ring whenever their motion detectors were set off and sensed someone breaching a private zone.
29 Secondly, the Board of Appeal, in paragraph 30 of the contested decision, noted that the goods in question, whether doorbells, motion sensors, video monitors or video cameras, had a clearly specified purpose, namely of monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance.
30 Thirdly, the Board of Appeal, in paragraph 34 of the contested decision, upheld the examiner’s decision according to which the goods in question had a sufficiently direct and specific link to each other to the extent that they formed a homogeneous group.
31 It follows from those considerations that the Board of Appeal, in the contested decision, did give reasons why the goods in question formed a homogeneous group, which could be the subject of general reasoning. That complaint must therefore be rejected as unfounded.
32 In the second place, as regards the complaint that the Board of Appeal did not substantiate its refusal for all the goods in question, it must be pointed out that, first, the Board of Appeal, in paragraph 31 of the contested decision, stated that the relevant consumer will see the mark applied for, when linked with ‘consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance’, as an indication that those goods include an alarm system, producing, in particular, a clear resonant or vibrating sound.
33 Secondly, the Board of Appeal stated, in paragraph 32 of the contested decision, that the relevant consumer will perceive the mark applied for, when linked with ‘motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance’ and ‘electronic wireless LAN enabled motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance’, as an indication that those goods include an alarm system, producing, in particular, a clear resonant or vibrating sound.
34 Thirdly, the Board of Appeal stated, in paragraph 33 of the contested decision, that the mark applied for, when linked to ‘doorbells, namely electronic wireless LAN enabled doorbells; electronic doorbells; electronic doorbells with a camera allowing persons to identify who is at their door from remote locations’, directly informs the relevant consumer of the very nature of those goods, which is to produce a clear resonant or vibrating sound.
35 It follows from those considerations that the Board of Appeal, in the contested decision, did substantiate its refusal to register the mark applied for in respect of all the goods in question. That complaint must therefore be dismissed as unfounded.
36 It results from all of the foregoing that the Board of Appeal did not fail, in this case, to fulfil its obligation to state reasons.
37 Accordingly, the present plea must be dismissed as unfounded.
The second plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
38 The applicant claims, essentially, that the mark applied for is not descriptive for the goods in question. If anything, the mark is suggestive or allusive. None of the goods in question has the purpose or functional characteristic of producing a clear resonant or vibrating sound. The ‘video monitors’ and ‘video cameras’ are merely intended to produce and convey images. The ‘motion sensors’ serve the purpose of detecting motion. A ringing function is not part of their nature. The ‘doorbells’ are a button outside a building that can be pressed by visitors to signal their arrival. Therefore, the mark applied for, when linked to those goods, is perceived by the relevant consumer as a ‘ring doorbell’, so it is not viewed as being descriptive.
39 EUIPO disputes the applicant’s arguments.
40 In that regard, it should be noted that, under Article 7(1)(c) of Regulation 2017/1001, ‘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. Moreover, Article 7(2) of Regulation 2017/1001 states that its first paragraph applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
41 According to the case-law, Article 7(1)(c) of Regulation 2017/1001 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as European Union trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (see judgment of 18 September 2015, Bundesverband Deutsche Tafel v OHIM — Tiertafel Deutschland (Tafel), T‑710/13, EU:T:2015:643, paragraph 15 and the case-law cited).
42 Furthermore, signs or indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 2017/1001, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 18 September 2015, Tafel, T‑710/13, EU:C:2015:643, paragraph 16 and the case-law cited).
43 The signs and indications referred to in Article 7(1)(c) of Regulation 2017/1001 are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (see judgment of 18 September 2015, Tafel, T‑710/13, EU:C:2015:643, paragraph 17 and the case-law cited).
44 It follows that, in order for a sign to be caught by the prohibition set out in the abovementioned provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 18 September 2015, Tafel, T‑710/13, EU:C:2015:643, paragraph 18 and the case-law cited).
45 It is also important to bear in mind that the descriptiveness of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, secondly, by reference to the perception of the public targeted, which is composed of consumers of those goods or services (see judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 41 and the case-law cited).
46 It is in the light of those considerations that it must be assessed whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001, in finding that the trade mark applied for was descriptive of the functionality of the goods in question.
47 In the present case, the Board of Appeal held that the relevant public, in view of the nature of the goods in question, was composed of the average consumer who is reasonably well-informed and reasonably observant and circumspect and a professional public with a high level of attention. The Board of Appeal also held that since the mark applied for consisted of a readily identifiable English word, the relevant public consisted not only of the public in the Member States in which English is an official language, that is, Ireland, Malta and the United Kingdom, but also the public in the Member States where English is largely understood, such as Denmark, the Netherlands, Finland and Sweden, especially as regards the professional public. Those findings on the part of the Board of Appeal, which are not, moreover, disputed by the applicant, must be upheld.
48 The Board of Appeal observed, without this being disputed by the applicant, that the mark applied for consisted of the English word ‘ring’ and that that word meant to ‘make a clear resonant or vibrating sound’.
49 The Board of Appeal stated that the goods in question, which were mainly doorbells, motion sensors, monitoring equipment, namely video monitors and video cameras, had a clearly specified purpose, namely of monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance.
50 The Board of Appeal held that the mark applied for, associated with the goods in question, will be perceived by the relevant public as an indication that all the goods in question include an alarm system producing, in particular, a clear resonant or vibrating sound.
51 The Board of Appeal thus concluded that the mark applied for merely informed consumers of the functionality of the goods in question and it was, accordingly, of a purely descriptive nature.
52 Contrary to what the applicant maintains, that conclusion of the Board of Appeal must be upheld.
53 In this respect, it should be recalled that it is apparent from the wording of Article 7(1)(c) of Regulation 2017/1001 that a mark which designates a characteristic of the goods in question is considered to be descriptive.
54 It should also be recalled that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics. In that regard, it must be stated that the fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to that article are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation 2017/1001 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 32 and the case-law cited).
55 In the present case, the Board of Appeal corrected stated that the verbal element ‘ring’, which means in particular to ‘make a clear resonant or vibrating sound’, immediately informed the consumers, without their further thought, that the goods in question, ‘doorbells, motion sensors, monitoring equipment, namely video monitors and video cameras’, include a system to enable them to produce a clear resonant or vibrating sound.
56 The mark applied for is therefore, contrary to what the applicant claims, not suggestive or allusive, but it is descriptive of the intended purpose of the goods in question, whose function is to allow the monitoring of the interior and exterior of homes, retail stores, or offices for security and surveillance.
57 That conclusion by the Board of Appeal cannot be called into question by the applicant’s argument that none of the goods in question had the purpose or functional characteristic of producing a clear resonant or vibrating sound.
58 As regards, first, the ‘motion sensors and monitoring equipment, namely, video monitors and video cameras’, the fact that those goods serve the purpose of detecting motion and producing images does not preclude those goods, which are intended for security and monitoring, from including an alarm system that produces a clear resonant or vibrating sound when the goods detect motion or intrusion in a monitored area.
59 Even supposing the applicant’s argument were established, the fact that the mark applied for describes a characteristic which, at the current stage of the technology, does not exist, does not preclude it being perceived as descriptive by the relevant public (see judgment of 16 October 2014, Larrañaga Otaño v OHIM, (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 21 and the case-law cited).
60 Accordingly, in order to refuse the application for registration of the mark applied for on the basis of Article 7(1)(c) of Regulation 2017/1001, it is sufficient to find that, as stated above, in one of its possible meanings, the mark applied for designates a characteristic of the goods in question, regardless of whether or not such goods are currently on the market or not (judgment of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 22).
61 As regards, secondly, the ‘doorbells’, it is sufficient to state that the relevant consumer, for whom no translation is necessary, will understand immediately the meaning of the sign ring and immediately make a link between that sign and the very nature of the goods in question.
62 Consequently, the Board of Appeal was correct in finding that the mark applied for was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001.
63 The present plea must therefore be dismissed as unfounded.
The first plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
64 The applicant claims, essentially, that the mark applied for has sufficient distinctive character for it to be registered. The mark applied for was not descriptive for the goods in question. It was not a widespread view that an alarm system that emits a sound meant that that system was regarded as fully effective. Moreover, EUIPO had already registered various other marks containing the term ‘ring’. Consequently, the mark applied for did have sufficient distinctive character.
65 EUIPO disputes the applicant’s arguments.
66 In that regard, it should be recalled that, as stated in Article 7(1) of Regulation 2017/1001, it is sufficient if one of the absolute grounds for refusal listed in that provision applies for the sign not to be registrable as an EU trade mark (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29).
67 In view of the conclusions resulting from the examination of the second plea, it is not necessary to examine the merits of the first plea, based on the infringement of Article 7(1)(b) of Regulation 2017/1001.
68 In the light of all the foregoing considerations, the action must be dismissed in its entirety as unfounded.
Costs
69 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.
70 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 Amazon Technologies, Inc. to pay the costs.
Delivered in open court in Luxembourg on 19 December 2019.