JUDGMENT OF THE GENERAL COURT (Third Chamber)
6 July 2011 (*)
(Community trade mark – Application for Community word mark BETWIN – Absolute grounds for refusal – Descriptive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 – Duty to state reasons – Equal treatment – Article 49 EC)
In Case T‑258/09,
i-content Ltd Zweigniederlassung Deutschland, established in Berlin (Germany), represented initially by A. Nordemann, and subsequently by A. Nordemann and T. Boddien, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Schäffner, acting as Agent,
defendant,
ACTION for the annulment of the decision of the Fourth Board of Appeal of OHIM of 4 May 2009 (Case R 1528/2008‑4) concerning an application for registration of the word sign BETWIN as a Community trade mark,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz (Rapporteur), President, I. Labucka and K. O’Higgins, Judges,
Registrar: C. Heeren, Administrator,
having regard to the application lodged at the Registry of the General Court on 6 July 2009,
having regard to the response lodged at the Court Registry on 7 October 2009,
having regard to the reply lodged at the Court Registry on 6 January 2010,
further to the hearing on 30 November 2010,
gives the following
Judgment
Background to the dispute
1 On 20 April 2008 the applicant, i-content Ltd Zweigniederlassung Deutschland, filed at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), an application for registration as a Community trade mark of the word sign BETWIN 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The services in respect of which registration was sought fall within Classes 35, 38 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 35: ‘Advertising; business management services; business administration; business consultancy; office functions; economic forecasting and analysis; behavioural studies; marketing; direct marketing; marketing studies; public relations; business appraisals; business management and organisation consultancy; sales promotion for others; marketing of advertising matter; agency, namely, brokerage of product sale and purchase agreements; systematisation of information into computer databases; business information; book-keeping, book-keeping services; rental of advertising slots for the media; direct mail advertising; document reproduction; opinion polling; editing of advertising material; collection and compilation of press articles by subject; word processing; business brokerage for others; operation of a call centre for customer sales, advice and service; development of projects for commercial, organisation and advertising purposes; sponsorship for advertising purposes; design and development of radio and television programmes for organisation and advertising purposes; organisation and holding of exhibitions for economic and advertising purposes; conception and development of shows, games, lotteries, competitions, balls, draws, contests for commercial, organisation and advertising purposes; development of communication systems, data processing networks, databases and algorithms, in particular on the internet and for the internet, for commercial and organisation purposes; advertising material (rental); consultancy (personnel management); economic research and surveys; organisation of auctions; commercial surveys; advertising by mail order; compilation of business assessments; value estimates; cost/utility analyses; price agency services; business consultancy services; television advertising; business information; market and marketing studies; business planning; document reproduction; publication of publicity texts; computerised management of databases; (reproduction) of documents; business supervision; file management by computer; (operation of) import-export agency; business research; collection, compilation and dissemination of economic information, statistics, computer databases and other economic information; market analysis; rental of advertising space; marketing studies; publicity material rental; presentation of goods for advertising purposes; advertising agency (services): poster advertising; (organisation of) exhibitions and fairs for economic and advertising purposes; distribution of samples of goods for advertising purposes; rental of vending machines; (compilation of) economic forecasts; creation of advertisements for others; on-line advertising on a computer network; (making) transcriptions; procurement services for others (purchasing goods and services for other businesses); modelling for advertising and promotional services; search in computer files (on behalf of others); collection and compilation of press articles according to subject; photocopying; (personnel) recruitment; selection of personnel with the aid of psychological aptitude tests; holding of fairs for commercial or advertising purposes; placing of advertisements on behalf of others; (compilation of) data in computer databases; invoicing; direct advertising; compilation of data in computer databases; radio advertising; photocopies; audiovisual presentation for advertising purposes; (advertising by) written advertising material; (distribution of) direct mail advertising (tracts, prospectuses, printed matter, samples)’;
– Class 38: ‘Telecommunications; radio and television broadcasting, also through cable networks; collection and supply of information; news agencies; creation or provision of communication protocols to enable data exchange or data transmission between two or more communication partners; provision of an electronic box; message sending; computer aided transmission of messages and images; provision of access to a database for downloading data via electronic media (internet); provision of electronic mail services; radio broadcasting; telephone and teletext services; videotex service; broadcasting, diffusion and transmission of images, sound information, graphics, data and other information by radio, telecommunication devices, electronic media or the internet; access to databases on the internet; electronic advertising services (telecommunications); provision of telecommunication equipment for ordering goods and services by means of the electronic communication of data; satellite transmission; local and long distance, reminder, international and mobile telephone services; teleshopping broadcasting; (information about) telecommunications; providing telecommunications connections to a global computer network; sending messages on computer networks; operation of networks for transmitting messages, images, texts, voice, signals and data; collection and provision of press messages; provision of access to databases; internet broadcasting; receiving and sending messages, documents and data by electronic transmission; retransmission of telephone calls or telecommunication messages; (electronic) message sending; notice boards and electronic boards of messages on subjects of general interest; videotransmission services; broadcasting and transmission of information on networks and on the internet; phone conference services; cordless electronic transmission of voice, data, faxes, images and information; broadcasting of cine-films and audiovisual programmes; broadcasting and transmission of texts, messages, information, sound, image and data; visiotelephony services; radio broadcasting; broadcasting of subscription television programmes; on-line services and on-line transmissions, namely transmission of voice, image and video information and provision of visiotelephonic conferences and videoconferences’;
– Class 41: ‘Translations; education; formation; training; entertainment; sporting and cultural activities; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums, workshops and exhibitions of all kinds for cultural and educational purposes; entertainment events; producing, organising and holding shows, games, lotteries, competitions, balls, draws, contests of all kinds; film production; producing shows, radio and television programmes; publishing texts and books; operating golf ranges, amusement, holiday and leisure parks; operating a theatre, sports centre, sports hall, stadium and premises for organising musical and sports shows and other entertainments; rental of equipment and articles used in the education, formation, training, entertainment, sports and culture sector; publishing, disseminating and editing informative documents of all kinds; operating fitness clubs; gaming halls; operation of casinos; musical production; image and sound recordings; services to sports, games, betting and lottery establishments, including on and via the internet; provision of sport, games, betting and lottery equipment, including on and via the internet; provision of on-line information relating to games, in particular on-line computer games and computer extensions for games; arranging the booking of tickets for shows and other entertainment events; news reporting services; sport and leisure services; producing and presenting radio and television programmes, films, shows and live entertainment programmes; lottery services; provision of computer games to which users have access via a global computer network and/or the internet; sports centre services; producing teleshopping programmes; information programmes for radio and television; provision of information on leisure activities; computerised formation and training services; operating music, sound, film, video and television studios; services relating to health and fitness clubs; cinema, musical, sporting, video and theatre entertainments; arranging golf tournaments; operation of gaming halls; electronic publication of books and magazines on-line; bookings for entertainment events; information programmes designed to be transmitted on the internet; direct sale of television programmes to several channels; interactive games, interactive entertainments and contests and also electronic quizzes and games of chance, all provided via a global computer network or the internet; organising and conducting shows and contests in the sporting and cultural fields; television studio services; photographic services; operating gaming halls; editorial services; provision of information relating to entertainment via computer networks; operating and organising fan clubs; fitness club services; organising live performances; provision of interactive computer games for several players via the internet and electronic communication networks; rental of audiovisual recordings; organising sporting events and providing equipment for that purpose; information concerning sport, sporting events and other current events; electronic games and contests provided via the internet; sports monitoring services; operation and organisation of casinos, games of chance, card games, bets, sports betting, games of skill and games in general; games offered on-line via a computer network; organisation of games and contests; provision of information relating to video games, computes games, amusement machines, amusement centres or amusement parks via telecommunications or computer networks; provision of on-line information relating to amusements from a computer database or from the internet; reservations of cards and reservations for recreational, sports and cultural events; organising horse races; operation of casinos; provision of online computer games; operation of gaming halls with amusement machines and of casinos and betting and lottery centres of all kinds; publication of statistics’.
3 By decision of 10 September 2008, the examiner rejected the application for all the services at issue pursuant to Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 7(1)(b) and (c) of Regulation No 207/2009).
4 On 22 October 2008, the applicant filed an appeal against the examiner’s decision under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
5 By decision of 4 May 2009 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal on the ground that the word sign BETWIN was descriptive in respect of all the services covered for the purposes of Article 7(1)(c) of Regulation No 207/2009, and was devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation.
6 As regards the descriptive character, the Board of Appeal stated that its assessment was based on the meaning of the word sign in English and, accordingly, on its perception in the English-speaking regions of the Union. It held, in essence, that, taken as a whole, the combination of the elements ‘bet’ and ‘win’ evoked the possibility of ‘betting and winning’ and that it was a word composed in accordance with the rules of English, the a priori clear meaning of which was in no way altered by the omission of the word ‘and’. Moreover, according to the Board of Appeal, the meaning of that composite word is directly understandable, because the word sign at issue suggests directly and without any analytical effort to the end consumer affected by the offers of bets and competitions that the services offered enable him to bet in order to win something (paragraphs 15 to 17 of the contested decision). It also considered that the sign was a combination of two verb forms which, in their interaction, gave information regarding the nature and purpose of the designated services and therefore cannot be other than descriptive (paragraph 18 of the contested decision). Moreover, it rejected the other interpretation of the word sign for which registration was sought, namely ‘be twin’, because ‘be twin’ is a message which is irrelevant in relation to the services concerned (paragraph 19 of the contested decision).
7 As for the services covered by the trademark applied for, the Board of Appeal concluded, in paragraph 20 of the contested decision, that they concerned, in essence, services in the sector of games of chance and bets, which were designed to enable the end consumer to place bets and make gains. It also held, in paragraph 21 of the contested decision, that modern marketing associated in various ways sales and the random opportunity to make gains, referring, inter alia, to television channels and offers on the internet providing elements of games of chance and betting to promote sales, and also to teleshopping channels. The Board of Appeal also pointed out, in paragraph 22 of the contested decision, that the betting and competitions sector had become a sector which generated a significant turnover, not all of the offers of which could be described as genuine. Moreover, it is apparent from paragraph 23 of the contested decision that, according to the Board of Appeal, the services for which registration is sought include services of a technical nature required in order to effect the sale of bets and competitions in respect of which the trademark applied for is also descriptive, since they make it possible to satisfy the technical conditions for implementing bets and competitions and may also be an essential aspect of gaming and entertainment events, including, for example, in connection with television broadcasts. As for the services in Class 35, the Board of Appeal held, in paragraph 24 of the contested decision, inter alia, that they concern business and statistical statements, which are indispensable, from the point of view of the person proposing a bet, in order to be able to calculate the risk, that is to say the relationship between the chance of winning, which is the subject matter of a drawing by lot, and the probability of the events to which the bet relates. With regard to the other services, in particular those in Class 35, it concluded, in paragraph 25 of the contested decision, that they concerned very generally the promotion of sales and that, since the application for registration concerned the services at issue in a very general way, the rejection had to be confirmed for those services as a whole, and it held that, furthermore, all the services were inseparably linked.
8 The Board of Appeal also held, in paragraph 26 of the contested decision, that the applicants had also failed to refer before the Board to the registrations of trademarks which might be comparable, adding that, in any event, the examiner was entitled to take them into consideration without according them a binding effect.
9 Insofar as concerns Article 7(1)(b) of Regulation No 207/2009, the Board of Appeal held, in paragraph 27 of the contested decision, that, as a descriptive indication whose meaning could be understood by anyone, even without specialised knowledge or analytical effort, the word sign for which registration was sought was also devoid of any distinctive character. It considered, moreover, that it conveyed only a general incitement to participate in certain bets or games, or to obtain financial advantages in the form of gains, without specifying any link with a specific provider and was therefore devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
Forms of order sought by the parties
10 The applicant claims that the Court should:
– annul the contested decision and also the examiner’s decision;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
12 At the hearing, in reply to a question from the Court, the applicant stated that it was withdrawing its first head of claim in so far as it sought the annulment of the examiner’s decision.
Law
13 In support of its application, the applicant puts forward four pleas in law, alleging, respectively, infringement of Article 7(1)(c) of Regulation No 207/2009, infringement of Article 7(1)(b) of that regulation, infringement of Article 83 of the same regulation, in conjunction with the principle of equal treatment, and also of Articles 6 and 14 of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950, ‘the ECHR’, and infringement of Article 49 EC.
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
Arguments of the parties
14 The applicant maintains that the Board of Appeal was wrong to conclude that the mark applied for was descriptive. It claims that the mark is a lexical invention which is not descriptive overall and is unusual in its structure, because the combination of two verbs is unusual in English. According to the applicant, it is impossible to find examples of the addition of a verb or noun after the word ‘bet’ to constitute a composite word. Furthermore, the mark applied for is likewise not constituted by a juxtaposition of words usually formed in English, such as the combination of the words ‘bet’ and ‘win’.
15 According to the applicant, the alleged descriptive character of the mark applied for cannot be justified by the fact that the betting and gaming sector has meanwhile become very buoyant.
16 The applicant also claims that the Board of Appeal did not analyse properly its argument that the mark applied for could also be read as a combination of the words ‘be’ and ‘twin’, as in the case of beTwin software, and let itself be guided by the mistaken hypothesis that the average consumer always looks for the descriptive meaning of a mark first.
17 The applicant then points out, in the alternative, that the conclusion concerning a possible descriptive character of the mark applied for is at most justified for the services which relate directly to the supply of betting and gaming services.
18 OHIM contests the applicant’s arguments and maintains that the term ‘betwin’ is descriptive.
19 Concerning, in particular, the services which are the subject of the application for registration, OHIM points out that the word sign BETWIN has a descriptive character in relation to the services of the sector of games of chance and for the services covered by the trademark application which are of a technical nature and which are required in order to create and sell bets and competitions. It states that all the services in Classes 35, 38 and 41 covered by the application are inseparably linked and that there is at the very least a close and inseparable link between those services and sporting and other bets, games of chance, lotteries, competitions or the like, and what is more, that those services expressly involve the accomplishment of the latter.
Findings of the Court
20 Under Article 7(1)(c) of Regulation No 207/2009, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered. According to Article 7(2), ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
21 According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (see Case T‑458/05 Tegometall International v OHIM – Wuppermann (TEK) [2007] ECR II‑4721, paragraph 77 and the case-law cited, and Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 86).
22 The signs referred to by Article 7(1)(c) of Regulation No 40/94 are deemed 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 acquires the goods or service covered 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 Case T‑348/02 Quick v OHIM (Quick) [2003] ECR II-5071, paragraph 28 and the case-law cited; Mozart, paragraph 21 above, paragraph 87; see also, to that effect, Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, paragraph 30).
23 The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the point of view of the relevant public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (see Case T‑19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II‑2383, paragraph 24 and the case-law cited; Mozart, paragraph 21 above, paragraph 88).
24 It follows that, for a sign to be caught by the prohibition set out in that provision, 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 (see PAPERLAB, paragraph 23 above, paragraph 25 and the case-law cited).
25 It is also important to bear in mind that the descriptiveness of a sign may be assessed only, firstly, in relation to the understanding of the sign by the relevant public and, secondly, in relation to the goods or services concerned (see Case T‑316/03 Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices) [2005] ECR II-1951, paragraph 26 and the case-law cited).
26 In the present case, as regards the public in relation to which it is necessary to assess the absolute grounds for refusal at issue, the Board of Appeal held, in essence, that it was constituted by the average consumer, which, moreover, the applicant does not dispute. Moreover, in view of the fact that the word sign BETWIN is made up of words in the English language, the Board of Appeal rightly considered that it had a descriptive character, in particular from the point of view of the English-speaking public.
27 It is therefore appropriate to examine whether, from the point of view of that public, there is a sufficiently direct and specific relationship between the word sign at issue and the services for which registration has been sought.
28 As for the services concerned, it is apparent from paragraph 2 above that they fall within Classes 35, 38 and 41. The parties rightly agree that they include, on the one hand, services designed to offer bets or games played for money and, on the other hand, services which do not have a direct link with that sector. In relation to the latter, the applicant maintains, in the alternative, that the trade mark applied for cannot, in any event, be regarded as descriptive in their regard. The Court considers that it is necessary to examine first the legality of the contested decision in relation to the former category of services, which are designed to offer bets or games played for money.
– The descriptive character of the mark applied for in relation to services which concern the offer of bets or games played for money.
29 It should be pointed out that, for a trade mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must also be found to be so (PAPERLAB, paragraph 23 above, paragraph 26; Case T‑207/06 Europig v OHIM (EUROPIG) [2007] ECR II‑1961, paragraph 28, and judgment of 25 March 2009 in Case T‑343/07 allsafe Jungfalk v OHIM (ALLSAFE), not published in the ECR, paragraph 22).
30 A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 40/94, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that regard, the analysis of the term in question in the light of the appropriate lexical and grammatical rules is also relevant (see ALLSAFE, paragraph 29 above, paragraph 23 and the case-law cited).
31 With regard to the comprehension of the mark applied for by the relevant public in the present case, as the Board of Appeal states in paragraph 16 of the contested decision, thus confirming the examiner’s analysis, the mark applied for is composed of two English words, ‘bet’ and ‘win’. Those are common terms in the English language, which, furthermore, the applicant does not dispute.
32 As for the combination of those two words, the Board of Appeal stated, in paragraphs 16 and 17 of the contested decision, that, taken as a whole, it invoked the opportunity of ‘betting and winning’. It maintains that that combination is directly understandable by the relevant public and that there is, furthermore, a close link between the meanings of the two words: a person bets in order to win and, in order to win, it is necessary first to have placed a bet. This assessment has to be confirmed. Indeed, as the Board of Appeal points out, the omission of the word ‘and’ detracts nothing from the clear meaning of the composite word ‘betwin’. Whether it is interpreted as a series of two nouns, two infinitives or two verbs in the imperative mood, it is not an unusual or arbitrary combination the meaning of which departs from that of the simple sum of the elements of which it is composed.
33 Concerning the services at issue, the Board of Appeal cites as examples, in paragraph 20 of the contested decision, the services corresponding to the following description: ‘conception and development of events, games, lotteries, contests, balls, drawings by lot, competitions of all kinds; gaming halls; operation of casinos; services to sports, games, betting and lottery establishments, including on and via the internet; provision of sport, games, betting and lottery equipment, including on and via the internet; operation of gaming halls; provision of interactive computer games; operation and organisation of casinos, games of chance, card games, bets, sports betting, games of skill; gaming machines; operation of casinos, operation of gaming halls; operation of betting and lottery centres of all kinds’ (‘the services referred to in paragraph 20 of the contested decision’).
34 In relation to the three classes of services covered by the trade mark application, as recalled in paragraph 2 above, namely Classes 35, 38 and 41, it should be pointed out that the list of services in Class 35 includes services of ‘conception and development of shows, games, lotteries, competitions, balls, draws, contests for commercial, organisation and advertising purposes’, which, since they are almost identical to the services mentioned in paragraph 20 of the contested decision, are covered by the arguments of the Board of Appeal set out in the aforementioned paragraph 20, even though the contested decision does not expressly say so. As for Class 38, none of the services listed therein correspond to those mentioned in paragraph 20 of the contested decision. Concerning the services in Class 41, it should be pointed out that some of these are mentioned in paragraph 20 of the contested decision (see paragraph 33 above).
35 It should be pointed out that, with regard to the services in the betting and gaming sector, as described in the two previous paragraphs, the Board of Appeal rightly considered, in paragraph 20 of the contested decision, that the purpose of those services was to enable the end consumer to place bets and to make gains. With regard to those services, the consideration in paragraph 32 above, that there is no perceptible difference between the neologism ‘betwin’ and the simple sum of the elements of which it is composed, is therefore perfectly relevant. Indeed, as the Board of Appeal points out in paragraph 18 of the contested decision, in their interaction, the terms ‘bet’ and ‘win’ provide clear information regarding the purpose of the services at issue and on the circumstances of their use, so that they are descriptive in regard to those services. Similarly, as regards services of that nature, the composite term ‘betwin’ will evoke for the relevant public the possibility of betting and winning.
36 None of the arguments raised by the applicant casts doubt on that assessment.
37 Contrary to what it claims, the fact that the combination of two verbs is unusual in English and that the lexicon contains no combinations of the word ‘bet’ with another word does not mean that the combination of the words ‘bet’ and ‘win’, in the present case, does not, for the relevant public, have an immediately perceptible meaning or that that combination causes any difficulty in comprehension. Indeed, in view of the close relationship between the two terms, the omission of the word ‘and’ or of the ampersand will not prevent them from understanding that the services offered allow them to place a bet in order to win. In any event, as the Board of Appeal points out in paragraph 15 of the contested decision, the fact that it is a combination of words written in a single expression, with no hyphen or space is not a determining factor, nor, moreover is the fact that it is a term which is not found in the language (see, to that effect and by analogy, Case T‑345/99 Harbinger v OHIM (TRUSTEDLINK) [2000] ECR II‑3525, paragraph 37 and the case-law cited).
38 As for the applicant’s argument that the descriptive character of the trademark applied for cannot be justified by the fact that the betting and gaming sector has meanwhile become very buoyant, it should be pointed out that, even though the Board of Appeal did indeed note, in paragraph 22 of the contested decision, the fact that the sector at issue generates a significant turnover and raises legal questions relating to consumer protection, it did not, however, draw any conclusions from that for assessing the descriptive character of the mark applied for in relation to the services falling within the betting and gaming sector.
39 Concerning the argument that there is software called ‘beTwin’ and that the mark applied for could therefore be read by the relevant public as a combination of the words ‘be’ and ‘twin’, it should be pointed out that, as OHIM states, a word sign must be refused registration, under Article 7(1)(c) of Regulation No 207/2009, if at least one of its possible meanings designates a characteristic of the goods or services concerned (OHIM v Wrigley, paragraph 22 above, paragraph 32, and Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 38). Taking into account also the fact that it is necessary to disregard the particular style of the designation of the software at issue, beTwin, in the context of an application for a word mark which may be written in various ways, it is apparent from that case-law that a particular actual use of the composite word at issue in a specific sector does not preclude, where there are services having a direct link with the betting and gaming sector, the term ‘betwin’ being understood as a reference to the possibility of betting and winning.
40 It is apparent from the foregoing that it is necessary to confirm the conclusion of the Board of Appeal that the mark applied for, BETWIN, is descriptive, within the meaning of Article 7(1)(c) of Regulation No 207/2009, of the services whose purpose is to offer bets or games played for money.
– The descriptive character of the mark applied for in relation to services which do not concern the offer of bets or games played for money
41 The Board of Appeal states, in paragraph 25 of the contested decision, that the wording of the services covered is such that they are inseparably linked. Moreover, it states that it is impossible, on the basis of the very long list of services in Classes 35, 38 and 41, to identify those which have no connection with the bets or competitions and those which have only a random connection with those bets or competitions.
42 In that regard, the Court of Justice has stated, first, that the 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, second, that the decision by which OHIM refuses the registration of a mark must, in principle, state reasons in respect of each of those goods or services (see order of 18 March 2010 in Case C‑282/09 P CFCMCEE v OHIM [2010] ECR I‑2395, paragraph 37 and the case-law cited).
43 It is true that, where the same ground for refusal is given for a category or group of goods or services, OHIM may use only general reasoning for all of the goods or services concerned (see, by analogy, Case C‑239/05 BVBA Management, Training en Consultancy [2007] ECR I‑1455, paragraph 37).
44 However, that option cannot undermine the essential requirement that any decision refusing the benefit of a right conferred by European Union law must 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 refusal (see the order in CFCMCEE v OHIM, paragraph 42 above, paragraph 39 and the case-law cited).
45 It should be pointed out in that regard that the option for the Board of Appeal to use general reasoning for a series of goods or services can extend only to goods or services which have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision in question, first, to explain adequately the reasoning followed by the Board of Appeal for each of the goods and services belonging to that category and, second, to be applied without distinction to each of the goods or services concerned (see Case T‑118/06 Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP) [2009] ECR II‑841, paragraph 28 and the case-law cited). In particular, even in the case where the goods and services concerned are in the same class under the Nice Agreement, that fact is not in itself sufficient to warrant the conclusion that there is sufficient homogeneity, since those classes often contain a wide range of goods and services between which there is not necessarily such a sufficiently direct and specific link (see the order in CFCMCEE v OHIM, paragraph 42 above, paragraph 40).
46 In addition, defective or inadequate reasoning, which is a matter of infringement of essential procedural requirements under Article 253 EC, constitutes a ground involving a question of public policy, which must be raised of the Court’s own motion (see judgment of 17 April 2008 in Case T‑389/03 Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), not published in the ECR, paragraph 85 and the case-law cited).
47 In the present case, it must first be stated that it is apparent from the case-law cited in the previous paragraph that OHIM’s argument, raised at the hearing, that the complaint concerning the defective or inadequate reasoning of the contested decision is out of time must be rejected.
48 Moreover, in reply to a question from the Court at the hearing, asking OHIM to specify to which classes of services covered by the trade mark applied for the grounds stated in paragraph 20 et seq. of the contested decision applied, OHIM stated that paragraphs 20 to 22 of the decision related to the services in Classes 38 and 41 and that, starting from paragraph 24, the Board of Appeal dealt with Class 35. It also pointed out that the case-law permitted the categorisation of services and that all the services in the application for registration did not therefore have to be reproduced word for word.
49 It must be stated that the contested decision provides only a few points of reference for linking the various grounds of refusal to the very numerous services covered by the trademark applied for in Classes 35, 38 and 41 listed in paragraph 2 above and that a careful reading of that decision does not make it possible to validate OHIM’s analysis as set out in the previous paragraph.
50 First of all, as has been discussed inter alia in paragraph 34 above, some of the services covered, on the one hand, by Class 35 and, on the other hand, by Class 41 may clearly be linked to the grounds set out in paragraph 20 of the contested decision.
51 As for the remainder, first, as regards the services in Class 35, they include services relating to the advertising sector in the broad sense. As well as the services mentioned in paragraph 34 above, Class 35 also contains a series of services which, although they fall within the advertising sector in the broad sense, are nevertheless very heterogeneous, because they are services as diverse as, for example, ‘business consultancy’, ‘book-keeping, book-keeping services’, ‘economic research and surveys’, ‘(operation of) import-export agency’, ‘publicity material rental’, ‘poster advertising’, ‘rental of vending machines’, ‘(personnel) recruitment’, ‘selection of personnel with the aid of psychological aptitude tests’, or the ‘compilation of data in computer databases’.
52 The ground stated in paragraph 21 of the contested decision, according to which, in essence, modern marketing associates in various ways sales and the random opportunity to make gains, provides no yardstick for analysis which would make it possible to group all the services at issue in a homogeneous category.
53 As for the finding in paragraph 24 of the contested decision, according to which Class 35 includes services which concern business and statistical statements which are indispensable for offering bets, it must be stated that it is very general and applies at most only to some of the services in the class under consideration. Moreover, it is not for the Court to investigate to which services in Class 35 that argument may apply.
54 Similarly, in paragraph 25 of the contested decision, the Board of Appeal examined a certain number of services and, in particular, those in Class 35. It stated that these concerned very generally the promotion of sales ‘in the form of the promotion of sales of the sporting bets themselves and in the form of the targeted use of sporting bets to stimulate the sale of other goods or services’. Cited as examples are advertising services, business management services, business administration, the collection of press articles and sponsorship. Nor are those grounds enough to establish that the heterogeneous services in Class 35, such as those referred to in paragraph 51 above, form a category which is sufficiently heterogeneous to enable the application of an overall reasoning of the descriptive character of the trade mark applied for in their respect.
55 The Board of Appeal added, in paragraph 25 of the contested decision, that, since the application for registration concerned the services at issue in a very general way, the rejection had to be confirmed for those services as a whole. It refers, in that regard, to paragraph 33 of the judgment in Case T‑359/99 DKV v OHIM (EuroHealth) [2001] ECR II‑1645, in which the Court held that, since the applicant sought registration of the sign at issue in that case in respect of all services falling within the category of ‘insurance’ without distinguishing between them, it was appropriate to confirm the assessment of the Board of Appeal in so far as it related to those services as a whole. The case of a class described generically in the trade mark application as ‘insurance and financial affairs’ cannot be transposed to the present case, in which a list of very diverse services has been presented.
56 In the second place, with regard to the services in Class 38, relating to the telecommunications sector, it should be pointed out that, although they also include diverse services such as, inter alia, radio and television broadcasting, including through cable networks, news agencies, phone conference services, satellite transmission, telephone services, and teleshopping broadcasting, it is nevertheless possible to regard them as being in a homogeneous category for the purposes of an overall reasoning.
57 Even though Class 38 is not expressly mentioned, the arguments developed in paragraph 23 of the contested decision clearly relate to that category of services. In that paragraph, the Board of Appeal states inter alia that the services for which registration is sought include technical services necessary for effecting the sale of bets and competitions, namely television broadcasting, in particular the so-called paying television channels, the internet, software and the appropriate computer games. Moreover, it maintains that such bets and games may be essential elements in gaming and entertainment events, including in connection with television broadcasting. It is also specified that the television broadcasting of sporting events is often accompanied by information regarding certain betting quotas of a private service-provider.
58 The fact that several types of technical telecommunications services are required in order to effect the sale of bets and competitions or that such bets or competitions are essential elements of televised and other gaming and entertainment events does not prove that there is a sufficiently direct and specific relationship between the trademark applied for, BETWIN, which, it has been established, evoked for the relevant public the possibility of betting and winning, and those services which, even though they may serve as a technical tool in the gaming and betting sector, are not in themselves designed to carry out bets or to obtain profit thereby. Moreover, concerning the reference, in paragraph 21 of the contested decision, relating to marketing services, to the example of television channels and internet offers providing elements of games of chance and betting in order to promote sales, and the example of teleshopping channels calling for random elements evoking betting in order to stimulate sales, in the absence of any specific reference in that paragraph to Class 38, the Court cannot determine whether that line of argument served to establish the descriptive character of the trademark applied for in relation to the services contained in that class, so that, in that regard also, it must be found that the statement of grounds of the contested decision is defective.
59 It must therefore be concluded that the Board of Appeal did not prove to the required legal standard the descriptive character of the trademark applied for in relation to the services in Class 38, so that the plea alleging infringement of Article 7(1)(b) of Regulation No 207/2009 must be upheld so far as concerns those services.
60 In the third place, as for Class 41, it must be stated that the contested decision mentions it only in the conclusion on the descriptive character contained in paragraph 25 (see paragraph 41 above). As has been pointed out in paragraph 34 above, some of the services in that class clearly relate to the gaming and betting sector. That class also includes certain services connected with the computer and telecommunications sector and with the sporting sector. As regards the remainder, the services in Class 41 concern a series of heterogeneous services, such as translation, education and training services, arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums, workshops and exhibitions of all kinds for cultural and educational purposes, publishing texts and books, photographic services, and services relating to health and fitness clubs.
61 Even if some grounds of the contested decision were to be interpreted as applying to certain services in Class 41, inter alia those linked to the computer and telecommunications sector and to the sporting sector, in view of the heterogeneity of the services in that class and the absence of express discussion of them in the contested decision, it would be necessary to raise of the court’s own motion, for the services in Class 41 other than those expressly mentioned in paragraph 20 of the contested decision, in accordance with the case-law cited in paragraph 46 above, the fact that the Board of Appeal did not adequately reason that decision, by stating, as it ought to have done, that it was a homogenous category of services to which it could have applied an overall reasoning as regards the descriptive character of the mark applied for in respect of those services.
62 It is apparent from the foregoing that the Board of Appeal correctly established the descriptive character of the mark applied for in respect of the services mentioned in paragraph 20 of the contested decision and in respect of the services of ‘conception and development of events, games, lotteries, contests, balls, drawings by lot, competitions for business purposes, organisation of advertising’ in Class 35. However, the first plea must be upheld insofar as concerns the services in Class 38 and the contested decision must also be annulled, owing to defective reasoning raised of the court’s own motion, for the other services in Class 35 and for the services in Class 41 other than those expressly mentioned in paragraph 20 of the contested decision.
The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
Arguments of the parties
63 The applicant maintains that the trade mark applied for, BETWIN, has the minimum level of distinctiveness needed for registration, because both the average consumer and the specialist public will perceive an indication of origin in the light of its unusual and unused form. In the alternative, it claims that, in any event, the relevant public will accord the trademark applied for a distinctive character in terms of an indication of origin in relation to the services which are not connected with betting and gaming, such as telecommunication services.
64 OHIM considers that, since the sign at issue is descriptive, it is also devoid of distinctive character. It challenges the argument that the trademark applied for, BETWIN, has the minimum distinctive character required. It maintains that it conveys only a general incitement to participate in certain bets or games, and is therefore not capable of distinguishing the applicant’s services from those provided by other undertakings.
Findings of the Court
65 As regards the services for which the descriptive character of the trademark applied for has been established in the examination of the first plea, in particular those mentioned in paragraph 20 of the contested decision and those of ‘conception and development of events, games, lotteries, contests, balls, drawings by lot, competitions for business purposes, organisation of advertising’ in Class 35, it is not necessary to examine the second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009. According to settled case-law, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1)(b) of Regulation No 207/2009 applies for a sign not to be registrable as a Community trade mark (judgment of 2 April 2008 in Case T‑181/07 Eurocopter v OHIM (STEADYCONTROL), not published in the ECR, paragraph 56).
66 As regards the other services, it should be pointed out that, under Article 7(1)(b) of Regulation No 207/2009, ‘trade marks which are devoid of any distinctive character’ are not to be registered.
67 The concept of general interest underlying Article 7(1)(b) of Regulation No 207/2009 is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, to that effect, Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 56 and the case-law cited). Thus, for a trade mark to possess distinctive character within the meaning of that provision, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 34).
68 Finally, the distinctive character of a mark must be assessed, first, in relation to the goods or services for which registration of the sign has been applied for and, second, in relation to the perception of the relevant public, which is reasonably well informed and reasonably observant and circumspect (see judgment of 10 October 2008 in Joined Cases T‑387/06 to T‑390/06 Inter-IKEA v OHIM (Representation of a pallet), not published in the ECR, paragraph 27 and the case-law cited).
69 In this case, the reasoning, in the contested decision, for the lack of distinctiveness of the trade mark applied for is very brief. The Board of Appeal merely stated, in paragraph 27 of the contested decision, that, as a descriptive indication ‘the meaning of which anyone without specialised knowledge and without analytical effort will understand’, the trade mark applied for, which was also devoid of distinctive character, was excluded from registration in accordance with Article 7(1)(b) of Regulation No 207/2009. The Board of Appeal states, moreover, that the term ‘betwin’ carries only a general incitement to participate in certain bets or games, or to obtain financial advantages in the form of gains, without pointing out the possible link with a specific provider and that, therefore, the sign at issue does not enable the relevant consumer to conceive it as a reference to a specific commercial origin of the services in relation to the possibility of betting and winning and to perceive it as the individual sign of a specific provider in that sector.
70 In those circumstances, for the services other than those directly linked to the betting and gaming sector mentioned in paragraph 65 above, it is necessary to raise, of the court’s own motion, a lack of reasoning, in accordance with the case-law cited in paragraph 46 above. It is impossible to understand how the overall reasoning given in the previous paragraph may apply to all the other heterogeneous services which are the subject of the trade mark application and some of which have no connection with betting and the pursuit of gain. The contested decision should therefore be annulled in this regard also.
The third plea, alleging infringement of Article 83 of Regulation No 207/2009 and also of the principle of equal treatment and Articles 6 and 14 of the ECHR
Arguments of the parties
71 The applicant points out that trade mark applicants are entitled to be treated equally in procedures before OHIM, in accordance with Article 83 of Regulation No 207/2009, under which the generally recognised rules of procedure supplement the procedural provisions of that regulation, with the principle of equal treatment and with Articles 6 and 14 of the ECHR, relating, respectively, to the right to a fair hearing and the prohibition of any discrimination. On that basis, it was entitled to a consistent examination and registration practice on the part of OHIM, in order to avoid injustices and to enable all the applicants to have an equal opportunity of obtaining a Community trade mark in similar circumstances. While recognising that the decisions of the Boards of Appeal are adopted in the exercise of circumscribed powers and that the principle of equal treatment must be applied in accordance with the law, the applicant considers that it has a right to expect the OHIM departments to apply the same criteria every time and that their examination will not be stricter in respect of the applicant than in respect of other applicants.
72 Moreover, in view of the difficult conditions of implementation of invalidity procedures and of their cost, they do not enable the initial inequality resulting from the different treatment of similar trade marks to be remedied.
73 The applicant cites several examples of similar Community trade marks which the OHIM authorities should have taken into account under the rule that it should examine the facts of its own motion. They are, inter alia, word marks which form a new word from the term ‘bet’ and another descriptive term, and some of which have been registered for services directly related to betting and winning: Community word marks BETFAIR (No 003161205 and No 003580255), MYBET (No 00437885), BETMAX (No 004272159), ULTIMATEBET (No 004685681), YOUBET.COM (No 001499185), BETLINK (No 001738525), MEGA-BET (No 004103644), MULTI-BET (No 004104766), BET UNITED (No 004173472), BETWAY (No 004832325), BET‑AT‑HOME (No 003844073) and GAMEBOOKERS (No 005829056). As for OHIM’s argument that the applicant did not refer to the Community trade marks at issue in the proceedings before OHIM, it maintains that OHIM is required, under the first sentence of Article 76(1) of Regulation No 207/2009, to examine the facts of its own motion.
74 It points out, finally, that, according to the case-law, a national authority competent to register trade marks is required to take into consideration its previous decisions adopted on similar trade mark applications, an obligation which applies by analogy to OHIM. It refers, in that regard, to the order of the Court of Justice of 12 February 2009 in Joined Cases C-39/08 and C-43/08 Bild digital and ZVS, not published in the ECR.
75 OHIM disputes the applicant’s arguments.
Findings of the Court
76 It is apparent from paragraph 26 of the contested decision that, in the proceedings before the Board of Appeal, the applicant likewise did not rely on the registrations of allegedly similar trademarks which it had invoked before the examiner. In that paragraph, the Board of Appeal insisted on confirming that the examiner was entitled to take those previous registrations into account, without according them any binding effect.
77 That analysis must be upheld. It follows from the case-law that decisions concerning registration of a sign as a Community mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion, which the applicant, furthermore, does not deny. Accordingly, the legality of the decisions of Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice of those boards (Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 66).
78 According to the case-law, there are therefore two hypotheses. If, by accepting, in a previous case, the registrability of a sign as a Community mark, the Board of Appeal correctly applied the relevant provisions of Regulation No 207/2009 and, in a later case comparable to the previous one, the Board of Appeal adopted a contrary decision, the Community judicature will be required to annul the latter decision because of infringement of the relevant provisions of Regulation No 207/2009. In this first hypothesis, the plea alleging breach of the principle of non-discrimination must therefore fail (STREAMSERVE, paragraph 77 above, paragraph 67).
79 By contrast, if, by accepting in an earlier case the registrability of a sign as a Community mark, the Board of Appeal erred in law and, in a later case, comparable to the previous one, the Board of Appeal adopted a contrary decision, the first decision cannot be successfully relied on to support an application for the annulment of the latter decision. It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality, according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another (see, to that effect, Case 188/83 Witte v Parliament [1984] ECR 3465, paragraph 15, and Case 134/84 Williams v Court of Auditors [1985] ECR 2225, paragraph 14). Accordingly, in that second hypothesis, the plea alleging infringement of the principle of non-discrimination must also fail (STREAMSERVE, paragraph 77 above, paragraph 67; judgment of 30 November 2006 in Case T‑43/05 Camper v OHIM – JC (BROTHERS by CAMPER), not published in the ECR, paragraphs 94 and 95; and Mozart, paragraph 21 above, paragraphs 65 to 69).
80 As is apparent from the analysis of the first plea, the Board of Appeal rightly concluded that the trade mark applied for could not be registered since it was descriptive in relation to services designed to provide betting or gaming.
81 In addition, as regards the first sentence of Article 76(1) of Regulation No 207/2009, it is evident that OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. In the light of the circumscribed powers referred to in paragraph 77 above and of the principle of legality recalled in paragraph 79 above, that examination must focus on the conditions of application of Article 7 of Regulation No 207/2009 and it cannot be inferred that the OHIM authorities are bound by the conditions of registration of previous trade marks.
82 As for the applicant’s arguments regarding the order in Bild digital and ZVS, paragraph 74 above, it should be pointed out that the Court states, in paragraph 17 of that order, that a national authority competent to register trade marks must, when considering a trade mark application, and insofar as it has information in that regard, take into consideration the decisions already adopted in respect of similar applications and examine with particular care whether or not it is necessary to adopt the same decision. Although it may be inferred that such a consideration applies by analogy to the examination carried out by the departments of OHIM under Regulation No 207/2009, the fact remains that the Court of Justice has also stated that the authority in question cannot under any circumstances be bound by the decisions already adopted in respect of those similar applications. Moreover, it also pointed out, in paragraph 18 of that order, that the principle of equal treatment had to be reconciled with observance of legality. In those circumstances, that case-law does not call into question the analysis made in paragraphs 77 to 81 above.
83 Moreover, as regards Case C-265/09 P OHIM v Borco-Marken-Import Matthiesen [2010] ECR I‑8265, cited by the applicant at the hearing, from which it infers that OHIM has an obligation to examine previous registrations of its own motion, it should be pointed out that the Court stated, in paragraph 45 of that judgment, to which the applicant refers, that the examination of trade mark applications must not be minimal, but must be stringent and full, in order to prevent trade marks from being improperly registered and, for reasons of legal certainty and good administration, to ensure that trade marks whose use could be successfully challenged before the courts are not registered. Apart from the fact that that judgment does not concern the question of whether previous registrations should be taken into account, the Court also points out therein that OHIM’s examination must be made in compliance with legality. Therefore, that case-law likewise does not contradict the analysis made in paragraphs 77 to 81 above.
84 Finally, in view of the circumscribed powers of OHIM departments and of the principle of legality, and without it being necessary to rule on the admissibility in the present case of a plea alleging infringement of an article of the ECHR, it is important to point out that it cannot be accepted that, in the absence of specific allegations of procedural errors before the OHIM departments which the applicant should have addressed, the mere fact that allegedly similar trade marks have been registered previously may lead to an infringement of the applicant’s right to a fair hearing. For the same reasons, the circumstances surrounding the invalidity procedures are irrelevant in that regard.
85 It follows from the foregoing that the third ground of appeal must be dismissed.
The fourth plea, alleging infringement of Article 49 EC
Arguments of the parties
86 The applicant maintains that OHIM’s refusal to grant registration of the word sign at issue, while it allowed its competitors to distinguish their services by a similar mark and to preclude third parties from using those marks, distorts competition, restricts the free movement of services and hinders its business activity.
87 OHIM disputes the applicant’s arguments.
Findings of the Court
88 It is apparent from the case-law that trade mark rights constitute an essential element in the system of undistorted competition which the Treaty seeks to establish and maintain (see Case C-104/01 Libertel [2003] ECR I‑3793, paragraph 48 and the case-law cited).
89 Moreover, a trade mark confers on its proprietor an exclusive right, in relation to certain goods and services, that allows him to monopolise the sign registered as a trade mark for an unlimited period, but the possibility of registering a trade mark may, however, be limited for reasons relating to the public interest (see, to that effect, Libertel, paragraph 88 above, paragraphs 49 and 50).
90 Thus, as has been pointed out in paragraph 21 above, the public interest objective pursued by Article 7(1)(c) of Regulation No 207/2009 requires that the signs or descriptive indications of the categories of goods or services for which registration is sought may be freely used by all. As for the public interest underlying Article 7(1)(b) of Regulation No 207/2009, as has been pointed out in paragraph 67 above, it is aimed at the need not to restrict unduly the availability of the sign for which registration is sought to other operators offering goods or services of the same type as those in respect of which registration is sought, and also to guarantee the identity of the origin of the marked product to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see, to that effect, Case C-329/02 P SAT.1 v OHIM [2004] ECR I‑8317, paragraphs 23, 26 and 27 and the case-law cited; and Eurohypo v OHIM, paragraph 67 above, paragraphs 59 and 62).
91 It follows that the decision of a Board of Appeal, such as that given in the present case for the services designed to offer bets or games played for money, which rightly concludes, in accordance with the provisions of Article 7(1) of Regulation No 207/2009, that a sign cannot be registered as a Community trade mark, cannot be regarded as constituting an obstacle to free competition, or to the freedom to provide services within the meaning of Article 49 EC or to the business activity of the trade mark applicant. On the contrary, as OHIM rightly pointed out at the hearing, the role of OHIM departments of verifying that a trade mark applied for complies with the legislation governing the registration of Community trade marks serves rather to guarantee undistorted competition than to restrict competition.
92 In those circumstances, the fourth plea must be dismissed.
93 It is apparent from all the foregoing that the contested decision must be annulled for the services other than the services mentioned in paragraph 20 of the contested decision and the services of ‘conception and development of events, games, lotteries, contests, balls, drawings by lot, competitions for business purposes, organisation of advertising’ in Class 35.
Costs
94 Under Article 87(3) of the Rules of Procedure of the General Court, where each party succeeds on some and fails on other heads, the General Court may order that the costs be shared or that each party bear its own costs. In the present case, since the applicant’s action has been successful in respect of only some of the services concerned, each party must be ordered to pay its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 May 2009 (Case R 1528/2008‑4) in so far as concerns services other than the services of ‘conception and development of events, games, lotteries, contests, balls, drawings by lot, competitions of all kinds; gaming halls; operation of casinos; services to sports, games, betting and lottery establishments, including on and via the internet; provision of sport, games, betting and lottery equipment, including on and via the internet; operation of gaming halls; provision of interactive computer games; operation and organisation of casinos, games of chance, card games, bets, sports betting, games of skill; gaming machines; operation of casinos, operation of gaming halls; operation of betting and lottery centres of all kinds’ in Class 41 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 services of ‘conception and development of events, games, lotteries, contests, balls, drawings by lot, competitions for business purposes, organisation of advertising’ in Class 35 of that Agreement;
2. Orders each party to bear its own costs.
Delivered in open court in Luxembourg on 6 July 2011.
[Signatures]
Table of contents
Background to the dispute
Forms of order sought by the parties
Law
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
Arguments of the parties
Findings of the Court
– The descriptive character of the mark applied for in relation to services which concern the offer of bets or games played for money.
– The descriptive character of the mark applied for in relation to services which do not concern the offer of bets or games played for money.
The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
Arguments of the parties
Findings of the Court
The third plea, alleging infringement of Article 83 of Regulation No 207/2009 and also of the principle of equal treatment and Articles 6 and 14 of the ECHR
Arguments of the parties
Findings of the Court
The fourth plea, alleging infringement of Article 49 EC
Arguments of the parties
Findings of the Court
Costs