JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
24 September 2008 (*)
(Community trade mark – Invalidity proceedings – Community word mark ‘I.T.@MANPOWER’ – Absolute grounds for refusal – Distinctive character – Lack of descriptive character – No signs or indications which have become customary – Not a trade mark of such a nature as to deceive the public – Article 7(1)(b), (c), (d) and (g) and Article 51(1)(a) of Regulation (EC) No 40/94)
In Case T‑248/05,
HUP Uslugi Polska sp. z o.o., formerly HP Temporärpersonalgesellschaft mbH, established in Czeladz (Poland), represented by M. Ciresa, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Manpower Inc., established in Milwaukee, Wisconsin (United States), represented by R. Moscona and V. Marsland, Solicitors, and A. Bryson, Barrister,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 5 April 2005 (Case R 124/2004-4) concerning invalidity proceedings between MP Temporärpersonal GmbH and Manpower Inc.,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras, President, F. Dehousse and D. Šváby (Rapporteur), Judges,
Registrar: C. Kristensen, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 1 July 2005,
having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 27 September 2005,
having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 26 September 2005,
further to the hearing on 11 December 2007, at which none of the parties was present,
gives the following
Judgment
Background to the dispute
1 On 25 June 1998 the intervener, Manpower Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 Registration as a mark was sought for the word sign I.T.@MANPOWER.
3 The goods and services in respect of which registration was sought are in Classes 9, 16, 35, 38, 41 and 42 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:
– ‘Audio cassettes; audio-visual teaching apparatus; audio compact discs; video compact discs; computer software; computer programs; tape recorders; video tapes; video recorders; parts and fittings for all the aforesaid goods’ (Class 9);
– ‘Books; printed matter; handbooks; manuals; magazines; printed publications; transparencies; instructional materials; teaching materials; parts and fittings for all the aforesaid goods’ (Class 16);
– ‘Employment agency services; temporary personnel services’ (Class 35);
– ‘Telecommunications services; providing access to global computer networks; electronic transmission of data, messages and information; telecommunication of information including web pages, computer programs and any other data; electronic mail services; provision of telecommunications access and links to computer databases and the internet; information, consultancy and advisory services relating to all the aforesaid including such services provided on-line or via the internet’ (Class 38);
– ‘Arranging and conducting of conferences and seminars; rental of movie projectors and accessories; rental of video recordings, audio recordings and cine-films; organisation of exhibitions; production of video and audio tapes; educational, instructional, teaching and training services, all relating to the tuition and assessment of office, industrial, driving and technical staff; information and advisory services, all relating to the foregoing’ (Class 41);
– ‘Professional consultancy and expert services, all relating to personnel vocational testing and guidance, personality testing, psychological examination and career advice; personality and psychological testing services; career and vocational counselling; testing individuals to determine employment skills; occupational psychology services; consultancy services relating to the assessment, development and application of human resources; provision of temporary accommodation; information and advisory services and preparation of reports, all relating to the aforesaid; catering services; computer services; consultancy, design, testing, research and advisory services, all relating to computing and computer programming; website design services; computer programming; computer systems analysis; computer timesharing; research and development of computer hardware and software; technological services relating to computers; rental and leasing of computers; computer programming; computer rental and updating of computer software; computer software design; computer database leasing; providing access to electronic communications networks and electronic databases; transfer and dissemination of information and data via computer networks; hosting of websites; computer network services; providing access to the internet; providing access to and leasing access time to computer databases and networks; compilation, storage, analysis and retrieval of data and information; computer help-line services; technical support services relating to computer hardware, computer software, computer networks and the internet; computer network services; on-line services for the search, retrieval, indexing and organisation of data on electronic communication networks and for enhancing the performance and function of such networks; information, consultancy and advisory services relating to all the aforesaid services including such services provided on-line or via the internet’ (Class 42).
4 On 16 December 1999, the intervener’s mark was registered as a Community trade mark under the number 861 559.
5 On 21 June 2001, the applicant, Manpower Austria Temporärpersonal GmbH, which has changed its business name a number of times and had become HUP Uslugi Polska sp. z o.o. by the date of the hearing, filed an application for a declaration that the registration of the intervener’s mark was invalid on the basis of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b), (c), (d) and (g) thereof.
6 On 5 December 2003, the Cancellation Division rejected the application for a declaration of invalidity.
7 On 5 February 2004, the applicant filed an appeal against the Cancellation Division’s decision.
8 By decision of 5 April 2005 (‘the contested decision’), notified to the applicant on 2 May 2005, the Fourth Board of Appeal of OHIM dismissed the appeal on the ground, in essence, that the intervener’s mark was registered in conformity with Article 7(1)(b), (c), (d) and (g) of Regulation No 40/94 and that the Cancellation Division correctly rejected the application for a declaration of invalidity submitted by the applicant.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
10 OHIM contends, in essence, that the Court should:
– dismiss the application as inadmissible in so far as it is based on Article 7(1)(c), (d) and (g) of Regulation No 40/94;
– dismiss the application as unfounded for the rest or in its entirety if the Court accepts its admissibility;
– order the applicant to pay the costs.
11 The intervener contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
12 In support of its action, the applicant relies on a single plea in law divided into four parts, alleging infringement of Article 7(1)(b), (c), (d) and (g) of Regulation No 40/94.
Admissibility of the parts of the single plea based on Article 7(1)(c), (d) and (g) of Regulation No 40/94
13 OHIM submits that the application is inadmissible inasmuch as the grounds of appeal before the Court relating to the infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c), (d), and (g) thereof, are not sufficiently substantiated to enable OHIM to exercise its rights of defence. OHIM contends that the only direct reference made by the applicant to the contested decision relates to the claim based on Article 7(1)(b) of Regulation No 40/94.
Findings of the Court
14 It must be pointed out that, under Article 44(1) of the Rules of Procedure of the Court of First Instance, which is applicable to intellectual property by virtue of Article 130(1) and Article 132(1) thereof, an application must state a summary of the pleas in law on which the application is based. According to the case-law, that statement must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the application, if necessary without any further information. In order to guarantee legal certainty and the sound administration of justice it is necessary, in order for an action to be admissible, that the basic legal and factual particulars relied on be stated, at least in summary form, coherently and intelligibly in the application itself (Case T-113/96 Dubois et Fils v Council and Commission [1998] ECR II-125, paragraph 29; Case T-195/00 Travelex Global and Financial Services and Interpayment Services v Commission [2003] ECR II-1677, paragraph 26; and Case T-247/01 eCopy v OHIM (ECOPY) [2002] ECR II-5301, paragraph 15).
15 In the present case, contrary to OHIM’s contention, the application meets the requirements of the above provisions and case-law.
16 It is apparent from the application that the applicant means to challenge the Board of Appeal’s conclusion that the intervener’s mark was registered in conformity with Article 7(1)(b), (c), (d) and (g) of Regulation No 40/94, that is to say the Board of Appeal’s recognition of its distinctive character, its lack of descriptive and customary character and of the fact that it is not of such a nature as to deceive the public. The applicant refers expressly in the application to the alleged infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b), (c), (d) and (g) thereof. Although the account of the particulars in support of the alleged infringement of Article 7(1)(c), (d) and (g) of Regulation No 40/94 is succinct, it is sufficient to allow the Court to identify the essential particulars that constitute the legal and factual basis of the action.
17 Furthermore, both OHIM and the intervener replied to each of the applicant’s claims concerning the different provisions of 7(1)(b), (c), (d) and (g) of Regulation No 40/94.
18 It follows from the above that OHIM’s contention that the application is inadmissible inasmuch as it is based on Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(c), (d), and (g) thereof, must be rejected.
Substance
Arguments of the parties
19 As regards the first part of the single plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94, the applicant submits that the intervener’s mark, as a whole, does not possess the minimum degree of distinctiveness necessary for registration. Owing to the clear message of the mark, it cannot distinguish the goods and services protected by it.
20 The applicant claims that it is clear from the case-law of the Court of First Instance that lack of distinctiveness cannot result from a finding of lack of imagination or lack of an additional element of originality.
21 The applicant disputes the Board of Appeal’s assertion (paragraph 15 of the contested decision) that the intervener’s mark is distinctive because of the combination of its three elements and because it is not directly descriptive of the goods it protects. According to the applicant, the application for a declaration that the intervener’s mark is invalid could not be refused on the basis of Article 51(1)(a) in conjunction with Article 7(1)(c) of Regulation No 40/94 as the intervener’s mark is descriptive as a whole of all the goods and services concerned. Consequently, the reasoning of the Board of Appeal in relation to Article 7(1)(b) of that regulation must, according to the applicant, also be rejected.
22 As regards the second part, alleging infringement of Article 7(1)(c) of Regulation No 40/94, the applicant submits that that provision prevents the signs or indications referred to in it from being reserved to one undertaking alone on the basis of their registration as marks. That provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all.
23 According to the applicant, the descriptive character of a sign must be appraised in relation to the way it is perceived by the public to whom it is specifically addressed. The applicant maintains that the relevant public comprises average English-speaking consumers who use information technology and are interested in the technical aspects thereof. Moreover, that public is deemed to be reasonably well informed and reasonably observant and circumspect.
24 According to the applicant, for the purpose of applying Article 7(1)(c) of Regulation No 40/94, it is necessary only to consider, on the basis of the relevant meaning of the intervener’s mark, whether, from the viewpoint of the target public, there is a sufficiently direct and specific relationship between that mark and the goods which it protects.
25 Furthermore, the applicant submits 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 40/94, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so.
26 The applicant also submits that, according to the case-law, an analysis of the term in question in the light of the relevant lexical and grammatical rules is useful.
27 The applicant observes that the sign ‘I.T.@MANPOWER’ is a combination made up of a general term ‘manpower’, an ‘at’ and ‘IT’ as an abbreviation for ‘information technology’, which is the general English term for data processing, telecommunication and all matters associated therewith. According to the applicant, for the consumers concerned, the combination of those elements is not unusual. The ‘@’ symbol is the well-known symbol of an email address and means ‘at’, that is, it is a reference to where the name or term indicated in front of the symbol can be found, reached or offered.
28 The applicant submits that it is clear from the foregoing that the term I.T.@MANPOWER may serve, within the meaning of Article 7(1)(c) of Regulation No 40/94, to designate a characteristic of the goods and services protected by the intervener’s mark.
29 As regards the third part, alleging infringement of Article 7(1)(d) of Regulation No 40/94, the applicant submits that, as all the elements constituting the intervener’s mark (‘I.T.’, ‘@’ and ‘manpower’) have become customary in the current language and the combination of those elements does not result in any ‘imaginative overall impression’ going beyond the sum of its elements, the mark in question was registered in breach of that provision.
30 As regards the fourth part, alleging infringement of Article 7(1)(g) of Regulation No 40/94, the applicant claims that, because of the clear statement which it contains, the sign I.T.@MANPOWER will deceive the public if the goods and services actually offered do not have any connection with ‘manpower in the sector of information technology’.
31 OHIM, supported by the intervener, disputes the applicant’s arguments.
Findings of the Court
32 It must be pointed out, first of all, that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and calls for separate examination. Furthermore, the various grounds for refusal must be interpreted in the light of the general interest underlying each of them. The general interest taken into consideration when examining each of those grounds for refusal may, or even must, reflect different considerations, according to the ground for refusal in question (see judgment of 6 March 2007 in Case T-230/05 Golf USA v OHIM (GOLF USA), not published in the ECR, paragraph 25 and the case-law cited).
33 However, there is a clear overlap between the scope of the grounds for refusal set out in Article 7(1)(b) to (d). In particular, it is clear from the case-law that a word mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) of Regulation No 40/94 is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) of the regulation. A mark can however be devoid of distinctive character for reasons other than its possible descriptive character (see Case T-190/05 Sherwin-Williams v OHIM (TWIST & POUR) [2007] ECR II-1911, paragraph 39 and the case-law cited).
34 In the present case, the second part of the single plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94, must therefore be examined first.
35 Article 7(1)(c) of Regulation No 40/94 reflects the general interest that descriptive indications of the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision aims to prevent such indications from being reserved to one undertaking alone because they have been registered as trade marks, when other undertakings – including its competitors for example – might wish to describe their own goods by using precisely the terms registered as a trade mark (see Golf USA, paragraph 32 above, paragraph 26 and the case-law cited).
36 For a mark which consists of a combination of elements, such as the intervener’s mark, to be regarded as descriptive for the purpose of Article 7(1)(c) of Regulation No 40/94, it is not sufficient that each of its components may be found to be descriptive. The whole which they constitute must be found to be so (see, to that effect, Joined Cases T‑178/03 and T-179/03 CeWe Color v OHIM (DigiFilm and DigiFilmMaker) [2005] ECR II-3105, paragraph 25).
37 It is in the light of those considerations that the applicant’s arguments must be assessed.
38 As regards the relevant public in the present case, the Court would point out that the list of goods and services concerned (see paragraph 3 above) includes goods and services intended primarily for specialists, as well as goods and services intended for average consumers. Therefore, it is appropriate to take as the relevant public all consumers (see, to that effect, Case T-234/01 Stihl v OHIM (Combination of orange and grey) [2003] ECR II-2867, paragraph 31 and the case-law cited).
39 Furthermore, pursuant to Article 7(2) of Regulation No 40/94, the relevant public in relation to whom the absolute grounds for refusal in question must be assessed are English-speaking consumers, since the word ‘manpower’ comes from English as does the acronym IT.
40 An assessment must be made as to whether, for the public in question, there is a sufficiently direct and specific relationship between the intervener’s mark and the goods and services which they protect (see, to that effect, GOLF USA, paragraph 32 above, paragraph 28 and the case-law cited). In that regard, it is not of decisive importance whether or not each of the elements of which the intervener’s mark consists, namely ‘it’, ‘@’ and ‘manpower’ is as such descriptive. Taking into account the case-law cited in paragraph 36 above, the mark itself, as a whole, must be found to be descriptive for the absolute ground for refusal provided for by Article 7(1)(c) of Regulation No 40/94 to apply.
41 According to the Board of Appeal, the combination of the three elements constituting the intervener’s mark does not describe the characteristics of the goods and services protected by that mark. The Board of Appeal asserted that, assuming that the intervener’s mark is indeed perceived as ‘information technology at Manpower’, the message is not sufficiently clear so as to describe any of the characteristics of goods and services related to employment agency services with regard to IT personnel (Class 35), let alone the more generally outlined goods and services in Classes 9, 16, 38, 41 and 42. The conjunction of the two word elements which might refer to a workforce for the information technology sector through the use of the symbol ‘@’ (‘at’) leads, according to the Board of Appeal, to a distinctive rather than a descriptive message. The intervener’s mark, through the ‘@’, suggests that an entity called ‘MANPOWER’ provides something related to information technology. However, it cannot, according to the Board of Appeal, be understood as referring precisely to a workforce (manpower) in the field of information technology (paragraph 15 of the contested decision).
42 In the present case, the applicant has adduced no evidence to invalidate that assessment by the Board of Appeal.
43 The combination of an acronym, a symbol and a word is not the usual way of designating goods or services. Furthermore, the intervener’s mark, which consists of such a combination of three different elements, cannot, viewed as a whole, be regarded as a known English expression designating the goods or services in question or referring to one of their characteristics.
44 Moreover, even if some of the relevant consumers could perceive the intervener’s mark as conveying the meaning of ‘information technology at Manpower’, that would suggest that the mark refers to an entity called Manpower and therefore performs the essential function of a trade mark which is to provide identification of commercial origin. Alternatively, even if some of the relevant consumers could perceive that mark as conveying the meaning of ‘information technology in the workforce’ – which would, however, require the intervener’s mark to be analysed in a certain way – that mark cannot be perceived as a descriptive indication of the goods or services in question or of one of their characteristics in the everyday language of the relevant public. The message conveyed by the intervener’s mark is not sufficiently clear and direct for it to be considered to be descriptive of the goods or services in question.
45 In view of the above, the Board of Appeal did not err in finding that there was no need to cancel the mark on the basis of Article 51(1) of Regulation No 40/94, read in conjunction with Article 7(1)(c) thereof.
46 Accordingly, the second part of the applicant’s plea must be rejected.
47 Secondly, as regards the first part of the plea, it must be noted that signs falling within Article 7(1)(b) of Regulation No 40/94 are deemed not to be capable of exercising the essential function of a trade mark, which is to identify the commercial origin of the goods or services, thus enabling the consumer who acquires them 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 purchase (see Case T‑128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II-701, paragraph 31 and the case-law cited).
48 In addition, the Court would point out that, when the Board of Appeal confirms a lower-level decision of OHIM in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (see, to that effect, the judgment of 21 November 2007 in Case T‑111/06 Wesergold Getränkeindustrie v OHIM – Lidl Stiftung (VITAL FIT), not published in the ECR, paragraph 64).
49 In the present case, it is clear from paragraph 17 of the contested decision that the Board of Appeal accepted as its own the reasons for the Cancellation Division’s decision relating to the alleged lack of distinctiveness of the intervener’s mark, which thus form an integral part of the statement of reasons of the contested decision.
50 The Board of Appeal thus took account of the fact that the sign I.T.@MANPOWER, taken as a whole, had at least some degree of distinctiveness. It took the view that the fact that the elements constituting the mark – ‘it’, ‘@’ and ‘manpower’ – might not be distinctive on their own was not decisive since the intervener’s mark, considered as a whole, did not fall foul of Article 7(1)(b) of Regulation No 40/94. Even if the group of letters ‘it’ was seen as an abbreviation for ‘information technology’ and ‘manpower’ meant ‘workforce’, the sign I.T.@MANPOWER, as a whole, would possess some degree of distinctiveness owing to its uncommon structure characterised by the @-symbol between the letters ‘t’ and ‘m’ and because the meaning of the sign I.T.@MANPOWER, as such, would be too vague and imprecise. The Board of Appeal took the view that since the intervener’s mark, as a whole, was distinctive, it was not necessary to analyse whether the element ‘manpower’ was distinctive or had acquired distinctiveness through use.
51 In view of that analysis, it must be considered, first, that, contrary to the claim made by the applicant, the Board of Appeal did carry out a separate examination of each of the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 40/94, taking into account the general interest underlying each of them, in accordance with the case-law cited in paragraph 32 above.
52 Secondly, the Board of Appeal did not err in stating that the intervener’s mark has a minimum degree of distinctiveness (paragraph 17 of the contested decision).
53 It must be stated, first, that the combination of the three elements ‘it’, ‘@’ and ‘manpower’ in the intervener’s mark cannot be regarded as complying with linguistic rules.
54 Secondly, it is an original and uncommon combination owing, in particular, to the insertion of the symbol ‘@’ between ‘it’ and ‘manpower’. It is not common to have a word mark consisting of an acronym, a symbol and a word. It must be added in that regard that the existence of an element of imaginativeness in the intervener’s mark, viewed as a whole, is an aspect which ought to be taken into account in an analysis of distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 (see, to that effect, Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraphs 35 and 37).
55 It must be added that, inasmuch as the applicant relies on the descriptiveness of the intervener’s mark to draw inferences as regards the alleged lack of distinctive character of that mark, its claim must be rejected as unfounded, given that it was concluded, in the context of the analysis of the second part of the applicant’s plea, that the Board of Appeal did not err in finding that the intervener’s mark was not descriptive.
56 It follows from all of the above that the first part of the applicant’s plea must be rejected.
57 Thirdly, as regards the third part of the plea, Article 7(1)(d) of Regulation No 40/94 must be interpreted as precluding registration of a trade mark only where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought. Accordingly, whether a mark is customary can only be assessed, firstly, by reference to the goods or services in respect of which registration is sought, even though the provision in question does not explicitly refer to those goods or services, and, secondly, on the basis of the target public’s perception of the mark (see Case T-322/03 Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN) [2006] ECR II-835, paragraph 49 and the case‑law cited).
58 In the present case, the Board of Appeal considered that the intervener’s mark should not be cancelled under Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(d) thereof. According to the Board of Appeal, the standard to be applied under Article 7(1)(d) of Regulation No 40/94 is not whether each individual element of a composite trade mark has as such become customary in current language or the bona fide and established practices of the trade. The Board of Appeal notes that it is established case-law that although the wording of Article 7(1)(c) of Regulation No 40/94 seems to refer to the signs and indications of which the trade mark consists, it is the whole which needs to be assessed regarding perception by the targeted consumer. That interpretation, according to the Board of Appeal, is valid for Article 7(1)(d) of Regulation No 40/94 for the same reasons as it is valid for Article 7(1)(c) thereof. The Board of Appeal stated that since the applicant was not claiming that the whole of the intervener’s mark had become customary in current language or in the bona fide and established practices of the trade and there was no indication to that effect, that ground of cancellation had to be rejected.
59 In the third part of its plea, the applicant maintains solely, and moreover without substantiating its claim in any way, that all the elements constituting the intervener’s mark have become customary in the current language. As the combination of those elements does not, according to the applicant, result in any ‘imaginative overall impression’ going beyond the sum of its elements, the intervener’s mark should, according to the applicant, be cancelled in accordance with Article 7(1)(d) of Regulation No 40/94.
60 The Court notes in that regard that the applicant does not submit that the intervener’s mark has become customary as a whole.
61 As the Board of Appeal rightly found, in assessing the absolute ground for refusal to register set out in Article 7(1)(d) of Regulation No 40/94, it is necessary to take into account the whole of the mark and not merely the individual elements which constitute it.
62 The need to examine marks as a whole for the purposes of the application of the absolute grounds for refusal to register set out in Article 7(1)(b) and (c) of Regulation No 40/94 (see, to that effect, SAT.1 v OHIM, paragraph 54 above, paragraph 28, and DigiFilm and DigiFilmMaker, paragraph 36 above, paragraph 25, respectively) can also be transposed to the present case as regards the application of Article 7(1)(d), the wording of which is comparable to that of Article 7(1)(c) (see, to that effect, WEISSE SEITEN, paragraph 57 above, paragraph 55 et seq.).
63 As the applicant has not adduced evidence that would enable the Court to find that the Board of Appeal erred in its assessment that the intervener’s mark, considered as a whole, has not become customary, the third part of the applicant’s single plea must be rejected.
64 Fourthly, as regards the fourth part of the plea, according to the case-law relating to Article 3(1)(g) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the wording of which is identical to that of Article 7(1)(g) of Regulation No 40/94, the circumstances for refusing registration referred to in Article 7(1)(g) of Regulation No 40/94 presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see Case C-259/04 Emanuel [2006] ECR I-3089, paragraph 47 and the case-law cited).
65 In the present case, the Board of Appeal found, in paragraph 18 of the contested decision, that the intervener’s mark was not deceptive and should not therefore be cancelled in accordance with Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(g) thereof. According to the Board of Appeal, Article 7(1)(g) of Regulation No 40/94 implies a sufficiently specific designation of potential characteristics of the goods and services covered by the trade mark. Only where the targeted consumer is made to believe that the goods and services possess certain characteristics which they do not in fact possess will he be deceived by the trade mark. The Board of Appeal stated that, since it had already established that the message communicated by the intervener’s mark was not clear enough to designate any clear characteristics of the goods and services claimed, that message could not be considered to be deceptive.
66 The applicant’s claim that, because of the clear message which it contains, the intervener’s mark will deceive the public if the goods and services actually offered do not have any connection with ‘manpower in the sector of information technology’ cannot invalidate the Board of Appeal’s finding.
67 The applicant does not state which characteristic of the goods or services in question conveyed by the intervener’s mark they do not in fact possess. Contrary to the applicant’s claim, as was stated in paragraph 44 above, the intervener’s mark does not convey a clear message concerning the goods and services in question or their characteristics but, at the very most, hints at them.
68 In particular, the intervener’s mark cannot be understood as being equivalent to ‘manpower in the sector of information technology’. Although it may call to mind, to a certain extent, something connected with information technology and a workforce, it is not a designation which is sufficiently specific to be capable of giving rise to actual deceit or a sufficiently serious risk that the consumer will be deceived.
69 Furthermore, consumers are, in any event, able to assess directly, when choosing the goods or services in question, whether they relate to information technology or are connected with a workforce. They are not therefore generally characteristics to which a serious risk of deceit may apply.
70 It follows from all of the above that the fourth part of the applicant’s plea and, therefore, the single plea in law must be rejected, and accordingly, the action in its entirety dismissed.
Costs
71 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, and OHIM and the intervener have applied for costs, the applicant must be ordered to pay the costs.
On those grounds,
THE COURT OF FIRST INSTANCE (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders HUP Uslugi Polska sp. z o.o. to pay the costs.
Delivered in open court in Luxembourg on 24 September 2008.