Case T‑197/13
Marques de l’État de Monaco (MEM)
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
(Community trade mark — International registration designating the European Community — Word mark MONACO — Absolute grounds for refusal — Descriptive character — Lack of distinctive character — Article 151(1) and Article 154(1) of Regulation (EC) No 207/2009 — Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009 — Partial refusal of protection)
Summary — Judgment of the General Court (Eighth Chamber), 15 January 2015
1. Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU
(Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence)
2. Community trade mark — Definition and acquisition of the Community trade mark — Proprietors of Community trade marks — Scope ratione personae — Non-member State with legal personality under international law and company situated on its territory — Included
(Council Regulation No 207/2009, Art. 5)
3. Questions referred for a preliminary ruling — Reference to the Court — Questions formulated in the context of an action for annulment before the General Court — Inadmissibility
(Arts 256 TFEU and 267 TFEU; Statute of the Court of Justice, Arts 51 and 54, second para.; Rules of Procedure of the General Court, Art. 112)
4. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Assessment of the descriptive nature of a sign — Geographical names
(Council Regulation No 207/2009, Art. 7(1)(c))
5. Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Marks devoid of any distinctive character — Word mark MONACO
(Council Regulation No 207/2009, Art. 7(1)(b) and (c))
6. Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — OHIM’s previous decision-making practice — Principle of legality
1. See the text of the decision.
(see paras 16, 19)
2. It follows from the wording of Article 5 of Regulation No 207/2009 on the Community trade mark, which defines the scope ratione personae of Regulation No 207/2009, that any legal person, including a public law entity, may seek the protection of a Community trade mark. That applies not only to a company established in a non-member State but also to that State itself, which, whilst a subject of international law, is nevertheless a legal person established under public law for the purposes of EU law.
It follows that, when a non-member State, acting through its government, has made an application seeking to designate the EU in connection with an international registration of the contested mark, it places itself, through its own conduct, within the scope of Regulation No 207/2009 and thus becomes potentially subject to any of the absolute grounds for refusal laid down in Article 7 of that regulation. In other words, it is not a matter of the scope of EU law being extended to the non-member State, but of the latter voluntarily seeking the benefit of EU law.
(see paras 30-32)
3. See the text of the decision.
(see paras 37-40)
4. As regards signs or indications which may serve to designate the geographical origin or destination of the categories of goods, or the place of performance of the categories of services, in respect of which the protection of an international registration designating the Community is sought, especially geographical names, it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response.
Furthermore, the registration of geographical names as trade marks solely where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with those goods or services in the mind of the relevant class of persons, is excluded as, secondly, is the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods or services concerned. However, in principle Article 7(1)(c) of Regulation No 207/2009 does not preclude the registration of geographical names which are unknown to the relevant class of persons — or at least unknown as the designation of a geographical location — or of names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods or services concerned originates there or was conceived of there.
In the light of the above, a sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other. In making that assessment, OHIM is bound to establish that the geographical name is known to the relevant class of persons as the designation of a place. What is more, the name in question must suggest a current association, in the mind of the relevant class of persons, with the category of goods or services in question, or else it must be reasonable to assume that such a name may, in the view of those persons, designate the geographical origin of that category of goods or services. In making that assessment, particular consideration should be given to the relevant class of persons’ degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned.
(see paras 47-51)
5. The word sign MONACO, registration of which is sought in respect of ‘Magnetic data carriers’, ‘Goods made from these materials [paper and cardboard], not included in other classes; printed matter; photographs’, ‘Transport; travel arrangement’, ‘Entertainment, sporting activities’, and ‘Temporary accommodation’, falling respectively within Classes 9, 16, 39, 41 and 43 of the Nice Arrangement, is descriptive of the products referred to in the application for a Community trade mark for the purposes of Article 7(1)(c) of Regulation No 207/2009, from the point of view of the relevant public, consisting of both average consumers and the specific EU public, since a sufficiently direct and concrete link has been established between each of the goods and services concerned and the sign at issue to conclude that the term ‘monaco’ may serve, in trade, as an indication of the provenance or geographical destination of the products, or the place of provision of services.
It is undisputed that the term ‘monaco’ corresponds to the name of a principality which is known across the world, despite its area of about 2 km2 and its population of no more than 40 000, not least because of the fame of its royal family and the fact that a Formula 1 grand prix and a circus festival are held there. There is an even greater degree of familiarity with the Principality of Monaco among citizens of the EU, due especially to its frontier with a Member State, France, its proximity to another Member State, Italy, and the fact that the principality — a non-member State — uses the same currency as 19 of the 28 Member States, the euro. Consequently, regardless of the language spoken by the relevant public, there is no doubt that the word ‘monaco’ will evoke the geographical territory of the same name.
Moreover, a word mark which is descriptive of the characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) of that regulation. Thus, the sign in question cannot have distinctive character within the meaning of Article 7(1)(b), or, consequently, Article 7(2) of Regulation No 207/2009.
(see paras 52, 53, 55, 58, 67, 68)
6. See the text of the decision.
(see para. 59)