ORDER OF THE GENERAL COURT (Seventh Chamber)
7 May 2014(*)
(Community trade mark — Application for Community figurative mark BIG PAD — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 — Action in part manifestly inadmissible and in part manifestly lacking any foundation in law)
In Case T‑567/13,
Sharp KK, established in Osaka (Japan), represented by G. Macías Bonilla, G. Marín Raigal, P. López Ronda and E. Armero, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 5 August 2013 (Case R 2131/2012-2), concerning an application for registration of the figurative sign BIG PAD as a Community trade mark,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 29 October 2013,
having regard to the response lodged at the Court Registry on 15 January 2014,
makes the following
Order
Background to the dispute
1 On 16 May 2012, the applicant, Sharp KK, 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p.1).
2 The mark for which registration was sought is the following figurative sign:
3 The goods for which registration was sought are in Class 9 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 to the following description: ‘Integrated white boards; interactive white boards; integrated white boards with touch panels; interactive white boards with touch panels; liquid crystal display monitors; liquid crystal display monitors with touch panels; liquid crystal display monitors for video conference system’.
4 By decision of 18 September 2012, the examiner rejected the application for registration of the mark BIG PAD for all the goods concerned, on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009, on the ground that the mark was descriptive and devoid of any distinctive character.
5 On 16 November 2012, the applicant filed a notice of appeal with OHIM against the examiner’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.
6 By decision of 5 August 2013, the Second Board of Appeal of OHIM dismissed the appeal. The Board of Appeal concluded that the mark BIG PAD applied for was descriptive of the goods concerned for the purpose of Article 7(1)(c) of Regulation No 207/2009, in conjunction with Article 7(2) of that regulation, and it found that there was no need to examine the ground for refusal based on Article 7(1)(b) of that regulation.
Forms of order sought by the parties
7 The applicant claims that the Court should:
– annul the decision of the Second Board of Appeal of OHIM of 5 August 2013;
– declare that the mark applied for is not descriptive and enjoys a sufficient degree of distinctive character in relation to the goods concerned in Class 9;
– order OHIM to pay the costs.
8 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
9 Under Article 111 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, by reasoned order and without taking further steps in the proceedings, give a decision on the action.
10 In the present case, the Court considers that it has sufficient information from the documents in the file and decides, pursuant to that article, to give a decision without taking further steps in the proceedings.
11 First of all, it must be noted that, by its second head of claim, the applicant seeks to obtain a declaratory judgment from the Court. It is apparent from Article 65(2) and (3) of Regulation No 207/2009 that actions brought before the Court seek to have the lawfulness of decisions of the Boards of Appeal examined and to obtain, as the case may be, the annulment or alteration of those decisions (see judgment of 15 June 2010 in Case T‑118/08 Actega Terra v OHIM (TERRAEFFEKT matt & gloss), not published in the ECR, paragraph 10 and the case-law cited). Consequently, such an action cannot have the objective of obtaining confirmatory or declaratory rulings in respect of those decisions.
12 The applicant’s second head of claim must therefore be dismissed as manifestly inadmissible.
13 In support of its action, the applicant raises two pleas: (i) infringement of Article 7(1)(c) of Regulation No 207/2009 and (ii) infringement of Article 7(1)(b) of that regulation.
14 By its first plea, the applicant submits that the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009. It claims that the sign BIG PAD is not descriptive, but must be considered only as suggestive of the goods concerned, suggesting something large. The mark applied for does not immediately tell the consumer what its goods are and does not convey any information about them.
15 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, must not be registered. Article 7(2) of Regulation No 207/2009 states that Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
16 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 target public’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (Case C‑383/99 P Proctor & Gamble v OHIM [2001] ECR I‑6251, paragraph 39, and the judgment of 22 May 2008 in Case T‑254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 28).
17 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 concerned to enable the relevant public immediately to perceive, without further thought, a description of the goods and services concerned or one of their characteristics (Case T‑19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II‑2383, paragraph 25, and RadioCom, paragraph 16 above, paragraph 29).
18 The descriptiveness of a sign may be assessed only, first, in relation to the goods or services concerned and, secondly, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (Case T‑34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II‑683, paragraph 38, and RadioCom, paragraph 16 above, paragraph 33).
19 In the present case, the Board of Appeal correctly found that the goods concerned were mass consumption products and specialised products, aimed at an average consumer or at a professional public. It correctly stated that, since the sign BIG PAD was composed of English words, the relevant public was the Englishspeaking public. Those facts are not disputed by the applicant.
20 The Board of Appeal noted that the expression ‘big pad’ consisted in the juxtaposition of the word ‘big’ meaning ‘large in size or amount’ and the word ‘pad’ meaning an ‘i-Pad-like tablet computer’. It found that, considered as a whole, the term ‘big pad’ meant, in the field concerned by the mark applied for, ‘large boards or liquid crystal display monitors in the form of touch pads and/or tablet computers’.
21 It must be noted, first, that the applicant does not challenge that meaning of the term ‘big pad’ and, secondly, that the goods concerned are white boards and liquid crystal display monitors which are interactive or have touch pads. Since the sign BIG PAD refers clearly to large boards or touch or liquid crystal display monitors, it corresponds to the description of the goods concerned or their technical characteristics.
22 Consequently, the applicant’s assertion that the mark applied for is only suggestive of the goods concerned, suggesting merely something large, is manifestly unfounded.
23 It is apparent from the above that the Board of Appeal correctly concluded that the term ‘big pad’ immediately informed customers that the goods concerned functioned as large pads or tablet computers and therefore contained obvious and direct information of the kind of the goods concerned or one of their intended uses or technical characteristics.
24 Consequently, the Board of Appeal was fully entitled to conclude that the mark applied for was descriptive for the purpose of Article 7(1)(c) of Regulation No 207/2009.
25 The applicant does not put forward any argument which can undermine that finding.
26 First, as regards the applicant’s argument that the term ‘big pad’ is not used in common parlance to designate the goods concerned or their essential characteristics, it is sufficient to note that, according to the case-law, in order for a mark to be refused registration under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 32; PAPERLAB, paragraph 17 above, paragraph 34; and RadioCom, paragraph 16 above, paragraph 32).
27 Secondly, as regards the applicant’s argument that the mark applied for is more than the mere joining together of ordinary words, but also includes a concrete figurative representation, it is sufficient to note that the mark applied for is composed only of the words ‘big’ and ‘pad’ in bold capitals and ordinary typeface, without the addition of any other graphic or figurative element. Thus, the fact that the mark applied for is a figurative mark does not affect the finding that the sign BIG PAD is descriptive of the goods concerned.
28 Thirdly, the applicant relies on earlier decisions of OHIM accepting for registration marks similar to that applied for, which contained the word ‘pad’. It submits that OHIM seems not to apply the same practice or the same criteria in order to evaluate the different applications for registration.
29 In that regard, it is sufficient to point out that, according to settled case-law, decisions concerning registration of a sign as a Community trade 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. Accordingly, the question of whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of any previous practice of the Boards of Appeal (see Case C‑37/03 P BioID [2005] ECR I‑7975, paragraph 47, and judgment of 2 May 2012 in Case T‑435/11 Universal Display v OHIM (UniversalPHOLED), not published in the ECR, paragraph 37 and the case-law cited).
30 Admittedly, the Court of Justice has held that, in the light of the principles of equal treatment and sound administration, OHIM must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraph 74).
31 However, the Court of Justice added that, none the less, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (Agencja Wydawnicza Technopol v OHIM, cited in paragraph 30 above, paragraphs 75 to 77).
32 In the present case, the application for a Community trade mark filed by the applicant was caught by one of the grounds for refusal set out in Article 7(1) of Regulation No 207/2009. Since it has been held that the Board of Appeal had correctly concluded that registration of the sign BIG PAD as a mark for the goods concerned was incompatible with Regulation No 207/2009, the applicant could not properly rely, in order to cast doubt on that conclusion, on earlier decisions of OHIM.
33 Fourthly, with regard to the applicant’s argument as to the existence of national decisions registering the BIG PAD mark in non-Member States, in particular English-speaking countries, it must be borne in mind that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it and applies independently of any national system (Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47). Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. OHIM and, if appropriate, the European Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised pursuant to First 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) or in a country belonging to the linguistic area in which the word sign in question originated (Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 47).
34 Fifthly, it is settled case-law that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 207/2009 is independent of the others and requires separate examination (see Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 54 and the case-law cited). Consequently, there is no need to examine, in the context of the plea alleging breach of Article 7(1)(c) of Regulation No 207/2009, the applicant’s argument that the mark applied for enjoys the minimum degree of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
35 It follows from the above that the first plea in law must be rejected as manifestly unfounded.
36 Since the Board of Appeal did not examine whether the mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, the second plea in law, alleging breach of that provision, is manifestly unfounded.
37 Consequently, the action must be dismissed in its entirety as being in part manifestly inadmissible and in part manifestly lacking any foundation in law.
Costs
38 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, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
1. The action is dismissed.
2. Sharp KK shall pay the costs.
Luxembourg, 7 May 2014.
E. Coulon | M. van der Woude
Registrar | President |