Case T‑244/12
Unister GmbH
v
Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)
(Community trade mark — Application for the Community word mark fluege.de — Absolute grounds for refusal — Descriptive character — No distinctive character — Distinctive character acquired through use — Article 7(1)(b) and (c) and Article 7(2) and (3) of Regulation (EC) No 207/2009)
Summary — Judgment of the General Court (Second Chamber), 14 May 2013
1. 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 — Aim — Need to preserve availability
(Council Regulation No 207/2009, Art. 7(1)(c))
2. 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 — Concept
(Council Regulation No 207/2009, Art. 7(1)(c))
3. 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 — Criteria
(Council Regulation No 207/2009, Art. 7(1)(c))
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 — Word mark fluege.de
(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 — Separate examination of the various grounds for refusal — Overlap between the scope of the grounds for refusal set out in subparagraphs (b) to (d) of Article 7(1) of Regulation No 207/2009
(Council Regulation No 207/2009, Art. 7(1)(b) to (d))
6. Community trade mark — Appeals procedure — Action before the EU judicature — Modification of the terms of the dispute as brought before the Board of Appeal — Not permissible
(Rules of Procedure of the General Court, Art. 135(4); Council Regulation No 207/2009, Art. 65)
1. See the text of the decision.
(see para. 16)
2. See the text of the decision.
(see paras 17, 18)
3. See the text of the decision.
(see para. 19)
4. From the perspective of the average German-speaking consumer in the European Union, the sign fluege.de, in respect of which registration is sought for ‘Advertising; business management; business administration; office functions’, ‘Transport; packaging and storage of goods; travel arrangement’ and ‘Services for providing food and drink; accommodation services’ falling respectively within Classes 35, 39 and 43 of the Nice Agreement, is descriptive of the products concerned by the Community trade mark application for the purposes of Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark.
Being liable to be spontaneously perceived by the relevant public as a domain name referring to an internet page address in the field of aviation and air travel, the trade mark applied for is descriptive of the ‘transport’ services falling within Class 39 and, more specifically within those services, of air transport services. As for the other services, defined very widely in the trade mark application, all may be provided in the field of, and in close connection with, air transport and flights.
The fact of joining an element corresponding to a top-level domain to a descriptive term devoid of distinctive character does not have the effect of conferring on the resulting sign – which is then spontaneously identifiable by the relevant public as a domain name and, therefore, as a reference to an internet address – a distinctive character. The distinctive part of such a domain name is not the top-level domain, which may consist of a dot and a group of letters corresponding to the national extension, but, at most, the second-level domain to which the top-level domain is joined.
A domain name, as such, refers, at most, only to an internet address, and not to the commercial origin of goods or services of a specific producer or supplier. The practice in regard to the attribution of domain names and the use of domain names do not determine whether a domain name is, or is not, suitable for registration as a Community trade mark in the light of the absolute grounds for refusal set out in Regulation No 207/2009.
It is appropriate, in this connection, to bear in mind the need to draw a distinction between the rights derived from the registration of a domain name, on the one hand, and the rights derived from the registration of a sign as a Community trade mark, on the other hand. Accordingly, the fact that the applicant owns a domain name does not mean that, as a consequence, that name can be registered as a Community trade mark. For that to be the case, the domain name would have to fulfil all of the conditions laid down by Regulation No 207/2009 in that regard. Thus, any argument which could be linked to the absence of a requirement that the term be available by reason of an alleged exclusive right acquired over the domain name at issue is therefore irrelevant.
(see paras 20, 26, 28-31, 38, 41)
5. See the text of the decision.
(see para. 46)
6. See the text of the decision.
(see para. 51)