JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
21 February 2024 (*)
(EU trade mark – International registration designating the European Union – Word mark DESIGNERS TRUST – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑92/23,
Timothy Jacob Jensen Studios A/S, established in Højslev (Denmark), represented by J. Løje, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis and V. Ruzek, acting as Agents,
defendant,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 10 November 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Timothy Jacob Jensen Studios A/S, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 November 2022 (Case R 1149/2022-4) (‘the contested decision’).
Background to the dispute
2 On 17 August 2021, the applicant obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1626949 designating the European Union in respect of the word sign DESIGNERS TRUST. That international registration was notified to EUIPO on 18 November 2021, pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
3 The services in respect of which protection of the international registration was sought are in Classes 35 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:
– Class 35: ‘Advertising services; business management; business administration; office functions services; providing an interactive on-line web site promoting design solutions and design services for others and arranging contact between designers and buyers of design services; providing information, namely compilations, placements, ratings, reviews, referrals and recommendations regarding business organisations, service providers and other business resources via a global computer network; publicity and sales promotion services and related advice in relation to design services, preparation of custom design services or non adapted advertising for businesses for conveying via the internet; providing advertising for others via a global communication network; online advertising services for others, namely provision of advertising space via internet websites; marketing the goods and services of others online; providing online computer data registers and online searchable data registers with business design services; arranging of trading transactions and on-line trading transactions with design services and design solutions of others’;
– Class 42: ‘Hosting electronic data, files, applications and information; providing temporary use of on-line non-downloadable software for e-commerce, making it possible for users to perform electronic business transactions in an on-line marketplace via a global computer network relating to design services; advice and consultancy in relation to industrial design; design services, including design planning, commercial design services, graphic design; visual design, industrial design, designing of watches, design of instruments, design services for furniture, design of industrial machinery, design of lighting systems, jewellery design services, design of measurement systems, consumer product design, design for communication systems; advisory services relating to industrial design’.
4 By decision of 3 May 2022, the examiner rejected the application for protection of the international registration in the European Union on the basis of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
5 On 30 June 2022, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
Forms of order sought
7 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
8 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs ‘in case an oral hearing is convened’.
Law
9 In support of the action, the applicant puts forward, in essence, a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001. In particular, the applicant submits, first, that the Board of Appeal erred in finding that the term ‘trust’ would be understood only according to its plain and common meaning, namely reliance on and confidence in a person or thing, whereas that term has multiple meanings; secondly, that the Board of Appeal erred in finding that the mark applied for would be perceived as a slogan and, thirdly, that the Board of Appeal erred in finding that the expression ‘designers trust’ would solely be understood as a purely laudatory statement or message.
10 Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered.
11 Article 7(2) of Regulation 2017/1001 states that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
12 For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the services in respect of which registration is applied for as coming from a particular undertaking, and thus to distinguish those services from those of other undertakings (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited, and of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 42 and the case-law cited).
13 In that regard, it must be borne in mind that signs which are devoid of any distinctive character, which are referred to in Article 7(1)(b) of Regulation 2017/1001, are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the services, thus enabling the consumer who acquired the services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgment of 27 February 2002, REWE-Zentral v OHIM (LITE), T‑79/00, EU:T:2002:42, paragraph 26; see, also, judgment of 3 September 2015, iNET24 Holding v OHIM (IDIRECT24), T‑225/14, not published, EU:T:2015:585, paragraph 43 and the case-law cited). That is the case as regards, inter alia, signs which are commonly used in connection with the marketing of the services concerned (judgments of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 20, and of 30 June 2004 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 24).
14 The distinctive character of a mark must be assessed, first, by reference to the services in respect of which registration has been sought and, secondly, by reference to the relevant public’s perception of the mark (see judgment of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43 and the case-law cited).
15 Furthermore, according to settled case-law, registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the services covered by that mark is not excluded as such by virtue of such use. However, a mark which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is distinctive for the purposes of Article 7(1)(b) of Regulation 2017/1001 only if it can immediately be perceived as an indication of the commercial origin of the services concerned and accordingly enables the relevant public to distinguish, without any possibility of confusion, the services of the proprietor of the mark from those which have a different commercial origin (judgments of 3 July 2003, BEST BUY, T‑122/01, EU:T:2003:183, paragraph 21, and of 22 March 2018, Dometic Sweden v EUIPO (MOBILE LIVING MADE EASY), T‑235/17, not published, EU:T:2018:162, paragraph 46).
16 It is in the light of those considerations, having regard to the Board of Appeal’s assessment in the contested decision, that the applicant’s arguments must be examined.
17 In the first place, as regards the relevant public and the relevant territory, the Board of Appeal found that the services concerned, which are in Classes 35 and 42 respectively, were aimed at professionals, inter alia designers, who displayed a high level of attention. The Board of Appeal observed, however, that the relevant public could have a relatively low level of attention with regard to promotional indications. Furthermore, the Board of Appeal stated that the examination of absolute grounds for refusal covered the entire territory of the European Union. As the mark applied for consists of English words, it took into consideration the English-speaking public in the European Union, inter alia that of the Member States in which English is an official language.
18 In that regard, first, the applicant submits that the Board of Appeal failed to acknowledge that the relevant public consisted ‘of both designers and the designers’ clients [or] buyers[,] mainly businesses seeking design professionals for product or concept development’.
19 However, it must be pointed out that, in the contested decision, the Board of Appeal conceded to the applicant that the services concerned were aimed at highly skilled designers and brand owners who wished to be matched with each other as regards product design. Consequently, the applicant’s argument has no factual basis and must therefore be rejected.
20 Secondly, the applicant criticises the Board of Appeal for finding that the relevant public’s level of attention was low on the ground that it would perceive the mark applied for as a slogan. It observes, in that regard, that that public consists of professionals and that the mark applied for is not a slogan.
21 However, it must be pointed out that, after defining the relevant public’s level of attention, the Board of Appeal did not specifically take that level of attention into account in its assessment of the distinctive character of the mark applied for, inasmuch as it did not state what impact that level of attention would have on the relevant public’s perception of that mark as a promotional message and, consequently, whether it weakened or strengthened the distinctive character of that mark. Furthermore, the applicant does not explain to what extent the Board of Appeal’s finding that that level of attention was low could have had an impact on that assessment.
22 In those circumstances, the applicant cannot, in the present case, usefully claim that the Board of Appeal did not correctly define the relevant public’s level of attention.
23 In the second place, as the Board of Appeal pointed out, in order to assess whether or not the mark applied for has any distinctive character, the overall impression given by it must be considered, which may, however, mean, first examining, in that overall assessment, each of the individual components of that mark in turn (see, to that effect, judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82).
24 In the present case, the Board of Appeal concurred with the examiner’s findings as regards the respective meanings of the terms ‘designers’ and ‘trust’ which were taken from an English-language dictionary. The Board of Appeal thus found that the term ‘designer’ designated a person who devised and executed designs, ‘as for works of art, clothes, machines, etc.’. It then pointed out that the term ‘trust’ meant ‘reliance on and confidence in the truth, worth, reliability, etc., of a person or thing; faith’. It concluded that the expression ‘designers trust’ would be understood, as a whole, as informing the relevant public that designers can be assured and have trust in the services offered. In the light of that meaning, on the one hand, and of the services concerned, namely advertising and sales promotion services, business management and administration services and various industrial design services, on the other hand, the Board of Appeal found that the relevant public would perceive the mark applied for prima facie only as a purely laudatory message asking it to choose the services concerned because it could trust them.
25 The applicant acknowledges that the word ‘trust’ may have the meaning which has been mentioned above, but states that that word has other meanings. Relying on two English-language dictionaries, the applicant submits that the word ‘trust’ has, at the very least, another meaning, namely that of ‘a financial arrangement in which a group of people or an organization keeps and invests money for someone’ or ‘a property interest held by one person for the benefit of another’. The applicant deduces from this that the expression ‘designers trust’ may be perceived in a number of ways. It argues that, since the word ‘trust’ is placed second, it is reasonable to conclude that the relevant public will consider more than one meaning in relation to the mark applied for and that that public will probably be inclined to perceive that mark as meaning ‘a legal entity (trust) for designers’. The applicant submits that the Board of Appeal did not sufficiently substantiate its conclusion that the relevant public will perceive the mark applied for only as an expression informing it that designers can have trust in the services concerned.
26 In that regard, it must be borne in mind that the fact that the mark applied for has a number of meanings is a relevant factor which must be taken into consideration in the context of Article 7(1)(b) of Regulation 2017/1001 (judgment of 16 June 2021, Magnetec v EUIPO (CoolTUBE), T‑481/20, not published, EU:T:2021:373, paragraph 37).
27 In the present case, it is common ground that the word ‘trust’ has a number of meanings. That said, in its most common meaning, the word ‘trust’, whether perceived as a verb or as a noun, refers to the concept of reliance on and confidence in a person or thing, as is shown by the first eight definitions corresponding to the entry for that word in the online Collins English Dictionary. Thus, in the context of the promotion and marketing of the services concerned, the relevant public, which does not consist of finance professionals or legal professionals, as EUIPO correctly points out, will understand the word ‘trust’, associated with the word ‘designers’, which refers directly to providers of design services, in its most common meaning. Consequently, the Board of Appeal was right in finding that the relevant public would perceive the expression ‘designers trust’ as a laudatory message which indicated to it that the services concerned were reliable and trustworthy for designers or that they were already trusted by them. Furthermore, it is clear from a reading of the contested decision that, contrary to what the applicant claims, that decision is sufficiently substantiated in that regard, as that laudatory message highlights the positive qualities of all the services concerned.
28 In addition, even if part of the relevant public were immediately to perceive the mark applied for as meaning ‘a legal entity (trust) for designers’, as the applicant submits, the applicant has not established that that meaning is capable of conferring sufficient distinctive character on the mark applied for to make it registrable. The expression ‘designers trust’, if it were understood in that way, would convey the message of ‘a legal entity (trust) for designers’ without, however, indicating to the relevant public the commercial origin of the services concerned.
29 Furthermore, even if it were accepted that the expression ‘designers trust’ has two meanings for the relevant public, it is not sufficient, contrary to what the applicant claims, that those two meanings differ significantly from one another in order for that expression to be regarded as a play on words which will enable the relevant public to identify the commercial origin of the services concerned. In the present case, the applicant has not succeeded in explaining in what way either of those meanings, or even the fact that those meanings differ from one another, makes the message conveyed by the mark applied for ambivalent, surprising and unexpected with regard to the services concerned and thus makes that mark easily memorisable.
30 Consequently, it must be held that, despite the multiplicity of meanings which the word ‘trust’ may have in the abstract, in the specific context of the marketing and promotion of the services concerned, the mark applied for will be perceived immediately and solely as conveying a laudatory message regarding all the services concerned, and not as an indication of the commercial origin of the services which it covers. In those circumstances, the applicant cannot rely on the multiple meanings of the word ‘trust’ in order to call into question the Board of Appeal’s findings regarding the distinctive character of the mark applied for.
31 Moreover, it is not possible to accept the applicant’s argument that, if the expression ‘designers trust’ were understood as referring to something that designers can rely on, it would then be an open-ended and incomplete phrase, which would be unlikely to be considered to be a slogan. In that regard, it is sufficient to point out that the Board of Appeal was right in finding that that expression consisted of common English words, which were intelligible by themselves and were readily recognisable without further reflection. Accordingly, there is nothing which permits the inference that that expression will set off a cognitive process in the minds of the relevant public which will lead it to think ‘designers trust …what?’, as the applicant claims. Consequently, that argument of the applicant is not capable of calling into question the Board of Appeal’s finding that the relevant public will perceive the mark applied for as nothing more than a purely laudatory message appealing to them to trust the services concerned.
32 In the third place, the applicant calls into question the Board of Appeal’s assessments regarding the meaning, in the present case, of the word ‘trust’ combined with the word ‘designers’ and the way in which the mark applied for will be perceived by the relevant public in the light of the services concerned, in so far as those assessments are, according to the applicant, based solely on subjective views and unsubstantiated assumptions.
33 In that regard, it is important to bear in mind that, in accordance with Article 95(1) of Regulation 2017/1001, when examining absolute grounds for refusal, the examiners and the Boards of Appeal of EUIPO are required to examine the facts of their own motion in order to determine whether or not the mark in respect of which registration is sought comes under one of the grounds for refusal of registration set out in Article 7 of that regulation.
34 In the contested decision, the Board of Appeal observed that, irrespective of the rules of English grammar, the combination of the words ‘designers’ and ‘trust’ in the mark applied for conveys a clear message to the relevant public, namely that the services concerned are reliable and trustworthy for designers. The Board of Appeal deduced from this that the relevant public would perceive the combination of those two words prima facie as a promotional formula or an advertising message, but would not memorise it easily and immediately as a distinctive trade mark for those services.
35 In order to dispute the correctness of that finding, the applicant relies on, first, a dictionary definition in respect of the expression ‘brain trust’, secondly, an item of evidence relating to the use of the word ‘trust’, thirdly, the fact that the mark applied for has been registered in Denmark and the United Kingdom, fourthly, an extract from a handbook on EU trade mark law and, fifthly, a decision given by EUIPO in proceedings concerning the mark NATURE’S BEAUTY.
36 In that regard, so far as concerns the definition relied on by the applicant in respect of the expression ‘brain trust’, it must be stated that the fact that that expression appears in a dictionary and the definition given in that dictionary, namely a ‘group of experts who advise important people in a government or organization’, do not prove that, in the present case, the word ‘trust’ will be understood by the relevant public other than in its most common meaning, as is apparent from paragraph 27 above. That argument is not therefore capable of calling into question the assessments of the Board of Appeal which are at issue.
37 Furthermore, contrary to what the applicant claimed at the hearing, there is nothing in the case file to indicate that the relevant public would be likely to draw a parallel between the expression ‘brain trust’ and the expression ‘designers trust’, with the result that it would thus, in the light of the sector concerned, perceive the latter as a surprising and unexpected play on words.
38 So far as concerns the item of evidence provided by the applicant, as an annex to the application, regarding the use of the word ‘trust’ in the sense of ‘a legal entity’, it must be pointed out that that item of evidence does not concern the use of the expression ‘designers trust’ in connection with the services concerned, but concerns the use of the expression ‘builders trust’ in connection with insurance services, the use of the expression ‘nature trust’ in connection with the promotion of environmental issues, the use of the expression ‘peoples trust’ in connection with financial services, the use of the expression ‘brain trust’ in connection with a professional network, the use of the expression ‘idea trust’ in connection with consultancy services, the use of the expression ‘art trust’ in connection with self-certification services for artists, the use of the expression ‘nurse trust’ in connection with a non-profit-making organisation and the use of the expression ‘traders trust’ in connection with online brokerage services.
39 In those circumstances, that item of evidence is not capable of establishing that, in the sector within which the services covered by the mark applied for come, the relevant public would not immediately understand the first word in that mark as meaning ‘designers’, the second word in that mark as meaning ‘reliance on and confidence in a person or thing’, and the combination of those two words as meaning that designers can have trust in those services.
40 That item of evidence is not therefore capable of calling into question the assessments of the Board of Appeal which are at issue.
41 As regards the fact that the mark applied for was registered in Denmark and the United Kingdom, it must be borne in mind that the EU trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any national system and the legality of decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of Regulation 2017/1001, as interpreted by the Courts of the European Union (see judgment of 17 July 2008, L & D v OHIM, C‑488/06 P, EU:C:2008:420, paragraph 58 and the case-law cited).
42 Accordingly, EUIPO and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or indeed a third country, that that sign is registrable as a national trade mark (judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, ECR, EU:T:2002:43, paragraph 47).
43 Furthermore, although the applicant produced, as an annex to the application, proof that the mark applied for was registered in Denmark and the United Kingdom, the mere fact that the competent authorities of those countries allowed the mark applied for to proceed to registration does not make it possible to conclude that the mark applied for has distinctive character for the relevant public. On account of linguistic, cultural, social or economic differences between States, a sign which is devoid of distinctive character in one State may not be devoid of distinctive character in another State (see, to that effect, judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 58).
44 Consequently, the fact that the mark applied for has been registered in Denmark and the United Kingdom is not capable of calling into question the assessments of the Board of Appeal which are at issue.
45 As regards the extract from the handbook on EU trade mark law cited by the applicant, it must be pointed out that that extract has no direct connection with the mark applied for and is merely a reflection, both general and personal, on the part of its author regarding the criteria in the light of which the registrability of a mark should be examined.
46 In those circumstances, that item of evidence is not capable of calling into question the assessments of the Board of Appeal which are at issue.
47 As regards the decision given by EUIPO in proceedings concerning the mark NATURE’S BEAUTY, it must be borne in mind that the decisions concerning the registration of a sign as an EU trade mark which EUIPO takes under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous administrative practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
48 In the present case, it follows from the foregoing that the mark applied for does not enable the relevant public either to identify the origin of the services concerned or to distinguish those services from those of other undertakings, and that it therefore has no distinctive character. Consequently, the Board of Appeal was right in finding that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001. In those circumstances, in the light of the lack of distinctive character of the mark applied for, the applicant cannot usefully rely on a previous decision of EUIPO.
49 It follows from the foregoing that the applicant’s single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001, must be rejected. Consequently, the action must be dismissed.
Costs
50 Under Article 134(1) of the Rules of Procedure of the General Court, 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 a hearing has been held, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Timothy Jacob Jensen Studios A/S to pay the costs.
Kowalik-Bańczyk | Buttigieg | Hesse |
Delivered in open court in Luxembourg on 21 February 2024.
V. Di Bucci | | S. Papasavvas |