Case T-258/09

i-content Ltd Zweigniederlassung Deutschland

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Application for Community word mark BETWIN – Absolute grounds for refusal – Descriptive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 – Duty to state reasons – Equal treatment – Article 49 EC)

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods

(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 – Separate examination of the grounds for refusal in relation to each of the products or services covered by the application for registration – Duty to state reasons for refusal to register – Scope

(Council Regulation No 207/2009, Arts 7(1) and 75)

3.      Community trade mark – Decisions of the Office – Legality – Examination by the EU judicature – Criteria – Application to a plea based on infringement of the principle of non-discrimination by the decision-making practice of the Office

(Council Regulation No 207/2009, Arts 7 and 76(1))

1.      From the point of view of the English-speaking public, the word sign BETWIN is descriptive, within the meaning of Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark, of services of ‘conception and development of events, games, lotteries, contests, balls, drawings by lot, competitions of all kinds; gaming halls; operation of casinos; services to sports, games, betting and lottery establishments, including on and via the internet; provision of sport, games, betting and lottery equipment, including on and via the internet; operation of gaming halls; provision of interactive computer games; operation and organisation of casinos, games of chance, card games, bets, sports betting, games of skill; gaming machines; operation of casinos, operation of gaming halls; operation of betting and lottery centres of all kinds’, falling within Class 41 of the Nice Arrangement, and of services of ‘conception and development of shows, games, lotteries, competitions, balls, draws, contests for commercial, organisation and advertising purposes’, falling within Class 35 of that Arrangement.

The combination of the two English words ‘bet’ and ‘win’, invoking the opportunity of ‘betting and winning’ is directly understandable by the relevant public. There is, furthermore, a close link between the meanings of the two words; a person bets in order to win and, in order to win, it is necessary first to have placed a bet. The omission of the word ‘and’ detracts nothing from the clear meaning of the composite word ‘betwin’. Whether it is interpreted as a series of two nouns, two infinitives or two verbs in the imperative mood, it is not an unusual or arbitrary combination the meaning of which departs from that of the simple sum of the elements of which it is composed. In their interaction, the terms ‘bet’ and ‘win’ provide clear information regarding the purpose of the services at issue and on the circumstances of their use, so that they are descriptive in regard to those services.

(see paras 26, 32-35, 40)

2.      The examination of the absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought, and the decision by which OHIM refuses the registration of a mark must, in principle, state reasons in respect of each of those goods or services. Where the same ground for refusal is given for a category or group of goods or services, OHIM may use only general reasoning for all of the goods or services concerned. However, that option cannot undermine the essential requirement that any decision refusing the benefit of a right conferred by EU law must be subject to judicial review which is designed to secure effective protection for that right and which, accordingly, must cover the legality of the reasons for the refusal.

The option for the Board of Appeal to use general reasoning for a series of goods or services can extend only to goods or services which have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision in question, first, to explain adequately the reasoning followed by the Board of Appeal for each of the goods and services belonging to that category and, second, to be applied without distinction to each of the goods or services concerned. In particular, even in the case where the goods and services concerned are in the same class under the Nice Arrangement, that fact is not in itself sufficient to warrant the conclusion that there is sufficient homogeneity, since those classes often contain a wide range of goods and services between which there is not necessarily such a sufficiently direct and specific link.

(see paras 42-45)

3.      Decisions concerning registration of a sign as a Community mark which the Boards of Appeal of OHIM 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 legality of the decisions of 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 decision-making practice of those boards.

In the case of a plea before the EU judicature arguing that OHIM has infringed the principle of non-discrimination by refusing to register a given sign, whereas, previously, a comparable sign had been admitted to registration, there are therefore two hypotheses.

If, by accepting, in a previous case, the registrability of a sign as a Community mark, the Board of Appeal correctly applied the relevant provisions of Regulation No 207/2009 and, in a later case comparable to the previous one, the Board of Appeal adopted a contrary decision, the EU judicature will be required to annul the latter decision because of infringement of the relevant provisions of Regulation No 207/2009. In this first hypothesis, the plea alleging breach of the principle of non-discrimination must therefore fail. By contrast, if, by accepting in an earlier case the registrability of a sign as a Community mark, the Board of Appeal erred in law and, in a later case, comparable to the previous one, the Board of Appeal adopted a contrary decision, the first decision cannot be successfully relied on to support an application for the annulment of the latter decision. Observance of the principle of equal treatment must be reconciled with observance of the principle of legality, according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another. Accordingly, in that second hypothesis, the plea alleging infringement of the principle of non-discrimination must also fail.

In addition, it is clear from the first sentence of Article 76(1) of Regulation No 207/2009 that OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. In the light of their circumscribed powers and of the principle of legality, that examination must focus on the conditions of application of Article 7 of Regulation No 207/2009 and it cannot be inferred that the OHIM authorities are bound by the conditions of registration of previous trade marks.

(see paras 77-79, 81)