JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
15 January 2015 (*)
(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)
In Case T‑197/13,
Marques de l’État de Monaco (MEM), established in Monaco (Monaco), represented by S. Arnaud, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 29 January 2013 (Case R 113/2012-4), concerning the international registration, designating the European Community, of the word mark MONACO,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 1 April 2013,
having regard to the response lodged at the Registry of the General Court on 7 August 2013,
having regard to the decision of 5 November 2013 permitting a letter from the applicant of 22 October 2013 to be lodged at the Registry of the General Court,
having regard to the observations of OHIM as to that letter, lodged at the Registry of the General Court on 21 November 2013,
having regard to the change in composition of the Chambers of the General Court,
having regard to the fact that no request for a hearing to be listed was submitted by either party within the period of one month from notification of closure of the written procedure, and having therefore decided, upon the report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to rule on the appeal without an oral procedure,
gives the following
Judgment
Background to the dispute
1 On 1 December 2010, the Government of the Principality of Monaco obtained, from the World Intellectual Property Organisation (WIPO), an international registration designating the European Community of the word mark MONACO (‘the contested mark’). This registration reached the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) on 24 March 2011.
2 The goods and services in respect of which registration was sought are in Classes 9, 12, 14, 16, 18, 25, 28, 35, 38, 39, 41 and 43 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.
3 On 1 April 2011, OHIM notified the Monaco Government of an ex officio provisional refusal of protection for the contested mark in the EU, pursuant to Article 5 of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22) (‘the Madrid Protocol’) and to Rule 113 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, for some of the goods covered by the international registration designating the European Community (‘the products and services concerned’). These are in Classes 9, 16, 39, 41 and 43 and correspond, for each of those classes, to the following description:
– Class 9: ‘Magnetic data carriers’;
– Class 16: ‘Goods made from these materials [paper and cardboard], not included in other classes; printed matter; photographs’;
– Class 39: ‘Transport; travel arrangement’;
– Class 41: ‘Entertainment, sporting activities’;
– Class 43: ‘Temporary accommodation’.
4 The grounds stated in support of that refusal were that, in relation to the products and services concerned, the contested mark was devoid of distinctive character and had a descriptive character, within the meaning of Article 7(1)(b) and (c) of Council Regulation No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
5 By decision of 18 November 2011, after the Monaco Government had responded to the objections raised in the notice of provisional refusal, the examiner confirmed the partial refusal of protection for the contested mark within the EU, in relation to the products and services concerned and on the same grounds as previously. On the other hand, she discharged the objections set out in the provisional refusal in relation to ‘apparatus for recording, transmission or reproduction of sound or images’ in Class 9.
6 On 13 January 2012, the Government of the Principality of Monaco brought an appeal against that decision at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009.
7 On 17 April 2012 the applicant, Marques de l’État de Monaco (MEM), a limited company incorporated under the law of Monaco, succeeded the Government of the Principality of Monaco as owner of the contested mark.
8 By decision of 29 January 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It held that the applicant had no special entitlement to use the contested mark in relation to the products and services concerned, such that the only issue of significance was whether it could be registered under Article 7(1)(b) and (c) of Regulation No 207/2009. It based its decision, first, on Article 7(1)(c) of that regulation, which requires registration to be refused in respect of descriptive marks, such as those consisting exclusively of signs or indications which may serve, in trade, to designate geographical origin. In that regard, it referred to the case-law which requires a sufficiently direct and concrete link to exist between such signs and the products and services covered by the marks in question. It considered that case-law to be applicable to the present case, as the word ‘monaco’ designates the geographical area of the same name and can, therefore, be understood in any language within the EU as designating the geographical origin or destination of the products and services concerned. It further considered that the contested mark was clearly devoid of distinctive character in relation to the products and services concerned, within the meaning of Article 7(1)(b) of Regulation No 207/2009. Finally, it stated that those grounds applied equally to Article 7(2) of the same regulation.
Forms of order sought by the parties
9 The applicant contends that the Court should:
– annul the contested decision;
– as an ancillary matter, ‘in so far as necessary’, refer questions to the Court of Justice as to the applicability of Article 7(1)(c) and Article 7(2) of Regulation No 207/2009 to a non-member State;
– order OHIM to pay the costs.
10 OHIM contends that the Court should:
– dismiss the action as being in part inadmissible and in part unfounded;
– order the applicant to pay the costs.
Law
11 In support of its application to annul the contested decision, the applicant presents five formal pleas in law, but in substance they amount to three: first, failure to state any or any sufficient reasons, secondly, failure to apply Article 7(1)(b) and Article 7(2) of Regulation No 207/2009 correctly, and thirdly, failure to apply Article 7(1)(c) and Article 7(2) of that regulation correctly.
12 OHIM challenges the pleas and arguments advanced by the applicant.
13 Under Article 151(1) of Regulation No 207/2009, an international registration designating the European Community is, from the date of its registration pursuant to Article 3(4) of the Madrid Protocol, to have the same effect as an application for a Community trade mark. Article 154(1) of that Regulation provides for international registrations designating the European Community to be subject to examination as to absolute grounds for refusal in the same way as applications for Community trade marks (judgment of 13 April 2011 in Deichmann v OHIM (Representation of a curved band with dotted lines), T‑202/09, EU:T:2011:168, paragraph 24).
14 Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered. Article 7(1)(c) of that regulation prevents registration of ‘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’. Article 7(2) of the regulation provides that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the EU.
15 It is against that background that the first issue, that of whether the Board of Appeal complied with its obligation to state reasons, should be considered.
As to the plea based on failure to state any or any sufficient reasons
16 Under Article 75 of Regulation No 207/2009, OHIM is required to state reasons for its decisions. This duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. It has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (judgments of 19 May 2010 in Zeta Europe v OHIM (Superleggera), T‑464/08, EU:T:2010:212, paragraph 47, and 21 May 2014 Eni v OHIM — Emi (IP) (ENI), T‑599/11, EU:T:2014:269, paragraph 29).
17 The applicant maintains that the Board of Appeal failed to comply with Article 75 of Regulation No 207/2009, Article 296 TFEU and Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950, in that it did not give sufficient reasons for the contested decision.
18 It considers, first, that the Board of Appeal limited itself to citing the relevant provisions of Regulation No 207/2009 and the case-law relating to them, without setting out its findings of fact explicitly, and thus deprived it of any explanation for the partial refusal of its application. Secondly, it considers that reasons for the refusal of protection for the Class 9 products concerned are entirely absent, or at least are insufficient, if not contradictory.
19 In relation to the first complaint, to the effect that the Board of Appeal did not set out, in the contested decision, the factual basis for that decision, it should be noted at the outset that the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them (see judgment of 12 July 2012 in Gucci v OHIM — Chang Qing Qing (GUDDY), T‑389/11, EU:T:2012:378, paragraph 16 and the case-law cited). It is therefore sufficient if the institution concerned sets out the facts and the legal considerations having decisive importance in the context of the decision (ENI, cited in paragraph 16 above, EU:T:2014:269, paragraph 30; see also to that effect, judgment of 14 February 1990 Delacre and Others v Commission, C‑350/88, ECR, EU:C:1990:71, paragraph 16).
20 It should be pointed out in this respect that, contrary to the applicant’s assertions, the Board of Appeal, after listing the products and services concerned in paragraph 2 of the contested decision, and setting out the reasons for the examiner’s decision (paragraphs 8 to 13 of the contested decision), stated that the word ‘monaco’ would be ‘immediately perceived as a purely informative expression indicating the geographical origin or destination’ of the products and services concerned, namely Monaco (paragraph 25 of the contested decision). In paragraphs 26 to 29 of the contested decision, it explained the link between each of the products and services concerned and the territory of Monaco, indicating, in respect of ‘magnetic data carriers’ in Class 9, and ‘goods made from these materials [paper and cardboard], not included in other classes; printed matter; photographs’ in Class 16, that the contested mark could ‘correspond to an indication of the subject matter of those products, such as books, tourist guides, photographs, etc., all of which relate to the Principality of Monaco’ (paragraph 26 of the contested decision). Furthermore, it considered that the contested mark, in so far as it concerned services of ‘transport; travel arrangement’ in Class 39, could ‘clearly correspond to an indication of the destination or origin of these services’ (paragraph 27 of the contested decision), that the services of ‘entertainment; sporting activities’ in Class 41 would clearly take place in Monaco (paragraph 28 of the contested decision) and that the services of ‘temporary accommodation’ in Class 43 would be offered within the territory of the Principality of Monaco (paragraph 29 of the contested decision). On that basis, the Board of Appeal concluded that the contested mark would be perceived, in relation to the products and services concerned, as having its intrinsic meaning and not as a mark, and thus that it had a descriptive character within the meaning of Article 7(1)(c), of Regulation No 207/2009 (paragraphs 30 and 31 of the contested decision).
21 It will be apparent from the foregoing that the first complaint, based on an alleged failure to set out the factual basis for the contested decision, is itself lacking in any factual basis and must accordingly be dismissed.
22 In relation to the second complaint, the applicant maintains that the Board of Appeal limited itself to confirming the examiner’s decision, which, given that the reasons stated in that earlier decision were insufficient or contradictory, obstructed it in understanding the exact scope of the refusal in relation to the products in Class 9.
23 It is true that the examiner’s decision (it should be emphasised that that decision is not subject to the jurisdiction of the General Court, which only hears actions brought against decisions of the OHIM Boards of Appeal) gives rise to some confusion. At the top of page 6 of the decision, it states that ‘the objection relating to “... apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers” is discharged’, and that it ‘is upheld in so far as it concerns ... “magnetic data carriers”’. However, the ambiguity is resolved at the foot of page 10 and the top of page 11 of the examiner’s decision, where ‘magnetic data carriers’ are listed among the products in relation to which the protection of the contested mark is refused, in Class 9, while the list of accepted products includes ‘scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; fire-extinguishing apparatus’, also in Class 9.
24 The applicant is thus wrong to argue that the examiner’s decision is tainted by a failure to give sufficient reasons which is in some way propagated to the contested decision. Upon reading the earlier decision, there is no doubt as to which of the products in Class 9 are accepted and which refused. In any event, it is only the contested decision whose legality is subject to review by the General Court.
25 As stated in paragraph 20 above, the Board of Appeal specified the products and services concerned in paragraph 2 of the contested decision. The only products in Class 9 to be mentioned were ‘[m]agnetic data carriers’. As that paragraph of the judgment also makes clear, the Board of Appeal adopted that same nomenclature when it examined the direct and concrete link between the products in question and the Principality of Monaco (paragraph 26 of the contested decision). Therefore, contrary to the applicant’s assertions, the Board of Appeal duly stated reasons for the contested decision concerning products in Class 9 and provided the applicant with an effective opportunity to challenge its analysis before the General Court.
26 Consequently, the second complaint must be rejected, and with it the plea in law as a whole.
As to the plea based on failure to apply Article 7(1)(c) and Article 7(2) of Regulation No 207/2009 correctly
27 In reality this plea is made up of four parts. The first is based on the assertion that the Board of Appeal misconstrued the scope of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 5 thereof, and, consequently, that of Article 7(2) thereof, in that it failed to take into account the fact that the original owner of the contested mark was a third State. The second is concerned with an error of law the Board of Appeal is said to have made in determining the general interest protected by Article 7(1)(c) of Regulation No 207/2009. The third relates to a manifest error of assessment which the Board of Appeal is said to have made in defining the relevant public, and the fourth is based partly on an assertion that there is no link between the geographical place in question and the products and services concerned, and partly on a manifest error which the Board of Appeal is said to have made in its assessment of the geographical criterion. Although the arguments relating to these last two parts are dealt with under the heading of distinctive character, or in other words the alleged failure to apply Article 7(1)(b) of Regulation No 207/2009 correctly, in content they relate essentially to the applicant’s challenge to the refusal in so far as it was based on Article 7(1)(c) of that regulation, as appears more particularly from paragraph 70 of the application.
As to the first part, based on the assertion that the Board of Appeal misconstrued the scope of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 5 of that regulation
28 It should again be emphasised, as stated in paragraph 13 above, that under Article 3(4) of the Madrid Protocol and the provisions of Article 151(1) and Article 154(1) of Regulation No 207/2009, all international registrations designating the European Community are to be regarded, as from the date of registration, as being governed by the provisions applicable to an application for a Community trade mark.
29 Under Article 5 of Regulation No 207/2009, ‘[a]ny natural or legal person, including authorities established under public law, may be the proprietor of a Community trade mark’.
30 It follows from the express wording of this provision, 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. Clearly, that applies to a company established in a third State; but it also applies to the State itself, which, while a subject of international law, is nevertheless a legal person established under public law for the purposes of EU law.
31 It follows that, when the Monaco State, acting through its government, made an application seeking to designate the EU in connection with an international registration of the contested mark, it placed itself, through its own conduct, within the scope of Regulation No 207/2009. Consequently it became subject to the absolute grounds for refusal laid down in Article 7 of that regulation.
32 In other words, contrary to the contentions of the applicant, which has referred to certain international agreements made in fields other than that of Community trade marks, it is not a matter of the scope of EU law being extended to the Principality of Monaco, but of the Principality of Monaco voluntarily seeking the benefit of EU law (see, by analogy, judgments of 24 November 1992 in Poulsen and Diva Navigation, C‑286/90, ECR, EU:C:1992:453, paragraphs 21 to 28, and 21 December 2011 Air Transport Association of America and Others, C‑366/10, ECR, EU:C:2011:864, paragraphs 121 to 127), initially as a legal person established under public law within the meaning of Article 5 of Regulation No 207/2009, and then, indirectly, by transferring the rights attaching to the contested mark to the applicant.
33 The Board of Appeal was thus correct in stating that ‘a public or government body [had] no special entitlement to a trade mark, arising as a matter of principle’ (paragraph 20 of the contested decision). Furthermore, this shows that, contrary to what is maintained by OHIM in paragraphs 12 to 15 of the response, the issue had indeed been raised before the Board of Appeal.
34 In connection with this first part of the plea in question, the applicant has also sought ancillary forms of order, ‘in so far as necessary’, with a view to the General Court putting the following preliminary questions before the Court of Justice:
– Does Article 7(1)(c) of Regulation No 207/2009 apply to all economic operators, regardless of whether they are third States?
– Should Article 7(1)(c), read in conjunction with Article 7(2), of Regulation No 207/2009, be interpreted as extending the general interest attaching to the territory of the EU to the territory of a third State, thus directly or indirectly affecting the general interest of that State, having regard to the fact that the partial refusal to register the trade mark applied for limits the protection it offers within the territory of the third State, in this case the Principality of Monaco?
35 OHIM makes a plea of inadmissibility in respect of the claim to those forms of order.
36 Having regard to the matters set out in paragraphs 28 to 33 above, as well as the fact that the applicant has claimed those forms of order only ‘in so far as necessary’, it is open to the General Court to dispense with the examination of this claim.
37 In any event, it should be remembered, first, that the procedure laid down by Article 267 TFEU is an instrument of cooperation between the Court and the national courts. Accordingly, it is solely for a national court before which a dispute has been brought, and which must assume responsibility for the subsequent judicial decision, to determine in the light of the particular circumstances in each case both the need for a preliminary ruling in order to enable it to deliver judgment and the relevance of the questions which it submits to the Court (judgment of 7 July 2011 in Agafiţei and Others, C‑310/10, ECR, EU:C:2011:467, paragraph 25).
38 Secondly, the powers of the General Court are those set out in Article 256 TFEU, read subject to Article 51 of the Statute of the Court of Justice of the European Union and Article 1 of the Annex to the Statute. Under those provisions, the General Court has no power to refer questions to the Court, pursuant to Article 267 TFEU, for a preliminary ruling. It would not therefore be appropriate to refer this action to the Court under Article 112 of the Rules of Procedure of the General Court and the second paragraph of Article 54 of the Statute of the Court, on the ground that it falls exclusively within the Court’s jurisdiction.
39 Thirdly, while Article 256(3) TFEU provides that the General Court has jurisdiction to hear and determine questions referred for a preliminary ruling under Article 267 TFEU in specific areas laid down by the Statute, the Statute does not in fact specify any such areas. Thus, at present, it does not provide for any jurisdiction in that regard.
40 In the present case, it is in the context of an action for annulment brought against a decision of OHIM that the General Court is asked, without any case being pending before a court of a Member State, and solely on the initiative of the applicant, to refer questions to the Court for a preliminary ruling. Accordingly, its claim in that regard must be dismissed as inadmissible in any event.
41 It is therefore appropriate, in the light of the matters set out in paragraphs 28 to 40 above, to reject the first part of this plea.
As to the second part, relating to an alleged error of law in determining the general interest to be protected
42 Under the second part of this plea, the applicant maintains that the general interest pursued by Article 7(1)(c) of Regulation No 207/2009, namely that which requires that signs or indications which may serve, in trade, to designate the characteristics of the goods or services to which a trade mark application relates can be freely used by all (see, in this regard, judgment of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 62), is different from that which can be invoked by a third State such as the Principality of Monaco.
43 This second part of the plea is based on the same false premise as the first. It is not a matter of imposing EU law within the territory of Monaco, but of the Principality of Monaco, by means of an international agreement, seeking the benefit of EU law in order to take advantage of the contested mark throughout the territory of the EU. The Principality of Monaco, and subsequently the applicant, were thus subject, in seeking to act within and outside the internal market with the protection of a mark which is acknowledged to be identical, in its effect, to a Community mark, to the same requirements of general interest as any economic operator applying to register such a mark, or finding such a mark relied on against it.
44 Those considerations, which apply to the entire territory of the Union, apply with even greater force to a part of that territory, within the meaning of Article 7(2) of Regulation No 207/2009.
45 Accordingly, the second part of this plea must also be dismissed.
As to the third part, relating to an alleged manifest error of assessment in determining the relevant public
46 The applicant complains that the Board of Appeal identified the relevant public as the ‘Community public’ (paragraph 24 of the contested decision) and held that that consisted, depending on the product or service concerned, in part of average consumers and in part of a specialised public. It considered that ‘the profile of the relevant consumer’ (paragraph 73 of the application) had not been defined, particularly with regard to the assertion that the word ‘monaco’ ‘also alludes to notions of renown and luxury’ (also paragraph 73 of the application).
47 As a preliminary matter, it should be emphasised that 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 European 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 or services concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods or services with a place that may give rise to a favourable response (see, to this effect, judgment of 25 October 2005 in Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, ECR, EU:T:2005:373, paragraph 33 and the case-law cited).
48 Furthermore, it should be pointed out, first, that 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 (see Cloppenburg, cited in paragraph 47 above, EU:T:2005:373, paragraph 34 and the case-law cited).
49 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 (see Cloppenburg, cited in paragraph 47 above, EU:T:2005:373, paragraph 36 and the case-law cited).
50 In the light of all the foregoing, 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 (see Cloppenburg, cited in paragraph 47 above, EU:T:2005:373, paragraph 37 and the case-law cited).
51 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 turn, 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 Cloppenburg, cited in paragraph 47 above, EU:T:2005:373, paragraph 38 and the case-law cited).
52 In this case, the General Court’s examination must be confined to the question whether, for the relevant public, the contested mark consists exclusively of an indication that may serve, in trade, to designate the geographical origin of the goods and services concerned. In this regard, it is clear that ‘monaco’ is 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 third State — uses the same currency as 19 of the 28 Member States, the euro.
53 Consequently, the situation in the present case is unlike that considered in Cloppenburg (cited in paragraph 47 above, EU:T:2005:373). In that case, the Court of First Instance (as it then was) held that it had not been established that, for the relevant public, namely the average consumer in Germany, the word ‘cloppenburg’ made definite reference to a small town in that country. However, in the present case, 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.
54 The applicant nevertheless disputes that the relevant public is the EU public, and furthermore that there is any need to distinguish between the average consumer and a specialised public, according to the particular products or services concerned.
55 However, the Board of Appeal was right to hold, in relation to an international registration designating the entire European Community, that the relevant public was the Community public, and was also right to distinguish, in paragraph 24 of the contested decision, between products for mass consumption and services provided to the general public, in relation to which the relevant public was the average consumer, and specialised products and services provided to a specific public, in relation to which the relevant public was the specialised public. Accordingly, it did not make any error in defining the relevant public or in attributing to it a degree of attention which was sometimes average, sometimes high, according to the particular products or services concerned.
56 Consequently, the third part of this plea must be dismissed.
As to the fourth part, based partly on an assertion that there is no link between the geographical place in question and the products and services concerned, and partly on a manifest error said to have been made in the Board of Appeal’s assessment of the geographical criterion
57 The applicant argues that the Board of Appeal did not establish that, in the mind of the relevant public, there was a link between the Principality of Monaco and the production of magnetic data carriers, transport or temporary accommodation. In relation to sport and entertainment, it objects that only the Formula 1 races and circus performances, whose organisers own trade marks which are quite separate from the contested mark, are well known.
58 For the reasons correctly advanced by the Board of Appeal and restated in paragraph 20 of this judgment, and contrary to the applicant’s contentions, it must be held that the Board of Appeal established, to the requisite legal standard, in respect of each of the products and services concerned, a sufficiently direct and concrete link between those products and services and the contested mark to justify it in holding that the word ‘monaco’ was capable of serving, in trade, to designate the geographical origin or destination of the goods, or the place of performance of the services, and consequently, that that mark had a descriptive character in relation to the products and services concerned.
59 As to the allegation of a manifest error in the assessment of the geographical criterion, the applicant’s argument that a distinction should be drawn between the full name of the State (‘Principality of Monaco’) and the shortened name (‘Monaco’) cannot possibly be accepted. Drawing this distinction does not prevent the link between the products and services concerned and the geographical area in question from being identified. In this regard, the applicant’s argument based on word marks identical to the contested mark having previously been accepted by OHIM runs into two obstacles. First, while OHIM is required to take previous decisions into account under the principles of equal treatment and sound administration, and to take particular care in considering whether to decide the issue before it in the same way, those principles must be nevertheless be applied in a manner consistent with the principle of legality (see judgment of 17 July 2014 in Reber Holding v OHIM, C‑141/13 P, EU:C:2014:2089, paragraph 45 and the case-law cited). In the present case, as is apparent from paragraphs 47 to 58 above, the Board of Appeal rightly held that the ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009 applied to the trade mark applied for, so that the applicant cannot successfully rely on the previous decisions of OHIM to invalidate that conclusion. Secondly, OHIM’s reasoning in relation to numerous other products and services, described in paragraph 23 above and henceforth protected by the contested mark, was favourable to the applicant.
60 Accordingly, the fourth part of this plea must be dismissed, and with it the plea as a whole.
As to the plea based on failure to apply Article 7(1)(b) and Article 7(2) of Regulation No 207/2009 correctly
61 As regards the concept of distinctive character of trade marks, the applicant maintains that the Board of Appeal made an error of law, and also a manifest error of assessment. It is appropriate to consider both of these points, which appear under two separate pleas in the application, but which the General Court considers to be linked in that they depend on the interpretation of Article 7(1)(b) of Regulation No 207/2009.
As to the alleged error of law
62 The applicant considers that, in stating that there was an overlap in scope between the absolute grounds for refusal set out, respectively, in Articles 7(1)(b) and 7(1)(c) of Regulation No 207/2009, the Board of Appeal failed to have regard to either the previous practice of OHIM or the case-law.
63 In that regard, it should first be stated that, under the case-law cited in paragraph 59 above, the previous practice of OHIM cannot affect the legality of the contested decision.
64 Furthermore, it should be noted that, in contrast to what the applicant itself has done in the application, the Board of Appeal did not undertake a single, combined analysis of the two absolute grounds for refusal set out in Article 7 of Regulation No 207/2009. Rather, it first, and correctly, considered Article 7(1)(c) of that regulation, precisely because the word ‘monaco’ evoked the geographical area of the same name, and thus made it appropriate to begin by considering whether the products and services concerned had a sufficiently direct and concrete link with the geographical designation of the Principality of Monaco (paragraphs 21 to 31 of the contested decision). It was only later in the decision (in a passage being introduced by ‘furthermore’) that the Board of Appeal stated that the second absolute ground for refusal, based on Article 7(1)(b) of Regulation No 207/2009, also applied (paragraphs 32 and 33 of the contested decision), before going on to conclude that there was an overlap in the respective scopes of those absolute grounds for refusal (paragraph 34 of the contested decision). Indeed, the existence of such an overlap has been recognised in settled case-law (see, in this regard, judgment of 10 June 2008 in Novartis v OHIM (BLUE SOFT), T‑330/06, EU:T:2008:185, paragraph 30, and 7 October 2010 Deutsche Behindertenhilfe — Aktion Mensch v OHIM (diegesellschafter.de), T‑47/09, EU:T:2010:428, paragraph 24).
65 The applicant is thus wrong to argue that the Board of Appeal made an error of law in applying the provisions referred to above.
As to the alleged manifest error of assessment
66 As set out in paragraph 27 above, this argument relates mainly to the plea based on failure to apply Article 7(1)(c) of Regulation No 207/2009 correctly. None the less, the applicant maintains, in addition, that the Board of Appeal made a manifest error of assessment in holding that the contested mark was devoid of distinctive character, particularly in that it alluded to notions of renown and luxury and, more specifically, to ‘a particular conception of luxury’ (paragraph 77 of the application).
67 It should be emphasised here that 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 (see judgments of 11 February 2010 in Deutsche BKK v OHIM (Deutsche BKK), T‑289/08, EU:T:2010:36, paragraph 53, and 29 March 2012 Kaltenbach & Voigt v OHIM (3D eXam), T‑242/11, EU:T:2012:179, paragraph 39 and the case-law cited).
68 As has been held in paragraphs 47 to 60 above, the Board of Appeal did not make any error of law in deciding that the contested mark was descriptive of the products and services concerned. Accordingly, it cannot have any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 or, consequently (and following the reasoning of paragraph 44 above) Article 7(2) of that regulation.
69 Furthermore, as has been pointed out, in substance, in paragraph 64 above, the Board of Appeal also stated that the contested mark would essentially be perceived by the relevant consumer as conveying information, rather than indicating the commercial origin of the goods and services concerned (paragraph 33 of the contested decision). The General Court adopts this analysis, and it follows that the contested mark has no distinctive character in relation to those goods and services.
70 As to the allegation that the Board of Appeal failed to observe the principles of equal treatment, sound administration and legal certainty, this must be rejected as completely unfounded, as there is no material on the file which could support such an assertion. In particular, the way in which OHIM segregated product from product and service from service, so as to consider the link between them and the contested mark, is testament to a detailed and careful examination in accordance with the principle of sound administration and legal certainty. As to the principle of equal treatment, it is clear that the mere fact that some of the products concerned by the contested mark are protected, while others are not, cannot amount to a breach of that principle. That fact simply illustrates that in order for there to be a failure to observe the principle, the situations concerned must be comparable, having regard to all of the features which characterise them. However, that is not the case here.
71 Consequently this plea and, accordingly, the entire action must be dismissed.
Costs
72 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.
73 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Marques de l’État de Monaco (MEM) to pay the costs.
Delivered in open court in Luxembourg on 15 January 2015.
[Signatures]