Case T‑458/13

Joseba Larrañaga Otaño

and

Mikel Larrañaga Otaño

v

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

(Community trade mark — Application for Community word mark GRAPHENE — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Eighth Chamber), 16 October 2014

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 — Concept

(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 which may serve to designate the characteristics of goods — Aim — Need to preserve availability

(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 which may serve to designate the characteristics of goods — Word mark GRAPHENE

(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 — Separate examination of the grounds for refusal in relation to each of the goods or services covered by the application for registration — Obligation to state the reasons for refusing to register — Scope

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

5.      Community trade mark — Decisions of the Office — Principle of equal treatment — Principle of sound administration — OHIM’s previous decision-making practice

(Council Regulation No 207/2009)

1.      The signs and indications referred to in Article 7(l)(c) of Regulation No 207/2009 are those which may serve in normal usage, from the point of view of the relevant public, to designate, either directly or by reference to one of their essential characteristics, goods or services in respect of which registration is sought. 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 in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics.

In order for OHIM to refuse registration on the basis of the ground set out in Article 7(1)(c) of Regulation No 207/2009, the signs or indications comprising the trade mark need not actually be in use at the time when registration is applied for, for the purposes of describing goods or services such as those in respect of which the application is made or of describing the characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications may be used for such purposes. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. Furthermore, it is immaterial whether the characteristics of the goods or services being described are commercially essential or secondary.

The fact that the mark applied for describes a characteristic which does not, at the current stage of the technology, exist does not preclude it being perceived as descriptive by the relevant public. It is sufficient, in order to justify refusal of the mark applied for in this case, that in the perception of the relevant public it be able to be used for the purposes of designating an actual or potential characteristic of the goods referred to, even if that characteristic does not yet pertain at the current stage of technology. That possibility must be assessed by reference to the perception of the relevant public and not according to the findings of scientific experts.

(see paras 16, 20-22)

2.      See the text of the decision.

(see para. 18)

3.      The word sign GRAPHENE, registration of which has been applied for in respect of ‘firearms; ammunition and projectiles; explosives; fireworks’, ‘yarns and threads for textile use’ and ‘clothing, footwear, headgear’ within Classes 13, 23 and 25 of the Nice Agreement, is descriptive of the products covered by the application for a Community trade mark within the meaning of Regulation No 207/2009 on the Community trade mark, from the point of view of the relevant public, comprising both the general public and the specialised professional public. There is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of a current or potential characteristic of those products, namely that grapheme is used in their composition.

(see paras 19, 23, 24)

4.      See the text of the decision.

(see para. 26)

5.      See the text of the decision.

(see paras 35, 36)