JUDGMENT OF THE GENERAL COURT (Second Chamber)
7 June 2011 (*)
(Community trade mark – Invalidity proceedings – Community word mark 16PF – Absolute grounds for refusal – Distinctive character – No descriptive character – No signs which have become customary – No bad faith – Article 7(1)(b) to (d) and Article 51(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) to (d) and Article 52(1)(b) of Regulation (EC) No 207/2009))
In Case T‑507/08,
Psytech International Ltd, established in Pulloxhill (United Kingdom), represented by N. Phillips, Solicitor, and N. Saunders, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Institute for Personality & Ability Testing, Inc., established in Champaign, Illinois (United States), represented by G. Hobbs, QC, and A. Chaudri, Solicitor,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 23 July 2008 (Case R 1012/2007-2), relating to invalidity proceedings between Psytech International Ltd and the Institute for Personality & Ability Testing, Inc.,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood, President, J. Schwarcz and A. Popescu (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 21 November 2008,
having regard to the response of OHIM lodged at the Registry on 17 March 2009,
having regard to the response of the intervener lodged at the Registry on 16 April 2009,
having regard to the decision of 9 June 2009 not to allow the lodging of a reply,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the Court,
having regard to the change in the composition of the Chambers of the General Court,
gives the following
Judgment
Background to the dispute
1 On 6 October 2000, the intervener, the Institute for Personality & Ability Testing, Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the word sign 16PF.
3 The goods and services for which registration was sought are in Classes 9, 16, 35, 41 and 42 of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 9: ‘Computer software; computer software for use in behavioural testing, personal evaluation, personality interpretation, personality assessment, personality testing; computer software for use in the administration, scoring, interpretation and reporting of personality tests, personality assessment, personal evaluation and personal interpretation; pre-recorded CD-ROMS, magnetic data carriers, pre-recorded data carriers providing manuals, test booklets, answer sheets, profile sheets, norm tables, scoring keys, work sheets, work books, reports, questionnaires, record forms, user guides, planning booklets, reference materials, hand books, technical reports and books particularly in the area of behavioural testing, personality assessment, personal evaluation and personal interpretation or the administration, scoring, interpretation and reporting of personality testing and personality assessment’;
– Class 16: ‘Printed matter and printed publications relating to behavioural testing, personality assessment, personal evaluation and personal interpretation; paper testing materials for personality assessment, personality testing, personal evaluation and personal interpretation; manuals, test booklets, answer sheets, profile sheets, norm-tables, scoring keys, work sheets, work books, reports, questionnaires, record forms, user guides, planning booklets, reference materials, hand books, technical reports and books, particularly relating to personality assessment, personality testing, personal evaluation and personal interpretation, administration, scoring, interpretation and reporting of personality assessment, personality testing, personal evaluation and personal interpretation’;
– Class 35: ‘Data processing services, particularly relating to personality assessment, personality testing, personal evaluation, personal interpretation and the administration, scoring, interpretation and reporting of personality assessment, personality tests, personal evaluations and personal interpretation’;
– Class 41: ‘Education and training services; education and training relating to personality assessment, personality testing, personal evaluation and personal interpretation and the use of printed matter, printed publications and pre-recorded CD-ROM, magnetic data carrier[s] or other pre-recorded data carriers in personality assessment, personality testing, personal evaluation and personal interpretation; conducting workshops and training sessions in the field of personality testing, personality assessment, personal evaluation and personal interpretation’;
– Class 42: ‘Computer programming and data analysis services, particularly relating to personality assessment, personality testing, personal evaluation, personal interpretation and the administration, scoring, interpretation and reporting of personality assessment, personality tests, personal evaluations and personal interpretation’.
4 On 17 March 2003, the Community trade mark 16PF was registered under the number 1892652.
5 On 17 September 2003, the applicant, Psytech International Ltd, filed an application for a declaration of invalidity against the abovementioned Community trade mark. The application for a declaration of invalidity was based on Article 51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009), read in conjunction with Article 7(1)(b) to (d) of Regulation No 40/94 (now Article 7(1)(b) to (d) of Regulation No 207/2009) and Article 51(1)(b) of that regulation (now Article 52(1)(b) of Regulation No 207/2009).
6 By decision of 18 May 2007, the Cancellation Division dismissed the application for a declaration of invalidity.
7 On 29 June 2007, the applicant filed a notice of appeal at OHIM against the Cancellation Division’s decision.
8 By decision of 23 July 2008 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal.
9 The Board of Appeal, after stating that 16PF was the abbreviation of ‘16 personality factors’ and designated a specific behavioural test developed by Dr Cattell, found that none of the provisions of Article 7(1) of Regulation No 40/94 invoked was applicable since the sign in question was sufficiently distinctive, was not descriptive and had not become customary. It also found that no act of bad faith, within the meaning of Article 51(1)(b) of Regulation No 40/94 had been proved.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
11 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 The applicant relies on four pleas in law in support of its action. The first, second and third pleas allege infringement of Article 7(1)(c), (d) and (b) respectively of Regulation No 40/94 and the fourth alleges infringement of Article 51(1)(b) of Regulation No 40/94.
The first plea: infringement of Article 7(1)(c) of Regulation No 40/94
Arguments of the parties
13 The applicant takes the view that the relevant consumer is an informed person who is purchasing and administering the tests, for example someone in a personnel department or a psychologist. The relevant consumer is not the person taking the tests, nor is it a general member of the public as the Board of Appeal appears to conclude in paragraph 16 of the contested decision.
14 According to the applicant, 16PF is synonymous with the 16 personality factor theory of Dr Cattell and it is not a trade mark since it does not serve to identify the goods and services as coming from an undertaking.
15 The applicant states that, having correctly noted in paragraph 17 of the contested decision that there was no dispute between the applicant and the intervener that 16PF stands for 16 personality factors, the Board of Appeal’s finding that ‘no characteristics of … the goods and services are described by “16PF”’ is wrong.
16 The applicant submits that the findings made by the Board of Appeal in relation to the sign 16PF are incomprehensible and contrary to the Cancellation Division’s findings of fact. In particular, the Board considers that there is a trait or factor analytic theory which uses 16 personality factors; that 16PF is mentioned ‘in relation with a trait theory’; that the 16PF mark is an abbreviation for 16 personality factors, but that there is no chance whatsoever that 16PF could be used to refer to the abovementioned theory as it is only ever used to refer to a ‘specific test’. That reasoning on the part of the Board of Appeal is illogical and circular.
17 The applicant considers that it is important to distinguish the licence of a copyright work from the fact that 16PF may function as a sign capable of distinguishing one undertaking from other undertakings, which is the essential function of a trade mark. The sign 16PF is regarded by the relevant consumers as a reference to the theory developed by Dr Cattell. The ‘16PF Questionnaire’ is therefore a questionnaire developed in accordance with the 16 Personality Factors theory developed by Dr Cattell.
18 The applicant states that three other factors are relevant to the assessment of the evidence submitted in the present case. First, 16PF is the natural abbreviation for the 16 personality factors and is used in a sector which the evidence establishes has a strong tendency to abbreviate the names of psychological theories. Secondly, much of the evidence before the Court has been generated for the purpose of those proceedings and it should be accorded less weight than the other evidence which is free-standing and pre-dates this dispute. Thirdly, 16PF is used, even in the intervener’s own evidence, as an abbreviation for the theory in question itself. In the present case, 16PF is used adjectivally, as denoting the nature of the test or questionnaire as one which implements the ‘16PF theory’.
19 The applicant submits that the evidence provided clearly establishes that 16PF could be used to designate a characteristic of the goods and services in the application, namely that they relate to Dr Cattell’s 16 personality factor theory. Moreover, the use of 16PF suggests a sufficiently direct and specific link to those goods and services, which would enable the public concerned to perceive immediately, without further thought, the nature of the goods and services in question.
20 Finally, the applicant considers that the Board of Appeal erred in law by stating, in paragraph 40 of the contested decision, that the applicant ‘failed to prove that the term “16PF” is commonly used by traders or providers’. According to the applicant, that requirement sets the burden of proof on the applicant at too high a level and is inconsistent with the principle that it is not necessary for the Court to establish that such descriptive terms are actually in use; it is sufficient that such signs and indications could be used to designate a characteristic of the goods and services.
21 OHIM and the intervener dispute the applicant’s arguments.
Findings of the Court
22 As regards Article 7(1)(c) of Regulation No 40/94, it is important to note that that provision prohibits the registration as trade marks of signs and indications that 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’. Those descriptive signs are incapable of fulfilling the indication-of-origin function which forms an integral part of the trade mark (Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 31, and the judgment of 2 April 2008 in Case T‑181/07 Eurocopter v OHIM (STEADYCONTROL), not published in the ECR, paragraph 35).
23 The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve, in normal usage from the point of view of the public concerned, to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration was sought (Case T‑207/06 Europig v OHIM (EUROPIG) [2007] ECR II‑1961, paragraph 26, and the judgment of 21 May 2008 in Case T‑329/06 Enercon v OHIM (E), not published in the ECR, paragraph 21).
24 According to settled case-law, a sign will be descriptive if there is a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question (EUROPIG, paragraph 27, and STEADYCONTROL, paragraph 36).
25 Article 7(1)(c) of Regulation No 40/94 reflects the general interest that descriptive indications of the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly aims to prevent such indications from being reserved to one undertaking alone because they have been registered as trade marks, when other undertakings – including its competitors for example – might wish to describe their own goods by using precisely the terms registered as a trade mark (see judgment of 6 March 2007 in Case T‑230/05 Golf USA v OHIM (GOLF USA), not published in the ECR, paragraph 26 and the case-law cited).
26 It should also be noted that the descriptiveness of a sign may be assessed only, first, in relation to the relevant public’s understanding of that sign and, secondly, in relation to the goods or services in question (STEADYCONTROL, paragraph 38, and E, paragraph 23). A mark’s descriptive character must be assessed in relation to the goods for which the mark was registered and in the light of the presumed perception of an average consumer of the category of goods in question, who is reasonably well informed and reasonably observant and circumspect.
27 It is in the light of those considerations that the applicant’s arguments must be assessed.
28 As regards the relevant public in the present case, it must be pointed out that the list of goods and services concerned (see paragraph 3 above) includes both goods and services intended primarily for specialists in the area of personality assessment and personality testing and goods and services intended for the general public. For example, the disputed mark covers ‘computer software’ in Class 9 and ‘education and training services’ in Class 41, but neither the content nor the sphere of application of those goods and services is specified. The target public in respect of that ‘computer software’ and those ‘education and training services’ may therefore include the general public and professionals working in any sector, whether or not that sector is linked to behavioural testing. Furthermore, it must be pointed out that, contrary to what the applicant submits, consumers who are part of the general public who take behavioural tests are also part of the relevant public because they may wish to purchase one of the goods in Classes 9 and 16 in order to prepare for such tests in view of recruitment.
29 Therefore the Board of Appeal was right to find that the relevant public is both the general public and professionals in the field of personality assessment and personality testing.
30 It must be assessed whether, for the public in question, there is a sufficiently direct and specific relationship between the intervener’s mark and the goods and services which it protects (see, to that effect, GOLF USA, paragraph 28 and the case-law cited).
31 According to the Board of Appeal, the mark 16PF is an invented combination which has no meaning in respect of goods and services linked to behavioural testing and even less in respect of goods and services which are not linked to that testing. It takes the view that, although 16PF stands for 16 personality factors, that is not sufficient in itself to assert that the mark is descriptive of the goods and services or that it designates one of their characteristics.
32 The Board of Appeal takes the view that the applicant has failed to prove that the term ‘16PF’ is commonly used in trade in relation to the goods and services at issue. It adds that that term does not designate any characteristic of the registered goods and services, or even of the test itself, although that term is likely to be perceived by the specialised public as the name of that test. On the contrary, according to the Board of Appeal, the evidence provided shows that 16PF refers to a specific questionnaire, which is considered to be one of the leading questionnaires in personal assessment and which is copyrighted.
33 In the present case, the applicant has put forward no grounds to invalidate that assessment by the Board of Appeal.
34 It is apparent from the file that 16PF is an arbitrary name invented by Dr Cattell. Dr Cattell’s research in the area of the theory of personality traits resulted in his developing a questionnaire based on 16 personality factors. That questionnaire is called the ‘16PF Questionnaire’ or the ‘16PF Test’.
35 The evidence submitted by the parties, as the Board of Appeal correctly pointed out in paragraph 31 of the contested decision, shows that the mark 16PF refers to a specific questionnaire, the author of which is Dr Cattell, and that there is no such thing as a 16PF theory. The fact that 16PF may be mentioned in connection with a personality trait theory is explained simply by the fact that the 16PF questionnaire was developed on the basis of that theory.
36 That finding is moreover not called into question by the applicant’s claims relating to the assessment of the evidence submitted (see paragraph 18 above).
37 First, the fact that the sign 16PF is used in a sector in which there is a strong tendency to abbreviate the names of psychological theories, even were it to be accepted that that fact has been proved, is not sufficient, in itself, to conclude that what is in issue is a theory and not a test.
38 Secondly, as regards the applicant’s argument that the Court should accord more weight to the evidence which pre-dates the present dispute, the applicant does not specify which particular item of evidence it is referring to and does not therefore make it possible for the Court to give a ruling on that aspect.
39 Thirdly, as regards the applicant’s argument that 16PF is used adjectivally, as denoting the nature of the test or questionnaire as one which implements the ‘16PF theory’, it must be pointed out first of all that the Board of Appeal correctly found that even the evidence put forward by the applicant confirms that, where the name 16PF is used, it is almost always to refer to a specific test which has a single origin. That stems from the fact that the 16PF questionnaire is a questionnaire in respect of which the intervener holds the copyright, a fact which does not, moreover, appear to be disputed by the applicant.
40 Furthermore, the fact that some of the goods and services at issue relate to a system of personality analysis based on 16 factors is not sufficient to regard the sign 16PF as descriptive of those goods and services. It must be pointed out, as did OHIM, that the average professional in the human resources sector would not understand the meaning of the mark at issue without a complex process of interpretation involving time of reflection and a significant amount of imagination. Such a process of interpretation is incompatible with the recognition of the descriptive character of a sign, the meaning of which must be immediately perceived without further thought.
41 In that regard, it must be pointed out that, even if a section of the relevant public could perceive, without further thought, the intervener’s mark as referring to Dr Cattell’s 16 factor personality test, that would suggest that that mark performs the essential function of a trade mark which is to allow identification of commercial origin (see, to that effect, the judgment of 24 September 2008 in Case T‑248/05 HUP Uslugi Polska v OHIM – Manpower (I.T.@MANPOWER), not published in the ECR, paragraph 44).
42 Therefore, as regards the specialised public, it must be held that the link between the sign and the characteristics of the goods and services in question is not sufficiently ‘clear and direct’.
43 As regards the assessment of the descriptive character of the sign 16PF in relation to the understanding which the general public has of it, it is sufficient to point out that, in view of the foregoing considerations, it will be perceived as a sign which is devoid of any meaning by all those who do not have a very good knowledge of behavioural studies and, therefore, as non-descriptive.
44 Furthermore, the head of claim as regards the alleged error of law which the Board of Appeal made by declaring in paragraph 40 of the contested decision that the applicant ‘failed to prove that the term ‘16PF’ is commonly used by traders or providers’ cannot be upheld.
45 First, it must be borne in mind that, in order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A 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 (OHIM v Wrigley, paragraph 32).
46 Secondly, it must be pointed out that the Board of Appeal itself refers to that case-law in paragraph 41 of the contested decision and finds, in essence, that none of the potential meanings of the element ‘16PF’ designates a characteristic of the goods or services concerned. Therefore, although the Board of Appeal erred in requiring the applicant to prove that the term 16PF is commonly used, that error does not make its finding relating to the absence of distinctive character of the sign at issue unlawful.
47 Lastly, as regards the decision made by the United Kingdom Patent Office on 26 September 2008, which annulled a national mark which was identical to the disputed Community trade mark, it is sufficient to point out that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Therefore, the registrability of a sign as a Community trade mark must be assessed by reference only to the relevant Community rules. OHIM and, if appropriate, the European Union judicature are not bound by a decision given in a Member State, or a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) or in a country belonging to the linguistic area in which the word sign in question originated (judgment of the General Court of 13 November 2008 in Case T‑346/07 Duro Sweden v OHIM (EASYCOVER), not published in the ECR, paragraph 66).
48 It follows from the foregoing that the plea alleging infringement of Article 7(1)(c) of Regulation No 40/94 must be rejected.
The second plea: infringement of Article 7(1)(d) of Regulation No 40/94
Arguments of the parties
49 The applicant submits that Article 7(1)(d) of Regulation No 40/94 prevents registration, not on the basis of lack of distinctive character, but on the basis of current usage in the trade sectors covering trade in the goods or services for which registration of the marks is sought. Accordingly, that provision does not require an examination of whether the sign is inherently descriptive of the relevant goods or services. Furthermore, because it is not necessary to consider whether the sign describes the goods or services, it follows that it is not necessary to examine the manner in which it is used, the relevant test being that of whether the sign has become customary to designate the goods and services in respect of which the application for registration has been made.
50 The applicant submits that the evidence provided establishes that 16PF is a sign that has become customary in the trade and that the Board of Appeal should have found that the Community trade mark fell under Article 7(1)(d) of Regulation No 40/94. In that regard the applicant relies upon the same evidence as that relied upon in connection with Article 7(1)(c) of Regulation No 40/94.
51 Furthermore, according to the applicant, the contested decision is vitiated by the fact that the Board of Appeal reproduced erroneous reasoning on the part of the Cancellation Division as regards infringement of Article 7(1)(d) of Regulation No 40/94.
52 OHIM and the intervener dispute the applicant’s arguments.
Findings of the Court
53 Article 7(1)(d) of Regulation No 40/94 must be interpreted as precluding registration of a trade mark only where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought. Accordingly, whether a mark is customary can be assessed only, firstly, by reference to the goods or services in respect of which registration is sought, even though the provision in question does not explicitly refer to those goods or services, and, secondly, on the basis of the target public’s perception of the mark (see Case T‑322/03 Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN) [2006] ECR II‑835, paragraph 49 and the case-law cited).
54 With regard to the target public, the question whether a sign is customary must be assessed by taking account of the expectations which the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, is presumed to have in respect of the type of goods in question (WEISSE SEITEN, paragraph 50).
55 Furthermore, although there is a clear overlap between the scope of Article 7(1)(c) and Article 7(1)(d) of Regulation No 40/94, marks covered by Article 7(1)(d) are excluded from registration not on the basis that they are descriptive, but on the basis of current usage in trade sectors covering trade in the goods or services for which registration of the marks is sought (WEISSE SEITEN, paragraph 51).
56 Finally, signs or indications constituting a trade mark which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that mark are not capable of distinguishing the goods or services of one undertaking from those of other undertakings and do not therefore fulfil the essential function of a trade mark (WEISSE SEITEN, paragraph 52).
57 In the present case, the applicant must therefore show that the sign 16PF has actually become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which the mark has been registered.
58 The applicant has not been able to provide sufficient evidence. In actual fact, that evidence shows, on the contrary, that the mark 16PF is widely used to designate the specific origin of the goods or services in question.
59 In the present case, the Board of Appeal was right to find that 16PF was commonly used in scientific publications to designate a specific questionnaire based on Dr Cattell’s research. The Board of Appeal found however that that was not sufficient to prove that the sign 16PF is generic in nature, because the specialised public was informed that that questionnaire came from a particular source. In other words, 16PF is commonly referred to as a source indicator and not as ‘an equivalent of any type of personality questionnaire’, regardless of its commercial origin.
60 In that regard it must be pointed out, as did OHIM, that, according to the applicant, 16PF is the generic name of a test and, consequently, of all the printed matter in Class 16. However, the applicant does not claim that 16PF was the customary designation for the other goods and services in question in Classes 9, 35, 41 and 42. The application of Article 7(1)(d) of Regulation No 40/94 must therefore be excluded in respect of those classes of goods and services.
61 As regards the goods in Class 16, it is common ground that Dr Cattell published his behavioural theory in 1949 and that he concomitantly marketed the tests stemming from his research. However, the date on which the 16PF tests were marketed for the first time in the European Union is unknown.
62 The intervener and its licensees were the only ones who marketed the questionnaires in the European Union under the name 16PF until recently. The Board of Appeal mentioned that a company called The Test Agency, Inc. had begun to market the tests under the name 16PF in 1999. Furthermore, it is not disputed that The Test Agency ceased to use that sign after the intervener’s complaints regarding that use.
63 On the basis of the information contained in the file, it may be stated that the use of the sign 16PF in the trade, except by the intervener, was therefore limited to one single trader in the European Union. Furthermore, that use came to an end following the intervener’s reaction.
64 Consequently, even if that use had begun in 1999, it is difficult to take the view that, one year later, at the time when the application for registration of the disputed mark was filed on 6 October 2000, the sign 16PF had become a term which was commonly used by traders to designate questionnaires other than those of the intervener. Furthermore, the applicant puts forward no evidence in support of that argument.
65 That is all the more so, if, as a study carried out in 2001 suggests, the use of the sign Industrial 16PF by The Test Agency began in 2000.
66 Furthermore, it must be pointed out, as did OHIM, that the references to 16PF in scientific publications are not relevant. Those references cannot be equivalent to use in business circles, in other words to use in the context of a commercial activity for the purposes of an economic advantage, and do not moreover prove, given their scientific nature, that 16PF had become customary in the current language. Consequently, those references as such do not prove that 16PF had become customary in the bona fide and established practices of the trade to designate the goods in question both as regards the specialised public and the general public.
67 As regards the applicant’s argument that there are other instruments which use Dr Cattell’s 16PF model and which have no link to the intervener, it is sufficient to point out that the applicant does not show that those tests and training services were marketed or provided under the name 16PF. The only examples put forward by the applicant are the tests named ‘15FQ’, ‘International Personality Item Pool’ or ‘Adult Personality Inventory’.
68 Lastly, the head of claim that the contested decision is vitiated by the fact that the Board of Appeal reproduced erroneous reasoning on the part of the Cancellation Division as regards infringement of Article 7(1)(d) of Regulation No 40/94 must also be rejected.
69 In that regard, it must be pointed out that, although it is true that the Board of Appeal concurs with the Cancellation Division’s finding that the mark at issue has never been and is not a customary term for designating the goods and services in question, it is also true that the Board of Appeal expressly rejects, in paragraph 45 of the contested decision, the ‘rather unfortunate’ wording at issue in paragraph 19 of the Cancellation Division’s decision, which does not relate specifically to Article 7(1)(d) of Regulation No 40/94.
70 In the light of the foregoing considerations, the plea alleging infringement of Article 7(1)(d) of Regulation No 40/94 must therefore be rejected.
The third plea: infringement of Article 7(1)(b) of Regulation No 40/94
Arguments of the parties
71 As regards the analysis of Article 7(1)(b) of Regulation No 40/94, the applicant submits that the Board of Appeal proceeded on the erroneous assumption that the only basis on which the Community trade mark could be challenged is the fact that the combination of letters which constitute it is not distinctive. The evidence provided shows that 16PF is a natural abbreviation for the 16 personality factors, which is incapable of distinguishing the goods and services of one undertaking from those of others.
72 The Community trade mark 16PF is not therefore sufficiently distinctive and the registration of that mark should thus be declared invalid on that ground. It is necessary, in particular, to consider the characteristics of the relevant consumers in the market in question because they are persons with some psychological training who are likely to have been educated about the 16 personality factors identified by Dr Cattell.
73 OHIM and the intervener dispute the applicant’s arguments.
Findings of the Court
74 Under Article 7(1)(b) of Regulation No 40/94, ‘trade marks which are devoid of any distinctive character’ must not to be registered.
75 According to the case-law, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the product in respect of which registration has been applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (see Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 34 and the case-law cited).
76 Accordingly, the signs referred to in that article are signs which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired the goods to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (Case T‑79/00 Rewe-Zentral v OHIM (LITE) [2002] ECR II‑705, paragraph 26, and Case T‑281/02 Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld) [2004] ECR II‑1915, paragraph 24).
77 The distinctiveness of a mark must be assessed, first, in relation to the goods or services for which registration has been requested and, second, in relation to the perception of the section of the relevant public, which is composed of consumers of those goods or services (LITE, paragraph 27).
78 In the present case, the Board of Appeal found that the alphanumeric combination ‘16pf’ was not used in everyday speech or in professional slang to distinguish goods and services other than Dr Cattell’s particular questionnaire. Consequently, according to the Board of Appeal, the sign 16PF is clearly capable of distinguishing the goods and services covered in terms of their commercial origin.
79 In that regard, it is sufficient to point out that the applicant does not succeed in calling into question those findings of the Board of Appeal in so far as it relies on the descriptive character of the mark at issue to draw conclusions as regards its alleged absence of distinctive character. It has been held, in the context of the analysis of the applicant’s first plea, that the Board of Appeal did not err in finding that that mark was not descriptive.
80 Consequently, the applicant’s plea alleging infringement of Article 7(1)(b) of Regulation No 40/94 must be rejected.
The fourth plea: infringement of Article 51(1)(b) of Regulation No 40/94
Arguments of the parties
81 The applicant submits, in essence, that the Board of Appeal infringed Article 51(1)(b) of Regulation No 40/94 inasmuch as it did not find that the mark 16PF had been registered in bad faith by the intervener.
82 First, according to the applicant, the bad faith is due to the fact that the number of goods and services in respect of which the intervener applied for and obtained registration is too large and that the intervener had no intention of using the mark at issue for the entire list of goods and services in the application for registration.
83 Secondly, the applicant takes the view that the mark at issue was registered in bad faith because test materials marked 16PF have been provided to persons not trained by the intervener or their licensees and, prior to the date of the application for registration, third parties such as the applicant were providing training services in connection with the 16PF test and theory. The intervener has thus obtained the registration of a Community trade mark the effect of which is to prevent third parties from making use of it which is legitimate and, furthermore, in some circumstances, prior to the application for registration.
84 Thirdly, the applicant submits that the registration of the sign 16PF as a Community trade mark monopolises a scientific theory some 50-odd years after its development and acceptance into the relevant field.
85 OHIM and the intervener dispute the applicant’s arguments.
Findings of the Court
86 Under Article 51(1)(b) of Regulation No 40/94 ‘[a] Community trade mark shall be declared invalid on application to [OHIM] or on the basis of a counterclaim in infringement proceedings … where the applicant was acting in bad faith when he filed the application for the trade mark.’
87 According to the case-law, in order to determine whether the applicant is acting in bad faith within the meaning of Article 51(1)(b) of Regulation No 40/94, it is necessary to take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; the applicant’s intention to prevent that third party from continuing to use such a sign; and the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (Case C‑529/07 Chocoladefabriken Lindt & Sprüngli [2009] ECR I‑4893, paragraph 53).
88 In the present case it must be pointed out, first, that neither Regulation No 40/94 nor the case-law provides a basis that would enable the Court to find that there is bad faith in view of the size of the list of goods and services in the application for registration, with the result that that argument must be rejected.
89 In any event, an examination of the goods and services in respect of which the intervener applied for and obtained registration shows that they are precisely the kind of goods and services which it provides in the context of its commercial activities. The intervener filed its application in respect of the goods and services for which it was using the mark 16PF or for which it intended to do so and the specifications in the list are not too extensive in relation to its activities. Furthermore, on the basis of the material in the file, it may be stated that the mark 16PF is already widely used for a number of goods and services designated in the registration document.
90 Secondly, the applicant’s argument relating to the fact that earlier documents relating to the 16PF questionnaire were used by persons who were not trained or authorised by the intervener must also be rejected. It must be pointed out, first, that the fact that the applicant for the trade mark knows or must know that a third party has for a long time been using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to prove that there is bad faith on the part of the applicant for the trade mark and, secondly, that a person’s right to protect his own mark cannot be undermined by unlawful use of that mark on the part of third parties.
91 Furthermore, it is apparent from the file that the intervener acted in order to prevent such a use of its mark 16PF (see paragraph 27 of the contested decision). The Board of Appeal correctly stated that it was altogether legitimate to take the measures necessary to protect a mark of which the holder legitimately claims to be the proprietor, including the registration of that mark.
92 Thirdly, the applicant’s argument that bad faith is shown by the very registration of the Community trade mark 16PF because it monopolises a ‘generic scientific theory’ must be rejected as unfounded. In that regard, reference must be had to the considerations set out previously in paragraphs 34 to 40 above according to which the Board of Appeal correctly excluded the existence of a theory named 16PF. In any event, it must be pointed out, as did the applicant, that registration of a trade mark for particular goods and services in the course of trade does not operate so as to prevent third parties from researching, discussing or developing a scientific theory, no matter how the theory is referred to.
93 It must therefore be held that, as the applicant has not provided any other valid evidence to claim that the intervener acted in bad faith, the plea alleging infringement of Article 51(1)(b) of Regulation No 40/94 must be rejected.
94 It is apparent from all of the foregoing that none of the pleas in law put forward by the applicant is well founded. Accordingly, the present action must be dismissed.
Costs
95 Under Article 87(2) 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, it must be ordered to pay the costs of OHIM and of the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Psytech International Ltd to pay the costs.
Delivered in open court in Luxembourg on 7 June 2011.
[Signatures]