JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
2 April 2009 (*)
(Community trade mark – Application for the Community word mark ULTIMATE FIGHTING – Absolute ground for refusal – Lack of distinctive character – Duty to state reasons – Articles 7(1)(b) and 73 of Regulation (EC) No 40/94)
In Case T‑379/05,
Zuffa, LLC, established in Las Vegas, Nevada (United States), represented by S. Malynicz, Barrister, M. Blair and C. Balme, Solicitors,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
ACTION brought against the decision of the First Board of Appeal of OHIM of 8 August 2005 (Case R 24/2005-1) concerning registration of the word sign ULTIMATE FIGHTING as a Community trade mark,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of J. Azizi, President, E. Cremona and S. Frimodt Nielsen (Rapporteur), Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Court Registry on 14 October 2005,
having regard to the response lodged at the Court Registry on 14 December 2005,
having regard to the order of the President of the Third Chamber of 13 November 2008 joining the present case with Case T-118/06 for the purposes of the oral procedure,
further to the hearing on 16 December 2008,
gives the following
Judgment
Background to the dispute
1 On 5 July 2002, the applicant, Zuffa, LLC, filed an application under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, for registration of a Community word mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
2 The mark for which registration was sought is the word mark ULTIMATE FIGHTING.
3 The goods and services in respect of which registration of the mark was sought are in Classes 9, 16, 25, 28 and 41 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 (‘the Nice Agreement’), and correspond, for each of those classes, to the following description:
– ‘Pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital video discs; digital versatile discs; CD-ROM discs; computer game programs; computer software; motion picture films; eyeglasses; sunglasses; video game cartridges and discs; computer game cartridges; computer game discs’ in Class 9;
– ‘Books and printed instructional and teaching manuals in the field of sports and entertainment; note paper dispensers; general features, sports, fitness and entertainment magazines; newspapers in the field of sports, fitness and entertainment; calendars; mounted and unmounted photographs; trading cards; road maps; books and journals featuring athletic contests and games; catalogues for the sale of athletic merchandise; envelopes; cartoon prints on paper and cardboard; blank and picture postcards; note cards; note pads; greeting cards; cookbooks; adult and children’s activity and colouring books; puffy stickers; adhesive stickers; photograph albums; memorandum books; pens; pencils; folders and portfolios for papers; notebooks and binders; letter openers; memo holders; pennants made of paper and mounted on sticks; diaries; clipboards; book covers; book marks; bulletin boards; erasable memo boards; pen and pencil holders; paper clip holders; paper weights; paper napkins and towels; posters; event programs; writing paper and stationery; drawing paper; gift wrapping paper; luminous paper; graphics paper; stickers; paper banners; decals and windshield decals strips; collector decals and collector decals with display sheets; bumper stickers and strips; memo pads; non-electric erasers; electric erasers; stationery holders; maps; desk sets; colour lithograph sticker books; postcard books; holographic greeting and trading cards; pencil bags; pencil sharpeners; gift wrapping paper sets; decorative gift boxes; comic books; bookmarks; posterbooks; paper, party and lawn signs; stamp pads; rubber stamps for impressing illustrated images; score, check and autograph books; adhesive tape dispensers for stationery or household use; corrugated cardboard storage boxes and corrugated closet wardrobes and storage boxes; reflective paper stock’ in Class 16;
– ‘Clothing and wearing apparel, namely, warm-up suits, sweatshirts, sweatpants; tee-shirts; polo shirts; golf shirts; sports shirts; tank tops; vests; pants for babies; baby booties; belts; neckties; suspenders; bandanas; beach sandals; infant and toddler sleepwear; robes; nightshirts and night gowns; pyjamas and loungewear; bathing suits; beach wear; diaper sets; toddler short sets; jogging suits; rompers; boys short sets; socks; playsuits; coveralls; wristbands; union suits; henley suits; shorts; skirts; blouses; pants; slacks; shirts; jackets; referees and umpires uniforms; athletic uniforms; team uniform reproductions; sweaters; parkas; turtlenecks; mittens and gloves; underwear; jerseys; bowties; headwear and scarves; ear muffs; earbands and headbands; hosiery; rainwear, namely rain ponchos and jackets; footwear, namely shoes, boots and slippers; bath thongs; shell suit; hats; caps; visors; aprons; cloth and ski bibs; canvas footwear; knickers; wind resistant jackets; masquerade costumes; blazers; legwarmers; jeans; leotards; workout and sports apparel, namely shorts, jackets, slacks, shirts’ in Class 25;
– ‘Rubber balls; action figures and accessories thereof; action skill games; bean bag dolls; plush toys; balloons; golf balls; tennis balls; bath toys; Christmas tree ornaments; boards games; building blocks; equipment sold as a unit for playing card games; dolls and doll clothing; doll playsets; children’s play cosmetics; crib toys; electric action toys; manipulative games; golf gloves; golf ball markers; jigsaw puzzles; kites; mobiles; music box toys; party favours in the nature of small toys; inflatable pool toys; multiple activity toys; wind-up toys; target games; disc-type toss toys; bows and arrows; toy vehicles; toy cards; toy trucks; toy bucket and shovel sets; roller skates; toy model hobbycraft kits; toy rockets; toy guns; toy holsters; musical toys; badminton sets; bubble making wands and solution sets; toy figurines; toy banks; puppets; yo-yos; skateboards; scooters; face masks; hand-held electronic games; playing cards; plastic water filled snow globes’ in Class 28;
– ‘Live stage shows; presentation of live performances; theatre productions; amusement park and theme park services; entertainer services; pleasure-ground services; educational and entertainment services rendered in or relating to theme parks; production, presentation, distribution, and rental of television and radio programs; production, presentation, distribution and rental of motion picture films; production, presentation, distribution and rental of sound and video recordings; entertainment information; production of entertainment shows and interactive programs for distribution via television, cable, satellite, audio and video media, cartridges, laser discs, computer discs and electronic means; providing news and information in the fields of sports, fitness and mixed martial arts via communication and computer networks’ in Class 41.
4 By decision of 11 November 2004, the examiner refused the trade mark application, pursuant to Article 38 of Regulation No 40/94, in respect of all the goods and services in Classes 9, 16, 25, 28 and 41, on the ground that the trade mark applied for was descriptive, as well as being devoid of any distinctive character, and that it could not be registered, pursuant to Article 7(1)(b) and (c) and (2) of Regulation No 40/94.
5 On 7 January 2005, the applicant filed an appeal against the examiner’s decision under Articles 57 to 62 of Regulation No 40/94.
6 By decision of 8 August 2005 (‘the contested decision’), the First Board of Appeal dismissed the applicant’s appeal and upheld the examiner’s decision.
7 First, the Board of Appeal pointed out that the words ‘ultimate’ and ‘fighting’ which make up the word mark applied for mean, respectively, ‘conclusive, final’ and ‘combat, contest’. It concluded that the mark applied for refers to a fight of particular violence, which generally ends when one of the combatants is no longer able to fight. Thus, the expression ‘ultimate fighting’ designates a particular sort of combat, championships in which are organised by the applicant in the United States (see paragraphs 11, 14 and 15 of the contested decision).
8 Next, the Board of Appeal held that the target public was the average English-speaking consumer (see paragraph 13 of the contested decision).
9 Finally, the Board of Appeal took the view that, since it denotes a type of combat, the sign ULTIMATE FIGHTING was devoid of any distinctive character with respect to all the goods and services for which registration was sought, including those which were not directly related to that type of combat. Thus, the sign in question would in every case be perceived as a reference to a style of fighting and to events featuring such fighting and not as designating the commercial origin of the goods and services in respect of which registration was sought (see paragraphs 20 and 21 of the contested decision).
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Arguments of the parties
12 Essentially, the applicant claims that, in adopting the contested decision, the Board of Appeal infringed Article 7(1)(b) and (c) of Regulation No 40/94. In that regard, it states that the Board of Appeal erred in its assessment of the meaning of the sign ULTIMATE FIGHTING and in its assessment of the relationship between the sign ULTIMATE FIGHTING and the goods and services covered by the trade mark applied for. It further maintains that the Board of Appeal erred in law in basing the contested decision on Article 7(1)(b) of Regulation No 40/94, even though the only arguments that it raised related to the descriptive character of the mark applied for.
13 OHIM contests all of the applicant’s claims.
Findings of the Court
14 Although, in the present case, the applicant has not invoked a failure to state reasons, compliance with the duty to state reasons, which applies to all acts subject to judicial review by the Community Courts, is a matter of public policy that must be raised, if necessary, of the Court’s own motion (see, to that effect, Case 18/57 Nold v High Authority [1959] ECR 41, at p. 52; Case C‑166/95 P Commission v Daffix [1997] ECR I-983, paragraph 24; and Case T‑388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II-4301, paragraph 59). The Court find it necessary to consider of its own motion whether the contested decision contains an adequate statement of reasons. The parties were questioned at the hearing on the adequacy of the statement of the reasons given in the contested decision.
15 Under Article 73 of Regulation No 40/94, decisions of OHIM must state the reasons on which they are based and may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. In addition, Rule 50(2)(h) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides that the Board of Appeal’s decision must contain the reasons therefor. The duty to state reasons set out in those provisions has the same scope as that enshrined in Article 253 EC (see Joined Cases T-124/02 and T-156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II-1149, paragraph 72, and Case T‑168/04 L & D v OHIM – Sämann (Aire Limpio) [2006] ECR II-2699, paragraph 113 and the case-law cited).
16 It is settled case-law that the statement of reasons required under Article 253 EC must set out clearly and unequivocally the reasoning of the body which adopted the act in question. Accordingly, the duty incumbent on the Board of Appeal to set out reasons for its decisions has two purposes: first, to allow interested parties to know the justification for the measures taken so as to enable them to protect their rights and, second, to enable the Community Courts to exercise their power to review the legality of those decisions (see VITATASTE and METABALANCE 44, paragraph 73, and Aire Limpio, paragraph 114 and the case-law cited).
17 Whether the statement of reasons for a decision satisfies those requirements is a question to be assessed by reference not only to the wording of the decision but also to its context and the whole body of legal rules governing the matter in question (see VITATASTE and METABALANCE 44, paragraph 73 and the case-law cited).
18 In that context, it is clear from Article 4 of Regulation No 40/94, according to which the decisive factor for a sign capable of being represented graphically to be eligible for registration as a Community trade mark is its capacity to distinguish the goods of one undertaking from those of others, that the distinctive character of a sign for which registration is sought can be assessed only in relation to the goods and services in respect of which registration of that sign is sought (Case T‑19/99 DKV v OHIM (COMPANYLINE) [2000] ECR II‑1, paragraphs 23 and 24, and Case T‑331/99 Mitsubishi HiTec Paper Bielefeld v OHIM (Giroform) [2001] ECR II‑433, paragraphs 18 and 19).
19 Consequently, the distinctive character of a trade mark required by Article 7(1)(b) of Regulation No 40/94 must be specifically assessed, taking account of all the relevant facts and circumstances, by reference, first, to the goods or services in respect of which registration is sought and, second, to the perception of the relevant persons, namely the consumers of those goods or services (Case T‑441/05 IVG Immobilien v OHIM (I) [2007] ECR II‑1937, paragraph 41; see also, by way of analogy, Case C‑218/01 Henkel [2004] ECR I‑1725, paragraphs 50 and 51).
20 Furthermore, each of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 must be interpreted in the light of the public interest underlying each of them, each of those grounds being independent of the others and calling for separate examination (see Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraph 45 and the case-law cited).
21 In that context, the subject of the public interest underlying Article 7(1)(b) of Regulation No 40/94 is, first, the need not unduly to restrict the availability of the sign for which registration is sought for the other traders who offer goods or services of the same type as those in respect of which registration is sought and, second, to guarantee to the consumer or end-user the identity of the origin of the goods or services designated by the trade mark application by enabling that consumer or end-user, without any possibility of confusion, to distinguish those goods or services from others which have a separate origin. Such a guarantee thus constitutes the essential function of the trade mark (see, to that effect, Case C‑329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraphs 23, 26 and 27, and the case-law cited, and Case C-304/06 P Eurohypo v OHIM [2008] ECR I-0000, paragraphs 59 and 62).
22 It follows that, where registration of a mark is sought in respect of various goods or services, the Board of Appeal must determine specifically that none of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 applies to the mark in question, in relation to each of those goods or services claimed, and may reach different conclusions depending upon the goods or services in question (see, by way of analogy, Case C-363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraphs 33 and 73). Therefore, when refusing registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated. However, where the same ground of refusal is given for a category or group of goods or services, the competent authority may limit itself to using general reasoning for all of the goods or services concerned (see, by way of analogy, Case C-239/05 BVBA Management, Training en Consultancy [2007] ECR I-1455, paragraph 38).
23 In that context, the option for the Board of Appeal to use general reasoning for a series of goods or services may 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. The mere fact that the goods or services in question are in the same class under the Nice Agreement is not sufficient, for that purpose, since those classes frequently contain a wide variety of goods or services which do not necessarily have a sufficiently direct and specific link to each other (see, to that effect, Case T-329/06 Enercon v OHIM (E), not published in the ECR, paragraphs 34 and 35, and Case T-297/07 TridonicAtco v OHIM (Intelligent Voltage Guard), not published in the ECR, paragraphs 22 to 24; also see, to that effect and by way of analogy, Case T-392/04 Gagliardi v OHIM – Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), not published in the ECR, paragraphs 91 and 92).
24 In the present case, the trade mark applied for covers more than 215 goods falling within four separate classes under the Nice Agreement, as well as at least 13 kinds of different services, including pre-recorded audio cassettes, cookery books, baby booties, bows and arrows, or the provision of information in the field of sports via computer networks (see paragraph 3 above). The goods and services covered by the trade mark applied for thus demonstrate such differences between them, by reason of their nature, characteristics, intended purpose and the method of their marketing, that they cannot be regarded as constituting a homogenous category that would allow the Board of Appeal to adopt a general statement of reasons in their regard.
25 In the contested decision, the Board of Appeal confined itself to distinguishing between the goods and services covered by the trade mark application which are directly related to fighting and those which are not (see paragraph 21 of the contested decision). For the goods and services directly related to fighting, first, the Board of Appeal indicated that, by virtue of the meaning of the terms ‘ultimate’ and ‘fighting’, the target public could not perceive the sign applied for as indicating the origin of those goods and services (see paragraphs 12 to 16 of the contested decision). For the goods and services not directly related to fighting, second, the Board of Appeal stated that the latter would be considered by the target public as being marketed during or in relation to a competition in mixed martial arts, or as being suitable for the practising of that sport, or as forming part of a merchandising programme. For that reason too, with regard to the goods and the services not directly related to fighting, the target public could also not perceive the sign applied for as indicating the origin of those goods and services (see paragraph 21 of the contested decision).
26 By reason of its very general nature, such a statement of reasons is evidently not sufficient to allow the Court to verify whether the contested decision is well founded.
27 First, while it is true that, in paragraph 12 of the contested decision, the Board of Appeal did indeed indicate that certain goods and services could be regarded as being directly related to fighting, it merely put forward a non-exhaustive list, by way of example, of some of those goods and services. By proceeding in that manner, with the exception of live shows, video cassettes, records, DVDs and magazines, the Board of Appeal did not identify the goods and services which it regarded as being directly related to fighting. Therefore, the connection of the goods and services to one or other of the categories distinguished by the Board of Appeal is not apparent from the contested decision. It is therefore impossible for the Court to verify the homogenous character of the two groups of goods and services for which the Board of Appeal provided a general statement of reasons.
28 Second, in addition, and even assuming that the distinction made by the Board of Appeal between the goods and the services directly related to fighting and those which are not were relevant, it is apparent from the list reproduced in paragraph 3 above that the goods and service covered by the trade mark applied for display between them such a heterogeneity that the statement of reasons contained in the contested decision is excessively general and abstract in the light of their nature and characteristics.
29 The division into two categories carried out by the Board of Appeal leaves in place a very strong heterogeneity between the goods and services arranged in that manner, with the result that they cannot, on the basis of that distinction alone, constitute homogenous categories capable of justifying the Board of Appeal’s recourse to a general statement of reasons with regard to each of those categories.
30 In those circumstances, the reasons set out by the Board of Appeal for each of the two categories which it established fail sufficiently to explain the reasoning which it followed with regard to each of the goods and services in respect of which registration of the mark ULTIMATE FIGHTING was sought.
31 It thus follows that the contested decision is vitiated by an inadequate statement of reasons and must for that reason be annulled.
Costs
32 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 8 August 2005 (Case R 24/2005-1);
2. Orders OHIM to pay the costs.
Azizi | Cremona | Frimodt Nielsen |
Delivered in open court in Luxembourg on 2 April 2009.
[Signatures]