Language of document : ECLI:EU:T:2016:702

ORDER OF THE GENERAL COURT (Sixth Chamber)

28 November 2016 (*)

(EU trade mark — Application for the EU word mark SUREID — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation No 207/2009 — Action manifestly lacking any foundation in law)

In Case T‑128/16,

SureID, Inc., established in Hillsboro, Oregon (United States), represented by B. Brandreth, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and S. Crabbe, acting as Agents,

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 18 January 2016 (Case R 1478/2015-4), relating to the application for registration of the word sign SUREID as an EU trade mark,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis (President), S. Papasavvas (Rapporteur) and O. Spineanu-Matei, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 24 March 2016,

having regard to the response lodged at the Court Registry on 13 June 2016,

makes the following

Order

 Background to the dispute

1        On 2 February 2015, the applicant, SureID, Inc., lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2        The mark in respect of which registration was sought is the word mark SUREID.

3        The services in respect of which registration was sought are in Classes 35 and 45 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, and correspond, for each of those classes, to the following description:

–        Class 35: ‘Business services, namely, registering, authenticating, verifying, screening, validating and managing the credentials of third party vendors, contractors, sub-contractors, delivery personnel, temporary workers and volunteers’;

–        Class 45: ‘Security services in the nature of registering, authenticating, screening and verifying a person’s identity, attributes and background, and issuing and validating credentials to create a federated trust network of individuals and entities; security services, namely, registering, authenticating, verifying, screening, validating and managing the credentials of volunteers, coaches, third party vendors, contractors, sub-contractors, delivery personnel and temporary workers, using biometric data; background investigation and screening services; identification verification services, namely, verifying the identities of individuals and authenticating personal identification information.’

4        By decision of 27 May 2015, the examiner rejected the application for registration of the mark SUREID for all the services set out in paragraph 3 above on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009.

5        On 24 July 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

6        By decision of 18 January 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it found that the relevant public was made up of English-speaking professionals in business sectors. As regards the analysis of Article 7(1)(c) of Regulation No 207/2009, it held that the relevant public would, first, perceive the mark applied for as the grammatically correct combination of the two words ‘sure’ and ‘id’ and, second, understand the mark as describing the intended purpose and the nature of the services for which the registration had been sought, namely that they ‘guarantee identification’ or that they provide a ‘secure and reliable identification of data or persons’. The Board of Appeal also found that the message conveyed by the two words combined, namely a ‘secured identification’, did not go beyond their individual meaning and there were no mental steps required to immediately grasp the meaning of that expression. The Board of Appeal added that there was, between the mark applied for and the services within Classes 35 and 45 for which registration had been sought, a direct and immediate link, which rendered the sign applied for descriptive because it indicated a quality or another characteristic of those services. Finally, the Board of Appeal found that because the mark at issue was descriptive, it was also devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.

8        EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

9        Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.

10      In the present case, the Court, taking the view that it has sufficient information from the documents before it, has decided to give a decision on the action without taking further steps in the proceedings, even though the applicant has requested a hearing (see, to that effect, order of 7 June 2016, Beele Engineering v EUIPO (WE CARE), T‑220/15, not published, EU:T:2016:346, paragraph 12 and the case-law cited).

11      In support of its action, the applicant raises, in essence, a single plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009.

12      In that regard, it submits that the Board of Appeal was wrong to find that the mark applied for was descriptive of the services at issue. According to the applicant, the mark applied for is more than the mere sum of its parts and consists of an expression that has at least a modicum of distinctive character. It adds that the impression given by the mark is of a newly coined single word, without univocal meaning, rather than a composite mark made up of descriptive elements.

13      EUIPO disputes that argument.

14      Under Article 7(1)(c) of Regulation No 207/2009, ‘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’ may not be registered. In addition, Article 7(2) of Regulation No 207/2009 states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union’.

15      According to case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision therefore pursues an aim in the public interest, which requires that such signs and indications may be freely used by all (see judgment of 19 April 2016, Spirig Pharma v EUIPO (Daylong), T‑261/15, not published, EU:T:2016:220, paragraph 17, and the case-law cited).

16      Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, thus enabling the consumer who acquires the goods or service designated by the mark 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 (see judgment of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 18 and the case-law cited).

17      It follows that, in order 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 or services in question to enable the public concerned immediately to perceive, without further reflection, a description of the goods and services in question or one of their characteristics (see judgment of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph19 and the case-law cited).

18      For a trade mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive. The neologism or word itself must also be found to be so (see judgment of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 20 and the case-law cited).

19      A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that regard, an analysis of the word at issue in the light of the appropriate lexical and grammatical rules is also relevant (see judgment of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 21 and the case-law cited).

20      It should also be noted that the descriptiveness of a sign may be assessed only, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (see the judgment of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 22 and the case-law cited).

21      It is in the light of those considerations that it must be examined whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 in finding that the mark applied for was descriptive of the services at issue.

22      In the first place, it is necessary to confirm the findings made by the Board of Appeal, which moreover are not disputed by the applicant, regarding the definition of the relevant public. Since the mark applied for is made up of English words, the question of whether there is an absolute ground for refusal must be determined, pursuant to Article 7(2) of Regulation No 207/2009, with reference to English-speaking consumers in the European Union, as was correctly held in the contested decision. Furthermore, having regard to their nature, the Board of Appeal was fully entitled to find that the services at issue were addressed to a public of professionals.

23      In the second place, for the purpose of the application of Article 7(1)(c) of Regulation No 207/2009, it is necessary to examine, on the basis of a given meaning of the word sign at issue, whether, from the point of view of the intended public, there is a sufficiently direct and specific relationship between the sign applied for and the services in respect of which registration is sought (see judgment of 13 November 2008, Duro Sweden v OHIM (EASYCOVER), T‑346/07, not published, EU:T:2008:496, paragraph 49 and the case-law cited).

24      As regards, first, the sign applied for, it should be noted that, structurally, that sign consists of just one word that is common in the English language, namely the word ‘sure’, which can be used as an adjective or adverbially, and the abbreviation ‘id’ which can be used either as a noun or as a verb. In that regard, that sign is not unusual in its structure but, on the contrary, as the Board of Appeal stated in essence in paragraphs 13 and 15 of the contested decision, complies with the rules of syntax and grammar in English.

25      The applicant challenges that finding, claiming that the mark applied for will be read as a whole and not as the juxtaposition of two words. In that regard, it submits, first, that in English the vowels ‘e’ and ‘i’ are read together and produce a specific vowel sound. It points out that the English language has a particular rule regarding those vowels, by which ‘i’ must precede ‘e’, except after ‘c’. However, the sign applied for, like other words that it lists, does not respect that rule, which supports the view of it as a neologism that is devoid of a clear meaning. It submits, secondly, that the suffix ‘id’ is a suffix that is common in English and will not be understood as an abbreviation of the word ‘identification’, but as an integral part of the sign applied for. It adds that this case must be distinguished from the case giving rise to the judgment of 15 September 2005, BioID v OHIM (C‑37/03 P, EU:C:2005:547), in which the Court held that the relevant public would understand that the mark at issue, BioID, was composed of two abbreviations. According to the applicant, the fact that each of the two elements comprising that mark were printed in a different typeface indicated to the public concerned that the mark was made up of two distinct elements. The applicant concludes from that that, in order to reach such a result in the present case, the mark applied for should have indicated, inter alia by using different typefaces, that there was a break between the two elements of the mark applied for. Failing that, the applicant submits that the public concerned would see the mark applied for as a neologism without a univocal meaning and not as a composite mark composed of descriptive elements.

26      In that regard it must be observed that it is common in English to create words by coupling together two words each of which has a meaning (see, to that effect, judgment of 12 June 2007, MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, not published, EU:T:2007:172, paragraph 52). Furthermore, since the two words at issue in the present case are words which will be understood by the English-speaking public, the public addressed, which is made up of professionals, will understand — without further analysis or reflection — that the mark applied for, the structure of which conforms with the rules of grammar and syntax of the English language, is made up of those two words and will not perceive the mark applied for as a neologism that is devoid of any meaning, notwithstanding moreover that the combination of the vowels ‘e’ and ‘i’ is unusual in English. Thus, contrary to the applicant’s submissions, the relevant public will not read the vowels ‘e’ and ‘i’ together or perceive them as forming a vowel combination. Therefore, the claim made by the applicant is manifestly unfounded and must be rejected.

27      The applicant adds that the average consumer, whose attention will not be attracted to the presence of two elements within the mark applied for and will normally perceive a mark as a whole without proceeding to analyse its various details, will not observe that the mark applied for is composed of two distinct elements.

28      In that regard, it suffices to recall that while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited), it remains the case that, a consumer, perceiving a word sign, will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (judgment of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51). In the present case, for the reasons set out in paragraph 26 above, the public concerned, which is composed of professionals, will understand without further analysis or reflection that the mark applied for is composed of two words known to it. Therefore, the claim made by the applicant is manifestly unfounded and must be rejected.

29      As regards, next, the meaning of the words making up the sign applied for, it should be noted, first, that the word ‘sure’, used as an adjective, means ‘secure’ or ‘of which there can be no doubt’ and, adverbially, ‘with certainty’. Secondly, the word ‘id’ is, in particular, the abbreviation of the nouns ‘identity’ and ‘identification documents’, which mean ‘all of the data enabling a person to be identified’ or ‘identity documents’, and the verb ‘identify’, which means ‘serve as a means of identification’ or ‘check someone’s identity’.

30      Finally, regarding the overall meaning of the sign applied for, the Board of Appeal observed, in paragraph 15 of the contested decision, that it would be understood by the relevant public as describing the intended purpose and nature of the services in respect of which registration was sought, namely that they ‘guarantee the identification’ or that they procure a ‘secure and reliable identification of data or persons’. That meaning, as understood by the Board of Appeal, is correct. Having regard to its structure, which is not unusual, and to the fact that it complies with the rules of the English language (see paragraph 24 above), the sign applied for does not create an impression in the mind of the target public sufficiently removed from that produced by the mere juxtaposition of the words to change their meaning or scope (see, to that effect, judgment of 13 November 2008, EASYCOVER, T‑346/07, not published, EU:T:2008:496, paragraph 55 and the case-law cited).

31      As regards, second, the nature of the relationship between the sign applied for and the services for which its registration was sought, it must be noted that the sign applied for can serve to designate the nature and purpose of all the services for which registration has been sought. As regards the services within Class 35 and those of ‘background investigation and screening services’ and of ‘identification verification services, namely, verifying the identities of individuals and authenticating personal identification information’ falling within Class 45, the fact that those services could produce a ‘certain identification’, or even a secured identification, of data is a quality which is likely to be taken into account when the targeted public makes its selection and which is, therefore, a characteristic. Moreover, the mark applied for describes the nature of other services within Class 45 which consist of carrying out secured identifications.

32      It follows that the sign applied for conveys a message which is immediately understandable and which can serve, in trade, to indicate the quality or intended purpose, and therefore the characteristics of the services concerned. In that regard, it should be noted that it is irrelevant whether the characteristics described by the sign applied for are commercially essential or merely ancillary, as Article 7(1)(c) of Regulation No 207/2009 does not draw any distinction in that regard (see judgment of 13 November 2008, EASYCOVER, T‑346/07, EU:T:2008:496, paragraph 60 and the case-law cited). Therefore the applicant’s submission that, considered as a whole, the mark applied for does not have any obvious meaning in relation to the services for which the registration was sought and, therefore, does not directly or clearly describe, in normal usage, the services or their characteristics is manifestly unfounded and must be rejected.

33      It follows from the foregoing that the sign applied for, taken as a whole, presents, from the point of view of the public addressed, a sufficiently direct and specific relationship with the services for which registration was sought.

34      That conclusion is not called into question by the applicant’s submission that the mark applied for is not a term that must remain free from registration for other undertakings which have an interest in similar services. In that regard, it suffices to point out that it follows from all the foregoing that the mark applied for is descriptive of the services for which its registration was sought, within the meaning of Article 7(1)(c) of Regulation No 207/2009. Therefore, the mark applied for is amongst those signs which may be used by all those falling within the meaning of that provision. It follows that the claim made by the applicant is manifestly unfounded and must be rejected.

35      In those circumstances, the application is manifestly lacking any foundation in law and must be dismissed.

 Costs

36      Under Article 134(1) 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

Hereby orders:

1.      The action is dismissed.

2.      SureID, Inc. shall pay the costs.

Luxembourg, 28 November 2016.

E. CoulonG. Berardis

Registrar

 

      President


** Language of the case: English.