JUDGMENT OF THE GENERAL COURT (Third Chamber)

23 May 2019 (*)

(EU trade mark — Application for the EU word mark MicroGarden — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EU) 2017/1001)

In Case T‑364/18,

Arçelik AS, established in Istanbul (Turkey), represented by A. Franke and E. Flach, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Sliwinska, S. Palmero Cabezas and H. O’Neill, acting as Agents,

defendant,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 April 2018 (Case R 163/2018-2), relating to an application for registration of the word sign MicroGarden as an EU trade mark,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Court Registry on 11 June 2018,

having regard to the response lodged at the Court Registry on 12 September 2018,

further to the hearing on 6 March 2019,

gives the following

Judgment

 Background to the dispute

1        On 11 July 2017, the applicant, Arçelik AS, filed 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the word sign MicroGarden.

3        The goods in respect of which registration was sought are in Classes 7, 8, 9 and 11 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.

4        By decision of 23 November 2017, the examiner refused registration of the mark applied for on the basis of Article 7(1)(b) and (c) and (2) of Regulation 2017/1001 in respect of the following goods:

–        Class 7: ‘Machines and robotic mechanisms used in the agriculture and viticulture and in processing cereals/fruits/vegetables/food; electrical herb cultivation cabinet; guns for liquid spraying machines; motor hand saw’;

–        Class 8: ‘Hand-operated tools for agriculture, gardening and forestry’;

–        Class 9: ‘Magnetic and optical data carriers and software recorded in these; television and phone applications, downloadable electronic publications, recorded to magnetic and optical media; electronic components used in machines and apparatus; counters measuring amount of consumption in unit time and time clocks’;

–        Class 11: ‘Lighting apparatus and installations (lighting installations for interior and exterior spaces)’.

5        On 23 January 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.

6        By decision of 4 April 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the applicant’s appeal on the basis of Article 7(1)(b) and (c) and (2) of Regulation 2017/1001.

7        In support of the contested decision, the Board of Appeal found, in essence, first, that the relevant English-speaking public in the European Union, which consisted of average consumers and professionals (paragraphs 14 to 20), understood the word MicroGarden, in the light of the two elements of which it consists, ‘micro’ and ‘garden’, and of that word as a whole, as designating, within the meaning of Article 7(1)(c) of Regulation 2017/1001, a ‘micro garden’, that is to say, a place for ‘intensive cultivation in a small space’ (paragraphs 21 to 32 and 42). Furthermore, according to the Board of Appeal, the sign applied for had to be recognised as being descriptive in relation to all of the goods at issue, with which it had a sufficiently direct and specific link (paragraphs 43 to 58). Secondly, from the relevant public’s point of view, that sign was devoid of any distinctive character, within the meaning of Article 7(1)(b) of that regulation, on account of its descriptiveness (paragraphs 59 to 66).

 Forms of order sought

8        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

9        EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

10      In support of its action, the applicant relies on two pleas in law, the first of which alleges infringement of Article 7(1)(c) of Regulation 2017/1001 and the second of which alleges infringement of Article 7(1)(b) of that regulation.

 The first plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001

11      It must be noted at the outset that the applicant states that it does not dispute the Board of Appeal’s assessment relating to the relevant public, including its level of attention, and that, at the hearing, it added that it also does not call into question the meaning that the Board of Appeal attributed to the term ‘micro’.

12      According to the applicant, the relevant English-speaking public will understand the expression ‘microgarden’ as an ‘extremely small ground adjoining a house, in which grass, flowers and shrubs may be grown’. At the hearing, it specified in that regard that that definition corresponded to an outdoor concept and not a concept connected with the interior of a building. The applicant submits that that public will thus be led to think of that meaning of the term ‘garden’ when it considers the machines and tools in Classes 7, 8, 9 and 11 of the Nice Agreement, which include ‘electrical herb cultivation cabinets’. However, the applicant maintains that that link is not sufficiently direct and specific, since the concept of a ‘place for intensive cultivation in a small space’, as used by the Board of Appeal, will not be understood by the relevant public without further reflection. It argues that the expression ‘microgarden’ does not have a clear and specific meaning in relation to the goods at issue but suggests vague notions of some kind of garden, which leaves room for interpretation. According to the applicant, that expression is, at most, suggestive and allusive with regard to those goods, but does not, however, directly describe some of their characteristics. For example, an ‘electric herb cultivation cabinet’ is not per se a ‘garden’ in the sense of a separate piece or plot of land next to a house, but an electrically controlled environment that is very different from such a piece or plot of land.

13      The applicant states, in essence, that the expression ‘microgarden’ suggests that the goods at issue refer to a piece of land for cultivated plants. However, it maintains that the word ‘garden’ is not usually used to describe a cabinet, a piece of apparatus or a machine, but refers to an outdoor space for such plants. That expression, it submits, does not directly describe the characteristics of the goods, but conveys merely a suggestion or an evocation in relation to those goods and is therefore able to indicate their origin. As a neologism, it 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 in relation to those goods.

14      EUIPO disputes the applicant’s arguments and contends that the present plea should be rejected.

15      Article 7(1)(c) of Regulation No 207/2009 provides that 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 must not be registered. Furthermore, Article 7(2) of that regulation provides that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.

16      The public interest underlying Article 7(1)(c) of Regulation 2017/1001 is that of ensuring that signs which describe one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see judgment of 10 July 2014, BSH v OHIM, C‑126/13 P, not published, EU:C:2014:2065, paragraph 19 and the case-law cited).

17      Signs or indications which may serve, in trade, to designate the characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 2017/1001, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again, if it was a positive experience, or to avoid doing so if it was negative. It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or of one of their characteristics (see judgment of 17 October 2018, Weber-Stephen Products v EUIPO (iGrill), T‑822/17, not published, EU:T:2018:693, paragraphs 18 and 19 and the case-law cited).

18      Furthermore, if a mark which consists of a neologism or a word produced by a combination of elements is to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, it is not sufficient that each of those elements be found to be descriptive. The neologism or word itself must also be found to be descriptive. However, a trade mark consisting of a neologism or of 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 characteristics of those goods or services for the purposes of that provision unless there is a perceptible difference between the neologism and the mere sum of its parts. That presupposes that, because of the unusual nature of the combination in relation to the goods or services, the neologism creates an impression which is sufficiently far removed from that produced by the mere combination of meanings arising from its constituent elements, with the result that it is more than the sum of its parts. In that connection, analysis of the term in question in the light of the appropriate lexical and grammatical rules is also relevant (see judgment of 14 June 2017, LG Electronics v EUIPO (Second Display), T‑659/16, not published, EU:T:2017:387, paragraph 20 and the case-law cited).

19      For EUIPO to refuse registration of a trade mark on the basis of Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications referred to in that article, of which the mark is made up, 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 has been submitted, 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 word sign must thus be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 17 October 2018, iGrill, T‑822/17, not published, EU:T:2018:693, paragraph 20 and the case-law cited).

20      Lastly, whether a sign is descriptive can be assessed only, first, by reference to the way in which it is understood by the relevant public and, secondly, by reference to the goods or services concerned (see judgment of 17 October 2018, iGrill, T‑822/17, not published, EU:T:2018:693, paragraph 21 and the case-law cited).

21      In the present case, it is therefore sufficient if at least one of the possible meanings of the word sign applied for designates one of the characteristics of the goods at issue. It is therefore necessary to assess whether, from the point of view of the relevant English-speaking public, the word sign applied for, which consists of the two English terms ‘micro’ and ‘garden’, is descriptive of the goods at issue.

22      In the first place, as regards the meaning of the two commonplace terms ‘micro’ and ‘garden’, it is sufficient to state, as observed by the Board of Appeal and EUIPO, that the relevant English-speaking public will understand them, without any thought being necessary, as designating, inter alia, in the case of the first term, a very small element or object and, in the case of the second term, a space for gardening or a place in which it is possible to grow plants. Furthermore, as is pointed out, in essence, in paragraphs 25 and 26 of the contested decision, given that those two terms are conjoined in conformity with the rules of English grammar and common English linguistic practice, in that the prefix ‘micro’ precedes the term ‘garden’, the relevant public will readily and immediately understand the compound expression ‘microgarden’ as designating a place for gardening or for ‘intensive cultivation in a small space’. Consequently, the Board of Appeal was right in finding that the joining together of those two terms to form the word sign applied for is not capable of conferring any additional meaning on that sign. That is particularly true because each of those terms begins with a capital letter, which emphasises that they are separate and are easily comprehensible (paragraph 26 of the contested decision). Likewise, contrary to what the applicant submits, since there is no perceptible difference between the meaning of the sign and that of the mere sum of its two components ‘micro’ and ‘garden’, that sign does not in itself constitute a neologism which is suggestive or allusive (paragraphs 28 and 31 of the contested decision).

23      The Board of Appeal was therefore fully entitled to find, in essence, that the word sign applied for designated a ‘micro garden’, that is to say a place for the intensive cultivation of plants in a small space (paragraph 32 of the contested decision), including rooftops, balconies and certain places inside a house. In that regard, the applicant’s argument that the relevant public will understand the term ‘garden’ as connected exclusively with a place situated outside a building must be rejected, as the Board of Appeal correctly referred to examples to the contrary, including ‘kitchen gardens’ (paragraphs 53 and 54 of the contested decision).

24      In the second place, as regards the link between the word sign applied for and the goods at issue, the Board of Appeal pointed out, in essence, in paragraphs 48 to 58 of the contested decision, without making an error of assessment, that, in the light of their current or potential uses, there was a direct and specific link between all of the goods at issue in Classes 7, 8, 9 and 11 of the Nice Agreement and the meaning of the word sign applied for, as referred to in paragraph 22 above.

25      That is particularly true of the tools for cultivating or gardening, namely, on the one hand, the ‘machines and robotic mechanisms used in the agriculture and viticulture and in processing cereals/fruits/vegetables/food’, the ‘electrical herb cultivation cabinet[s]’, the ‘guns for liquid spraying machines’ and the ‘motor hand saw[s]’ in Class 7, and, on the other hand, the ‘hand-operated tools for agriculture, gardening and forestry’ in Class 8. In that regard, the Board of Appeal correctly found that, although the term ‘garden’ was traditionally associated with a yard or a piece of ground behind or next to a house, it also had other meanings linked to gardening or to the cultivation of plants in smaller places, such as rooftops, balconies and certain places inside a house (paragraphs 53 and 54 of the contested decision).

26      The Board of Appeal also did not make an error of assessment in pointing out that the goods at issue which form a homogeneous group in Class 9, namely ‘magnetic and optical data carriers and software recorded in these; television and phone applications, downloadable electronic publications, recorded to magnetic and optical media; electronic components used in machines and apparatus; counters measuring amount of consumption in unit time and time clocks’, and those in Class 11, in the present case ‘lighting apparatus and installations (lighting installations for interior and exterior spaces)’, were devices or applications that relate to the start-up and maintenance of micro gardens or could be used for such purposes, inter alia, in order to provide the lighting necessary for plants to grow or operate the various abovementioned tools for cultivating or gardening (paragraphs 48 to 51 of the contested decision).

27      The Board of Appeal was right in concluding that the word sign applied for, which conveys a clear message and is not suggestive or allusive (see paragraph 22 above), immediately informs the relevant public, without any particular thought on their part being necessary, that the goods at issue are used or intended to be used to start and maintain an intensive type of cultivation, which allows plants to be grown in a small space (paragraphs 55 and 57 of the contested decision).

28      Consequently, the Board of Appeal was fully entitled to find that the word sign applied for had to be refused registration as an EU trade mark under Article 7(1)(c) and Article 7(2) of Regulation 2017/1001 (paragraph 58 of the contested decision).

29      The first plea must therefore be rejected, without it being necessary to rule on the other arguments put forward by the parties in that respect.

 The second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001

30      The applicant submits that the expression ‘microgarden’ is an invented unitary term that does not appear in dictionaries. It states that, since the use of the term ‘garden’ with regard to cabinets or containers is unusual, the relevant public will not, when faced with that expression, immediately perceive it as descriptive of ‘electrical herb cultivation cabinets’. On the contrary, it maintains that the relevant public would have to reflect on the meaning of the word ‘garden’ in association with a container or a machine, with the result that the mark applied for is not directly descriptive and has the minimum degree of distinctiveness required.

31      EUIPO contends that the present plea should be rejected.

32      According to settled case-law, it is sufficient that one of the absolute grounds for refusal as provided for in Article 7(1) of Regulation 2017/1001 applies for a sign to be ineligible for registration as an EU trade mark. Furthermore, a word sign which is descriptive of characteristics of goods for the purposes of Article 7(1)(c) of Regulation 2017/1001 is, as a result, necessarily devoid of any distinctive character with regard to those goods within the meaning of Article 7(1)(b) of that regulation (see judgments of 14 June 2017, Second Display, T‑659/16, not published, EU:T:2017:387, paragraphs 37 and 38 and the case-law cited, and of 17 October 2018, iGrill, T‑822/17, not published, EU:T:2018:693, paragraphs 51 and 52 and the case-law cited).

33      It follows from the foregoing that the second plea cannot be upheld and that the action must be dismissed in its entirety.

 Costs

34      Under Article 134(1) 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, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Third Chamber),

hereby:

1.      Dismisses the action;

2.      Orders Arçelik AS to pay the costs.


Frimodt Nielsen

Kreuschitz

Półtorak


Delivered in open court in Luxembourg on 23 May 2019.


E. Coulon

 

S. Gervasoni

Registrar

 

      President


*      Language of the case: English.