Judgments nº T-399/08 of Court of First Instance of the European Communities, November 19, 2009

• Resolution Date: November 19, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-399/08

In Case T‑399/08,

Clearwire Corp., established in Kirkland, Washington (United States), represented by G. Konrad, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant,

ACTION brought against the decision of the First Board of Appeal of OHIM of 30 June 2008 (R 706/2008‑1) concerning the international registration, designating the European Community, of the sign CLEARWIFI,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),

composed of I. Pelikánová, President, K. Jürimäe (Rapporteur) and S. Soldevila Fragoso, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 18 September 2008,

having regard to the response lodged at the Registry of the Court of First Instance on 15 January 2009,

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 give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the Court of First Instance,

gives the following

Judgment

Background to the case

1 On 14 August 2007, the applicant – Clearwire Corp. – obtained from the World Intellectual Property Organisation (WIPO), in respect of the word mark CLEARWIFI, an international registration designating the European Community.

2 On 27 September 2007, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received notification from WIPO of the international registration of that mark.

3 The services in respect of which protection of that mark was sought in the Community fall within Class 38 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 to the following description: ‘Telecommunications services, namely, providing hi-speed access to computer and communication networks, and the electronic transmission of voice, video and data via computer and communication networks’.

4 By decision of 29 February 2008, the Examiner refused protection of the mark at issue in the Community, pursuant to Article 7(1)(b) and (c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now Article 7(1)(b) and (c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

5 On 29 April 2008, the applicant lodged an appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Examiner’s decision. The applicant requested the Board of Appeal, first, to limit the list of services in respect of which protection of the mark was sought so as to include only services having a digital form; secondly, to annul the Examiner’s decision; and, thirdly, to grant the protection sought in respect of the list of services thus limited.

6 By decision of 30 June 2008 (‘the contested decision’), the First Board of Appeal of OHIM held that the mark at issue was lacking in distinctive character and that it was descriptive of the services in respect of which protection was sought. It therefore dismissed the appeal. First, with regard more specifically to the descriptive character of the mark at issue, the Board of Appeal held that it lacked jurisdiction to limit the list of services covered by an international registration and that, in any event, the fact that the services in respect of which protection was sought were digital was of no relevance to the case before it. Secondly, the Board of Appeal held that the mark at issue will be understood, by individuals or businesses in the Community needing to access computer and communications networks such as the Internet, as describing the purpose of the services concerned, that is to say, the offering of wireless connections, and the quality of those services, that is to say, free from disturbance.

Forms of order sought by the parties

7 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

8 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

9 The applicant puts forward two pleas in law in support of its action, alleging (i) infringement of Article 7(1)(c) of Regulation No 40/94 and (ii) infringement of Article 7(1)(b) of that regulation.

Arguments of the parties concerning the first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94

10 First, the applicant claims that, contrary to the assertions of the Board of Appeal, it is unlikely that the relevant public would be the broadest possible public in all Member States and that, since the sign at issue is made up of components taken from the English language, the relevant public has to be an English-speaking public. Moreover, the applicant claims that the relevant public is used to offers for the services at issue which include the term ‘wifi’ and that it is therefore able to distinguish between the indication of the commercial origins of those services, on the one hand, and the description of those services, on the other.

11 Secondly, the applicant disputes the meaning attributed by the Board of Appeal to the sign CLEARWIFI – namely, wireless access to the Internet free from ‘contamination’ or disturbance – since it is based on an incorrect definition of the terms ‘wifi’ and ‘clear’. The sign CLEARWIFI does not have a clear meaning: it is a vague neologism implying, for example, a network service that is easy to use. Moreover, contrary to the assertions of the Board of Appeal, the presence or absence of disturbance is not a quality of the services in question but of the hardware enabling the wifi technology to be used.

12 Thirdly, the applicant claims that there is not a sufficiently direct and specific link between the sign at issue and...