Judgments nº T-375/16 of The General Court, Eighth Chamber, May 18, 2017

• Resolution Date: May 18, 2017
• Issuing Organization: Eighth Chamber
• Decision Number: T-375/16

(EU trade mark - Application for the EU word mark INSTASITE - Absolute ground for refusal - Descriptiveness - Article 7(1)(c) of Regulation (EC) No 207/2009) In Case T-375/16,

Sabre GLBL Inc., established in Southlake, Texas (United States), represented by J. Zecher, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Hanf and S. Crabbe, acting as Agents,

defendant,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 27 April 2016 (Case R 1742/2015-2), relating to an application for registration of the word sign INSTASITE as an EU trade mark,

THE GENERAL COURT (Eighth Chamber),

composed of A. M. Collins, President, M. Kancheva and R. Barents (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 13 July 2016,

having regard to the response lodged at the Court Registry on 28 September 2016,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 26 March 2015, the applicant, Sabre GLBL Inc., 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).

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

3 The goods and services in respect of which registration was sought are in Classes 9, 35 and 42 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:

- Class 9: ‘Computer software, in particular for design, development, testing, installation, maintenance, updating, hosting and customisation of websites’;

- Class 35: ‘Advertising services; marketing services; advertising and marketing services, namely, promoting the goods and services of others in the field of hotel and hospitality services in Class 35; rental of advertising space; search engine optimisation of websites for advertising and marketing purposes; business information services; business administration services; business consulting services; storage, organisation, administration, maintenance and searching of data in computer databases; information and consultancy regarding the aforementioned services’;

- Class 42: ‘Design, development, testing, installation, maintenance, updating, hosting and customisation of websites for third parties; design, development, testing, installation, maintenance, updating, hosting and customisation of databases for third parties; design, development, testing, installation, maintenance, updating, hosting and customisation of computer software for third parties; providing temporary use of non-downloadable computer software for design, development, testing, installation, maintenance, updating, hosting and customisation of websites; providing temporary use of non-downloadable computer software for design, development, testing, installation, maintenance, updating, hosting and customisation of databases for third parties; providing temporary use of non-downloadable computer software for design, development, testing, installation, maintenance, updating, hosting and customisation of computer software for third parties; website design and development for others; website design consultancy; information and consultancy regarding the aforementioned services’.

4 By letter of 13 April 2015, the examiner informed the applicant that the mark applied for was not eligible for registration for the goods and services in Class 9 and ineligible in part for the goods and services in Class 42, on the ground that it was descriptive, for the purpose of Article 7(1)(c) of Regulation No 207/2009, and devoid of any distinctive character, within the meaning of Article 7(1)(b) of that regulation.

5 By letter of 8 June 2015, the applicant replied, in essence, that the mark applied for was not descriptive and that it had distinctive character.

6 By decision of 31 July 2015, the examiner rejected the application for registration in part, namely for the goods and services in Class 9 and in part for the goods and services in Class 42, on the ground that the mark applied for was caught by the grounds for refusal set out in Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

7 On 27 August 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.

8 By decision of 27 April 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. As is apparent from paragraph 21 of the contested decision, it found that the mark applied for was descriptive for the purpose of Article 7(1)(c) of Regulation No 207/2009. The Board of Appeal stated, in paragraphs 24 and 25 of the contested decision, that the word combination at issue ‘instasite’ would be immediately and intuitively perceived by the targeted public as meaning ‘instant’ and ‘site’ and that the absence of a hyphen or a space between the two words composing the sign applied for does not amount to evidence of any creative aspect capable of distinguishing the applicant’s products from those of other undertakings.

9 In paragraphs 27 and 28 of the contested decision, the Board of Appeal found that the mark applied for would be understood immediately and without any further reflection, in the light of the goods and services concerned, which are computer software, in particular for the design, development, testing, installation, maintenance, updating, hosting and customisation of websites, and related services such as consultancy concerning the design or maintenance of such sites, as being ‘instant (web)sites’, that is to say websites which can be created, and inter alia tested, updated and customised, instantly by the software’s user. The idea of creating websites ‘instantly’ is a well-established and widespread concept. The Board of Appeal made clear, in paragraph 29 of the contested decision, that it is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) of Regulation No 207/2009 actually be in use, at the time of the application for registration, in a way that is descriptive of goods or services in relation to which the application is filed or of characteristics of those goods or services. It is sufficient that those signs and indications could be used for such purposes. The Board of Appeal added, in paragraph 30 of the contested decision, that the descriptiveness does not necessarily need to be somehow ‘higher’ in order to fall within the scope of Article 7(1)(c) of Regulation No 207/2009 when the public is a specialised one.

10 The Board of Appeal also noted, in paragraph 31 of the contested decision, that the registrability of a sign must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the EU judicature, and not on the basis of previous EUIPO practice.

11 The Board of Appeal therefore concluded, in paragraph 32 of the contested decision, that the mark applied for was descriptive of the goods and services at issue. It inferred from this, in paragraph 34 of that decision, that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009. Finally, in paragraph 35 of the contested decision, the Board of Appeal, for the sake of completeness, held that the mark applied for was laudatory and that, consequently, the relevant consumer was likely to perceive...