Judgments nº T-856/16 of Tribunal General de la Unión Europea, June 21, 2017

• Resolution Date: June 21, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-856/16

In Case T-856/16,

Rare Hospitality International, Inc., established in Orlando, Florida (United States), represented by I. Lázaro Betancor, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 September 2016 (Case R 2149/2015-5), relating to an application for registration of the word sign LONGHORN STEAKHOUSE as an EU trade mark,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias (Rapporteur), President, A. Dittrich and P.G. Xuereb, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 5 December 2016,

having regard to the response lodged at the Court Registry on 20 February 2017,

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 14 April 2015, the applicant, Rare Hospitality International, 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 LONGHORN STEAKHOUSE.

3 The services in respect of which registration was sought are in Class 43 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: ‘Restaurant services’.

4 By letter of 27 April 2015, the examiner issued a provisional refusal of protection on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, on the ground that the word sign LONGHORN STEAKHOUSE would be understood as an expression which, taken as a whole, immediately informs consumers that the services applied for are those of a restaurant that specialises in long-horned steak. The sign would therefore convey direct and obvious information on the kind of services covered by the application for registration and would thus be descriptive. For the same reasons, the sign would also be devoid of any distinctive character. Lastly, the examiner invited the applicant to submit its observations, in accordance with Article 37(3) of Regulation No 207/2009.

5 By decision of 1 September 2015, the examiner refused the application, on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, on the ground that the word mark applied for was descriptive and devoid of any distinctive character. As regards, in particular, the applicant’s argument that the average English-speaking consumer would not know that the term ‘longhorn’ refers to cattle, the examiner presented extracts from Internet sites showing that, quite apart from the fact that it appears in English-language dictionaries, that term is used in the United Kingdom to describe a particular breed of cattle. Specifically, the extracts consisted of pages reproduced from three Internet sites, belonging to producers or distributors of beef, which devoted sections to the Longhorn breed of cattle, and offering online sales services and Longhorn beef-based recipes.

6 On 26 October 2015, the applicant filed a notice of appeal with EUIPO against that decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.

7 By decision of 12 September 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, having recalled, in paragraph 15 of the contested decision, that, according to settled case-law, it is sufficient, for a sign to be refused registration, that at least one of the sign’s possible meanings designates a characteristic of the goods or services concerned, the Board of Appeal found that, according to several English-language dictionaries, the term ‘longhorn’ refers to ‘1. Texas Longhorn: a long-horned breed of beef cattle, usually red or variegated, formerly common in SW US / 2. a now rare British breed of beef cattle with long curved horns’ (see paragraph 21 of the contested decision), and to ‘an animal of a breed of cattle with long horns’ (see paragraph 22 of the contested decision). Therefore, according to the contested decision, since the term ‘steakhouse’ is nowadays widely used to designate ‘a restaurant that specialises in serving steaks’, the terms ‘longhorn’ and ‘steakhouse’, taken together, will be understood by the relevant public, namely the English-speaking public in the European Union. Consequently, in the light of the services covered by the mark applied for, namely restaurant services, the relevant public, or at least a part of the relevant public, will immediately perceive the mark as providing direct descriptive information as to the object of the services applied for or one of their essential characteristics, namely a specialisation in Longhorn meat. The Board of Appeal also confirmed the examiner’s finding that the combination of the two abovementioned terms did not possess any additional characteristic capable of altering their purely descriptive nature. It found that, consequently, the mark applied for, taken as a whole, was descriptive of the services in Class 43 applied for, for the purposes of Article 7(1)(c) of Regulation No 207/2009, and it therefore rejected the application for registration.

8 The Board of Appeal also reaffirmed the examiner’s finding as to the lack of distinctiveness of the mark applied for in respect of the services covered by it, as provided for in Article 7(1)(b) of Regulation No 207/2009.

9 Lastly, the Board of Appeal rejected the applicant’s arguments based on the earlier registration of another mark containing the term ‘longhorn’ and the registration of the mark applied for by the United States Patent and Trademark Office (USPTO).

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

11 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

12 In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009, second, infringement of Article 7(1)(b) of that regulation and, third, breach of the principles of equal treatment and sound administration.

First plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

13 By its first plea in law, the applicant claims that the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 in so far as it found that the mark applied for consisted of a combination of ‘very common’ words which have a meaning in English merely on the basis of the fact that the words in question appear in English-language dictionaries. More specifically, the applicant disputes that the term ‘longhorn’ is ‘very common and meaningful’, and submits that the Board of Appeal did not assess the alleged descriptiveness of the mark applied for taking into account the perception that the target public would have of that mark.

14 The applicant disputes, in this connection, the examples provided by the examiner, drawing...