Judgments nº T-344/07 of The General Court, February 10, 2010

• Resolution Date: February 10, 2010
• Issuing Organization: The General Court
• Decision Number: T-344/07

In Case T‑344/07,

O2 (Germany) GmbH & Co. OHG, established in Munich (Germany), represented by A. Fottner and M. Müller, lawyers,

applicant,

v

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

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 5 July 2007 (Case R 1583/2006-4), concerning an application to register the word sign Homezone as a Community trade mark,

THE GENERAL COURT (Sixth Chamber),

composed of A.W.H. Meij, President, V. Vadapalas and L. Truchot (Rapporteur), Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Court Registry on 10 September 2007,

having regard to the response lodged at the Registry on 21 December 2007,

further to the hearing on 18 December 2008,

gives the following

Judgment

Background to the dispute

1 On 10 October 2005, the applicant, O2 (Germany) GmbH & Co. OHG, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

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

3 The goods and services in respect of which registration was sought are in Classes 9, 38 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.

4 By decision of 7 November 2006, the examiner rejected the application for registration pursuant to Article 7(1)(b) and (c) and Article 7(2) of Regulation No 40/94 (now Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009) for the following goods and services:

– Class 9: ‘Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; data processing equipment and computers’;

– Class 38: ‘Telecommunications; rental of telecommunication equipment; providing services in connection with online services, namely the transmission of messages and information of all kinds; telephone information services, in particular direct connection to the required connection, communication of telephone numbers, addresses, fax numbers; network operator services, information broker services and provider services, namely arranging and leasing access time to data networks and computer databases, in particular on the internet; providing access to databases on computer networks’;

– Class 42: ‘Engineering services; computer programming; computer programming services; providing of expert opinion; technical consultancy and providing of expertise; rental of data processing equipment and computers; technical design and planning of telecommunications equipment; network operator, information broker and provider services, namely arranging and leasing access time to computer databases; research in the field of telecommunications engineering; updating of database software; storage of data in computer databases; installation and maintenance of database software; leasing of access times to data bases’.

5 On 1 December 2006, the applicant brought an appeal against that decision.

6 By decision of 5 July 2007 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal and confirmed the decision of the examiner. The Board of Appeal, first, considered that Article 7(1)(c) of Regulation No 40/94 prevented the word mark Homezone from being registered. It found that that mark consisted exclusively of indications which could serve, in trade, to designate the characteristics of the goods and services in question. The Board of Appeal then stated that the mark applied for was not capable of distinguishing the goods and services concerned according to their commercial origin and that a word mark which designates the characteristics of those goods or services, in a directly perceptible manner, was inevitably devoid of any distinctive character on that basis. Finally, it pointed out that the grounds for refusal laid down in Article 7(1)(b) and (c) could not be overridden on the basis of Article 7(3) of Regulation 40/94 (now Article 7(3) of Regulation No 207/2009). Since the applicant had failed to provide evidence of trade acceptance of the mark in Great Britain or Ireland, the grounds for refusal existed not only in German-speaking regions but also in English-speaking regions.

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, including those incurred in the proceedings before OHIM.

8 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

Admissibility of the documents produced for the first time before the Court

9 At the hearing, the applicant produced various documents in support of its answer to one of the written questions put by the Court.

10 OHIM pointed out that those documents were produced out of time.

11 Since the answer to the questions put by the Court did not require the submission of any documents, those documents, produced for the first time before the Court, cannot be taken into consideration. The purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19, and the judgment of 12 November 2008 in Case T‑210/05 Nalocebar v OHIM – Limiñana y Botella (Limoncello di Capri) [2008], not published in the ECR, paragraph 16 and the case‑law cited).

Substance

12 The applicant raises three pleas in support of its action. By its first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94, it submits that, contrary to what was found by the Board of Appeal, the word sign Homezone does not designate the goods and services in respect of which registration was sought. By its second plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94, it asserts that, in finding that the sign was devoid of any distinctive character, the Board of Appeal based its decision solely on the descriptive character of that sign, without actually showing that it lacked distinctive character. Finally, by its third plea, alleging infringement of Article 7(3) of Regulation No 40/94, it claims that the sign Homezone has distinctive character by reason of the use made of it.

The first plea, alleging infringement of Article 7(1)(c) of Regulation No 40/94

– Arguments of the parties

13 The applicant submits that the ground for refusal laid down in Article 7(1)(c) of Regulation No 40/94 applies only to marks and indications which directly designate goods and services. To be able to claim that a mark designates goods or services, that designation must be so clear and certain that the relevant public is immediately able to establish a specific and direct link between the goods and services concerned and the meaning of the mark applied for, without further thought. It needs to be borne in mind that the relevant public, including specialists, perceive the distinctive signs of goods and services as they appear to them and that, normally, they are not likely to analyse the terms which make up those signs to identify a designation therein.

14 In the applicant’s view, the Board of Appeal did not establish that the mark applied for met those conditions. It submits that the Board of Appeal did not indicate how, in everyday English or German, the term ‘homezone’, which does not play any designating role, is descriptive. The applicant adds that the Board of Appeal incorrectly found that the German-speaking public would perceive ‘homezone’ or ‘home zone’ as meaning ‘Heimbereich’ (home area) or ‘Nahzone’ (local area). Finally, it claims that the Board of Appeal failed to establish the existence of a direct link between the term ‘homezone’ and the goods and services concerned or their characteristics.

15 OHIM contends that the word element ‘homezone’ can describe characteristics of the goods and services in question. In OHIM’s view, ‘homezone’ may...