Judgments nº T-10/19 of Tribunal General de la Unión Europea, October 17, 2019

• Resolution Date: October 17, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-10/19

(EU trade mark - International registration designating the European Union - Figurative mark UNITED STATES SEAFOODS - Absolute ground for refusal - Descriptive character - Article 7(1)(c) of Regulation (EU) 2017/1001) In Case T-10/19,

United States Seafoods LLC, established in Seattle, Washington (United States) (represented by: C. Spintig, S. Pietzcker and M. Prasse, lawyers)

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 11 October 2018 (Case R 817/2018-5), relating to the international registration designating the European Union in respect of the figurative mark UNITED STATES SEAFOODS,

THE GENERAL COURT (Ninth Chamber),

composed, at the time of the deliberation, of S. Gervasoni (Rapporteur), President, K. Kowalik-Bańczyk and C. Mac Eochaidh, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 4 January 2019,

having regard to the response lodged at the Court Registry on 22 March 2019,

having regard to the fact that no request for a hearing was submitted by the parties within 3 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 4 August 2017, the applicant, United States Seafoods LLC, designated the European Union for international registration No 1365398 in respect of the following figurative mark:

2 On 14 September 2017, the European Union Intellectual Property Office (EUIPO) received notification of the international registration of that sign.

3 The goods in respect of which registration was applied for are in Class 29 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: ‘Fish; fish fillets’.

4 By decision of 9 March 2018, the EUIPO Examiner refused protection of the sign covered by the international registration within the European Union in respect of the goods covered by the application, pursuant to Article 7(1)(b) and (c) of 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).

5 On 4 May 2018, the applicant lodged an appeal under Articles 66 to 71 of Regulation No 2017/1001 against the Examiner’s decision.

6 By decision of 11 October 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the action on the basis, in particular, of the fact that the sign at issue was immediately and directly descriptive of the nature and geographical origin of the goods concerned, since the relevant public would perceive that sign as referring to food obtained from the sea coming from the United States (paragraphs 17 to 31 of the contested decision).

Forms of order sought

7 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

8 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

9 The applicant relies on two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation 2017/1001, the second alleging infringement of Article 7(1)(b) of that regulation.

The first plea in law

10 Under Article 7(1)(c) of Regulation No 2017/1001, 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 are not to be registered. Furthermore, Article 7(2) of Regulation 2017/1001 states that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability concern only part of the European Union.

11 According to the case-law, Article 7(1)(c) of Regulation 2017/1001 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 31, and of 13 February 2019, Nemius Group v EUIPO (DENTALDISK), T-278/18, not published, EU:T:2019:86, paragraph 38).

12 Moreover, signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 2017/1001, deemed incapable of fulfilling the essential function of the trade mark, namely that of identifying the commercial origin of the goods or services in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgments of 23 October 2003, OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 30, and of 13 February 2019, DENTALDISK, T-278/18, not published, EU:T:2019:86, paragraph 39).

13 It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 2017/1001, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned to immediately perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T-106/00, EU:T:2002:43, paragraph 40, and of 26 March 2019, Parfümerie Akzente v EUIPO (GlamHair), T-787/17, not published, EU:T:2019:192, paragraph 14).

14 Furthermore, the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (judgments of 20 March 2002, DaimlerChrysler v OHIM (CARCARD), T-356/00, EU:T:2002:80, paragraph 25, and of 26 March 2019, GlamHair, T-787/17, not published, EU:T:2019:192, paragraph 15).

15 Lastly, it should also be borne in mind that a mark composed of elements, each of which is descriptive of the goods or services for which registration is applied for, is itself descriptive of the characteristics of those goods or services, unless there is a perceptible difference between the mark applied for and the mere sum of its constituent elements. That presupposes that the mark applied for creates, because of the unusual combination of each of its constituent elements in relation to the goods or services covered, an impression sufficiently far removed from that produced by the mere combination of meanings lent by those elements (judgment of 23 April 2018, Genomic Health v EUIPO (ONCOTYPE DX GENOMIC PROSTATE SCORE), T-354/17, not published, EU:T:2018:212, paragraph 29; see also, to that effect, judgment of 12 February 2004, Koninklijke KPN Nederland, C-363/99, EU:C:2004:86, paragraph 100).

16 It is in the light of the considerations set out in the preceding paragraphs that the applicant’s arguments that the Board of Appeal erred in finding that the sign at issue was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 must be examined.

17 As a preliminary point, it should be observed that the Board of Appeal rightly found that the goods in respect of which the protection of the EU trade mark is sought target, in particular, the general public (paragraph 13 of the contested decision). The Board also rightly considered that, given that the sign at issue contains English word components, the relevant public for the purposes of determining whether that sign is eligible for protection is the English-speaking public in the European Union, essentially made up of consumers in Ireland, Malta and the United Kingdom (paragraph 15 of the contested decision). The contested decision is not, moreover, disputed by the applicant on those points.

18 In the present case, the sign at issue consists of the word element ‘united states seafoods’, in upper-case standard typeface in navy blue written horizontally across the sign in its central position. The background of the sign consists of an irregular shape, similar to a territory on a map, on which there is a design comprising six white stars on a blue background in the upper left corner and several alternating red and white lateral stripes filling the rest of the map. According to the Board of Appeal, that design resembles the flag of the United States of America cropped into the shape of a territory (paragraph 16 of the contested decision). In the description of the sign in the application for protection of the international registration, the applicant stated that that shape represented the State of Alaska (United States).

19 It should be noted, first of all, that the Board of Appeal rightly found that, for the relevant public, the word element of the sign at issue would be perceived as referring to foodstuffs obtained from the sea and coming from the United States (paragraph 17 of the contested decision); the Board thereby inferred that that element, which provided information as to the type of goods covered by the application for protection and their origin, was descriptive (paragraphs 19 and 31 of the contested decision). Moreover, the applicant itself does not dispute the descriptive nature of that element.

20 The applicant takes the view, however, that the figurative elements of the sign at issue are...