Judgments nº T-240/19 of Tribunal General de la Unión Europea, November 07, 2019

Resolution DateNovember 07, 2019
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-240/19

(EU trade mark - Application for an EU figurative mark representing a bell - Absolute ground for refusal - Obligation to state reasons - Article 94 of Regulation (EU) 2017/1001 - Lack of distinctive character - Article 7(1)(b) of Regulation 2017/1001) In Case T-240/19,

A9.com, Inc., established in Palo Alto, California (United States), represented by A. Klett, C. Mikyska and R. Walther, lawyers,

applicant,

v

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 February 2019 (Case R 1309/2018-2), concerning an application for registration of a figurative sign representing a bell as an EU trade mark,

THE GENERAL COURT (Ninth Chamber),

composed, at the time of deliberation, of S. Gervasoni, President, L. Madise and R. da Silva Passos (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 9 April 2019,

having regard to the response lodged at the Court Registry on 18 July 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 6 March 2018, the applicant, A9.com, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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).

2 Registration as a mark was sought for the following figurative sign:

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3 The goods in respect of which registration was sought are in Class 9 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: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; downloadable software and software applications permitting users to identify and communicate with persons at their door; downloadable software and software applications permitting users to monitor their home, office, and other facilities; downloadable applications for monitoring a user’s home, office, and other facilities, for use over the Internet, mobile devices, wireless Internet networks or systems, and other computer and electronic communication networks; software and software applications permitting users to monitor the interior and exterior of homes, retail stores, or offices for security and surveillance; downloadable software and software applications for monitoring a user’s home, office and other facilities, for use over the Internet, mobile devices, wireless Internet networks or systems and other computer and electronic communication networks’.

4 On 5 April 2018, one of EUIPO’s examiners raised objections in respect of the mark applied for. The applicant responded to those objections on 4 June 2018.

5 By decision of 22 June 2018, one of EUIPO’s examiners refused registration, on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, of the mark applied for in respect of all the goods in question.

6 On 10 July 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.

7 By decision of 4 February 2019 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.

8 In the first place, it found that the goods concerned were aimed at the general public, the level of attention of which was average, and at professionals, who displayed a high level of attention. It added that the relevant public was the public in the European Union.

9 In the second place, the Board of Appeal found that the mark applied for, which represented a bell with a white contour on a black background, would be seen by the relevant public as an icon signifying an alarm, a reminder or a (bell) sound. Next, it pointed out that, in connection with the goods concerned, the relevant public would perceive the mark applied for as an informative symbolic message that represented a feature of the goods. Furthermore, the Board of Appeal took the view that the overall impression created by the mark applied for did not appear to be unusual and did not include any characteristic element or eye-catching feature that was likely to confer on it a minimum degree of distinctive character which could enable the relevant public to perceive that mark as an indication of the commercial origin of the goods. It concluded that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

10 In the third place and lastly, the Board of Appeal stated that it was sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation 2017/1001 applied for the mark applied for not to be registrable as an EU trade mark. It concluded that there was no need to assess whether the ground for refusal laid down in Article 7(1)(c) of that regulation was applicable to the mark applied for.

Forms of order sought

11 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal.

12 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

13 In support of its action, the applicant submits that the mark applied for is neither devoid of any distinctive character nor descriptive of the goods concerned. It also maintains that the contested decision is vitiated since the Board of Appeal did not carry out a specific examination of each of the goods covered by the mark applied for.

14 It must therefore be held that the applicant is relying on three pleas in law, alleging, in essence: (i) infringement of the obligation to state reasons referred to in the first sentence of Article 94(1) of Regulation 2017/1001; (ii) infringement of Article 7(1)(b) of that regulation; and (iii) infringement of Article 7(1)(c) of that regulation.

The first plea, alleging infringement of the obligation to state reasons referred to in the first sentence of Article 94 (1) of Regulation 2017/1001

15 The applicant submits that the contested decision is vitiated by a ‘procedural error’ since the Board of Appeal neither substantiated its refusal of registration in respect of each of the goods covered by the mark applied for nor provided a sufficient and clear statement of the reasons which led it to categorise those goods in certain groups. Furthermore, the applicant maintains that the Board of Appeal confined itself to referring to the examiner’s decision.

16 EUIPO disputes the applicant’s arguments.

17 In that regard, it must first of all be borne in mind that, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. According to the case-law, that obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU, and its objective is to allow those concerned to know the reasons for the measure adopted in order to be able to defend their rights and to enable the courts to review the legality of the decision (see judgment of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T-529/15, EU:T:2016:747, paragraph 14 and the case-law cited).

18 It must be stated, first, that the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought and, secondly, that the decision by which the competent authority refuses registration of a mark must, in principle, state reasons in respect of each of those goods or services (order of 18 March 2010, CFCMCEE v OHIM, C-282/09 P, EU:C:2010:153, paragraph 37, and judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C-437/15 P, EU:C:2017:380, paragraph 29).

19 However, where the same ground of refusal is given for a category or group of goods or services, the reasoning may be general for all of the goods or services concerned (see, to that effect, judgments of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C-437/15 P, EU:C:2017:380, paragraph 30, and of 28 March 2019, Robert Bosch v EUIPO (Simply. Connected.), T-251/17 and T-252/17, EU:T:2019:202, paragraph 50).

20 Such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C-437/15 P, EU:C:2017:380, paragraph 31). The mere fact that the goods or services concerned are in the same class of the Nice Agreement is not sufficient for a finding that such homogeneity exists, as those classes often contain a large variety of goods or services which are not necessarily interlinked in a sufficiently direct and specific way (see...

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