Judgments nº T-270/19 of Tribunal General de la Unión Europea, December 19, 2019

• Resolution Date: December 19, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-270/19

(EU trade mark - International registration designating the European Union - Figurative mark ring - Absolute ground for refusal - Descriptiveness - Article 7(1)(c) of Regulation (EU) 2017/1001) In Case T-270/19,

Amazon Technologies, Inc., established in Seattle, Washington (United States), represented by A. Klett and C. Mikyska, lawyers

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, acting as Agent,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 February 2019 (Case R 2211/2018-5), relating to the international registration designating the European Union in respect of the figurative mark ring,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira (Rapporteur), President, D. Gratsias and M. Kancheva, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 23 April 2019,

having regard to the response lodged at the Court Registry on 16 July 2019,

having regard to the fact that no request for a hearing was submitted by the 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 21 September 2017, Ring Inc., the subsequent legal successor of which being first A9.com, Inc. and then the applicant, Amazon Technologies, Inc., designated the European Union for international registration No 1401009 of the figurative mark ring. That registration was notified to 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), as amended (replaced by 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 The trade mark that is the subject of the international registration designating the European Union is the following figurative sign:

3 The goods and services in respect of which registration was sought as an EU trade mark are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9, 35, 37, 42 and 45 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, in particular, for Class 9, to the following description:

- Class 9: ‘Consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled doorbells; electronic doorbells; electronic doorbells with a camera allowing persons to identify who is at their door from remote locations; motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; 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; speakers; wireless local area network enabled speakers; customisable electronic speakers; computer application software for use in controlling and managing speakers, wireless local area network enabled speakers, customisable electronic speakers; luminous signs; electric signs; electronic signs; backlit signs; lighting controllers; lighting control apparatus; electric control devices for lighting fixtures; computer software for sharing videos; computer application software for sharing videos; computer application software for mobile phones and other mobile devices, namely, software for sharing videos’.

4 By decision of 18 September 2018, the examiner partially refused the application for registration as an EU trade mark on the grounds of Article 7(1)(b) and (c) and (2) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001) in so far as it concerned the following goods in Class 9: ‘Consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled doorbells; electronic doorbells; electronic doorbells with a camera allowing persons to identify who is at their door from remote locations; motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance’.

5 On 13 November 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the examiner’s decision.

6 By decision of 12 February 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal and upheld the examiner’s decision.

7 In the first place, the Board of Appeal held that the relevant public, in view of the nature of the goods for which registration as an EU trade mark was refused, was composed, one the one hand, of the average consumer who is reasonably well informed and reasonably observant and circumspect and, on the other hand, of a professional public with a high level of attention. The Board of Appeal also held that since the mark applied for consisted of a readily identifiable English word, the relevant public consisted not only of the public in the Member States in which English is an official language, that is, Ireland, Malta and the United Kingdom, but also the public in the Member States where English is largely understood, such as Denmark, the Netherlands, Finland and Sweden, especially as regards the professional public.

8 In the second place, the Board of Appeal observed that the mark applied for consisted of the English word ‘ring’ and that that word meant to ‘make a clear resonant or vibrating sound’.

9 In the third place, the Board of Appeal stated that the goods in question had a sufficiently direct and specific link between them such that they formed a homogeneous group.

10 In the fourth place, the Board of Appeal held that the mark applied for, associated with the goods in question, would be perceived by the relevant public as an indication that all the goods in question are likely to emit a clear resonant or vibrating sound. The Board of Appeal also held that, since the mark applied for merely informed consumers of the functionality of the goods in question, it was purely descriptive.

11 In the fifth place, the Board of Appeal also held that the graphic elements used were not such that they could divert the relevant public’s attention away from the descriptive information provided by the word element ‘ring’.

12 In the sixth place, the Board of Appeal stated that it was not bound by EUIPO’s previous decision-making practice.

Forms of order sought

13 The applicant claims that the Court should:

- annul the contested decision;

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

14 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

15 The applicant relies, in essence, on three pleas in law.

16 The first plea alleges infringement of Article 7(1)(b) of Regulation 2017/1001. The second plea alleges infringement of Article 7(1)(c) of Regulation 2017/1001. The third plea alleges infringement of the first sentence of Article 94(1) of Regulation 2017/1001.

17 The Court considers it appropriate to examine, in the first place, the third plea, in the second place, the second plea and, if necessary, the first plea.

The third plea, alleging infringement of the first sentence of Article 94(1) of Regulation 2017/1001

18 The applicant claims, essentially, that the Board of Appeal failed to fulfil its obligation to state reasons, first, by failing to substantiate its refusal to register all the goods in question, and by not giving reasons for categorising them into one homogeneous group.

19 EUIPO disputes the applicant’s arguments.

20 It should be recalled that, under the first sentence of Article 94 of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based.

21 The obligation to state reasons, as thus laid down, has the same scope as that deriving from Article 296 TFEU, according to which the statement of reasons must disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable the persons concerned to ascertain the reasons for it and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not...