Orders nº T-289/20 of Tribunal General de la Unión Europea, December 18, 2020

• Resolution Date: December 18, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-289/20

(EU trade mark - Application for EU word mark FACEGYM - Absolute ground for refusal - Descriptiveness - Article 7(1)(c) of Regulation (EU) 2017/1001 - Action manifestly lacking any foundation in law)

In Case T-289/20,

Facegym Ltd, established in London (United Kingdom), represented by M. Edenborough QC,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, J. Crespo Carrillo and V. Ruzek, acting as Agents,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 27 February 2020 (Case R 70/2020-5), relating to an application for registration of the word sign FACEGYM as an EU trade mark,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira (Rapporteur), President, M. Kancheva and B. Berke, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 15 May 2020,

having regard to the response lodged at the Court Registry on 5 August 2020,

makes the following

Order

Background to the dispute

1 On 15 January 2019, the applicant, Facegym Ltd, 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 word sign FACEGYM.

3 The goods and services in respect of which registration was sought are in Classes 5, 8, 9, 10, 41 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, and correspond, in respect of Classes 8, 10 and 41, to the following description:

- Class 8: ‘Hand tools for use in beauty care; beauty implements’;

- Class 10: ‘Massage appliances and apparatus; instruments for massage; foam massage rollers; apparatus for the therapeutic toning and stimulation of the muscles; physical exercise apparatus for therapeutic use; thermal massage pads;’

- Class 41: ‘Training services in relation to face, body and skincare services, cosmetic and beauty treatment services, massages services, healthcare services, reflexology services, alternative medicine services; education services relating to face, body and skincare services, cosmetic and beauty treatment services, massages services, healthcare services, reflexology services, alternative medicine services; organising of workshops, seminars and conferences relating to face, body and skincare services, cosmetic and beauty treatment services, massages services, healthcare services, reflexology services, alternative medicine services; instruction in cosmetic beauty; educational services relating to beauty therapy; education services relating to therapeutic treatments’.

4 By decision of 3 December 2019, the examiner rejected in part the application for registration, in so far as it covered the goods and services in Classes 8, 10 and 41 referred to in paragraph 3 above, on the basis of the combined provisions of Article 7(1)(b) and (c) and (2) of Regulation 2017/1001.

5 On 13 January 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision in so far as it rejected the application for registration in respect of the goods and services in Classes 8, 10 and 41.

6 By decision of 27 February 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First of all, it found that the goods and services at issue were aimed at average consumers and professionals, whose level of attention varied from average, in the case of the average consumer, who is reasonably well informed, observant and circumspect, to high, in the case of the professional public. Furthermore, it held that, since the mark consisted of English words, its descriptiveness had to be assessed by reference to the English-speaking public.

7 Next, the Board of Appeal found that the mark applied for was made up of the English words ‘face’ and ‘gym’. The first word referred to the front of the head from the forehead to the chin, and the second word meant ‘gymnastics’, that is to say, exercises developing or displaying physical agility and coordination. It concluded that, when used together, those words referred to exercises for the face. In that regard, it found that those words were juxtaposed in a grammatically correct way in the English language. Consequently, in the mind of the relevant English-speaking consumer, that mark provided, as a whole, information that the devices in Classes 8 and 10 were all used for facial gymnastics and that the services in Class 41 were all intended for the teaching and training in such facial exercises or gymnastics, including through the organisation of workshops and seminars. It therefore found that that mark described the intended purpose of all those goods and services in an ordinary way requiring no interpretative effort on the part of the relevant consumer. It added that there was nothing about the ‘expression FACEGYM’ which would create an impression which was sufficiently far removed from that produced by the mere combination of the meanings of the words ‘face’ and ‘gym’ and cause that ‘expression’ to be more than the sum of those two words, regardless of the level of attention displayed by the public. In addition, it held that the mere fact that the word ‘gym’ has an alternative, even frequently used, meaning was immaterial, given that one of the possible meanings of such a mark conveyed obvious and direct information concerning the intended purpose of all of those goods and services. It concluded that the mark in question was exclusively made up of descriptive indications and came within the ambit of Article 7(1)(c) of Regulation 2017/1001.

8 Lastly, the Board of Appeal held that, since the sign constituting the mark applied for had a clear descriptive meaning, it was also devoid of any...