Judgments nº T-48/20 of Tribunal General de la Unión Europea, March 03, 2021

• Resolution Date: March 03, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-48/20

(EU trade mark - International registration designating the European Union - Figurative mark Heartfulness - Absolute ground for refusal - Descriptiveness - Article 7(1)(c) of Regulation (EU) 2017/1001) In Case T-48/20,

Sahaj Marg Spirituality Foundation, established in Manapakkam (India), represented by E. Manresa Medina, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Sliwinska and V. Ruzek, acting as Agents,

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 November 2019 (Case R 1266/2019-4), relating to the international registration designating the European Union in respect of the figurative mark Heartfulness,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, S. Frimodt Nielsen and R. Norkus (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 28 January 2020,

having regard to the response lodged at the Court Registry on 23 July 2020,

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 19 April 2018, the applicant, Sahaj Marg Spirituality Foundation, designated the European Union for international registration No 1433232. That registration was notified to 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 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 protection was sought are in Classes 16, 41 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, for each of those classes, to the following description:

- Class 16: ‘Printed matter; instructional and teaching materials’;

- Class 41: ‘Education; providing of training and cultural activities’;

- Class 45: ‘Consultancy services in spirituality’.

4 On 12 April 2019, the examiner refused the application for registration of the mark referred to above on the basis of Article 7(1)(b) and (c) and (2) of Regulation 2017/1001.

5 On 10 June 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.

6 By decision of 26 November 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

7 The Board of Appeal considered, in essence, that the word ‘heartfulness’ described a particular relaxation and meditation technique and informed the consumer, directly and without the need for further reflection, that the goods and services in question concerned that technique. That word provides sufficient information to the relevant public to allow it immediately to perceive, without further thought, that the services in question are centred or based on the type of meditation known as ‘Heartfulness’ meditation and that the goods in question concern that type of meditation. The relationship between the mark applied for and the subject matter or purpose of the goods and services in question is therefore sufficiently direct to be descriptive of those goods and services, in spite of the fact that the relevant public does not know how the meditation is practised or what the method used exactly consists of. The fact that the mark applied for is used to designate a type of meditation offered by the applicant and to distinguish its services does not affect the descriptiveness of the mark applied for.

8 Accordingly, the Board of Appeal concluded that the international registration designating the European Union was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001.

9 While noting that it was sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation 2017/1001 applies in order for a sign to be ineligible for protection in the European Union, the Board of Appeal stated that a descriptive mark was necessarily devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation.

Forms of order sought

10 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

11 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

12 In support of its action, the applicant puts forward a single plea in law alleging infringement of Article 7(1)(b) and (c) and (2) of Regulation 2017/1001 and failure to comply with EUIPO’s previous decision-making practice concerning the registration of signs containing the word ‘heart’. That single plea can be divided into three parts.

The first part of the single plea, alleging infringement of Article 7 (1)(c) of Regulation 2017/1001

13 By the first part of the single plea, the applicant alleges, in essence, that the Board of Appeal failed to take into account the fact that the word ‘heartfulness’ was created and published by the applicant itself in order to designate a particular relaxation and meditation technique and that, therefore, consumers identify the applicant with the mark applied for. The internet links mentioned by the examiner also refer to the applicant.

14 EUIPO disputes the applicant’s arguments.

15 Under Article 7(1)(c) of Regulation 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. Pursuant to Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.

16 Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgment of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T-34/00, EU:T:2002:41, paragraph 37).

17 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 in the public interest, which requires that such signs or 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; of 27 February 2002, Ellos v OHIM (ELLOS), T-219/00, EU:T:2002:44, paragraph 27; and of 7 July 2011, Cree v OHIM (TRUEWHITE), T-208/10, not published, EU:T:2011:340, paragraph 12).

18 Furthermore, signs or indications which may serve, in trade, to designate the characteristics of the goods or service in respect of which registration is sought are, under Article 7(1)(c) of Regulation 2017/1001, deemed to be incapable of performing the essential function of a trade mark. That function is to identify the commercial origin of the goods or service, enabling the consumer who acquires the goods or service designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 23 October 2003, OHIM v Wrigley, C-191/01 P, EU:C:2003:579, paragraph 30, and of 8 May 2019...