Provisional text

ORDER OF THE GENERAL COURT (Ninth Chamber)

26 January 2017 ([\*](#Footnote*))

(EU trade mark — Application for the European Union word mark RHYTHMVIEW — Absolute grounds for refusal — No distinctive character — Descriptive character — Article 7(1)(b) and (c) and Article 7(2) of Regulation (EC) No 207/2009 — Action manifestly lacking any foundation in law)

In Case T‐119/16,

**Topera, Inc.,** established in Abbott Park, Illinois (United States), represented by H. Sheraton, Solicitor,

applicant,

v

**European Union Intellectual Property Office (EUIPO),** represented by H. O’Neill, acting as Agent,

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 12 January 2016 (Case R 1368/2015-4), relating to the application for registration of the word sign RHYTHMVIEW as an EU trade mark,

THE GENERAL COURT (Ninth Chamber),

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

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 22 March 2016,

having regard to the response lodged at the Court Registry on 11 July 2016,

makes the following

**Order**

**Background to the dispute**

1        On 17 October 2014, the applicant, Topera, Inc., lodged an application for registration of an EU trade mark with 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).

2        Registration as a mark was sought for the word sign RHYTHMVIEW.

3        The goods in respect of which registration was sought are in Classes 9 and 10 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 9: ‘Medical software’;

–        Class 10: ‘Medical workstations; parts and fittings for medical workstations’.

4        On 15 May 2015, the examiner rejected in its entirety the application for registration of the trade mark applied for, on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

5        On 10 July 2015, the applicant filed a notice of appeal with EUIPO against the examiner’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009, explaining that the goods covered by the application for registration were limited to the following goods:

–        Class 9: ‘Medical software for identifying and visualising rotors and focal sources in cardiac atria’;

–        Class 10: ‘Medical workstations; parts and fittings for medical workstations, all for identifying and visualising rotors and focal sources in cardiac atria’.

6        By decision of 12 January 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It held, in paragraphs 8, 11 and 14 of the contested decision, that the relevant English-speaking public, composed only of medical professionals and in particular cardiology specialists, will perceive the mark applied for as consisting of the meaningful expression ‘observing the regularity of recurring physiological functions or events of the body or a visual aspect of them or a pictorial representation of the same’. The Board of Appeal found accordingly, in paragraphs 15 and 19 of the contested decision, that the relevant public will establish a direct and specific relationship between the mark applied for and the goods covered by it, in so far as the relevant public will, without further thought, immediately think of the intended use or purpose of the goods at issue, namely, to provide a visual representation of the electrical activity of the heart, that is to say, to trace the electrical currents that initiate the heartbeat, or to identify or diagnose possible heart disorders such as atrial fibrillation. It concluded, in paragraph 21 of the contested decision, that the mark applied for was descriptive of the intended purpose of the goods at issue and that, accordingly, it will not be perceived by the relevant public as an indication of trade origin of those goods. Lastly, in paragraphs 22 and 23 of the contested decision, the Board of Appeal found that, since the mark applied for was descriptive of the intended purpose of the goods at issue for the purpose of Article 7(1)(c) of Regulation No 207/2009, it was necessarily devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation.

**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        Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.

10      In the present case, the Court considers that it has sufficient information from the documents before it and decides, pursuant to Article 126, to give its decision without taking further steps in the proceedings, even though one of the parties has requested a hearing. Indeed, it follows from the wording of that article that applicants do not have a right to a hearing that cannot be derogated from (see, by analogy, order of 13 September 2011, *ara* v *OHIM — Allrounder (A)*, T‐397/10, not published, EU:T:2011:464, paragraph 18 and the case-law cited).

11      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009 and, secondly, infringement of Article 7(1)(b) of that regulation.

*First plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009*

12      In support of its first plea, the applicant raises, essentially, two objections. The first objection is that the Board of Appeal made an error of assessment by failing to recognise the unusual and fanciful character of the mark applied for. In that respect, the applicant argues that the overall impression created by the mark is more than that created by the words composing the mark, ‘rhythm’ and ‘view’, taken separately. Accordingly, since rhythm is not a something that can be seen, the combination of those words in the mark applied for is unusual from the point of view of English syntax and will be perceived as fanciful by the relevant public.

13      The second objection is that the Board of Appeal made an error of assessment by considering that the mark applied for was descriptive of the goods at issue. In that respect, the applicant maintains that the goods in no way enable the examination or inspection of a heartbeat or the provision of a pictorial representation of a heartbeat. The goods at issue make it possible to visualise rotors and focal sources, which are electrical disturbances in the atria of hearts with disorders. Although these disorders result in irregularities in the force or rhythm of the heartbeat, the rotors and focal sources do not themselves have any rhythm. The goods at issue thus serve to diagnose the condition associated with arrhythmia, the lack of cardiac rhythm.

14      Under Article 7(1)(c) of Regulation No 207/2009, 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. Article 7(2) of Regulation No 207/2009 states that Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

15      Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, which requires that signs or indications that may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (judgments of 23 October 2003, *OHIM* v *Wrigley*, C‐191/01 P, EU:C:2003:579, paragraph 31, and of 19 April 2007, *OHIM* v *Celltech*, C‐273/05 P, EU:C:2007:224, paragraph 75).

16      The signs referred to in Article 7(1)(c) of Regulation No 207/2009 are deemed incapable of performing the essential function of a trade mark, namely, that of identifying the commercial origin of the goods or services, in order to enable the consumer who acquired them to make the same choice, when making a subsequent acquisition, if the experience has proved positive, or to make another choice, if it has proved negative (judgments of 27 November 2003, *Quick* v *OHIM (Quick)*, T‐348/02, EU:T:2003:318, paragraph 28, and of 15 November 2012, *Verband Deutscher Prädikatsweingüter* v *OHIM (GG)*, T‐278/09, not published, EU:T:2012:601, paragraph 34; see also, to that effect, judgment of 23 October 2003, *OHIM* v *Wrigley*, C‐191/01 P, EU:C:2003:579, paragraph 30).

17      Moreover, the signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (see judgment of 15 September 2016, *Trinity Haircare* v *EUIPO — Advance Magazine Publishers (VOGUE)*, T‐453/15, not published, EU:T:2016:491, paragraph 17 and the case-law cited).

18      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the category of goods and services in question or one of their characteristics (see order of 20 November 2015, *Zitro IP* v *OHIM (WORLD OF BINGO)*, T‐203/15, not published, EU:T:2015:910, paragraph 14 and the case-law cited).

19      In addition, it follows from the case-law that a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (judgments of 22 June 2005, *Metso Paper Automation* v *OHIM (PAPERLAB)*, T‐19/04, EU:T:2005:247, paragraph 27, and of 22 May 2008, *Radio Regenbogen Hörfunk in Baden* v *OHIM (RadioCom)*, T‐254/06, not published, EU:T:2008:165, paragraph 31).

20      It is also important to recall that the descriptiveness of a sign may be assessed only, first, in relation to the goods or services concerned and, secondly, in relation to the perception of the target public, which is composed of the consumers of those goods or services (judgments of 27 February 2002, *Eurocool Logistik* v *OHIM (EUROCOOL)*, T‐34/00, EU:T:2002:41, paragraph 38, and of 22 May 2008, *RadioCom*, T‐254/06, not published, EU:T:2008:165, paragraph 33).

21      In the present case, at the outset, it is appropriate to confirm the Board of Appeal’s findings in paragraphs 8 and 11 of the contested decision, which, moreover, are not disputed by the applicant, that, having regard to the language from which the words composing the mark applied for originate and to the goods at issue, the relevant public in respect of which the descriptiveness of that mark is to be assessed is a specialised English-speaking public, composed solely of medical professionals and, in particular, of cardiology specialists with a high level of attention.

22      With regard to the applicant’s first objection, it must be recalled, first, that the Board of Appeal found, in paragraphs 2 and 12 of the contested decision, that the word ‘rhythm’ means ‘any sequence of regularly recurring functions or events, such as the regular recurrence of certain physiological functions of the body, such as the cardiac rhythm of the heartbeat’ and that the word ‘view’ refers, inter alia, to ‘a pictorial representation’. The applicant does not dispute those findings, which are not vitiated by any errors.

23      Secondly, it must be pointed out that the meaning of the mark applied for, taken in its entirety, corresponds to the juxtaposition of the meanings of the words of which it is composed, namely, ‘viewing’ a rhythm.

24      In that respect, on the one hand, it should be noted, as EUIPO rightly does, that it is common to omit spaces between words or definite articles, pronouns, conjunctions or prepositions, in the world of advertising and marketing. Therefore, even if it were established, the applicant cannot claim that the fact that the term ‘rhythmview’ corresponds to a grammatically incorrect structure, and that it cannot be put in a sentence that makes sense, will create an impression sufficiently far removed from that produced by the mere combination of meanings lent by the words ‘rhythm’ and ‘view’, with the result that that term is more than the sum of those two words and is therefore original or fanciful.

25      On the other hand, the applicant’s argument alleging that the mark applied for has an unusual character because rhythm is not something that can be seen, cannot succeed. As EUIPO notes, rhythm is commonly represented visually, be it by the pendulum of a metronome or the flashing lights of audio systems marking the rhythm of music. The applicant itself acknowledges that the manifestations of a rhythm can be seen, for example, in a musical score, by means of the physical performance of the rhythm in dance or the action of a heart keeping a rhythm. Accordingly, even though, as the applicant submits, only the manifestations of a rhythm can be seen, the word ‘view’ in the mark applied for will easily be understood by the relevant public as ‘viewing’ a rhythm, as EUIPO rightly asserts.

26      Accordingly, the applicant’s arguments alleging that the term ‘rhythmview’ is unusual and fanciful because its structure does not conform to the rules of English syntax and because a rhythm cannot be seen, must be rejected as manifestly unfounded.

27      With regard to the applicant’s second objection, it must be recalled, first, as indicated in paragraph 5 above, that the goods covered by the mark applied for are medical software for identifying and visualising rotors and focal sources in cardiac atria, and medical workstations, parts and fittings for medical workstations, all for identifying and visualising rotors and focal sources in cardiac atria.

28      It should be noted that, in paragraph 15 of the contested decision, the Board of Appeal found that the relevant public will establish a direct and specific relationship between the mark applied for and the goods in question, for the mark does more than merely suggest, at a very general level, the field in which the goods at issue are used, but in fact is immediately descriptive of the intended purpose of the goods, namely, to visualise aspects of the heart associated with rhythm disorders, and in particular ‘specific electrical occurrences which themselves are also physiological patterns’ covered by the notion of rhythm.

29      Next, it is important to note that the intended use or purpose of the goods at issue is apparent from their very description, as recalled in paragraph 5 above, namely, ‘for identifying and visualising the rotors and focal sources of cardiac atria’. Although the applicant submits that the rotors and focal sources do not themselves have any rhythm, it nevertheless follows from the applicant’s explanations that electrical signals in the heart enable the visualisation of rotors as a ‘consistent rotational activity around a centre’ and of focal sources as ‘concentric patterns’. In so doing, on the one hand, the applicant confirms the direct and immediate relationship between the goods at issue and a heart rhythm, that it to say, the phenomena that the applicant itself calls ‘the sustaining mechanisms of heart rhythm disorders’. On the other hand, the applicant’s explanations about rotors and focal sources make it possible to understand, as the Board of Appeal states in paragraph 18 of the contested decision, that they fall within the definition of the English word ‘rhythm’, namely, any sequence of regularly recurring functions or events, such as the regular recurrence of certain physiological functions of the body.

30      Lastly, it must be pointed out that, since the applicant itself states that the goods at issue sense, filter and analyse signals emitted by the electrical disturbances known as rotors and focal sources and transform them into graphical representations, which are thus mapped out, it confirms, essentially, that the word ‘view’ in the mark applied for precisely indicates that the goods at issue are for visualising the phenomena covered by the notion of ‘rhythm’. In addition, the video shown by the applicant before the Court as an illustration clearly proves that the goods covered by the mark applied for to analyse, locate and map the signals sent by rotors and focal sources in cardiac atria, that is to say, the precise sources of heart rhythm disorders, provide a visual representation of the physiological rhythmic activities intimately related to heart rhythm.

31      The Court must therefore find, as did the Board of Appeal in paragraph 19 of the contested decision, that the relevant public, when confronted with the mark applied for, will immediately, without further thought, believe that it designates goods which, by providing a visual representation of the electrical activity of the heart, make it possible to examine a heartbeat, namely, to trace the electrical currents that initiate the heartbeat, or to identify or diagnose possible heart disorders such as atrial fibrillation. In so far as rotors and focal sources, according to the description provided by the applicant, can be visualised as sequences of regularly recurring functions or events, namely, consistent rotational activity and concentric patterns, the goods at issue will, for the relevant public, be associated with the rhythm to be viewed.

32      It follows that the mark applied for is descriptive of the function of the goods it covers, of the expected result of their use and, more generally, of their intended use.

33      It is thus without committing any error that the Board of Appeal concluded, in paragraph 21 of the contested decision, that the mark applied for was descriptive of the intended purpose of the goods at issue, in accordance with Article 7(1)(c) of Regulation No 207/2009.

34      Under those circumstances, the applicant not having raised any objection capable of calling in question the Board of Appeal’s assessment relating to the descriptiveness of the mark applied for, for the purpose of Article 7(1)(c) of Regulation No 207/2009, the Court must reject the first plea in law as manifestly unfounded.

*Second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009*

35      The applicant alleges that the Board of Appeal misapplied Article 7(1)(b) of Regulation No 207/2009. It submits, in essence, that the Board of Appeal was wrong to find that the mark applied for was devoid of any distinctive character, relying on the erroneous assessment of the descriptive character of the mark for the purpose of Article 7(1)(c) of the regulation.

36      It is settled case-law that a word mark which is descriptive of the characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) of that regulation (see judgments of 8 July 2004, *Telepharmacy Solutions* v *OHIM (TELEPHARMACY SOLUTIONS)*, T‐289/02, EU:T:2004:227, paragraph 24 and the case-law cited, and of 1 February 2013, *Ferrari* v *OHIM (PERLE’)*, T‐104/11, not published, EU:T:2013:51, paragraph 32 and the case-law cited).

37      In so far as the Court has held, in paragraph 33 above, that the Board of Appeal did not err in considering that the mark applied for was descriptive of the intended purpose of the goods at issue, the Court must find that the Board of Appeal did not err either in considering that registration of the mark must also be refused on the basis of Article 7(1)(b) of Regulation No 207/2009.

38      It follows that the second plea in law is manifestly unfounded too and that the action must be rejected in its entirety as manifestly lacking any foundation in law, in accordance with Article 126 of the Rules of Procedure.

**Costs**

39      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they were applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby orders:

1.      The action is dismissed.

2.      Topera, Inc., shall pay the costs.

Luxembourg, 26 January 2017.

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| E. Coulon | | S. Gervasoni |

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| Registrar | | President |

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[\*](#Footref*) Language of the case: English.