Information;Judgment — ECLI:EU:T:2022:106
Date: 2022-03-02
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Germany

summary of the pleas in law relied on. Those elements must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the application, if necessary without any further information (see order of 14 December 2017, Lackmann Fleisch- und Feinkostfabrik v EUIPO (Национальный Продукт), T‑246/17, not published, EU:T:2017:920, paragraph 5 and the case-law cited). 15 It may be inferred from the application, as confirmed by the applicant in its reply to a question put by the Court, that it claims that the international registration at issue neither lacks distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 nor is descriptive of the services at issue for the purposes of Article 7(1)(c) of that regulation. Furthermore, it is apparent from the response lodged by EUIPO that the latter was in a position effectively to prepare its defence since it managed to identify the pleas in law submitted for the assessment of the Court. In response to the question put by the Court in that regard, the applicant confirmed that EUIPO’s interpretation of its application was correct. The applicant’s request seeking registration of the sign at issue 16 The applicant also seeks registration of the sign at issue in its entirety and the granting of protection for all the services covered by the international registration. 17 EUIPO contends that that request is inadmissible. 18 In that regard, it must be stated that that request may give rise to two interpretations. On the one hand, it may be understood as asking the Court to order EUIPO to grant protection for the international registration in the European Union. In accordance with settled case-law, under Article 72(6) of Regulation 2017/1001, EUIPO is required to take the measures necessary to comply with judgments of the EU Courts. Accordingly, it is not for the General Court to issue directions to EUIPO (see judgment of 25 November 2020, Kerangus v EUIPO (ΑΠΛΑ!), T‑882/19, not published, EU:T:2020:558, paragraph 24 and the case-law cited). 19 Moreover, to the extent that that request may be understood as asking the Court to alter the decision of the Board of Appeal within the meaning of Article 72(3) of Regulation 2017/1001, it should be borne in mind that the Court’s jurisdiction to alter decisions operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation 2017/1001, which means that the admissibility of an application for alteration must be assessed in the light of the powers conferred on that Board of Appeal (see, to that effect, order of 28 March 2019, Herholz v EUIPO (#), T‑631/18, not published, EU:T:2019:208, paragraph 12 and the case-law cited). 20 The competent bodies of EUIPO do not adopt formal decisions recording the registration of an EU trade mark or granting protection for the international registration in the European Union which could be the subject of an appeal. Consequently, the Board of Appeal does not have power to take cognisance of an application that it should grant protection for international registration in the European Union. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to amend the decision of a Board of Appeal to that effect (see judgment of 10 January 2019, achtung! v EUIPO (achtung!), T‑832/17, not published, EU:T:2019:2, paragraph 11 and the case-law cited). 21 Accordingly, the applicant’s request seeking full registration of the sign at issue must be rejected as inadmissible. Substance 22 In support of the present action, the applicant relies on various arguments which may be grouped into two pleas in law, alleging, respectively, infringement of Article 7(1)(c) of Regulation 2017/1001 and infringement of Article 7(1)(b) of that regulation. Scope of the action 23 As a preliminary point, it should be noted that, contrary to what the applicant claims, the Board of Appeal found in paragraphs 1 and 7 of the contested decision that the subject matter of the appeal before the Board of Appeal concerned only the services in Classes 36 and 38, in respect of which the application for protection of the international registration had been refused. 24 It is apparent from the procedural file before EUIPO that the applicant filed an appeal with the Board of Appeal seeking annulment of the examiner’s decision in its entirety. It should be noted that the examiner refused the application for protection of the international registration only in respect of some of the services covered by that application, namely those in Classes 36 and 38, while allowing registration in respect of the other services. 25 The first sentence of Article 67 of Regulation 2017/1001 provides that any party to proceedings adversely affected by a decision may appeal. It follows that, in so far as the decision of the lower adjudicating body of EUIPO has upheld a party’s claims, that party does not have standing to bring an appeal before the Board of Appeal. 26 In the present case, the matter was therefore properly submitted to the Board of Appeal only in so far as the appeal brought by the applicant concerned the examiner’s refusal to allow registration in respect of the services in Classes 36 and 38. The examiner’s decision to grant protection for the international registration in respect of the other services, by contrast, could not validly be the subject of an appeal to the Board of Appeal. 27 Under Article 188 of the Rules of Procedure, the pleadings lodged by the parties in proceedings before the Court may not change the subject matter of the proceedings before the Board of Appeal. It follows that the subject matter of the present dispute is limited to an examination of the legality of the contested decision in so far as it concerned the services in Classes 36 and 38. The first plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001 28 By this first plea in law, the applicant disputes the Board of Appeal’s finding that the use of the word ‘card’ was descriptive of the services at issue for the purposes of Article 7(1)(c) of Regulation 2017/1001. 29 In the first place, the applicant submits that the word ‘card’ is not necessarily a reference to the banking sector, but that it applies to a variety of products ranging from banking cards to Christmas cards or SD cards used in computers. The actual connection to the services at issue is only made by the documentation and data provided by the applicant. 30 In the second place, the applicant disputes the Board of Appeal’s finding that the word ‘plus’, in particular, immediately presupposes only a connection with cards bringing added gain. As regards the loyalty cards issued by various retailers to which the Board of Appeal refers, those cards do not use, first, the word ‘plus’ to refer to their purpose and, secondly, also do not need explicitly to make references to an added bonus. 31 The applicant submits that EUIPO disregarded the findings made by the Court in the judgment of 9 October 2002, Dart Industries v OHIM (UltraPlus) (T‑360/00, EU:T:2002:244), in which the Court found that the word ‘plus’ did not designate a quality or characteristic of the goods at issue in that case, namely plastic ovenware, which the consumer is able to understand directly, with the result that the relevant public would not immediately and without further reflection make a definite and direct association between the services concerned and the name accompanied by the term ‘plus’. 32 In the third place, the applicant submits that the use of the word element ‘pluscard’ does not make it possible to establish an immediate connection, since the combination of the words ‘plus’ and ‘card’ is not common in the English language. Thus, those signs have neither an established meaning nor a descriptive character. The applicant disputes EUIPO’s findings that, first, the international registration at issue, taken as a whole, had a clear meaning and, secondly, the mere fact that the word ‘plus’ could have other dictionary entries or involve a variety of connotations did not make it vague or difficult to understand. EUIPO, it argues, assumed that the finding that the services in respect of which registration was applied for related to a certain card, which offers advantages in the relevant field, was the only reasonable interpretation of the international registration at issue. There are, however, several definitions of the word ‘plus’. 33 In the fourth place, the applicant submits that the application for registration does not cover cards since it does not cover any product as such. The word ‘plus’ is uncommon for the services in question when combined with the word ‘card’. Even if the application sought protection of ‘credit cards’ or any other type of ‘cards’, EUIPO contradicts the Court’s finding set out in paragraph 27 of the judgment of 9 October 2002, UltraPlus (T‑360/00, EU:T:2002:244), that ‘when an undertaking extols, indirectly and in an abstract manner, the excellence of its products by way of a sign such as UltraPlus, yet without directly and immediately informing the consumer of one of the qualities or specific characteristics of the ovenware, it is a case of evocation and not designation for the purposes of Article 7(1)(c) of [Council] Regulation [(EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 1, p. 1)]’. EUIPO’s finding that the international registration at issue was laudatory in respect of the services in Classes 36 and 38 is illogical, since the combination of the words ‘plus’ and ‘card’, accompanied by additional graphic elements, cannot constitute an obstacle to the services at issue, since they are not all related to cards. The applicant states that EUIPO is required to address expressly all the services covered by the application for registration and to comment explicitly on each category of services. 34 In the fifth place, the applicant submits, in essence, that the international registration in question is recognised and commonly used in Germany, since the applicant manages a processing system for the operation of credit cards. Providing several examples, the applicant states that the international registration at issue appears on all the credit card statements issued by most savings banks in Germany. Consequently, the applicant’s reputation and exhaustive coverage of services refute the Board of Appeal’s finding that an explicit claim for acquired distinctiveness had not been made. 35 EUIPO disputes the applicant’s arguments. 36 Article 7(1)(c) of Regulation 2017/1001 provides that 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 those goods or service, cannot be registered. In addition, paragraph 2 of that article states that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. 37 The public interest underlying Article 7(1)(c) of Regulation 2017/1001 is that of ensuring that signs which describe one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see judgment of 23 May 2019, Arçelik v EUIPO (MicroGarden), T‑364/18, not published, EU:T:2019:355, paragraph 16 and the case-law cited). 38 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, by virtue of Article 7(1)(c) of Regulation 2017/1001, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see judgment of 13 May 2020, Clatronic International v EUIPO (PROFI CARE), T‑5/19, not published, EU:T:2020:191, paragraph 17 and the case-law cited). 39 It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and 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 goods and services in question or one of their characteristics (see judgment of 31 January 2018, Weber-Stephen Products v EUIPO (iGrill), T‑35/17, not published, EU:T:2018:46, paragraph 16 and the case-law cited). 40 Thus, the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (see judgment of 17 October 2019, United States Seafoods v EUIPO (UNITED STATES SEAFOODS), T‑10/19, not published, EU:T:2019:751, paragraph 14 and the case-law cited). 41 Furthermore, a mark composed of elements, each of which is descriptive of the goods or services for which registration is applied, is itself descriptive of the characteristics of those goods or services, unless there is a perceptible difference between the mark applied for and the mere sum of its constituent elements. That presupposes that the international registration in question creates, by reason of the unusual combination of each of its constituent elements in relation to the goods or services covered, an impression sufficiently far removed from that produced by the mere combination of meanings lent by those elements (see judgment of 17 October 2019, UNITED STATES SEAFOODS, T‑10/19, not published, EU:T:2019:751, paragraph 15 and the case-law cited). 42 In the present case, in the first place, as regards the definition of the relevant public, the Board of Appeal found, in paragraph 14 of the contested decision, that the services in respect of which registration of the mark had been sought were aimed at both the general public and the professional public. The applicant does not call into question the assessment set out in paragraph 13 of the contested decision that, in the present case, the relevant public consisted of the English-speaking part of the public of the European Union, which included at least the public in Ireland and Malta. 43 In the second place, as regards the applicant’s argument that the services at issue are not all related to cards and that the Board of Appeal is required to address expressly all the services covered by the application for registration and to comment explicitly on each category of services, it should be borne in mind that it is apparent from settled case-law that the competent authority may not confine itself to a minimal examination of the application for registration, but must, on the contrary, carry out a stringent and full examination in order to prevent trade marks from being improperly registered (see, by analogy, judgment of 6 May 2003, Libertel, C‑104/01, EU:C:2003:244, paragraph 59 and the case-law cited). 44 Since registration of a mark is always sought in respect of the goods or services described in the application for registration, the question whether or not any of the absolute grounds for refusal apply to the mark must be assessed specifically by reference to those goods or services (judgment of 15 February 2007, BVBA Management, Training en Consultancy, C‑239/05, EU:C:2007:99, paragraph 31). 45 In accordance with the case-law of the Court of Justice, first, an 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, the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services (judgment of 15 February 2007, BVBA Management, Training en Consultancy, C‑239/05, EU:C:2007:99, paragraph 34, and order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 37). 46 However, as regards that last requirement, the Court of Justice has stated that the competent authority may use only general reasoning for all of the goods or services concerned where the same ground for refusal is given for a category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30 and the case-law cited). 47 The Court of Justice has also made it clear that 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 October 2013, Isdin v Bial-Portela, C‑597/12 P, EU:C:2013:672, paragraph 27). 48 In order to determine whether the goods and services covered by an application for registration of an EU mark are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogenous categories or groups, for the purposes of the case-law referred to in the previous paragraph, account must be taken of the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question whether or not the mark concerned by the application for registration comes under one of the absolute grounds for refusal, in accordance with the case-law referred to in paragraph 44 of the present judgment. 49 Similarly, the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant for the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services. It follows that such an assessment must be carried out in concreto for the examination of each application for registration and, as the case may be, for each of the different absolute grounds for refusal which may apply (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 33). 50 In paragraph 14 of the contested decision, the Board of Appeal found that the services in respect of which registration of the mark had been applied for, set out in paragraph 2 above, consisted of (i) payment card services, creation and management of credit card accounts, issuance of credit cards and other financial services, and (ii) telephone services and paging, such as customer service for credit and customer card issuing institutions and credit card holders and customer card holders. 51 Without putting forward any specific argument capable of calling into question the Board of Appeal’s assessment, the applicant merely claims, in paragraph 41 of the application, that the services at issue are not all related to cards. However, it does not specify the services which allegedly have no connection with cards and nor does it set out the reasons why, in the present case, the services at issue cannot be regarded as forming a homogeneous group. The applicant’s argument that not all the services at issue are related to cards must therefore be rejected. 52 In the third place, the applicant’s argument that the word element ‘card’ is not necessarily a reference to the banking sector, but that it applies to a variety of products ranging from banking cards to Christmas cards or SD cards used in computers is ineffective since it is apparent from paragraph 17 of the contested decision that the Board of Appeal considered, by referring to an extract from the online dictionary ‘www.lexico.com’, that the word ‘card’ designated, in general, magnetic cards or chip cards that can have different functions or areas of application, such as credit or debit cards, payment cards, loyalty cards, security cards or any other card. 53 As regards the word ‘plus’, although the applicant does not dispute that that word, in the English language, may be understood as meaning ‘used for describing an advantage or positive quality that something has’, it considers that its meaning is not limited to such a definition, but that it may indicate, inter alia, ‘that one number or amount is added to another’, ‘temperatures above zero’ or ‘that the actual number or quantity may be larger’. It disputes the interpretation that the word ‘plus’ immediately presupposes only a connection with cards bringing added gain. 54 In that regard, it should be borne in mind that a word sign must be refused registration, under Article 7(1)(c) of Regulation 2017/1001, if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgments of 3 September 2020, achtung! v EUIPO, C‑214/19 P, not published, EU:C:2020:632, paragraph 35 and the case-law cited, and of 19 October 2017, Kuka Systems v EUIPO (Matrix light), T‑87/17, not published, EU:T:2017:732, paragraph 29 and the case-law cited). 55 In the present case, although the word ‘plus’ has several meanings, the fact remains that it appears likely to be understood by the relevant public, in view of the services concerned, in one of its possible meanings, namely that which refers to additional advantages or added value. 56 Furthermore, the fact that the word ‘plus’, taken in isolation, could not be considered descriptive of the services in question is irrelevant since, as regards verbal expressions which consist of a combination of words, descriptiveness, if any, may be assessed, in part, in relation to each of those words, taken separately, but must, in any event, also be established in relation to the whole which they comprise (see, to that effect, judgment of 17 January 2019, Ecolab USA v EUIPO (SOLIDPOWER), T‑40/18, not published, EU:T:2019:18, paragraph 31 and the case-law cited). 57 The combination of the two words ‘plus’ and ‘card’ forming the international registration at issue in the present case conveys a meaning and the Board of Appeal found that the combination of those words was descriptive. 58 As regards the applicant’s argument that the combination of the words ‘plus’ and ‘card’ is uncommon in the English language, it must be stated that the word ‘plus’ is placed before the word ‘card’ in accordance with the rules of English grammar, with the result that, as noted by the Board of Appeal in paragraph 19 of the contested decision, there is nothing unusual about the structure of the association of the words ‘plus’ and ‘card’, since that structure is, on the contrary, known in the English language. Furthermore, the addition of the word ‘plus’ does not diminish the descriptive character attached to the word ‘card’. On the contrary, that addition reinforces the descriptiveness by accentuating the reference to an essential characteristic of the services in question. Therefore, since the international registration in question consists, as a whole, of a combination of words corresponding to the rules of English grammar, the juxtaposition of those words in the international registration at issue does not produce, in that language, a different overall impression from that produced by the addition of those elements and is therefore not capable of diminishing their descriptive character in relation to the services covered. 59 It follows that the Board of Appeal correctly found, in paragraphs 18 and 25 of the contested decision, that the word element ‘pluscard’, taken as a whole, could be understood by the relevant public as a card providing extra gain or advantages for its holder, with the result that it is a clear and meaningful expression in relation to the services at issue which does not require any further reflection on the part of the relevant public to conclude that that expression directly describes the kind and subject matter of those services. 60 That finding cannot be called into question by the applicant’s argument that the Board of Appeal disregarded the findings made by the Court in the judgment of 9 October 2002, UltraPlus (T‑360/00, EU:T:2002:244). In the case which gave rise to that judgment, the mark at issue was a word mark composed of two words (‘ultra’ and ‘plus’) which had no connection with the goods concerned (plastic ovenware). By contrast, in the present case, as stated in paragraphs 57 to 59 above, the international registration at issue is a figurative mark composed of the two terms ‘plus’ and ‘card’, the latter of which designates a characteristic of the services at issue which the relevant public is able to understand directly. Consequently, the word ‘plus’, being a superlative word referring in particular to an advantage or positive quality, merely accentuates the classification given to the services at issue by the word ‘card’. 61 Moreover, the stylisation of the word element and the other graphic components surrounding the word element ‘pluscard’, such as the background and the colours, are relatively common, with the result that they are not such as to distract the consumers’ attention from that word element. 62 The same is true of the figurative elements, namely the two blue and red parallelograms, used as a background for each of the word elements ‘plus’ and ‘card’, which are not such as to diminish the descriptive character of the international registration at issue. On the contrary, those figurative elements reinforce the descriptive character of the word element ‘pluscard’. As the Board of Appeal correctly pointed out in paragraph 26 of the contested decision, each of the two parallelograms may be perceived by the relevant public as the representation of a card slightly tilting to the right. Thus, both by virtue of their position in the background of the word element and their conceptual content, the figurative elements contribute to highlighting that word element. 63 Consequently, the Board of Appeal was entitled to find that the international registration at issue designated, in one of its possible meanings, a characteristic of the services at issue for the relevant public. 64 Furthermore, the applicant’s argument that the international registration at issue is widely known in Germany is irrelevant in so far as, first, the applicant has not disputed the Board of Appeal’s finding that the relevant public is the English-speaking public. Secondly, the applicant has not relied on Article 7(3) of Regulation 2017/1001 or claimed that the international registration at issue has acquired distinctive character in consequence of the use which had been made of it. In that regard, it merely argued that the international registration at issue was known to a large number of holders of credit cards. 65 It follows from the foregoing that the Board of Appeal did not err in law in finding that the international registration PLUSCARD was descriptive of the services at issue within the meaning of Article 7(1)(c) of Regulation 2017/1001. 66 Accordingly, the first plea must be rejected. The second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001 67 To the extent that the applicant submits, in essence, by the second plea in law, that the international registration at issue is not devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, it should be borne in mind that, as is apparent from Article 7(1) of that regulation, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be capable of registration as an EU trade mark (order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 27; see also judgment of 21 September 2017, InvoiceAuction B2B v EUIPO (INVOICE AUCTION), T‑789/16, not published, EU:T:2017:638, paragraph 49 and the case-law cited). 68 In the present case, since it has been found that the international registration at issue was descriptive of the services in question and that, consequently, it was precluded by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001, the second plea in law must be rejected as ineffective. 69 It follows from the foregoing that the action must be dismissed. Costs 70 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been 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 (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Pluscard Service-Gesellschaft für Kreditkarten-Processing mbH to pay the costs. De Baere Kreuschitz Steinfatt Delivered in open court in Luxembourg on 2 March 2022. E. Coulon M. van der Woude Registrar President * Language of the case: English.