Judgment — ECLI:EU:T:2008:460
Date: 2008-10-23
Language of the case: English
Court formation: Seventh Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Word marks
Procedure: Action for annulment - unfounded

JUDGMENT OF THE COURT OF FIRST INSTANCE (Seventh Chamber) 23 October 2008 (*) (Community trade mark – Application for the Community word mark FLEX – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 40/94) In Case T‑158/06, Adobe Systems Inc., established in San Jose, California (United States), represented by M. Graf and F. Wesel, lawyers, applicant, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, D. Botis and G. Schneider, acting as Agents, defendant, ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 April 2006 (Case R 1430/2005-2) concerning registration of the Community trade mark FLEX No 3 795 011, THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Seventh Chamber), composed of N.J. Forwood, President, D. Šváby (Rapporteur) and L. Truchot, Judges, Registrar: C. Kristensen, Administrator, having regard to the application lodged at the Registry of the Court of First Instance on 20 June 2006, having regard to the response lodged at the Court Registry on 6 September 2006, further to the hearing on 7 May 2008, having regard to the letter from the applicant lodged at the hearing, gives the following Judgment Background to the dispute 1 By application dated 26 April 2004, Macromedia Inc. (‘the trade mark applicant’) filed an application for the Community word mark FLEX at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark (OJ 1994 L 11, p. 1), as amended. 2 The goods and services for which registration was sought are in Classes 9, 38 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 each of those classes, to the following description: – ‘Computer server software; presentation server software; enterprise server software; computer server software for web application development, deployment and execution; computer server software for the production, delivery and presentation of rich web applications; web application development software; computer software development programs; user manuals and instructional books in electronic form; computer software; interactive computer software; computer hardware; computer peripherals and data processing equipment; computer programs for accessing, browsing and searching on-line databases’, in Class 9; – ‘Electronic transmission of messages, documents and data via computer networks; electronic transmission of audio, video, text, and multimedia content via computer networks; multimedia teleconferencing services provided over computer networks; real time multimedia communications services provided over computer networks; electronic transmission services; communications services; webcasting services’, in Class 38; – ‘Hosting of digital content on computer networks; hosting computer software of others; computer software design, customisation, integration, and analysis for others; computer software consulting services; computer software installation, maintenance and updating services; computer consulting services related to presentation servers and web application development; customising server software for web application development, deployment and execution; computer-related services; computer network and computer systems design, customisation, integration, analysis and consulting services; computer consulting services; design, customisation, implementation and maintenance of network web pages and web sites for others; providing on-line databases; computer programming services’, in Class 42. 3 OHIM’s examiner informed the trade mark applicant, by letter of 24 November 2004, that the mark applied for was not eligible for registration in respect of the goods and services referred to in the application, because it did not comply with Article 7(1)(b) and (c) of Council Regulation No 40/94. 4 In accordance with Rule 11(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the examiner invited the trade mark applicant to submit its observations. The trade mark applicant replied by letter of 24 March 2005. 5 On 30 September 2005, the examiner refused the trade mark application in respect of all the goods and services applied for, on the ground that it did not fulfil the conditions set out in Article 7(1)(b) and (c) of Regulation No 40/94 (‘the examiner’s decision’). 6 On 28 November 2005, the trade mark applicant filed a notice of appeal against the examiner’s decision. By letter of 8 December 2005, Adobe Systems Inc., the applicant in the present case, informed OHIM of the fact that the trade mark applicant had assigned to it its rights relating to the trade mark applied for. 7 By decision of 11 April 2006 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the examiner’s decision in so far as the examiner had refused registration of the mark applied for in respect of ‘computer hardware; computer peripherals and data processing equipment’ in Class 9 and all the services included in Class 38. The Board of Appeal held that that mark could be registered for those goods and services. It dismissed the appeal as to the remainder. Forms of order sought 8 The applicant claims that the Court should: – annul the contested decision in so far as it dismissed the appeal against the examiner’s decision in respect of goods other than ‘computer hardware; computer peripherals and data processing equipment’ in Class 9 and in respect of the services applied for in Class 42; – order OHIM to pay the costs. 9 OHIM contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law 10 In support of its action, the applicant raises a single plea divided into two parts, alleging the infringement of Article 7(1)(b) and (c) of Regulation No 40/94 respectively. Arguments of the parties 11 First, the applicant refers to the arguments it submitted before OHIM. It states, moreover, that those arguments are ‘expressly incorporated into [these] proceedings’. 12 In that connection, it submits, in essence, that the word ‘flex’ has several ambiguous meanings, which do not exclusively refer to computer-related aspects. As a result, it does not enable the relevant public to detect a clear and unmistakable description of the goods and services concerned or of one of their characteristics. Nor is it devoid of distinctive character. Therefore, according to the applicant, Article 7(1)(b) and (c) of Regulation No 40/94 do not apply. The applicant also points out that the word had already been registered in respect of identical goods and services with the United States Patent and Trademark Office and that no objection similar to that submitted in the proceedings before OHIM was raised with regard to the trade mark ‘FLEX’ when a similar trade mark registration application was filed in Canada. 13 Secondly, as regards the first part of the plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94, the applicant submits specifically that, having regard to OHIM’s practice, even a very weak distinctive character is sufficient to reject the absolute ground for refusal referred to in that provision. 14 The applicant claims that, having regard to the goods and services in respect of which registration was sought, the absolute ground for refusal at issue must be examined in relation to the perception of an average IT consumer in the Community. 15 However, according to the applicant, in consideration of the considerable number of computer-related technical terms that exist, the consumer is at most capable of detecting and memorising up-to-date words which have a current meaning in common parlance relating to IT. He will not remember terms once used to designate goods which have long since fallen out of use. This applies in particular to computer products, having regard to the fact that they tend to be quickly replaced by new products. 16 Consequently, a dictionary entry concerning a computer-related term does not necessarily reflect the current consumer’s perception. The applicant draws attention to the fact that the distinctive character of a mark has to be assessed by reference either to the date on which the application for registration is filed or to the date of actual registration. 17 The applicant submits in that context that the Board of Appeal’s arguments based on an entry in a dictionary of computing cannot prove that the term ‘flex’ is devoid of any distinctive character. The Free On-line Dictionary of Computing on which the Board of Appeal relies is not authoritative, its editors having accepted since 1985 thousands of entries submitted by contributors whose expert knowledge and competence was not established. Furthermore, many of the entries are historical. 18 The dictionary entry itself also shows that ‘flex’ language was created more than 30 years ago (in 1967). It is therefore known only to very specialised computer industry historians who, along with computer scientists, would distinguish between ‘flex’ language and the applicant’s goods sold under the FLEX trade mark. The applicant refers, in this connection, to the declaration of Mr S, a computer scientist employed by the applicant company, attached as an annex to the application. The applicant maintains that those specialists do not represent the relevant consumer and their knowledge of ‘flex’ language should therefore not be taken into consideration in the analysis of the distinctive character of the mark applied for. 19 On the contrary, the relevant consumer would not remember that the word ‘flex’ designated a computer language 30 years ago. Referring to the abovementioned declaration of Mr S, the applicant submits that that language has no current application to modern computers and their software, which have superseded it, and no one in the computer industry, in particular the relevant consumer, would infer that the applicant’s goods were created or used in connection with ‘flex’ language or have any connection whatsoever with it. 20 In the light of the foregoing, the applicant claims that the word ‘flex’ cannot be regarded as still being in use or even known to the relevant consumers. 21 Therefore, in view of the fact that ‘flex’ has no descriptive meaning for the goods and services at issue, the mark applied for is not, in the applicant’s view, devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94. 22 Thirdly, as regards the part of the plea relating to the infringement of Article 7(1)(c) of Regulation No 40/94, the applicant claims that the mark applied for is not a specifically descriptive indication. 23 It submits that the trade mark applied for cannot be regarded as consisting exclusively of a sign which may serve in trade to designate certain characteristics of the goods concerned for the purpose of Article 7(1)(c) of Regulation No 40/94. It refers to the preceding considerations, namely that ‘flex’ is not a term still in use in relation to goods or services currently sold and its connotation established more than 30 years ago is no longer known to the relevant consumers. Therefore, that term is not purely descriptive. 24 Lastly, the applicant claims that OHIM failed to take into account prior national registrations. It submits that identical terms have been registered in respect of identical goods and services at the US Patent and Trademark Office. In its view, OHIM examiners should check thoroughly the facts and evidence presented to them in connection with decisions of national trademark offices and take into account the fact that the national registrations imply that those offices did not regard the sign at issue as being devoid of distinctive character or purely descriptive. 25 As an annex to its letter submitted to the Court of First Instance at the hearing, the applicant attached a copy of the registration of the FLEX trade mark of 15 January 2008 by the United States Patent and Trademark Office, and a copy of the publication of 19 March 2008, for the purposes of any opposition, of the FLEX trade mark application in the Trade-marks Journal in Canada. 26 In the light of the foregoing, the applicant claims the contested decision must be annulled. 27 OHIM disputes the applicant’s arguments. Findings of the Court Admissibility of the applicant’s argument that the word ‘flex’ is no longer in use 28 The purpose of actions before the Court of First Instance under Article 63(2) of Regulation No 40/94 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 74 requires that that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-287, paragraph 17 and the case-law cited). 29 Moreover, pursuant to Article 135(4) of the Rules of Procedure of the Court of First Instance, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. 30 As OHIM has pointed out and as is apparent from the examination of the file of the administrative procedure before the Board of Appeal, the applicant did not put forward before OHIM the factual argument that the word ‘flex’ is no longer used as a designation for a computer language (paragraph 23 above). It should be added that the applicant could nevertheless have submitted such an argument, if it had considered it necessary, since that meaning of the word ‘flex’ was referred to in the grounds on which the trade mark applied for was held to be descriptive of the goods and services at issue. 31 Therefore, the argument that the word ‘flex’ is no longer used as a designation of a computer language should be rejected as inadmissible, since it was raised for the first time before the Court of First Instance. Admissibility of evidence submitted for the first time before the Court of First Instance 32 As OHIM contends, the declaration of Mr S, a computer scientist employed by the applicant, should be disregarded since it is new factual evidence submitted for the first time as an annex to the application. 33 It is apparent from the file of the proceedings before OHIM that that evidence was not produced during the administrative procedure before OHIM. It is not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. Therefore, the evidence adduced by the applicant for the first time before the Court must be dismissed and there is no need to examine its probative value (see, to that effect, judgment of 23 May 2007 in Case T‑342/05 Henkel v OHIM – SERCA (COR), not published in the ECR, paragraph 31). The reference to arguments submitted before OHIM 34 As regards the applicant’s reference to the arguments it submitted in the procedure before OHIM (paragraphs 11 and 12 above), OHIM contends that the applicant is not relying, in these proceedings, on the main argument raised before OHIM, namely that the word ‘flex’ has many possible meanings and its interpretation is therefore uncertain and ambiguous. 35 However, it is apparent from the application that the applicant expressly bases its arguments on those submitted before OHIM, which are summarised in the application. That information is sufficiently clear and precise to enable OHIM to prepare its defence and the Court to rule on the action, in accordance with the principles identified in the judgment in Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 14, and the case-law cited. 36 The applicant’s arguments as a whole thus also include, as confirmed by it at the hearing, the argument that the word ‘flex’ has many different meanings, which renders it ambiguous. Therefore, OHIM’s objection that the applicant is not relying on that argument in this action must be rejected. The legality of the contested decision 37 In the first place, it must be recalled that this action is an application for partial annulment of the contested decision, in so far as the Board of Appeal rejected the appeal against the examiner’s decision in respect of goods other than ‘computer hardware; computer peripherals and data processing equipment’ in Class 9 and in respect of all the services included in Class 42, that is, in so far as it approved the examiner’s decision. 38 Since the rejection is founded on the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 40/94, the second part of the applicant’s plea relating to that ground of refusal should be examined first. 39 Pursuant to case-law, Article 7(1)(c) of Regulation No 40/94 reflects the general interest that descriptive indications of the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision aims to prevent such indications from being reserved to one undertaking alone because they have been registered as trade marks, when other undertakings – including its competitors for example – might wish to describe their own goods by using precisely the terms registered as a trade mark (see judgment of 6 March 2007 in Case T-230/05 Golf USA v OHIM(GOLF USA), not published in the ECR, paragraph 26 and the case-law cited). 40 The descriptive indications referred to in Article 7(1)(c) of Regulation No 40/94 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, goods or services such as those in respect of which registration is sought. A sign’s descriptiveness can thus be assessed only by reference to the goods or services concerned and to the way in which it is understood by the target public (see GOLF USA, paragraph 27, and the case-law cited). 41 A word mark is regarded as designating the goods and services for which registration is sought where, in the eyes of the target public, there is a sufficiently direct and specific relationship between that mark and the goods and services for which registration is sought (see GOLF USA, cited in paragraph 39 above, paragraph 28, and the case-law cited). 42 The legality of the contested decision must be assessed in the light of those considerations and the applicant’s arguments. 43 In the second place, the Board of Appeal, in finding that the trade mark applied for should not be registered for the goods and services referred to in paragraph 37 above, relied primarily on the fact that the word ‘flex’, in its sense of designating a ‘real-time [computer] language’, was descriptive of those goods and services. Moreover, it held that it was evident that the other meanings attributed to that trade mark by the applicant in relation to the goods at issue, such as body building, car tuning and ‘hardcore’ discography, were entirely irrelevant and would not spring to the consumer’s mind to ‘confuse his or her clear perception of the meaning of the mark’. 44 Since the applicant’s argument alleging that the word ‘flex’ is no longer used to denote a computer language has been rejected as inadmissible (paragraph 31 above), it is necessary to examine its other arguments seeking to establish that the trade mark applied for was not in any way descriptive. 45 First, as regards the relevant public, in the light of the goods and services in question, the analysis needs to take into account a mixed public, namely the average IT consumers in the Community to which the applicant refers and relatively informed programmers or consumers of software. 46 Secondly, as regards the applicant’s claim that the ‘On-line Dictionary of Computing’ to which the Board of Appeal refers was created by contributors whose competence and expert knowledge were not established, it must be stated – besides the fact that no supporting evidence has been adduced – that it cannot call in question that dictionary’s reliability as a guide to use of the word ‘flex’, at least by some of the consumers concerned, in the senses described in the entries in question. In any event, that contention by the applicant does not call in question the article by Mr A. Singhal, quoted by the Board of Appeal in paragraph 15 of the contested decision, in which it is also stated that the word ‘flex’ designates a ‘real-time [computer] language’. 47 Consequently, the applicant cannot be regarded as having adduced evidence which invalidates the Board of Appeal’s finding that the word ‘flex’ is the name of a real-time computing language. 48 Thirdly, the claim that that word had many ambiguous and quite different meanings, which are open to various interpretations by the relevant consumer and which do not refer exclusively to computer‑related aspects, clearly cannot invalidate the Board of Appeal’s argument that the word ‘flex’, referring to a computer language, was descriptive of the goods and services at issue. 49 The case-law shows that the fact that a word may have several different meanings is irrelevant in this context. Thus, in order for a word mark to fall within the scope of Article 7(1)(c) of Regulation No 40/94, it is sufficient that, from the point of view of the relevant public, at least one of its possible meanings identifies a feature of the goods or services concerned (see Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, paragraph 32, and Case T-16/02 Audi v OHIM(TDI) [2003] ECR II‑5167, paragraph 36, and the case-law cited). 50 Fourthly, as regards the applicant’s reference to the registration in the United States of the word ‘flex’ for the same goods and services as those referred to in the present case, and to the registration procedure for that mark which is in progress in Canada, OHIM is not required to base its assessment of the relevant public’s perception of the mark at issue on a national decision. The Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system (judgment of 23 October 2007 in Case T-405/04 Borco-Marken-Import Matthiesen v OHIM (Caipi), not published in the ECR, paragraph 53). 51 Therefore, the registrability of a sign as a Community trade mark must be assessed by reference only to the relevant Community rules. OHIM and, as the case may be, the Community judicature are not bound by a decision given in a Member State or a non-Member State accepting that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised under First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) or in a country belonging to the linguistic area in which the word sign in question originated (Caipi, cited in paragraph 50 above, paragraph 53). 52 It follows that the effect which national registrations may have on the assessment of the registrability of a mark in the context of the grounds set out in Article 7 of Regulation No 40/94 depends on the specific circumstances of the case in point (Caipi, cited in paragraph 50 above, paragraph 54). 53 In the present case, it is apparent from paragraph 18 of the contested decision that the Board of Appeal duly took into account the evidence which the applicant had brought to its attention, namely the evidence relating to the registration procedures for the FLEX mark in the United States and in Canada in respect of the same goods and services as those concerned in the present case. However, it held that that evidence did not change its view that the FLEX sign was not registrable as a Community trade mark in respect of the goods and services referred to in paragraph 37 above. Specifically, it held that that evidence was not conclusive in the absence of any evidence that the standards for the assessment of a trade mark on the basis of absolute grounds in the countries in question were the same as those applied by OHIM. 54 In accordance with the case-law referred to above, the Board of Appeal was free to assess the evidence in question and to draw conclusions from that examination as to the decision to adopt in respect of the registration of the FLEX mark (see, to that effect, Caipi, cited in paragraph 50 above, paragraph 55). Since the documents of the national authorities to which the applicant refers did not explain what the standards for the assessment of the marks were in the countries at issue, in particular as regards the absolute grounds for refusal, the Board of Appeal was correct to hold that those registrations were not conclusive in the present case. 55 Furthermore, given that the documents submitted by the applicant show that the mark applied for in the United States and in Canada had a Priority Filing Date of 18 March 2004, it is possible, on the basis of the evidence in the documents alone that were submitted by the applicant, that the national trade mark offices may also have taken into account distinctive character acquired through use of the FLEX mark in the two countries in question. 56 In the light of the foregoing, it must be held that the Board of Appeal was right to conclude that the examiner’s decision should be upheld in so far as it refused the Community trade mark application for the products apart from ‘computer hardware; computer peripherals and data processing equipment’ in Class 9 and for all the services designated in Class 42. None of the applicant’s arguments can invalidate the Board of Appeal’s finding that there was a sufficiently direct and tangible relationship between the meaning of the word ‘flex’ as a ‘real‑time computer language’ and the abovementioned goods and services, for the purpose of the case-law cited in paragraph 41 of this judgment. 57 Consequently, the Board of Appeal was fully entitled to conclude that the trade mark applied for was descriptive of those goods and services for the purpose of Article 7(1)(c) of Regulation No 40/94. 58 As is clear from Article 7(1) of Regulation No 40/94, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal applies (see, to that effect, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 29, and Case T-19/99 DKV v OHIM(COMPANYLINE) [2000] ECR II-1, paragraph 30). 59 As a result, there is no need to rule on the first part of the plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94. 60 In the light of the foregoing, the action will be dismissed in its entirety. Costs 61 Under Article 87(2) 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 OHIM. On those grounds, THE COURT OF FIRST INSTANCE (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders Adobe Systems Inc. to pay the costs. Forwood Šváby Truchot Delivered in open court in Luxembourg on 23 October 2008. E. Coulon N.J. Forwood Registrar President * Language of the case: English.