Judgment — ECLI:EU:T:2015:674
Date: 2015-09-23
Language of the case: English
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: United Kingdom

summary of annual revenue generated by sales of the magazine INFOSECURITY from 2007 to 2010 inclusive (Attachment 18 to the letter); – examples of front covers of the applicant’s magazine and pages from the website www.infosecurity-magazine.com together with a press release (Attachment 19 to the letter). 74 The Board of Appeal then referred, in paragraph 26 of the contested decision, to some additional evidence produced before it by the applicant by letter of 18 October 2012, namely two statements — one from the managing director of an independent consortium of professionals within information security professions (Attachment 2 to the letter), and the second from the assistant professor in the department of informatics of the University of Milan (Attachment 3 to the letter) — and the documents included by the applicant in Attachment 4 to its letter of 18 October 2012, namely: – a press release issued following the Infosecurity 2012 exhibition, referring to increased attendance at the exhibition and quoting statements from well-known organisations and dignitaries who attend the exhibition; – a grid chart showing the competitive position of the applicant’s Infosecurity exhibitions in relation to those of its competitors; – the summary of a 2012 study carried out by the applicant and a large audit firm entitled ‘Information security breaches survey’ and the audit firm’s press release about that study. 75 The Board of Appeal found, first of all, in paragraph 27 of the contested decision, that the initial evidence did not establish, in accordance with the case-law, use of the mark as a trade mark, since the term ‘infosecurity’ appeared to be used more as a company name or as a component of another figurative sign, namely: . 76 The Board of Appeal then found that the organisation and success of the applicant’s exhibition entitled ‘Infosecurity’ were not, on their own, sufficient to prove that the sign INFOSECURITY had acquired distinctive character or that it was perceived as a trade mark by the relevant public (paragraphs 28 and 29 of the contested decision). 77 Lastly, the Board of Appeal observed that the additional evidence produced by the applicant, and in particular the statements produced, were not sufficient to establish that the mark applied for had acquired distinctive character through use (paragraphs 30 to 33 of the contested decision). 78 The Board of Appeal concluded from the foregoing that, despite the use demonstrated by the applicant of the term ‘infosecurity’, the evidence produced before the Examination Division and before the Board of Appeal did not prove that, from the relevant public’s perspective, the mark applied for had acquired distinctive character and that it would be perceived as a sign capable of distinguishing the applicant’s goods and services from those of other undertakings (paragraph 35 of the contested decision). 79 The applicant formulates, in essence, two complaints against the decision of the Board of Appeal. 80 The applicant submits, first, that the use of the mark applied for as a component of another sign or as a trading name can amount to use of the mark as a trade mark and, secondly, that the Board of Appeal was wrong to find that the success and reputation of the exhibition entitled ‘Infosecurity’ were not sufficient to constitute use of the mark as a trade mark. Use of the mark applied for within another figurative sign or as a trade name 81 The applicant argues, first of all, that the Board of Appeal was wrong to hold that the mark applied for could not acquire distinctive character through its use in another figurative sign. 82 However, it should be stated that the addition of the element ‘europe’ to the element ‘infosecurity’ alters how the mark applied for, as a mark, is perceived by the relevant public, since, as stated in the contested decision, its association with the term ‘infosecurity’ may be perceived as a reference to the European edition of the Infosecurity exhibition, and not as a trade mark. 83 In those circumstances, the Board of Appeal was fully entitled to find, in paragraph 27 of the contested decision, that the use of the term ‘infosecurity’ in the figurative sign infosecurity Europe could not constitute use of that term as a trade mark for the purposes of Article 7(3) of Regulation No 207/2009. 84 The applicant submits, next, that the Board of Appeal was wrong in finding that the expression ‘infosecurity’ was used ‘more as a company name’ because it was in most cases accompanied by the word ‘Europe’ or by the indication of a year. 85 In this connection, the applicant submits that that finding is ‘factually incorrect’ and that, ‘in any event, use of a mark as a trading name may lead to the acquisition of distinctive character’. 86 However, it must be held that, in so far as the applicant asserts that the Board of Appeal’s finding that the mark applied for is used as a company name is ‘factually incorrect’, it cannot reasonably claim that use of the mark applied for as a trade name may lead to the acquisition of distinctive character. The applicant cannot rely on the mark applied for having acquired distinctive character as a result of its use as a trade name while disputing, in the case in point, the existence of such use. 87 The applicant’s argument that, in essence, the mark applied for could have acquired distinctive character through use as a result of being used as a trade name must therefore be dismissed. 88 In any event, even if that use did take place, such use as a trade name does not, contrary to what is claimed by the applicant, suffice on its own to establish that a significant proportion of the relevant public perceives a link between the services delivered under the sign at issue and a particular undertaking (see, by analogy, judgment of 17 May 2011 in Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), T‑7/10, EU:T:2011:221, paragraph 62). 89 Indeed, unlike a trade mark, the purpose of a trade name is not, of itself, to distinguish goods or services (see judgment of 11 September 2007 in Céline, C‑17/06, ECR, EU:C:2007:497, paragraph 21 and the case-law cited). 90 In those circumstances, the Board of Appeal was fully entitled to hold, in paragraph 27 of the contested decision, that the use of the mark applied for within another figurative sign or as a trade name in the initial evidence produced could not establish that distinctive character had been acquired through use. Effect of the claimed success and reputation of the Infosecurity exhibition 91 The applicant submits that the Board of Appeal was wrong in holding that the success and reputation of its Infosecurity exhibition, demonstrated by the initial evidence (see paragraph 9 above) and the additional evidence (see paragraph 13 above), were not sufficient to establish that the mark applied for was perceived as a trade mark by the relevant public and not as the title of an exhibition. 92 The applicant relies, on the one hand, on paragraph 28 of the contested decision in which the Board of Appeal stated that ‘based on the documentation filed before it and the Examination Division, it is clear that the applicant has been organising an exhibition called “INFOSECURITY” … and that this exhibition is very successful’ and, on the other, on the additional evidence and, in particular, on the statements produced before the Board of Appeal, which, it is claimed, the Board of Appeal wrongly disregarded. The applicant concludes by providing a ‘summary of the evidence provided’ and stating that the Board of Appeal failed to consider the substantial amount of that evidence. 93 In the first place, in so far as the applicant relies on the success and reputation of its Infosecurity exhibition, which success is, moreover, not disputed by the Board of Appeal, it must be stated that the fact that an exhibition is successful does not mean that its title is perceived as a trade mark in the sense that it would enable the relevant class of persons immediately to identify the undertaking behind that exhibition and to dissociate that exhibition from exhibitions of other undertakings on identical subjects (see paragraph 68 above). That is a fortiori the case where, as in the present case, the title of the exhibition is directly descriptive of its content. 94 According to the case-law, the relevant class of persons cannot perceive the goods or service designated by the mark applied for as originating from a particular undertaking where the sign at issue is used in a manner directly descriptive of the type of goods or service concerned (see judgment of 9 July 2014 in Pågen Trademark v OHIM (gifflar), T‑520/12, EU:T:2014:620, paragraph 43 and the case-law cited). 95 That is indeed the case here, since it is established that the sign INFOSECURITY is used in order to designate the applicant’s exhibition dedicated to information security, that is to say, in a directly descriptive way. 96 Consequently, the Board of Appeal was fully entitled to hold, in paragraph 28 of the contested decision, that the fact that the applicant’s exhibition was successful was not, on its own, sufficient to prove that the mark applied for had acquired distinctive character or that it was perceived as a trade mark and not as the title of an exhibition. 97 In the second place, in so far as the applicant claims that some of the additional evidence was disregarded, wrongly, by the Board of Appeal, it should be noted that the applicant produced three statements before the Board of Appeal, the first of which came from an independent consortium of professionals within information security professions, the second from an assistant professor in the department of informatics of the University of Milan (see paragraph 74 above) and the third from a partner of a large audit firm (Attachment 5 to the letter of 18 October 2012). 98 The first two statements, which are drafted in almost identical terms, state, in essence, that during the last 15 years, the applicant has built up a significant reputation in its Infosecurity exhibition and its eponymous magazine to the extent that, for the majority of people working in the information security sector, the term ‘infosecurity’ refers only to the applicant’s exhibition and magazine. The third statement sets out in slightly different terms the conclusions in the first two statements. 99 First, the applicant submits that the fact that it coordinated and drafted the statements does not affect their evidential value. Secondly, it submits that the fact that the statements were made and signed in 2012 does not preclude their being capable of establishing the acquisition of distinctive character through use over the period preceding the application for registration. Thirdly, it complains that the Board of Appeal did not take into consideration the confidential statement provided by a partner of a large audit firm. 100 So far as the first two statements are concerned, it must be pointed out as regards the dates of those statements that, contrary to what is indicated in the contested decision, the fact that they were signed after the application for registration was filed does not mean that they are devoid of evidential value for the purposes of assessing the acquisition of distinctive character through use as at the date when the application for registration of the contested mark was filed (see, to that effect, judgment in Combination of the colours green and yellow, cited in paragraph 70 above, EU:T:2009:417, paragraph 49). Similarly, as regards the Board of Appeal’s objection as to the absence of spontaneity on the part of those making the statements and the applicant’s role in the drawing up of the statements submitted, it is important to point out that — contrary to what is suggested in the contested decision — the fact that those statements were made following a request by the applicant and that the applicant may have coordinated the preparation of those statements does not, in itself, cast doubt on their content and evidential value (judgment in Combination of the colours green and yellow, cited in paragraph 70 above, EU:T:2009:417, paragraph 50). 101 However, notwithstanding the foregoing, it is clear that the Board of Appeal was correct in regarding those two statements as insufficient ‘[a]s sole evidence of the relevant public’s actual perception of the mark’ (paragraph 31 of the contested decision). Regardless of the circumstances in which they were drawn up and, in particular, of their date, they express an opinion only as to how the sign is perceived by professionals, whereas the relevant public also includes final consumers (see, to that effect, judgment of 12 September 2007 in Glaverbel v OHIM (Texture of a glass surface), T‑141/06, EU:T:2007:273, paragraph 44). In those circumstances, they do not establish that the mark applied for acquired distinctive character through use for average consumers, which consumers — the applicant agrees — form part of the relevant public. 102 The same is true of the confidential statement from a partner of a large audit firm produced by the applicant. According to the applicant, that statement was not taken into consideration by the Board of Appeal inasmuch as it was not expressly referred to in the contested decision. However, there is nothing in that statement that might establish how the mark applied for is actually perceived by the average consumer. Furthermore, it is apparent from the additional evidence provided by the applicant (see paragraph 13 above) that the audit firm in question was involved in the carrying out of a commercial study with the applicant. In this connection, in reply to a question posed at the hearing in relation to that study, the applicant’s representative did not exclude the possibility that that audit firm may be connected to the applicant through client relationships. In those circumstances, the value of that statement is limited. According to the case-law, account is to be taken, as a priority, of statements made by non-profit-making associations such as, for example, statements from chambers of commerce and industry or other trade and professional associations (see, by analogy, judgment of 4 May 1999 in Windsurfing Chiemsee, C‑108/97 and C‑109/97, ECR, EU:C:1999:230, paragraph 51, and judgment in Combination of the colours green and yellow, cited in paragraph 70 above, EU:T:2009:417, paragraph 49). 103 In those circumstances, even if that statement was not taken into account by the Board of Appeal, it would not have affected the Board of Appeal’s assessment. 104 Lastly, it is clear that, besides the statements, the additional evidence produced before the Board of Appeal (see paragraph 74 above) does not establish that the relevant public perceived, before the date of the application for registration, the mark applied for as an indication of the commercial origin of the goods and services designated (judgment of 20 September 2007 in Imagination Technologies v OHIM (PURE DIGITAL), T‑461/04, EU:T:2007:294, paragraph 79). 105 First, since the press release issued following the Infosecurity 2012 exhibition and entitled ‘Infosecurity 2012 Best Ever Event’ relates solely to the exhibition held in 2012 and not to exhibitions prior to the application for registration, there is no analogy with those exhibitions inasmuch as it can be inferred from reading that press release that the 2012 edition is clearly distinguishable from the earlier editions, in particular because of a significant increase in attendance, which — according to the press release’s own wording — made it the applicant’s ‘best ever event’. 106 Secondly, as regards the documents produced by the applicant concerning a 2012 survey entitled ‘Information Security Breaches Survey’, since that survey relates in large part to the nature of cyber risks and their costs for the undertaking, it does not in any way establish that the mark is capable of being perceived as a trade mark by the relevant public and, inter alia, average consumers. 107 It follows that the Board of Appeal was fully entitled to find, in paragraphs 30 to 33 of the contested decision, that the additional evidence produced before it by the applicant was not capable of calling into question its assessment that the mark applied for had not acquired distinctive character through use. 108 In the third place, that conclusion cannot be called into question by the reference made by the applicant in paragraph 50 of its application, in the form of a summary, to the ‘evidence’ claimed to have been provided during the administrative proceedings and seeking to establish: – first, the position as leader in Europe of the Infosecurity exhibition in the information security sector; – secondly, the large number of participants at the Infosecurity exhibitions, demonstrated, according to the applicant, by the attendance in 2012 of approximately 13 000 visitors over three days at the main Infosecurity exhibition and the attendance in 2011 of more than 21 000 visitors at the various Infosecurity exhibitions in Europe; – thirdly, the European and international media coverage of the Infosecurity exhibitions, demonstrated, according to the applicant, by approximately 1 000 publications in the English-language general and trade press; – fourthly, the quality and reputation of speakers at the Infosecurity exhibitions, including, according to the applicant, the heads of security of US multinational undertakings and high profile individuals from the British political sphere; – fifthly, the size of the budget in terms of marketing and advertising spent on the Infosecurity exhibitions (approximately GBP 500 000, according to the applicant) on wide press and other media coverage, and multisectoral coverage of advertising material (information security and information technology, banking, finance, healthcare, education, telecommunications, government administration); – sixthly, ownership and management of websites linked to the Infosecurity exhibitions and magazines (www.infosecurity.be, www.infosecurity.co.uk and www.infosecurity.nl) for many years, including prior to the filing of the Community trade mark application. 109 The applicant submits merely, in this connection, in paragraph 51 of its application, that ‘[t]he Board of Appeal … failed to consider the substantial amount of evidence provided … on acquired distinctiveness of the [contested mark]’. 110 However, the applicant’s argument that the Board of Appeal failed to consider the ‘substantial amount of evidence provided’ for the purposes of demonstrating that the mark applied for had acquired distinctive character would amount — at least implicitly — to requiring the Court to examine all the documents produced in the course of the administrative proceedings and the arguments relating thereto, even though those documents were not identified in the application by a reference to the document produced in the administrative proceedings. 111 It is not for the Court to place itself in the parties’ position and seek the relevant information in the annexes (see, by analogy, judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 14 and the case-law cited). 112 In those circumstances, the line of argument referred to in paragraphs 108 and 109 above must be dismissed as unsubstantiated in so far as it is supported only by a general and implicit reference to evidence submitted in the administrative proceedings (see, by analogy, judgment of 11 September 2014 in Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, EU:T:2014:769, paragraph 19). 113 In any event, even if the evidence to which the applicant refers (see paragraph 108 above) could be taken into account, it would not be sufficient for the mark applied for to be regarded as having acquired distinctive character through use. 114 In the first place, the applicant’s possible position as leader on the market in question, even if it were established, does not necessarily lead to the relevant public identifying the commercial origin of the Infosecurity exhibition because of its title, as it might do because of a trade mark (see paragraph 96 above), particularly where the sign INFOSECURITY may be used as a trade name or in order to designate the title of an exhibition (see paragraphs 81 to 90 above). The same is true of the evidence relating to attendance at the Infosecurity exhibition. 115 In the second place, it is apparent from the applicant’s summary that its advertising and marketing investments are allocated to specific sectors such as the information security sector, but also to the banking, finance and government administration sectors. That does not prove that the average consumer, who also forms part of the relevant public, is — like the professional public — also targeted by that advertising. Moreover, as regards the sums invested by the applicant, it is impossible, in the present case, to measure the relative significance of the applicant’s advertising investments in the absence of data which make it possible to compare them with the overall volume of advertising on the market for the goods and services at issue in the European Union (see, by analogy, judgment of 8 July 2009 in Mars v OHIM — Ludwig Schokolade (Shape of a chocolate bar), T‑28/08, EU:T:2009:253, paragraph 62 and the case-law cited). 116 In the third place, the reputation of the speakers at the Infosecurity exhibitions and the existence of publications in the international press referring to the Infosecurity exhibition are not sufficient to establish that the sign is perceived as a trade mark by consumers, particularly where, as in the present case, the sign at issue is directly descriptive of the goods and services covered by the application for registration. 117 In the fourth place, in so far as the applicant relies on ownership and management of websites (www.infosecurity.be, www.infosecurity.nl and www.infosecurity.co.uk), it is clear that since the mark applied for corresponds to a domain name, the fact that internet users visit the site on which the goods and services are offered does not suffice to prove that that mark has been ‘used’ within the meaning of Article 7(3) of Regulation No 207/2009 (judgment of 21 November 2012 in Getty Images v OHIM (PHOTOS.COM), T‑338/11, EU:T:2012:614, paragraph 58). Although registration of a trade mark which consists of signs or indications that are also used to designate a domain name is not excluded, as such, by virtue of such use, a sign which fulfils functions other than that of a trade mark is distinctive for the purposes of Article 7(1)(b) of Regulation No 207/2009 only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (see judgment of 12 December 2007 in DeTeMedien v OHIM (suchen.de), T‑117/06, EU:T:2007:385, paragraphs 35 and 36 and the case-law cited). That, however, is not so in the present case, since the mark applied for may be perceived immediately as a trade name or as the title of an exhibition (see paragraphs 81 to 90 above). 118 It is apparent from the foregoing that the third plea in law, alleging infringement of Article 7(3) of Regulation No 207/2009, must be dismissed and, therefore, the action must be dismissed in its entirety. Costs 119 Under Article 134(1) of the Rules of Procedure of the General Court, 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 GENERAL COURT (Second Chamber) hereby: 1. Dismisses the action; 2. Orders Reed Exhibitions Ltd to pay the costs. Martins Ribeiro Gervasoni Madise Delivered in open court in Luxembourg on 23 September 2015. [Signatures] * Language of the case: English.