Judgment — ECLI:EU:T:2010:35
Date: 2010-02-10
Language of the case: German
Court formation: Sixth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful
Origin: Germany

summary form, the contested decision does not justify the conclusion that the trade mark Homezone is descriptive of telecommunications services in Class 38. 43 Those examples were given by the examiner in support of his reasoning that was intended to show that the sign at issue was devoid of any distinctive character since it was already being used on the market concerned to introduce goods and services. Those examples cannot therefore be relied on to support reasoning based on Article 7(1)(c) of Regulation No 40/94 relating to the descriptiveness of a mark. 44 It should be added that the Board of Appeal does not explain how those examples could justify a finding that the trade mark Homezone is descriptive. 45 In addition, even supposing that they were mentioned in the context of examination of a plea alleging infringement of Article 7(1)(c) of Regulation No 40/94, the examples referred to in the contested decision are made up of internet articles which are presented by the examiner in the form of a list. The examiner merely mentioned their titles, the addresses of the sites from which they came and quoted a few sentences without giving their precise origin. Those titles and sentences, which probably derive from those articles, refer to the word ‘homezone’ without specifying how that term is capable of designating the services in question. 46 Furthermore, the finding made by the examiner on the basis of information from Wikipedia must also be disregarded since, as it is based on an article from a collective encyclopaedia established on the internet, whose content may be amended at any time and, in certain cases, by any visitor, even anonymously, such a finding is based on information lacking certainty. 47 The Board of Appeal added that action taken by the applicant against use of the term ‘homezone’ by its competitors, as shown by an injunction of 5 September 2005, was not successful in preventing that term from being used as the obvious name for the services in question. The Board of Appeal did not, however, give any details regarding the terms of that injunction on which it based its assessment, nor the link between the injunction and its assessment. Furthermore, that assessment was expressed in the form of a mere assertion. 48 It should be added that the Board of Appeal based its reasoning on the correct premise that the descriptiveness of a sign did not depend on its actual use (see paragraph 38 above). However, it confined itself to stating that the sign Homezone was capable of designating the reduced tariff of the mobile telephone service described without specifying how that sign, which it had found could designate a ‘Heimbereich’ (home area) or ‘Nahzone’ (local area), involved a reference to the idea of a tariff and, as a result, was capable of designating a telecommunications service characterised by a specific tariff system. 49 Consequently, the Board of Appeal, which referred exclusively in its decision to certain mobile telephone services present on the market, did not establish the correctness of the facts on which it based its reasoning. It thereby failed to establish that the trade mark Homezone could designate a telecommunications service in Class 38 or one of its characteristics. The first plea must therefore be upheld in so far as concerns those services. – Other services in Class 38 50 As regards those services, the Board of Appeal justified its refusal to register the sign Homezone in point 20 of the contested decision, in the following terms: ‘Other services in Class 38 in respect of which registration of the mark is sought accompany and support the use of the telephone service with the reduced tariff option as described. Thus, on conclusion of a telephone contract, the service provider often makes certain equipment available to rent. These days, a mobile telephone contract often provides access to online services. Telephone information and other services provided by network operators, information brokers and access providers also form part of the typical overall package which is generally offered with a mobile telephone contract. The tariff structure, including the “Homezone” option, is directly relevant for those services as well.’ 51 Therefore, in making its decision on the descriptiveness of the Homezone trademark as regards other services in Class 38, the Board of Appeal referred specifically to the telephone information and other services provided by network operators, information brokers and access providers, some of which are online services, that are generally offered by those operators as part of overall mobile telephone packages. 52 Consequently, it inferred the descriptiveness of the mark Homezone from the finding that those services are associated with mobile telephone services which involve the so-called ‘homezone’ tariff option, in so far as they are offered at the same time as the mobile telephone package, which they thus make more attractive. 53 As stated in paragraphs 40 to 49 above, the Board of Appeal did not establish that the mark Homezone could designate a telecommunications service in Class 38 or one of the characteristics thereof. Consequently, the Board of Appeal could not consider that mark also to be descriptive of the other services in Class 38 on the sole ground that those services are associated with the mobile telephone service which involves the ‘homezone’ tariff option. 54 Moreover, the Board of Appeal did not characterise the existence of a direct and specific link which the relevant public could establish between the mark Homezone, which may be associated with the idea of geographical location and does not include any reference to the notion of tariffs, and the provision of services relating to online or telephone information services. Furthermore, it cannot be inferred from the contested decision that such services might be offered or provided on conditions determined on the basis of geographical considerations. 55 Consequently, the Board of Appeal did not establish that the mark Homezone could designate services in Class 38 other than telecommunications services or one of their characteristics. The first plea must therefore be upheld as regards those services. – Goods and services in Classes 9 and 42 56 As regards ‘apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, data processing equipment and computers’ in Class 9, the Board of Appeal stated, in point 21 of the contested decision, that the application for registration of the mark Homezone had to be rejected in relation to those goods since they ‘enable the mobile telephone service which [the mark] describes to be provided’. 57 Thus, in the view of the Board of Appeal, the reason why the sign at issue must be regarded as being capable of designating the goods in question in Class 9 is that those goods make it possible for the mobile telephone service described by that sign to operate. 58 It must be pointed out that, in arriving at that conclusion, the Board of Appeal did not satisfy the requirements laid down in the case‑law set out in paragraph 34 above, pursuant to which, for a sign to be classed as descriptive, it must be shown that there is a sufficiently direct and specific link to the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or of one of their characteristics. 59 In stating that the goods in question in Class 9 ‘enable’ the mobile telephone service to be provided, the Board of Appeal described a functional relationship between those goods and one of the services in Class 38, whereas it should have pointed to the existence of a direct and specific link which the relevant public could establish between the term ‘homezone’, which may be associated with the idea of geographical location, and the goods in question, which are intended for recording, transmission and reproduction of sound or images and for data processing. 60 Even had it been established, the capacity of those goods to make possible the operation of a mobile telephone service characterised by tariffs calculated on the basis of the location of the beneficiary of that service does not establish the descriptiveness of the sign Homezone, the meaning of which as regards such goods or some of their characteristics is, furthermore, unrelated to any notion of tariffs. 61 Consequently, the Board of Appeal has not established that the mark Homezone could designate the goods in question in Class 9 or one of their characteristics. The first plea must therefore be upheld in so far as concerns those goods. 62 The Board of Appeal stated that the finding that the goods in question in Class 9 enabled the mobile telephone service to be provided was also valid for the services in Class 42, in respect of which objections were raised. 63 It added that ‘engineering services; computer programming; computer programming services; providing of expert opinion; technical consultancy and providing of expertise; rental of data processing equipment and computers; technical design and planning of telecommunications equipment’ in Class 42 ‘serv[ed] to make the necessary technology available’. 64 Finally, the Board of Appeal considered that ‘network operator, information broker and provider services, namely arranging and leasing access time to computer databases; research in the field of telecommunications engineering; updating of database software; storage of data in computer databases; installation and maintenance of database software; leasing of access times to data bases’ were ‘necessary to collect and process the parameters of the service (for example, the localisation and boundaries of the homezone determined by the user) and the customer data required for billing purposes’. 65 It should be noted that those grounds do not point to the existence of a direct and concrete link which the relevant public could establish between the term ‘homezone’, in the sense of ‘home area’ or ‘local area’ and the services at issue. 66 First, the ground, to the effect that the services in Class 42 ‘enable the mobile telephone service which [the mark] describes to be provided’ has the same shortcomings as the grounds set out in paragraphs 58 and 59 above in relation to the goods at issue in Class 9. Thus, even had it been established, the capacity of the services in question in Class 42 to make possible the operation of a mobile telephone service characterised by tariffs calculated on the basis of the location of the beneficiary of that service does not establish the descriptiveness of the sign Homezone as regards such services or some of their characteristics. 67 The technology particular to each of the categories of service in question in Class 42 is made available to the mobile telephone service described in paragraph 59 above and the general and abstract reference to the making available of such non-identifiable technology does not enable it to be established, in the absence of information making it possible to point to the existence of a link between the sign Homezone and the services in question, that the sign is descriptive of those services or of some of their characteristics. 68 Finally, apart from the fact that the ground to the effect that the other services at issue are ‘necessary to collect and process the parameters of the service (for example, the localisation and boundaries of the homezone determined by the user) and the customer data required for billing purposes’ does not make it possible to determine, for each of the categories of service in question, how those services are necessary for the collection and processing of the parameters of the mobile telephone service and the data required for billing purposes, from the point of view of geographical localisation and the boundaries of the homezone of the user, it also does not establish that the sign Homezone is descriptive of such services or of some of their characteristics. It is not apparent from that reasoning that the relevant public will perceive, immediately, and without further thought, the sign Homezone as being descriptive of one of the characteristics of those services. 69 Accordingly, the Board of Appeal did not establish that the mark Homezone could designate the services at issue in Class 42 or one of their characteristics. The first plea must therefore be upheld in so far as concerns those services and, consequently, in respect of all the goods and services in respect of which registration was sought. The second plea, alleging infringement of Article 7(1)(b) of Regulation No 40/94 – Arguments of the parties 70 The applicant submits that the Board of Appeal inferred that the sign Homezone lacked distinctiveness solely from its supposed descriptiveness and that, since it was not established that the sign was descriptive, the absolute ground for refusal of registration laid down in Article 7(1)(b) of Regulation No 40/94 was also not established. 71 In addition, it submits that the Board of Appeal did not address several of its arguments. 72 OHIM contends that the lack of distinctiveness of the sign at issue results from the finding that it is descriptive. Accordingly, the Board of Appeal was not required to state the other grounds on which it considered that the sign at issue was devoid of any distinctive character. It adds that that sign has no originality either visually or phonetically that would render it capable of distinguishing the applicant’s goods and services from those of other undertakings as far as the relevant public is concerned. – Findings of the Court 73 Under Article 7(1)(b) of Regulation No 40/94, trade marks which are devoid of any distinctive character are not to be registered. 74 First of all, it is settled case‑law that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and calls for separate examination (Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 45 and the case‑law cited). 75 The Court has also stated that the various grounds for refusal must be interpreted in the light of the public interest underlying each of them. The public interest taken into account in the examination of each of those grounds for refusal may, indeed must, reflect different considerations, depending upon which ground for refusal is at issue (Henkel v OHIM, paragraphs 45 and 46). 76 In that regard, it should be noted that the notion of public interest underlying Article 7(1)(b) of Regulation No 40/94 is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of origin of the marked goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin (Case C‑329/02 P SAT.1 v OHIM [2004] ECR I‑8317, paragraphs 23 and 27; Case C‑37/03 P BioID v OHIM [2005] I‑7975, paragraph 60; and Case C 304/06 P Eurohypo v OHIM [2008] ECR I‑3297, paragraph 56). 77 In the present case, the Board of Appeal considered, in point 24 of the contested decision, that the application for registration of the mark at issue should be rejected on the ground that the mark was not capable of distinguishing the goods and services in question according to their commercial origin, since it designated the characteristics of those goods or services in a directly perceptible manner. 78 In assessing the distinctive character of the term ‘homezone’, the Board of Appeal thus confined itself to an analysis of its descriptiveness for the purposes of Article 7(1)(c) of Regulation No 40/94, since the contested decision does not contain any specific examination of the ground for refusal laid down in Article 7(1)(b) of that regulation. 79 In analysing the mark Homezone, the Board of Appeal omitted, in particular, to take account of the public interest which Article 7(1)(b) of Regulation No 40/94 specifically seeks to protect, namely to guarantee the identity of origin of the goods or services designated by the mark. 80 In addition, since the Board of Appeal did not establish that the term ‘homezone’ was descriptive of any of the goods or services in question in Classes 9, 38 and 42, it could not, in any event, infer a lack of distinctive character from such a finding. 81 Accordingly, the Board of Appeal did not establish that the mark Homezone was devoid of any distinctive character in relation to the goods and services in question in Classes 9, 38 and 42. The second plea must therefore be upheld. 82 Since the Board of Appeal did not establish the descriptiveness and lack of distinctive character of the mark Homezone in relation to the goods and services in respect of which registration was sought, the contested decision must be annulled, without it being necessary to examine the third plea, alleging infringement of Article 7(3) of Regulation No 40/94, relating to whether a descriptive mark has become distinctive in consequence of the use which has been made of it. Costs 83 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. In this case, the applicant asked that OHIM be ordered to pay the costs of these proceedings. Since OHIM has been unsuccessful, the form of order sought by the applicant must therefore be granted and OHIM ordered to pay the costs incurred by the applicant in the proceedings before the Court. 84 The applicant also applied for OHIM to be ordered to pay the costs incurred by it in the administrative proceedings before OHIM. In that regard, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the examiner. Accordingly, the applicant’s request that OHIM, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before OHIM can be allowed only as regards the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 July 2007 (Case R 1583/2006-4); 2. Orders OHIM to pay the costs. Meij Vadapalas Truchot Delivered in open court in Luxembourg on 10 February 2010. [Signatures] * Language of the case: German.