JUDGMENT OF THE GENERAL COURT (Third Chamber)
23 May 2019
(*)
(EU trade mark — International registration designating the European Union — Word mark ProAssist — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001 — Article 94 of Regulation 2017/1001 — Equal treatment)
In Case T‑439/18,
Sintokogio Ltd, established in Nagoya (Japan), represented initially by V. Dalichau, S. Kirschstein-Freund and B. Breitinger, lawyers, and subsequently by S. Kirschstein-Freund and B. Breitinger, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 3 May 2018 (Case R 2341/2017-2), relating to the international registration designating the European Union in respect of the word mark ProAssist,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: E. Hendrix, Administrator,
having regard to the application lodged at the Court Registry on 13 July 2018,
having regard to the response lodged at the Court Registry on 11 October 2018,
further to the hearing on 19 March 2019,
gives the following
Judgment
Background to the dispute
1        On 13 October 2016, the applicant, Sintokogio Ltd, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO), international registration No 1327746 designating the European Union in respect of the word mark ProAssist. That registration was notified on 12 January 2017 to the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The services in respect of which protection was sought are in Class 37 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 to the following description: ‘Repair or maintenance of shotblasting machines; repair or maintenance of foundry moulding machines; repair or maintenance of metalworking machines and tools; repair or maintenance of industrial furnaces; repair or maintenance of water purifying apparatus; repair or maintenance of waste compacting machines and apparatus; repair or maintenance of waste crushing machines and apparatus’.
3        On 25 January 2017, the examiner issued a provisional refusal of protection in respect of all the services covered by the trade mark application, in so far as that application was caught by the provisions of Article 7(1)(b) and (2) of Regulation No 207/2009 (now Article 7(1)(b) and (2) of Regulation 2017/1001).
4        By decision of 7 September 2017, following the observations submitted by the applicant on 21 March 2017, the examiner confirmed the refusal to protect the mark applied for in the European Union for the services concerned.
5        On 30 October 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation
2017/1001, against the examiner’s decision.
6        By decision of 3 May 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. First, it took the view that the English- and French-speaking public of the European Union had to be taken into consideration in order to assess whether the mark applied for was eligible for protection. It noted that the services concerned were aimed primarily at a professional public while stating that the level of attention of the relevant public may be relatively low as regards promotional indications, whether those concerned were average end consumers or a more attentive public made up of specialists or circumspect consumers.
7        Next, the Board of Appeal endorsed the examiner’s finding that, on account of the meaning of the elements ‘pro’ and ‘assist’, the mark applied for would be understood by the relevant public as meaning ‘help, providing information, advice by a professional’. For that reason, it found that, in view of the services concerned, namely the repair and maintenance of different types of machines, tools and apparatus, the relevant public would perceive the mark applied for as a mere promotional message, inviting it to select the applicant’s services, since it would receive assistance, help, information and professional advice or advice from a professional. The Board of Appeal noted that the registration of the mark applied for could not be rejected for the simple reason that it was a promotional slogan. It found that, beyond its promotional meaning, the mark applied for did not contain any element enabling the relevant public to perceive it as an indication of the commercial origin of the services concerned.
8        As regards the examples of marks registered by EUIPO relied on by the applicant, the Board of Appeal observed, first, that the marks in question were not fully on a par with the mark applied for. It stated, secondly, that the legality of the decisions of the Boards of Appeal had to be assessed solely on the basis of Regulation 2017/1001 and not on the basis of EUIPO’s previous decision-making practice. Thirdly, the Board of Appeal stated that, in order to be comparable, the precedents relied on had to relate to cases in which the Boards of Appeal had had an opportunity to give a ruling. It also noted that the Boards of Appeal had refused on numerous occasions to register marks consisting of the element ‘pro’ combined with other descriptive or non-distinctive elements. Fourthly, the Board of Appeal observed that the person who applied for registration of a sign as a trade mark could not rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else.
9        Lastly, the Board of Appeal noted that the applicant had not claimed or proved any acquired distinctiveness through use and confirmed the examiner’s decision that the mark applied for was devoid of distinctive character.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        in the alternative, alter the contested decision and declare that the appeal is justified;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.
11      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
12      In support of the action, the applicant puts forward three pleas in law alleging, first, infringement of Article 94(1) of Regulation
2017/1001, second, infringement of Article 7(1)(b) of Regulation
2017/1001, and third, infringement of the principles of equal treatment and sound administration.
The first plea in law, alleging infringement of Article 94(1) of Regulation 2017/1001
13      The applicant complains that EUIPO infringed its right to be heard in that EUIPO based the contested decision on information and on the content of a website which it had not communicated to the applicant before adopting its decision. In that regard, the applicant submits that indicating only the address of that website is insufficient, given that its content might change. The applicant relies, in support of that argument, on the judgment of 7 February 2007, Kustom Musical Amplification v OHIM (Shape of a guitar) (T‑317/05, EU:T:2007:39). According to the applicant, it was for EUIPO to ‘cop[y] [in] the notification’, or to attach to the latter, the contents of the web
pages in question, as they were available on the day on which the examiner consulted them. Therefore, the applicant was not in a position to verify the accuracy of the grounds on which the provisional refusal was based. Moreover, the examiner disregarded the arguments put forward by the applicant and merely made reference to the legal principles applicable under Article 7(1)(c) of Regulation No 207/2009, whereas the refusal was based on Article 7(1)(b) of that regulation. The applicant also criticises the Board of Appeal for merely basing its reasoning on the claims made by the examiner at first instance, which does not comply with the requirements of the first sentence of Article 94(1) of Regulation
2017/1001.
14      EUIPO disputes those arguments.
15      In the first place, as regards the infringement of the second sentence of Article 94(1) of Regulation 2017/1001, the applicant complains that the Board of Appeal approved the examiner’s definitions even though the content of the website to which the examiner referred had not been communicated to the applicant. It should be recalled in that regard that it follows from the second sentence of Article 94(1) of Regulation 2017/1001 that EUIPO may base its decision only on matters of fact or of law on which the parties have had an opportunity to present their comments. The general principle of protection of the right to defend oneself is enshrined in EU trade mark law by that provision. In accordance with that principle, persons whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make their point of view known (see judgment of 6 September 2013, Eurocool Logistik v OHIM — Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraph 50 and the case-law cited).
16      In the present case, it must be observed that, on 25 January 2017, the examiner issued a provisional refusal of protection in respect of all the services covered by the trade mark application, in so far as that application was caught by the provisions of Article 7(1)(b) and (2) of Regulation No 207/2009. On 21 March 2017, before the examiner’s final decision of 7 September 2017 was adopted, the applicant submitted its observations on the objections raised by the examiner.
17      In particular, the examiner based his provisional refusal of 25 January 2017 on the meaning of the expression ‘proassist’. The examiner stated specifically that the term ‘pro’ meant ‘professional’ and that the term ‘assist’ meant that ‘if you assist someone, you assist that person in the performance of work or a task by carrying out part of the work for that person’ or that ‘if you assist someone, you give that person information, advice or money’.
In support of those findings, the examiner referred, for each of those words, to their respective entries in an online English dictionary ‘www.collinsdictionary.com’, in so doing, referring to links leading to two web
pages from that dictionary.
18      In that regard, it must be stated that not only are the links leading to the web
pages in question, which the applicant reproduced in paragraph 26 of the application, functional, but also that the content of those pages corresponds precisely to the definitions, referred to in paragraph 17 above, given by the examiner. In any event, as the terms ‘pro’ and ‘assist’ are part of everyday language, it is well known that the term ‘pro’ can mean professional and that the term ‘assist’ can mean to help someone to do something or to give someone, inter alia,
information, advice, money,
in order to help that person. In the present case, as EUIPO correctly observes, the applicant was able to verify with the help of
any dictionary, including the online dictionary ‘www.collinsdictionary.com’, or using any other generally available source, that the definitions of those two terms did in fact correspond to the meanings on which the examiner had based his decision and could, therefore, effectively make known its views on those meanings in its observations of 21 March 2017. Consequently, the applicant’s argument that EUIPO infringed the right to be heard has no factual basis and must be rejected.
19      Moreover, the facts of the present case differ from those of the case giving rise to the judgment of 7 February 2007, Shape of a guitar (T‑317/05, EU:T:2007:39), relied on by the applicant. First, it must be stated, as EUIPO submits, that, unlike in the present case, which concerns a word mark and the well-known meanings of the elements of which it is composed, the case which gave rise to the judgment of 7 February 2007, Shape of a guitar (T‑317/05, EU:T:2007:39), concerned a three-dimensional mark representing the shape of the body of a guitar and the customs of the market in question.
20      Secondly, the case that gave rise to the judgment of 7 February 2007, Shape of a guitar (T‑317/05, EU:T:2007:39), concerned, first, internet links belonging to guitar producers submitted before the adoption of the Board of Appeal’s decision, in the notifications of the grounds for refusal and, second, internet links communicated for the first time in the Board of Appeal’s decision. As regards the links submitted before the adoption of the decision, the Court noted that, at the hearing, EUIPO had stated, inter alia, that the content of the internet links in question had changed in the meantime, that some web pages, to which the links led, had disappeared and that it had no printed copies of those pages. Therefore, the Court held, in that case, that the mere communication of the internet links in the notices of grounds for refusal, without the provision of hard copies of the pages to which those links led, had not enabled the applicant to identify, before the adoption of the contested decision, the guitar shapes taken into consideration by the Board of Appeal. As regards the internet
links produced for the first time in the decision, the Court found that the applicant could not, even theoretically, have gained access, before the adoption of the Board of Appeal’s decision, to the links which had been communicated to it for the first time only in that decision and thus concluded that the Board of Appeal had taken into account facts which had not been communicated to the applicant prior to the adoption of that decision, in breach of the right to be heard.
21      Contrary to what the applicant claims by referring to the case which gave rise to the judgment of 7 February 2007, Shape of a guitar (T‑317/05, EU:T:2007:39), the issue of the accessibility or alteration of the content of the internet links referred to by the examiner does not arise in the present case, since the two web
pages are still accessible and their content has not changed in relation to the content cited by the examiner (see paragraph 18 above). Moreover, in the present case, the applicant was able to submit its observations on the meanings of the elements at issue before the examiner’s final decision was adopted, since, as it points out in paragraphs 27 and 42 of the application, it claimed, inter alia, that the word ‘pro’ could have several meanings. The Board of Appeal, for its part, referred solely to the internet links already communicated to the applicant in the provisional refusal decision of 25 January 2017.
22      Consequently, the applicant’s argument based on the judgment of 7 February 2007, Shape of a guitar (T‑317/05, EU:T:2007:39), must be rejected.
23      In the second place, in so far as the applicant submits that the examiner disregarded the arguments which it had put forward and merely referred to the legal principles applicable under Article 7(1)(c) of Regulation No 207/2009, it must be borne in mind that, under Article 72(1) of Regulation
2017/1001, actions before the EU judicature may be brought only against decisions of the Boards of Appeal. Therefore, the applicant’s complaint against the examiner’s decision must be rejected in the present action before the Court (see, to that effect, judgment of 25 January 2018,
SilverTours v EUIPO (billiger-mietwagen.de), T‑866/16, not published, EU:T:2018:32, paragraph 19 and the case-law cited).
24      In the third place, it must be recalled that in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. It is settled case-law that that obligation has the same scope as that laid down in the second paragraph of Article 296 TFEU and that the statement of reasons required by that provision must disclose in a clear and unequivocal manner the reasoning followed by the body which adopted the measure in question. The purpose of the obligation to state the reasons for EUIPO’s decisions is twofold: to enable the persons concerned to ascertain the reasons for the measure in order to defend their rights and to enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision. However, in stating the reasons for the decisions which they are called on to make, the Boards of Appeal are not obliged to take a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 30 April 2014,
Beyond Retro v OHIM — S&K Garments (BEYOND VINTAGE), T‑170/12, not published, EU:T:2014:238, paragraph 88 and the case-law cited).
25      In the present case, it is apparent from paragraph 20 et seq. of the contested decision that the Board of Appeal examined whether, as the applicant submitted, the examiner had erred in concluding that the mark applied for was devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation No 207/2009. The Board of Appeal indicated the meaning, in the present case, of the elements ‘pro’, ‘assist’ and ‘proassist’ and held that, in the light of those meanings and the services concerned, the relevant public will perceive the sign applied for merely as a promotional message inviting it to choose the services concerned and not as a trade mark. The Board of Appeal also stated that the number of different meanings which the constituent elements of a sign may have, such as the element ‘pro’ in the present case, was irrelevant. It noted, in that regard, that a sign had to be refused registration under Article 7(1)(b) of Regulation 2017/1001 if one of its possible meanings would be perceived as being devoid of any distinctive character, which, in its view, was the case here. In so doing, the Board of Appeal, in accordance with the first sentence of Article 94(1) of Regulation
2017/1001, set out the essential reasons for which the mark applied for was devoid of any distinctive character. Moreover, it is apparent from the applicant’s arguments submitted in the context of the present plea, but also in that of the other pleas on which it relies, that it was able to understand the reasons why the Board of Appeal found that the mark applied for was devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation
2017/1001.
26      In the light of the foregoing considerations, the first plea in law must be rejected in its entirety.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
27      First of all, the applicant submits that the term ‘pro’ has several meanings. It considers that neither the second element of the trade mark, namely ‘assist’, nor the services concerned suggest that, at first sight, the element ‘pro’ will be understood in a particular way. Next, according to the applicant, the relevant public will not understand the mark applied for as having a particular meaning and will not therefore perceive it as a laudatory and purely promotional message. In addition, the applicant considers that, since the relevant public will not understand, at first sight, the term ‘pro’ in a particular way, it will assess the various possible meanings of the sign applied for on the basis of the meaning of the element ‘pro’, which it will have chosen from among its possible meanings. The mark applied for is therefore distinctive in so far as its meaning is not obvious and understandable at first sight. Finally, the applicant submits that the ‘counter-argument’ that a mark is devoid of distinctive character if one of its possible meanings is itself devoid of distinctive character is insufficient. It submits, in that regard, that the Board of Appeal did not set out any reasons or put forward any argument in order to establish that the relevant public would, at first sight, perceive the mark applied for as devoid of distinctive character. The applicant adds that the mere reference made by the Board of Appeal to other cases dealing with marks containing the word ‘pro’, but containing entirely different additional elements and relating to totally different goods and services, cannot replace a correct characterisation of the facts of the case, in accordance with Article 7 of Regulation
2017/1001. The applicant also considers that it is contradictory for the Board of Appeal, on the one hand, to find that the examples of EU trade marks on which it relied are different from the mark applied for and that they relate to different goods and services and, on the other hand, to maintain that the term ‘pro’ is at first sight laudatory, because that was confirmed by decisions concerning different marks and different goods and services.
28      EUIPO disputes those arguments.
29      Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.
30      Article 7(2) of Regulation
2017/1001 states that Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
31      The distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation
2017/1001, means that that trade mark serves to identify the services in respect of which registration is sought as originating from a particular undertaking and thus to distinguish those services from those of other undertakings (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited, and of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 42 and the case-law cited).
32      In that regard, it should be noted that the signs devoid of distinctive character referred to in Article 7(1)(b) of Regulation
2017/1001 are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the service, thus enabling the consumer who acquired the service designated by the trade mark 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 (judgment of 27 February 2002, REWE-Zentral v OHIM (LITE), T‑79/00, EU:T:2002:42, paragraph 26; see, also, judgment of 3 September 2015,
iNET 24 Holding v OHIM (IDIRECT 24), T‑225/14, not published, EU:T:2015:585, paragraph 43 and the case-law cited). Such is the case, inter alia, for signs which are commonly used in connection with the marketing of the services concerned (judgments of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 20, and of 30 June 2004
Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 24).
33      The distinctive character of a mark must be assessed, first, by reference to the services in respect of which registration has been sought and, secondly, by reference to the relevant public’s perception of that mark (see judgment of 20 October 2011, Freixenet v OHIM, C‑344/10 P and C‑345/10 P, EU:C:2011:680, paragraph 43 and the case-law cited).
34      Furthermore, according to settled case-law, registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the services covered by that mark is not excluded as such by virtue of such use. However,
a mark which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is distinctive for the purposes of Article 7(1)(b) of Regulation 2017/1001 only if it can immediately be perceived as an indication of the commercial origin of the services concerned and accordingly enables the relevant public to distinguish, without any possibility of confusion, the services of the proprietor of the mark from those which have a different commercial origin (judgments of 3 July 2003, BEST BUY, T‑122/01, EU:T:2003:183, paragraph 21, and of 22 March 2018, Dometic Sweden v EUIPO (MOBILE LIVING MADE EASY), T‑235/17, not published, EU:T:2018:162, paragraph 46).
35      The applicant’s arguments regarding the Board of Appeal’s assessment set out in the contested decision must be examined in the light of those considerations.
36      In the first place, it must be noted, as the Board of Appeal did in paragraph 21 of the contested decision, that the services concerned are specialised services essentially intended for a professional public with a high degree of awareness. Moreover, that finding is not challenged by the applicant.
37      In that regard, although the relevant public is, in the present case, a professional public, it must be noted, as did the Board of Appeal, that the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether those concerned
were average end consumers or a more attentive public made up of specialists or circumspect consumers (see judgment of 29 January 2015, Blackrock v OHIM (INVESTING FOR A NEW WORLD), T‑59/14, not published, EU:T:2015:56, paragraph 27 and the case-law cited).
38      In addition, the mark applied for is made up of words which have a meaning, at least in English. Therefore, the existence of the absolute ground for refusal examined in the present case must be assessed, pursuant to Article 7(2) of Regulation
2017/1001, in relation, at the very least, to the English-speaking consumer in the European Union.
39      In the second place, it is settled case-law that the Board of Appeal must, in the case of composite word signs, take into consideration the overall impression given by the sign in order to assess whether or not a trade mark is devoid of distinctive character. That does not mean, however, that one may not first examine each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82; see, also, judgment of 7 September 2011, Meredith v OHIM (BETTER HOMES AND GARDENS), T‑524/09, not published, EU:T:2011:434, paragraph 17 and the case-law cited).
40      In the present case, the Board of Appeal endorsed the findings of the examiner as regards the respective meanings of the terms ‘pro’ and ‘assist’, drawn from an online English-language dictionary. The Board of Appeal thus found, in paragraph 26 of the contested decision, that the term ‘pro’ designated a professional. It went on to observe, in the same paragraph, that the term ‘assist’ meant to assist someone in the performance of work or a task by performing part of the work for that person and also to give someone information, advice or money. It concluded from those findings
that the expression ‘proassist’ will therefore be understood, as a whole, as meaning ‘help, providing information, advice by a professional’. In view of that meaning and of the services concerned, namely repair and maintenance of different types of machines, tools and apparatus, the Board of Appeal found that the consumer will perceive the sign applied for merely as a promotional message inviting that consumer to choose the services concerned because he will receive assistance, help, information and professional advice or advice from a professional.
41      In order to determine whether the mark applied for is devoid of distinctive character, the overall impression given by that sign must be considered. In the present case, it must be observed, first, that the term ‘pro’ is combined with the term ‘assist’ and, secondly, that the services concerned are repair services, maintenance services and maintenance of different types of machines, tools or apparatus intended for professionals. In that regard, as EUIPO rightly noted, the repair and maintenance services in the present case relate to machines generally intended for trade and industrial use. Consumers who wish to obtain an external repair or maintenance service for those machines will expect the service provider to have certain technical knowledge and will favour a professional service.
42      Therefore, in that context, the vast majority of the relevant public will perceive the element ‘pro’ in the expression ‘proassist’, as meaning ‘professional’. The Board of Appeal was therefore right to find, in paragraphs 27 and 29 of the contested decision, that the combination of the terms ‘pro’ and ‘assist’, associated with the services concerned, is naturally understood by the vast majority of the relevant public as merely an expression encouraging that public to purchase the services concerned, since it would receive professional assistance or assistance by a professional.
43      The
applicant’s argument that the relevant public will not understand the mark applied for as having a special meaning and that, therefore, that public will not perceive it as a laudatory and purely promotional message cannot be upheld. In the present case, the mark applied for consists of two common English words. The combination of those terms is comprehensible, without further thought, by the vast majority of English-speaking consumers as meaning ‘help, providing information, advice by a professional’. Moreover, the fact that those words are joined in the mark applied for will not prevent the relevant public from recognising them immediately. It is common in English to create words by coupling together two words each of which has a meaning (see judgment of 16 May 2017, Mühlbauer Technology v EUIPO (Magicrown), T‑218/16, not published, EU:T:2017:334, paragraph 22 and the case-law cited). As the Board of Appeal noted, the absence of a space between the two words composing the mark applied for does not amount to evidence of any creative aspect such as to render the sign as a whole capable of distinguishing the applicant’s services from those of other undertakings (see, to that effect, judgment of 13 November 2008, Duro Sweden v OHIM (EASYCOVER), T‑346/07, not published, EU:T:2008:496, paragraph 52).
44      It must be stated that, since the services at issue all relate to repair and maintenance, including maintenance of different types of machines, tools and apparatus, the mark applied for will be perceived by the relevant public as an indication of the purpose and quality of the services offered, that is to say that they will receive help and that help will be given in a professional manner. Thus, it must be noted, as did the Board of Appeal, that the relevant public will directly and immediately understand, without having to exert any particular mental effort, that the objective of the message of the mark applied for is to point out the positive aspects of the services concerned. Apart from the promotional message that it conveys, the mark applied for has no element enabling the relevant public to perceive it as an indication of the commercial origin of the services concerned. As the Board of Appeal correctly found, the mark applied for is the simple juxtaposition of two words which create a perfectly intelligible expression. The applicant cannot therefore validly claim that the mark applied for is distinctive.
45      The applicant’s argument that the meaning of the mark applied for will not be obvious and understood at first sight by the relevant public as a result of the numerous meanings of the element ‘pro’ is also not convincing. For the reasons set out in paragraphs 41 and 42 above, the term ‘pro’ in the expression ‘proassist’ will immediately be understood by the vast majority of the relevant public as meaning ‘professional’. The applicant also confines itself to stating that the relevant public, when faced with the mark applied for used for the services concerned, will perceive the element ‘pro’ as having several meanings, in particular ‘in favour of’, ‘earlier than’, ‘prior to’ or ‘before’, without putting forward any evidence capable of calling into question the reasoning set out in paragraphs 41 and 42 above. Therefore, contrary to what the applicant maintains, the meaning of the expression ‘proassist’ will be understood without any difficulty by the relevant public.
46      Moreover, the fact that the vast majority of the relevant public, faced with the combination of the term ‘pro’ and the term ‘assist’, will understand that expression as meaning ‘help, providing information, advice by a professional’ with regard to the services concerned and will not perceive it as a trade mark, but only as an indication, is sufficient for the mark applied for to be regarded as devoid of distinctive character. As EUIPO correctly observed, where a sign is declared devoid of any distinctive character with regard to one of its possible meanings, the fact that that sign may possibly have another meaning is not sufficient to confer distinctive character on it (see, to that effect, judgment of 23 January 2014, Novartis v OHIM (CARE TO CARE), T‑68/13, not published, EU:T:2014:29, paragraph 41).
47      Contrary to what the applicant claims, it is apparent from paragraphs 26 to 37 of the contested decision and from paragraphs 25 and 40 above that the Board of Appeal did not merely set out the ‘counter-argument, that a mark must be regarded as devoid of any distinctive character if one of its possible meanings is itself devoid of any distinctive character’, but set out the reasons why it considered that the mark applied for was devoid of any distinctive character.
48      It is also apparent from all the foregoing considerations that the Board of Appeal correctly analysed the facts of the present case. Thus, contrary to what the applicant claims in paragraph 48 of the application, it is not apparent from the contested decision that the Board of Appeal simply ‘referr[ed] to other cases which dealt with trade marks containing the element “pro” but which contained totally different additional elements and referred to totally different goods and services’.
49      First, as has been stated several times, the Board of Appeal based its conclusion on the meaning in the present case of the element ‘proassist’, the services concerned and the way in which the mark applied for will be perceived by the relevant public. While it is true that the Board of Appeal stated, in paragraph 28 of the contested decision, that the General Court had found in a number of cases that the term ‘pro’ was an element which will be perceived as meaning ‘professional’ and that it could be laudatory, it must be stated, as EUIPO observed, that those cases were cited by way of example. Those assertions based on the General Court’s case-law were valid only if, in the present case, the term ‘pro’ was understood by the relevant public as meaning ‘professional’ and that, in the light of the other relevant factors, it was laudatory. It is apparent from paragraphs 41 to 46 above that that was indeed the case here.
50      Secondly, it is not by way of contradiction, as the applicant submits, but in order to respond to the applicant’s argument that numerous signs containing the element ‘pro’ had been registered as EU trade marks, that the Board of Appeal noted in paragraph 41 of the contested decision that the Boards of Appeal had refused on numerous occasions the registration of marks consisting of the element ‘pro’ combined with other descriptive or non-distinctive elements and cited several examples. In that regard the Board of Appeal correctly stated that where a mark had to be refused registration under Article 7(1)(b) of Regulation 2017/1001, as was the case here, it could not decide otherwise simply because an equally non-distinctive mark had been registered in the past, even though there would be inconsistencies in EUIPO’s decision-making practice (see, to that effect, judgment of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraphs 41 to 47 and the case-law cited).
51      Consequently, the Board of Appeal cannot be criticised for finding that the mark applied for was devoid of any distinctive character for the relevant public as regards the services concerned, on the basis of which that mark could not be registered under Article 7(1)(b) of Regulation
2017/1001.
52      Accordingly, the second plea in law must be rejected as unfounded.
Third plea in law, alleging infringement of the principles of equal treatment and sound administration
53      The applicant criticises the Board of Appeal for having disregarded the earlier decisions of EUIPO which it relied on, on the ground that the marks in question, and the goods and services in respect of which those marks had been registered, were not identical to those in the present case. The marks relied on before the Board of Appeal are word marks consisting of the element ‘pro’ and a second element describing the goods or services requested or clearly referring to the goods or services. Those cases are therefore comparable to the present case. The applicant submits that, in the light of those cases, EUIPO was required to apply correctly the principles of equal treatment and sound administration and, therefore, to register the mark applied for. As regards the decisions of the Boards of Appeal which refused to register trade marks comparable to the mark applied for, the applicant states that the marks at issue, namely PRO40 and PROBAR, were not refused because the term ‘pro’ was understood as meaning ‘professional’, but were refused for other reasons. Furthermore, the applicant submits that the reference made by the Board of Appeal to the marks PROHD, PRO40, ProCare, PROBAR and Pro-Herbal is a clear infringement of the second sentence of Article 94(1) of Regulation
2017/1001.
54      EUIPO disputes those arguments.
55      In the first place, the Board of Appeal rightly pointed out, in paragraph 38 of the contested decision, that EUIPO should attempt to be consistent. According to settled case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. It must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 and 74; see, also, order of 27 November 2018, CMS Hasche Sigle v EUIPO (WORLD LAW GROUP), T‑756/17, not published, EU:T:2018:846, paragraph 44 and the case-law cited).
56      Nevertheless, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as an EU trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76; see, also, order of 27 November 2018, WORLD LAW GROUP, T‑756/17, not published, EU:T:2018:846, paragraph 45 and the case-law cited).
57      Moreover, for reasons of legal certainty and, specifically, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as an EU trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77; see also order of 27 November 2018, WORLD LAW GROUP, T‑756/17, not published, EU:T:2018:846, paragraph 46 and the case-law cited).
58      It is also apparent from the case-law that the considerations set out in paragraphs 55 to 57 above apply even if the sign in respect of which registration is sought as an EU trade mark is composed in a manner identical to that of a mark in respect of which EUIPO has already approved registration as an EU trade mark and which relates to goods or services identical or similar to those in respect of which registration of the sign in question is sought (order of 12 December 2013, Getty Images (US) v OHIM, C‑70/13 P, not published, EU:C:2013:875, paragraph 45; see, also, order of 27 November 2018, WORLD LAW GROUP, T‑756/17, not published, EU:T:2018:846, paragraph 47 and the case-law cited).
59      In the present case, since the Board of Appeal was fully entitled to conclude that the registration of the mark applied for in respect of the services concerned was caught by the ground for refusal set out in Article 7(1)(b) of Regulation
2017/1001, the applicant cannot successfully rely, for the purposes of casting doubt on that conclusion, on previous decisions of EUIPO.
60      It follows that the applicant’s argument alleging infringement of the principles of equal treatment and sound administration must be rejected as unfounded.
61      In the second place, it should be noted that, in paragraph 41 of the contested decision, the Board of Appeal referred to several decisions of the Boards of Appeal in relation to marks consisting of the word element ‘pro’ combined with other descriptive or non-distinctive elements. It is clear from the contested decision that those decisions were cited by way of example by the Board of Appeal in order to emphasise the inconsistencies in the decision-making practice of EUIPO, in particular the differences between the uncontested decisions at first instance relied on by the applicant and certain decisions of the Boards of Appeal. The uncontested decisions at first instance allowed the registration of marks the first element of which was the term ‘pro’, whereas registration of such marks was refused in the decisions of the Boards of Appeal. However, the Board of Appeal did not base its assessment of the distinctive character of the mark applied for on those decisions. Since those decisions are not the elements which form the basis of the contested decision, the Board of Appeal was not obliged to give the applicant the opportunity to comment on those decisions before adopting the contested decision (see, by analogy, judgment of 20 November 2007, Tegometall International v OHIM– Wuppermann (TEK), T‑458/05, EU:T:2007:349, paragraph 45).
62      The applicant’s argument alleging infringement of the second sentence of Article 94(1) of Regulation
2017/1001 must therefore be rejected as unfounded.
63      As none of the pleas put forward by the applicant are well founded, the claims seeking annulment of the contested decision must be rejected and, consequently, those seeking, in the alternative, the alteration of the contested decision and a declaration that the action is justified.
Costs
64      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 EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Sintokogio Ltd to pay the costs.
Frimodt Nielsen
Kreuschitz
Półtorak
Delivered in open court in Luxembourg on 23 May 2019.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.