JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
17 October 2019 (*)
(EU trade mark — International registration designating the European Union — Figurative mark UNITED STATES SEAFOODS — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EU) 2017/1001)
In Case T‑10/19,
United States Seafoods LLC, established in Seattle, Washington (United States) (represented by: C. Spintig, S. Pietzcker and M. Prasse, lawyers)
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 11 October 2018 (Case R 817/2018-5), relating to the international registration designating the European Union in respect of the figurative mark UNITED STATES SEAFOODS,
THE GENERAL COURT (Ninth Chamber),
composed, at the time of the deliberation, of S. Gervasoni (Rapporteur), President, K. Kowalik-Bańczyk and C. Mac Eochaidh, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 January 2019,
having regard to the response lodged at the Court Registry on 22 March 2019,
having regard to the fact that no request for a hearing was submitted by the parties within 3 weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 4 August 2017, the applicant, United States Seafoods LLC, designated the European Union for international registration No 1365398 in respect of the following figurative mark:
2        On 14 September 2017, the European Union Intellectual Property Office (EUIPO) received notification of the international registration of that sign.
3        The goods in respect of which registration was applied for are in Class 29 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: ‘Fish; fish fillets’.
4        By decision of 9 March 2018, the EUIPO Examiner refused protection of the sign covered by the international registration within the European Union in respect of the goods covered by the application, pursuant to Article 7(1)(b) and (c) of 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).
5        On 4 May 2018, the applicant lodged an appeal under Articles 66 to 71 of Regulation No 2017/1001 against the Examiner’s decision.
6        By decision of 11 October 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the action on the basis, in particular, of the fact that the sign at issue was immediately and directly descriptive of the nature and geographical origin of the goods concerned, since the relevant public would perceive that sign as referring to food obtained from the sea coming from the United States (paragraphs 17 to 31 of the contested decision).
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
9        The applicant relies on two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation 2017/1001, the second alleging infringement of Article 7(1)(b) of that regulation.
The first plea in law
10      Under Article 7(1)(c) of Regulation No 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. Furthermore, Article 7(2) of Regulation 2017/1001 states that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability concern only part of the European Union.
11      According to the case-law, Article 7(1)(c) of Regulation 2017/1001 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs and indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31, and of 13 February 2019, Nemius Group v EUIPO (DENTALDISK), T‑278/18, not published, EU:T:2019:86, paragraph 38).
12      Moreover, signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 2017/1001, deemed incapable of fulfilling the essential function of the trade mark, namely that of identifying the commercial origin of the goods or services in order thereby to enable the consumer who acquired the goods or service designated by the 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 (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 13 February 2019, DENTALDISK, T‑278/18, not published, EU:T:2019:86, paragraph 39).
13      It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 2017/1001, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned to immediately perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 40, and of 26 March 2019, Parfümerie Akzente v EUIPO (GlamHair), T‑787/17, not published, EU:T:2019:192, paragraph 14).
14      Furthermore, the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (judgments of 20 March 2002, DaimlerChrysler v OHIM (CARCARD), T‑356/00, EU:T:2002:80, paragraph 25, and of 26 March 2019, GlamHair, T‑787/17, not published, EU:T:2019:192, paragraph 15).
15      Lastly, it should also be borne in mind that a mark composed of elements, each of which is descriptive of the goods or services for which registration is applied for, is itself descriptive of the characteristics of those goods or services, unless there is a perceptible difference between the mark applied for and the mere sum of its constituent elements. That presupposes that the mark applied for creates, because of the unusual combination of each of its constituent elements in relation to the goods or services covered, an impression sufficiently far removed from that produced by the mere combination of meanings lent by those elements (judgment of 23 April 2018, Genomic Health v EUIPO (ONCOTYPE DX GENOMIC PROSTATE SCORE), T‑354/17, not published, EU:T:2018:212, paragraph 29; see also, to that effect, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 100).
16      It is in the light of the considerations set out in the preceding paragraphs that the applicant’s arguments that the Board of Appeal erred in finding that the sign at issue was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001 must be examined.
17      As a preliminary point, it should be observed that the Board of Appeal rightly found that the goods in respect of which the protection of the EU trade mark is sought target, in particular, the general public (paragraph 13 of the contested decision). The Board also rightly considered that, given that the sign at issue contains English word components, the relevant public for the purposes of determining whether that sign is eligible for protection is the English-speaking public in the European Union, essentially made up of consumers in Ireland, Malta and the United Kingdom (paragraph 15 of the contested decision). The contested decision is not, moreover, disputed by the applicant on those points.
18      In the present case, the sign at issue consists of the word element ‘united states seafoods’, in upper-case standard typeface in navy blue written horizontally across the sign in its central position. The background of the sign consists of an irregular shape, similar to a territory on a map, on which there is a design comprising six white stars on a blue background in the upper left corner and several alternating red and white lateral stripes filling the rest of the map. According to the Board of Appeal, that design resembles the flag of the United States of America cropped into the shape of a territory (paragraph 16 of the contested decision). In the description of the sign in the application for protection of the international registration, the applicant stated that that shape represented the State of Alaska (United States).
19      It should be noted, first of all, that the Board of Appeal rightly found that, for the relevant public, the word element of the sign at issue would be perceived as referring to foodstuffs obtained from the sea and coming from the United States (paragraph 17 of the contested decision); the Board thereby inferred that that element, which provided information as to the type of goods covered by the application for protection and their origin, was descriptive (paragraphs 19 and 31 of the contested decision). Moreover, the applicant itself does not dispute the descriptive nature of that element.
20      The applicant takes the view, however, that the figurative elements of the sign at issue are such as to give that sign a unique and, therefore, distinctive character.
21      The applicant maintains, in the first place, that the Board of Appeal erred in law by conducting a separate examination of the different figurative elements of the sign without taking account of the overall impression that the sign produces on the relevant public.
22      It must be found that that complaint has no basis in fact. Contrary to what the applicant claims, in order to find that the sign at issue was descriptive, the Board of Appeal took into account all of the elements making up that sign. In that connection, the Board of Appeal recalled, first of all, that the word element of the sign at issue was descriptive and that that descriptive character was not disputed (paragraphs 17 and 18 of the contested decision). It then examined certain figurative elements, namely the white stars on a blue background and the red and white lateral stripes, which it found to be related to the flag of the United States of America (paragraphs 22 to 25 of the contested decision). The Board analysed those elements, in particular, in connection with the word element (paragraph 24 of the contested decision). It then examined the other figurative elements of the sign, namely those which constitute the shape evoking a territory on a map (paragraphs 26 to 30 of the contested decision), and it linked that analysis to that of the word element and the figurative elements which it considered to be related to the flag of the United States of America (paragraphs 28 and 29 of the contested decision). Lastly, the Board of Appeal found that the sign at issue was descriptive, on the basis not only of the descriptive character of the word element of that sign, but also of all its figurative elements, which it had examined beforehand (paragraph 31 of the contested decision).
23      Consequently, the complaint alleging an error in law must be rejected.
24      In the second place, the applicant disputes the Board of Appeal’s finding that the figurative elements of the sign at issue were descriptive for the relevant public, which would perceive those elements as an imitation of the flag of the United States of America (paragraph 22 of the contested decision).
25      In that connection, first, as the Board of Appeal rightly stated (paragraph 23 of the contested decision), the sign at issue reproduces the essential elements of the flag of the United States of America, namely white stars on a blue background and red and white stripes, since those elements are set out in the same way as on that flag, that is to say, the stars in the top left part and the stripes below and to the right of the stars.
26      Admittedly, as the applicant maintains, the figurative element composed of white stars on a blue background is not placed in the top left corner of the sign taken as a whole. However, that element is at the top and to the left in relation to the figurative element composed of alternating red and white stripes, with only a few small red and white figurative elements, in the shape of islands, as well as the word ‘united’ and part of the word ‘states’ being further to the left.
27      Similarly, it is true that, in the sign at issue, the stars are aligned horizontally and vertically, whereas the stars on the flag of the United States of America are aligned diagonally. However, this is only a minor difference which is not, therefore, such as to induce the relevant public to fail to recognise the flag of the United States of America when it sees the sign, contrary to the applicant’s claim.
28      Secondly, as the Board of Appeal rightly found (paragraph 24 of the contested decision), the relevant public, which will immediately understand the expression ‘united states’, will draw the conclusion that the design represented in the background to the word element is the flag of the United States of America.
29      Thirdly, contrary to the applicant’s claim, the Board of Appeal took a position on the question whether the relevant public would perceive the form evoking a territory on a map as a representation of the State of Alaska. It stated, in fact, that that shape would only rarely be perceived as representing the territory of Alaska (paragraph 26 of the contested decision), but it would instead be perceived as a mere decoration which would not change the meaning of the descriptive message of the remaining elements of the sign at issue (paragraph 28 of the contested decision). It did, however, state that, for the part of the relevant public that might identify a shape representing the territory of Alaska, the descriptive character of the sign would then be reinforced, since that part of the public would understand that the goods at issue come from a State of the United States of America, Alaska (paragraph 29 of the contested decision).
30      In the third place, the applicant disputes the Board of Appeal’s finding that the sign at issue, taken as a whole, will be perceived by the relevant public as descriptive.
31      However, as stated in paragraphs 26 and 27 above, the differentiating elements between the sign at issue and the flag of the United States of America are minor. Accordingly, they are not such as to lead the relevant public to fail to recognise that flag when it sees the sign.
32      Similarly, as the Board of Appeal rightly stated (see paragraph 29 above), the presence of the shape of a map which is not that of the United States will not change the meaning of the descriptive message of the remaining elements of the sign at issue, but will even reinforce it for that part of the public that will recognise the map of Alaska.
33      Thus the figurative elements of the sign at issue, at the very least, will not distract the relevant public from the descriptive message conveyed by the sign’s word element.
34      Moreover, the combination of the whole made up of the word element and figurative elements is not, contrary to the applicant’s claims, unusual in relation to the goods at issue, to the point of creating an impression sufficiently removed from that created by the mere combination of meanings lent by each of those elements (see paragraph 15 above).
35      It follows from all of the foregoing that the Board of Appeal rightly found that the sign at issue is descriptive for the purposes of Article 7(1)(c) of Regulation No 2017/1001.
36      The first plea in law must therefore be rejected.
The second plea in law
37      It should be noted that, as is clear from Article 7(1) of Regulation No 2017/1001, it is sufficient that one of the absolute grounds for refusal applies in order for the sign not to be registrable as an EU trade mark (judgments of 14 June 2001, Telefon & Buch v OHIM (UNIVERSALTELEFONBUCH and UNIVERSALKOMMUNIKATIONSVERZEICHNIS), T‑357/99 and T‑358/99, EU:T:2001:162, paragraph 35, and of 12 March 2019, Perry Ellis International Group v EUIPO (PRO PLAYER), T‑220/16, not published, EU:T:2019:159, paragraph 50).
38      Thus, given that, as is apparent from paragraph 35 above, the Board of Appeal rightly found that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, there is no need, in the present case, to consider the merits of the second plea, alleging infringement of Article 7(1)(b) and Article 7(2) of that regulation (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraphs 28 and 29; order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28, and judgment of 12 March 2019, PRO PLAYER, T‑220/16, not published, EU:T:2019:159, paragraph 51).
39      The action must therefore be dismissed in its entirety.
Costs
40      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.
41      In the present case, 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 (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders United States Seafoods LLC to bear its own costs and pay those incurred by EUIPO.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 17 October 2019.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.