JUDGMENT OF THE GENERAL COURT (Third Chamber)
16 October 2018 (*)
(European Union trade mark — Application for European Union word mark Sustainablel — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/2001))
In Case T‑644/17,
DNV GL AS, established in Høvik (Norway), represented by J. Albers and N. Köster, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 12 July 2017 (Case R 2/2017-2), relating to an application for registration of the word mark Sustainablel as a European Union trade mark,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, I.S. Forrester and E. Perillo (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 September 2017,
having regard to the response lodged at the Court Registry on 23 October 2017,
having regard to the fact that no request for a hearing was submitted by the parties within three 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 25 April 2016, the applicant, DNV GL AS, filed an application for registration of a European Union trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community 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        Registration as a mark was sought for the word sign Sustainablel.
3        The goods and services in respect of which registration was sought are in Classes 9, 35 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 9: ‘Application software; downloadable computer software applications; computer application software for cell phones; software and applications for mobile devices; application software for smartphones; computer software for application and database integration; computer software for evaluation and calculation of consumer habits and consumption’;
–        Class 35: ‘Providing consultancy services in the area of global sustainable solutions; compilation of environmental information into computer databases; providing consumer product information; providing consumer product information relating to food or drink products; providing information and advice to consumers regarding the selection of products and items to be purchased; information services to promote public awareness of environmental issues and initiatives; providing advice relating to the analysis of consumer buying habits; providing consumer information relating to certified goods, namely goods that meet standards and requirements that promote a sustainable environment’;
–        Class 42: ‘Scientific analysis of consumer habits; research in the field of environmental conservation; technical consultancy in the field of environmental science; technical consultancy, namely providing technological information about environmentally conscious and green innovations; development of computer software application solutions; testing of services for the certification of quality and environmental standards; design and development of software for evaluation and calculation of environment data; compilation of environmental information; compilation of information relating to environmental conditions’.
4        By letter of 17 June 2016, the examiner issued a provisional refusal of protection on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), read in conjunction with Article 7(2) of that regulation (now Article 7(2) of Regulation 2017/1001), on the ground that the mark applied for did not appear to be eligible for registration in respect of some of the services, namely all the services in Classes 35 and 42, except for ‘development of computer software application solutions’. The examiner also invited the applicant to submit its observations, in accordance with Article 37(3) of Regulation No 207/2009 (now Article 42(2) of Regulation 2017/1001).
5        On 17 October 2016, the applicant submitted its observations on the provisional refusal of protection.
6        By decision of 25 November 2016, the examiner rejected, in part, the registration of the mark applied for in respect of all the services in Classes 35 and 42, except for ‘development of computer software application solutions’, on the basis of Article 7(1)(b) and (c) and 7(2) of Regulation No 207/2009. In essence, the examiner took the view that the mark applied for referred to the concept of ‘sustainability’ and would therefore be perceived by the relevant English-speaking consumers as being descriptive of the services in those classes and also as being devoid of distinctive character.
7        On 29 December 2016, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation 2017/1001), against the examiner’s decision.
8        By decision of 12 July 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the first place, it held that the relevant public consisted of, essentially, the English-speaking general public and professionals; in the second place, that those consumers will understand the term ‘sustainable’ as a concept linked to sustainable development and meaning ‘capable [of preventing] ecological damage’; in the third place, that the reading of the contested sign corresponding to the term ‘sustainable’ followed by the letter ‘l’ or the number ‘1’ had no bearing on the interpretation of that word because, on the one hand, consumers were used to trade marks containing grammatical errors or spelling mistakes and, on the other hand, the addition of that number or that letter had a minor impact on the overall impression produced by the sign, particularly because it was positioned at the end of the mark. In the fourth place, the Board of Appeal held that, since the services in respect of which registration had been refused were, in essence, sustainable services aimed at reducing negative effects on the environment, the mark applied for was descriptive of the services in Classes 35 and 42 at issue and, as such, was necessarily devoid of distinctive character. Consequently, registration as a European Union trade mark had to be refused under Article 7(1)(b) and (c), read in conjunction with Article 7(2), of Regulation No 207/2009.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision and order registration of the mark applied for in respect of all of the goods and services referred to in the application for registration;
–        order EUIPO to pay the costs.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
11      In support of its action, the applicant raises two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009 and, second, infringement of Article 7(1)(b) of that regulation.
The first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
12      As regards the first plea in law, the applicant complains, in essence, that the Board of Appeal erred in finding that the sign Sustainablel had descriptive character as regards the services in respect of which the application for registration was refused, that is, the services in Classes 35 and 42 at issue.
13      EUIPO disputes that line of argument.
14      Under Article 7(1)(c) of Regulation No 207/2009, 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 thereof, may not be registered. Furthermore, Article 7(2) of Regulation No 207/2009 states that paragraph 1 applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
15      According to the case-law, the objective pursued by Article 7(1)(c) of Regulation No 207/2009 is to prevent signs or indications referred to in that provision from being reserved to one undertaking alone because they have been registered as trade marks. That article thus pursues an objective which is in the public interest, thereby enabling such signs or indications to be freely used by all (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).
16      Because of their intended commercial purpose, those signs or indications are incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or services covered by the trade mark, on the occasion of a subsequent acquisition, to make the same choice if the experience proves to be positive, or to make another choice, if it proves to be negative (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
17      Furthermore, in order for a mark consisting of a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive, since the word itself must be found to be so (judgment of 12 January 2005, Wieland-Werke v OHIM(SnTEM, SnPUR, SnMIX), T‑367/02 to T‑369/02, EU:T:2005:3, paragraph 31).
18      It is therefore in the light of those rules and those criteria that it is necessary to assess whether, as the applicant claims, the Board of Appeal disregarded Article 7(1)(c) of Regulation No 207/2009 by concluding that the mark applied for was descriptive of the services at issue.
The relevant public
19      As a preliminary point, with regard to the relevant public, it should be held, in the same way as the Board of Appeal, that it is made up of the general public and professionals, a fact which, moreover, the applicant does not dispute.
20      Furthermore, under Article 7(2) of Regulation No 207/2009, the relevant public in relation to which the absolute ground for refusal should be assessed is, in the present case, the English-speaking public, since the word sign at issue is composed of elements in the English language (see, to that effect, judgment of 7 July 2011, Cree v OHIM(TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 18 and the case-law cited).
The description and meaning of the mark applied for
21      The applicant submits that, since the sound of the last letter, or number, ‘1’, added to the word ‘sustainable’, is very unusual, it confuses the consumer and forces him to make a mental analysis by steps, since such a sound is not immediately perceived as a meaningful expression of the services offered.
22      In that regard, in the first place, it should be noted that, in the light of the objectives pursued by Article 7(1)(b) and (c) of Regulation No 207/2009, misspellings of a word are not generally conducive to overcoming the refusal of registration stemming from the fact that the content of the sign is immediately comprehensible as being laudatory or descriptive (see, to that effect, judgment of 7 June 2005, Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 37).
23      In the second place, a misspelling does not generally amount to evidence of any creative aspect capable of distinguishing the applicant’s goods from those of other undertakings (see, to that effect, judgment of 31 January 2001, Mitsubishi HiTec Paper Bielefeld v OHIM (Giroform), T‑331/99, EU:T:2001:33, paragraph 25 and the case-law cited).
24      In the present case, the mark at issue consists of the word ‘sustainable’ and the additional element ‘l’. The applicant submits that that element ‘l’ can be understood as a ‘1’ (Roman numeral), the mark thus being capable of being read as ‘sustainable one’, or can be understood as an ‘i’, the mark therefore being read as ‘sustainably’, or even as a word without meaning, namely ‘sustainablel’. That analysis confirms, therefore, that the mark has no clear and direct meaning.
25      However, it should be noted that, in the examples given by the applicant, the concept conveyed by the main term, namely ‘sustainable’, remains central and understandable for the consumer within the meaning that is particular to that word. The only change, ultimately, concerns the lexical composition of the term in question.
26      In that regard, it is sufficient to observe that, although the average consumer normally perceives a mark as a whole and does not analyse its various details, the fact remains that, when perceiving a word sign, the average consumer will break it down into word elements which, for him, suggest a concrete and immediately understandable meaning or which resemble words known to him (judgment of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 51). In any event, since the consumer generally pays greater attention to the beginning of a word sign than to the end, the first part ‘sustainable’ plays, for the relevant public, a necessarily decisive role in the meaning of the mark applied for (see, to that effect, judgment of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51).
27      Consequently, the simple addition of a graphic element at the end of the word, whether it is perceived as a number, as a letter of the alphabet, or as a lexical mistake, is not, in the present case, such as to affect the perception of the consumer.
28      It follows that the sign Sustainablel, notwithstanding its misspelling, will be understood by the relevant public as having the meaning which is specific to the English adjective of which the sign in question essentially and predominantly consists, namely ‘sustainable’, without therefore leading, in most cases, to a different interpretative analysis on the part of the consumer concerned.
Descriptive character of the sign in relation to the contested services
29      As regards the existence of a connection between the conceptual meaning of that word and the services in respect of which the applicant wishes to have the mark applied for registered, the Board of Appeal found, confirming the definition provided by the examiner in his letter of 17 June 2016, that the word ‘sustainable’, of which the mark applied for consists, conveys a concept linked to ‘economic development, energy sources, capable of being maintained at a steady level without exhausting natural resources or causing severe ecological damage’ and can be summarised, in respect of the services concerned, as characterising a service ‘capable [of preventing] ecological damage’. The applicant, moreover, does not dispute such a definition, but states that it is of a different and particular importance according to the areas which it may concern, such as economics, ecology, politics or culture and that, consequently, the connection with the services offered is neither direct nor immediate.
30      In that context, the applicant submits that the Board of Appeal erred in the assessment of the services in Class 35. According to it, the services in question are excluded from the areas linked to sustainable development and do not contain any explicit reference creating a direct or specific connection to the mark applied for. Furthermore, those services can also not correspond to the expression ‘capable [of preventing] ecological damage’.
31      The applicant’s arguments having thus been summarised, it should be recalled that the assessment of the distinctive character of a sign can only take place, first, in relation to the perception of the public concerned and, second, in relation to the goods or services covered by that sign (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 19 April 2016, Spirig Pharma v EUIPO (Daylong), T‑261/15, not published, EU:T:2016:220, paragraph 22).
32      As regards, first, services of ‘providing consumer product information; providing consumer product information relating to food or drink products; providing information and advice to consumers regarding the selection of products and items to be purchased; providing advice relating to the analysis of consumer buying habits’, in Class 35, it is sufficient to observe that, contrary to the applicant’s submission, those services may, in the mind of the public concerned, aim to encourage a responsible use of the goods in question which has regard for the natural environment in which that public lives. The same is also true of the services involving the provision of advice on the analysis of consumer buying habits, also aimed at promoting, as a whole, conduct which favours sustainable development and which is environmentally conscious.
33      Next, as regards, first, the service of ‘compilation of environmental information into computer databases’, in Class 35 and, second, the services in Class 42, as indicated in paragraph 22 of the application, suffice it to hold, as found by the Board of Appeal, that those services expressly concern the environment and that, consequently, precisely because of that intended purpose, they can be seen only in the context of an activity of providing advice and promoting public awareness on environmental and ecological issues and thus have a direct connection with the concept of sustainability, inasmuch as it refers to the respect for the environment conveyed by the mark applied for.
34      Finally, in the light of the services referred to, which concern the creation of sustainable strategies and operations aimed at reducing the impact on the environment, the term ‘sustainable’ suggest a clear and unequivocal meaning, which refers to the common purpose of the services in question, which contribute, in a general manner, to preventing long-term ecological damage (see, to that effect, judgment of 27 February 2015, Universal Utility International v OHIM(Greenworld), T‑106/14, not published, EU:T:2015:123, paragraph 27).
35      It follows from all of the foregoing that the mark Sustainablel displays, from the point of view of the relevant public, a sufficiently direct and specific connection with the services covered by the trade mark application. The Board of Appeal therefore acted correctly in finding that the trade mark applied for was descriptive of the services concerned.
36      The first plea in law must therefore be rejected as being unfounded.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
37      The applicant challenges the assessment carried out by the Board of Appeal under Article 7(1)(b) of Regulation No 207/2009 and submits that the mark applied for presents at least a minimum degree of distinctive character, since it is an unusual mark which has no direct meaning for the relevant public and which therefore requires a cognitive process or a specific interpretative effort on the part of the relevant public.
38      EUIPO takes issue with the applicant’s arguments.
39      In this regard, in the first place, it should be recalled that, under Article 7(1) of Regulation No 207/2009, it is sufficient that only one of the absolute grounds for refusal listed in that provision is applicable for the sign at issue to not be eligible for registration as a European Union trade mark (see, to that effect, judgment of 21 September 2017, InvoiceAuction B2B v EUIPO (INVOICE AUCTION), T‑789/16, not published, EU:T:2017:638, paragraph 49 and the case-law cited).
40      In the second place, the overlap between the different absolute grounds for refusal in that provision means that a word mark which is descriptive of the characteristics of the services in question is, therefore, and subject to the application of Article 7(3) of Regulation No 207/2009, devoid of distinctive character in regard to those goods or services, without prejudice to other reasons capable of justifying that absence of distinctive character (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 33 and the case-law cited).
41      In the present case, since it has been held that the mark applied for was descriptive of the services in question, and was not, consequently, eligible for registration as a European Union trade mark, failing on the ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009, it is not necessary to rule on the second plea in law, alleging infringement of Article 7(1)(b) of that regulation.
42      It follows from all of the foregoing that the second plea in law must also be rejected and that, consequently, the action must be dismissed in its entirety.
Costs
43      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 DNV GL AS to pay the costs.
Frimodt Nielsen
Forrester
Perillo
Delivered in open court in Luxembourg on 16 October 2018.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.