JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
11 October 2018 (*)
(EU trade mark — Application for EU figurative mark fluo. — Partial rejection of the application for registration — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001))
In Case T‑120/17,
M & T Emporia Ilektrikon-Ilektronikon Eidon AE, established in Thessaloniki (Greece), represented by A. Spyridonos, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M.d.M. Baldares and J. Ivanauskas, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 2 December 2016 (Case R 863/2016-2), relating to the application for registration of the figurative sign fluo. as a European Union trade mark,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, E. Bieliūnas (Rapporteur) and A. Kornezov, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 February 2017,
having regard to the response lodged at the Court Registry on 15 June 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 9 October 2015, the applicant, M & T Emporia Ilektrikon-Ilektronikon Eidon AE, filed an application for registration of an EU trade mark at the European Union Intellectual Property Office (EUIPO) in accordance with 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        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration of the trade mark was sought are in classes 9, 11, 35, 38 and 42 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.
4        In the context of the present proceedings, only the goods in Class 9 corresponding to the following description are relevant:
–        ‘Apparatus, instruments and cables for electricity; electric and electronic components; battery chargers; cell phone battery chargers; battery chargers for use with telephones; mobile telephone batteries; electronic components; cases adapted for mobile phones; keyboards for mobile phones; stands adapted for mobile phones; cell phone straps; holders adapted for mobile phones; leather cases for mobile phones; USB cables for cell-phones; docking stations for mobile phones; mobile telephones for use in vehicles; devices for hands-free use of mobile phones; headsets for mobile telephones; carriers adapted for mobile phones; docking stations for smartphones; wireless headsets for smartphones; flip covers for smart phones; selfie sticks used as smartphone accessories; watchbands that communicate data to smartphones; tablet covers; stands adapted for tablet computers; tablet docking stations; keyboards for tablets; remote control apparatus for air conditioning installations’ (‘the non-contentious goods’);
–        ‘image analysers; cell phones; digital tablets; tablet monitors; TV sets; digital televisions; HD (High Definition) televisions; car televisions; stands for televisions; Internet protocol televisions; UHD (Ultra High Definition) televisions; LED televisions; plasma televisions; liquid crystal display (LCD) televisions; DMB (Digital Multimedia Broadcasting) televisions’ (‘the goods at issue’).
5        By letter of 3 November 2015, 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), with respect to some of the goods covered by the mark applied for, namely the goods in Class 9.
6        By letter of 28 December 2015, the applicant replied to that provisional refusal.
7        By decision of 10 March 2016, the examiner rejected the application for registration in respect of the goods in Class 9 on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation, on the ground that the sign at issue was descriptive and devoid of any distinctive character.
8        On 6 May 2016, the applicant filed a notice of appeal with EUIPO under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001) against the decision of the examiner of 10 March 2016.
9        By decision of 2 December 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO partially upheld the appeal, and accordingly partially annulled the examiner’s decision, inasmuch as it refused registration of the mark applied for in respect of the non-contentious goods. However, the Board of Appeal dismissed the appeal in respect of the goods at issue. It found, in particular, that the stylisation of the sign applied for was basic and that the word ‘fluo’ was clearly and immediately legible. The relevant French-speaking public would perceive the stylised and coloured letters as being purely decorative. Thus, the graphical elements did not divert the attention of the relevant public from the descriptive message of the term ‘fluo’, namely ‘luminous, vivid in colour’ in French. Consequently, the Board of Appeal concluded that the mark applied for established a link with the goods at issue and was therefore descriptive, at least in respect of the French-speaking part of the general public of the European Union under Article 7(1)(c) of Regulation No 207/2009.
Forms of order sought
10      The applicant claims that the Court should:
–        set aside that part of the contested decision in which the Board of Appeal rejected the application for registration of the mark applied for;
–        allow the registration of the mark applied for in respect of all the goods in Class 9 of the Nice Agreement;
–        order EUIPO to pay the overall cost of the proceedings of all instances.
11      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
Admissibility of the applicant’s second head of claim
12      EUIPO disputes the admissibility of the applicant’s second head of claim, seeking, in essence, that the Court should order EUIPO to register the mark applied for.
13      In that regard, it is apparent from settled case-law that, in an action before the Courts of the European Union against the decision of a Board of Appeal of EUIPO, the latter is required, under Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), to take the necessary measures to comply with judgments of the Courts of the European Union. Therefore, it is not for the Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see judgment of 14 January 2015, Melt Water v OHIM (MELT WATER Original), T‑69/14, not published, EU:T:2015:8, paragraph 10 and the case-law cited).
14      Therefore, the second head of claim relied on by the applicant, requesting that the Court order EUIPO to allow the application for registration, is inadmissible.
The admissibility of a new item of evidence submitted by the applicant before the Court
15      The applicant has attached to the application before the Court new evidence consisting of a market study on the perception of the word ‘fluo’ by the French-speaking public, which, according to EUIPO, is inadmissible.
16      In that regard, it should be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009. It is therefore not the Court's function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. It follows that facts not submitted by the parties before the adjudicating bodies of EUIPO may not be submitted at the stage of the action before the General Court (see judgment of 2 February 2016, Benelli Q. J. v OHIM — Demharter (MOTOBI B PESARO), T‑171/13, EU:T:2016:54, paragraph 26 and the case-law cited).
17      In those circumstances, as EUIPO contends, the document attached to the application referred to in paragraph 15 above, inasmuch as it was not produced by the applicant during the proceedings before EUIPO, must be declared inadmissible.
Substance
18      By its first head of claim, the applicant seeks the annulment of part of the contested decision inasmuch as the Second Board of Appeal dismissed its appeal.
19      As a preliminary point, it should be noted that the Second Board of Appeal dismissed part of the applicant’s appeal in paragraph 2 of the operative part of the contested decision. Thus, it must be held that, by its first head of claim, the applicant requests the annulment of paragraph 2 of the operative part of the contested decision.
20      In support of its action, the applicant raises two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation No 207/2009 and the second alleging infringement of Article 7(1)(b) of Regulation No 207/2009.
21      Regarding the first plea in law, it should be noted that, 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 of the goods or service’ are not to be registered.
22      According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, namely, that descriptive indications or signs relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all (see judgment of 12 June 2007, MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, not published, EU:T:2007:172, paragraph 27 and the case-law cited).
23      Furthermore, signs or 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 207/2009, regarded as incapable of performing the essential function of a 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 (see judgment of 12 June 2007, LOKTHREAD, T‑339/05, not published, EU:T:2007:172, paragraph 28 and the case-law cited).
24      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 12 June 2007, LOKTHREAD, T‑339/05, not published, EU:T:2007:172, paragraph 29 and the case-law cited). In that regard, it must be stated that the fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 207/2009 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Consequently, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 207/2009 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50 and the case-law cited).
25      Finally, it should be recalled that a sign’s descriptiveness can only be assessed, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (see judgment of 12 June 2007, LOKTHREAD, T‑339/05, not published, EU:T:2007:172, paragraph 32 and the case-law cited).
26      In the present case, as regards the relevant public, the Board of Appeal found that the goods covered by the mark applied for were intended for the average consumer in the European Union, who is reasonably well informed and reasonably observant and circumspect. The Board of Appeal noted that the level of attention of the average consumer was normally higher in relation to ‘televisions’ than for ‘USB cable for cell-phones’ or ‘cases adapted for mobile phones’. However, the Board of Appeal did not take the view that, in the present case, the difference in the level of attention would affect the result with regard to the assessment of the descriptiveness of the sign at issue in the present case.
27      Furthermore, the Board of Appeal stated that, as the mark applied for contained the French word ‘fluo’, the relevant public was the French-speaking public of the European Union.
28      That assessment by the Board of Appeal, which is not disputed by the applicant, must be upheld.
29      As regards the perception of the mark applied for, it should be noted that it is a figurative sign containing a word element.
30      In that regard, first of all, the Board of Appeal took account of the definition of the word 'fluo' used by the examiner, based on an online dictionary, and recalled in the third indent of paragraph 2 of the contested decision, namely ‘abbreviation of fluorescent: fluorescent, neon, luminous, vivid in colour; highlighter’. It took the view, as the examiner did, that the relevant consumer would understand the term ‘fluo’ as meaning ‘luminous, vivid in colour’.
31      Next, it found that, although the examiner had not established a link between ‘a vivid fluorescent colour’ and all the goods in the application for registration of the mark applied for, however, for some goods such as televisions, luminous and vivid colours could designate one of those characteristics. Television screens may emit luminous and vivid colours, which may be an essential feature of televisions. According to the Board of Appeal, such an assessment concerns not only the following goods ‘TV sets; digital televisions; HD (High Definition) televisions; car televisions; stands for televisions; Internet protocol televisions; UHD (Ultra High Definition) televisions; LED televisions; plasma televisions; liquid crystal display (LCD) televisions; DMB (Digital Multimedia Broadcasting) televisions’, but also other goods, namely ‘image analysers; cell phones; digital tablets; tablet monitors’, for which emitting one or more luminous and vivid colours may also be important.
32      Furthermore, the Board of Appeal upheld the findings of the examiner in respect of the figurative elements of the mark applied for, that the font of the mark in question was a standard, easily legible and unmemorable typeface. Thus, the term ‘fluo’ was clearly and immediately legible as such in the contested mark.
33      Finally, the Board of Appeal concluded that, where the relevant public perceives the mark applied for as a whole, it will perceive the stylised and coloured letters as being purely decorative. Therefore, the graphical and colour elements, on their own or in combination, will not divert the relevant public’s attention from the descriptive message resulting from the expression ‘fluo’.
34      In that regard and as a preliminary point, it is appropriate to confirm the Board of Appeal’s assessment that the figurative elements of the mark applied for serve clearly and immediately to identify the word ‘fluo’. The font used in the word ‘fluo’ is a standard, easily legible and unmemorable typeface. In addition, the full stop after the word ‘fluo’ does not alter the meaning of that word.
35      Moreover, the Board of Appeal’s assessment, which is not disputed by the applicant, that the relevant consumer will understand the word ‘fluo’, an abbreviation of the word ‘fluorescent’, as an expression meaning ‘luminous, vivid in colour’, must be upheld.
36      However, in so far as the applicant disputes the existence of a link between the word ‘fluo’ and the goods at issue, it must be held that the Board of Appeal did not establish a sufficiently direct and specific relationship, within the meaning of the case-law cited in paragraph 24 above, between the word ‘fluo’ and the goods at issue.
37      In the contested decision, the link between the word ‘fluo’ and the goods at issue is explained, in essence, by the simple premiss that the screens of the goods at issue may emit luminous and vivid colours, which may represent an essential characteristic of those goods.
38      The mere fact that screens emit light and colour images is not sufficient to conclude that fluorescent colours are an essential characteristic of the goods at issue. In addition, the colour images on the screens of the goods at issue are not usually fluorescent in the course of the normal operation of those goods.
39      Moreover, it is true that a trade mark which is descriptive of a part incorporated into a product may be deemed descriptive of that product as a whole if the relevant public perceives the characteristics of that part as able to have a significant impact on an essential characteristic of the product itself (judgment of 10 July 2014, BSH v OHIM, C‑126/13 P, not published, EU:C:2014:2065, paragraph 27).
40      However, in the present case, the word ‘fluo’ relates, only under certain conditions, to a part of the goods at issue, namely their screens. The fact that a screen may possibly emit fluorescent colours cannot realistically be considered an intrinsic and permanent characteristic of the goods at issue or a part thereof, namely the screens.
41      Thus, the word ‘fluo’ does not directly and immediately inform the consumer of one of the characteristics of the goods at issue.
42      Consequently, the Board of Appeal did not show that the relevant public, when faced with the mark applied for, would perceive it, immediately and without further thought, as a description of the goods at issue or one of their characteristics.
43      In those circumstances, the Board of Appeal infringed Article 7(1) of Regulation No 207/2009 in holding that the contested mark had a sufficiently direct and specific relationship with the goods at issue.
44      In the light of all of the foregoing, the first plea in law must be upheld.
45      Thus, in so far as it is apparent from paragraphs 36 and 37 of the contested decision that the Board of Appeal relied solely on the absolute ground for refusal of registration under Article 7(1)(c) of Regulation No 207/2009 in order to refuse registration of the mark applied for in respect of the goods at issue, paragraph 2 of the operative part of the contested decision must be annulled, without there being any need to examine the second plea in law relied on by the applicant.
Costs
46      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. In this case, the applicant has applied for EUIPO to be ordered to pay the costs of the proceedings at all instances. Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant. Pursuant to Article 190(2) of the Rules of Procedure, those costs also include the expenses necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Annuls paragraph 2 of the operative part of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 December 2016 (Case R 863/2016-2);
2.      Orders EUIPO to bear its own costs and to pay those incurred by M & T Emporia Ilektrikon-Ilektronikon Eidon AE, including the expenses necessarily incurred for the purpose of the appeal proceedings before the Board of Appeal of EUIPO.
Tomljenović
Bieliūnas
Kornezov
Delivered in open court in Luxembourg on 11 October 2018.
E. Coulon
V. Tomljenović
Registrar
President
*      Language of the case: English.