JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
17 January 2019 (*)
(EU trade mark — Application for EU figurative mark DIAMOND CARD — Absolute ground for refusal — Distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001)
In Case T‑91/18,
Equity Cheque Capital Corporation, established in Victoria (Canada), represented by I. Berkeley, Barrister, P. Wheeler and C. Rani, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh and A. Folliard-Monguiral, acting as Agents,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 December 2017 (Case R 1544/2017-4), relating to an application for registration of the figurative sign DIAMOND CARD as an EU trade mark,
THE GENERAL COURT (Sixth Chamber),
composed of G. Berardis, President, S. Papasavvas (Rapporteur) and O. Spineanu-Matei, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 16 February 2018,
having regard to the response lodged at the Court Registry on 2 May 2018,
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 August 2016, the applicant, Equity Cheque Capital Corporation, filed an application for registration of an EU trade mark with 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        Registration as a mark was sought for the following figurative sign:
3        The services in respect of which registration of the trade mark was sought are in Class 36 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: ‘Insurance services, namely travel insurance; financial services, namely, providing a wide range of information and analysis to financial institutions by electronic means in connection with credit, debit, stored value and other payment cards, specifically cardholder spending, fraud, risk management, terminated merchants, reporting of chargebacks, retrievals and exceptions; providing financial services information via a global computer network; banking and credit services; services of credit, debit, purchasing, cash payment and prepayment cards; financial services relating to payment of bills; automated teller machine services; processing of cardholder financial credit, debit, purchasing, stored value and/or prepaid card transactions both online via a computer database or through telecommunications and at points of sale; services for processing services for financial transactions carried out by cardholders through automated teller machines; provision of financial account details, namely, cash balances, deposits and withdrawals to cardholders through automatic teller machines; financial settlement and authorisation services, namely, the settling of international and commercial transactions through obtaining the proceeds of a sale in cash in exchange for formal debt instructions; financial account settlement services, namely, the settling of international and commercial transactions through obtaining the proceeds of a sale in cash or in exchange for formal debt instructions; electronic funds transfer and foreign exchange services; providing financial information over the internet and other computer networks; financial services for facilitating the use of electronic payments, namely, electronic processing and transmission of electronic wallets, transactions and data; foreign currency transfers; electronic payment services, namely, electronic processing and transmission of bill payment data; cardholder financial authorisation and debt settlement services; offer of debit and credit transaction services by means of radio frequency identification devices and transponders; provision of debit and credit transaction services by means of communication and telecommunications devices; cheque verification services, issue and redemption services, all in connection with travellers’ cheques and travel vouchers; provision of financial support services, namely, payment services to retail services provided online, via networks or other electronic media using electronically digitised data; services for exchanging securities, namely, the secure exchange of securities, namely, payment in electronic cash via computer networks accessible by smart cards; online banking services; investment services including the services of insurance and assurance agents, insurance and assurance brokers, insurers, financiers, investment consultants and agents, real estate, valuation, management and development, estate agencies; all of the foregoing expressly excluding credit card services in connection with the sale of jewellery products’.
4        By decision of 17 May 2017, the examiner rejected the application for registration in respect of all the services referred to in paragraph 3 above, 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).
5        On 14 July 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the examiner’s decision.
6        By decision of 14 December 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
7        In particular, the Board of Appeal stated that the services covered were either insurance services or financial services intended partly for the general public displaying a normal to high level of attention and partly for a specialised public within the financial sector. It also noted that since the mark applied for consists of an expression in the English language, the relevant public for the assessment of the distinctiveness of that mark was the English-speaking public. It added, however, that since the words comprising the mark applied for were part of basic English vocabulary and similar or identical to their translations in other official languages of the European Union, they would be understood not only by the English-speaking public of the EU Member States but also by all of the public of the European Union. Furthermore, it stated that the expression ‘diamond card’ contained a laudatory message whose function was to communicate a statement concerning value. It considered that that expression did not indicate the commercial origin of the services covered, but served as a mere promotional message in relation to those services. It noted that the figurative element of the mark applied for was the word ‘diamond’ and that the three additional horizontal lines would go unnoticed. The Board of Appeal concluded that the trade mark applied for was devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
9        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
10      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001.
11      The applicant submits, in essence, that the Board of Appeal misapplied Article 7(1)(b) of Regulation 2017/1001.
12      In that regard, it must be recalled that, under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered. According to Article 7(2), Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.
13      According to settled case-law, for a trade mark to possess distinctive character within the meaning of that provision, it must serve to identify the goods or services in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 24 February 2016, Coca-Cola v OHIM(Shape of a contour bottle without fluting), T‑411/14, EU:T:2016:94, paragraph 34 and the case-law cited).
14      That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of them by the relevant public, which consists of the consumers of those goods or services (see judgment of 24 February 2016, Shape of a contour bottle without fluting, T‑411/14, EU:T:2016:94, paragraph 35 and the case-law cited).
15      It is in the light of those considerations that the Court must examine whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 in finding that the mark applied for was devoid of any distinctive character.
16      In the first place, as regards the relevant public, the Board of Appeal found that since the services in question were either insurance services or financial services, they were intended partly for the general public which, in its view, demonstrates a normal to high level of attention when it comes to financial services and partly for a specialised public in the financial sector. It added that, in so far as the trade mark applied for was composed of terms belonging to basic English vocabulary, its distinctiveness had to be assessed with regard to the public of the European Union as a whole. Those findings of the Board of Appeal, which, moreover, are not disputed by the applicant, must, having regard to the nature of the services in question and the mark applied for, be upheld.
17      The Board of Appeal added that the level of attention of the relevant public was not relevant to the examination of the absolute grounds for refusal and the fact that the services may be partly aimed at a specialist public within the financial sector also did not assist the applicant. However, since it is clear that the Board of Appeal assessed the relevant public’s level of attention, that assertion, which, moreover, the applicant does not contest, has no bearing on the legality of the contested decision.
18      In the second place, as regards the services in respect of which registration is sought, it must be stated that they are, as correctly stated by the Board of Appeal, financial services and insurance services.
19      The applicant submits that the Board of Appeal failed to consider each of the services in question individually and, consequently, wrongly found the sign applied for not to be registrable in relation to all of those services. It notes that many of these services do not require the use of a ‘card’, whether a credit, debit, payment, loyalty, security or other type of card. The Board of Appeal therefore did not give a proper statement of reasons for its refusal of registration in respect of those services.
20      It must be recalled that, according to the case-law, first, the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought and, secondly, that the decision by which the competent authority refuses registration of a mark must, in principle, state reasons in respect of each of those goods or services. However, as regards that last requirement, the competent authority may use only general reasoning for all of the goods and services concerned where the same ground for refusal is given for a category or group of goods or services. Such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 29 to 31 and the case-law cited).
21      In the present case, the Board of Appeal noted that the services in question were either insurance services or various financial services. Furthermore, it stated that the mark applied for will be perceived as a message concerning access to the services available through a credit, debit, payment, loyalty, security or any other card and that that sign had a clear promotional meaning in relation to financial services, travel services and personal assistance services, since the cardholder could expect to receive a service with a high level of customer care. Thus, the Board of Appeal considered, in essence, that all the services in question had a common characteristic, namely that of access to privileged treatment through a card. It therefore held that the services in question were interlinked in a sufficiently direct and specific way, to the point where they formed a category or group of services that were sufficiently homogeneous for the purposes of the examination of the distinctive character of the sign applied for. The contested decision therefore contains an adequate statement of reasons in that regard.
22      In the third place, as regards the Board of Appeal’s assessment of the meaning of the mark applied for, it is settled case-law that, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by that mark must be considered. That does not mean, however, that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the constituent features of the trade mark concerned (see judgment of 4 October 2007, Henkel v OHIM, C‑144/06 P, EU:C:2007:577, paragraph 39 and the case-law cited).
23      In the present case, the Board of Appeal observed that the mark applied for consisted of two words belonging to basic English vocabulary, namely ‘diamond’ and ‘card’, and a figurative element representing a drawing of a diamond and three horizontal lines. As regards the word element, the Board of Appeal stated that the word ‘diamond’ referred to the expensive precious stone of the same name, that it was a direct reference to luxury and wealth and, therefore, in the present case, to a high-class service. It recalled that the word ‘card’ was used by other undertakings in combinations such as ‘silver card’, ‘gold card’ or ‘platinum card’ in the context of special loyalty programmes. It considered that the word element ‘diamond card’ will be understood immediately by the relevant public as meaning a precious card and, more specifically, as describing a (credit or loyalty) card conferring more privileges than other cards on its holder. As regards the figurative element, it noted, first, that the drawing of the diamond merely reinforced the message conveyed by the word ‘diamond’ and, secondly, that the three horizontal lines will go unnoticed by the relevant public. It added that there was nothing to support the conclusion that consumers, whether the general or specialised public, would attach any importance to such simple and banal elements.
24      The applicant submits that the Board of Appeal carried out an inadequate and incomplete analysis of the mark applied for.
25      First, the applicant submits that the Board of Appeal completely disregarded some elements of the mark applied for or did not attach sufficient importance to them. It adds that the Board of Appeal did not consider that mark as a whole.
26      As regards the Board of Appeal’s assessment of the mark applied for, it was indicated in paragraph 23 above that the Board not only considered the word elements of the mark applied for, namely the expression ‘diamond card’, but also the figurative elements. Therefore, it must be stated that, in its assessment of the mark applied for, the Board of Appeal took into consideration all the elements of which that mark is composed. Moreover, in noting that the word element conveyed a laudatory message which the drawing of the diamond strengthened and in indicating that the three horizontal lines would go unnoticed by the relevant public, the Board of Appeal carried out an overall assessment of the mark applied for.
27      As regards the complaint alleging that the Board of Appeal did not give sufficient weight to certain elements of the mark applied for, it should be noted that, contrary to what the applicant claims, the figurative element corresponding to the drawing of the diamond cannot be regarded as a ‘fancy logo’ containing a ‘high degree of stylisation and design’, given that it is an obvious and banal representation of a diamond. That is particularly true as it is positioned immediately before the word element ‘diamond’, the meaning of which it accentuates. Therefore, it is irrelevant that, because of its size and position, that element is prominent. Furthermore, contrary to what the applicant claims, it must be stated that the word element of the mark applied for is written using a standard typeface and the three horizontal lines, which run across the figurative element of that mark representing a diamond, are devoid of any distinctive features.
28      In those circumstances, the applicant is not justified in claiming that the Board of Appeal carried out an inadequate and incomplete analysis of the mark applied for.
29      Secondly, the applicant disputes the Board of Appeal’s assessment that the word ‘diamond’ will be understood as meaning ‘valuable’, ‘high class’ or ‘luxury and wealth’. In its view, those meanings are not apparent from the dictionary. In that regard, it refers to the Oxford English Dictionary, according to which the principal meaning of the word ‘diamond’ is a very hard and brilliant precious stone. The applicant maintains that the figurative element of the mark applied for, combined with the word element, directs the general public towards that conceptual meaning which is inherently distinctive in the context of the services covered.
30      On that point, it should be noted that, although the applicant submits that no dictionary definition states that the term ‘diamond’ can mean ‘value’, the applicant recognises that the first definition set out in the dictionary to which it makes reference, namely the Oxford English Dictionary, refers to a very hard and brilliant precious stone which is the most brilliant and valuable of precious stones and the hardest substance known and the applicant states that the figurative element refers to that meaning. As was stated in paragraph 23 above, it is specifically on that definition of the word ‘diamond’ that the Board of Appeal based its assessment that the relevant public will understand the word element in question as a reference to luxury and wealth and will, therefore, equate it with a card having value. It must be stated that, in so doing, the Board of Appeal carried out an assessment which did not contain any errors.
31      It follows from the foregoing that the argument alleging that the Board of Appeal incorrectly assessed the meaning of the word element of the mark applied for must be rejected.
32      In the fourth place, as regards the perception by the relevant public of the mark applied for, the Board of Appeal found that it merely served as a promotional message in relation to the services covered. First, it noted that the mark conveyed an easily and immediately understandable laudatory message, which was not sufficiently original, unusual or resonant so as to require at least some interpretation, thought or analysis on the part of the relevant public. Secondly, it considered that that public will not perceive the mark applied for in relation to the services covered as a commercial indication since, in addition, there was nothing unusual in the combination of the terms of which it was composed. It concluded from this that the mark applied for was devoid of any distinctive character.
33      First, the applicant submits that the Board of Appeal applied an overly strict test, or a test which was, in any event, wrong, as regards the distinctive character necessary for a sign to be registered. In essence, it criticises the Board of Appeal for finding that the mark applied for was devoid of any distinctive character on the ground that it was not original. That approach is contrary to the case-law which establishes that a sign’s lack of distinctive character cannot arise merely from the finding that the sign in question has no fanciful element or does not look unusual or striking.
34      In that regard, it should be noted that it is true that, according to settled case-law, in order to establish the distinctive character of a sign, it is not necessary to find that the sign is original or fanciful (see judgments of 13 July 2005, Sunrider v OHIM (TOP), T‑242/02, EU:T:2005:284, paragraph 91 and the case-law cited, and of 25 May 2016, U-R LAB v EUIPO (THE DINING EXPERIENCE), T‑422/15 and T‑423/15, not published, EU:T:2016:314, paragraph 66).
35      However, according to equally settled case-law, marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks may be recognised as having distinctive character and the ability to indicate to the consumer the commercial origin of the goods or services in question where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public (see order of 11 May 2016, August Storck v EUIPO, C‑636/15 P, not published, EU:C:2016:342, paragraph 21 and the case-law cited).
36      In the present case, it must be held that the combination of the words ‘diamond’ and ‘card’ is not striking either orthographically or grammatically and is not a play on words. Moreover, the expression ‘diamond card’, whose meaning is strengthened by the figurative element in the shape of a diamond, is similar to existing expressions such as ‘gold card’ and is, therefore, not at all original. The Board of Appeal was thus right to find that the sign applied for contained no unusual element and had no originality capable of endowing it with distinctive character such as to enable the relevant public to perceive it otherwise than as a mere promotional message. Therefore, the present argument must be rejected.
37      Secondly, the applicant submits that, even assuming that the figurative element of the mark applied for refers to a precious stone cut as a diamond, such a reference has no obvious laudatory meaning in relation to the services covered. The Board of Appeal was therefore wrong to find that the word ‘diamond’ referred directly and without further reflection to luxury and wealth and, in respect of the services in question, to a high-class service. The applicant maintains that the fact that the word ‘diamond’, in the mark applied for, is combined with the word ‘card’ does not affect the inherent distinctiveness of that sign. It accepts that the word ‘card’ may have weak inherent distinctiveness in relation to certain services which involve the use of credit or debit cards. However, according to the applicant, since credit and debit cards are usually made of plastic and not diamond, consumers will be struck by the contradictory and distinctive expression ‘diamond card’. That imaginative and fanciful expression will be perceived, according to the applicant, as an indication of the commercial origin of the services in question. It adds that, unlike gold, silver and bronze, the element ‘diamond’ is not part of the well-known system in which precious metals refer to various levels of reward.
38      In the present case, as was stated in paragraph 30 above, the Board of Appeal rightly found that the relevant public will understand the expression ‘diamond card’ as a reference to luxury and wealth and therefore will associate it with a card having value. That expression will encourage the public to use the services in question. In that regard, the fact that credit, debit or loyalty cards are not usually manufactured in diamond does not make the expression ‘diamond card’ distinctive. The ‘gold’, ‘silver’ or ‘platinum’ cards which may be issued by banking institutions are also made of plastic and not of gold, silver or platinum. Consumers are therefore used to reading expressions containing the word ‘card’ associated with a word which, although referring to a metal or a precious stone, does not designate the material of which the card was made, but indicates that that card gives access to certain additional services. Therefore, the Board of Appeal rightly found that the relevant public will perceive the mark applied for solely as a promotional message.
39      It follows from the foregoing that the Board of Appeal did not err in finding that the mark applied for was devoid of any distinctive character.
40      The applicant maintains that, even if it could be considered that the Board of Appeal’s analysis is correct with respect to some of the services covered, the mark applied for must be regarded as distinctive with regard to a number of services which do not require the use of a card. It states that the word ‘card’ has several meanings and in particular that of ‘a piece of stiff paper or thin cardboard, usually rectangular with varied uses’. It therefore concludes that, for the services which normally do not involve the use of a credit, debit, loyalty or security card, the word ‘card’ in the sign applied for gives additional distinctive character to that sign.
41      In that regard, the applicant cannot validly maintain that some of the services covered do not involve the use of any card. On the contrary, all those services may theoretically involve the use of cards, at least loyalty, security or customer cards. In any event, it is not necessary for those services actually to involve the use of cards. It suffices that the relevant public, when faced with the mark applied for, understands that use of the services in question will entitle it to a credit, debit, payment, loyalty, security or other card, giving it the right to benefits, as was rightly held by the Board of Appeal.
42      In those circumstances, the Board of Appeal did not err in finding that the mark applied for was devoid of any distinctive character with regard to all the services covered.
43      The applicant’s other arguments are not such as to cast doubt on that finding.
44      First, the applicant states that, although EUIPO is not bound by its previous decisions, it had referred, in its appeal before the Board of Appeal, to marks containing the word element ‘diamond’ which had been registered by EUIPO for services in Class 36.
45      It must be noted in that regard that, according to the case-law, the decisions concerning the protection of signs as EU trade marks which the Boards of Appeal are led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
46      In the present case, since the Board of Appeal was correct to conclude that the sign applied for conveyed a purely promotional message in relation to the services in question and that it would not be perceived as an indication of the commercial origin of those services, it was right to conclude that the application for registration of the sign applied for in respect of the services in question was caught by the ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001. The applicant cannot therefore usefully rely, for the purposes of invalidating that conclusion, on previous decisions of EUIPO.
47      In addition, it should be noted that the previous decisions of EUIPO, relied on by the applicant, concern marks which include the word ‘diamond’, but which are not identical to the mark applied for which contains, in addition, the word ‘card’. Moreover, those decisions were adopted by EUIPO’s examiners. However, neither the Board of Appeal nor the Court can be bound in any way by the decisions adopted by EUIPO’s examiners (judgment of 28 June 2017, Colgate-Palmolive v EUIPO (AROMASENSATIONS), T‑479/16, not published, EU:T:2017:441, paragraph 42).
48      Secondly, as regards the DIAMOND CARD word marks registered for services in Class 36 with the United States Patent and Trademark Office, the Canadian Intellectual Property Office and the United Kingdom Intellectual Property Office, it is sufficient to note that the EU trade mark system is an autonomous system with its own set of objectives and rules specific to it; it applies independently of any national system (see judgment of 12 December 2013, Rivella International v OHIM, C‑445/12 P, EU:C:2013:826, paragraph 48 and the case-law cited). Consequently, the registrability of a sign as an EU trade mark must be assessed by reference only to the relevant EU rules. EUIPO, and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or in a third country, that the sign in question is registrable as a national mark (see judgment of 25 March 2014, Deutsche Bank v OHIM (Leistung aus Leidenschaft), T‑539/11, not published, EU:T:2014:154, paragraph 53 and the case-law cited).
49      It follows from the foregoing that the single plea must be rejected and the action dismissed in its entirety.
Costs
50      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 (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Equity Cheque Capital Corporation to pay the costs.
Berardis
Papasavvas
Spineanu-Matei
Delivered in open court in Luxembourg on 17 January 2019.
E. Coulon
G. Berardis
Registrar
President
*      Language of the case: English.