JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
28 April 2016 (*)
(EU trade mark — Application for EU figurative mark Liiga — Absolute grounds for refusal — Descriptive character — Lack of distinctive character — Article 7(1)(b) and (c) and Article 7(2) of Regulation (EC) No 207/2009)
In Case T‑54/15,
Jääkiekon SM-liiga Oy, established in Helsinki (Finland), represented by L. Laaksonen, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Schifko and E. Śliwińska, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 1 December 2014 (Case R 576/2014-2) concerning an application for registration of the figurative sign Liiga as an EU trade mark,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias (Rapporteur), President, M. Kancheva and C. Wetter, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 2 February 2015,
having regard to the response lodged at the Court Registry on 20 May 2015,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,
gives the following
Judgment
Background to the dispute
1        On 9 August 2013, the applicant, Jääkiekon SM-liiga Oy, 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).
2        Registration as a mark was sought for the following figurative sign:
3        The goods and services in respect of which registration was sought are in Classes 9, 16, 25, 28, 29, 30, 32, 33, 39, 41 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        By decision of 3 January 2014, the examiner partially rejected the application for registration of the mark applied for, on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009, in so far as the mark covered ‘games and playthings; gymnastic and sporting articles not included in other classes’ in Class 28 and ‘sporting activities’ in Class 41.
5        On 19 February 2014, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6        By decision of 1 December 2014 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed that appeal on the grounds that the mark applied for was caught by the prohibitions referred to in Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009 (paragraphs 11 to 18 of the contested decision).
7        To support that conclusion, the Board of Appeal stated, first, that the word element of the mark applied for will be read by the relevant public, composed of average Finnish-speaking consumers, as ‘Liiga’, namely a competitive sports division in Finnish. The mark applied for therefore displays a clear and direct relationship with the ‘category, the quality and the intended purpose’ of the goods and services at issue. The Board of Appeal observed that the figurative elements of the mark applied for, namely the slight stylisation of the letters and dark, circular background, are banal and incapable of diverting the consumer’s attention from the descriptive message expressed by the word element, such that they are devoid of any distinctive character. In this context, the figurative elements would be seen as the background for that message, with the result that the mark applied for should be considered to be descriptive and thus devoid of distinctive character for the goods and services at issue within the meaning of Article 7(1)(b) and (c) of Regulation No 207/2009. Finally, the Board of Appeal dismissed the arguments of the applicant based on the registration of other trade marks in the past.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision and allow the mark applied for to be registered for the services for which it was rejected;
–        order EUIPO to pay the costs.
9        EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
10      In support of its action, the applicant raises, in essence, a single plea in law, alleging infringement of Article 7(1)(b) and (c) of Regulation No 207/2009.
11      EUIPO contends that the form of order sought relating to the registration of the mark applied for is inadmissible and contests the merits of the action.
12      In this regard, the applicant argues that although the mark applied for shows the word ‘Liiga’, that word is strongly stylised to resemble handwriting partly shaded in grey upon a black background. Furthermore, the letters tilt diagonally, the letter ‘g’ features an horizontally elongated limb, the letter ‘L’ is shaped so as to be capable of being seen as the number ‘1’ or as an ‘l’ and, finally, the diphthong ‘ii’ could be seen as the letter ‘ü’. The mark could therefore be read as ‘Liiga’, ‘Lüga’, ‘1iiga’ or ‘1üga’. Thus, although the mark applied for could be seen primarily as descriptive, the stylisation of its word element and the added figurative elements confer upon it distinctive character and render it capable of exercising the essential function of a trade mark.
13      Article 7(1)(c) of Regulation No 207/2009 provides that 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.
14      Article 7(2) of Regulation No 207/2009 states that Article 7(1) of that regulation is to apply notwithstanding that the grounds for refusal obtain in only part of the EU.
15      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (judgment of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31).
16      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, under 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 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 (judgment in OHIM v Wrigley, cited in paragraph 15 above, EU:C:2003:579, paragraph 30).
17      Accordingly, a sign’s descriptive character can only be assessed, first, by reference to the way in which it is perceived by the relevant public and, secondly, by reference to the goods or services concerned (judgment of 7 July 2011 in Cree v OHIM (TRUEWHITE), T‑208/10, ECR, EU:T:2011:340, paragraph 17).
18      It follows that, in order 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 or services in question to enable the public concerned to perceive immediately and without further thought a description of the goods and services in question or one of their characteristics (judgment in TRUEWHITE, cited in paragraph 17 above, EU:T:2011:340, paragraph 18).
19      In the present case it is not disputed that the relevant public is composed of average Finnish-speaking consumers.
20      Furthermore, the applicant does not dispute that the Finnish language does not feature the letter ‘ü’, so that it is very unlikely for a Finnish consumer to read the mark applied for as ‘Lüga’.
21      In this context, as moreover conceded by the applicant, the interpretation which will primarily be retained by the consumer in the target public is that of a competitive sports league, namely a championship, which is the meaning of the word ‘Liiga’ in Finnish. In contrast, it is much less likely that the same consumer would read the word in such a way that it would make no sense. Consequently the Board of Appeal did not err in holding, in paragraphs 13 and 14 of the contested decision, that the mark applied for conveys a clear and direct message relating at the very least to the intended purpose of the goods and services at issue. Both games and playthings and, even more so, gymnastic and sporting articles can directly relate to a competitive sports division or championship. This is clearly the same for services relating to sporting activities.
22      Thus, the Board of Appeal also did not err in holding, in paragraphs 15 and 16 of the contested decision, that the stylised elements of the mark applied for do not negate its descriptive character. The stylisation of the word element of the mark is limited to giving a handwritten appearance to the word ‘Liiga’, which however remains easily legible. Furthermore, given its simple and abstract configuration, the black circle placed behind the word element of the mark will be seen as a background for the latter, even if, as the applicant claims, the consumer’s imagination goes so far as to see a ball or hockey puck there. In the latter case, the background only serves to reinforce the link between the word element of the mark applied for and a particular sport. Consequently, as the Board of Appeal observed, the various elements which compose the mark applied for do not interact in such a way as to eclipse the relationship between the mark and the characteristics of the goods and services for which the registration was refused.
23      Thus, assessed as a whole, the mark applied for has a sufficiently direct and specific relationship with games, playthings, gymnastic and sporting articles, as well as services relating to sporting activities, to enable the public concerned to immediately perceive the intended purpose, at the very least, of these goods and services when they are marketed under this sign.
24      Moreover, a word mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) of Regulation No 207/2009 is therefore necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) of Regulation No 207/2009 (judgment of 14 June 2007 in Europig v OHIM (EUROPIG), T‑207/06, ECR, EU:T:2007:179, paragraph 47).
25      The Board of Appeal was therefore fully entitled to hold, in paragraph 18 of the contested decision, that given its descriptive character, the mark applied for is devoid of any distinctive character with regard to the goods and services for which registration was refused. Consequently, the arguments of the applicant which challenge this finding must be dismissed, as they are a repetition of the arguments relating to the alleged absence of descriptive character of the mark applied for.
26      As for the argument alleging that the Boards of Appeal have reached a different conclusion in other disputes concerning other trade marks, it suffices to note that the examination of any registration application must be stringent and full in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 77).
27      However, in the present case, it is apparent from the findings in paragraphs 18 to 21 and 23 above that the Board of Appeal committed no error in holding that the mark applied for is descriptive of the goods and services mentioned in those paragraphs. This argument must therefore be rejected.
28      It follows from the foregoing that the action must be dismissed without it being necessary to decide upon the plea of inadmissibility raised by EUIPO.
Costs
29      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.
30      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Jääkiekon SM-liiga Oy to pay the costs.
Gratsias
Kancheva
Wetter
Delivered in open court in Luxembourg on 28 April 2016.
[Signatures]
* Language of the case: English.