JUDGMENT OF THE GENERAL COURT (Second Chamber)
13 October 2021 (*)
(EU trade mark – Application for the EU word mark Blockchain Island – Absolute ground for refusal – No distinctive character – Article 7(1)(b) and (2) of Regulation (EU) 2017/1001)
In Case T‑523/20,
Setarcos Consulting ltd., established in Sliema (Malta), represented by S. Stafylakis, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Walicka and V. Ruzek, acting as Agents,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 9 June 2020 (Case R 2806/2019‑5), regarding an application for registration of the word sign Blockchain Island as an EU trade mark,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin and I. Nõmm (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 18 August 2020,
having regard to the response lodged at the Court Registry on 19 November 2020,
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 27 February 2019, the applicant, Setarcos Consulting ltd., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 Blockchain Island.
3        The goods and services in respect of which registration was sought are, following the restriction made in the course of the proceedings before EUIPO, in Classes 9, 16, 35, 41 and 45 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, for each of those classes, to the following description:
–        Class 9: ‘Electronic publications (downloadable); networking software’;
–        Class 16: ‘Printed periodical publications; directory paper; printed matter; instructional and teaching material (except apparatus); printed publications’;
–        Class 35: ‘Advertising; management consulting; career information and advisory services; recruitment services; public relations; market studies; providing commercial directory information via the Internet; conducting, arranging and organising trade shows; business networking services; professional recruitment services’;
–        Class 41: ‘Training services; provision of online training; arranging conferences, workshops and seminars; publication of training materials; arranging and conducting of conferences’;
–        Class 45: ‘Legal advice; legal services; legal consultancy services; advisory services relating to the law; legal research services; licensing services; paralegal services; registration services (legal); intellectual property services; company registration services; legal information services; domain names (registration of -) [legal services]; legal assistance in the drawing up of contracts; legal services in relation to the negotiation of contracts for others; legal consultation in the field of taxation; legal document preparation services; legal investigation services’.
4        By decision of 14 October 2019, the examiner rejected the application for registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above, on the basis of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
5        On 10 December 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision. On 10 February 2020, it submitted the statement of grounds for the appeal.
6        By decision of 9 June 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal. First of all, it found, in essence, that the goods and services at issue were aimed either exclusively at English-speaking professionals or both at the English-speaking general public and at English-speaking professionals in the European Union. Next, after stating that the term ‘blockchain’ referred, in English, to a digital database containing information, such as records of financial transactions, which could be simultaneously used and shared within a decentralised, publicly accessible network, and that the word ‘island’ referred to a tract of land surrounded by water and smaller than a continent or something resembling an island, especially in its isolated or surrounded position, it pointed out that the expression ‘blockchain island’, taken as a whole, would be understood by the relevant public as referring to an island that is a blockchain hub and that that island could be Malta, as the references provided by the examiner identified the connection between that island and its role as a hub for blockchain technology companies. Lastly, it pointed out that the sign consisting of that expression conveyed a promotional message regarding the goods and services in question, a promotional message that the island, in the present case, Malta, on which the applicant was based, offered a specific legal and regulatory framework for blockchain technology, which was the subject matter of the publications in Classes 9 and 16, the conferences, workshops and training in Class 41, the legal, paralegal and registration services in Class 45 and the business, advisory, marketing, management and recruitment services in Class 35. Furthermore, it added that the mark applied for was expressed using words in their ordinary meaning and contained nothing that was memorable, such as a play on words, a rhyme, a subliminal message, unusual syntax, an image or a symbol, and would not trigger any particular cognitive process on the part of the relevant public. It concluded that the 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
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs incurred before the Court and the Board of Appeal.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        In support of the action, the applicant relies on a single plea in law alleging infringement of Article 7(1)(b) of Regulation 2017/1001.
10      In the first place, the applicant submits that the expression ‘blockchain island’ is, as a concept, purely imaginative. Furthermore, it takes the view that a negligible part of the relevant public knows of blockchain technology and that the connection between that technology and the island of Malta has not been established. It adds that the majority of professionals will not perceive the mark applied for as being commonly used, or being capable of being used, in trade for the presentation of the goods and services at issue.
11      In the second place, the applicant takes the view, in essence, that the expression ‘blockchain island’ is not laudatory or promotional in connection with the goods and services at issue, that it has no connection with those goods and services and that, to the extent that it is understood as meaning that the island of Malta has become a hub for blockchain technology, such a conclusion requires a cognitive process in the mind of the relevant public. Furthermore, it submits that the sign consisting of that expression, which is unexpected and memorable, displays a certain originality in relation to those goods and services, because the goods and services at issue have no connection with blockchain.
12      EUIPO disputes the applicant’s arguments.
13      Article 7(1)(b) of Regulation 2017/1001 provides that trade marks which are devoid of any distinctive character must not be registered. Article 7(2) of Regulation 2017/1001 provides that Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
14      For a trade mark to possess distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, it must serve to identify the goods in respect of which registration is sought as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 33 and the case-law cited).
15      That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, secondly, by reference to the relevant public’s perception of the mark (see judgment of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
16      The registration of 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 is not excluded by virtue of such use. For the purposes of assessing the distinctive character of such marks, it is inappropriate to apply to those marks criteria which are stricter than those applicable to other types of sign (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 35 and 36, and of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 25).
17      However, it is apparent from the case-law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, the relevant public’s perception is not necessarily the same in relation to each of those categories and that it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 37 and the case-law cited, and of 9 March 2017, Puma v EUIPO (FOREVER FASTER), T‑104/16, not published, EU:T:2017:153, paragraph 18 and the case-law cited).
18      In that regard, it must be pointed out that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as that public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character (judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 45; see, also, judgment of 9 March 2017, FOREVER FASTER, T‑104/16, not published, EU:T:2017:153, paragraph 19 and the case-law cited).
19      Furthermore, an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(l)(b) of Regulation 2017/1001 (see judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 39 and the case-law cited, and of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraph 16 and the case-law cited).
20      Consequently, a trade mark consisting of an advertising slogan must be regarded as being devoid of any distinctive character if it is liable to be perceived by the relevant public only as a mere promotional formula. By contrast, and according to settled case-law, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (see, to that effect, judgments of 5 December 2002, Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS), T‑130/01, EU:T:2002:301, paragraph 20, and of 15 September 2005, Citicorp v OHIM (LIVE RICHLY), T‑320/03, EU:T:2005:325, paragraph 66).
21      It is in the light of those considerations that it must be examined 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.
22      In the first place, as regards the relevant public, the Board of Appeal pointed out, in essence, in paragraphs 13 to 17 of the contested decision, that the goods and services at issue were aimed either exclusively at the English-speaking professionals who used them or both at the English-speaking general public and at English-speaking professionals in the European Union, depending on their content and subject matter.
23      The applicant submits, in essence, that the relevant public in the present case consists of the general public and of professionals, among which is the public consisting of blockchain specialists, and that it is necessary to take into consideration that those latter consumers who are specialists are the only ones who will have a higher level of attention with regard to the sign at issue.
24      EUIPO disputes the applicant’s arguments.
25      In the present case, as regards the definition of the relevant public, it is necessary, in the light of the goods and services at issue, to uphold the Board of Appeal’s finding, which is set out, in essence, in paragraphs 13 to 17 of the contested decision, that those goods and services are aimed either exclusively at the professionals who use them or both at the general public and at professionals.
26      It is also necessary to endorse the Board of Appeal’s approach, an approach which the applicant does not, moreover, dispute, of referring, in accordance with Article 7(2) of Regulation 2017/1001, to the English-speaking public in the European Union in order to assess whether the mark applied for has distinctive character, since the sign at issue consists of word elements from the English language.
27      As regards the relevant public’s level of attention, it must be borne in mind that, according to settled case-law, a mark must enable the relevant public to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention (judgment of 10 January 2019, achtung ! v EUIPO (achtung !), T‑832/17, not published, EU:T:2019:2, paragraph 26; see also, by analogy, judgments of 12 February 2004, Henkel, C‑218/01, EU:C:2004:88, paragraph 53, and of 7 May 2015, Voss of Norway v OHIM, C‑445/13 P, EU:C:2015:303, paragraph 92).
28      It follows that neither the relevant public’s level of attention nor the fact that the relevant public is a specialist one constitutes a factor which is decisive for the purposes of assessing whether a sign has distinctive character. Although it is true that the level of attention of the specialist public is, by definition, higher than that of the general public, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is a specialist one (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraphs 48 to 50 and the case-law cited).
29      Consequently, the applicant’s claim relating to the influence of the relevant public’s characteristics on the degree of distinctiveness of the mark applied for must be rejected, since it is ineffective.
30      In the second place, as regards the perception of the mark applied for on the part of the relevant public as thus defined, the Board of Appeal found, first, that the term ‘blockchain’ referred, in English, to a digital database containing information, such as records of financial transactions, which could be simultaneously used and shared within a decentralised, publicly accessible network. According to the Board of Appeal, that term, which was first used in 2011, had become synonymous with a decentralised secure transaction technology and could be considered to be generic with regard to any goods and services that used that technology. The Board of Appeal added that the word ‘island’ referred to a tract of land surrounded by water and smaller than a continent or something resembling an island, especially in its isolated or surrounded position, and that it could describe Malta in the European Union, as it described, for example, Cyprus, the Seychelles, Bermuda, the Cayman Islands, Jersey and the British Virgin Islands.
31      Secondly, the Board of Appeal found that the expression ‘blockchain island’, taken as a whole, complied with the rules of English syntax and grammar and conveyed the meaning of an island that is a hub for blockchain technology. It found that that island could be understood as referring to Malta. It stated that the references provided by the examiner identified the connection between the island of Malta and its role as a hub for blockchain technology companies. Furthermore, it pointed out that it was apparent from the references provided both by the examiner and by the applicant that many islands, including Malta, had sought to create a regulatory environment that was favourable to blockchain technology. Consequently, it stated that, since Malta was well known for offering favourable fiscal and regulatory conditions to businesses in general, those references bore out that meaning. It found that the mark applied for would therefore be understood by the relevant public as a promotional reference to the status of an island as a hub for blockchain technology.
32      In order to reach that conclusion, the Board of Appeal took into account, as is apparent from paragraph 22 above, the English-speaking public, which consisted either exclusively of professionals who used the goods and services at issue or both of the general public and of professionals. According to the Board of Appeal, as had been found in a previous decision of EUIPO (see the decision of 20 March 2020, R 2070/2019‑4, Blockchain KeyStore, paragraph 16), the professional public knew exactly how a blockchain worked and the general public knew that it was a secure system to store and exchange data. The Board of Appeal stated that that technology had implications for finance and trade in general.
33      Although the applicant does not dispute the definition of the term ‘blockchain’, it submits, however, in essence, that that meaning and the implications thereof will be understood only by some of those professionals, namely the public consisting of blockchain specialists, which constitutes a negligible part of the relevant public. Furthermore, it argues that the decision of 20 March 2020, R 2070/2019‑4, Blockchain KeyStore, to which the Board of Appeal referred, is not relevant, since the case in question concerned computer software and computer software platforms.
34      As regards the term ‘island’, the applicant submits that the Board of Appeal did not take into account the third meaning of that term, namely a reference to an isolated group or area. It adds that, in essence, if the Board of Appeal had taken into account that meaning and the fact that there are more than 450 000 islands in the European Union, its conclusion relating to the relevant public’s perception of the term ‘island’ might have been different.
35      As regards the mark applied for taken as a whole, the applicant submits that the expression ‘blockchain island’ is, as a concept, imaginative, because the notion of a ‘blockchain hub’ is fanciful and metaphorical, since blockchain technology has no need of any centralised control system. Furthermore, it takes the view that, in order to reach the conclusion that the relevant public will perceive the mark applied for as referring to the fact that the island of Malta has become a blockchain hub, the Board of Appeal relied on evidence which is either aimed at a negligible part of the relevant public or is unsubstantiated. Consequently, first, it observes that the evidence used by the Board of Appeal comes from specialised online references. Secondly, it submits that that evidence does not constitute concrete evidence justifying the conclusion that the sign Blockchain Island is used, or is capable of being commonly used, in trade for the presentation of the goods and services covered by the application for registration.
36      EUIPO disputes the applicant’s arguments.
37      It should be noted at the outset that, in order to assess whether or not a mark has any distinctive character, the overall impression created by that mark must be taken into consideration. That does not, however, mean that each of the individual features of the get-up of that mark may not first be examined in turn. It may be useful, in the course of the overall assessment, to examine each of the components of the mark concerned (see judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82 and the case-law cited).
38      It must, in that regard, be pointed out that the Board of Appeal was right in finding, in paragraph 18 of the contested decision, that the mark applied for was a combination of the terms ‘blockchain’ and ‘island’.
39      As regards the term ‘blockchain’, it must be held, as the Board of Appeal rightly pointed out and as is confirmed, in particular, by the online dictionary mentioned in the contested decision, that that term refers to a digital database containing information, such as records of financial transactions, which can be simultaneously used and shared within a large, decentralised, publicly accessible network. According to the same dictionary, that term refers to the technology which is used to create such a database, namely a decentralised secure transaction technology, which is at the heart of virtual currencies. That term, which was used for the first time in the abovementioned sense in 2011, can be considered to be generic with regard to the goods and services which use that technology.
40      The applicant’s argument that, in essence, only a part of the relevant public, namely blockchain specialists, which corresponds to a negligible part of the professional public, will understand the meaning of the term ‘blockchain’ and will be able to envisage the implications which that technology might have in the future cannot be accepted.
41      In that regard, it must be borne in mind that, according to settled case-law, for a sign to be caught by the prohibition in Article 7(1)(b) of Regulation 2017/1001, it is sufficient that a ground of refusal exists in relation to a non-negligible part of the relevant public and that it is unnecessary, in that regard, to examine whether other consumers belonging to the relevant public are also aware of that sign. In addition, under Article 7(2) of Regulation 2017/1001, Article 7(1) of that regulation applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union (see judgments of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 55 and the case-law cited, and of 6 October 2017, Karelia v EUIPO (KARELIA), T‑878/16, not published, EU:T:2017:702, paragraph 27 and the case-law cited).
42      In the present case, it must be stated that, first, the public consisting of professionals, which is the public at which all the goods and services at issue are aimed, is likely to understand the term ‘blockchain’. The file relating to the proceedings contains evidence which illustrates that certain islands, in particular the island of Malta, have established an environment that is favourable to blockchain technology in the hope of attracting undertakings. It is also apparent from the file relating to the proceedings that service providers to go along with the growth in blockchain technology initiatives have come into being. Consequently, in the light of the nature of those goods and services, the subject matter of which may also relate to blockchain, it cannot be ruled out that the professionals at whom those goods and services are aimed will be interested in blockchain technology and will therefore have knowledge of the sector concerned.
43      Secondly, the Board of Appeal showed, in the contested decision, that the meaning of the term ‘blockchain’ and its main characteristics were easily accessible, and that included being easily accessible to consumers who were part of the general public. As is apparent from paragraphs 18 and 21 of the contested decision, that term appears in an online dictionary and on websites. It is therefore probable that the technology designated by that term is also known to some of the consumers who are part of the general public (see, to that effect, judgment of 9 July 2010, Exalation v OHIM (Vektor-Lycopin), T‑85/08, EU:T:2010:303, paragraph 41).
44      It follows from the foregoing considerations that at least a non-negligible part of the relevant public will understand the term ‘blockchain’ as a reference to blockchain technology.
45      As regards the applicant’s argument that the general public and the vast majority of professionals are not aware of the implications that that technology might have, beyond financial and monetary affairs, it must be stated, as pointed out by EUIPO, that, in addition to the fact that the applicant itself admits that there is a certain familiarity with that technology, the Board of Appeal showed, in the contested decision, that the main characteristics of that technology appeared in sources which are accessible to everyone.
46      So far as concerns the decision of 20 March 2020, R 2070/2019‑4, Blockchain KeyStore, which is mentioned in the contested decision, it must be pointed out, as observed by EUIPO, that that decision was referred to in order to stress that EUIPO’s decision-making practice is consistent, but did not serve as a basis for the contested decision. In that regard, it must be borne in mind that the decisions concerning the registration of a sign as an EU trade mark which EUIPO take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 3 July 2013, Warsteiner Brauerei Haus Cramer v OHIM – Stuffer (ALOHA 100% NATURAL), T‑243/12, not published, EU:T:2013:344, paragraph 43).
47      As regards the term ‘island’, the Board of Appeal was also right in finding that it referred, according to the online dictionary mentioned in the contested decision, to, inter alia, a tract of land surrounded by water and smaller than a continent. That term could also mean something resembling an island, especially in its isolated or surrounded position, or an isolated group or area, especially an isolated ethnological group.
48      The applicant’s argument that the Board of Appeal did not take into account the third meaning of the term ‘island’, namely a reference to an isolated group or area, or the fact that there are more than 450 000 islands in the European Union, with the result that there is therefore less of a probability that the relevant public will attribute the term island to Malta, cannot succeed. In that regard, first, it must be pointed out that it is true that the word ‘island’ has other meanings in English and that the assessment of whether a sign in respect of which registration as a mark is sought has distinctive character cannot be carried out by taking into account only the most likely use of that sign, but must take into consideration all the likely uses of the mark applied for, that is to say, those which are capable of being significant in practice (see, to that effect and by analogy, judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas?), C‑541/18, EU:C:2019:725, paragraph 33).
49      However, in the present case, it must be pointed out that it is not in any way apparent from the case file that the meaning put forward by the applicant is a likely meaning of the term ‘island’. That term, when it is associated with the term ‘blockchain’, refers, as is apparent from the references in the file relating to the proceedings, to isolated territories surrounded by the sea, which offer favourable conditions for blockchain technology and have become host countries for that technology. It follows that the meaning of the sign at issue on which the applicant relies is not, in the present case, capable of being significant in practice, for the purposes of the case-law referred to in paragraph 48 above.
50      Secondly, it must be pointed out, as observed by EUIPO, that the Board of Appeal referred to Malta by way of example. In paragraphs 20, 22 and 25 of the contested decision, other relevant islands were also mentioned, such as Cyprus, the Seychelles, Bermuda, the Cayman Islands, Jersey, the British Virgin Islands, Jeju or the Bahamas. Furthermore, it must be stated that a number of references mentioned by the examiner, to which that decision refers, mention the connection between the island of Malta and its role as a hub for blockchain technology. Consequently, it must held that the island of Malta is referred to solely in its capacity as an island in the European Union which provides an environment that is favourable to blockchain technology.
51      The combination of the terms comprising the expression ‘blockchain technology’, a combination of terms which is grammatically correct in English, will be understood by the relevant public as meaning ‘island constituting a hub for blockchain technology’. That is shown, in particular, by the references mentioned by the examiner, to which the Board of Appeal referred, which make it possible to conclude that that expression is used to refer to the fact that certain islands have become hubs for blockchain technology. It is apparent from the websites mentioned by the examiner, which predate the filing date of the mark applied for, that the island of Malta has received the name of ‘Blockchain Island’, since Malta claims to be the first jurisdiction in the world to have adopted blockchain technology regulations, and that it has already attracted the two largest cryptocurrency exchanges to its territory. It is also apparent from those sites that, thanks to the progressive stance which Malta has taken with regard to blockchain, it has become a hub for technological development, hence the name Blockchain Island. Furthermore, according to the same sites, the island of Malta, which is also called ‘Blockchain Island’, has adopted laws which are favourable to blockchain technology, ranging from company registration to taxation, with the aim of attracting undertakings so that they establish themselves in its territory.
52      In that context, the expression ‘blockchain island’, which has a clear meaning and complies with the rules of English grammar, conveys the overall message that, in purchasing goods and services such as those at issue, the consumer will enjoy the advantages connected with an environment that is favourable to blockchain technology.
53      Contrary to what the applicant claims, the Board of Appeal established, in the contested decision, that the meaning of the expression ‘blockchain island’ was easily accessible to the relevant public. It must be pointed out, as the applicant admits, that the websites mentioned by the examiner also include sites which are known to the relevant public. Furthermore, those sites are directly accessible on the internet and, as is apparent in particular from the evidence provided by the applicant, may be known of by means of searches carried out via one of the search engines that is most frequently used by internet users, including people who do not have any particular knowledge. Thus, through information disseminated by the media, the less well-informed section of the relevant public is also likely to become aware of that expression (see, to that effect and by analogy, judgment of 9 July 2010, Vektor-Lycopin, T‑85/08, EU:T:2010:303, paragraph 42).
54      As regards the evidence which the applicant submitted relating to the geographical distribution of the audiences of the websites mentioned by the examiner, it must be stated that, in addition to the fact that it post-dates the filing date of the application for registration, it does not make it possible to draw conclusions with regard to the relevant public, namely the English-speaking professionals and the English-speaking general public in the European Union, since, as the applicant itself states, no indication of the number of visitors to each site is given.
55      The Board of Appeal was therefore right in finding, in paragraph 25 of the contested decision, that the relevant public will perceive the sign at issue, taken as a whole, as a promotional reference to the status of an island which constitutes a hub for blockchain technology.
56      The applicant’s other arguments are not capable of calling that finding into question.
57      First, it is necessary to point out, as regards the applicant’s argument that the expression ‘blockchain island’ is, as a concept, imaginative, because the notion of a ‘blockchain hub’ is fanciful and metaphorical, since blockchain technology has no need of any centralised control system, that that argument is irrelevant. It must be stated, as the Board of Appeal observed, that although that technology has no central authority, as is apparent from the websites mentioned by the examiner, to which that Board of Appeal referred, islands which are favourable to blockchain technology have sought to create an attractive environment for undertakings. Consequently, the Board of Appeal did not err in finding that the mark applied for constituted a promotional message referring to the status of an island as a blockchain hub.
58      Secondly, as regards the use of the expression ‘blockchain island’ on the market, it must be stated that the Board of Appeal found, in paragraph 19 of the contested decision, that the term ‘blockchain’ was generic with regard to the goods and services that used that technology. It must also be pointed out that the Board of Appeal found, in paragraph 21 of that decision, that that expression was used to refer to islands which had a role as a hub for blockchain technology companies. In that context, it must be stated that, contrary to what the applicant submits, that expression is likely to be used in trade in order to explain the nature of the goods and services at issue, namely goods and services that go along with blockchain technology and are offered to consumers from an island with an environment that is favourable to that technology, and not in order to designate the commercial origin of those goods and services.
59      In the third place, as regards the distinctive character of the mark applied for with regard to the goods and services at issue, the Board of Appeal found that, in accordance with its meaning, the sign at issue would be perceived as a clear promotional message of direct relevance to those goods and services, the specification of which did not preclude that they related to blockchain technology. It stated that, in every island context, that mark would be understood as a promotional reference to the status of the island as a hub for blockchain technology. According to the Board of Appeal, that mark merely conveyed to the relevant public the promotional message that the island, in the present case, Malta, on which the applicant was based, offered a specific legal and regulatory framework for blockchain technology, which was the subject matter of the publications in Classes 9 and 16, the conferences, workshops and training in Class 41, the legal, paralegal and registration services in Class 45 and the business, advisory, marketing, management and recruitment services in Class 35. Furthermore, it added that that mark was expressed using words in their ordinary meaning and contained nothing that was memorable, such as a play on words, a rhyme, a subliminal message, unusual syntax, an image or a symbol, and would not trigger any particular cognitive process on the part of the relevant public. It concluded that the mark at issue was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
60      The applicant submits, first, that the mark applied for is not laudatory or promotional in relation to the goods and services at issue, secondly, that it has no connection with those goods and services and, thirdly, that, to the extent that it is understood as meaning that the island of Malta has become a hub for blockchain technology, such a conclusion requires a cognitive process in the mind of the relevant public. Furthermore, it argues that that mark displays a certain originality in relation to those goods and services, as it is capable of being perceived as surprising and unexpected and, at the same time, as memorable, because the goods and services at issue have no connection with blockchain. Consequently, it takes the view that the Board of Appeal erred in finding that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
61      EUIPO disputes the applicant’s arguments.
62      In the present case, in the light of the foregoing, it must be held that a non-negligible part of the relevant public will understand the expression ‘blockchain island’ as designating an island which constitutes a hub for blockchain technology. In accordance with that meaning, and in the light of the references mentioned by the examiner, to which the Board of Appeal referred in the contested decision, references according to which certain islands provide a favourable regulatory and fiscal environment for blockchain technology in the hope of attracting undertakings and according to which service providers are available in order to enable those undertakings to benefit from that environment, the sign at issue conveys, in connection with the goods and services covered by the application for registration, a laudatory message highlighting positive details, namely that those goods and services are marketed or provided by experts on blockchain technology in an environment which is favourable to that technology.
63      As regards the ‘legal advice; legal services; legal consultancy services; advisory services relating to the law; legal research services; licensing services; paralegal services; registration services (legal); intellectual property services; company registration services; legal information services; domain names (registration of -) [legal services]; legal assistance in the drawing up of contracts; legal services in relation to the negotiation of contracts for others; legal consultation in the field of taxation; legal document preparation services; legal investigation services’ in Class 45, it must be held that, in so far as those services are connected with blockchain technology, the sign at issue conveys at most a laudatory message which is intended to highlight the positive qualities of those services, namely that they provide legal expertise with regard to blockchain within a legal and regulatory framework which is itself favourable to that technology.
64      So far as concerns the ‘training services; provision of online training; arranging conferences, workshops, and seminars; publication of training materials; arranging and conducting of conferences’ in Class 41, the sign at issue conveys the laudatory message that those services, which may relate to blockchain technology, are provided on an island which is a hub for blockchain technology.
65      With regard to the ‘electronic publications (downloadable)’ in Class 9, the ‘printed periodical publications; directory paper; printed matter; instructional and teaching material (except apparatus); printed publications’ in Class 16 and the ‘advertising; management consulting; career information and advisory services; recruitment services; public relations; market studies; providing commercial directory information via the Internet; conducting, arranging and organising trade shows; business networking services; professional recruitment services’ in Class 35, which may also relate to blockchain technology, the sign at issue conveys the laudatory message that those goods and services are intended for or provided by specialists involved in initiatives relating to blockchain on an island which is favourable to that technology.
66      As regards the ‘networking software’ in Class 9, the sign at issue will be perceived by the relevant public as highlighting the positive aspect that it is expressly designed for blockchain technology.
67      The Board of Appeal was therefore right in finding, in essence, in paragraph 26 of the contested decision, that the mark applied for merely conveyed a laudatory and promotional message, the purpose of which was to highlight the positive aspects of the goods and services at issue.
68      The Board of Appeal was also right in finding, in paragraphs 27 and 29 of the contested decision, that the mark applied for consisted of words which, in their ordinary meaning, contained nothing that was memorable and would not trigger any particular cognitive process on the part of the relevant public. Contrary to what the applicant submits, although, in accordance with the case-law referred to in paragraph 18 above, a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of the goods it covers, the sign applied for, as a whole, does not comprise any elements which might, beyond its laudatory promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods and services covered by the application for registration. In the present case, the sign at issue is a promotional slogan, because it extols a quality of the goods and services in question, namely the fact that, in purchasing them, the average consumer will enjoy the advantages connected with an environment which is favourable to blockchain technology. It does not contain any elements which might, beyond its promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for those goods and services.
69      Consequently, in view of the foregoing considerations and in the light of the information in the case file, the applicant cannot maintain that, since the sign at issue has no connection with the goods and services in question, the relevant public will not perceive it as conveying a promotional message regarding those goods and services. In the light of the meaning of that sign and in the light of the nature of those goods and services, the Board of Appeal was right in finding that it could be understood by the relevant public, in an island context which is favourable to blockchain technology, as conveying the promotional message that those goods and services are provided within a legal and regulatory framework which is favourable to blockchain technology. In that regard, it is sufficient to point out that, as is apparent from paragraph 51 above, the islands which are favourable to that technology have created advantageous regulatory and tax conditions, ranging from company registration to taxation, which are accompanied by an increase in the number of relevant service providers.
70      Furthermore, in contrast to the case which gave rise to the judgment of 20 September 2019, Multifit v EUIPO (real nature) (T‑458/18, not published, EU:T:2019:634), on which the applicant relies and in which it was held that the word sign real nature was not laudatory or promotional with regard to, inter alia, the services of ‘advertising’ and ‘marketing’ in Class 35, since they did not have a direct connection with nature, it must be stated that, in the present case, such a connection cannot be ruled out, since the promotion of blockchain technology is capable of being the subject matter, as the Board of Appeal rightly found, of the ‘advertising’ services in Class 35.
71      It follows that the mark applied for is devoid of any distinctive character with regard to the goods and services at issue and that the Board of Appeal was right in refusing to register that mark on the basis of Article 7(1)(b) of Regulation 2017/1001.
72      The applicant’s single plea must therefore be rejected as unfounded.
73      It follows from all of the foregoing that the applicant’s action must be dismissed in its entirety.
Costs
74      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 (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Setarcos Consulting ltd. to pay the costs.
Tomljenović
Schalin
Nõmm
Delivered in open court in Luxembourg on 13 October 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.