JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
12 December 2014 (*)
(Community trade mark — Application for Community word mark THE LEADERSHIP COMPANY — Absolute grounds for refusal — Descriptiveness — Lack of distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)
In Case T‑43/14,
Heidrick & Struggles International Inc., established in Chicago, Illinois (United States), represented by A. Norris, Barrister-at-Law,
applicant,
v
Office for Harmonisation in the Internal market (Trade Marks and Designs) (OHIM), represented by I. Harrington, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 10 October 2013 (Case R 338/2013-2) concerning an application for registration of the word sign THE LEADERSHIP COMPANY as a Community trade mark,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 13 January 2014,
having regard to the response lodged at the Court Registry on 24 April 2014,
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 and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 11 July 2012, the applicant, Heidrick & Struggles International Inc., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The trade mark in respect of which registration was sought was the word sign THE LEADERSHIP COMPANY.
3        The services in respect of which registration was sought are in Classes 35 and 44 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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 35: ‘Executive recruitment services; recruitment, business management and business administration consultation services’;
–        Class 44: ‘Psychological consultation services; including assisting individuals, organizations and communities identify goals and develop strategies for working towards and accomplishing those goals’.
4        By decision of 14 January 2013, the examiner refused the trade mark application for all the services pursuant to Article 7(1)(b) and (c) of Regulation No 207/2009 on the ground that the mark applied for was descriptive of those services and devoid of any distinctive character in their regard.
5        On 14 February 2013, the applicant lodged an appeal under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.
6        By decision of 10 October 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal.
7        First, the Board of Appeal considered that the appeal was directed against the refusal of registration of the sign applied for only in so far as the application for registration covered ‘executive recruitment services’ and ‘recruitment consultation services’ within the meaning of Class 35, so it had been necessary to limit the assessment of the absolute grounds for refusal invoked to the services referred to (paragraphs 9 to 14 of the contested decision).
8        Secondly, the Board of Appeal observed that the relevant public to whom the services requested were directed was composed of professional English-speaking clients, whose level of attentiveness must be expected to be high (paragraph 19 of the contested decision).
9        Thirdly, in its assessment of the absolute ground for refusal under Article 7(1)(c) of Regulation No 207/2009, the Board of Appeal considered that, while the first component of the sign applied for ‘the’ was merely a definite article, the word ‘leadership’ corresponded to ‘the action or influence necessary for the direction or organisation on effort in a group undertaking’, thus establishing a relevant connection with the services at issue, given that HR consultancy service companies, executive recruitment companies and HR provision companies look for the most talented and skilled professionals in order to meet the needs of their clients. In that regard, leadership constitutes a very desirable quality in any professional as it is decisive in the organisation of a company, office or project. In addition, in the context of the services referred to, the word ‘company’ refers to a legal person, specifically to the undertaking that provides them. Therefore, from the point of view of the relevant public, the expression ‘the leadership company’ indicates that the applicant is a company that provides leadership by offering certain services related to recruitment and coaching. That relevant public, consequently, will immediately understand that expression, without requiring any mental step, as describing a very desirable or even indispensable characteristic of the services concerned, namely, that they are aimed at searching for, selecting and recruiting professionals and executives endowed with leadership skills, and it is impossible for the sign applied for to be given an unusual, catchy or memorable character in respect of the services referred to. Lastly, having regard to the descriptive character of the sign applied for in respect of those services, it ought to be possible for the expression ‘the leadership company’ to be used by competitors of the applicant to promote their own services, no undertaking having the right to monopolise its use (paragraphs 21 to 25 and 30 to 32 of the contested decision).
10      Fourthly, the Board of Appeal considered that, essentially for the same grounds as those set out in paragraph 9 above, the sign applied for was also devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 (paragraphs 35 to 40 of the contested decision).
Forms of order sought by the parties
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
12      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      In support of its action, the applicant relies on two pleas in law, alleging infringement of Article 7(1)(c) and (b) of Regulation No 207/2009, respectively.
14      With regard to the first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, the applicant essentially claims that, from the perspective of the relevant public, taking into account the definition of the word ‘leadership’ given in paragraph 12 of the contested decision, the relationship between the sign applied for and the services concerned is far from direct and specific and cannot be established without significant further consideration. Those services relate to the act of recruitment, namely, the process of enlisting, enrolling or obtaining members, and may be used to select candidates for management roles, ‘first movers’, entry level roles or temporary or shift workers. The assessment set out in paragraph 12 of the contested decision is therefore marred by error. In the applicant’s view, the services referred to are not ‘leadership services’ and have no characteristics of leadership themselves; ‘the consumer does not actually obtain leadership from the Applicant’. According to the applicant, leadership is important not only to recruitment, but to almost all other aspects of business services. The finding set out in paragraph 25 of the contested decision is therefore also erroneous. Similarly, the Board of Appeal erred in finding, in paragraphs 29 and 30 of the contested decision, that leadership was a necessary characteristic of all candidates sought by consumers of the services at issue. Such a consumer could just as well recruit, particularly as regards lower-level employees, an individual who is more of a team player and lacks leadership abilities. Consequently, the sign applied for is not in itself capable of evoking, sufficiently directly and specifically the services at issue or a characteristic thereof in the mind of the relevant public.
15      In the context of its second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, the applicant essentially considers that the assessment of the Board of Appeal, appearing in paragraphs 39 and 40 of the contested decision, regarding the lack of distinctive character of the sign applied for is marred by error, in that it was based on the erroneous assessment of its descriptive character in respect of the services at issue.
16      OHIM disputes the applicant’s arguments and contends that the present action should be dismissed.
17      As regards the first plea, the Court recalls that the public interest underlying Article 7(1)(c) of Regulation No 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see, to that effect, judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31, and of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, paragraph 37).
18      By using, in that provision, the terms ‘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’, the EU legislature made it clear, first, that those terms must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account (judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 17 above, EU:C:2011:139, paragraph 49).
19      The fact that the Union 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. A sign can therefore 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 (judgment in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 17 above, EU:C:2011:139, paragraph 50; see, by analogy, as regards the identical provision laid down in Article 3 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989, L 40, p. 1), judgments of 4 May 1999 in Windsurfing Chiemsee, C‑108/97 and C‑109/97, ECR, EU:C:1999:230, paragraph 31, and of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraph 56).
20      The case-law has further made it clear that, for the purpose of applying Article 7(1)(c) of Regulation No 207/2009, it was necessary to consider, on the basis of the relevant meaning of the word sign at issue, whether, from the relevant public’s point of view, there was a sufficiently direct and specific relationship between the sign and the goods or services in respect of which registration was sought, which was such as to enable the public referred to immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see, to that effect, judgments of 28 June 2012 in XXXLutz Marken v OHIM, C‑306/11 P, EU:C:2012:401, paragraph 79; of 20 July in 2004 in Lissotschenko and Hentze v OHIM (LIMO), T‑311/02, ECR, EU:T:2004:245, paragraph 30; and of 14 May 2013 in Unister v OHIM (fluege.de), T‑244/12, ECR, EU:T:2013:243, paragraph 18 and the case-law cited).
21      In the present case, it must be determined whether the sign applied for, made up of the expression ‘the leadership company’, is, from the relevant public’s point of view, descriptive of ‘executive recruitment services’ and ‘recruitment consultation services’ under Class 35 or of one of their characteristics. First, those services are the only ones that the applicant had relied on in support of its action against the examiner’s decision, so that the Board of Appeal could legitimately confine its assessment to the services referred to (paragraphs 9 to 14 of the contested decision). Secondly, in its application, the applicant did not dispute that approach of the Board of Appeal and similarly confined its reasoning to those services.
22      In the first place, it should be made clear that the applicant also does not call into question the Board of Appeal’s assessment that the relevant public to whom the services sought were directed was composed of professional English-speaking clients of a high level of attentiveness (paragraph 19 of the contested decision). That assessment, taking into account the sign applied for composed of English words and the services at issue, being free of error, it must be endorsed.
23      In the second place, with regard to the services at issue, as put forward by OHIM, ‘executive recruitment services’ and ‘recruitment consultation services’ are clearly associated with an undertaking’s recruitment policy and, consequently, with the management of its human resources, especially at the highest level of its hierarchy or its executive management and with its internal organisation, and thus correspond to the recruitment and coaching services that the applicant itself provides (see paragraph 12 of the contested decision), despite the applicant’s unsupported assertion to the contrary. Thus, OHIM was likewise correct to note that those services specifically target undertakings which, with the assistance of a HR consultancy service company such as the applicant, seek to hire skilled professionals and executives (see paragraph 19 of the contested decision). In that regard, the applicant itself acknowledges that the services at issue relate to the act of recruiting, namely, the process of enlisting, enrolling or obtaining employees at all levels, including executives. In those circumstances, it cannot call into question the legality of the assessment set out in paragraph 12 of the contested decision — which, contrary to what it alleges, does not provide a definition of the word ‘leadership’ itself — according to which those services are ‘aimed at giving active advice and support to companies regarding their management and organisational needs, and in particular, by headhunting and supplying executive and other professional business leaders as well as assisting managers, executives and working teams by instilling them or honing a leadership mentality’.
24      Accordingly, it must be concluded that the assessment of the Board of Appeal concerning the services at issue is not marred by any error.
25      In the third place, with regard to the sign applied for, it must be held that the applicant does not dispute the reasoning set out in paragraphs 21 to 25 of the contested decision either, concerning the meaning of the expression ‘the leadership company’ as a whole and of its various components. There, the Board of Appeal correctly observed that the first element of the sign applied for, ‘the’, was merely a definite article and that, having regard to the services at issue, the word ‘company’ referred to a legal person, specifically to the undertaking that provided them. In addition, the Board of Appeal did not err in considering that the word ‘leadership’ meant ‘the action or influence necessary for the direction or organisation on effort in a group undertaking’, establishing a relevant connection with the services at issue, given that HR consultancy service companies, executive recruitment companies and HR provision companies look for the most talented and skilled professionals in order to meet the needs of their clients, which clearly corresponds, at least in part, to the applicant’s profile.
26      The applicant cannot call into question that assessment solely on the ground that leadership plays a role not only in the context of recruitment, but also in the context of almost every other service targeting undertakings, since the services covered in the present case are linked exclusively to recruitment. Moreover, as is indicated, essentially, in paragraph 23 of the contested decision, leadership is a very desirable skill in any professional, central to the organisation of a company, office or project. Therefore, just as is argued by OHIM, an undertaking may have recourse to the assistance of a recruitment consultancy company to that end. Furthermore, that understanding cannot be shaken by the applicant’s argument that consumers of recruitment services could also search for and hire lower-level employees who lack leadership abilities. As OHIM puts forward, in professional life and, in particular, in the context of the recruitment policy of undertakings entrusting an agency to search for and select employees, it is well known that they are more interested in the best candidates and in those who show leadership skills and not the reverse, which does not mean that they do not also take on employees with weaker profiles or lacking those skills.
27      In the fourth place, it was therefore also correct that, in paragraph 25 of the contested decision, the Board of Appeal found, essentially, that the expression ‘the leadership company’ was perceived by the relevant public as referring to an undertaking which provided recruitment and coaching in order to meet undertakings’ needs in the sphere of recruitment, or indeed in that of leadership skills, particularly by recruiting executives with those skills and by offering consultancy and recruitment services involving them. In that regard, OHIM is correct to put forward that, taking into account the high degree of attentiveness of the professional consumers concerned and with regard both to the services at issue and to the sign applied for, that interpretation prevails without any in-depth consideration or mental step and is sufficient for a sufficiently direct and specific relationship between the services and sign referred to within the meaning of the case-law cited in paragraph 20 above to be established.
28      Consequently, it must be held that the Board of Appeal was correct to conclude that, from the viewpoint of the relevant public, the sign applied for was descriptive of the characteristics of the services concerned within the meaning of Article 7(1)(c) of Regulation No 207/2009.
29      Consequently, the second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, must, in any event, be rejected as ineffective, since it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a Community trade mark (see judgments of 19 September 2002 in DKV v OHIM, C‑104/00 P, ECR, EU:C:2002:506, paragraph 29, and of 9 July 2008 in Coffee Store v OHIM (THE COFFEE STORE), T‑323/05, EU:T:2008:265, paragraph 49).
30      Having regard to all the foregoing considerations, the first and second pleas in law must be rejected and the action must be dismissed in its entirety.
Costs
31      Under Article 87(2) 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 form of order sought by OHIM.
On those grounds,
THE COURT (Fourth Chamber)
hereby:
1.      Dismisses the action.
2.      Orders Heidrick & Struggles International Inc. to pay the costs.
Prek
Labucka
Kreuschitz
Delivered in open court in Luxembourg on 12 December 2014.
[Signatures]
* Language of the case: English.