ORDER OF THE GENERAL COURT (Tenth Chamber)
22 November 2022 (*)
(EU trade mark – Application for the EU word mark HYPERLIGHTEYEWEAR – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EU) 2017/1001 – Equal treatment – Action manifestly lacking any foundation in law)
In Case T‑801/21,
Fieldpoint (Cyprus) LTD, established in Nicosia (Cyprus), represented by P. Rath and S. Gebele, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite and T. Klee, acting as Agents,
defendant,
THE GENERAL COURT (Tenth Chamber),
composed, at the time of the deliberations, of A. Kornezov, President, E. Buttigieg (Rapporteur) and K. Kowalik-Bańczyk, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Fieldpoint (Cyprus) LTD, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 October 2021 (Case R 1165/2021-2) (‘the contested decision’).
Background to the dispute
2        On 10 November 2020, the applicant filed with EUIPO an application for registration of an EU trade mark in respect of the word sign HYPERLIGHTEYEWEAR.
3        The goods in respect of which registration was sought are in Classes 3, 5, 9, 10 and 25 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 3: ‘Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery; essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations’;
–        Class 5: ‘Pharmaceuticals; food supplements; vitamin drinks; medicinal preparations and substances; medicinal drinks; dietary supplements; dietary supplemental drinks’;
–        Class 9: ‘Sunglasses; goggles for sports; anti-glare glasses; spectacles; spectacle lenses’;
–        Class 10: ‘Surgical, dental and veterinary apparatus and instruments; light sources for medical use; orthopedic articles; polarized light therapy apparatus; apparatus for phototherapy; visible light treatment instruments’;
–        Class 25: ‘Clothing; footwear; headgear’.
4        By decision of 5 May 2021, the examiner rejected the application for registration of that mark, in so far as it covered the goods in Class 9 (‘the goods in question’), on the basis of Article 7(1)(b) and (c) and (2) of 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).
5        On 2 July 2021, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
6        By the contested decision, the Board of Appeal upheld the examiner’s decision and rejected the appeal on the ground that the sign in respect of which registration as an EU trade mark had been sought afforded a sufficiently close link with the goods in question and was therefore descriptive, at least for the relevant English-speaking public. Consequently, the Board of Appeal found that the mark applied for was caught by the absolute ground for refusal in Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        declare the mark applied for to be eligible for registration;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
10      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to that article, to give a decision without taking further steps in the proceedings, even though one of the parties has requested that a hearing be held (see order of 28 June 2022, Compass Tex v EUIPO (Trusted Handwork), T‑704/21, not published, under appeal, EU:T:2022:410, paragraph 11 and the case-law cited).
11      In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 7(1)(b) of Regulation 2017/1001, secondly, infringement of Article 7(1)(c) of that regulation and, thirdly, infringement of the principle of equal treatment.
12      It is appropriate to examine in turn the second plea, the first plea and then the third plea.
The second plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
13      By the second plea, the applicant submits that the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001, on the ground that it found that the sign in respect of which registration as an EU trade mark had been sought was a descriptive indication with regard to the goods in question.
14      EUIPO disputes the applicant’s arguments.
15      Article 7(1)(c) of Regulation 2017/1001 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’ must not be registered. Furthermore, Article 7(2) of that regulation states that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
16      According to the case-law, Article 7(1)(c) of Regulation 2017/1001 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as EU trade marks. That provision pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (judgment of 19 December 2019, Amazon Technologies v EUIPO (ring), T‑270/19, not published, EU:T:2019:871, paragraph 41).
17      Those signs or indications are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37), thus enabling the consumer who acquires the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (see judgment of 5 July 2016, Bundesverband Souvenir – Geschenke – Ehrenpreise v EUIPO – Freistaat Bayern (NEUSCHWANSTEIN), T‑167/15, not published, EU:T:2016:391, paragraph 17 and the case-law cited).
18      Furthermore, the signs and indications referred to in Article 7(1)(c) of Regulation 2017/1001 are those which may serve in normal usage from the target public’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (see judgment of 19 December 2019, ring, T‑270/19, not published, EU:T:2019:871, paragraph 43 and the case-law cited).
19      For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
20      Lastly, it must also be borne in mind that, whether a sign is descriptive can be assessed only, first, by reference to the goods or services concerned and, secondly, by reference to the understanding which the relevant public has of it (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
21      It is in the light of those considerations that the second plea must be examined.
22      It must be pointed out at the outset, as regards the definition of the relevant public, that the Board of Appeal found, in the light of the fact that the sign at issue consisted of English terms, namely of ‘hyper’, ‘light’ and ‘eyewear’, that it was necessary to focus on the English-speaking part of the European Union. Furthermore, the Board of Appeal found that the relevant public consisted both of the general public and of professionals, the level of attention of which was average to high with regard to the goods in question in Class 9. The parties do not dispute those assessments.
23      In the first place, as regards the issue of whether the word combination ‘hyperlighteyewear’ is descriptive, it must be stated that the terms ‘hyper’, ‘light’ and ‘eyewear’ of which it consists are juxtaposed in a way which complies with the rules of English grammar, a point which the applicant does not dispute. The first two terms, namely ‘hyper’ and ‘light’, are attributive adjectives which are placed one after the other before the term ‘eyewear’, which they qualify, namely ‘sunglasses; goggles for sports; anti-glare glasses; spectacles; spectacle lenses’ in Class 9. As regards the meaning of the mark applied for as a whole, it must be pointed out that the Board of Appeal found, after defining each of the terms of which it consists, that the relevant English-speaking consumer would understand it as referring to eyewear that is very light or to the fact that the goods covered are extremely lightweight eyewear. That assessment was not disputed by the parties during the administrative proceedings and cannot, moreover, be called into question by the applicant’s claim that the word ‘hyper’ is not generally used to describe the goods in question, but relates more to a human activity. It is sufficient to point out that that word means ‘above’, ‘more than normal’, ‘a lot’. In that regard, it must also be borne in mind that it is not necessary, for it to be caught by the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001, that the sign in question actually be in use at the time of the application for registration in a way that is descriptive, but it is sufficient that the sign could be used for such purposes (see judgment of 18 January 2018, LG Electronics v EUIPO (Dual Edge), T‑804/16, not published, EU:T:2018:8, paragraph 20 and the case-law cited).
24      The applicant’s arguments are not capable of calling that assessment into question.
25      First, as regards the applicant’s argument that the sign at issue is a neologism which is not contained in any dictionaries and consists of an unusual combination which has no immediate meaning with regard to the goods covered, it must be pointed out that, according to settled case-law, a trade mark consisting of a neologism or of a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation 2017/1001, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That presupposes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings arising from its constituent elements, with the result that it is more than the sum of its parts. In that connection, an analysis of the word combination in question in the light of the appropriate lexical and grammatical rules is also relevant (see judgments of 28 April 2021, Freistaat Bayern v EUIPO (GEWÜRZSOMMELIER), T‑348/20, not published, EU:T:2021:228, paragraph 39 and the case-law cited, and of 13 July 2022, dennree v EUIPO (BioMarkt), T‑641/21, not published, EU:T:2022:446, paragraph 30 and the case-law cited).
26      As regards the word sequence ‘hyperlighteyewear’, it must be stated that, even if it is considered to be a neologism, it does not deviate from linguistic usage, including from an English grammatical perspective, with the result that the consumer will not recognise in that word sequence more than the mere combination of the word elements ‘hyper’, ‘light’ and ‘eyewear’ which have, as a whole, the meaning of eyewear that is very light. Consequently, it must be held that the word sign HYPERLIGHTEYEWEAR is not more than the combination of meanings arising from its constituent elements, with the result that there is no perceptible difference between the alleged neologism or word and the mere sequence of its parts.
27      Secondly, as regards the applicant’s argument that the relevant public will not break the mark down into separate elements but will regard it as a whole, it must be pointed out, as the Board of Appeal stated in paragraphs 33 and 41 of the contested decision, that, although it is common in English to create neologisms by joining together several terms each of which has a meaning, the fact remains that the absence of a hyphen or a space between the three words composing the mark applied for does not constitute a creative aspect which can make that mark, taken as a whole, capable of distinguishing the goods of one undertaking from those of other undertakings (see, to that effect, judgment of 13 November 2008, Duro Sweden v OHIM (EASYCOVER), T‑346/07, not published, EU:T:2008:496, paragraph 52 and the case-law cited).
28      In this connection, it must also be pointed out that, as regards the fact, relied on by the applicant, that the mark applied for does not itself appear in dictionaries, it is apparent from the case-law that EUIPO is under no obligation to prove that the sign in respect of which registration as an EU trade mark is sought is included in dictionaries (see judgment of 14 December 2018, Dermatest v EUIPO (ORIGINAL excellent dermatest 5-star-guarantee.de CLINICALLY TESTED), T‑802/17, not published, EU:T:2018:971, paragraph 38 and the case-law cited). Furthermore, the registrability of a sign as an EU trade mark must be assessed solely on the basis of the relevant EU legislation, as interpreted by the EU judicature. It is therefore sufficient that the Board of Appeal applied the descriptiveness test, as interpreted by the case-law, in order to reach its decision, and it was not obliged to justify its action by producing evidence (see judgment of 28 April 2021, GEWÜRZSOMMELIER, T‑348/20, not published, EU:T:2021:228, paragraph 40 and the case-law cited). Accordingly, the Board of Appeal was right in finding, in paragraph 42 of the contested decision that, even though the word formation applied for was not as such found in dictionaries, it did not deviate from everyday linguistic usage, including from a grammatical perspective, and was directly comprehensible for the relevant English-speaking public.
29      Consequently, in the light of the foregoing considerations, the Board of Appeal was right in finding that the relevant public would understand the word combination ‘hyperlighteyewear’ as having the meaning of eyewear that is very light or extremely lightweight eyewear.
30      In the second place, as regards the relationship between the meaning of the mark applied for and the goods in question, it must be pointed out, as the Board of Appeal observed in paragraphs 35 and 36 of the contested decision, that the word combination ‘hyperlighteyewear’ describes the goods in question. The noun ‘eyewear’ is a direct reference to those goods, which are described as particularly light by the two attributive adjectives ‘hyper’ and ‘light’. Consequently, the Board of Appeal was right in finding that the mark applied for was, because of its meaning, descriptive of the goods in question.
31      That finding is not in any event called into question by the applicant’s argument that the relevant public does not make an immediate connection between the goods in respect of which registration has been sought and the mark applied for on account of that mark’s lack of meaning.
32      In that regard, it must be pointed out that it is apparent from well-established case-law that the relevant public will understand the meaning produced by a sign which is composed either of several apparently separate word elements or of a single word element by grouping several words together when that understanding requires no particular intellectual effort (see, to that effect, judgment of 28 March 2019, Robert Bosch v EUIPO (Simply. Connected.), T‑251/17 and T‑252/17, EU:T:2019:202, paragraph 62 and the case-law cited). In the present case, it has been held in paragraph 29 above that the terms ‘hyper’, ‘light’ and ‘eyewear’, grouped together in the word combination ‘hyperlighteyewear’, will be understood as referring to eyewear that is very light or to the fact that the goods are extremely lightweight eyewear. It follows that the relevant English-speaking public will spontaneously understand, without further thought, that the sign in respect of which registration as an EU trade mark has been sought refers to the goods in question.
33      The applicant’s contention that the word combination ‘hyperlighteyewear’ would not be used by trade circles to designate the goods in question in Class 9 cannot therefore succeed. As has already been pointed out in paragraph 23 above, it is not necessary that the sign in question, for it to be caught by the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001, actually be in use at the time of the application for registration in a way that is descriptive, but it is sufficient that the sign could be used for such purposes (see judgment of 18 January 2018, Dual Edge, T‑804/16, not published, EU:T:2018:8, paragraph 20 and the case-law cited).
34      Lastly, as regards the applicant’s argument that the Board of Appeal did not provide any evidence of the descriptiveness of the mark applied for by means of evidence of use, it must be pointed out that the Board of Appeal relied on the dictionary definitions of the three terms comprising that mark and, on that basis, assessed the meaning of the word combination as a whole as being that of eyewear that is very light or extremely lightweight eyewear. It therefore found, in the light of the meaning of the mark applied for, that that mark was descriptive with regard to the goods in question. Furthermore, the various websites to which the applicant refers, since they concern the term ‘hyperlight’, are not relevant in the present case.
35      Consequently, the Board of Appeal was right in finding, contrary to what the applicant submits, that the mark applied for was descriptive with regard to the goods in question and was therefore caught by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001.
36      The second plea must be therefore be rejected as manifestly unfounded.
The first plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
37      According to settled case-law, it is apparent from the wording of Article 7(1) of Regulation 2017/1001 that 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 an EU trade mark (see judgment of 9 March 2022, Telefónica Germany v EUIPO (LOOP), T‑132/21, not published, EU:T:2022:124, paragraph 109 and the case-law cited).
38      Since it has just been held that the Board of Appeal was right in finding that the absolute ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001 precluded registration of the mark applied for, it is not necessary to rule on the merits of the plea alleging infringement of Article 7(1)(b) of that regulation.
39      The first plea must therefore be rejected as ineffective.
The third plea, alleging infringement of the principle of equal treatment
40      By the third plea, the applicant contends that, in response to other applications for registration of EU trade marks, EUIPO authorised the registration of word signs consisting, as such or in combination with other terms, of the word element ‘hyper’, ‘light’ or ‘eyewear’, including a sequence of words which have been joined together, such as ‘hyperlight’. In that regard, it submits that the Board of Appeal should have taken into account the registration of comparable earlier trade marks so as to allow the mark applied for to proceed to registration and that, by failing to do so, it infringed the principle of equal treatment.
41      EUIPO disputes the applicant’s arguments.
42      It must be stated, in the light of the reply given in the context of the second plea, that the present application for registration is caught by one of the grounds for refusal laid down in Article 7(1) of Regulation 2017/1001.
43      That finding cannot be called into question by the applicant’s argument alleging, in essence, that EUIPO has registered earlier marks which are comparable to the sign constituting the mark applied for.
44      In that regard, it must be borne in mind that EUIPO is under a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration. In the light of those two principles, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark 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 an EU trade 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 (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77 and the case-law cited).
45      In the present case, it is apparent that, contrary to what may have been the case with regard to certain earlier trade mark applications, the registration of the mark applied for is caught, in the light of the goods in question and the perception of the relevant public, by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001.
46      Furthermore, it must be pointed out that none of the comparable earlier marks referred to by the applicant in its application corresponds to the mark applied for or specifically concerns all of the goods in question in the present case. By way of example, it can be pointed out that the registration of the marks HYPER, LIGHT or Hyper Express in respect of software, that of the mark HYPERFLASK in respect of the goods laboratory glassware or that of the marks SEE EYEWEAR in respect of, inter alia, optical frames for eyeglasses and sunglasses and PEOPLE’S EYEWEAR in respect of, inter alia, spectacles (optics) and eyeglasses, spectacle and eyeglass frames and spectacle and eyeglass cases, all in Class 9, cannot support the conclusion that the mark applied for is registrable in respect of the goods in question. In that regard, it must be stated, as the Board of Appeal correctly did in paragraph 51 of the contested decision, that what is involved here concerns decisions of the examiner and not of the Boards of Appeal, and that it would be contrary to its task as a review body, as defined in recital 30 and Articles 66 to 71 of Regulation 2017/1001, for its competence to be limited to complying with decisions of first-instance adjudicating bodies (see judgment of 28 June 2017, Colgate-Palmolive v EUIPO (AROMASENSATIONS), T‑479/16, not published, EU:T:2017:441, paragraph 42 and the case-law cited). Consequently, the Board of Appeal did not infringe the principle of equal treatment by refusing registration of the mark applied for.
47      The third plea must therefore be rejected as manifestly unfounded.
48      In the light of the foregoing, the action must be dismissed in its entirety as manifestly lacking any foundation in law, without it being necessary to rule on the admissibility of the applicant’s second head of claim requesting that the mark applied for be declared eligible for registration.
Costs
49      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
50      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 (Tenth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Fieldpoint (Cyprus) LTD shall pay the costs.
Luxembourg, 22 November 2022.
E. Coulon
A. Kornezov
Registrar
President
*      Language of the case: English.