JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
12 May 2016 (*)
(EU trade mark — Application for the EU word mark ULTIMATE FIGHTING CHAMPIONSHIP — Absolute grounds for refusal — Lack of distinctive character — Descriptiveness — Distinctive character acquired through use — Obligation to state reasons — Relevant public — Article 7(1)(b) and (c), (2) and (3) and Article 75 of Regulation (EC) No 207/2009)
In Case T‑590/14,
Zuffa, LLC, established in Las Vegas, Nevada (United States), represented by S. Malynicz, Barrister, and K. Gilbert and C. Balme, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Bullock, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 19 May 2014 (Case R 1425/2013-2), regarding an application for registration of the sign ULTIMATE FIGHTING CHAMPIONSHIP as an EU trade mark,
THE GENERAL COURT (Sixth Chamber),
composed of S. Frimodt Nielsen (Rapporteur), President, F. Dehousse and A.M. Collins, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 7 August 2014,
having regard to the response lodged at the Court Registry on 6 October 2014,
further to the hearing on 3 December 2015,
gives the following
Judgment
Background to the dispute
1        On 18 October 2012, the applicant, Zuffa, LLC, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
2        Registration as a trade mark was sought for the word mark ULTIMATE FIGHTING CHAMPIONSHIP.
3        The goods and services in respect of which registration was sought are, after amendment, in Classes 9, 16, 28 and 41 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:
–        ‘pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital video discs; digital versatile discs; electronic storage media; USB flashdrives; CD-ROM discs all featuring mixed martial arts competitions, events and programs; computer game programs; computer games; computer software; motion picture films in the field of mixed martial arts; mp3 and mp4 recordings; electronic publications; electronic and digital music, sound, image and video recordings’ in Class 9;
–        ‘books and printed instructional and teaching manuals in the field of sports and entertainment; general feature and sports and entertainment magazines; fitness and entertainment magazines; newspapers in the field of sports, fitness and entertainment; calendars; mounted and unmounted photographs; trading cards; books and journals featuring athletic contests and games; catalogues for the sale of athletic merchandise; cartoon prints on paper and cardboard; blank picture postcards; note cards; greeting cards; adult and children’s activity and colouring books; puffy stickers; adhesive stickers; photograph albums; memorandum books; posters; event programs; stickers; decals and windshield decals strips; collector decals and collector decals with display sheets; bumper stickers and strips; colour lithograph sticker books; postcard books; holographic greeting and trading cards; comic books; rubber stamps for impressing illustrated images; score, check and autograph books’ in Class 16;
–        ‘action figures and accessories therefor; action skill games; electric action toys; target games; toy figurines; hand-held electronic games; playing cards; computer game accessories and controllers’ in Class 28;
–        ‘live stage shows; presentation of live performances; amusement park and theme park services; entertainer services; pleasure-ground services; entertainment services rendered in or relating to theme parks; production, presentation, distribution, and rental of television and radio programs; production, presentation, distribution and rental of motion picture films; production, presentation, distribution and rental of sound and video recordings; entertainment information; production of entertainment shows and interactive programs for distribution via television, cable, satellite, audio and video media, cartridges, laser discs, computer discs and electronic means; provision of entertainment and news via communication and computer networks; provision of information relating to mixed martial arts via communication and computer networks; providing news and information in the fields of sports, fitness and mixed martial arts via communication and computer networks’ in Class 41.
4        By letter of 14 November 2012, containing her observations, the EUIPO examiner informed the applicant that there were grounds which could preclude, at least in part, the registration of the mark applied for. The examiner proposed to partially refuse registration of the mark applied for, in respect of the goods in Classes 9, 16 and 28 covered by the application for registration, on the basis of the absolute ground for refusal set out in Article 7(1)(b) and (2) of Regulation No 207/2009. She also proposed to refuse registration of the mark applied for, in respect of all the services in Class 41, on the basis of the absolute grounds for refusal set out in Article 7(1)(b) and (c) and (2) of Regulation No 207/2009.
5        By letters of 12, 14 and 26 March 2013, the applicant disputed that the absolute ground set out in Article 7(1)(b) of Regulation No 207/2009 could legitimately be applied in the present case. Furthermore, it submitted evidence with the aim of proving that the mark applied for had, for the purposes of Article 7(3) of that regulation, acquired distinctive character through use.
6        By decision of 27 May 2013, the examiner, pursuant to Article 37 of Regulation No 207/2009, rejected the trade mark application in respect of all the goods in Class 9, all the goods in Class 16, with the exception of blank picture postcards, note cards, greeting cards and holographic greeting cards, all the goods in Class 28, with the exception of playing cards and computer game controllers, and all the services in Class 41, on the ground (as regards the services in Class 41) that the mark applied for was descriptive and also (as regards all the goods and services covered by the application for registration) devoid of any distinctive character and could not be registered pursuant to Article 7(1)(b) and (c) and (2) of Regulation No 207/2009.
7        On 26 July 2013, the applicant filed a notice of appeal, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the examiner. In support of its appeal, it provided additional evidence to demonstrate that the mark applied for had, for the purposes of Article 7(3) of Regulation No 207/2009, acquired distinctive character through use.
8        By decision of 19 May 2014 (Case R 1425/2013-2) (‘the contested decision’), which was notified on 28 May 2014, the Second Board of Appeal of EUIPO dismissed the applicant’s appeal. By contrast with the examiner’s reasoning, the Board of Appeal found that the mark was descriptive of all the goods and services at issue and that it could be deduced from that descriptiveness that the mark applied for was also devoid of any distinctive character in respect of all of those goods and services. The Board of Appeal also found that it had not been proved that the mark applied for had acquired distinctive character through use.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
11      In support of its action, the applicant submits preliminary considerations relating to the statement of reasons on which the contested decision is based and to the Board of Appeal’s examination of the evidence. It puts forward three pleas in law, the first alleging infringement of the obligation to state reasons, the second alleging infringement of Article 7(1)(b) and (c) of Regulation No 207/2009 and the third alleging infringement of Article 7(3) of that regulation.
The preliminary considerations submitted by the applicant and the first plea, alleging failure to state reasons
12      As a preliminary point, the applicant observes that the contested decision contains numerous errors and omissions, which show the carelessness and superficiality of the reasoning in the contested decision.
13      In the context of the first plea, the applicant maintains that, in adopting general reasoning in relation to each class of goods or services, the Board of Appeal did not provide an adequate statement of reasons for the contested decision. It claims that the Board of Appeal thus repeated the same error as that which led the Court to annul, for that reason, an analogous decision relating to another application for the EU word mark ULTIMATE FIGHTING CHAMPIONSHIP (judgment of 2 April 2009 in Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100).
14      However, the applicant asks the Court not to annul the contested decision on that ground, but requests that it do so on the basis of the second and third pleas.
15      EUIPO disputes those arguments.
16      Under Article 75 of Regulation No 207/2009, decisions of EUIPO must state the reasons on which they are based and are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. In addition, Rule 50(2)(h) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, provides that the Board of Appeal’s decision must contain the reasons. The obligation to state reasons set out in those provisions has the same scope as that laid down in Article 296 TFEU (judgment of 28 April 2004 in Sunrider v OHIM — Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44), T‑124/02 and T‑156/02, EU:T:2004:116, paragraph 72; see also, judgment of 7 September 2006 in L & D v OHIM — Sämann (Aire Limpio), T‑168/04, EU:T:2006:245, paragraph 113 and the case-law cited).
17      It is settled case-law that the statement of reasons required by Article 296 TFEU must set out clearly and unequivocally the reasoning of the body which adopted the act in question. Accordingly, the duty incumbent on the Board of Appeal to set out the reasons for its decisions has two purposes: first, to allow interested parties to know the reasons for the measures taken so as to enable them to protect their rights and, second, to enable the Courts of the European Union to review the legality of those decisions (see judgment of 28 April 2004 in VITATASTE and METABALANCE 44 (T‑124/02 and T‑156/02, EU:T:2004:116, paragraph 73 and the case-law cited), and judgment of 7 September 2006 in Aire Limpio (T‑168/04, EU:T:2006:245, paragraph 114 and the case-law cited)).
18      Whether the statement of reasons for a decision satisfies those requirements is a matter to be assessed by reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see judgment of 28 April 2004 in VITATASTE and METABALANCE 44 (T‑124/02 and T‑156/02, EU:T:2004:116, paragraph 73 and the case-law cited)).
19      In that regard, under Article 4 of Regulation No 207/2009, the decisive factor for a sign capable of being represented graphically to be eligible for registration as an EU trade mark is its capacity to distinguish the goods of one undertaking from those of another. It follows, in particular, that the absolute grounds for refusal set out in Article 7(1)(b) and (c) of that regulation, respectively the lack of distinctive character and the descriptiveness of the sign, can be assessed only in relation to the goods or services in respect of which registration of the sign is sought (see judgments of 31 January 2001 in Taurus-Film v OHIM (Cine Action), T‑135/99, EU:T:2001:30, paragraph 25 and the case-law cited, and Taurus-Film v OHIM (Cine Comedy), T‑136/99, EU:T:2001:31, paragraph 25 and the case-law cited).
20      Consequently, the existence of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation No 207/2009 must be specifically assessed, taking account of all the relevant facts and circumstances, by reference, first, to the goods or services in respect of which registration has been sought and, second, to the perception of the relevant persons, namely the consumers of those goods or services (see judgment of 8 June 2005 in Wilfer v OHIM (ROCKBASS), T‑315/03, EU:T:2005:211, paragraph 51 and the case-law cited; judgment of 13 June 2007 in IVG Immobilien v OHIM (I), T‑441/05, EU:T:2007:178, paragraph 41; see also, by analogy, judgment of 12 February 2004 in Henkel, C‑218/01, EU:C:2004:88, paragraphs 50 and 51).
21      It must be borne in mind, as the applicant observes, that, in two judgments of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING) (T‑379/05, not published, EU:T:2009:99), and ULTIMATE FIGHTING CHAMPIONSHIP (T‑118/06, EU:T:2009:100), the Court annulled, on the ground that they failed to state reasons, two decisions of the Boards of Appeal of EUIPO refusing registration of the word marks ULTIMATE FIGHTING and ULTIMATE FIGHTING CHAMPIONSHIP.
22      As regards the application for the mark ULTIMATE FIGHTING CHAMPIONSHIP, which sign was identical to that in respect of which registration is sought in the present case, the Court held that the trade mark application covered more than 215 goods falling within four separate classes of the Nice Agreement, as well as at least 13 kinds of different services. The Court pointed out that the goods and services covered by the trade mark which had been applied for demonstrated such differences between them, by reason of their nature, characteristics, intended purpose and methods of marketing, that they could not be regarded as constituting a homogenous category that would allow the Board of Appeal to adopt a general statement of reasons with regard to them. The Court further stated that the Board of Appeal had merely distinguished between, on the one hand, the services in Class 41 for which it had indicated that the trade mark applied for was descriptive and, on the other hand, all the goods covered by that trade mark application for which it had indicated that the trade mark applied for might not be regarded as descriptive, but that it was in any event devoid of distinctive character, since it would be perceived, not as an indicator of origin, but as a generic term identifying a sporting event. The Court held in that case that the heterogeneity of the services and, even more so, of the goods covered by the mark which had been applied for was such that the statement of reasons set out by the Board of Appeal was excessively general and abstract, regard being had to the nature and characteristics of those goods and services. It therefore annulled the decision of the Board of Appeal (judgment of 2 April 2009 in ULTIMATE FIGHTING CHAMPIONSHIP (T‑118/06, EU:T:2009:100, paragraphs 29 to 36)).
23      In the present case, the applicant criticises two aspects of the statement of reasons for the contested decision, namely, first, the use, which it submits is improper, of general reasoning and, secondly, insufficient reasoning as regards some of the evidence submitted by it in order to prove that the mark applied for had acquired distinctive character through use.
24      In the first place, it must be pointed out that the circumstances of the present case differ from those of the earlier case which gave rise to the judgment of 2 April 2009 in ULTIMATE FIGHTING CHAMPIONSHIP (T‑118/06, EU:T:2009:100).
25      In the present case, the Board of Appeal, after stating, in paragraph 23 of the contested decision, that, for the relevant public, the sign ULTIMATE FIGHTING CHAMPIONSHIP would be understood as denoting ‘the highest, best or most extreme combat in the form of a contest or a series of contests held to determine a champion’, found, in paragraph 26 of that decision, that, as regards the goods in Class 9 in respect of which registration had been refused, the relevant public would perceive the mark applied for ‘as denoting that the various types of data carriers, software, computers games, publications and recordings concerned w[ould] contain, involve, or relate to the highest, best or most extreme (“ultimate”) combat (“fighting”) in the form of a contest or a series of contests held to determine a champion (“championship”)’. The Board of Appeal deduced from that that ‘the expression as a whole contain[ed] obvious and direct information in relation to the goods concerned in Class 9’.
26      In that regard, it must be held that the goods at issue in Class 9 (see paragraph 3 above) are all data support media and that, consequently, the statement of reasons provided by the Board of Appeal is sufficient to understanding the reasoning which led to its finding that, as regards those goods, the mark applied for was descriptive. Those goods have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the contested decision, first, to explain adequately the reasoning followed by the Board of Appeal for each of the goods belonging to that category and, second, to be applied without distinction to each of them.
27      The same findings are valid as regards the goods at issue in Class 16. As regards those goods, the Board of Appeal stated, in paragraph 27 of the contested decision, that the mark applied for ‘in relation to printed information, books, magazines, newspapers, calendars, photos, cartoons, stickers, cards, decals, stamps w[ould] be perceived by the relevant public as indicating that they w[ould] discuss, involve or relate to the highest, best or most extreme combat in the form of a contest or a series of contests held to determine a champion, i.e. the “ultimate fighting championship”’.
28      The goods at issue in Class 16 (see paragraph 3 above), taking account of the examiner’s partial acceptance of the application in respect of some of those goods (see paragraph 6 above), are all printed media, which may contain information relating to the ‘highest, best or most extreme combat in the form of a contest or a series of contests held to determine a champion’. Consequently, the explanations given by the Board of Appeal in paragraph 27 of the contested decision make it possible to understand, for each of the goods at issue, the reasons why the Board of Appeal took the view that the mark applied for was descriptive.
29      In paragraph 28 of the contested decision, the Board of Appeal stated that, as regards the goods at issue in Class 28, the mark applied for would ‘clearly be perceived by the relevant public as that the figures, toys and games involved relate[d] to or involve[d] the highest, best or most extreme combat in the form of a contest or a series of contests held to determine a champion’. It is also clear that the goods at issue in paragraph 28 (see paragraph 3 above) are all figures, toys or games and that the statement that the mark applied for will be perceived as meaning that those goods ‘relate to or involve the highest, best or most extreme combat in the form of a contest or a series of contests held to determine a champion’ makes it possible to understand the reasoning which led to the Board of Appeal’s finding that, as regards those goods, the mark applied for was descriptive.
30      Lastly, the Board of Appeal stated, in paragraph 29 of the contested decision, that in respect of the services at issue in Class 41, ‘the relevant public w[ould] perceive the mark applied for in relation to the various forms of shows, entertainment, performances, programs, productions of recordings, news and information w[ould] concern, contain or somehow relate to the highest, best or most extreme combat in the form of a contest or a series of contests held to determine a champion’.
31      The services at issue in Class 41 (see paragraph 3 above) all concern forms of shows and entertainment or information programmes and the statement that the relevant public will perceive them as concerning, containing or somehow relating to ‘the highest, best or most extreme combat in the form of a contest or a series of contests held to determine a champion’ makes it possible to understand the reasons why the Board of Appeal found that the mark applied for was, as regards those goods, descriptive.
32      It is apparent from the foregoing that, for each of the goods and services in respect of which registration was sought, the Board of Appeal’s reasoning that the mark applied for is descriptive was sufficiently explained in the contested decision, in spite of the use of general reasoning. Similarly, the Board of Appeal stated that the lack of distinctive character of the mark applied for was necessarily to be deduced from its descriptiveness. Irrespective of whether such a deduction is well founded or not — which assessment forms part of the review of the merits of the contested decision and therefore cannot be addressed in the context of the examination of the first plea — the statement of reasons for the contested decision in that regard is also sufficient to understand the reasoning which led the Board of Appeal to also refuse registration on the basis of Article 7(1)(b) of Regulation No 207/2009.
33      Such a finding cannot be called into question by the assessments contained in the judgment of 2 April 2009 in ULTIMATE FIGHTING CHAMPIONSHIP (T‑118/06, EU:T:2009:100). In that case, as regards the goods in respect of which registration was sought, the Board of Appeal did not, in adopting a general statement of reasons in respect of more than 215 highly heterogeneous goods, including, for example, diaper sets and crib toys, rely on the descriptiveness of the mark ULTIMATE FIGHTING CHAMPIONSHIP, but on its lack of distinctive character. Furthermore, the services in respect of which registration was sought were defined in a markedly less specific way than in the present case. Accordingly, the goods and services covered by the application for registration which gave rise to the judgment of 2 April 2009 in ULTIMATE FIGHTING CHAMPIONSHIP (T‑118/06, EU:T:2009:100), were considerably more heterogeneous that the goods and services at issue in the present case.
34      Consequently, the applicant’s argument that the Board of Appeal, by using general reasoning in relation to each category of goods and services, did not provide an adequate statement of reasons for the contested decision must be rejected.
35      In the second place, the applicant complains that the Board of Appeal did not express a view on some of the evidence it provided in order to prove that its mark had acquired distinctive character through use.
36      In so far as that argument concerns the statement of reasons for the contested decision, it must be borne in mind that, according to settled case-law, the statement of reasons required by Article 296 TFEU, for the application of which Article 75 of Regulation No 207/2009 is a specific detailed rule (judgment of 28 April 2004 in VITATASTE and METABALANCE 44 (T‑124/02 and T‑156/02, EU:T:2004:116, paragraph 72); see also, judgment of 7 September 2006 in Aire Limpio (T‑168/04, EU:T:2006:245, paragraph 113 and the case-law cited)), must be appropriate to the act in question and must set out clearly and unequivocally the reasoning of the body which adopted that act, in such a way as to enable the interested parties to ascertain the reasons for the measure taken and to enable the Court having jurisdiction to exercise its power of review. The requirements to be satisfied by the statement of reasons depend on the circumstances of each case, in particular the content of the measure in question, the nature of the reasons given and the interest which the addressees of the measure, or other parties to whom it is of direct and individual concern, may have in obtaining explanations. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgment of 2 April 1998 in Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraph 63; judgment of 30 September 2003 in Germany v Commission, C‑301/96, EU:C:2003:509, paragraph 87, and judgment of 22 June 2004 in Portugal v Commission, C‑42/01, EU:C:2004:379, paragraph 66).
37      Consequently, the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations which are of decisive importance in the context of the decision. It follows that the fact that the Board of Appeal did not reproduce all of the arguments of one party, or did not reply to each of those arguments, cannot by itself lead to a finding that the Board of Appeal refused to take them into account (judgment of 9 December 2010 in Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 46; judgment of 3 February 2011 in Gühring v OHIM (Combination of broom yellow and silver grey and combination of ochre yellow and silver grey), T‑299/09 and T‑300/09, not published, EU:T:2011:28, paragraphs 17 to 19; and judgment of 11 October 2011 in Chestnut Medical Technologies v OHIM (PIPELINE), T‑87/10, not published, EU:T:2011:582, paragraphs 39 to 41).
38      Thus, according to the case-law, in order to comply with the obligation to state reasons, the body which adopted an act is not, in general, required to express a view on all of the arguments and items of evidence submitted by an interested party in the course of the administrative proceedings, provided, however, that the details in the act in question, having regard to the legal and factual context in which that act was adopted, make it possible to understand the reasons which constitute the basis for that act. However, if — as is the case as regards whether evidence that a mark has acquired distinctive character through use has been furnished — the body which adopted the act must assess whether the interested party has discharged the burden of proof resting on it, it must take into account all the items of evidence submitted to it.
39      In that regard, the applicant complains that the Board of Appeal did not express a view either on the witness statements of Mr B., Ms W. and Mr Z. or on some of the documents in the file, without, however, identifying them precisely.
40      First, as regards the statement of Mr Z., it must be stated at the outset that it is apparent from reading the contested decision that that argument has no factual basis. In paragraph 48 of the contested decision, the Board of Appeal expressed a view on the evidential value of that document, under the name of ‘Appendix 2’, by stating that it ‘d[id] not show use of the mark applied for at all’. Such a statement of reasons, although brief, is sufficient to establish that the Board of Appeal took the evidence in question into consideration.
41      Secondly, as regards the statements of Mr B. and Ms W., it must be pointed out that they are not items of evidence as such, but statements as to the way in which, according to the applicant, the evidence provided by it should be interpreted. However, since the Board of Appeal set out its own interpretation of the evidence submitted to it for examination, it was not required to deal expressly with those statements, which it, moreover, referred to in paragraphs 8 and 13, respectively, of the contested decision. Consequently, the Court must assess whether the Board of Appeal expressed a sufficiently precise view on the items of evidence which were submitted to it.
42      Thirdly, in paragraphs 8 and 13 of the contested decision, the Board of Appeal listed the items of evidence submitted by the applicant in the course of the proceedings before the examiner and the appeal proceedings respectively. In paragraphs 45 to 49 of that decision, the Board of Appeal stated the reasons why it took the view that the evidence provided did not make it possible to establish that the mark applied for had acquired distinctive character in consequence of the use made of it. It must, however, be stated that the Board of Appeal did not expressly take a view as to the evidential value of exhibits TB25 (a content guide containing explanations regarding what the ultimate fighting championship organisation is and its links with mixed martial arts) and TB26 (the applicant’s official headed paper which includes the ULTIMATE FIGHTING CHAMPIONSHIP mark). The Board of Appeal did not, moreover, adopt an express statement of reasons as regards exhibits TB20, TB21, TB22, TB24 and TB28.
43      However, in paragraph 44 of the contested decision, the Board of Appeal adopted the findings of the examiner. Such a statement of reasons by reference is allowed by the case-law (see judgment of 9 September 2011 in Deutsche Bahn v OHIM — DSB (IC4), T‑274/09, not published, EU:T:2011:451, paragraph 44 and the case-law cited). The examiner did not expressly rule on the evidential value of each of the documents at issue. He, however, adopted a general statement of reasons in which he stated that he had carefully analysed each of the documents provided and, following that examination, had come to the conclusion that, although those documents were sufficient to prove that the applicant had used the acronym UFC in the English-speaking territories of the European Union, they did not prove the use of the mark applied for, ULTIMATE FIGHTING CHAMPIONSHIP. Such findings are sufficient to justify those made by the examiner, and then by the Board of Appeal, that the applicant has not proved that the mark applied for has been used and, a fortiori, that it has acquired distinctive character in consequence of the use made of it.
44      In view of the foregoing, the first plea, which has been examined in the light of the preliminary considerations submitted by the applicant, must be rejected.
The second plea, alleging infringement of Article 7(1)(b) and (c) of Regulation No 207/2009
The application of Article 7(1)(c) of Regulation No 207/2009
45      According to the applicant, the sign ULTIMATE FIGHTING CHAMPIONSHIP does not designate the characteristic properties of the goods and services in respect of which registration is sought, but is an arbitrary name, which is distinct from mixed martial arts. It submits that the sign ULTIMATE FIGHTING CHAMPIONSHIP is therefore capable of identifying the undertaking which is the proprietor of the mark as the commercial origin of the goods and services in question.
46      Furthermore, it maintains that some of the goods and services concerned are expressly referred to in the application for registration as being linked to mixed martial arts. It submits that in the case of those goods and services, the relevant public is not the general public, but consumers who are specifically interested in mixed martial arts. In the applicant’s view, it can be assumed that such consumers will identify the expression ‘ultimate fighting championship’ as designating a competition organised by the applicant, which is the largest undertaking in the field of mixed martial arts.
47      Lastly, it submits that even average consumers are accustomed to the use of the names of sporting competitions, like the World Cup, the Masters Golf and the Championships (Wimbledon), as trade marks in respect of goods and services which are similar to those covered by the application for registration. It takes the view that, consequently, even average consumers perceive the sign ULTIMATE FIGHTING CHAMPIONSHIP as the commercial origin of the goods and services covered by the application for registration.
48      Consequently, the applicant submits that the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 by refusing registration of the mark applied for in respect of all the goods and services at issue.
49      EUIPO disputes those arguments.
50      In the first place, it must be borne in mind that the Board of Appeal found that the mark applied for was descriptive in respect of all of the goods and services at issue.
51      Article 7(1)(c) of Regulation No 207/2009 provides that ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ must not be registered.
52      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (judgment of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31, and judgment of 27 February 2002 in Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 27; see also judgment of 15 July 2015 in Australian Gold v OHIM — Effect Management & Holding (HOT), T‑611/13, not published, EU:T:2015:492, paragraph 33 and the case-law cited).
53      Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, pursuant to Article 7(1)(c) of Regulation No 207/2009, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired 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 (judgment of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30; see also, judgment of 15 July 2015 in HOT (T‑611/13, not published, EU:T:2015:492, paragraph 34 and the case-law cited)).
54      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (judgment of 15 July 2015 in HOT (T‑611/13, not published, EU:T:2015:492, paragraph 35 and the case-law cited)).
55      Lastly, a sign’s descriptiveness can be assessed only by reference to the way in which it is understood by the relevant public and to the goods or services concerned (see judgment of 7 June 2005 in Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 26 and the case-law cited, and judgment of 15 July 2015 in HOT (T‑611/13, not published, EU:T:2015:492, paragraph 36 and the case-law cited)).
56      In the second place, as regards the definition of the relevant public, the Board of Appeal stated the following in paragraph 22 of the contested decision:
‘As the examiner considered, the mark applied for consists of three English words. In light thereof, the examination of the absolute grounds for refusal must be based on the English-speaking public in the European Union. As to the relevant public, the Board agrees with the examiner that the relevant public mainly consists of the average consumer who is reasonably well-informed and reasonably observant and circumspect. In turn, the applicant has correctly argued that in respect of those goods in Class 9 and services in Class 41 that specifically relate to “mixed martial arts”, the public is relatively specialist. In this respect, however, the Board points out that the relevant public’s high attentiveness does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, terms which are not (fully) understood by consumers of cheap, mass-consumption goods, can be grasped immediately by the specialized public, in particular if the sign is composed of words which relate to the field in which the latter public is active (see in this respect also, for example, judgment of 11 October 2011, T‑87/10, “Pipeline”, paras 27 to 28).’
57      All of those finding must be upheld. It must be pointed out that some of the goods and services covered by the application for registration are intended for a specialist public consisting of connoisseurs of mixed martial arts (‘the specific goods and services’). They are the following goods and services:
–        ‘pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital video discs; digital versatile discs; electronic storage media; USB flashdrives; CD-ROM discs all featuring mixed martial arts competitions, events and programs; motion picture films in the field of mixed martial arts’ in Class 9;
–        ‘provision of information relating to mixed martial arts via communication and computer networks; providing news and information in the fields of sports, fitness and mixed martial arts via communication and computer networks’ in Class 41.
58      As regards the ‘pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital video discs; digital versatile discs; electronic storage media; USB flashdrives; CD-ROM discs all featuring mixed martial arts competitions, events and programs’ the parties agreed at the hearing that the expression ‘all featuring mixed martial arts competitions, events and programs’ related to all the goods listed before that expression. That interpretation must be accepted. Although the goods listed are separated by semi-colons, the pronoun ‘all’ cannot relate exclusively to the ‘CD-ROM discs’.
59      In the third place, the Board of Appeal was correct in its finding that, irrespective of the degree of specialisation and level of attention of the relevant public, the mark applied for was descriptive in respect of all of the goods and services at issue.
60      In paragraphs 23 and 24 of the contested decision, the Board of Appeal stated that the sign ULTIMATE FIGHTING CHAMPIONSHIP would be perceived by the relevant public as denoting ‘the highest, best or most extreme combat in the form of a contest or a series of contests held to determine a champion’ and that the expression, taken as a whole, was not capable of having a meaning which was different from the sum of the word elements of which it consists. Such a finding, which is, moreover, not contradicted by the applicant, must be upheld.
61      The Board of Appeal was also right to state, in paragraphs 26 to 30 of the contested decision, that each of the goods and services at issue could relate to an ultimate fighting championship, which is sufficient to establish that the mark applied for is descriptive. When registration of a sign as an EU trade mark is sought without distinction for a category of goods or services as a whole and that sign is descriptive in relation to only some of the goods or services within that category, the ground for refusal in Article 7(1)(c) of Regulation No 207/2009 nevertheless prevents registration of that sign for the whole of the category concerned (see judgment of 20 November 2007 in Tegometall International v OHIM — Wuppermann (TEK), T‑458/05, EU:T:2007:349, paragraph 94 and the case-law cited, and judgment of 16 December 2010 in Fidelio v OHIM (Hallux), T‑286/08, EU:T:2010:528, paragraph 37 and the case-law cited).
62      The same is a fortiori true as regards the specific goods and services (see paragraph 57 above). As the Board of Appeal stated in paragraph 32 of the contested decision, the descriptive nature of the expression, as regards the specific goods and services, is confirmed by the applicant’s statement that the sign ULTIMATE FIGHTING CHAMPIONSHIP is ‘an identification of the name of its Mixed Martial Arts competition’. Such a competition clearly involves a ‘fighting championship’. The mere addition of the laudatory term ‘ultimate’ does not render the expression as a whole any less descriptive. For that reason, even in the eyes of the specialist public with a particular interest in mixed martial arts, the mark applied for is descriptive and is not capable, as such and regardless of any renown which it may have — which must, in any event, be assessed in the context of whether the mark applied for has acquired distinctiveness through any use which may have been made of it and thus under the third plea — of serving as an indicator of origin.
63      The applicant therefore errs in submitting that the sign ULTIMATE FIGHTING CHAMPIONSHIP has an arbitrary nature such as to be likely to enable the target consumer to identify the undertaking which is the proprietor of the mark as the commercial origin of the goods and services at issue.
64      Lastly, even assuming that the applicant is justified in maintaining that the general public is accustomed to the use of the names of sporting competitions as trade marks, it must be held that all the competitions to which it refers (the World Cup, the Masters Golf, the Championships (Wimbledon)) are unquestionably well known, which is likely to render them distinctive. That argument therefore, in actual fact, relates to whether the mark applied for has acquired distinctive character through the use made of it and, consequently, to the examination of the third plea.
65      It follows that the Board of Appeal was correct to find that the mark applied for was descriptive in respect of all of the goods and services at issue.
The application of Article 7(1)(b) of Regulation No 207/2009
66      According to the case-law, to deduce that a trade mark lacks distinctive character solely from the fact that it is descriptive constitutes an error in law (judgment of 8 May 2008 in Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraphs 58 to 63). The Board of Appeal therefore erred in deducing that the absolute ground for refusal of registration provided for in Article 7(1)(b) of Regulation No 207/2009 was applicable solely because the mark applied for was descriptive.
67      That error does not, however, affect the legality of the contested decision, since, as is apparent from Article 7(1) of Regulation No 207/2009, 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 (judgment of 12 January 2005 in Wieland-Werke v OHIM (SnTEM, SnPUR, SnMIX), T‑367/02 to T‑369/02, EU:T:2005:3, paragraph 45 and the case-law cited, and judgment of 15 July 2015 in HOT (T‑611/13, not published, EU:T:2015:492, paragraph 55 and the case-law cited)).
68      It thus follows from the foregoing that the second plea must be rejected as unfounded as regards the application of Article 7(1)(c) of Regulation No 207/2009, and as ineffective as regards the application of Article 7(1)(b) of that regulation.
The third plea, alleging infringement of Article 7(3) of Regulation No 207/2009
69      The applicant claims that, in the light of the requirements laid down by the case-law, the Board of Appeal incorrectly assessed or, in certain cases, completely failed to assess the evidence it submitted in order to prove that the mark ULTIMATE FIGHTING CHAMPIONSHIP had acquired distinctive character through use.
70      EUIPO submits that the Board of Appeal referred to the examiner’s decision, which contains an adequate statement of reasons so far as concerns the reasons why the evidence provided by the applicant does not prove that the mark applied for has acquired distinctive character through the use made of it. EUIPO is of the opinion that the evidence provided by the applicant was carefully examined.
71      Furthermore, EUIPO takes the view that, since the declarations and witness statements provided by the applicant come from professionals, they do not prove any knowledge of the mark applied for on the part of the general public, which is the relevant public. It maintains that such considerations also apply in the case of the goods and services linked to mixed martial arts, in view of the descriptiveness of the sign ULTIMATE FIGHTING CHAMPIONSHIP in respect of those goods and services. It submits that none of the evidence provided by the applicant shows that the sign at issue is perceived as an indicator of commercial origin designating a particular undertaking.
72      Under Article 7(3) of Regulation No 207/2009, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude the registration of a mark if it has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
73      In that regard, in the first place, it must be pointed out that it is apparent from the case-law that the acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the goods or services concerned as originating from a particular undertaking because of the mark (see judgment of 29 September 2010 in CNH Global v OHIM (Representation of a tractor in red, black and grey), T‑378/07, EU:T:2010:413, paragraph 28 and the case-law cited; see also, by analogy, judgment of 4 May 1999 in Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 52, and judgment of 7 July 2005 in Nestlé, C‑353/03, EU:C:2005:432, paragraph 30). That identification must be as a result of the use of the sign as a trade mark and thus as a result of the nature and effect of it, which make it capable of distinguishing the goods or services concerned from those of other undertakings (judgment of 29 September 2010 in Representation of a tractor in red, black and grey (T‑378/07, EU:T:2010:413, paragraph 29); see also, by analogy, judgment of 18 June 2002 in Philips, C‑299/99, EU:C:2002:377, paragraph 64, and judgment of 7 July 2005 in Nestlé, C‑353/03, EU:C:2005:432, paragraph 26).
74      In the second place, to have the registration of a mark accepted under Article 7(3) of Regulation No 207/2009, it must be established that it has acquired distinctive character through use throughout the territory in which it did not, ab initio, have such character (see, to that effect, judgment of 22 June 2006 in Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraphs 83 and 86, and judgment of 29 September 2010 in Representation of a tractor in red, black and grey (T‑378/07, EU:T:2010:413, paragraph 30 and the case-law cited)).
75      In the third place, for the purposes of assessing whether a mark has acquired distinctive character through use, the following items may be taken into consideration: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgment of 30 September 2009 in JOOP! v OHIM (!), T‑75/08, not published, EU:T:2009:374, paragraph 44; see also, by analogy, judgment of 4 May 1999 in Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 51, and judgment of 7 July 2005 in Nestlé, C‑353/03, EU:C:2005:432, paragraph 31).
76      In the fourth place, the distinctive character of a sign, including that acquired through use, must be assessed in relation, first, to the goods or services in respect of which registration of the mark is applied for and, secondly, to the presumed perception of the relevant public (see judgment of 29 September 2010 in Representation of a tractor in red, black and grey (T‑378/07, EU:T:2010:413, paragraph 33 and the case-law cited)).
77      In the fifth place, a mark must have become distinctive through use before the trade mark application was filed (judgment of 11 June 2009 in Imagination Technologies v OHIM, C‑542/07 P, EU:C:2009:362, paragraph 60, and judgment of 11 February 2010 in Deutsche BKK v OHIM (Deutsche BKK), T‑289/08, not published, EU:T:2010:36, paragraph 60).
78      It is in the light of the case-law that the evidence provided by the applicant before the examiner and the Board of Appeal must be examined.
79      Accordingly, Exhibit TB1 is a corporate statement, from which it is apparent, inter alia, that a championship with the name of ‘ultimate fighting championship’ has been organised since 1993 and that, since at least 2002, television viewers of the ESPN channel, which is broadcast in the United Kingdom and in Ireland, have been able to watch the ‘ultimate fighting championship’ programmes on a pay-per-view basis. The applicant submits that it purchased the American trade mark ULTIMATE FIGHTING CHAMPIONSHIP in 2001. Those factual claims are not contradicted by the Board of Appeal, which merely observed that such declarations ‘confirm[ed] the descriptiveness of the expression “ultimate fighting championship”’ (paragraph 45 of the contested decision). Although that finding must be endorsed with regard to the grounds of the present judgment relating to the second plea (see paragraphs 50 to 65 above), it is, however, irrelevant as regards the assessment of whether distinctive character may have been acquired through use. From that point of view, although the matters of fact referred to in that statement are, it is true, insufficient to show that the relevant public has knowledge of the ‘ultimate fighting championship’, they are, however, capable of establishing that, at the time when the application for registration at issue was filed, the specialist public interested in mixed martial arts, which is, in addition, likely to watch television programmes such as those mentioned in exhibit TB1, could have been familiar with the ‘ultimate fighting championship’ competitions for almost 20 years.
80      Exhibit TB2 consists of two statements, one from the Swedish Mixed Martial Arts Federation and the other from the International Mixed Martial Arts Federation, from which it is apparent that, in the field of mixed martial arts, the expression ‘ultimate fighting championship’ is understood as referring to a specific mixed martial arts competition and not as a style of fighting. Such statements, which have not been contradicted, are also capable of establishing that the public which is interested in mixed martial arts in general and which includes the English-speaking public in the European Union that is interested in that discipline, is likely to understand the terms ‘ultimate fighting championship’ as referring to a specific competition. Although the Board of Appeal is justified in pointing out, in paragraph 45 of the contested decision, that such evidence does not provide any information as to the intensity of the use of the mark ULTIMATE FIGHTING CHAMPIONSHIP within the European Union, the fact remains that the statements by those sports federations show that that competition is well-known to the specialist public of mixed martial arts fans.
81      Exhibit TB3 is a declaration by the applicant’s President attesting that the applicant has engaged in numerous activities with the aim of making the ‘ultimate fighting championship’ known in Europe, inter alia by means of the broadcasting of television programmes. The Board of Appeal states, in paragraph 45 of the contested decision, that that declaration refers to the term ‘ultimate fighting’ and not to the term ‘ultimate fighting championship’. However, as the applicant submits, an examination of that document shows that both the terms ‘ultimate fighting championship’ and ‘ultimate fighting’ are used. Furthermore, it is probable that, for the specialist public consisting of mixed martial arts fans, who are therefore likely to know that the term ‘ultimate fighting championship’ refers to a specific mixed martial arts championship, the use of the term ‘ultimate fighting’ may also refer to the same championship, with the result that the term ‘ultimate fighting’ may be regarded as equivalent, in the mind of the specialist part of the relevant public, to the term ‘ultimate fighting championship’ or even to the acronym UFC.
82      Exhibit TB4 consists of declarations by various independent distributors of the applicant, who were responsible for the television broadcasting of the ‘ultimate fighting championship’ events in the United Kingdom and their diffusion by means of DVD, inter alia, within the European Union. A mere reading of those declarations contradicts the assessment relating to that exhibit as set out in paragraph 45 of the contested decision, wherein the Board of Appeal erroneously stated that those declarations did not refer to the territory of the European Union.
83      Exhibit TB5, by contrast, is an article from The Miami Herald which is irrelevant in the present case, since it concerns the applicant’s efforts to promote the ‘ultimate fighting championship’ in the United States. The Board of Appeal was therefore correct to find that it could not take that item of evidence into consideration.
84      Exhibit TB6 is a set of advertisements intended to bring the events connected with the ‘ultimate fighting championship’ to the attention of the public. One of those documents concerns an advertisement which was broadcast on the channel ESPN. One document relates to an event organised for fans of the ‘ultimate fighting championship’ in London on 15 and 16 October 2010, during which they had the opportunity to meet some of the fighters. One document refers to goods sold under the mark ULTIMATE FIGHTING CHAMPIONSHIP via catalogues and the Internet by a vendor established in the United Kingdom and in Ireland.
85      The Board of Appeal disputes the evidential value of that evidence by stating that it refers to the acronym UFC, which differs from the mark applied for. Nevertheless, an examination of those documents shows that the acronym UFC frequently appears in association with the sign ULTIMATE FIGHTING CHAMPIONSHIP. As regards the initials of the sign in respect of which registration is sought, it must, moreover, be borne in mind that that slightly different use of the mark applied for may be regarded as equivalent by specialists for the reasons stated in paragraph 81 above. That evidence is therefore capable of showing that the specialist public consisting of English-speaking mixed martial arts fans in the European Union is likely to identify the mark applied for as an indicator of the commercial origin of the goods and services which it covers.
86      Exhibit TB7 relates to the organisation, during the ISPO (Internationale Sportartikelmesse) trade fair in Munich in 2011, of events to promote the ‘ultimate fighting championship’ and to the sale, at that trade fair, of goods under the mark ULTIMATE FIGHTING CHAMPIONSHIP. The organisers of that trade fair, which is devoted to sports, declare that, in 2011, the trade fair had more than 80 000 visitors from 106 countries. The Board of Appeal disputes the evidential value of that item of evidence only on the ground that the acronym UFC was associated with the sign ULTIMATE FIGHTING CHAMPIONSHIP. For the reasons stated in paragraph 85 above, such an argument does not make it possible to discount that evidence.
87      Exhibit TB8 is an extract from the website FightAuthority.com, which is capable of showing that the mark ULTIMATE FIGHTING CHAMPIONSHIP is well known to visitors to that site. That item of evidence does not, however, provide enough information on that website’s audience. It is nevertheless capable of establishing that the specialist public consisting of mixed martial arts fans is likely to have been made familiar with the meaning of the expression ‘ultimate fighting’ through consulting that site, which is especially intended for it.
88      Exhibit TB9 lists all the fights organised throughout the world since 1993. 15 of these took place within the European Union and, according to the witness statement of Mr B., the other events were accessible to fans, since they were the subject of worldwide television broadcasting. The Board of Appeal disputes the evidential value of that item of evidence only on the ground that the acronym UFC is used in that document instead of the sign ULTIMATE FIGHTING CHAMPIONSHIP. Such an argument does not make it possible to discount that evidence. The item of evidence in question establishes that sporting events which have taken place since 1993 within the context of the ‘ultimate fighting championship’ have been broadcast. Like exhibit TB1 (see paragraph 79 above), that item of evidence is thus capable of establishing that the ‘ultimate fighting championship’ is well known to the public of mixed martial arts fans.
89      Exhibit TB10 relates to the organisation of ‘ultimate fighting championship’ fights in Europe. Three out of five fights took place in the United Kingdom (in London, Birmingham and Nottingham) and, according to the particulars contained in the witness statement of Mr B., taken together, attracted a public of 34 000 spectators. Exhibit TB11 relates to the coverage given to the Nottingham fight in the United Kingdom press. Exhibit TB12 relates to attendance at the Nottingham fight. Exhibit TB13 refers to the goods, in particular tee shirts, marketed under the mark applied for.
90      Those fights may be taken into consideration in assessing the knowledge that the public of mixed martial arts fans has of the sign ULTIMATE FIGHTING CHAMPIONSHIP, since they all predate the date of the application for registration. The Board of Appeal disputes the evidential value of that evidence only on the ground that the acronym UFC was used instead of the sign ULTIMATE FIGHTING CHAMPIONSHIP. For the reasons stated in paragraph 85 above, as the acronym UFC is frequently associated with the sign ULTIMATE FIGHTING CHAMPIONSHIP, such an argument does not make it possible to discount that evidence.
91      Furthermore, the Board of Appeal’s criticism of exhibit TB11, on the ground that the sign ULTIMATE FIGHTING CHAMPIONSHIP could not have evidential value because it appeared only on the applicant’s headed paper, is irrelevant. That headed paper was not used as evidence of the use of the mark applied for, but was used only to print out the extracts from newspaper articles of which that evidence consists.
92      Lastly, it must be held that the tee-shirts the marketing of which is proved by exhibit TB13 are not part of the list of goods in respect of which registration has been sought. The sale of those items is nevertheless capable of establishing that the terms ‘ultimate fighting championship’ are understood by mixed martial arts fans as referring to a specific championship.
93      Exhibit TB14 relates to the organisation of another fight, on 13 July 2002, at the Royal Albert Hall in London. That exhibit contains a number of advertisements. The witness statement of Mr B. which relates to it mentions that 3 764 entrance tickets were sold. That item of evidence, in the light of the information provided by Mr B., thus shows that goods were marketed under the trade mark ULTIMATE FIGHTING CHAMPIONSHIP and that preliminary stages of the ‘ultimate fighting championship’ competition were broadcast over a period of 13 weeks on the English channel Sky Sports before the fight itself was broadcast. The fight on 13 July 2002 thus gave rise to more than 10 000 pay-per-view payments. The Board of Appeal disputes the evidential value of that evidence only on the ground that the acronym UFC and other terms which differ slightly from the sign ULTIMATE FIGHTING CHAMPIONSHIP were used. For the reasons stated in paragraph 85 above, such an argument does not make it possible to discount that evidence.
94      Exhibit TB15 is an invitation to a weekend for very important persons (VIPs) in London. The Board of Appeal disputes the evidential value of that item of evidence only on the ground that the acronym UFC and other terms which differ slightly from the sign ULTIMATE FIGHTING CHAMPIONSHIP were used. For the reasons stated in paragraph 85 above, such an argument does not make it possible to discount that evidence.
95      Exhibits TB16 and TB17 are extracts from the websites of sports or general-interest publications published in the United Kingdom, Ireland, Sweden, Malta, Denmark and the Netherlands. They include, in particular, sections dedicated to sport from The Guardian, The Telegraph, The Independent, The Sun, The Daily Mirror and the BBC’s website. The Board of Appeal disputes the evidential value of those items of evidence only on the ground that the acronym UFC and other terms which differ slightly from the sign ULTIMATE FIGHTING CHAMPIONSHIP were used. That assessment is factually incorrect as the terms ‘ultimate fighting championship’ appear in most of those items of evidence. Furthermore, for the reasons stated in paragraph 85 above, such an argument does not make it possible to discount that evidence.
96      In addition, the Board of Appeal’s argument that some of the evidence in exhibit TB16 is not in English is irrelevant, given the generally high level of command of English on the part of consumers residing in Sweden, Malta, Denmark and the Netherlands. Either the residents in those countries understand English sufficiently for the sign ULTIMATE FIGHTING CHAMPIONSHIP to be descriptive in their eyes — in that case, the press articles provided make it possible to show that the specialist public is likely to be familiar with the existence of the championship in question — or the level of English of the residents in those Member States is not adequate enough to enable them to realise that the sign ULTIMATE FIGHTING CHAMPIONSHIP is descriptive. In that case, their perception is irrelevant because they are not part of the relevant public. The Board of Appeal was, moreover, correct in confining itself to finding that the mark applied for was descriptive only for the English-speaking public in the European Union (see paragraph 56 above).
97      Exhibit TB18 is the reproduction of an electronic letter which was distributed by the applicant to fans of the ‘ultimate fighting championship’ and announces the events in respect of the forthcoming competition. Exhibits TB19 and TB20 show that goods, in particular DVDs, have been sold by the applicant (or by its predecessor) under the mark ULTIMATE FIGHTING CHAMPIONSHIP. Exhibit TB21 shows the licence agreements between the applicant and the television company Sky Sports, which is established in the United Kingdom and in Ireland. Exhibit TB22 relates to the broadcasting by the channel British Sky Broadcasting of one-hour ‘ultimate fighting championship’ fights over a period of 23 consecutive weeks. Exhibit TB23 shows that ‘ultimate fighting championship’ programmes have been broadcast on a number of European television channels (RTL7 in the Netherlands; Canal 9 in Denmark; Setanta, RTE2, TV3 and Sky Sports in Ireland; ESPN and Sky Sports in the United Kingdom; TV4 Sport in Sweden). Exhibit TB24 relates to the broadcasting of ‘ultimate fighting championship’ events on the channel ESPN, which is accessible in, inter alia, the United Kingdom and Ireland. Exhibit TB19 includes references to prices in pounds sterling and thus shows that the goods in question have been offered for sale in the United Kingdom. The Board of Appeal’s assessment in paragraph 45 of the contested decision that the goods in question have mainly been sold in the United States was not therefore capable of allowing it to discount that item of evidence. It must likewise be pointed out that one of the DVDs, the cover of which is reproduced in exhibit TB20, has been offered for sale in PAL format, which is readable in Europe. The Board of Appeal also disputes the evidential value of those items of evidence on the ground that the acronym UFC and other terms which differ slightly from the sign ULTIMATE FIGHTING CHAMPIONSHIP were used. For the reasons stated in paragraph 85 above, such an argument does not make it possible to discount that evidence. On the contrary, all of that evidence proves that the goods and services in respect of which registration is sought are marketed and is therefore capable of establishing that it is likely that the public consisting of mixed martial arts fans has knowledge of the ‘ultimate fighting championship’.
98      Exhibit TB25 is an explanatory guide produced by the applicant, which presents the ‘ultimate fighting championship’ and the relationship of that competition to mixed martial arts in general. According to the applicant, that guide is distributed to the public during promotional exhibitions in which the applicant takes part. However, as there is no information concerning the distribution of that guide to the English-speaking public in the European Union, that document, on which the Board of Appeal did not expressly rule, cannot, in any event, be accepted.
99      Exhibit TB27 relates to the statistics in respect of traffic to the applicant’s website by internet users located in, inter alia, the United Kingdom, Sweden, the Netherlands, Ireland and Finland. That site is written in English. Exhibit TB28 presents a number of national versions of the applicant’s website, in particular those directed at the United Kingdom, Germany and Sweden. The pages from those sites are written in English and offer for sale some of the goods covered by the application for registration. Exhibit TB29 details the promotional expenditure incurred by the applicant in Europe. The Board of Appeal disputes the evidential value of those items of evidence only on the ground that they ‘also seem to use the term “UFC”’. For the reasons stated in paragraph 85 above, such an argument does not make it possible to discount that evidence.
100    Following an examination of the evidence provided before the examiner, it must be held that that evidence, taken as a whole, is not sufficient to show that the mark ULTIMATE FIGHTING CHAMPIONSHIP has acquired sufficient renown for the English-speaking general public in the European Union. By contrast, it proves that, from the point of view of the specialist public consisting of mixed martial arts fans, the mark applied for refers to a specific competition. Furthermore, the applicant has proved that goods and services such as those covered by the application for registration were marketed under the mark ULTIMATE FIGHTING CHAMPIONSHIP, which is capable of conferring distinctive character upon that mark in consequence of its use in respect of those goods and services.
101    In those circumstances, it is not necessary to examine the evidence which the applicant provided in support of its appeal. That evidence consists of extracts from websites, screenshots from videos put online on the platform Youtube and screenshots of messages disseminated by means of social networks, such as Twitter. Moreover, as the Board of Appeal rightly states in paragraphs 48 and 49 of the contested decision, in the absence of sufficiently specific particulars as regards the audience of the sites at issue, that evidence is, on its own, insufficient to show that the mark applied for has acquired distinctive character use for the English-speaking general public in the European Union.
102    It follows from the foregoing that the renown of the mark applied for has been proved solely in respect of the specialist public of mixed martial arts fans. Consequently, the applicant is only justified in claiming that the Board of Appeal infringed Article 7(3) of Regulation No 207/2009 in so far as the Board of Appeal did not uphold its appeal as regards the specific goods and services, which are especially intended for that specialist public (see paragraph 57 above).
Costs
103    Under Article 134(3) of the Rules of Procedure of the General Court, the parties are to bear their own costs where each party succeeds on some and fails on other heads. However if it appears justified in the circumstances of the case, the General Court may order that one party, in addition to bearing his own costs, pay a proportion of the costs of the other party. In the present case, it is appropriate to order each party to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 May 2014 (Case R 1425/2013-2) in so far as it dismisses the appeal of Zuffa, LLC as regards the following goods and services:
–        ‘pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital video discs; digital versatile discs; electronic storage media; USB flashdrives; CD-ROM discs all featuring mixed martial arts competitions, events and programs; motion picture films in the field of mixed martial arts’ in Class 9;
–        ‘provision of information relating to mixed martial arts via communication and computer networks; providing news and information in the fields of sports, fitness and mixed martial arts via communication and computer networks’ in Class 41;
2.      Dismisses the present action as to the remainder;
3.      Orders Zuffa, LLC and EUIPO to bear their own costs.
Frimodt Nielsen
Dehousse
Collins
Delivered in open court in Luxembourg on 12 May 2016.
[Signatures]
* Language of the case: English.