JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
3 March 2021
(*)
(EU trade mark – International registration designating the European Union – Figurative mark Heartfulness – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EU) 2017/1001)
In Case T‑48/20,
Sahaj Marg Spirituality Foundation, established in Manapakkam (India), represented by E. Manresa Medina, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Sliwinska and V. Ruzek, acting as Agents,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 November 2019 (Case R 1266/2019-4), relating to the international registration designating the European Union in respect of the figurative mark Heartfulness,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen and R. Norkus (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 January 2020,
having regard to the response lodged at the Court Registry on 23 July 2020,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 19 April 2018, the applicant, Sahaj Marg Spirituality Foundation, designated the European Union for international registration No 1433232. That registration was notified to the European Union Intellectual Property Office (EUIPO) pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
2        The trade mark that is the subject of the international registration designating the European Union is the following figurative sign:
3        The goods and services in respect of which protection was sought are in Classes 16, 41 and 45 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 16: ‘Printed matter; instructional and teaching materials’;
–        Class 41: ‘Education; providing of training and cultural activities’;
–        Class 45: ‘Consultancy services in spirituality’.
4        On 12 April 2019, the examiner refused the application for registration of the mark referred to above on the basis of Article 7(1)(b) and (c) and (2) of Regulation 2017/1001.
5        On 10 June 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
6        By decision of 26 November 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.
7        The Board of Appeal considered, in essence, that the word ‘heartfulness’ described a particular relaxation and meditation technique and informed the consumer, directly and without the need for further reflection, that the goods and services in question concerned that technique. That word provides sufficient information to the relevant public to allow it immediately to perceive, without further thought, that the services in question are centred or based on the type of meditation known as ‘Heartfulness’ meditation and that the goods in question concern that type of meditation. The relationship between the mark applied for and the subject matter or purpose of the goods and services in question is therefore sufficiently direct to be descriptive of those goods and services, in spite of the fact that the relevant public does not know how the meditation is practised or what the method used exactly consists of. The fact that the mark applied for is used to designate a type of meditation offered by the applicant and to distinguish its services does not affect the descriptiveness of the mark applied for.
8        Accordingly, the Board of Appeal concluded that the international registration designating the European Union was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001.
9        While noting that it was sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation 2017/1001 applies in order for a sign to be ineligible for protection in the European Union, the Board of Appeal stated that a descriptive mark was necessarily devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation.
Forms of order sought
10      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
11      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
12      In support of its action, the applicant puts forward a single plea in law alleging infringement of Article 7(1)(b) and (c) and (2) of Regulation 2017/1001 and failure to comply with EUIPO’s previous decision-making practice concerning the registration of signs containing the word ‘heart’. That single plea can be divided into three parts.
The first part of the single plea, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
13      By the first part of the single plea, the applicant alleges, in essence, that the Board of Appeal failed to take into account the fact that the word ‘heartfulness’ was created and published by the applicant itself in order to designate a particular relaxation and meditation technique and that, therefore, consumers identify the applicant with the mark applied for. The internet links mentioned by the examiner also refer to the applicant.
14      EUIPO disputes the applicant’s arguments.
15      Under Article 7(1)(c) of Regulation 2017/1001, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, are not to be registered. Pursuant to Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.
16      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 (judgment of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
17      Article 7(1)(c) of Regulation 2017/1001 prevents the signs or indications referred to therein 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 (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31; of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 27; and of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 12).
18      Furthermore, signs or indications which may serve, in trade, to designate the characteristics of the goods or service in respect of which registration is sought are, under Article 7(1)(c) of Regulation 2017/1001, deemed to be incapable of performing the essential function of a trade mark. That function is to identify the commercial origin of the goods or service, enabling the consumer who acquires the goods or service 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 (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 8 May 2019, Battelle Memorial Institute v EUIPO (HEATCOAT), T‑469/18, not published, EU:T:2019:302, paragraph 19).
19      It follows that, 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 and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or 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      Accordingly, a sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (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 it should be examined whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001.
22      In the first place, as regards the definition of the relevant public, the Board of Appeal took the view, in paragraph 12 of the contested decision, that the goods and services covered by the mark applied for, which may relate to meditation and relaxation techniques, were directed both to the public at large and to education and spirituality consultancy professionals.
23      The applicant does not dispute the Board of Appeal’s assessments. Moreover, there is no evidence in the file capable of casting doubt on those assessments.
24      In the second place, it should be noted that the Board of Appeal stated, in paragraph 13 of the contested decision, as had the examiner, that the word ‘heartfulness’ described a particular relaxation and meditation technique and identified specific services in the field of spiritual practice. In addition, there is a book about that meditation technique called The Heartfulness Way, in which the principles of ‘heartfulness’ are described by a Heartfulness practitioner/trainer.
25      The applicant endorses the Board of Appeal’s assessments, in particular in paragraphs 16 and 30 of the application. However, it submits that it developed the technique in question itself and that it uses the word ‘heartfulness’ to designate its goods and services. The Board of Appeal therefore erred in failing to take account of the fact that consumers identified that word with the applicant.
26      In that regard, it should be noted that the fact that the mark applied for was created by the applicant to designate a particular meditation or relaxation method cannot mean that the mark in question should automatically benefit from registration as an EU trade mark. The mark applied for must, in order to be able to benefit from such a registration, enable the relevant public immediately to perceive the mark as an indication of goods or services offered by the holder of that mark and thus to distinguish them from the same goods and services that have a different commercial origin (see judgment of 7 November 2014, Kaatsu Japan v OHIM (KAATSU), T‑567/12, not published, EU:T:2014:937, paragraph 36 and the case-law cited).
27      Since, as the applicant itself confirms, the word ‘heartfulness’ is presented as a particular relaxation and meditation technique and not as an indicator of the goods and services offered by the applicant, the Board of Appeal was right to refuse registration of the mark applied for on the basis of Article 7(1)(c) of Regulation 2017/1001.
28      As the Board of Appeal was right to consider in paragraphs 15 and 16 of the contested decision, the mark applied for will be understood, without the need for further reflection on the part of the consumer, as containing direct information on the nature and subject matter of the goods and services concerned, namely goods or services having as their subject matter a particular meditation and relaxation method or technique.
29      It follows from the foregoing that, since the word ‘heartfulness’ can be used to designate a particular relaxation and meditation method or technique and to inform the consumer, directly and without the need for further reflection, that the products and services in question concern that method or technique, that word must, having regard to the public interest that underlies Article 7(1)(c) of Regulation 2017/1001, remain available for public use and not become the subject of a monopoly (judgment of 7 November 2014, KAATSU, T‑567/12, not published, EU:T:2014:937, paragraph 39).
30      As regards the applicant’s argument that the mark applied for is not descriptive because it is composed of a single word with a special representation, it should be noted that the Board of Appeal was right to find, in paragraph 17 of the contested decision, that the depiction of the word, which appeared in a normal font style, did not change its descriptive meaning.
31      It follows from all the foregoing considerations that the Board of Appeal was right to conclude that the mark at issue was descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001.
32      Consequently, the first part of the single plea must be rejected.
The second part of the single plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
33      It should be noted that, as is clear from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal apply in order for a sign not to be registrable as an EU trade mark (judgments of 14 June 2001, Telefon & Buch v OHIM (UNIVERSALTELEFONBUCH and UNIVERSALKOMMUNIKATIONSVERZEICHNIS), T‑357/99 and T‑358/99, EU:T:2001:162, paragraph 35, and of 12 March 2019, Perry Ellis International Group v EUIPO (PRO PLAYER), T‑220/16, not published, EU:T:2019:159, paragraph 50).
34      Thus, given that, as is clear from paragraph 31 above, the Board of Appeal was right to find that the sign in question was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, there is no need, in the present case, to consider the merits of the second part of the plea, alleging infringement of Article 7(1)(b) of that regulation (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraphs 28 and 29; order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28; and judgment of 12 March 2019, PRO PLAYER, T‑220/16, not published, EU:T:2019:159, paragraph 51).
The third part of the single plea, relating to the previous decision-making practice of EUIPO
35      By the third part of the plea, the applicant submits that the Board of Appeal erred in departing from its previous decision-making practice. It recalls that it provided EUIPO with several examples of registrations of marks containing the word ‘heart’ combined with various other words and refers in particular to its earlier EU figurative mark heartfulness, registered on 6 May 2016 under No 14610621.
36      EUIPO disputes the applicant’s arguments.
37      It should be borne in mind that the decisions concerning the registration of a sign as an EU trade mark which EUIPO takes under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 3 July 2013, Warsteiner Brauerei Haus Cramer v OHIM – Stuffer (ALOHA 100% NATURAL), T‑243/12, not published, EU:T:2013:344, paragraph 43).
38      The applicant cannot therefore complain that the Board of Appeal based the contested decision on Regulation 2017/1001, as interpreted by the EU judicature, rather than on supposedly comparable decisions of the Boards of Appeal of EUIPO or the earlier practice of EUIPO in terms of registration of EU trade marks.
39      It is also clear from the case-law that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and sound administration, EUIPO must 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, the way in which those principles are applied must, however, be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as a mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76, and of 21 March 2014, FTI Touristik v OHIM (BigXtra), T‑81/13, not published, EU:T:2014:140, paragraph 52).
40      Moreover, for reasons of legal certainty and sound administration, the examination of any application for registration must be stringent and full in order to prevent marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77, and of 9 March 2017, Maximum Play v EUIPO (MAXPLAY), T‑400/16, not published, EU:T:2017:152, paragraph 49).
41      In the present case, the EU trade mark application submitted by the applicant is caught by one of the grounds for refusal set out in Article 7(1) of Regulation 2017/1001. Since it was noted in paragraph 31 above that the Board of Appeal had been right to conclude that registration of the mark applied for in respect of the goods at issue was incompatible with that regulation, the applicant cannot properly rely, in order to cast doubt on that conclusion, on EUIPO’s previous decision-making practice.
42      Furthermore, it is apparent from paragraphs 20 to 23 of the contested decision that the Board of Appeal did indeed take into account the previous decisions relied on by the applicant. As regards, in particular, the decisions relating to the marks containing the word ‘heartfulness’, it is apparent from paragraph 23 of the contested decision that, on 22 April 2016, that is, shortly before allowing, on 6 May 2016, the registration of the EU figurative mark heartfulness No 14610621, EUIPO refused the application for word mark HEARTFULNESS No 14610612 filed by the applicant and essentially covering the same goods and services as those in the present case. On 11 January 2017, EUIPO also refused another application filed by the applicant for registration of the word mark center for heartfulness No 15608516 covering, inter alia, ‘workshops and seminars in self-awareness; educational services’ in Class 41. As in the present case, EUIPO had concluded that the word marks applied for were descriptive of the goods and services concerned.
43      In the contested decision, the Board of Appeal was therefore entitled to conclude that there was no EUIPO decision-making practice of registering the word ‘heartfulness’, depicted without any distinctive figurative elements, for the goods and services at issue.
44      Consequently, the third part of the single plea must be rejected.
45      Accordingly, the action must be dismissed in its entirety.
Costs
46      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
47      In the present case, 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 (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Sahaj Marg Spirituality Foundation to bear its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO).
Marcoulli
Frimodt Nielsen
Norkus
Delivered in open court in Luxembourg on 3 March 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.