JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
7 October 2015 (*)
(Community trade mark — Community word mark FLEX — Absolute grounds for refusal — Descriptive character — Article 7(1)(c) and Article 7(2) of Regulation (EC) No 207/2009)
In Case T‑187/14,
Sonova Holding AG, established in Stäfa (Switzerland), represented by C. Hawkes, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 12 December 2013 (Case R 357/2013-2), relating to an application for registration of the word sign FLEX as a community trade mark,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 March 2014,
having regard to the response lodged at the Court Registry on 20 November 2014,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,
gives the following
Judgment
Background to the dispute
1        On 8 May 2012, the applicant, Sonova Holding AG, filed an application for the registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the word sign FLEX.
3        The goods in respect of which registration was sought are in Class 10 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 to the following description: ‘Hearing aids and hearing aids components; hearing aids accessories; parts and fittings for the aforesaid’.
4        By decision of 17 December 2012, the examiner rejected the application for a Community trade mark for all the goods in question on the ground that the word element ‘flex’ was a common short form of the words ‘flexible’ or ‘flexibility’ associated with the characteristics of the goods in question, namely their capacity to adjust to the shape of an ear or to be adjusted to the required volume. The sign FLEX would thus be perceived as directly descriptive of the type of goods in question and could not, therefore, be accepted for registration in accordance with Article 7(1)(b) and (c), and Article 7(2), of Regulation No 207/2009.
5        On 18 February 2013, the applicant filed an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.
6        By decision of 12 December 2013 (‘the contested decision’), the Second Board of Appeal dismissed the appeal brought by the applicant agreeing, in essence, with the examiner’s reasons. Furthermore, the Board of Appeal relied on a number of General Court judgments and OHIM decisions in which the abbreviation ‘flex’, or ‘flexi’ was considered to be descriptive. Moreover, it stated that, even if the word ‘flex’ could have, in English, meanings other than ‘flexible’ or ‘flexibility’, it was sufficient, for the purposes of the abovementioned provision, that the word could be understood by the target consumers as a description of the goods concerned. According to the Board of Appeal, reference by the term ‘flex’ to the words ‘flexible’ and ‘flexibility’, and thus to the physical comfort and adjustability of the goods concerned, was the only logical meaning that the consumer could attribute to it. The Board of Appeal considered that the link between the goods concerned and the word ‘flex’ was sufficiently close for the purposes of Article 7(1)(c) of Regulation No 207/2009.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision and allow the registration applied for;
–        in the alternative, annul the contested decision and remit the application for the registration of a Community trade mark to the examiner;
–        order OHIM to pay the costs.
8        OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        In support of its application, the applicant relies on two pleas in law alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009, and, second, infringement of Article 7(2) of that regulation.
The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
10      In support of its first plea, the applicant raises several arguments. It argues that the word ‘flex’ does not mean ‘flexible’ in English. According to the applicant, it is, on the one hand, a noun meaning ‘a flexible and insulated electric cable’ and, on the other hand, a verb meaning ‘to bend or be bent or to contract a muscle’. The word ‘flex’ is thus, according to the applicant, not used in English as an adjective. Nor is that word descriptive of a characteristic of the goods concerned, it has no meaning in relation to the goods concerned and cannot therefore show a sufficiently direct and specific link with those goods. The mark sought extends to the word ‘flex’ only, such that in the present case it is irrelevant that the word may be used as an affix in a compound word. Furthermore, the applicant submits that in order to demonstrate that the word can be an abbreviation of the words ‘flexible’ or ‘flexibility’, the Board of Appeal should not have relied on American rather than English sources. The applicant submits that the Board of Appeal did not therefore provide a sufficient evidential basis to demonstrate the alleged descriptive character of the mark applied for. Also, contrary to the OHIM manual, it was not shown that the abbreviation ‘flex’ was commonly used. The applicant also puts forward a decision of the Board of Appeal in which the term ‘flex’ was held to be evocative of the characteristics of the goods but not descriptive. Finally, the applicant notes that, for the same reasons given as regards Article 7(1)(c) of Regulation No 207/2009, the mark applied for is not caught by the prohibition laid down by Article 7(1)(b) of that regulation.
11      OHIM disputes those arguments.
12      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 are not to be registered. Article 7(2) of Regulation No 207/2009 states that Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
13      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 which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all (judgment of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31). 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, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgment in OHIM v Wrigley, EU:C:2003:579, paragraph 30).
14      It follows that, in order for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further reflection, a description of the goods and services in question or one of their characteristics (judgment of 2 May 2012 in Universal Display v OHIM (UniversalPHOLED), T‑435/11, EU:T:2012:210, paragraph 16 and the case-law cited).
15      It is in light of those principles that the various arguments advanced by the applicant in the context of its first plea must be examined.
16      In the first place, the applicant, opposed on this point by OHIM, submits that the word ‘flex’ does not mean ‘flexible’. The applicant refers, first of all, to the Collins Concise English Dictionary, according to which the word ‘flex’ means either, as a noun, ‘a flexible and insulated electric cable’, or, as a verb, ‘to flex or be flexed, or to contract a muscle’. The applicant argues that the Board of Appeal has not shown that the term ‘flex’ was also an adjective, or even the short form of an adjective meaning ‘flexible’.
17      First of all, it must be held that the question whether the term ‘flex’ is cited in dictionaries, as a short form or affix of the words ‘flexible’ or ‘flexibility’, is not relevant since it is not usual for abbreviations to be defined in dictionaries (see, to that effect, judgment of 13 June 2014 in Grupo Flexi de León v OHIM (FLEXI), T‑352/12, EU:T:2014:519, paragraph 24).
18      Next, it is appropriate to note that the word ‘flex’ is the root of the words ‘flexible’ or ‘flexibility’. While it is true that the term ‘flex’, as a noun or a verb, can have several meanings, it must nevertheless be pointed out that it is also used as an affix in compound words to mean ‘flexible’, inter alia in the example provided by the applicant itself, namely the term ‘flexitime’, in which the letter ‘i’ is merely a vowel creating the link between the root ‘flex’ and the word ‘time’ (see T. McArthur, Concise Oxford Companion to the English Language, Oxford University Press, 1998, p. 300), a matter which is highlighted by the fact that the word ‘flexitime’ also exists in the form ‘flextime’, which is, moreover, confirmed by the extract from the Collins Concise English Dictionary provided by the applicant in Annex 3 to the application.
19      The applicant observes, in that regard, that the present case does not concern a compound word. The fact that the element ‘flex’ can be used as an affix in a compound word is thus, the applicant submits, irrelevant for the outcome of these proceedings. Furthermore, according to the applicant, even if the term ‘flexi’ were synonymous with the word ‘flexible’, that is not the case for the term ‘flex’. Finally, according to the rules of English grammar, the word ‘flex’ could not be considered to be anything other than a noun or a verb.
20      It must be recalled that, in the context of Article 7(1)(c) of Regulation No 207/2009, it is not necessary, in order for a sign to be caught by the prohibition laid down by that article, for the sign to be used correctly as regards its grammatical form or its spelling. As the Board of Appeal rightly stated, it is sufficient that the relevant public understand, immediately and without the need of any particular intellectual effort, the word ‘flex’ as an abbreviation of the words ‘flexible’ or ‘flexibility’, contrary to the submissions made by the applicant, even if such usage is unusual or, grammatically or orthographically, incorrect.
21      Therefore, even if the word ‘flex’, when used as a noun or as a verb, may have the meanings referred to in paragraph 16 above, and even if it is, when used to mean ‘flexible’, regularly used as an affix in compound words, the word ‘flex’ must be regarded as the root or fundamental part of the word ‘flexible’ and can also exist as a short form of the latter. As the Board of Appeal therefore rightly held, ‘flex’ will be perceived by the relevant Anglophone public as meaning ‘flexible’ or invoking or making reference to the concept of ‘flexibility’ (see, to that effect, judgment of 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraph 78).
22      In the second place, the applicant challenges the Board of Appeal’s finding that the word ‘flex’ is descriptive of a characteristic of the goods concerned. The applicant argues that the Board of Appeal did not establish a sufficiently direct and specific link between that word and the goods concerned. Furthermore, it argues, such a link does not exist.
23      Contrary to the applicant’s submissions, the consumer, presented with hearing aids, will attribute to the word ‘flex’ the meaning of ‘flexible’ or of ‘flexibility’ and will understand it as a reference to the physical comfort and adjustable character, both as regards the physical shape and the volume, of those aids or of their accessories. That is the only meaning that makes sense within such a context, given that the ability to adapt to the shape of the user’s ear and the possibility of regulating the volume are very important and distinctive characteristics of a hearing aid. Therefore, the word ‘flex’ meaning ‘flexible’ or ‘flexibility’ for the consumer in the context of marketing the goods concerned may be understood, immediately and without further reflection, as a simple description of the characteristics of those goods. There is accordingly a sufficiently direct and specific link within the meaning of the case-law cited at paragraph 14 above. The Board of Appeal was, therefore, correct to hold that the mark sought was descriptive.
24      In so far as the applicant, in paragraph 33 of the application, questions the use, in spoken language, of the phrase ‘flex hearing aid’, it must be held, as the Board of Appeal also rightly found, that it is not necessary that the sign applied for should actually be in use, at the time of the application for registration, in a way that is descriptive of the goods concerned. It is sufficient that the sign could be used for such purposes. A word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods concerned (see, to that effect, judgment of 12 February 2004 in Campina Melkunie, C‑265/00, ECR, EU:C:2004:87, paragraph 38).
25      In the third place, the applicant submits that the refusal to register the mark applied for was wrongly based on evidence drawn from American rather than English sources.
26      That argument cannot be accepted.
27      First, the Board of Appeal is not obliged to prove that the sign for which registration as a trade mark is sought appears in the dictionary. The registrability of a sign as a Community trade must be assessed only on the basis of the relevant EU legislation, as interpreted by the Union judicature (see judgment of 12 July 2012 in medi v OHIM (medi), T‑470/09, EU:T:2012:369, paragraph 22 and the case-law cited). The finding by the Board of Appeal that the consumer, faced with the goods concerned, would logically associate the word ‘flex’ with the terms ‘flexible’ or ‘flexibility’ was logical, is relevant and consistent and suffices, in itself, to demonstrate the concrete possibility that the mark sought could be understood as a description of the goods that it designates, without it being necessary to establish actual and current use in the language of the word ‘flex’ as an abbreviation of the words ‘flexible’ or ‘flexibility’, or yet as a current description of the goods concerned.
28      Second, as OHIM correctly observes, the fact that the term ‘flex’ is referred to as an abbreviation of the word ‘flexible’ in an American dictionary, which, furthermore, is not contested by the applicant, is further evidence that it is possible that the word may be used in that sense by an Anglophone public, including that made up of consumers from the United Kingdom, Ireland and Malta.
29      It follows from the forgoing that the finding by the Board of Appeal that the term ‘flex’ was descriptive of one of the characteristics of the goods concerned, in accordance with Article 7(1)(c) of Regulation No 207/2009, is not flawed.
30      That conclusion is not called into question by the other arguments put forward by the applicant.
31      First, the applicant alleges a breach of the principles laid down in the guidelines relating to procedures before OHIM, Part B, Section 7, paragraph 7.3.1, referred to in the application as the ‘OHIM manual’, according to which, in order to refuse abbreviations, ‘it is not only necessary for the examiner to show that the abbreviation actually is a composition of terms which on their own are purely descriptive, but in addition it must be shown that this abbreviation is commonly used or at least understood by the relevant specialists in the field, as an abbreviation identifying the goods as to their characteristics, rather than as an abbreviation used by only one or two traders to designate their own products’. Furthermore, the applicant submits that the manual specified only that the word ‘flexi’ is synonymous with the word ‘flexible’. Finally, the applicant submits that the manual does not refer to the case-law on which the refusal of registration was based.
32      In that regard, it must first be noted that the contested decision does not infringe the part of the guidelines cited by the applicant. It is clear from that extract from the guidelines that it is not necessary to show common use of an abbreviation, but suffices, as was established in paragraphs 20 to 24 above, that an abbreviation be understood by a not insignificant number of persons amongst the relevant public. Furthermore, the fact that the guidelines make reference only to the term ‘flexi’ does not preclude, in itself, that the abbreviation ‘flex’ may be considered as referring to the terms ‘flexible’ or ‘flexibility’.
33      Moreover, nothing leads to the conclusion that the OHIM guidelines prevail over the EU legislation in the field. The OHIM guidelines cannot prevail over the provisions of Regulation No 207/2009 or indeed influence the interpretation of that regulation by the Courts of the European Union. On the contrary, they are designed to be read in accordance with the provisions of Regulation No 207/2009 (judgment of 27 June 2012 in Interkobo v OHIM — XXXLutz Marken (my baby), T‑523/10, ECR, EU:T:2012:326, paragraph 29).
34      It is also apparent from the foregoing that, contrary to what the applicant appears to suggest in paragraph 16 of the application, the question whether OHIM guidelines refer or do not refer to relevant General Court judgments is irrelevant for the outcome of the present proceedings.
35      Second, the applicant submits that the judgment FLEXI AIR, cited in paragraph 21 above (EU:T:2005:102), was not relevant for the outcome of the present proceedings. The applicant also states that, in that judgment, the earlier mark FLEX was not examined as to its registrability. Furthermore, the applicant submits that the earlier OHIM decisions referred to in support of the refusal to register the mark applied for related to specific circumstances that differed from those in the present proceedings and are not binding the Board of Appeal.
36      In that regard, it must be pointed out that, in paragraph 19 of the contested decision, the Board of Appeal merely observed that, in the case-law and the decision-making practice of OHIM referred to, the word element ‘flex’ has been considered, on several occasions, to be descriptive. The Board accepts, however, that ‘depending on what goods are applied for’ the term could also be seen as evocative. In paragraph 17 of the contested decision, the Board of Appeal observes that, in its judgment in FLEXI AIR, cited in paragraph 21 above (EU:T:2005:102), the Court held that the terms ‘flex’ and ‘flexi’ both referred to flexibility.
37      The Court finds that those observations by the Board of Appeal are correct. Contrary to what the applicant appears to suggest, the Board of Appeal did not fail to have regard to the fact that the circumstances in the cases that it referred to were specific to each case. On the contrary, the Board of Appeal carried out, in paragraph 20 of the contested decision, an individual assessment of the descriptive character of the mark applied for in relation to the goods intended to be covered by it.
38      Furthermore, while it is true that that case related to specific circumstances that differed from those in the present case, in that it concerned opposition proceedings brought under Article 8(1)(b) of Regulation No 207/2009 that opposed earlier national word marks, each made up of the element ‘flex’, and the word sign applied for, ‘FLEXI AIR’, and concerned goods different from those in the present case, it must be held that those circumstances, including the fact that, in the judgment cited, the mark FLEX was not examined as regards its registrability, do not have any impact on the question as to what meanings the consumer might attribute to the word ‘flex’. The Court’s finding in its judgment in FLEXI AIR, paragraph 21 above (EU:T:2005:102, paragraph 78), that the English terms ‘flex’ and ‘flexi’ both refer to flexibility, does not flow from circumstances specific to that case, but is based on a linguistic analysis of general application carried out by the Court. The Board of Appeal was therefore entitled to refer to that finding.
39      Third, the applicant refers to the decision of the Second Board of Appeal of 22 January 2010 (Case R 651/2009-2) (‘Bicoflex’) in which the term ‘flex’ was considered to be evocative of the flexibility of the goods in question, namely, inter alia, mattresses and beds within Class 20 within the meaning of the Nice Agreement, and not merely descriptive of those goods.
40      It should be recalled that a term is not descriptive, within the meaning of Article 7(1)(c) of Regulation No 207/2009 unless there is, in accordance with the case-law cited in paragraph 14 above, a sufficiently direct and specific relationship between the term and the goods that it designates with the result that, in the eyes of the relevant public, that term constitutes a description of the goods concerned or of one of their characteristics. If the same term can therefore, depending on the goods that it designates, be descriptive or evocative of those goods, or even lack any connection with those goods, the fact that, in the Bicoflex case, cited in paragraph 39 above, the term ‘flex’ was considered to be evocative, inter alia, of mattresses and beds, is irrelevant to the question whether, in the present case, that term is descriptive of hearing aids, their accessories or their constituent parts.
41      Fourth, the applicant claims, in paragraph 34 of the application, that ‘although not part of this appeal’, the mark applied for is also not caught by the prohibition laid down in Article 7(1)(b) of Regulation No 207/2009.
42      It is sufficient, in that regard, to hold that that claim is ineffective, since the question whether the mark applied for is caught by the prohibition laid down in Article 7(1)(b) of Regulation No 207/2009 is not capable of affecting the lawfulness of the contested decision, which was not based on that provision.
43      It follows from all the foregoing that the contested decision is not vitiated by error in so far as it held that there was an absolute ground for refusal within the meaning of Article 7(1)(c) of Regulation No 207/2009.
44      In the light of the all the foregoing, the first plea must be dismissed.
The second plea alleging infringement of Article 7(2) of Regulation No 207/2009
45      By its second plea, the applicant, challenged by OHIM on this point, alleges that the Board of Appeal did not clearly state whether it carried out its assessment only by reference to the relevant public in Anglophone Member States or whether it had also considered other Member States.
46      The Court notes that paragraph 16 of the contested decision is worded as follows: ‘[…] the Board will consider that the public by reference to whom the absolute ground of refusal must be assessed consists of at least the public in the Member States in which English is the official language, i.e. Ireland, Malta and the United Kingdom. The Board will limit its assessment to these Member States and will refrain at this stage from considering the language knowledge of the relevant [public] in the various other Member States’.
47      The Board of Appeal thus clearly stated that it would limit itself, for the purposes of its assessment, to the relevant Anglophone public of those Member States. Furthermore, the contested decision refers, in paragraph 22, to the English of common parlance, and, consequently, to Anglophone consumers. There is no doubt, therefore, that the Board of Appeal effectively carried out its analysis in relation to the Anglophone public of those Member States.
48      Having regard to the foregoing, the second plea raised by the applicant must be dismissed.
49      It follows that the present appeal must be dismissed in its entirety.
Costs
50      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Sonova Holding AG to pay the costs.
Dittrich
Schwarcz
Tomljenović
Delivered in open court in Luxembourg on 7 October 2015.
[Signatures]
* Language of the case: English.