JUDGMENT OF THE GENERAL COURT (Second Chamber)
20 November 2018 (*)
(EU trade mark — Application for the EU word mark ST ANDREWS — Absolute ground for refusal — Descriptive character — Geographical origin — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001))
In Case T‑790/17,
St. Andrews Links Ltd, established in St Andrews (United Kingdom), represented by B. Hattier, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by K. Kompari, acting as Agent,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 2 October 2017 (Case R 92/2017-4), relating to an application for registration of the word sign ST ANDREWS as an EU trade mark,
THE GENERAL COURT (Second Chamber),
composed of M. Prek, President, F. Schalin and M.J. Costeira (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 5 December 2017,
having regard to the response lodged at the Court Registry on 15 May 2018,
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 9 December 2010, the applicant, St. Andrews Links Ltd, 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), as amended (replaced by 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        Registration as a mark was sought for the word sign ST ANDREWS.
3        The goods and services in respect of which registration was sought are in Classes 25, 28, 35 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 to the following description:
–        Class 25: ‘Clothing; Footwear; Headgear; Headwear; Sportswear’;
–        Class 28: ‘Games; Stand-alone video games machines; Hand-held video games machines’;
–        Class 35: ‘Retail store services; Online retail store services; Retail store services featuring clothing, games and playthings’;
–        Class 41: ‘Arranging and conducting entertainment conferences, congresses, events, competitions and seminars; Club services (entertainment or education); Providing a website featuring information regarding conferences, congresses, events, competitions and seminars; Special event planning; Organisation of cultural events and of exhibitions for cultural or educational purposes; Publication of books, electronic books and journals on-line; Vocational guidance and instruction services (education or training advice); Providing on-line computer games’.
4        By decision of 18 November 2016, the examiner refused the application for registration in respect of all the goods and services covered by the mark applied for on the basis of Article 7(1)(b) and (c) and (3) of Regulation No 207/2009 (now Article 7(1)(b) and (c) and (3) of Regulation 2017/1001). He considered that, first, the mark applied for was descriptive of certain positive characteristics of the goods and services covered. Secondly, the evidence adduced by the applicant was insufficient to prove the acquired distinctiveness through use of the mark applied for.
5        On 13 January 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against that decision.
6        By decision of 2 October 2017 (‘the contested decision’), the Fourth Board of Appeal, first, annulled the examiner’s decision in so far as it had refused the application for registration of the mark applied for in respect of the following goods and services:
–        Class 25: ‘Clothing; Footwear; Headgear; Headwear; Sportswear’;
–        Class 28: ‘Games; Stand-alone video games machines; Hand-held video games machines’;
–        Class 35: ‘Retail store services; Online retail store services; Retail store services featuring clothing, games and playthings’;
–        Class 41: ‘Providing on-line computer games’.
7        Secondly, the Board of Appeal allowed the EU trade mark application to be published for the goods and services cited in paragraph 6 above.
8        Thirdly, the Board of Appeal dismissed the appeal for the following services:
–        Class 41: ‘Arranging and conducting entertainment conferences, congresses, events, competitions and seminars; Club services (entertainment or education); Providing a website featuring information regarding conferences, congresses, events, competitions and seminars; Special event planning; Organisation of cultural events and of exhibitions for cultural or educational purposes; Publication of books, electronic books and journals on-line; Vocational guidance and instruction services (education or training advice)’.
9        More specifically, the Board of Appeal found, in the first place, that the expression ‘st andrews’ referred above all to a town known for its golf courses though not particularly for the manufacturing or marketing of clothing, footwear, headgear, games and playthings.
10      Consequently, the expression ‘st andrews’ could not be considered indicative of the geographical origin, first, of the goods covered by the mark applied for in Classes 25, 28 and 35 and, secondly, the services for ‘providing online computer games’ covered by the mark applied for in Class 41. The relevant consumer will not establish a link between those goods and services and that expression.
11      On the other hand, the Board of Appeal found, in essence, that, such a link could be established between the other services covered by the mark applied for in Class 41 and the expression ‘st andrews’. Those services can all directly relate to golf sports, in other words, to the particular field for which the town of St Andrews (United Kingdom) is very well known. Consequently, the use of that expression in connection with those services will be perceived by the relevant public as a descriptive indication of the geographical origin of those services.
12      In the second place, the Board of Appeal found that the evidence adduced by the applicant was insufficient to enable an assessment of whether the relevant class of persons, or at least a significant proportion thereof, identified the mark applied for as a trade mark in the European Union for the services at issue.
Procedure and forms of order sought
13      By application lodged at the Court Registry on 5 December 2017, the applicant brought the present action.
14      The applicant claims that the Court should:
–        annul the contested decision in so far as it dismissed the application for registration of the mark applied for in respect of the following services in Class 41: ‘Arranging and conducting entertainment conferences, congresses, events, competitions and seminars; Club services (entertainment or education); Providing a website featuring information regarding conferences, congresses, events, competitions and seminars; Special event planning; Organisation of cultural events and of exhibitions for cultural or educational purposes; Publication of books, electronic books and journals on-line; Vocational guidance and instruction services (education or training advice)’.
–        allow registration of that mark for the abovementioned services;
–        order EUIPO to pay the costs.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Substance
16      In support of the action, the applicant raises a single plea in law, alleging the infringement of Article 7(1)(c) of Regulation No 207/2009.
17      The applicant submits that the Board of Appeal made an error of assessment in finding that the expression ‘st andrews’, in connection with the services covered by the mark applied for in Class 41, could be perceived by the relevant public as an indication of geographical origin for those services. In that regard, it submits, first, that the relevant public will attach more importance to the applicant’s reputation than to the fact that the services at issue originate from the town of St Andrews or are organised in St Andrews. Secondly, contrary to what the Board of Appeal found in the contested decision, the services at issue are not specifically associated with golf sports, so that they would not automatically be perceived by that public as being linked to those sports. Thirdly, there is no trade practice or tradition to refer to the geographical origin of the services at issue.
18      EUIPO disputes the applicant’s arguments.
19      In that regard, it must be borne in mind that, pursuant to Article 7(1)(c) of Regulation No 207/2009, ‘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.
20      In addition, Article 7(2) of Regulation No 207/2009 (now Article 7(2) of Regulation 2017/1001) states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
21      According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, namely, that descriptive indications or signs relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision prevents, therefore, such signs and indications being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 6 October 2017, Karelia v EUIPO (KARELIA), T‑878/16, not published, EU:T:2017:702, paragraph 14 and the case-law cited).
22      As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is applied for, especially geographical names, it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 15 and the case-law cited).
23      Firstly, the registration of geographical names as trade marks where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with that category in the mind of the relevant class of persons, is excluded as, secondly, is the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods or services concerned (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 16 and the case-law cited).
24      However, it must be noted that, in principle, Article 7(1)(c) of Regulation No 207/2009 does not preclude the registration of geographical names which are unknown to the relevant class of persons — or at least unknown as the designation of a geographical location — or of names in respect of which, because of the type of place they designate, such persons are unlikely to believe that the category of goods or services concerned originates there (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 17 and the case-law cited).
25      The descriptive character of a sign cannot be assessed other than by reference to the goods and 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 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 18 and the case-law cited).
26      In making that assessment, EUIPO is bound to establish that the geographical name is known to the relevant class of persons as the designation of a place. What is more, the name in question must suggest a current association, in the mind of the relevant class of persons, with the category of goods or services in question, or else it must be reasonable to assume that such a name may, in the view of those persons, designate the geographical origin of that category of goods or services. In making that assessment, particular consideration should be given to the relevant class of persons’ degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 19 and the case-law cited).
27      It is in the light of those considerations that the Court must assess whether, as the applicant maintains, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 in concluding that the mark applied for constituted a geographical indication of origin of a place known to the relevant public that would provide information about the geographical origin of the services at issue, not their commercial origin.
28      In the first place, it must be noted that the Board of Appeal found, first, in paragraphs 17 and 18 of the contested decision, that the relevant public, having regard to the goods and services covered by the mark applied for, was composed both of average consumers and golf professionals and amateurs and, secondly, in paragraph 20 of that decision, that, while the expression ‘st andrews’ is meaningful in English as referring to a town in Scotland, well known for golf sports, the relevant public was composed of all consumers in the European Union. Those assessments, which are not moreover challenged by the applicant, must be endorsed.
29      In the second place, it must be stated that the Board of Appeal found, in paragraph 24 of the contested decision, that the town of St Andrews was famous for golf sports and particularly well known by golf professionals and enthusiasts. That assessment, which is not moreover challenged by the applicant, must be endorsed.
30      Thirdly, it must be noted that the Board of Appeal found that the mark applied for, associated with the services at issue, would be perceived by the relevant public, and in particular by golf professionals and amateurs, as a clear and unequivocal indication of the geographical origin of those services. Accordingly, the mark applied for is linked to the services at issue in a sufficiently direct and specific way to be caught by the prohibition laid down in Article 7(1)(c) of Regulation No 207/2009.
31      Contrary to what the applicant maintains, that conclusion of the Board of Appeal must be upheld.
32      It must be borne in mind that, in accordance with Article 7(1)(c) of Regulation No 207/2009, the registration of geographical names as trade marks is excluded, where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with that category in the mind of the relevant class of persons, as is also the registration of geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods or services concerned (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 16 and the case-law cited).
33      In addition, it is apparent from the case-law that, in order to examine whether the conditions for application of the ground for refusal to register at issue have been satisfied, account must be taken of all the relevant circumstances, such as the nature of the goods or services designated, the greater or lesser reputation, especially within the economic sector involved, of the geographical location in question and the relevant public’s greater or lesser familiarity with it, the customs obtaining in the area of activity concerned and the question to what extent the geographical origin of the goods or services at issue may be relevant, in the view of the persons concerned, to the assessment of the quality or other characteristics of the goods or services concerned (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 30 and the case-law cited).
34      In the present case, in order to conclude that the mark applied for, associated with the services at issue, was linked in a sufficiently direct and specific way to be caught by the prohibition laid down in Article 7(1)(c) Regulation No 207/2009, the Board of Appeal, first, took into consideration the considerable reputation of the town of St Andrews for golf sports and the relevant public’s knowledge of that reputation.
35      Secondly, the Board of Appeal stated, in paragraph 52 of the contested decision, that the services at issue could all directly relate to golf sports, and in particular to the organisation and planning of golf events, competitions, conferences, congresses, seminars, exhibitions and training, including club services and publications related to the aforesaid, that is to the particular field for which the town of St Andrews was well known.
36      In addition, the services covered by the mark applied for do not possess any particular quality that could lead the relevant public to disassociate the geographical indication from the geographical origin of those services.
37      Thirdly, it must be stated that the applicant acknowledges itself, in the application, that the services at issue could, to a certain extent and for part of the relevant public, be linked to some specific competitions that are played on the applicant’s courses.
38      It follows that the Board of Appeal rightly found that there was a link between the expression ‘st andrews’, in the mind of the relevant public, at the very least in so far as golf professionals and amateurs were concerned, and the services covered by the mark applied for in Class 41, and that the expression ‘st andrews’ was likely, in that public’s mind, to designate the geographical origin of those services.
39      Furthermore, in so far as the applicant submits, in essence, that the relevant public will attach more importance to the applicant’s reputation than to the fact that the services at issue originate from the town of St Andrews or are organised in St Andrews, it must be added that the Board of Appeal was entitled to find, in paragraph 32 of the contested decision, without being challenged by the applicant, that there were, in addition to the applicant’s courses, several other major golf courses which lay claim to part of the heritage of St Andrews.
40      In that regard, it must again be borne in mind that Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest, namely, that descriptive indications or signs relating to the categories of goods or services in respect of which registration is sought may be freely used by all. That provision prevents, therefore, such signs and indications being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 14 and the case-law cited).
41      In the present case, it is not disputed that such a likelihood should be considered a strong one, in view of the favourable response which the expression ‘st andrews’ may evoke in connection with golf sports.
42      In that regard, the Court adds that a circumstance in which a mark may have several different meanings does not preclude the application of the absolute ground of refusal set out in Article 7(1)(c) of Regulation No 207/2009. It follows from settled case-law that a word sign must be refused, pursuant to Article 7(1)(c) of Regulation No 207/2009, if at least one of its possible meanings identifies a feature of the goods or services concerned (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 37 and the case-law cited).
43      In the present case, the applicant does not contest the assertion that the expression ‘st andrews’ is known by the relevant public as a town famous for golf sports and particularly well known by golf professionals or enthusiasts. Consequently, other possible meanings for that geographical indication are without relevance since it is sufficient if at least one of its possible meanings designates a characteristic of the goods concerned (see, to that effect, judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 38 and the case-law cited).
44      In all events, it must be held that the Board of Appeal was entitled to find that the mark applied for could not be registered as an EU trade mark, being incompatible with the absolute ground of refusal set out in Article 7(1)(c) of Regulation No 207/2009.
45      None of the arguments put forward by the applicant is such as to call in question that conclusion.
46      In the first place, the applicant submits that even if the services at issue could, to a certain extent and for part of the relevant public, be linked with some specific competitions that are played on the applicant’s golf courses, the relevant public will not expect that the mark applied for denotes any geographical origin for those services.
47      In that regard, it must be noted that the applicant does not dispute the Board of Appeal’s conclusion as to the existence of a link between the town of St Andrews and the services at issue for part of the relevant public composed of golf professionals or amateurs.
48      The Court has already held that, for a sign to fall within the scope of the prohibition in Article 7(1)(b) or (c) of Regulation No 207/2009, it was sufficient that a ground of refusal existed in relation to a non-negligible part of the target public and that it was unnecessary in that regard to examine whether other consumers belonging to the relevant public were also aware of that sign. In addition, it should be noted that, under Article 7(2) of Regulation No 207/2009, Article 7(1) of that regulation applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 27 and the case-law cited).
49      It follows that, in the present case, even assuming the average consumer fails to make a link between the town of St Andrews, to which the mark applied for refers, and the services concerned, such a circumstance cannot call in question the Board of Appeal’s conclusion that that mark is descriptive, if it is established that that sign refers to the origin of the services concerned in the mind of the non-negligible part of the relevant public composed of golf professionals and amateurs.
50      The applicant’s argument cannot, therefore, succeed.
51      In the second place, the applicant complains that the Board of Appeal failed to establish, in assessing the descriptive character of the mark applied for, that it was a trade practice or tradition to indicate the geographical origin of the services at issue.
52      It must be borne in mind that, in order for EUIPO to refuse registration of a trade mark under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 34 and the case-law cited).
53      In addition, it is apparent from the case-law that regardless of whether the characteristics of the goods or services being described are fundamental or accessory on a commercial level, the wording of Article 7(1)(c) of Regulation No 207/2009 does not differentiate between the characteristics that the mark’s component signs or indications can refer to. In the light of the public interest underlying that provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 33 and the case-law cited).
54      The applicant’s argument cannot, therefore, succeed.
55      In the third place, the applicant submits that the relevant public will not automatically believe that the services at issue are specifically linked to golf sports.
56      As EUIPO correctly states in its response, a mark (i) whose sole expression refers to a place well known for golf sports and (ii) in respect of which the services at issue are, inter alia, ‘arranging and conducting competitions’, ‘club services (entertainment or education)’, ‘providing a website featuring information regarding events and competitions’, ‘special event planning’, ‘organisation of cultural events and of exhibitions for cultural or educational purposes’, ‘publication of books, electronic books and journals on-line’, ‘vocational guidance and instruction services (education or training advice)’ will indicate, to the relevant public, at the very least to golf professionals and amateurs, that those services relate to golf.
57      In addition, it must again be borne in mind that for the purposes of assessing a sign’s descriptive character, EUIPO is bound to establish that the name in question suggests a current association, in the mind of the relevant class of persons, with the category of goods or services in question, or else it must be reasonable to assume that such a name may, in the view of those persons, designate the geographical origin of that category of goods or services. In making that assessment, particular consideration should be given to the relevant class of persons’ degree of familiarity with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods or services concerned (see judgment of 6 October 2017, KARELIA, T‑878/16, not published, EU:T:2017:702, paragraph 19 and the case-law cited).
58      In all events, it must be found that the Board of Appeal carried out, in the contested decision, a specific examination of the link capable of existing between the geographical indication of origin and the services covered by the contested mark, and that that examination is free from error.
59      The applicant’s argument cannot, therefore, succeed.
60      It follows that, in the light of all the foregoing considerations, the applicant’s single plea in law must be rejected as unfounded and the action thereby dismissed in its entirety, and there is, therefore, no need to adjudicate on the admissibility, challenged by EUIPO, of the second head of claim in the application seeking registration of the mark applied for in respect of the services at issue.
Costs
61      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.
62      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 (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders St. Andrews Links Ltd to pay the costs.
Prek
Schalin
Costeira
Delivered in open court in Luxembourg on 20 November 2018.
E. Coulon
M. Prek
Registrar
President
*      Language of the case: English.