JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
31 January 2018 (*)
(EU trade mark — International registration designating the European Union — Word mark iGrill — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001))
In Case T‑35/17,
Weber-Stephen Products LLC, established in Palatine, Illinois (United States), represented by R. Niebel and A. Jauch, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 November 2016 (Case R 538/2016–2), relating to the international registration designating the European Union of the word mark iGrill,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik–Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 January 2017,
having regard to the response lodged at the Court Registry on 11 April 2017,
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 23 February 2015, Idevices LLC designated the European Union for international registration No 1 258 162 covering the word mark iGrill. That registration was notified to the European Union Intellectual Property Office (EUIPO) on 30 July 2015, 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        The goods in respect of which registration was sought are in Class 9 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: ‘Computer software, computer hardware and electronic food thermometers, all for use in connection with mobile devices to assist individuals with grilling and cooking activities, namely, for use in providing updated information to a person regarding the timing and preparedness of food being prepared, and informing users as to the anticipated time foods will be finished cooking, and providing warnings when food being prepared are cooking at inadequate heat’.
3        By decision of 22 January 2016, the examiner refused to register the mark applied for in respect of the goods referred to in paragraph 2 above on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009 (now Article 7(1)(b) and (c) and Article 7(2) of Regulation 2017/1001).
4        On 21 March 2016, Idevices filed a notice of appeal with EUIPO against the examiner’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).
5        By decision of 4 November 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal brought by Idevices, on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009. More specifically, it stated that ‘iGrill’ was a neologism composed of the element ‘i’ and the element ‘grill’, written with the letter ‘g’ in upper-case. It therefore took the view that the letter ‘i’, as a prefix, referred to the word ‘interactive’, as well as to information technology, and that the word ‘grill’ referred to a cooking device, with the result that the relevant public will understand the term ‘iGrill’ as referring to an interactive grill or a grill which employs information technology. For that reason, it found that the mark applied for was descriptive of the goods at issue.
6        On 18 January 2017, Idevices lodged an application for registration of the change of proprietor of the international registration at issue with the Word Intellectual Property Organisation (WIPO). As a result of that application, the new proprietor of that international registration is the applicant, Weber-Stephen Products LLC.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        In support of its action, the applicant relies, in essence, on two pleas in law, alleging infringement of Article 7(1)(c) and infringement of Article 7(1)(b) of Regulation No 207/2009, respectively.
The first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009
10      In support of this plea, the applicant raises, in essence, two complaints. By the first complaint, it submits that the mark applied for is not descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009. By the second complaint, it criticises the Board of Appeal for having departed from EUIPO’s decision-making practice by finding that the mark applied for was descriptive.
11      EUIPO disputes those arguments.
The first complaint, alleging that the mark applied for is not descriptive
12      By this complaint, the applicant first of all submits that the first letter of the mark applied for does not have any independent meaning, with the result that the relevant public will perceive that mark as a neologism composed of a single word which has no meaning. Next, whatever the meaning attributed to that letter, the mark applied for is not descriptive due to the fact that the goods at issue are not grills. Lastly, the information obtained from Idevices’ website, ‘www.ideviceinc.com’, on which the Board of Appeal based its assessment, first, does not allow conclusions to be drawn as regards the relevant public’s perception of the mark applied for because that website is directed at consumers in the United States and, second, shows that the mark applied for is used as an indicator of the commercial origin of the goods being sold.
13      It must be recalled that, in accordance with 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. Article 7(2) of that regulation states that Article 7(1) is to apply notwithstanding the fact that the grounds of non-registrability obtain in only part of the European Union.
14      According to case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers being reserved to one undertaking alone because they have been registered as trade marks. That provision pursues an aim which is in the public interest, namely, that such signs or indications may be freely used by all (judgments of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 27, and of 2 May 2012, Universal Display v OHIM (UniversalPHOLED), T‑435/11, not published, EU:T:2012:210, paragraph 14; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).
15      Moreover, signs or indications which may serve, in trade, to designate characteristics of the goods or services 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, thus enabling the consumer who acquires the goods or services 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 of 2 May 2012, UniversalPHOLED, T‑435/11, not published, EU:T:2012:210, paragraph 15; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
16      It follows that, 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 and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 16 October 2014, LarrañagaOtaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16 and the case-law cited).
17      However, for EUIPO to refuse registration of a trade mark on the basis of Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications referred to in that article of which the mark is made up 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 has been submitted, 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. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
18      Lastly, it is important to bear in mind that whether a mark is descriptive may be assessed only by reference to the relevant public’s understanding of the mark and by reference to the goods or services concerned (see judgment of 7 June 2005, Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 26 and the case-law cited).
19      In the present case, it must be pointed out, in the first place, that the applicant does not challenge the definition of the relevant public, as correctly determined by the Board of Appeal, according to which the relevant public for the purposes of the perception of the descriptive character of the mark applied for is the public in the English-speaking European Union, comprising both the general public and specialised public.
20      In the second place, it should be observed, as the Board of Appeal was correct to observe, that the relevant public will perceive the elements ‘grill’ and ‘i’ separately.
21      It is important to note that, when perceiving a word sign, the relevant public will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 57).
22      First, the word ‘grill’ is a common word in English, which denotes a cooking device and will be understood as such. Second, it is a well-known fact, according to case-law, that the letter ‘i’ can mean ‘intelligent’ or refer to information technology (see, to that effect, judgments of 16 December 2010, Ilink Kommunikationssysteme v OHIM (ilink), T‑161/09, not published, EU:T:2010:532, paragraph 30; of 3 September 2015, iNET 24 Holding v OHIM (IDIRECT 24), T‑225/14, not published, EU:T:2015:585, paragraphs 23 and 54; and of 3 December 2015, TrekStor v OHIM — Scanlab (iDrive), T‑105/14, not published, EU:T:2015:924, paragraph 75).
23      In those circumstances, it must be concluded that the mark applied for will be seen as the mere juxtaposition of the two elements ‘i’ and ‘grill’ of which it is composed and not a neologism consisting of a single word which has no obvious meaning.
24      The arguments put forward in that regard by the applicant cannot cast doubt on that conclusion. First, the applicant argues that the case-law relating to the meaning of the letter ‘i’, referred to in paragraph 22 above, is not applicable to the present case because that case-law relates to goods in the ‘technology sector’ or the ‘telecommunications sector’, whereas the mark applied for covers computer software, computer hardware and electronic thermometers, which assist individuals with grilling and cooking.
25      However, that argument is not borne out by the facts, as the applicant does not explain how computer software, computer hardware and electronic thermometers do not relate to the ‘technology sector’, to which it refers.
26      Secondly, the applicant argues that, although a number of English language dictionaries and the website www.acronymfinder.com show that the letter ‘i’ may have a large number of meanings, none of those meanings refers to the English words ‘interactive’ or ‘information technology’.
27      In that regard, it should be recalled that EUIPO is under no obligation to prove that the word mark applied for, or an element thereof, is included in the dictionary. The question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of the relevant EU legislation, as interpreted by the EU judicature. Therefore, it is sufficient that the Board of Appeal applied the descriptiveness test, as interpreted by case-law, in order to reach its decision and it is not obliged to justify its decision by producing evidence (see, to that effect, judgments of 8 July 2004, Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS), T‑289/02, EU:T:2004:227, paragraph 54, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 34). Accordingly, it cannot be inferred from the mere fact that the possible meaning of the letter ‘i’ on which the Board of Appeal based its decision is not referred to in dictionaries or on the website mentioned by the applicant that the relevant public will not be able to perceive that meaning.
28      Thirdly, the applicant argues, first, that the word iGrill does not have any independent meaning on the ground that the addition of a lower-case letter, namely, the letter ‘i’, to a word with an upper-case first letter, namely, the word ‘grill’, is not in accordance with any English language syntax rules and, second, that the expressions referred to in the judgment of 16 December 2010, ilink (T‑161/09, not published, EU:T:2010:532, paragraph 31) and referred to in paragraph 58 of the contested decision, namely, ‘icard’, ‘imarketing’ and ‘ivote’, are not comparable to the mark applied for in so far as those expressions do not contain an upper-case letter.
29      In that regard, it should be noted that, according to settled case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. Consequently, the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark. It follows that it is immaterial that the mark applied for is written in upper-case or lower-case letters for the purposes of assessing its descriptive character (see, to that effect, judgments of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 39, and of 3 December 2015, iDrive, T‑105/14, not published, EU:T:2015:924, paragraph 59).
30      In the third place, the argument put forward by the applicant that, whatever the meaning of the letter ‘i’, the mark applied for is not descriptive as it does not refer to grills but to computer software, computer hardware and electronic thermometers, cannot be accepted.
31      The applicant submits that there is no link between grills and the goods at issue, with the result that the relevant public will not perceive, in the mark applied for, a description of the latter. It argues, in particular, that grills do not have an IT interface and that they cannot be remotely controlled by a computer or by software. Similarly, it argues that a thermometer cannot be classified as intelligent.
32      It should be recalled that, in accordance with the case-law cited in paragraph 17 above, a mark must be considered descriptive where, in one of its possible meanings, it designates the goods concerned or one of their characteristics. Furthermore, the fact that the mark applied for describes a characteristic which does not exist, as technology currently stands, does not preclude it being perceived as descriptive by the relevant public (judgment of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 21).
33      In the present case, first, as the mark applied for must be considered as a whole, and taking into account the findings set out in paragraphs 22 and 23 above, ‘iGrill’ may mean a grill having the characteristic of being intelligent and of making use of information technology. Second, according to the description of the goods at issue, set out in paragraph 2 above, the computer software, computer hardware and electronic food thermometers covered by the mark applied for are intended to be used with mobile devices to assist individuals with grilling and cooking, that is to say, to be used, first, to provide a person with updated information regarding the timing and state of preparation of food being prepared, second, to provide information to users as to the anticipated time food will be finished cooking, and, third, to provide warnings when food being prepared is being cooked at an inadequate temperature. Consequently, it must be held that the goods at issue have the characteristic of making grills intelligent by enabling them to make use of information technology in order to assist their users, regardless of whether or not such products are currently available on the market.
34      In those circumstances, and without it being necessary to rule on the use of evidence by the Board of Appeal relating to the perception of the mark applied for by a public other than the relevant public, the Court finds that, in one of its possible meanings, the mark applied for may, as the Board of Appeal was correct to conclude, serve to designate a characteristic of the goods at issue and that, consequently, it is descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009. For that reason, the first complaint of the first plea in law must be rejected.
The second complaint, alleging that the Board of Appeal departed from EUIPO’s decision-making practice
35      By this complaint, the applicant submits that the Board of Appeal wrongly departed from EUIPO’s decision-making practice, under which it should have found that the letter ‘i’ is not understood by the relevant public as referring to the words ‘information’, ‘internet’ or ‘interactive’, even where the goods covered are part of the information technology sector.
36      In that regard, it should be noted that, in accordance with well-established case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, having regard to the principles of equal treatment and of sound administration, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with special care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered or annulled. Accordingly, such an 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, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76, and order of 26 May 2016, Hewlett Packard Development Company v EUIPO, C‑77/16 P, not published, EU:C:2016:373, paragraph 4). In addition, in its review of legality, the Court is not bound by the decision-making practice of EUIPO, (see, to that effect, judgment of 3 September 2015, IDIRECT 24, T‑225/14, not published, EU:T:2015:585, paragraph 60 and the case-law cited).
37      In the present case, as is apparent from paragraphs 19 to 34 above, the Board of Appeal was entitled to consider that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009, with the result that the applicant cannot successfully rely on previous decisions of EUIPO in order to invalidate that conclusion.
38      It follows that the fact that EUIPO interpreted the letter ‘i’ differently in previous decisions and consented, in those decisions, to the registration of marks with the letter ‘i’ as a prefix, even though the goods and services covered by those marks are part of the information technology sector, does not lead to the conclusion that, in the present case, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009.
39      Therefore, it is necessary to reject the second complaint of the first plea in law and, accordingly, to reject the first plea in law in its entirety.
The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009
40      The applicant argues that the mark applied for is sufficiently distinctive to identify the goods that it covers as originating from a specific undertaking.
41      EUIPO disputes the applicant’s arguments.
42      It should be noted that, as is clear from Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal applies for the sign at issue not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).
43      As a consequence, since, as stated in paragraphs 34 to 38 above, the sign submitted for registration is descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009 and this ground alone justifies refusal of the contested registration, there is no need, in the present case, to examine the merits of the plea alleging infringement of Article 7(1)(b) of that regulation (see, to that effect, order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28).
44      It follows from all the foregoing that the action must be dismissed.
Costs
45      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. 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 (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Weber-Stephen Products LLC to pay the costs.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 31 January 2018.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.