JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
31 January 2019 (*)
(EU trade mark — Application for EU word mark STREAMS — Absolute grounds for refusal — Descriptive character — Article 7(1)(c) and 7(2) of Regulation (EU) 2017/1001 — Previous EUIPO practice)
In Case T‑97/18,
DeepMind Technologies Ltd, established in London (United Kingdom), represented by T. St Quintin, Barrister, K. Gilbert and G. Lodge, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented initially by V. Ruzek and D. Walicka, and subsequently by V. Ruzek and H. O’Neill, acting as Agents,
defendant,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 27 November 2017 (Case R 35/2017‑1), relating to an application for registration of the word sign STREAMS as an EU trade mark,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk and C. Mac Eochaidh (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 16 February 2018,
having regard to the response lodged at the Court Registry on 10 May 2018,
having regard to the letter by which the applicant withdrew its request for a hearing and the letter by which EUIPO waived the right to a hearing, and having decided, pursuant to Article 108(2) of the Rules of Procedure of the General Court, to rule on the action without an oral part of the procedure,
gives the following
Judgment
Background to the dispute
1        On 29 February 2016, Google Inc. 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 STREAMS.
3        The goods and services in respect of which registration was sought are in Classes 9 and 42 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 9: ‘Computer software for accessing and viewing patient medical information’;
–        Class 42: ‘Application service provider (ASP) featuring computer software for accessing and viewing patient medical information’.
4        On 21 March 2016, the examiner provisionally rejected the application for registration, on the basis of Article 7(1)(b) and (c), read in conjunction with Article 7(2), of Regulation No 207/2009 (now Article 7(1)(b) and (c) and Article 7(2) of Regulation 2017/1001, respectively).
5        On 19 July 2016, Google submitted observations against the provisional rejection of the application for registration.
6        On 11 October 2016, the application for registration was transferred to the applicant, DeepMind Technologies Ltd.
7        By decision of 8 November 2016, the examiner maintained her objections and rejected the application for registration in its entirety (‘the examiner’s decision’).
8        On 5 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 the examiner’s decision. In the statement setting out the grounds of appeal, the applicant, inter alia, requested the limitation of the list of goods and services covered by the mark applied for ‘if, notwithstanding these submissions, the Board of Appeal [were] nevertheless minded to uphold the examiner’s decision’. The applicant thus sought, with regard to the goods and services which are the subject matter of the mark applied for, as described in paragraph 3 above, the following specification: ‘excluding computer software for use in streaming media, video content or data over the Internet’.
9        By decision of 27 November 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In that regard, first, the Board of Appeal found, in paragraphs 11 to 13 of the contested decision, that the limitation of the list of goods and services covered by the mark applied for was inadmissible since it had not been made unconditionally. It also stated that, even if it were accepted, that limitation would have no impact on the outcome of the procedure. Secondly, the Board of Appeal found, in paragraphs 29 to 36 of the contested decision, that the mark applied for could not be registered under Article 7(1)(c) of Regulation 2017/1001, since it designated the characteristics, kind and quality of the goods and services concerned. Thirdly, it stated, in paragraphs 42 to 45 of the contested decision, that the mark applied for could not be registered in accordance with Article 7(1)(b) of Regulation 2017/1001 because it was devoid of any distinctive character. Fourthly, the Board of Appeal concluded, in paragraphs 46 to 49 of the contested decision, that the fact that various marks containing the words ‘stream’ or ‘streams’ had been registered previously could not have the effect of authorising the registration of a trade mark which was caught by the grounds for refusal laid down in Article 7(1) of Regulation 2017/1001.
Forms of order sought
10      The applicant claims that the Court should:
–        amend and replace the contested decision with a view to finding that the application should not have been refused;
–        in the alternative, 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
The limitation of the list of goods and services concerned
12      After the application had been filed, the applicant wrote, on 21 February 2018, to EUIPO to request a limitation of the list of goods and services concerned in order to exclude ‘computer software for use in streaming medical information’.
13      In the response, EUIPO disputes the admissibility of that request.
14      By letter of 2 November 2018, the applicant informed the Court that EUIPO had finally rejected that request. Accordingly, the applicant stated that it no longer intended to rely on that limitation of the list of goods and services concerned in the present proceedings.
15      In view of the foregoing, it must be held that the question of the admissibility of that limitation of the list of goods and services concerned has become moot.
Substance
16      As a preliminary point, it must be held that, by its first and principal head of claim, the applicant asks the Court, in essence, to vary the contested decision. By its second head of claim, put forward in the alternative, the applicant seeks annulment of the contested decision.
17      With regard to claims for variation, it follows from settled case-law that exercise of the power to vary decisions must, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
18      The Court thus takes the view that it is necessary to review the assessment made by the Board of Appeal and that this involves first assessing the applicant’s pleas seeking the annulment of the contested decision.
19      In support of its application for annulment, the applicant relies on three pleas in law, alleging, first, infringement of Article 7 of Regulation 2017/1001, secondly, infringement of the obligation to state reasons and, thirdly, infringement of the principles of equal treatment and sound administration.
The first plea in law, alleging infringement of Article 7 of Regulation 2017/1001
20      In support of its first plea, the applicant puts forward, in essence, two complaints, alleging, respectively, infringement of Article 7(1)(b) and infringement of Article 7(1)(c), read in conjunction with Article 7(2), of Regulation 2017/1001.
21      As regards the second complaint, the applicant submits that the Board of Appeal was wrong to conclude that the mark applied for would be perceived immediately, without further thought, as a description of the characteristics of the goods or services in respect of which registration was sought.
22      For the applicant, that incorrect conclusion stems from three errors of assessment. First, the Board of Appeal failed to take account of the fact that, for the relevant public, a data streaming device or service provides transient access to those data. Secondly, the Board of Appeal failed to take into account the fact that the goods and services concerned cannot function if the patient’s medical data are only provided transiently; on the contrary, those goods and services require continuous presentation of those data. Thirdly, the Board of Appeal did not take account of the essential and decisive difference between the plural form of the word ‘stream’, which is unknown in the context of access to computer data, and the singular form of that word. Likewise, the Board of Appeal erred in relying solely on the dictionary definitions of the word ‘stream’.
23      EUIPO disputes those arguments.
24      Article 7(1)(c) of Regulation 2017/1001 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.
25      According to the case-law, Article 7(1)(c) of Regulation 2017/1001 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 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).
26      Furthermore, 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 2017/1001, 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).
27      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 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, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16 and the case-law cited).
28      Lastly, it must be borne in mind that the descriptive character of a sign may be assessed only, first, in relation to the understanding of the mark by the relevant public and, second, in relation 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).
29      It is in the light of those considerations that the Court must examine whether, as the applicant submits, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 by finding that the mark applied for had a descriptive character.
30      In the first place, the Board of Appeal found, in paragraphs 21 to 24 of the contested decision, that the relevant public was the public of the European Union composed of English-speaking medical personnel and health care professionals or having a sufficient knowledge of the use of English terminology in the field of information technology. Those findings, which, moreover, are not disputed by the parties, must be upheld.
31      In the second place, the Board of Appeal noted, in paragraph 29 of the contested decision, that the mark applied for was the plural form of the word ‘stream’, which, in computing, means a continuous flow of data or instructions, in particular a flow with a constant or predictable rate. The Board of Appeal also stated that the entry for ‘stream’ in the Oxford Dictionary demonstrated the use of that word in its plural form and with the same meaning.
32      In that regard, the applicant’s arguments that the plural form of the word ‘stream’, first, differs decisively from the singular form of that word, secondly, had never been used in the field of access to data and, thirdly, was unknown to the relevant public in that context, cannot succeed.
33      First, the applicant has not provided the Court with any evidence in support of those three assertions.
34      Secondly, in order for EUIPO to refuse registration on the basis of Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications composing the mark that are referred to in that provision must 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. 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, judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32, and of 26 October 2017, Alpirsbacher Klosterbräu Glauner v EUIPO (Klosterstoff), T‑844/16, EU:T:2017:759, paragraph 23 and the case-law cited).
35      Accordingly, the Board of Appeal did not err in finding, in paragraph 29 of the contested decision and on the basis of, inter alia, the Oxford Dictionary, that the mark applied for will be perceived by the relevant public as the plural form of the word ‘stream’, used in the field of data transmission.
36      In the third place, the Board of Appeal failed, in the applicant’s view, to take account of the fact that the relevant public will always consider that a data streaming device or service provides transient access to those data. In essence, the applicant submits that the streaming of data, characterised by its transient access to data, differs from the goods and services covered by the mark applied for, in that those goods and services require a non-transient presentation of patients’ medical data. It follows that the word ‘streams’, in that it refers to a continuous flow (‘streaming’ in English) and therefore a transient access to data, is not descriptive of the goods and services in question, since they require permanent access to those medical data of patients.
37      However, as EUIPO contends, it cannot be presumed, and, moreover, the applicant has not submitted any evidence to that effect, that the relevant public, composed of medical personnel and health care professionals, has a sufficiently thorough knowledge of the relevant technology concerned to enable it to distinguish, without further reflection, the technical characteristics of data streams from those of the goods and services covered by the mark applied for. Furthermore, as the Board of Appeal noted in paragraph 32 of the contested decision, there is no obstacle to the transmission of patient medical data by streaming. Lastly, as EUIPO states, the streaming of those data also has the advantage of ensuring their confidentiality since they are not downloaded and are deleted after use.
38      Thus correctly the Board of Appeal found that the relevant public will have no difficulty in understanding that the mark applied for designates the type and quality of the goods and services concerned, namely, that they allow access to patient medical data and for the data to be consulted in real time. The second complaint, alleging infringement of Article 7(1)(c), read in conjunction with Article 7(2), of Regulation 2017/1001, must therefore be rejected.
39      In the light of the foregoing considerations, the first complaint, alleging infringement of Article 7(1)(b), read in conjunction with Article 7(2), of Regulation 2017/1001, also cannot succeed.
40      As is evident from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal applies in order for the sign 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). As a consequence, since it is apparent from examination of the second complaint that the sign submitted for registration is descriptive of the goods and services in question, within the meaning of Article 7(1)(c) of Regulation 2017/1001, and that that ground alone justifies the contested refusal of registration, there is no need, in any event, to examine the merits of the complaint 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).
41      It follows that the first plea in law must be rejected as unfounded.
The second plea in law, alleging breach of the duty to state reasons
42      In support of its second plea, the applicant submits, in essence, that the reasoning in paragraph 13 of the contested decision is incomprehensible or unjustifiable or both.
43      EUIPO takes issue with those arguments.
44      It must be noted that Article 94(1) of Regulation 2017/1001 lays down the requirement that EUIPO must state reasons for its decisions. According to the case-law, that obligation to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally, and its purpose is twofold: first, to enable the persons concerned to ascertain the reasons for the measure taken in order to defend their rights and, second, to enable the European Union Courts to exercise their power to review the legality of the decision (see judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86 and the case-law cited, and of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 19 and the case-law cited).
45      In the present case, first, the Board of Appeal found, in paragraph 12 of the contested decision, that the restriction of the list of goods and services covered by the mark applied for was inadmissible. That application had been submitted only in the event that the Board of Appeal intended to uphold the decision of the examiner. However, as the Board of Appeal correctly noted, the case-law requires that such a request be made expressly and unconditionally (judgment of 27 February 2002, ELLOS, T‑219/00, EU:T:2002:44, paragraphs 60 and 61).
46      Secondly, the Board of Appeal stated, inter alia, in paragraph 13 of the contested decision, that, ‘notwithstanding, even if [it were] accepted’ and ‘even [if it were taken] into account’, that limitation would not affect the outcome of the proceedings.
47      It is common ground that, by the present plea, the applicant does not seek to call into question the inadmissibility established, primarily, in paragraph 12 of the contested decision. The applicant merely challenges the reasoning adopted by the Board of Appeal in paragraph 13 of that decision. It is apparent from the wording of that latter paragraph that it was set out for the sake of completeness. As EUIPO contends, however, it is only for the sake of completeness that the Board of Appeal examined the possible consequences on the proceedings of taking into account that limitation of the list of goods and services covered by the mark applied for, although it had already been declared inadmissible.
48      Since the applicant disputes a ground added for the sake of completeness, which, admittedly, is not entirely clear, the acceptance of the second plea would not allow the inadmissibility found by the Board of Appeal to be overturned or lead to the annulment of the contested decision. That plea is thus ineffective and must, therefore, be rejected (see, to that effect, judgment of 30 April 2013, Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, not published, EU:T:2013:225, paragraph 27 and the case-law cited).
The third plea in law, alleging breach of the principles of equal treatment and sound administration
49      In support of its third plea, the applicant submits that, in refusing registration of the mark applied for, the Board of Appeal failed to provide a sufficient statement of reasons for departing from EUIPO’s previous decision-making practice. It thus complains that the Board of Appeal did not take account of two earlier EU word marks, STREAMS and STREAM+, which were accepted for registration for the goods and services in Classes 9 and 42, without any objection on the part of the examiner. The Board of Appeal, moreover, erred in finding that it was not bound by those previous decisions of EUIPO.
50      EUIPO disputes those arguments.
51      In that regard, it should be noted that, in accordance with settled 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 manner 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).
52      It follows from those principles that it is incumbent on the Boards of Appeal, in cases where they decide to take a different view from that adopted in previous decisions concerning similar applications brought before them, to provide an explicit statement of their reasoning for departing from those decisions (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 66). However, such a duty to state reasons for departing from previous decisions is less important with regard to an assessment which depends strictly on the mark applied for, which in respect of factual findings does not depend on that mark (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 77 and 81).
53      The decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are called on to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the European Union Courts, and not on the basis of EUIPO’s previous decision-making practice (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65; of 2 May 2012, UniversalPHOLED, T‑435/11, not published, EU:T:2012:210, paragraph 37; and of 8 May 2012, Mizuno v OHIM — Golfino(G), T‑101/11, not published, EU:T:2012:223, paragraph 77 and the case-law cited).
54      In the present case, contrary to what is claimed by the applicant, the Board of Appeal gave express reasons for departing from the previous decisions relied on by the applicant. It considered, in paragraph 49 of the contested decision, that the fact that EUIPO had previously accepted trade marks of third parties containing the word element ‘stream’ or ‘streams’, either alone or in combination with another element for goods and services in Classes 9 and 42, cannot have the effect of authorising the unwarranted registration of a mark which, in the light of the facts of the present case, is caught by the grounds for refusal laid down in Article 7(1) of Regulation 2017/1001.
55      The applicant cannot dispute the soundness of that statement of reasons without calling into question the merits of the refusal to register the mark applied for. However, it must be noted, as is apparent from paragraphs 30 to 38 above, that the Board of Appeal acted correctly in finding that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001.
56      In the light of all those considerations, the third plea must be rejected and the action therefore dismissed in its entirety.
Costs
57      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 incurred by EUIPO, 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 DeepMind Technologies Ltd to pay the costs.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 31 January 2019.
E. Coulon
S. Gervasoni
Registrar
President
*      Language of the case: English.