JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
12 March 2019 (*)
(EU trade mark — Application for EU word mark PRO PLAYER — 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‑220/16
Perry Ellis International Group Holdings Ltd, established in Nassau (Bahamas), represented by O. Günzel and C. Tenkhoff, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini and E. Markakis, acting as Agents,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 24 February 2016 (Case R 1091/2015-2), relating to an application for registration of the word sign PRO PLAYER as an EU trade mark,
THE GENERAL COURT (Fourth Chamber)
composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martín and I. Reine (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 9 May 2016,
having regard to the response lodged at the Court Registry on 28 July 2016,
having regard to the written questions that were put to the parties by the Court and their responses to those questions, which were lodged at the Court Registry on 10 and 21 August and 26 and 27 October 2017,
having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Fourth Chamber,
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 15 September 2014, the applicant, Perry Ellis International Group Holdings 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        The trade mark for which registration was sought is the word sign PRO PLAYER.
3        The goods in respect of which registration was sought are in Class 25 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: ‘Clothing, footwear and headgear’.
4        By decision of 7 October 2014, the examiner provisionally refused registration of the mark applied for in respect of the goods referred to in paragraph 3 above on the ground that such registration was caught by the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), read in conjunction with Article 7(2) of that regulation (now Article 7(2) of Regulation 2017/1001).
5        The applicant responded to the provisional refusal by letter of 9 February 2015.
6        By decision of 8 April 2015, the examiner rejected the application for registration in respect of the goods referred to in paragraph 3 above on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.
7        On 8 June 2015, the applicant filed a notice of appeal against the refusal and submitted its statement of grounds on 31 July 2015.
8        By decision of 24 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
9        In the first place, since the goods at issue were mass-consumption goods, the Board of Appeal defined the relevant public as the public at large with an average level of attention. The relevant public was the English-speaking general public in the Member States of the European Union in which English is the official language.
10      In the second place, the Board of Appeal examined the meaning of the various components of the mark applied for as well as the meaning of the mark taken as a whole. In its analysis of the descriptive character of that mark, the Board of Appeal considered, in essence, that the mark indicated to consumers that the goods in question were either intended for use by professional players of a sport or game, or were of a certain quality that indicated to the general public that those goods were the same as or very similar to those used or worn by professionals. The sign at issue, as a whole, could not create an impression sufficiently far removed from that produced by the mere combination of the descriptive meanings lent by the words ‘pro’ and ‘player’. Thus, the Board of Appeal concluded that the sign at issue was descriptive, within the meaning of Article 7(1)(c) of Regulation No 207/2009.
11      In the third place, in its examination of the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009, the Board of Appeal found that the descriptive character of the mark applied for was in itself sufficient to justify the finding that the mark lacks distinctive character. Furthermore, the Board of Appeal considered that the relevant public would perceive that sign as a laudatory promotional message, which meant that that public would not perceive it as an indication of the commercial origin of the goods in question.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant raises two pleas in law, alleging, first, infringement of Article 7(1)(c) and Article 7(2) of Regulation No 207/2009 and, secondly, infringement of Article 7(1)(b) and Article 7(2) of that regulation.
The first plea, alleging infringement of Article 7(1)(c) and Article 7(2) of Regulation No 207/2009
15      In the first plea, the applicant claims, in essence, that the Board of Appeal incorrectly applied Article 7(1)(c) and Article 7(2) of Regulation No 207/2009. It maintains that the Board of Appeal was wrong to assume that the mark applied for made reference to the essential characteristics of the goods concerned. The applicant submits that the Board of Appeal’s assessment failed to take account of the relevant public’s understanding of the mark. The applicant also maintains that there is not a sufficiently direct and specific link between the mark applied for and the goods at issue. Moreover, even if it were necessary to accept the interpretation of the Board of Appeal, the sign at issue would not be descriptive and may, at most, be deemed to allude to a positive image. Lastly, the applicant considers that the Board of Appeal departed from EUIPO’s decision-making practice.
16      EUIPO disputes the applicant’s arguments.
17      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 may not be registered. Furthermore, Article 7(2) of that regulation provides that Article 7(1) is to apply notwithstanding that the grounds for refusal exist in only part of the European Union.
18      According to case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, which requires that such signs or indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31; of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 27; and of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 12).
19      Furthermore, signs and 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, deemed incapable of fulfilling the essential function of the 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 (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 13).
20      As regards trade marks composed of words, it is necessary to determine whether the mark is descriptive not only in relation to each word taken separately but also in relation to the whole which they form (judgments of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 40; of 11 April 2013
CBp Carbon Industries v OHIM (CARBON GREEN), T‑294/10, not published, EU:T:2013:165, paragraph 17; and of 26 February 2016, provima Warenhandels v OHIM — Renfro (HOT SOX), T‑543/14, not published, EU:T:2016:102, paragraph 19).
21      It must also be borne in mind that the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 17). Accordingly, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific link between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics (judgments of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16; of 18 November 2015, Research Engineering & Manufacturing v OHIM — Nedschroef Holding (TRILOBULAR), T‑558/14, not published, EU:T:2015:858, paragraph 17; and of 12 April 2016, Choice v EUIPO (Choice chocolate & ice cream), T‑361/15, not published, EU:T:2016:214, paragraph 15).
22      It is in the light of those principles that the first plea raised in the present action must be considered.
The relevant public
23      There is no need to call into question the finding of the Board of Appeal, which is not disputed by the parties, to the effect that, given the goods at issue, the relevant public consists of average, reasonably well informed and reasonably observant and circumspect consumers. Likewise, given that the mark applied for is composed of word elements that have a meaning in English, the Board of Appeal was correct to identify the relevant territory, for the purposes of its assessment, as the Member States in which English is the official language. The relevant public to be taken into account is thus, as found by the Board of Appeal, the
English-speaking general public in the Member States of the European Union in which English is the official language.
24      Consequently, after examining the meaning of the sign at issue, it is necessary to assess whether, for that relevant public thus identified, there is a sufficiently direct and specific link between the sign PRO PLAYER and the goods at issue.
The meaning of the mark applied for
25      The Board of Appeal found, on the basis of the Oxford English Dictionary, that the mark applied for consisted of two elements, namely the word ‘pro’, meaning a ‘person who engages in an activity on a professional rather than an amateur basis’, that is to say, a professional, and the word ‘player’ meaning a ‘person who takes part in a sport or game; one who is competent or skilful at a sport or game; (also) a person who represents a sports team or takes part in a sporting competition; a contestant’. In its view, the meaning of those word elements taken together will be understood by the relevant public as ‘a person who takes part in sports or games on a professional rather than an amateur basis’.
26      The applicant claims that the sign at issue can have different meanings that the average consumer will have to choose from. The word ‘player’ could mean, inter alia, ‘a participant, especially a powerful one, in a particular field of activity’. The word ‘pro’ also has various meanings including ‘favourable, positive or supportive’ or ‘a person who votes in favour of’. Thus, it maintains that the sign at issue will be understood as being ‘supportive of a true “player” as a powerful actor’. The applicant does not substantially contest the meaning attributed to the sign by the Board of Appeal, but maintains that that interpretation ‘is not likely to be adopted by consumers’ and that it would result in a grammatical error known as a tautology, since the two words would be saying the same thing twice.
27      In that regard, it must be found, in accordance with the submission of EUIPO, that the words ‘pro’ and ‘player’, as defined by the Board of Appeal, do not have the same meaning. The sign at issue, the meaning of which is based on the definition of both terms in the
Oxford English Dictionary, contains no grammatical inconsistencies since it refers to a ‘person who takes part in sports or games on a professional rather than an amateur basis’.
28      As regards the applicant’s argument that the sign at issue could also have other meanings, it should be borne in mind that the fact that the mark applied for may have a number of meanings does not preclude the application of the absolute ground for refusal provided for in Article 7(1)(c) of Regulation No 207/2009. It has consistently been held that a word sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 October 2003, OHIM
v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32; see also judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 50 and the case-law cited).
29      Given that there are no factors that make it possible to disregard the meaning adopted by the Board of Appeal, it is appropriate to proceed on the basis of that meaning. Accordingly, it is necessary to assess whether the sign, as interpreted by the Board of Appeal, is descriptive.
Whether the mark applied for is descriptive
30      As regards the perception of the sign by the relevant public, the Board of Appeal found that the sign at issue indicated to the general public that the goods which it designates are identical or very similar to those used or worn by professionals. It thus considered that there was a direct link between playing a sport or game and the goods at issue. The Board of Appeal concluded that the relevant public would immediately perceive the mark applied for as a descriptive indication of the nature and intended purpose of the goods in question.
31      The applicant disputes the Board of Appeal’s finding that the mark applied for describes the intended purpose or quality of the goods covered. It claims that the meaning attributed to the sign by the Board of Appeal refers to a person, whereas the relevant public will not perceive a type of person as a characteristic of goods. In that regard, the applicant submits that the mark applied for does not allude to professional use or professional quality in relation to the goods. Those characteristics were artificially added by the Board of Appeal. Furthermore, according to the applicant, the Board of Appeal has not established in what way the two elements of the mark applied for, ‘pro’ and ‘player’, taken separately, are descriptive. It adds that, in any event, the mark applied for does not create a sufficiently direct and specific link with the goods at issue and that, at most, the mark may be deemed to evoke a positive image. Lastly, the applicant claims that the Board of Appeal departed from EUIPO’s decision-making practice. In particular, it states that the word marks BOSS and CHAMPION have already been accepted by EUIPO, even though the same arguments as those put forward in the present case could have been used to oppose their registration.
32      According to settled case-law, the fact that a sign is descriptive in relation to only some of the goods or services within a category listed as such in the application for registration does not preclude that sign being refused registration where the applicant does not confine his application to the goods in respect of which the sign is not descriptive. If the sign applied for were to be registered, there would be nothing to preclude the applicant from also using it for the goods covered by the registration in respect of which it is descriptive (see, to that effect, judgments of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 92, and of 9 September 2010, Nadine Trautwein Rolf Trautwein v OHIM (Hunter), T‑505/08, not published, EU:T:2010:378, paragraph 44).
33      It should be noted that, in the present case, in its application for registration of the sign at issue, the applicant stated ‘clothing, footwear, headgear’ to be the designated goods, without providing any further details. That designation also covers goods intended for use in sports, a point which has not been contested by the applicant.
34      It should be recalled that the expression ‘pro player’ means a ‘person who takes part in sports or games on a professional rather than an amateur basis’. In the light of that meaning, the expression, taken as a whole, will, as the Board of Appeal rightly found, indicate to the consumer that the goods at issue are either intended for use by professional players of a sport or game, or of a certain quality that indicates to the general public that those goods are the same as or very similar to those used or worn by professionals.
35      Consequently, in the light of the case-law cited in paragraph 32 above, the Board of Appeal did not err in finding that the sign at issue is descriptive of the goods in question, since, as stated in paragraph 33 above, the goods ‘clothing, footwear, headgear’ include goods relating to sport.
36      That finding is not called into question by the applicant’s arguments.
37      First, as regards the argument that the mark applied for describes a person and not the intended purpose or quality of the goods, it is sufficient to recall that the mark applied for will indicate to consumers that the goods covered are either intended for use by professional players of a sport or game, or of a certain quality that indicates to the general public that those goods are the same as or very similar to those used or worn by professionals, which establishes the descriptive character of the mark applied for, pursuant to Article 7(1)(c) of Regulation No 207/2009.
38      Secondly, as regards the argument that the Board of Appeal has not established in what way the two elements of the mark applied for, ‘pro’ and ‘player’, taken separately, are descriptive, it must be held that, as is apparent from paragraphs 27 to 37 of the contested decision, the Board of Appeal did in fact analyse, on the one hand, the words ‘pro’ and ‘player’ and, on the other hand, the expression ‘pro player’, before concluding that the mark was descriptive. Moreover, since registration as a mark was sought for the sign PRO PLAYER, the Board of Appeal was required to assess the descriptive character of the mark applied for as a whole (see, to that effect, judgments of 25 April 2013, Bayerische Motoren Werke v OHIM (ECO PRO), T‑145/12, not published, EU:T:2013:220, paragraph 24, and of 26 February 2016, HOT SOX, T‑543/14, not published, EU:T:2016:102, paragraph 29).
39      Thirdly, according to the applicant, the claim that the goods covered are of high quality is not precise and is not conveyed in an objective manner by the mark applied for; rather, at most, the mark evokes a positive image. However, as noted in paragraph 34 above, the mark applied for does create a sufficiently direct and specific link with the goods covered and the Board of Appeal was correct to infer from the meaning attributed to that mark that the relevant public will perceive it as indicating that the goods covered are either intended for use by professional players of a sport or game, or of a certain quality that indicates to the general public that those goods are the same as or very similar to those used or worn by professionals. In any event, the applicant has failed to put forward specific reasons to support a finding that, notwithstanding the meaning attributed to the mark applied for by the Board of Appeal, the relevant public will not perceive the mark as a description of the quality or intended purpose of the goods covered.
40      Fourthly, as to the applicant’s argument regarding EUIPO’s decision-making practice, 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 way in which those principles are applied must be consistent with 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 77 and the case-law cited).
41      In the present case, the applicant refers, in particular, to the registration of the EU word marks BOSS and CHAMPION. However, since the Board of Appeal is required to analyse each individual case in the light of its particular circumstances, the applicant may not invoke to any useful purpose the earlier registration of such marks, which are different from the mark applied for, to support the conclusion that, in the present case, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009.
42      The same applies as regards the figurative mark P PRO PLAYER, which was examined in the case that gave rise to the judgment of 24 November 2016, CG v EUIPO — Perry Ellis International Group (P PRO PLAYER) (T‑349/15, not published, EU:T:2016:677), in relation to which the parties were invited, by way of measures of organisation of procedure, to submit their observations. The figurative mark P PRO PLAYER is distinct from the word mark applied for in the present case. Furthermore, that figurative mark was examined in opposition proceedings brought on the basis of Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
43      Moreover, as is apparent from paragraphs 23 to 35 above, the Board of Appeal was correct in finding that the mark applied for was caught by the ground of refusal laid down in Article 7(1)(c) of Regulation No 207/2009.
44      Accordingly, all of the applicant’s arguments must be rejected.
45      As regards the alleged infringement of Article 7(2) of Regulation No 207/2009, which provides that Article 7(1) of that regulation applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union, it must be noted that the applicant merely alleges such infringement without putting forward any arguments in that respect. Thus, since it is not substantiated, that claim must also be rejected.
46      In the light of all the foregoing, it must be concluded that the applicant has not succeeded in challenging the lawfulness of the contested decision as regards the analysis of the descriptive character of the mark applied for.
47      Consequently, the first plea in law must be rejected.
The second plea, alleging infringement of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009
48      The applicant claims that the mark applied for is not devoid of distinctive character.
49      EUIPO disputes the applicant’s arguments.
50      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 in order for the sign not to be registrable as an EU trade mark (judgments of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 86; of 8 July 2004, Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS), T‑289/02, EU:T:2004:227, paragraph 24; and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).
51      Thus, given that, as is apparent from paragraph 35 above, the Board of Appeal was right to find that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, there is no need, in the present case, to consider the merits of the second plea, alleging infringement of Article 7(1)(b) and Article 7(2) 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).
52      The action must therefore be dismissed in its entirety.
Costs
53      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 (Fourth Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Perry Ellis International Group Holdings Ltd to bear its own costs and to pay the costs incurred by the European Union Intellectual Property Office (EUIPO).
Kanninen
Calvo-Sotelo Ibáñez-Martín
Reine
Delivered in open court in Luxembourg on 12 March 2019.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.