JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
20 October 2021 (*)
(EU trade mark – International registration designating the European Union – Figurative mark $ Cash App – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 – Right to be heard – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 – Equal treatment and principle of sound administration)
In Case T‑210/20,
Square, Inc., established in San Francisco, California (United States), represented by M. Hawkins, Solicitor, and by K. Lüder and T. Dolde, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Lapinskaite, J. Crespo Carrillo and V. Ruzek, acting as Agents,
defendant,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 5 February 2020 (Case R 811/2019-1), relating to the international registration designating the European Union in respect of the figurative mark $ Cash App,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen and C. Iliopoulos (Rapporteur), Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 20 April 2020,
having regard to the response lodged at the Court Registry on 27 August 2020,
having regard to the Court’s written question to the parties and their replies to that question lodged at the Court Registry on 20 January 2021,
having regard to the decision of 8 February 2021 joining Cases T‑210/20 and T‑211/20 for the purposes of the oral part of the procedure,
further to the hearing on 16 June 2021,
gives the following
Judgment
Background to the dispute
1        On 3 April 2018, the applicant, Square, Inc., established in San Francisco, California (United States), designated the European Union for international registration No 1410819. On 5 July 2018, that registration was notified to the European Union Intellectual Property Office (EUIPO) under 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 international registration in respect of which protection in the European Union was sought is the following figurative sign:
3        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: ‘Downloadable software for enabling the transfer of financial instruments; downloadable software for providing discounts on products and services; downloadable software to enable transactions of value to be requested from or sent to others’.
4        On 12 July 2018, the examiner notified the applicant of an ex officio provisional refusal of protection. The grounds put forward in support of that refusal were the lack of distinctive character of the mark applied for and the descriptive character thereof with regard to all the goods concerned, within the meaning of Article 7(1)(b) and (c) of Regulation 2017/1001.
5        On 12 November 2018, the applicant submitted its observations in reply.
6        By decision of 15 February 2019, the examiner confirmed his initial objections and refused the protection of the mark at issue in the European Union in respect of all the goods referred to in paragraph 3 above on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001.
7        On 12 April 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
8        By decision of 5 February 2020 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In the first place, with regard to the determination of the relevant public, it took the view, in paragraph 13 of the contested decision, that the goods covered by the mark applied for targeted both ‘average consumers’ and specialised consumers in the finance industry, and that, in view of the financial nature of the goods, those consumers may be expected to be particularly observant and discerning. It also took the view, in paragraph 14 of that decision, that to the extent that, first, the goods at issue serve monetary and financial purposes and, second, English is generally used in IT and finance, the relevant public was composed of ‘consumers, both professional and non-professional, throughout the [European Union]’. In the second place, applying Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal stated, in paragraph 16 of the contested decision, that the mark applied for consisted of four elements: a square with rounded corners, the green colour of that square, the ‘$’ sign and the expression ‘Cash App’. Having examined each of the individual elements of the mark applied for and the mark as a whole, it took the view that the mark would be perceived by the relevant public as indicating that the downloadable software makes it possible to transfer or to obtain cash as a result of a financial transaction, and not as an indication of the commercial origin of those goods. On that basis, the Board of Appeal concluded, in paragraph 21 of the contested decision, that the mark applied for lacked any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those incurred in the proceedings before the ‘Operations’ Department and the Board of Appeal.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
11      It must be noted, at the outset, that, in view of the date on which the application for registration at issue was filed, namely 3 April 2018, which is determinative for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation 2017/1001 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).
12      In support of the action, the applicant relies on four pleas in law: (i) infringement of essential procedural requirements; (ii) infringement of the obligation to state reasons and of the right to be heard; (iii) infringement of Article 7(1)(b) of Regulation 2017/1001; and (iv) infringement of the principles of equal treatment and of sound administration.
The first plea in law, alleging infringement of essential procedural requirements
13      The applicant alleges that the Board of Appeal infringed essential procedural requirements when examining the distinctive character of the mark applied for. The first plea in law is divided into two complaints, invoking, first, infringement by the Board of Appeal of the obligation to carry out a separate and independent examination of the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation 2017/1001 and, second, distortion by the Board of Appeal of the facts and evidence.
14      By its first complaint, the applicant asserts that, in order to conclude that there is a lack of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal assumed that the mark applied for was descriptive within the meaning of Article 7(1)(c) of that regulation. The applicant also claims that, by failing to carry out an independent analysis of the application of Article 7(1)(b) of Regulation 2017/1001, the Board of Appeal disregarded the principles of equal treatment and sound administration. In support of its arguments, the applicant relies on the judgments of 7 June 2001, DKV v OHIM (EuroHealth) (T‑359/99, EU:T:2001:151); of 14 April 2005, Celltech v OHIM (CELLTECH) (T‑260/03, EU:T:2005:130); and of 10 February 2010, O2 (Germany) v OHIM (Homezone) (T‑344/07, EU:T:2010:35).
15      EUIPO refutes those arguments.
16      It should be borne in mind that, in accordance with Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.
17      According to consistent case-law, the marks referred to in Article 7(1)(b) of Regulation 2017/1001 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who acquired them 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 (see judgment of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraph 12 and the case-law cited). Such is the case for inter alia signs which are commonly used in connection with the marketing of the goods or services concerned (see judgment of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 24 and the case-law cited).
18      It is also clear from the case-law that the descriptive signs referred to in Article 7(1)(c) of Regulation 2017/1001 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) of the same regulation for reasons other than the fact that it may be descriptive (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46).
19      There is therefore a measure of overlap between the scope of Article 7(1)(b) of Regulation 2017/1001 and the scope of Article 7(1)(c) of that regulation, Article 7(1)(b) being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 47) and not only where that sign is descriptive of those goods or services.
20      The fact remains that, according to settled case-law, each of the grounds for refusal of registration listed in Article 7(1)(b) to (d) of Regulation 2017/1001 is independent of the others and requires a separate examination (see judgment of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraph 54 and the case-law cited). More specifically, the various grounds for refusal must be interpreted in the light of the general interest which underlies each of them. The general interest taken into account in the examination of those grounds for refusal may, or even must, reflect different considerations, depending upon which ground for refusal is at issue (see judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 22 and the case-law cited).
21      In the present case, unlike the examiner’s decision of 15 February 2019, the Board of Appeal did not refuse the disputed application for registration on the basis of Article 7(1)(b) and Article 7(1)(c) of Regulation 2017/1001, but only on the basis of Article 7(1)(b) of that regulation.
22      It is therefore necessary to examine whether the Board of Appeal carried out an independent analysis of the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001.
23      The Board of Appeal, having stated that the question that arose in the present case was whether the mark applied for was likely to indicate that the downloadable software was offered by a particular undertaking, found, in paragraph 21 of the contested decision, that the relevant public, having familiarity with financial transactions over the internet, would perceive the mark at issue ‘as an indication that the software makes it possible to transfer or to obtain cash, i.e. money, as a result of a financial transaction or a discount’. It concluded that the mark at issue was not capable of distinguishing, in the eyes of the relevant public, the goods concerned from those of another origin.
24      It must be inferred from that finding that the Board of Appeal, in essence, found that the mark applied for would not be likely to be perceived by the relevant public as indicating the commercial origin of those goods.
25      Accordingly, contrary to the applicant’s assertions, the Board of Appeal did not infer the lack of distinctive character of the mark applied for from its descriptive character but conducted an independent analysis of the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001.
26      It should also be pointed out that the case-law relied on by the applicant in support of the argument that there was no separate examination, namely the judgments of 7 June 2001, DKV v OHIM (EuroHealth) (T‑359/99, EU:T:2001:151); of 14 April 2005, Celltech v OHIM (CELLTECH) (T‑260/03, EU:T:2005:130); and of 10 February 2010, O2 (Germany) v OHIM (Homezone) (T‑344/07, EU:T:2010:35), is not applicable in the present case. As EUIPO points out, in those cases, the lack of distinctive character of the sign at issue was inferred solely from its descriptive character, whereas, in the present case, the Board of Appeal did not establish the descriptive character of the sign at issue in relation to the goods concerned, but rather examined and found a lack of distinctive character.
27      It follows from the above that the first complaint of the first plea in law must be rejected.
28      By the second complaint, the applicant asserts that the Board of Appeal distorted the facts and evidence in that, first, it had not provided any evidence to support its claim that the relevant public was composed of ‘consumers, both professional and non-professional, throughout the [European Union]’; second, it wrongly assumed, without the slightest evidence, that the meaning of the English words ‘cash’ and ‘app’ would be understood by all the relevant public, including that public whose native language is not English; and, third, it did not base that claim (regarding the command of English of consumers whose native language is not English) on a well-known fact.
29      However, it should be observed, as EUIPO points out, that the arguments put forward by the applicant in support of the second complaint under the first plea in law relate, in essence, to the Board of Appeal’s assessment of the definition of the relevant public and, consequently, will be examined below, in support of the third plea in law.
The second plea in law, alleging infringement of the obligation to state reasons and of the right to be heard
30      The second plea in law put forward by the applicant is divided into two parts, alleging, first, infringement of the obligation to state reasons and, second, infringement of the right to be heard.
The first part of the second plea in law, alleging infringement of the obligation to state reasons
31      The applicant complains of a shortcoming in the statement of reasons for the contested decision. It claims, in particular, that, by bringing all the goods at issue together into one single category or group and providing a general reasoning for all those goods, the Board of Appeal infringed its obligation to state reasons for its decision. According to the applicant, the Board of Appeal failed to explain in the contested decision why the goods at issue were interlinked in a sufficiently direct and specific way in order to form a sufficiently homogeneous category or group of goods. Furthermore, the Board of Appeal did not explain why the goods covered by the mark at issue constituted a homogeneous group justifying recourse to general reasoning, despite the fact than some of those goods were finance-related, while others were connected with discounts, such as coupons or reward points. The applicant argues in that respect that the mere fact that the goods at issue fall within the same class of the Nice Agreement is not sufficient to explain the reasoning adopted by the Board of Appeal in that respect.
32      EUIPO contests those arguments.
33      Under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are required to state the reasons on which they are based. 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. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgment of 20 February 2013, Langguth Erben v OHIM (MEDINET), T‑378/11, EU:T:2013:83, paragraph 14 and the case-law cited).
34      According to settled case-law, since registration of a mark is always sought for goods or services specified in the application for registration, the examination of the absolute grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought and the decision by which the competent authority refuses registration of a mark must, in principle, state reasons in respect of each of those goods or services (see judgment of 8 March 2018, Cinkciarz.pl v EUIPO (€$), T‑665/16, not published, EU:T:2018:125, paragraph 16 and the case-law cited).
35      However, as regards that last requirement, the Court of Justice has stated that the competent authority may use only general reasoning for all of the goods and services concerned where the same ground for refusal is given for a category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30 and the case-law cited).
36      The Court of Justice next made clear that such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraphs 31 and the case-law cited).
37      In order to determine whether the goods and services covered by an application for registration of an EU mark are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogeneous categories or groups, account must be taken of the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question whether or not the mark concerned by the application for registration comes under one of the absolute grounds for refusal (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 32).
38      Accordingly, the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant for the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services. It follows that such an assessment must be carried out in concreto for the examination of each application for registration and, as the case may be, for each of the different absolute grounds for refusal which may apply (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 33).
39      It follows from the foregoing considerations that it cannot be ruled out a priori that the goods and services covered by an application for registration all present a relevant characteristic for the analysis of an absolute ground for refusal and that they can be placed, for the purposes of examining the application for registration at issue in relation to that absolute ground for refusal, in a sufficiently homogeneous single category or group (judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 34).
40      It is in the light of those considerations that it is appropriate to determine whether the contested decision is vitiated by a lack of reasoning.
41      In the present case, the Board of Appeal noted, in paragraph 11 of the contested decision, that the goods at issue consist of downloadable software that allows users to: (i) transfer financial instruments, namely financial assets, equity or any financial liability; (ii) provide discounts on products and services; (iii) enable transactions of value. It further stated, in paragraph 12 of the contested decision, that that downloadable software is used to obtain a ‘monetary advantage’ with respect to funds, discounts and transactions of value.
42      It should be noted, as observed by EUIPO, that a monetary advantage may arise from both a financial transaction – whether transfers or payments – and money saved as a result of a discount.
43      Thus, it is apparent from the Board of Appeal’s findings that all of the goods at issue presented a characteristic which was relevant to the examination of the absolute ground for refusal under Article 7(1)(b) of Regulation 2017/1001, namely that they could be used to carry out a financial transaction or access to discounts, and that they could therefore all be grouped together in a sufficiently homogeneous group.
44      Downloadable software intended to transfer financial instruments, such as the purchase of securities, to provide discounts on products and services and to carry out value transactions form a homogeneous category of goods on the ground that they perform the same functions. The applicant has not put forward any argument capable of calling into question the Board of Appeal’s assessment. Nor has it shown what differences there are between the goods at issue that would prevent them from being grouped into a single sufficiently homogeneous group.
45      It cannot therefore be held that the Board of Appeal failed, in the present case, to fulfil its obligation to state reasons.
The second part of the second plea in law, alleging the obligation to be heard
46      The applicant claims that the Board of Appeal infringed its right to be heard in that it based its decision on the absolute ground for refusal laid down in Article 7(1)(b) of Regulation 2017/1001, on which it had not had an opportunity to comment. In particular, the applicant asserts that the Board of Appeal refused registration of the mark applied for solely on the basis of Article 7(1)(b) of that regulation, whereas the examiner rejected the application for registration, primarily, on the basis of Article 7(1)(c) of that regulation, and then confined itself to stating, ‘subordinately’, that since the mark applied for was descriptive, it was necessarily devoid of distinctive character. In other words, the applicant claims that, since the contested decision was based on a ground for refusal which was not pleaded ‘on a standalone basis’ in the examiner’s decision of 15 February 2019, it should have first been given an opportunity to comment on that change of approach.
47      EUIPO disputes the applicant’s arguments.
48      It should be recalled that, under the second sentence of Article 94(1) of Regulation 2017/1001, EUIPO’s decisions may be based only on matters of fact or of law on which the parties have been able to set out their views.
49      That provision affirms, in EU trade mark law, the general principle of protection of the rights of the defence. In accordance with that principle, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his or her point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision, but not to the final position which the authority intends to adopt (see judgment of 13 May 2020, Clatronic International v EUIPO (PROFI CARE), T‑5/19, not published, EU:T:2020:191, paragraph 102 and the case-law cited).
50      It should be noted at the outset that the applicant does not claim that in the contested decision the Board of Appeal applied of its own motion a new absolute ground for refusal on which it was required to give the applicant the opportunity to present its comments beforehand. Rather, the applicant’s argument is that the Board of Appeal infringed its right to be heard by adopting an absolute ground for refusal which was not pleaded ‘on a standalone basis’ in the examiner’s decision of 15 February 2019.
51      In the present case, it must be held that, like the ex officio provisional refusal of protection, the examiner’s final decision of 15 February 2019 is based on two grounds, since the examiner refused protection of the mark at issue on the ground that the mark applied for was descriptive and devoid of distinctive character within the meaning of Article 7(1)(b) and (c) of Regulation 2017/1001. By contrast, the Board of Appeal’s decision dismissed the appeal solely on the basis of Article 7(1)(b) of that regulation, finding that the mark applied for was devoid of distinctive character.
52      Given that the absolute ground for refusal based on Article 7(1)(b) is an integral part of both the examiner’s decision and the contested decision, the applicant would have been fully able, even if it had not done so, to adopt a position in that regard in its appeal against the examiner’s decision. It was open to the applicant to challenge before the Board of Appeal the examiner’s assessment relating to the lack of distinctive character.
53      Furthermore, it must be pointed out that it is apparent from the applicant’s observations of 12 November 2018 on the ex officio provisional refusal of protection that the applicant takes the view that the figurative element of the mark applied for conferred distinctive character on that mark taken as a whole. It therefore did in fact submit, during the procedure before the examiner, its observations on the issue of the distinctive character of the mark applied for.
54      Accordingly, in line with the case-law referred to in paragraph 49 above, the applicant is mistaken in claiming that the Board of Appeal was required to hear it on the final position which it intended to adopt.
55      The second plea in law must therefore be rejected as unfounded.
The third plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
56      The applicant submits that the Board of Appeal infringed Article 7(1)(b) of Regulation 2017/1001 and puts forward four complaints in support of such a plea. In the first place, it claims that the Board of Appeal did not assess the distinctive character of the mark applied for in relation to the goods concerned. In the second place, it disputes the definition of the relevant public adopted by the Board of Appeal. In the third place, it claims that the Board of Appeal did not correctly assess the distinctive character of the mark applied for. In the fourth place, it argues that the Board of Appeal wrongly broadened the criteria for assessing the distinctive character of the mark applied for, as established by the case-law.
The first complaint of the third plea in law, concerning the distinctive character of the mark applied for in relation to the goods covered by the application for registration
57      First, the applicant argues, in essence, that the Board of Appeal inferred the lack of distinctive character of the mark applied for from the fact that the goods concerned, ‘consisting of at least three different discrete types of software’, have a connection with the world of finance, which is not consistent with the case-law. In particular, it complains that the Board of Appeal did not assess the distinctive character of the mark applied for by reference to the goods concerned, but instead ‘to finance, money or (monetary) value in general’. In support of its argument, the applicant refers to paragraphs 11, 12, 18, 19 and 20 of the contested decision. It adds that the goods at issue are scarcely mentioned in the contested decision and that, where they are, they are referred to as ‘software’ in general. Second, the applicant criticises the Board of Appeal on the ground that it reversed the burden of proof by assuming that ‘any link to the world of finance’ would lead to the conclusion that the mark applied for is devoid of distinctive character.
58      EUIPO disputes the applicant’s arguments.
59      It is apparent from the case-law that distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation 2017/1001 must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (judgments of 29 April 2004, Procter & Gamble v OHIM, C‑473/01 P and C‑474/01 P, EU:C:2004:260, paragraph 33; of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraph 67; and of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 34).
60      It must be stated that, contrary to the applicant’s assertions, the Board of Appeal did not in any way fail to examine whether the mark applied for had distinctive character with regard to the goods at issue. On the contrary, in paragraphs 11 and 12 of the contested decision, it listed those goods and expressly referred to their intended purpose. Furthermore, it is clear from paragraph 21 of the contested decision that the Board of Appeal assessed the distinctive character of the mark applied for by reference to the goods concerned (see paragraph 23 above).
61      As regards the applicant’s claim that the burden of proof has been reversed, it should be noted that that claim does not relate in itself to the issue of the burden of proof, but to the Board of Appeal’s assessment of the distinctive character of the mark applied for. It will therefore be examined in the context of the third complaint, concerning the distinctive character of the mark applied for.
62      It follows that the first complaint must be rejected as unfounded.
The second complaint of the third plea in law, concerning the definition of the relevant public
63      In paragraph 14 of the contested decision, the Board of Appeal found that the relevant public consisted of ‘consumers, both professional and non-professional, throughout the [European Union]’, to the extent that, first, the software serves, broadly speaking, monetary and financial purposes and, second, English is broadly used in IT and finance.
64      The applicant claims that that analysis is incorrect and not substantiated by sufficient evidence. Since the mark at issue is composed of words from English, it is with regard to the English-speaking public that its distinctive character must be assessed. In addition, it argues that, by including in the relevant public consumers from countries other than those in which English is the native language, the Board of Appeal erroneously broadened the scope of the relevant public and, in so doing, incorrectly assessed how that public would perceive the mark at issue.
65      EUIPO disputes the applicant’s arguments.
66      In that regard, it must be stated at the outset that the mark applied for is composed of two English words, namely ‘cash’ and ‘app’, and that use of English is common in the financial sector, to which the goods covered by the mark applied for belong.
67      As EUIPO correctly points out, it must be noted that, under Article 7(2) of Regulation 2017/1001, an absolute ground for refusal in part of the European Union is enough to justify refusal of registration of a mark applied for. That also applies, according to Article 189(1) of Regulation 2017/1001, mutatis mutandis, to international registrations designating the European Union. Accordingly, it is sufficient, in the present case, that the mark applied for be devoid of distinctive character, at least for the relevant English-speaking public, in order for registration to be refused.
68      Thus, even if it is assumed that the Board of Appeal made an error in holding that the mark at issue, composed of two English words, namely ‘cash’ and ‘app’, would be understood throughout the European Union, that fact would not affect the legality of the contested decision. Accordingly, the complaints alleging the incorrect definition of the relevant public must, in any event, be rejected as ineffective.
69      As regards the complaint which was raised for the first time during the hearing, in which the applicant complains that the Board of Appeal took into account the relevant public’s level of attention in assessing the distinctiveness of the mark applied for, it should be noted that a mark must allow the relevant public to distinguish the products covered by that mark from those of other undertakings without paying particular attention, so that the distinctiveness threshold necessary for registration of a mark cannot depend on the public’s level of attention (see judgment of 14 February 2019, Bayer Intellectual Property v EUIPO (Representation of a heart), T‑123/18, EU:T:2019:95, paragraph 17 and the case-law cited; judgment of 11 September 2019, Orkla Foods Danmark v EUIPO (PRODUCED WITHOUT BOILING SCANDINAVIAN DELIGHTS ESTABLISHED 1834 FRUIT SPREAD), T‑34/19, not published, EU:T:2019:576, paragraph 29). In the present case, although the Board of Appeal did state, in paragraph 13 of the contested decision, that, in view of the financial purpose of the goods at issue, consumers will be observant and discerning, it was right not to take into account that consumers would have a high level of attention in assessing the distinctive character of the sign at issue. The argument put forward by the applicant in that regard cannot therefore succeed.
70      It follows that the applicant’s complaint relating to the relevant public must be rejected.
The third complaint of the third plea in law, concerning the distinctive character of the mark applied for
71      In the first place, the applicant complains that the Board of Appeal’s reasoning is contradictory since, on the one hand, it took the view that the mark at issue was devoid of distinctive character and, on the other hand, it implied in paragraphs 19 and 20 of the contested decision that the mark at issue was suggestive or allusive and, therefore, it should not be refused protection. In the second place, it claims that the Board of Appeal did not assess the distinctiveness of the mark applied for taken as whole, but rather analysed each of its elements individually. According to the applicant, the Board of Appeal found that the mark applied for was devoid of distinctive character solely because the individual elements of the mark applied for were not distinctive when considered separately. In the third place, the applicant alleges that the Board of Appeal’s examination of the individual elements of the mark applied for was flawed itself. In particular, it takes the view that the Board of Appeal’s statement that the green colour ‘is not completely unrelated to finance since it symbolises wealth, abundance or prosperity’ was neither substantiated nor common knowledge. It adds that the Board of Appeal erred in associating that colour with a dollar sign rather than with the goods at issue, in connection of which green does not have any inherent meaning whatsoever. Moreover, it argues that the Board of Appeal’s reasoning is contradictory in so far as it stated, on the one hand, that the ‘$’ sign was not identical to the US dollar sign and, on the other hand, that consumers will associate the sign with that currency. Furthermore, in the applicant’s opinion, the figurative element, which is placed at the beginning of the mark at issue, has distinctive character. That element is striking both due to its prominent size and its bright colour, such that it will be perceived by the relevant public as a co-dominant element of the mark at issue. The applicant also claims that, taken on its own, the figurative element is regarded as the element that identifies the origin of the goods at issue. According to the applicant, the commercial success in the United States of the mark applied for is intrinsically apt to show the commercial origin of the goods concerned. In the fourth place, the applicant claims, in essence, that the Board of Appeal interpreted the meaning of the terms making up the mark at issue broadly. In that regard, it disputes the Board of Appeal’s transition from the term ‘cash’, first, to ‘money in physical form, namely banknotes and coins’, and then, second, to ‘payment’, since it does not enable the relevant public to perceive immediately, and without further thought over a number of steps, the meaning of the term ‘cash’ as a synonym for ‘payment’ and, therefore, to establish a direct link between the goods at issue and the mark applied for.
72      EUIPO contests those arguments.
73      In the first place, as regards the argument that the Board of Appeal had not correctly assessed the various individual elements of the mark applied for, it must be borne in mind that, in order to assess whether or not a trade mark has distinctive character, the overall impression which that mark makes must be considered. This does not mean, however, that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (see judgment of 25 September 2014, Giorgis v OHIM – Comigel (Shape of two packaged goblets), T‑474/12, EU:T:2014:813, paragraph 22 and the case-law cited).
74      In the present case, it is apparent from paragraphs 16 to 20 of the contested decision that, in assessing the distinctive character of the mark applied for, the Board of Appeal first examined each of the product’s individual elements in turn. At the end of that examination, it found that each of those elements, taken separately, was devoid of any distinctive character in relation to the goods in respect of which registration was sought.
75      In particular, the Board of Appeal found, in essence, that the mark at issue consisted of the ‘$’ symbol, represented on a green square with rounded corners, and of the element ‘cash app’, situated outside the square.
76      In that regard, it must be stated, as the Board of Appeal found in paragraph 17 of the contested decision, that the square with rounded corners is a very simple geometric shape. The fact that the corners are rounded is not an unusual element and will not prevent consumers from associating it to the mentioned geometric figure.
77      It should also be noted, as the Board of Appeal found in paragraph 18 of the contested decision, that the colour green, in association with the ‘$’ symbol, could evoke for the relevant public a general connection with finance. Since it is the colour of US dollar banknotes, that colour is associated with the idea of wealth. Consequently, contrary to what the applicant claims, the Board of Appeal’s assessment is not vitiated by error.
78      Furthermore, as the Board of Appeal rightly pointed out in paragraph 19 of the contested decision, the ‘$’ sign in the mark applied for did not reproduce the dollar sign identically, since it lacks the two typical vertical strokes. However, in view of the presence of the element ‘cash app’, which alludes to money, and the fact that the upper-case ‘S’ shows fragments of a vertical stroke on the lower and upper parts, that element may be associated by the relevant public with the dollar symbol. Accordingly, contrary to the applicant’s claims, there is no contradiction in the Board of Appeal’s reasoning, in so far as the latter stated, first, that the ‘$’ sign is not identical to the US dollar sign and, second, that the relevant public would associate it with that currency.
79      As regards the figurative element of the mark applied for, the Board of Appeal acted correctly in holding, in paragraph 25 of the contested decision, that that element could be perceived, due to its square shape with rounded corners, like the icon (‘button’) of an application available on a mobile device. Application icons are shortcuts to downloaded applications in the form of a square with rounded corners. In view of the fact that the ‘$’ sign is placed on a green square with rounded corners, the relevant consumer will perceive that figurative element as an application which concerns money and therefore as a reference to the purpose of the goods in question and not as a reference to the commercial origin of those goods.
80      As regards the interpretation of the element ‘cash’, it should be noted, as the Board of Appeal correctly did in paragraph 20 of the contested decision, that that term means ‘money in physical form, namely banknotes and coins’ as opposed to cheques, money-orders and the like. It is apparent from the Board of Appeal’s file that the term ‘cash’ also refers to an ‘immediate payment’, especially in the phrase ‘cash down’ (Collins Dictionary).
81      It follows from the foregoing analysis that the applicant’s argument calling into question the Board of Appeal’s assessment that each of the components of which the mark concerned is composed, taken separately, is devoid of distinctive character must be rejected as unfounded.
82      In the second place, as regards the alleged failure to examine the mark applied for as a whole, it must be held, as has been stated in paragraph 74 above, that the Board of Appeal first examined each of that mark’s individual constituent elements in turn. However, as is apparent from paragraph 21 of the contested decision, it then carried out an overall assessment of the distinctive character of that mark. The Board of Appeal found that the relevant public, which is familiar with financial transfers over the internet, would perceive the mark applied for, ‘as a whole’, as an indication that ‘the software makes it possible to transfer or to obtain cash, i.e. money, as a result of a financial transaction or a discount’.
83      Therefore, contrary to what the applicant claims, the Board of Appeal did not infer the lack of distinctive character of the mark applied for solely from the fact that each of its components, taken separately, was devoid of any distinctive character, but relied on the overall perception of that mark by the relevant public in relation to the goods concerned.
84      As regards, moreover, the applicant’s argument concerning the commercial success of the mark applied for in the United States, it must be stated that the applicant merely makes a general assertion which does not explain how the claimed commercial success demonstrated that the mark applied for was inherently capable of indicating the commercial origin of the goods concerned.
85      In the third place, as regards the alleged contradiction in the Board of Appeal’s reasoning in that it found, first, that the mark applied for is devoid of any distinctive character and, second, that it was suggestive or allusive, it must be stated that that argument is based on the premiss that the Board of Appeal itself recognised that elements of the contested mark were allusive or suggestive.
86      It must be pointed out that, although the Board of Appeal found, in paragraphs 19 and 20 of the contested decision, that the ‘$’ sign merely alludes to money in general and that the element ‘cash app’ conveys to consumers the idea of an application which transfers money, such a finding does not, however, imply, contrary to what the applicant claims, that the mark applied for was suggestive or allusive.
87      Accordingly, the third complaint must be rejected as unfounded.
The fourth complaint of the third plea in law, alleging that the Board of Appeal erred in finding that the mark applied for was capable of indicating the financial origin of the goods at issue
88      The applicant argues that the Board of Appeal made an error of assessment in stating, in paragraph 21 of the contested decision, that the mark applied for was capable of indicating the financial origin of the goods concerned.
89      EUIPO disputes those arguments.
90      In that regard, it should be noted that the term ‘financial or commercial origin’ is indeed referred to in relation to the goods at issue in paragraph 21 of the contested decision. However, the Board of Appeal stated in the same paragraph of that decision, as is apparent from the use of the expression ‘in other words’, that the mark applied for would not enable the relevant public to distinguish the applicant’s goods from those of other undertakings. As has been stated in paragraph 24 above, it must be inferred from that finding that the Board of Appeal found, in essence, that the mark applied for was incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods in question, since it would be perceived as an indication that those goods are intended to be used to obtain a monetary advantage.
91      It follows that the fourth complaint must be rejected as unfounded.
92      In the light of all the foregoing considerations, it must be held that the Board of Appeal did not infringe Article 7(1)(b) of Regulation 2017/1001 and, consequently, the third plea must be rejected.
The fourth plea in law, alleging infringement of the principles of equal treatment and of sound administration
93      The applicant complains that the Board of Appeal failed to take into account the decision of 20 April 2018 in which the United Kingdom Intellectual Property Office accepted registration of another mark falling within Class 9. It emphasises that the mark, owned by the same proprietor, is almost identical to the mark applied for.
94      EUIPO disputes those arguments.
95      In that regard, it is sufficient to recall that the European Union trade mark regime is an autonomous legal system which pursues objectives peculiar to it; it applies independently of any national system (judgment of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraph 47, and of 3 December 2015, Infusion Brands v OHIM (DUALTOOLS), T‑648/14, not published, EU:T:2015:930, paragraph 36). Consequently, the registrability or protectability of a sign as an EU mark must be assessed by reference only to the relevant EU rules. Accordingly, EUIPO and, if appropriate, the EU judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark (judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 47, and of 3 December 2015, DUALTOOLS, T‑648/14, not published, EU:T:2015:930, paragraph 36).
96      In the light of all the foregoing, the fourth plea in law must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
97      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.
98      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 (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Square, Inc. to bear its own costs and pay those incurred by the European Union Intellectual Property Office (EUIPO).
Marcoulli
Frimodt Nielsen
Iliopoulos
Delivered in open court in Luxembourg on 20 October 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.