ORDER OF THE GENERAL COURT (Ninth Chamber)
18 December 2020
(*)
(EU trade mark – Application for EU word mark FACEGYM – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law)
In Case T‑289/20,
Facegym Ltd, established in London (United Kingdom), represented by M. Edenborough QC,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, J. Crespo Carrillo and V. Ruzek, acting as Agents,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 27 February 2020 (Case R 70/2020-5), relating to an application for registration of the word sign FACEGYM as an EU trade mark,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira (Rapporteur), President, M. Kancheva and B. Berke, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 15 May 2020,
having regard to the response lodged at the Court Registry on 5 August 2020,
makes the following
Order
Background to the dispute
1        On 15 January 2019, the applicant, Facegym Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO), pursuant to 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 FACEGYM.
3        The goods and services in respect of which registration was sought are in Classes 5, 8, 9, 10, 41 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, in respect of Classes 8, 10 and 41, to the following description:
–        Class 8: ‘Hand tools for use in beauty care; beauty implements’;
–        Class 10: ‘Massage appliances and apparatus; instruments for massage; foam massage rollers; apparatus for the therapeutic toning and stimulation of the muscles; physical exercise apparatus for therapeutic use; thermal massage pads;’
–        Class 41: ‘Training services in relation to face, body and skincare services, cosmetic and beauty treatment services, massages services, healthcare services, reflexology services, alternative medicine services; education services relating to face, body and skincare services, cosmetic and beauty treatment services, massages services, healthcare services, reflexology services, alternative medicine services; organising of workshops, seminars and conferences relating to face, body and skincare services, cosmetic and beauty treatment services, massages services, healthcare services, reflexology services, alternative medicine services; instruction in cosmetic beauty; educational services relating to beauty therapy; education services relating to therapeutic treatments’.
4        By decision of 3 December 2019, the examiner rejected in part the application for registration, in so far as it covered the goods and services in Classes 8, 10 and 41 referred to in paragraph 3 above, on the basis of the combined provisions of Article 7(1)(b) and (c) and (2) of Regulation 2017/1001.
5        On 13 January 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision in so far as it rejected the application for registration in respect of the goods and services in Classes 8, 10 and 41.
6        By decision of 27 February 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First of all, it found that the goods and services at issue were aimed at average consumers and professionals, whose level of attention varied from average, in the case of the average consumer, who is reasonably well informed, observant and circumspect, to high, in the case of the professional public. Furthermore, it held that, since the mark consisted of English words, its descriptiveness had to be assessed by reference to the English-speaking public.
7        Next, the Board of Appeal found that the mark applied for was made up of the English words ‘face’ and ‘gym’. The first word referred to the front of the head from the forehead to the chin, and the second word meant ‘gymnastics’, that is to say, exercises developing or displaying physical agility and coordination. It concluded that, when used together, those words referred to
exercises for the face. In that regard, it found that those words were juxtaposed in a grammatically correct way in the English language. Consequently, in the mind of the relevant English-speaking consumer, that mark provided, as a whole, information that the devices in Classes 8 and 10 were all used for facial gymnastics and that the services in Class 41 were all intended for the teaching and training in such facial exercises or gymnastics, including through the organisation of workshops and seminars. It therefore found that that mark described the intended purpose of all those goods and services in an ordinary way requiring no interpretative effort on the part of the relevant consumer. It added that there was nothing about the ‘expression FACEGYM’ which would create an impression which was sufficiently far removed from that produced by the mere combination of the meanings of the words ‘face’ and ‘gym’ and cause that ‘expression’ to be more than the sum of those two words, regardless of the level of attention displayed by the public. In addition, it held that the mere fact that the word ‘gym’ has an alternative, even frequently used, meaning was immaterial, given that one of the possible meanings of such a mark conveyed obvious and direct information concerning the intended purpose of all of those goods and services. It concluded that the mark in question was exclusively made up of descriptive indications and came within the ambit of Article 7(1)(c) of Regulation 2017/1001.
8        Lastly, the Board of Appeal held that, since the sign constituting the mark applied for had a clear descriptive meaning, it was also devoid of any distinctive character, as it did not allow the applicant’s goods and services to be distinguished from those of its competitors, and that, therefore, registration of that mark had to be refused under Article 7(1)(b) of Regulation 2017/1001.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        in the alternative, alter the contested decision so that the EU trade mark FACEGYM is also registered in respect of the goods and services in Classes 8, 10 and 41;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.
10      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
11      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
12      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to Article 126 of the Rules of Procedure, to give its decision without taking further steps in the proceedings.
13      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001. It submits, in the first place, that the Board of Appeal misunderstood the meaning of the parts making up the sign constituting the mark applied for, namely ‘face’ and ‘gym’. In the second place, the Board of Appeal erred in finding that, if a ‘neologism’ is made up of two words juxtaposed in a grammatically correct way, then the whole of the sign is no more than the sum of its parts.
Thus, the Board of Appeal failed to examine the descriptiveness of the ‘neologism’ as a whole. In the third place, the Board of Appeal did not take into consideration that the combination of the words ‘face’ and ‘gym’ leads to an unusual and fanciful ‘neologism’. Furthermore, the fact that the United Kingdom Intellectual Property Office has registered that mark in respect of the same goods and services as those at issue in the present case is evidence that the English-speaking public would not perceive the sign FACEGYM as descriptive of those goods and services. In the fourth place, the Board of Appeal, first, based the refusal to register on a meaning of that sign which, although possible, is neither probable nor readily perceived by the relevant public. Second, the Board of Appeal accepted the examiner’s misinterpretation according to which the application of the provision referred to above ‘does not depend on there being a real, current or serious need to leave a sign or indication free’. In the fifth place, the Board of Appeal erred in finding that the mark at issue had a direct link with the goods and services in Classes 8, 10 and 41.
14      EUIPO disputes the applicant’s arguments.
15      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 cannot be registered. Pursuant to Article 7(2) of that regulation, the provisions of Article 7(1) are to apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.
16      Those signs and indications 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 (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37).
17      The signs and indications referred to in Article 7(1)(c) of Regulation 2017/1001 are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (see judgment of 19 December 2019, Amazon Technologies v EUIPO (ring), T‑270/19, not published, EU:T:2019:871, paragraph 43 and the case-law cited).
18      It follows from the above that, in order for a sign to be caught by the prohibition set out in the abovementioned provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of those goods and services or one of their characteristics
(see judgment of 19 December 2019, ring, T‑270/19, not published, EU:T:2019:871, paragraph 44 and the case-law cited).
19      It is also important to bear in mind that the descriptiveness of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the public targeted, which is composed of consumers of those goods or services (see judgment of 19 December 2019, ring, T‑270/19, not published, EU:T:2019:871, paragraph 45 and the case-law cited).
20      It is in the light of those considerations that the Court must examine the applicant’s argument that the Board of Appeal erred in finding that the mark applied for was descriptive of the goods and services in Classes 8, 10 and 41.
21      In the first place, as regards the relevant public, the Board of Appeal found that the goods and services at issue were aimed at both average consumers and professionals. It concluded that that public had a level of attention which varied from average, in the case of the average consumer, who is reasonably well informed, observant and circumspect, to high, in the case of professionals. Furthermore, it held that, since the mark applied for consisted of English words, its descriptiveness must be assessed by reference to the English-speaking public of the European Union (paragraph 16 of the contested decision). Those findings of the Board of Appeal are not contested by the applicant.
22      In the second place, as regards the meaning of the words making up the mark applied for, the Board of Appeal found that that mark was made up of the English words ‘face’ and ‘gym’. It concluded that the first word would be interpreted
by consumers who understand English as meaning, according to the online version of the Oxford English Dictionary, the front part of a person’s head from the forehead to the chin. Furthermore, it found
that, according to that dictionary, the second word means ‘gymnastics’ (paragraphs 3 and 17 of the contested decision).
23      The applicant’s arguments concerning the meaning of the parts making up the mark applied for do not call that assessment into question.
24      Contrary to the applicant’s claims, the Board of Appeal did not adopt a narrow definition of the word ‘face’. As is clear from paragraph 22 above, it took into consideration the common definition of that word in English. Similarly, the applicant is wrong to claim that such a definition is not broad enough to include both the muscles of the front part of the head and its surface features, such as the ears or the profile of the jaw. As EUIPO submits in its response, any front view of a face also shows those features.
25      In addition, according to, inter alia, the online version of the Oxford English Dictionary, the word ‘gym’ is, in English, an abbreviation both of the word ‘gymnasium’ and of the word ‘gymnastics’, as indeed the applicant itself acknowledges in the application. Furthermore, the twofold meaning of the word ‘gym’ has already been established by the Court in the judgment of 8 February 2013, Piotrowski v OHIM (MEDIGYM) (T‑33/12, not published, EU:T:2013:71, paragraph 24).
26      It follows from the above that the applicant is wrong to claim that the association of the word ‘gym’ with ‘gymnastics’ requires a degree of thought on the part of the English-speaking public.
27      Furthermore, even if it were to be accepted that the most common meaning of the word ‘gym’ refers to ‘gymnasium’, it must be stated that that has no bearing on the fact that another potential meaning of that word is ‘gymnastics’. As the Board of Appeal noted in paragraph 22 of the contested decision, for a word sign to be descriptive, for the purpose of Article 7(1)(c) of Regulation 2017/1001, it is sufficient that 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).
28      Therefore, the association of the word ‘gym’ with ‘gymnastics’ remains relevant for the purpose of examining the descriptiveness of the mark applied for.
29      It follows that the meaning of the parts making up the mark applied for established by the Board of Appeal was correct.
30      In the third place, as regards the perception of the sign making up the mark applied for by the relevant public, the Board of Appeal found that the words ‘face’ and ‘gym’, which make up the ‘expression FACEGYM’, were juxtaposed in a grammatically correct way in English. It found that those words, together, meant ‘exercises for the face’ (paragraph 17 of the contested decision). It concluded that the ‘expression’ does not, as a whole, create an impression which is sufficiently far removed from that produced by the mere combination of the meanings of those words, with the result that that ‘expression’ is not more than the sum of those words, regardless of the level of attention displayed by the public (paragraph 21 of the contested decision).
31      In that respect and as a preliminary point, it should be noted that, with regard to marks made up of a number of parts, the descriptiveness of a mark may be assessed, in part, in relation to each of those parts, taken separately, but must, in any event, also be established in relation to the whole which they comprise (see, to that effect, judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 23 and the case-law cited). Since the relevant public will perceive the mark applied for as a whole, it is the potential descriptiveness of that mark as a whole, and not of the various elements of that mark considered separately, which is important.
32      Furthermore, it should be noted that the mere juxtaposition of several descriptive terms remains, in principle, descriptive unless the unusual character of the combination produces an overall impression that is sufficiently far removed from the impression produced by the combination of the meanings of the parts of which the word is composed and the word is more than the sum of its parts (see judgment of 23 September 2015, Mechadyne International v OHIM (FlexValve), T‑588/14, not published, EU:T:2015:676, paragraph 35 and the case-law cited).
33      In the present case, the applicant submits that the Board of Appeal failed to examine whether the ‘neologism’ formed by the two words making up the mark applied for was descriptive.
34      However, that claim is directly contradicted by the content of the contested decision. As is clear from paragraphs 17 and 21 of the contested decision (referred to in paragraph 30 above), the Board of Appeal, after having examined the meaning of the parts comprising the mark applied for, also examined whether that mark, as a whole, produced an impression sufficiently far removed from the meaning of the parts of which it was made up, and concluded that that was not the case.
35      In addition, the applicant submits that the Board of Appeal, first,
erred in concluding
that the sign FACEGYM, as a whole, was not more than a sum of the words of which it is made up and, second, failed to take into account that the combination of the words ‘face’ and ‘gym’ would lead to an unusual and fanciful ‘neologism’.
36      First of all, although the applicant uses the word ‘neologism’ to describe the mark applied for, that mark is not a ‘neologism’. That mark is neither a word that has been created recently or borrowed latterly from another language, nor does it constitute an existing word or expression in the language that has been given a new meaning. Thus, that mark is not made up of a single word which forms a neologism, but is instead a mere juxtaposition of two words, ‘face’ and ‘gym’, which are easily and immediately recognisable.
37      Next, as the Board of Appeal correctly stated in paragraph 18 of the contested decision, the word ‘gym’ is preceded, in the mark applied for, by the (attributive or adjectival) word
‘face’, which modifies it in the ordinary course of the English language. Thus, the Board of Appeal did not err in concluding, in paragraph 19 of that decision, that the words making up that mark are juxtaposed in a grammatically correct way.
38      Lastly, as the Board of Appeal also found, in paragraph 21 of the contested decision, there is nothing about the mark applied for, as a whole, that creates an impression which is sufficiently far removed from that produced by the mere combination of the meanings of the words ‘face’ and ‘gym’.
39      Contrary to the applicant’s assertions, the mark applied for is not unusual or fanciful. On the contrary, it does not necessarily contain an uncommon combination of words and, even though it may be regarded as a new sequence of words, it does not deviate from linguistic usage, including from a grammatical perspective. There is therefore no perceptible difference between that mark and the mere sum of the words of which it is made up.
40      The Board of Appeal did not therefore err in finding, in paragraph 17 of the contested decision, that the juxtaposition of the words ‘face’ and ‘gym’ referred to ‘exercises for the face’.
41      It is also necessary to reject the applicant’s argument that the meaning found by the Board of Appeal, although possible, is neither probable nor readily perceived by the relevant public. As is clear from the case-law referred to in paragraph 27 above, for a word sign to be descriptive, it is sufficient that at least one of its possible meanings designates a characteristic of the goods or services concerned.
42      It is also necessary to reject the applicant’s argument that the Board of Appeal accepted the examiner’s misinterpretation that the application of Article 7(1)(c) of Regulation 2017/1001 ‘does not depend on there being a real, current or serious need to leave a sign or indication free’. First, the applicant’s argument concerns the examiner’s statement
which is indeed set out in the fifth indent of paragraph 5 of the contested decision. However, contrary to the applicant’s claims, that statement by the examiner was not upheld by the Board of Appeal in the statement of reasons in the contested decision, which is set out in paragraphs 8 to 31 thereof. Consequently, the applicant’s argument is ineffective.
43      Second, and in any event, as the Board of Appeal stated in paragraph 24 of the contested decision, it is apparent from case-law that EUIPO is not required to prove that the word sign applied for is actually used as a descriptive indication. On the contrary, it is sufficient that the sign may be used for that purpose and that such use may reasonably be expected in the future (see judgment of 6 April 2017, Aldi v EUIPO (ViSAGE), T‑219/16, not published, EU:T:2017:265, paragraph 32 and the case-law cited).
44      In addition, in order for EUIPO
to refuse to register a trade mark under 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 article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
45      The Board of Appeal was therefore fully entitled to conclude that the relevant public would perceive the sign FACEGYM as a mere combination of the meanings
created by the juxtaposition of the words ‘face’ and ‘gym’, which referred to exercises for the face.
46      In the fourth place, as regards the descriptiveness of the mark applied for, the Board of Appeal found that the English-speaking consumer would perceive the sign, as a whole, as providing information that the devices in Classes 8 and 10 are all used
for facial gymnastics and that the services in Class 41 are all intended for the teaching and training in such facial exercises or gymnastics, including through the organisation of workshops and seminars. It therefore found that that mark described the intended purpose of all the goods and services covered and did so in an ordinary way requiring no interpretative effort on the part of the relevant consumer (paragraphs 18 and 19 of the contested decision). It concluded that that mark was exclusively made up of descriptive indications and came within the ambit of Article 7(1)(c) of Regulation 2017/1001 (paragraph 27 of that decision).
47      The applicant submits that the Board of Appeal erred in concluding that the mark applied for had a direct link to the goods and services at issue. It argues that the word ‘gym’ means ‘gymnasium’ and does not therefore refer to passive exercise in the form of relaxation of the facial muscles. Furthermore, the combination of the words ‘face’ and ‘gym’ is unusual and fanciful and only vaguely hints at those goods and services. Furthermore, the applicant argues that the fact that the United Kingdom Intellectual Property Office did not raise any objection concerning the registration of the sign FACEGYM in respect of the same goods and services is evidence that the relevant public would not perceive that sign as being descriptive of those goods and services.
48      To the extent that the applicant’s argument is based on the claim that the word ‘gym’ means only ‘gymnasium’, it must be rejected for the reasons set out in paragraphs 25 to 28 above.
49      Similarly, to the extent that
the applicant’s argument is based on the unusual and fanciful nature of the sign FACEGYM, it must be rejected for the reasons set out in paragraphs 35 to 40 above.
50      In any event, since it has been established that the mark applied for will be perceived as referring to exercises for the face (see paragraph 45 above), the Board of Appeal did not err in finding that that mark described the purpose and subject matter of the goods and services at issue.
51      As is apparent from paragraph 19 of the contested decision, the devices in Classes 8 and 10 are used for the purpose of facial gymnastics, and the services in Class 41 are intended to teach such
facial exercises or gymnastics. There is therefore a sufficiently direct and specific relationship between the mark applied for and the goods or services in question to enable the public concerned immediately to perceive, without further thought, the intended purpose of those goods and services.
52      Furthermore, as regards the argument that the United Kingdom Intellectual Property Office had registered the mark applied for in respect of the goods and services at issue, it is sufficient to note, as the Board of Appeal did (in paragraphs 25 and 26 of the contested decision), that, according to settled case-law, the EU trade mark regime is an autonomous legal system which pursues its own legal objectives peculiar to it; it applies independently of any national system. 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 in a third country, that the sign in question is registrable as a national trade mark (see judgment of 13 May 2020, Global Brand Holdings v EUIPO (XOXO), T‑503/19, not published, EU:T:2020:183, paragraph 62 and the case-law cited).
53      It is therefore necessary to reject in its entirety the applicant’s argument challenging the Board of Appeal’s finding that the mark applied for is descriptive of the goods and services at issue. Thus, the Board of Appeal was fully entitled to conclude that that mark was caught by the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001.
54      It follows that the Board of Appeal was also fully entitled to find that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.
55      For all of those reasons, the applicant’s single plea in law must be rejected and, consequently, the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
56      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
57      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Facegym Ltd shall pay the costs.
Luxembourg, 18 December 2020.
E. Coulon
M.J. Costeira
Registrar
President
* Language of the case: English