JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
17 October 2018 (*)
(EU trade mark — Application for the EU word mark iGrill — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001))
In Case T‑822/17,
Weber-Stephen Products LLC, established in Palatine, Illinois (United States), represented by R. Niebel and A. Jauch, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 27 September 2017 (Case R 579/2017-2), relating to an application for registration of the word sign iGrill as an EU trade mark,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 December 2017,
having regard to the response lodged at the Court Registry on 27 February 2018,
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 20 May 2016, the applicant, Weber-Stephen Products LLC, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign iGrill.
3        The goods in respect of which registration was sought are, inter alia, in Classes 9 and 21 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, inter alia, to the following description:
–        Class 9: ‘Computer Hardware; Computer Software; Software for mobile phones; Electric measuring instruments; Electronic Thermometers, other than for medical use; Monitoring control apparatus (electric); Thermometers; Downloadable Software; Electronic temperature Monitors, other than for medical use; Electronic temperature Recorders, other than for medical use’,
–        Class 21: ‘Household, kitchen and barbecue utensils and containers (not of precious metal or coated therewith); grill cover’.
4        By decision of 6 February 2017, the examiner refused to register the mark applied for 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 (now Article 7(1)(b) and (c) and Article 7(2) of Regulation 2017/1001).
5        On 23 March 2017, the applicant filed a notice of appeal with EUIPO against the examiner’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).
6        By decision of 27 September 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal brought by the applicant, on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009. More specifically, it stated, first, that iGrill was a neologism composed of the element ‘i’ and the element ‘grill’, written with the letter ‘g’ in upper-case. It therefore took the view that the letter ‘i’, as a prefix, referred to the words ‘interactive’ and ‘intelligent’, or to information technology, and that the word ‘grill’ referred to a cooking device, with the result that the relevant public would understand the term ‘iGrill’ as referring to an interactive, intelligent grill or a grill which makes use of information technology. Secondly, it found that the goods in question could be used to operate such a grill or be used with it. In those circumstances, it held that the mark applied for was descriptive of those goods.
Forms of order sought
7        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
8        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
9        In support of its action, the applicant puts forward two pleas in law, alleging infringement of Article 7(1)(c) and of Article 7(1)(b) of Regulation No 207/2009.
First plea in law: infringement of Article 7(1)(c) of Regulation No 207/2009
10      In support of the first plea, the applicant raises, in essence, three complaints, alleging (i) that the relevant public’s level of attention is not high, (ii) that the mark applied for is not descriptive, and (iii) that the Board of Appeal departed from EUIPO’s decision-making practice.
11      EUIPO disputes the applicant’s arguments.
First complaint: error regarding the level of attention of the relevant public
12      By the first complaint, the applicant claims that the Board of Appeal was wrong to consider that the relevant public would have a high level of attention with regard to the goods at issue in Class 9.
13      In that regard, suffice it to state that, after finding that the relevant public would have a high level of attention with regard to the goods at issue in Class 9, the Board of Appeal rightly found that the relevant public’s level of attention was not a decisive factor in the assessment of the descriptive character of the mark applied for (see, to that effect and by analogy, judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 48).
14      The first complaint in the first plea must therefore be rejected.
Second complaint: lack of distinctive character of the mark applied for
15      By the second complaint, the applicant first of all submits that the first letter of the mark applied for does not have any independent meaning, with the result that the relevant public will perceive that mark as a neologism composed of a single word which has no meaning. Next, whatever the meaning attributed to that letter, the mark applied for is not descriptive due to the fact that the goods at issue are not intelligent grills or grills which make use of information technology. Finally, the information taken from the website ‘www.ideviceinc.com’, on which the Board of Appeal based its assessment, first, dealt with the perception which the consumers in the United States have of the mark applied for, and not that of the relevant public, secondly, was no longer accessible on the date the application for registration of the mark applied for was lodged and, thirdly, does not demonstrate that the mark applied for has a descriptive character.
16      It must be recalled that, under Article 7(1)(c) of Regulation No 207/2009, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ may not be registered. Article 7(2) of that regulation states that Article 7(1) is to apply notwithstanding the fact that the grounds of non-registrability obtain in only part of the European Union.
17      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision pursues an aim which is in the public interest, namely, that such signs or indications may be freely used by all (judgments of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 27, and of 2 May 2012, Universal Display v OHIM (UniversalPHOLED), T‑435/11, not published, EU:T:2012:210, paragraph 14; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).
18      Moreover, signs or indications which may serve, in trade, to designate 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, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, thus enabling the consumer who acquires 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 (judgment of 2 May 2012, UniversalPHOLED, T‑435/11, not published, EU:T:2012:210, paragraph 15; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
19      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16 and the case-law cited).
20      However, for EUIPO to refuse registration of a trade mark on the basis of Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications referred to in that article of which the mark is made up actually be in use at the time of the application for registration in a way that is descriptive of goods or services, such as those in relation to which the application has been submitted, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).
21      Lastly, it is important to bear in mind that whether a mark is descriptive may be assessed only by reference to the relevant public’s understanding of the mark and by reference to the goods or services concerned (see judgment of 7 June 2005, Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 26 and the case-law cited).
22      In the present case, it must be pointed out, in the first place, that the applicant does not challenge the definition of the relevant public, as correctly determined by the Board of Appeal, according to which the relevant public for the purposes of the perception of the descriptive character of the mark applied for is the public in the English-speaking European Union, comprising both the general public and a specialised public.
23      In the second place, it should be observed, as the Board of Appeal correctly found, that the relevant public will perceive the elements ‘grill’ and ‘i’ separately.
24      It is important to note that, when perceiving a word sign, the relevant public will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 57).
25      First, the word ‘grill’ is a common word in English, referring to a cooking device, and will be understood as such. Secondly, it is a well-known fact that, according to case-law, the letter ‘i’ can mean ‘intelligent’ or refer to information technology (see, to that effect, judgments of 16 December 2010, Ilink Kommunikationssysteme v OHIM (ilink), T‑161/09, not published, EU:T:2010:532, paragraph 30; of 3 September 2015, iNET 24 Holding v OHIM (IDIRECT 24), T‑225/14, not published, EU:T:2015:585, paragraphs 23 and 54; and of 3 December 2015, TrekStor v OHIM — Scanlab (iDrive), T‑105/14, not published, EU:T:2015:924, paragraph 75).
26      In those circumstances, it must be concluded that the mark applied for will be seen as the mere juxtaposition of the two elements ‘i’ and ‘grill’ of which it is composed and not a neologism consisting of a single word which has no obvious meaning (judgment of 31 January 2018, Weber-Stephen Products v EUIPO (iGrill), T‑35/17, not published, EU:T:2018:46, paragraph 23).
27      The arguments put forward in that regard by the applicant cannot cast doubt on that conclusion. First, the applicant argues that the case-law relating to the meaning of the letter ‘i’, referred to in paragraph 25 above, is not applicable to the present case because that case-law relates to goods in the ‘technology sector’ or the ‘telecommunications sector’, whereas the mark applied for covers computer software, computer hardware, electronic thermometers and household appliances.
28      However, that argument must be rejected, as the applicant does not explain how computer software, computer hardware, electronic thermometers and household appliances could not relate to the ‘technology sector’ to which it refers.
29      Secondly, the applicant argues that, although it is clear from a number of English language reference dictionaries that the letter ‘i’ may have a number of meanings, none of those meanings refers to the English words ‘interactive’, ‘intelligent’ or ‘information technology’.
30      In that regard, it should be recalled that EUIPO is under no obligation to prove that the word mark applied for, or an element thereof, is included in the dictionary. The question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of the relevant EU legislation, as interpreted by the EU judicature. Therefore, it is sufficient that the Board of Appeal applied the descriptiveness test, as interpreted by case-law, in order to reach its decision, and it is not obliged to justify its decision by producing evidence (see, to that effect, judgments of 8 July 2004, Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS), T‑289/02, EU:T:2004:227, paragraph 54, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 34). Accordingly, the mere fact that the possible meaning of the letter ‘i’, on which the Board of Appeal based its decision, is not referred to in the dictionaries mentioned by the applicant does not lead to the conclusion that the relevant public will not be able to perceive that meaning.
31      Thirdly, the applicant submits that the sign iGrill does not have any independent meaning on the ground that the addition of a lower-case letter, that is to say the letter ‘i’, to a word the first letter of which is an upper-case letter, that is to say the word ‘grill’, does not correspond to any rule of syntax in the English language.
32      In that regard, it should be noted that, according to settled case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. Consequently, the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark. It follows that it is immaterial that the mark applied for is written in upper-case or lower-case letters for the purposes of assessing its descriptive character (see, to that effect, judgments of 3 July 2013, Airbus v OHIM (NEO), T‑236/12, EU:T:2013:343, paragraph 39, and of 3 December 2015, iDrive, T‑105/14, not published, EU:T:2015:924, paragraph 59).
33      In the third place, it should be noted that, with regard to the goods in question, the Board of Appeal was correct in considering that the mark applied for had a descriptive character.
34      In accordance with the case-law cited in paragraph 20 above, a mark must be considered descriptive where, in one of its possible meanings, it designates the goods concerned or one of their characteristics.
35      In the present case, since the mark applied for must be considered as a whole, and taking into account the findings set out in paragraphs 25 and 26 above, the sign iGrill may mean a ‘grill having the characteristic of being intelligent or of making use of information technology’. Furthermore, first, it should be noted that the computer hardware, the thermometers, in particular the electronic thermometers, and all the other goods at issue in Class 9 have the characteristic of being able to make the grills intelligent by enabling them to make use of information technology. Secondly, it should be pointed out that the grill covers and the household, kitchen and barbecue utensils and containers in Class 21 have the characteristic of being able to be used with grills.
36      It should therefore be considered that, in one of the possible meanings, the mark applied for may designate a characteristic of all of the goods at issue.
37      That assertion cannot be called into question by the applicant’s argument that, whatever the meaning of the letter ‘i’, the mark applied for is not descriptive since the goods applied for are not intelligent grills or grills which make use of information technology.
38      First, the applicant submits that there is no link between the grills and the goods at issue, in particular the computer hardware in Class 9 and the goods in Class 21, with the result that the relevant public will not perceive, in the mark applied for, a description of the latter. More particularly with regard to the goods in Class 9, the applicant also criticises the Board of Appeal for having found that the computer hardware at issue was designed for making use of a grill remotely, whereas the description of that hardware did not contain any reference to the ability to control any product remotely.
39      It should be pointed out that, contrary to what the applicant claims, the computer hardware in Class 9 may be required to operate a device, including a grill, which makes use of information technology, without there being any need to determine whether or not that hardware must make it possible for grills to be used remotely. Similarly, it cannot be disputed, as was pointed out in paragraph 35 above, that grill covers and household, kitchen and barbecue utensils and containers in Class 21 may be used with a grill. In that regard, the applicant neither demonstrates, nor even claims, that the fact that a grill may make use of information technology is such as to make the use of grill covers and household, kitchen and barbecue utensils and containers unnecessary.
40      Secondly, the applicant claims, inter alia, that the grills do not have a computer interface and that they do not include electronic thermometers. Similarly, it claims that neither the thermometers nor the household or kitchen utensils and containers can be qualified as intelligent.
41      In that regard, it should be noted that the fact that the mark applied for describes a characteristic which does not exist, as technology currently stands, does not preclude it from being perceived as descriptive by the relevant public (judgment of 16 October 2014, GRAPHENE, T‑458/13, EU:T:2014:891, paragraph 21).
42      Consequently, in order to refuse the application for registration of the mark applied for on the basis of Article 7(1)(c) of Regulation No 207/2009, it was sufficient to find, as was stated in paragraph 20 above, that, in one of its possible meanings, the mark applied for designated a characteristic of the goods at issue, regardless of whether or not such products are currently available on the market.
43      Therefore, in view of what was stated in paragraph 36 above, it should be observed, without there being any need to rule on the Board of Appeal’s use of evidence from the website ‘www.idevicesinc.com’, that the Board of Appeal rightly found that the mark applied for had a descriptive character for the purposes of Article 7(1)(c) of Regulation No 207/2009. For that reason, the second complaint in the first plea must be rejected.
Third complaint: failure to observe EUIPO’s decision-making practice
44      By its third complaint, the applicant claims that the Board of Appeal wrongly departed from EUIPO’s decision-making practice, according to which the letter ‘i’ should be regarded as a distinctive element currently used in the electronics and information technology sector.
45      In that regard, it should be noted that, in accordance with well-established case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, having regard to the principles of equal treatment and of sound administration, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with special care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered or annulled. Accordingly, such an examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77, and order of 26 May 2016, Hewlett Packard Development Company v EUIPO, C‑77/16 P, not published, EU:C:2016:373, paragraph 4). In addition, in its review of legality, the Court is not bound by the decision-making practice of EUIPO, (see, to that effect, judgment of 3 September 2015, IDIRECT24, T‑225/14, not published, EU:T:2015:585, paragraph 60 and the case-law cited).
46      In the present case, as is apparent from paragraphs 22 to 43 above, the Board of Appeal was entitled to consider that the mark applied for was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009, with the result that the applicant cannot successfully rely on previous decisions of EUIPO in order to invalidate that conclusion.
47      It follows that the fact that EUIPO interpreted the letter ‘i’ differently in previous decisions and consented, in those decisions, to the registration of marks with the letter ‘i’ as a prefix, even though the goods and services covered by those marks are part of the information technology sector, does not lead to the conclusion that, in the present case, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009.
48      Therefore, it is necessary to reject the third complaint in the first plea and, accordingly, to reject the first plea in its entirety.
Second plea in law: infringement of Article 7(1)(b) of Regulation No 207/2009
49      The applicant argues that the mark applied for is sufficiently distinctive to identify the goods that it covers as originating from a specific undertaking.
50      EUIPO disputes the applicant’s arguments.
51      It should be noted that, as is clear from Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal applies for the sign at issue not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).
52      Consequently, as was stated in paragraphs 43 and 47 above, since the sign submitted for registration is descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, and this ground alone justifies refusal of the contested registration, there is no need, in the present case, to examine the merits of the plea alleging infringement of Article 7(1)(b) of that regulation (see, to that effect, order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28).
53      It follows from all the foregoing considerations that the action must be dismissed.
Costs
54      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Weber-Stephen Products LLC to pay the costs.
Gervasoni
Kowalik-Bańczyk
Mac Eochaidh
Delivered in open court in Luxembourg on 17 October 2018.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.