JUDGMENT OF THE GENERAL COURT (Third Chamber)
30 June 2021 (*)
[Text rectified by order of 2 August 2021]
[As rectified by order of 2 August 2021] (EU trade mark – Invalidity proceedings – European Union word mark NOMAD – Absolute grounds for refusal – Distinctive character – Lack of descriptive character – Article 7(1)(b) and (c) of Regulation (EC) No 40/94 (now Article 7(1)(b) and (c) of Regulation (EU) 2017/1001))
In Case T‑285/20,
MCM Products AG, established in Zurich (Switzerland), represented by S. Eichhammer, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Kondás and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being
The Nomad Company BV, established in Zevenaar (Netherlands), represented by S. Tigu, lawyer,
[As rectified by order of 2 August 2021] ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 13 March 2020 (Case R 854/2019‑4), relating to invalidity proceedings between MCM Products and The Nomad Company,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins (Rapporteur), President, V. Kreuschitz and Z. Csehi, Judges
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 15 May 2020,
having regard to the response of EUIPO lodged at the Court Registry on 28 October 2020,
having regard to the response of the intervener lodged at the Court Registry on 16 October 2020,
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 6 July 2000 the intervener, The Nomad Company BV, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The trade mark in respect of which registration was sought is the word mark NOMAD.
3        The goods in respect of which registration was sought are in Classes 18, 24 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description for each class:
–        Class 18: ‘Trunks and bags, including travelling bags, rucksacks, cases on wheels, trolleys, weekend bags, bicycle bags, toilet bags, shoulder bags, handbags, hip bags, neck bags, belt bags, bags for laptops, for documents and for mobile telephones, bags for documents and/or securities, pocket wallets, purses’;
–        Class 24: ‘Textiles and textile goods, not included in other classes; duvet covers, sheets, blankets, duvets, sleeping bags, sleeping mats, travelling rugs, bed spreads’;
–        Class 25: ‘Clothing, including coats, jackets, waistcoats, rainwear, trousers, shorts, trousers with removable legs, sweaters, shirts, blouses, T shirts, polo shirts, shirts, fleece jackets, pullovers, dresses, skirts; headgear, including hats, caps, sun hats; footwear, including walking boots and sandals’.
4        The trade mark application was published in Community Trade Marks Bulletin
No 36/2001 of 23 April 2001 and the contested mark was registered on 5 August 2004 under number 1742089 in respect of the goods referred to in paragraph 3 above (‘the goods covered by the contested mark’).
5        On 14 September 2017 the applicant, MCM Products AG, filed an application for a declaration that the contested mark was invalid under Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) and (c) of that regulation (now Article 7(1)(b) and (c) of Regulation 2017/1001).
6        By decision of 20 March 2019, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
7        On 16 April 2019 the applicant filed an appeal with EUIPO against the decision of the Cancellation Division pursuant to Articles 66 to 71 of Regulation 2017/1001.
8        By decision of 13 March 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal and, consequently, the application for a declaration of invalidity in respect of all the goods covered by the contested mark. First, the Board of Appeal found that the evidence and arguments put forward by the applicant did not demonstrate the descriptive character of the contested mark at the time the application for registration of that mark was filed, namely on 6 July 2000, so that that mark could not be regarded as falling within the scope of the prohibition laid down in Article 7(1)(c) of Regulation 2017/1001. Second, the Board of Appeal found that, since the contested mark was not descriptive, it was not devoid of distinctive character within the meaning of Article 7(1)(b) of that regulation and rejected the applicant’s argument that the English word ‘nomad’, in its second meaning, was purely laudatory.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision in so far as it relates to goods in Class 18;
–        order EUIPO to pay the costs.
10      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Preliminary observations
11      In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation 2017/1001 and, second, infringement of Article 7(1)(b) of that regulation.
12      Given the date on which the application for registration at issue was filed, namely 6 July 2000, 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 No 40/94 (see, to that effect, order of 5 October 2003, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited), which, moreover EUIPO acknowledges in its reply.
13      Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written submissions to the provisions of Regulation 2017/1001 should be understood as relating to the identical provisions of Regulation No 40/94.
14      Accordingly, the pleas raised by the applicant in support of the action must be interpreted as alleging, first, infringement of Article 7(1)(c) of Regulation No 40/94 and, second, infringement of Article 7(1)(b) of that regulation.
15      Furthermore, it should be noted that, as is apparent from the forms of order sought by the applicant and from several paragraphs of its written submissions, the applicant seeks the annulment of the contested decision only in so far as it rejected the application for a declaration of invalidity in respect of the goods covered by the contested mark in Class 18 (‘the goods at issue’).
The first plea in law: infringement of Article 7(1)(c) of Regulation No 40/94
16      In support of the first plea, the applicant puts forward six complaints. In the first place, the applicant argues that the Board of Appeal defined the relevant public incorrectly or incompletely. In the second place, it argues that the Board of Appeal erred in finding that the contested mark was not appropriate for the purpose of describing the origin of the goods at issue. In the third place, it submits that the Board of Appeal failed to have regard to the fact that the described characteristic did not necessarily have to be economically or commercially significant or to be known as such. In the fourth place, it argues the Board of Appeal erred in finding that the contested mark was not appropriate for the purpose of describing the style of the goods at issue. In the fifth place, it submits that the Board of Appeal incorrectly failed to take account of evidence from the period subsequent to the date on which the application for registration of the contested mark was filed. In the sixth place, it argues that the Board of Appeal interpreted the word ‘nomad’ too narrowly and incorrectly applied the second meaning of the word ‘nomad’.
17      The second, third, fourth and sixth complaints concern, in essence, the meaning of the word ‘nomad’ and the connection between that word and the goods at issue. Consequently, it is appropriate to consider them together.
18      Article 7(1)(c) of Regulation No 40/94 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. According to Article 7(2), Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
19      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).
20      It must also be recalled that Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to goods or services may be freely used by all. It follows that that provision prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 25).
21      For a sign to fall within the scope of the prohibition in Article 7(1)(c) of Regulation No 40/94, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the relevant public immediately, and without further thought, to perceive a description of the category of goods and services in question or of one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
22      The fact that the EU legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. Accordingly, a sign can be refused registration on the basis of that provision only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 50 and the case-law cited). Furthermore, although it is irrelevant whether such a characteristic is commercially essential or ancillary, a characteristic, within the meaning of Article 7(1)(c) of Regulation No 40/94, must nevertheless be objective and inherent to the nature of that product or service and intrinsic and permanent with regard to that product or service (see, to that effect, judgment of 25 June 2020, Off-White v EUIPO (OFF-WHITE), T‑133/19, not published, EU:T:2020:293, paragraph 37 and the case-law cited).
23      Lastly, it should be recalled that a sign’s descriptiveness cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant persons have of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
24      The examination of whether the Board of Appeal was correct in finding that the contested mark was not caught by the prohibition laid down in Article 7(1)(c) of Regulation No 40/94 must be made in the light of those considerations.
The first complaint in the first plea: the Board of Appeal defined the relevant public incorrectly or incompletely
25      In paragraph 28 of the contested decision, the Board of Appeal defined the relevant public as being that in the Member States of the European Union in which English was an official language, namely Ireland, Malta and the United Kingdom, or a widely understood language, namely Denmark, Germany, the Netherlands and Sweden, on the ground that the word ‘nomad’ was an English word. In the relevant public the Board of Appeal also included the public of the Member States of the European Union in which the official language contained equivalents of the word ‘nomad’, namely, inter alia, the Czech Republic, Estonia, Spain, France, Italy, Portugal and Finland. Furthermore, it found that the goods covered by the contested mark, which were not defined as antiques or collectors’ items, were directed at the public at large. In paragraph 32 of the contested decision, the Board of Appeal stated that the relevant public will display an average level of awareness.
26      The only criticism which the applicant makes with regard to the Board of Appeal’s assessments, set out in paragraph 25 above, is that the Board of Appeal wrongly failed to take account of the fact that the goods in question were also directed at a specialised public, in particular dealers or collectors of bags, including specialised dealers or collectors of bags from ‘genuine’ nomads or nomadic tribes. Relying on the judgment of 11 October 2011, Chestnut Medical Technologies v OHIM (PIPELINE) (T‑87/10, not published, EU:T:2011:582, paragraphs 27 and 28), the applicant submits that the descriptive meaning of a sign may not be perceived by the general public, but may immediately be perceived by a specialist public. It is sufficient that a part of the relevant public perceives the word sign for which registration as a trade mark is sought as describing the goods concerned or uses it in that way for the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 40/94 to apply. The applicant also relies on two earlier decisions of the Boards of Appeal of EUIPO (decision of the Second Board of Appeal of 10 June 2013 (Case R 208/2013‑2 – GRAPHENE) and decision of the Fifth Board of Appeal of 10 July 2017 (Case R 227/2017‑5 – IBIZAPEOPLE)) in which it was found that clothing in Class 25 and bags in Class 18 were not directed solely at the general public, but also at certain professionals.
27      EUIPO contends that the Board of Appeal examined and rejected the applicant’s argument by pointing out that the goods covered by the contested mark were not specified as antiques or collectors’ items. It adds that, in general, although professional intermediaries are taken into account, the perception of consumers or end users plays a decisive role. In any event, the applicant has not demonstrated that the word ‘nomad’ has a different meaning for professional intermediaries. There is no objective category of nomad clothing or other nomad products. The judgment of the General Court and the earlier decisions of the Boards of Appeal to which the applicant refers are irrelevant as regards the assessment of the perception of the relevant public in the present case.
28      The intervener maintains that the Board of Appeal correctly defined the relevant public in the present case. The intervener observes, in particular, that there are approximately 100 different nomadic tribes worldwide and that there are major differences between those tribes in several respects, so that the relevant public for the goods at issue cannot attribute specific common characteristics to nomads, apart from the fact that they are accustomed to travelling from one place to another, on specific routes or throughout the seasons, in order to find food for animals, and do not have a permanent home.
29      In that regard, it must be held that the goods at issue, even if they are not purchased on a daily basis, are everyday consumer goods. They are relatively common, available in supermarkets or in shopping centres, are not necessarily expensive and are used in everyday life by many purchasers. Consequently, it must be held that the Board of Appeal was correct to find that the goods at issue were directed at the general public. As the Board of Appeal pointed out in paragraph 28 of the contested decision, there is nothing in the description of the goods at issue to indicate that they are antiques or collectors’ items, so that they would also be directed at a specialist public, which, moreover, would form at most only a negligible part of the relevant public.
30      In so far as the applicant bases its arguments seeking to establish that the goods at issue are also directed at a specialised public on two earlier decisions of the Boards of Appeal of EUIPO, it should be recalled that decisions concerning registration of a sign as an EU trade mark which those Boards of Appeal are led to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the EU Courts and not on the basis of a previous decision-making practice (see judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited, and of 12 April 2016, Auyantepui Corp. v EUIPO – Magda Rose (Mr Jones), T‑8/15, not published, EU:T:2016:213, paragraph 48 and the case-law cited). In any event, although, in the decisions relied on by the applicant, it was held, without distinction, that the relevant public consisted of both the general public and the professional public, that is because the goods concerned in the cases giving rise to those decisions included, alongside everyday consumer goods in Classes 18 or 25, specialised goods clearly directed at a specific public, such as ammunition, projectiles and explosives in Class 13 (decision of the Second Board of Appeal of 10 June 2013 in Case R 208/2013‑2) or precious metals and their alloys together with precious stones in Class 14 (decision of the Fifth Board of Appeal of 10 July 2017 in Case R 227/2017‑5). By contrast, in the present case, all of the goods covered by the contested mark are everyday consumer goods. The approach adopted in the two earlier decision of the Boards of Appeal cannot therefore be transposed to the present case.
31      As regards the judgment of 11 October 2011, PIPELINE (T‑87/10, not published, EU:T:2011:582), relied on by the applicant, it has no bearing on the Board of Appeal’s assessments concerning the perception of the contested mark by the relevant public in the present case. In the case which gave rise to that judgment, the relevant public consisted exclusively of highly specialised medical professionals, the goods covered by the mark applied for being devices for the surgical treatments of aneurysms, and those professionals immediately understood that, when used in the context of their specialisation, the word constituting that mark provided a direct and specific indication of the characteristics of those goods. The factual situation in that case is therefore quite different from that in the present case.
32      Therefore, the first complaint of the first plea must be rejected as being unfounded.
The second, third, fourth and sixth complaints of the first plea: the Board of Appeal, first, erred in finding that the contested mark was not appropriate for the purpose of describing the origin of the goods at issue, second, failed to have regard to the fact that the described characteristic did not necessarily have to have to be economically or commercially significant or be known as such, third, erred in finding that the contested mark was not appropriate for the purpose of describing the style of the goods at issue, and, fourth, interpreted the word ‘nomad’ too narrowly and incorrectly applied the second meaning of the word ‘nomad’
33      First of all, in the contested decision, the Board of Appeal stated that the online Oxford English Dictionary defines the word ‘nomad’ as ‘a member of a people that travel from place to end to find fresh pasture for its animals, and has no permanent home’ (paragraph 33 of the contested decision). The Board of Appeal confirmed the Cancellation Division’s observation that there were, worldwide, many nomadic tribes ‘which vary from one to the other in terms of language spoken, cultural traditions, physique, traditional dress, art, etc.’ The Board of Appeal stated that, in the light of the definition adopted, the contested mark refers to a member of an undefined tribe without a permanent home, the various tribes having their own particular characteristics. Having regard to those factors, the Board of Appeal concluded that the word ‘nomad’ could not be regarded as descriptive of the goods covered by the contested mark (paragraph 34 of the contested decision).
34      Next, the Board of Appeal rejected the applicant’s argument that the contested mark could serve, in trade, to designate the origin of the goods covered by that mark. In that regard, it argued that the evidence produced by the applicant in support of that argument referred to original goods, such as, in particular, bags, belts and carpets, originating from different nomadic tribes, some of which were offered for sale. It did not show that a nomad, in the sense of a member of a nomadic tribe, was known for the commercial production and sale of a specific good (paragraph 35 of the contested decision). The Board of Appeal added that, even if the word ‘nomad’ were perceived as being an adjective, meaning ‘of, relating to, or characteristic of a nomad or nomads’, it would still not designate the origin of the goods covered by the contested mark. According to the Board of Appeal, that exact origin would remain unclear, the characteristics of nomadic tribes being extremely diverse, differing from one tribe to the other, also because such tribes are dispersed across the world facing very different climatic and geographical challenges (paragraph 36 of the contested decision).
35      The Board of Appeal also rejected the applicant’s argument that the contested mark described the style of the goods covered by the contested mark. There is no such thing as a ‘nomad style’ or a ‘definition vis-à-vis an objective style of clothing or personal and home accessories that a so-called nomad style follower would wear or use; the [contested] mark [did] not objectively describe a particular style in relation to the goods at hand, there [was] no objective category of nomad clothing or other nomad products’ (paragraph 37 of the contested decision). The evidence adduced by the applicant in support of that argument is irrelevant since, for the most part, it post-dates the year 2000. In addition, the evidence does not set out any specific characteristics which are unique in the sense that they describe a specific style which objectively differs from other styles and can be immediately recognised as such. The applicant’s argument that nomad style goods are ‘sloppy’, ‘sleazy’, ‘untidy’, ‘typically handmade’, made ‘from natural materials’, ‘depict colourful patterns’, and ‘have loose strings’ only confirms that there is no objective and clearly defined category of products (paragraph 38 of the contested decision).
36      Furthermore, the Board of Appeal disputed the relevance of the earlier decisions of EUIPO and of certain national offices relied on by the applicant, arguing that it was not bound by such decisions. In any event, each case ought to be assessed on the basis of its own characteristics (paragraph 39 of the contested decision).
37      Lastly, the Board of Appeal noted that, according to the online Oxford English Dictionary, the word ‘nomad’ also means, in extended use, ‘an itinerant person; a wanderer’. On the basis of the only clear characteristic of a nomad, it found that, under that second meaning, that word designated a person who, without a permanent home, travels from place to place in total freedom, and not to a person who occasionally travels to interrupt his or her normal daily life and then returns to where he or she lives, which is the public at large targeted by the goods covered by the contested mark (paragraph 41 of the contested decision). Consequently, it rejected the applicant’s argument that, in that second meaning, the contested mark will immediately and without further reflection be interpreted to mean that those goods are made for travellers or backpackers (paragraphs 40 and 42 of the contested decision).
38      In the same context, the Board of Appeal disputed the relevance of the applicant’s references to the expressions ‘global nomads’, ‘hyper nomads’, ‘modern nomads’ and ‘digital nomads’. First, the evidence adduced does not demonstrate that those expressions were known at the time when the application for registration of the contested mark was filed. Second, they are combinations of words all of which are different from that mark. As for the play on words used in the intervener’s advertising, namely ‘this busy, nomadic life we live’, it is merely a quirky allusion to adventure and freedom (paragraphs 43 and 44 of the contested decision).
39      The Board of Appeal concluded from all of the above considerations that the contested mark was not descriptive within the meaning of Article 7(1)(c) of Regulation 2017/1001.
40      By the second complaint of the first plea, the applicant submits that the Board of Appeal erred in finding that the contested mark was not purely descriptive on the ground that the word ‘nomad’ was too vague to describe the manufacturer or the origin of the goods in question.
41      In that regard, first, the applicant complains that the Board of Appeal did not examine specifically, as regards trunks and bags, whether the word ‘nomad’ ought to be regarded as being too vague to describe the origin of those goods.
42      Second, the applicant claims that it is apparent from the case-law of the General Court that the words ‘relatively vague’ may be regarded as purely descriptive. The applicant argues that even ‘relatively vague’ indications can be regarded as consumer-oriented factual information. In particular, the applicant maintains that capacity as a descriptive factual indication does not require the indication to have already been given a fixed conceptual definition or a unanimous view on its semantic content to have been formed in trade.
43      Third, the applicant criticises the Board of Appeal for having failed to take into consideration the numerous items of evidence which it adduced and which it claims prove that nomadic tribes manufacture and sell certain kinds of bags. In that context, the applicant refers to an extract from the online encyclopaedia Wikipedia, dated 2006, concerning the expression ‘nomad bag’, which it argues establishes that the terms ‘nomadic’ and ‘nomad’ are used as generic terms to designate certain kinds of bags.
44      By the third complaint of the first plea, the applicant criticises the finding in paragraph 35 of the contested decision that the evidence it adduced does not demonstrate that a nomad is known for the commercial production and sale of a specific good. The applicant states that it is unclear what the Board of Appeal means by ‘commercial production and sale’ and why it considers that that ‘threshold’ has not been exceeded in the present case, in particular as regards bags and trunks. The applicant points out that it is apparent from the evidence that nomadic tribes sometimes offer for sale their own bags, which they have produced themselves using traditional methods, and that they trade in those goods to some extent. According to the applicant, the Board of Appeal disregarded the fact that bags are of significant economic importance for those tribes and constitute a product that they typically produce and sell. There is even a specific supply and demand for such goods. The applicant refers to articles from encyclopaedia and to evidence showing bags from ‘true’ nomads being offered for sale under the word ‘nomad’. The applicant adds that, according to the case-law, it is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. Having regard to that case-law, it is also irrelevant whether those characteristics are known to the relevant public.
45      By the fourth complaint of the first plea, the applicant submits that the Board of Appeal erred in finding, in paragraph 37 of the contested decision, that the word ‘nomad’ was too vague and did not objectively describe a particular style. According to the applicant, that word could be used to describe the specific appearance or style of bags and trunks, namely an objective and intrinsic characteristic of those goods. It claims that a fashion style can never be described objectively, and certainly not as a single word. Where a fashion style is designated by a single word, the statement made is always, to a certain extent, vague. In that regard, the applicant cites the terms and expressions ‘classic’, ‘elegant’, ‘hippie style’, ‘hipster’, ‘20s style’, ‘country house fashion’, ‘casual’ and ‘cowboy’, which are nevertheless descriptive of fashion goods. More particularly, it refers to EUIPO decisions which refused, on that ground, registration as a trade mark for words such as ‘cowboy’ and ‘hipster’ for products in Classes 18 and 25. The applicant adds that it is irrelevant that the word ‘nomad’ may have a negative connotation for certain parts of the relevant public.
46      The applicant also submits that it is immaterial that some of the evidence it adduced post-dates the year 2000. In quoting a passage from a dictionary dating from 1959, the applicant asserts that the expression ‘nomad style’ already existed at that time.
47      By the sixth complaint of the first plea, the applicant argues that the Board of Appeal interpreted the second meaning of the word ‘nomad’ too narrowly and incorrectly applied that second meaning when it found, in paragraph 41 of the contested decision, that that meaning refers exclusively to a traveller without a permanent home, and not to a person who travels only occasionally to interrupt his or her daily life.
48      In that regard, first of all, the applicant submits that such a narrow meaning of the word ‘nomad’ cannot be inferred from the evidence which it submitted during the administrative procedure.
49      Next, the applicant claims that, contrary to what is stated in paragraph 43 of the contested decision, it is also apparent from evidence that it adduced during the administrative procedure that the expressions ‘global nomads’, ‘hyper nomads’, ‘modern nomads’ and ‘digital nomads’ were already in use before the date on which the application for registration of the contested mark was filed.
50      Lastly, the applicant submits that, in any event, even were it necessary to take the view that the word ‘nomad’, in its second meaning, referred exclusively to a traveller without a permanent home, it would be purely descriptive, in so far as it also refers directly, in such a case, to the intended use of trunks and bags. Those goods are specifically tailored to the needs of travellers or wanderers without a permanent home.
51      In the first place, EUIPO recalls the assessments made by the Board of Appeal in paragraphs 33 to 36 of the contested decision. It submits that the Board of Appeal was correct to conclude that the word ‘nomad’ cannot be perceived as designating, inter alia, the origin of the goods at issue, having regard to the fact that the characteristics of nomadic tribes are extremely diverse. The Board of Appeal therefore did not fail to assess those goods.
52      In the second place, EUIPO submits that the Board of Appeal was correct to find that the evidence did not demonstrate that a member of a nomadic tribe was known for the commercial production and sale of a specific good. EUIPO agrees with the applicant’s assertion that the characteristics of the goods which may be described do not necessarily have to be commercially significant, nor does it rule out that certain nomadic tribes sell their own handmade bags. The fact remains, however, that the word ‘nomad’ as such remains largely undefined and that the evidence does not clarify which characteristics of those tribes the public could identify.
53      In that context, EUIPO dismisses the relevance of the extract from the online encyclopaedia Wikipedia concerning the expression ‘nomadic bag’ relied on by the applicant, which has no confirmatory value, does not corroborate information taken from other sources and does not cite any sources at all.
54      In the third place, EUIPO asserts that the Board of Appeal was correct to find there was no such thing as ‘nomad style’ nor an objective category of nomad products. EUIPO is of the view that the results of online searches provided by the applicant to establish a link between the words ‘nomad’ and ‘fashion’ do not assist in establishing specific characteristics of the goods which could immediately be recognised as being unique and describing a particular style.
55      EUIPO also submits that the Board of Appeal examined the general features of the goods presented, such as the ‘colourful patterns’ and the words ‘handmade from traditional materials’, and found that they were not sufficient to conclude that a particular style existed. The reference to the expression ‘nomad style’ in an English dictionary dating from 1959 is, in EUIPO’s view, not relevant.
56      Referring to paragraph 39 of the contested decision, EUIPO adds that the Board of Appeal provided a detailed explanation why the earlier decisions relied on by the applicant, which related to words with completely different meanings from the word ‘nomad’, were not relevant in the present case.
57      In the fourth place, EUIPO is of the view that the Board of Appeal did not interpret the second meaning of the word ‘nomad’ too narrowly. It states that the Board of Appeal found that the expressions ‘modern nomads’, global nomads’ and ‘digital nomads’, as combined terms, were clearly different from the contested mark. EUIPO adds that the Board of Appeal took the view that the word ‘nomad’, understood as meaning ‘wanderer’, did not designate a person travelling occasionally and could not be linked to characteristics of the goods in question. That word is neither synonymous with ‘traveller’ or ‘backpacker’ nor with the relevant characteristics of travel equipment or of outdoor clothing.
58      In the first place, the intervener maintains that the word ‘nomad’ is too vague to be able to describe directly and immediately any characteristic of the goods in question. The intervener refers to a judgment of the Landgericht Hamburg (Regional Court, Hamburg, Germany), in which that court confirmed that the NOMAD mark of which the intervener was the proprietor was not descriptive of suitcases and bags. The intervener adds that the Board of Appeal found that EUIPO had accepted the contested mark without any objection based on absolute grounds and that, until 2017, the registration of that mark had not been the subject of any objection on such absolute grounds by third parties. In addition, in 2017, the intervener registered the same word mark, on that occasion for a broader category of goods, without any objection being taken based on absolute grounds.
59      In the second place, the intervener disputes that the relevant public knows that bags are a product typically produced and sold by nomadic tribes. In addition, the intervener argues that it is totally irrelevant that nomadic tribes may offer for sale bags and trunks and that those products are of significant economic importance for those tribes. In the view of the intervener, the relevant public will not perceive craft work or trade as typical characteristics of nomadic people. That public might perhaps believe that nomads make clothes, bags, etc. for their own use, but certainly not that they are used to trading such craft work products or that nomads make those products for other persons.
60      The intervener adds that the word ‘nomad’ is a strong trade mark which is highly distinctive for the goods in question. According to the intervener, at the date on which the application for registration of the contested mark was filed, that mark was sufficiently distinctive and did not convey obvious and direct information concerning any characteristic of the goods at issue.
61      In the third place, the intervener maintains that features of a possible nomad style, if it exists at all, are ‘sloppy’, ‘sleazy’, ‘ragged’, ‘untidy, ‘containing fractions’, involving ‘loose strings’, ‘creative/artful applications’ or other impractical ‘fashionable features’. The intervener argues that, in contrast, the goods covered by the contested mark do not have such an appearance, but are sturdy, robust and basically meant for outdoor use, and do not include such impractical or unnecessary articles.
62      The intervener also submits that the word ‘nomad’ neither directly describes the very specific features of the goods in question, nor does it imply that a concept of nomad style exists. The relevant public will, in its view, rather understand the term as a purely fanciful designation that suggests an allusion to adventure or freedom.
63      In the fourth place, the intervener maintains that the Board of Appeal correctly interpreted the second meaning of the word ‘nomad’. Furthermore, it agrees with the Board of Appeal’s assessment that the applicant has not established that the expressions ‘modern nomads, ‘hyper nomads’, ‘global nomads’ and ‘digital nomads’ existed on the date on which the application for registration of the contested mark was filed. In any event, those terms are combinations of words which differ from that mark.
64      The second, third and fourth complaints of the first plea concern the definition of the word ‘nomad’ in its first and principal meaning.
65      In that regard, it must be held that, in view of the definition of the word ‘nomad’ taken from the online Oxford English Dictionary, provided by the applicant, the Board of Appeal was correct to state, in paragraph 34 of the contested decision, that that word refers to a member of an undefined tribe without a permanent home.
66      The Board of Appeal also correctly observed, in paragraph 34 of the contested decision, that there is a wide variety of nomadic tribes in the world, each of which has, inter alia, its own language, traditions, culture, traditional dress and physique. Apart from the fact that they constitute a well-known fact, those factors are amply corroborated by a number of documents provided by the applicant during the administrative procedure, which, inter alia, describe nomadic tribes being present in various countries and regions, such as Afghanistan, the Andes, Saudi Arabia, Australia, the Kalahari desert, India, Iran, Kenya, Kurdistan, Mauritania, Mongolia, Niger, Pakistan, Peru, Scandinavia, Siberia, Tibet and Turkey, and draw distinctions between several types of nomads, such as hunters, peoples who fish or gather and pastoral societies.
67      The applicant maintains that, contrary to the conclusions of the Cancellation Division and the Board of Appeal, the word ‘nomad’, in its first meaning, is descriptive of the goods at issue in so far as it refers, first, to the origin of those goods and, second, to a particular style of those goods.
68      The applicant’s argument that the word ‘nomad’ designates the origin of the goods in question, in the sense that, when it is used with those goods, it indicates that they are manufactured by ‘genuine’ nomads, is the subject of the second and third complaints of the present plea.
69      In that regard, first of all, it is necessary to reject the applicant’s claim that the Board of Appeal failed to examine specifically, as regards trunks and bags, whether the word ‘nomad’ ought to be regarded as being too vague to describe the origin of those goods. It is apparent from the contested decision that the Board of Appeal assessed whether there might be a link between that word and all of the goods covered by the contested mark, including, therefore, trunks and bags in Class 18, taking due account of the arguments and numerous items of evidence submitted by the applicant (see, in particular, paragraphs 34 and 35 of the contested decision).
70      Next, it must be held that the Board of Appeal was correct in finding, in paragraph 35 of the contested decision, that the evidence provided by the applicant did not demonstrate that nomads were known by the relevant public for the commercial production and sale of any specific product. That applies, in particular, to trunks and bags. The evidence demonstrates that nomads produce, on a craft basis, goods such as, inter alia, carpets, tents, clothing, belts, saddle bags and other bags, but mainly for their personal use or to exchange them for goods of other nomadic tribe members or of the settled inhabitants of the regions where they roam.
71      As regards the information contained in the extract from the online encyclopaedia Wikipedia to which the applicant referred, that information cannot be regarded as being sufficiently reliable since that extract does not refer to any source whatsoever.
72      Admittedly, the applicant is correct in its submission that it is apparent from some of the evidence it adduced that nomadic tribes ‘sometimes’ offer for sale the bags which they produce using traditional methods, that is to say, ‘to some extent trade in bags’. However, that evidence does not go so far as to demonstrate that, as the applicant asserts, bags are a product that has significant economic importance for nomadic tribes, or that there is a specific supply and demand for bags produced by ‘genuine’ nomads.
73      Against that background, the applicant is also correct to recall that, according to the case-law, it is irrelevant whether the characteristics of the goods or services which are capable of being described by the sign at issue are commercially essential or merely ancillary, as Article 7(1)(c) of Regulation No 40/94 draws no distinction in that regard (see judgment of 13 November 2008, Duro Sweden v OHIM (EASYCOVER), T‑346/07, not published, EU:T:2008:496, paragraph 60 and the case-law cited).
74      The fact remains that, in the present case, it has not been established that there is, from the point of view of the relevant public, a direct and specific link between the word ‘nomad’ and the origin of the goods at issue, in the sense that, contrary to the applicant’s assertion, that public does not usually expect that the goods at issue are manufactured by nomadic tribes. In other words, the origin alleged by the applicant does not even constitute an ancillary commercial characteristic of those goods.
75      In addition, and in any event, it is clear that the word ‘nomad’ as such is too vague and indeterminate to enable the relevant public immediately and without further thought to perceive it as a description of any specific characteristic of the goods in question. Having regard to the numerous differences, already referred to in paragraph 66 above, which exist between the many nomadic tribes spread across the world, in particular in terms of language, cultural traditions, religious practices and beliefs, social organisation, subsistence activities, clothing and means of transport, no specific common characteristic can be attributed to nomads, other than the fact that they move around constantly and therefore do not have a permanent home.
76      In that regard, it is revealing that in many of the items of evidence adduced by the applicant to establish that traditional nomads produce bags, the word ‘nomad’ does not appear alone, but rather is subject to one or more qualifications, as the following examples demonstrate: ‘Tibetan Nomad Bag’, ‘Small Shoulder Bag with Kyrgyz Nomad Patterns’, ‘Anatolian Nomad’, ‘Afghanistan Nomad Kuchi Cary Bag’, ‘Afghan Special Nomad Baluch Salt Bag’ and ‘Bakthiari Nomad Bag’.
77      Consequently, the second and third complaints of the first plea must be rejected as being unfounded.
78      The applicant’s argument that the word ‘nomad’, when used with the goods in question, will be perceived by the relevant public as referring to a ‘nomad style’, which is characterised by the fact that the goods are produced by hand from natural materials and have coloured patterns, is the subject of the fourth complaint of the present plea.
79      In that regard, it must be stated that the Board of Appeal was correct to come to the view, in paragraphs 37 and 38 of the contested decision, that there was no particular style that could be described as ‘nomad style’ nor any objective and clearly defined category of nomad products.
80      In addition to what has already been set out in paragraphs 68 to 76 above, it must be pointed out that the evidence provided by the applicant in support of its argument, although it shows carpets, textiles and other textile products which display similarities in so far as they contain geometric patterns, are generally brightly coloured and sometimes decorated with fringes, and appear to be produced by hand from natural materials, does not, however, show any specific characteristic of the goods which could immediately be recognised by the relevant public as being unique and describing a specific style which differs objectively from other styles, as the Board of Appeal correctly observed in paragraph 38 of the contested decision. Many categories of goods share the same characteristics.
81      The evidence the applicant adduced to substantiate its claim that, in the fashion sector, designers and producers of bags and clothing use the word ‘nomad’ to describe the style of their goods is also inconclusive. Far from supporting the conclusion that there is a specific nomad style, that evidence reveals that a wide range of styles is possible, ranging from the plain bikini to the layering of loose items of clothing.
82      As regards, more specifically, bags, the evidence demonstrates that bags marketed by fashion designers or producers by associating their brand with the word ‘nomad’ do not necessarily have the characteristics which the applicant attributes to an alleged ‘nomad style’. In the examples provided by the applicant, a large proportion of the bags designated as nomad bags have no pattern and are a single colour, which moreover is often a dark colour.
83      As regards the passing reference, in a passage from an English dictionary dating from 1959, to the expression ‘nomad style’, it is difficult to see how it establishes that such a style exists, and a fortiori what it comprises. The passage cited by the applicant reads as follows: ‘The influence of the nomad style is seen in a peculiar emphasi[s]ing of the joints of animals, which survived into the middle ages in both Asia and Europe. It is not by chance that an Indian toy and a Sicilian coronation robe have common tricks of style derived from nomads’.
84      Furthermore, the applicant is correct in arguing that it is irrelevant that the word ‘nomad’ may have a negative connotation for part of the relevant public, since the prohibition laid down in Article 7(1)(c) of Regulation No 40/94 does not apply to signs with positive connotations only. Its argument is, however, completely irrelevant in the present case, since the Board of Appeal did not find that the word ‘nomad’ was not descriptive for such a reason. In paragraph 38 of the contested decision, it merely observed that the applicant’s allegation, set out in its grounds of appeal, that the ‘nomad style’ goods were ‘sloppy’, ‘sleazy’ and ‘untidy’, merely confirm that there is no objective and clearly defined category of goods, those descriptions being extremely vague and highly subjective.
85      Lastly, as regards the applicant’s reference to earlier decisions of EUIPO which rejected registration of words such as ‘cow-boy’ or ‘hipster’ for goods in Classes 18 and 25 as trade marks, it must be stated that EUIPO is required to decide each case on its own merits and that it is not bound by previous decisions taken in other cases. As has already been recalled in paragraph 30 above, decisions concerning registration of a sign as an EU trade mark taken by the Boards of Appeal under Regulation No 40/94, are adopted under circumscribed powers and are not a matter of discretion, so that the legality of the decisions of those Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the EU Courts. In addition, the word ‘nomad’ has a totally different meaning from the words ‘cow-boy’ or ‘hipster’, which refer to well-defined concepts which will be immediately understood.
86      It follows that the fourth complaint of the first plea must be rejected as being unfounded.
87      The sixth complaint of the first plea relates to the second meaning of the word ‘nomad’. According to the applicant this refers to a traveller or a backpacker and, used for the goods in question, will therefore be perceived immediately to mean that those goods are directed at travellers.
88      The word ‘nomad’, according to the definition in the online Oxford English Dictionary provided by the applicant, also refers, by extension, to ‘a person who does not stay long in the same place; a wanderer’. In paragraph 41 of the contested decision, the Board of Appeal, referring to the same dictionary, mentions a definition of that word drafted in slightly different terms, but which does not alter its meaning, namely ‘an itinerant person; a wanderer’.
89      It must be held that the Board of Appeal did not err in finding, in paragraph 41 of the contested decision, that that second meaning of the word ‘nomad’ is derived from the only clear characteristic of a nomad, namely the fact that that person has no permanent home, and from that inferred that that meaning designated ‘a person without a permanent home but that, instead, travels from place to place in total freedom’. Consequently, the Board of Appeal was justified in concluding that, in that meaning, that word did not refer to a person who occasionally travels in order to interrupt his or her normal daily life and then returns to where he or she lives.
90      It follows that, contrary to the applicant’s argument, the word ‘nomad’, in its second meaning, will not be perceived immediately and without further thought by the relevant public as referring to the fact that the goods at issue are intended for travellers. At most, it could be perceived as alluding to adventure and freedom, which is not sufficient to characterise it as descriptive as provided for in Article 7(1)(c) of Regulation No 40/94.
91      That conclusion cannot be called into question by the applicant’s reference to the expressions ‘global nomads’, ‘digital nomads’, ‘hyper nomads’ and ‘modern nomads’. While it is true that, contrary to what paragraph 43 of the contested decision states, some of the evidence adduced by the applicant attests to those expressions existing on the date on which the application for registration of the contested mark was filed, the fact remains that, as the same paragraph also states, those expressions, consisting of combinations of words, have a very specific meaning which differs from the meaning of the word ‘nomad’.
92      Consequently, the sixth complaint of the first plea must be rejected as being unfounded.
The fifth complaint of the first plea: the Board of Appeal incorrectly failed to take account of evidence from the period subsequent to the date on which the application for registration of the contested mark was filed
93      Referring to paragraphs 38 and 43 of the contested decision, the applicant complains that the Board of Appeal failed to take evidence into consideration on the ground that it was from the period subsequent to the date on which the application for registration of the contested mark had been filed, whereas that evidence made it possible for ‘clear conclusions to be drawn regarding the preceding period’. The applicant argues that since the living and working conditions and trade practices of nomadic tribes have not changed significantly over the centuries, the situation regarding use of the word ‘nomad’ for bags prior to and subsequent to that date also remains unchanged.
94      EUIPO contends that it is irrelevant whether, and to what extent, the Board of Appeal took account of evidence subsequent to the date on which the application for registration of the contested mark was filed. Those items of evidence also do not allow any further conclusions to be drawn regarding the situation as at that date any more than the evidence relating to the period before the same date. In addition, the Board of Appeal did not reject the evidence at issue, but rather carried out an overall assessment of all the evidence submitted. The Board of Appeal concluded that that evidence refers to goods showing similarities as regards, for example, the patterns and style of some original nomadic goods, but does not show clear characteristics describing a specific style which objectively differs from other styles.
95      The intervener is of the view that the Board of Appeal ought not to have taken account of evidence adduced by the applicant subsequent to the date on which the application for registration of the contested mark was filed. It states that no conclusions can be drawn from that evidence regarding the situation on that date.
96      In that regard, first, although it is true that, at the beginning of paragraph 38 of the contested decision, the Board of Appeal stated that the majority of the evidence submitted by the applicant in support of its argument that there was a ‘nomad style’ post-dated ‘the relevant date in 2000’ and, was accordingly, irrelevant, the fact remains that it is apparent from the next part of the same paragraph that the Board of Appeal duly took account of that evidence in the overall assessment of all the evidence which had been submitted.
97      Second, while the Board of Appeal rejected the evidence referred to in paragraph 43 of the contested decision concerning the expressions ‘global nomads’, ‘digital nomads, ‘hyper nomads’ and ‘modern nomads’, that was because the Board of Appeal took the view, admittedly incorrectly, that that evidence did not establish that those expressions were known at that date. It is apparent from the same paragraph that the Board of Appeal nevertheless duly considered the conclusions to be drawn from the existence of those expressions as regards the applicant’s argument that the word ‘nomad’, in its second meaning, used for the goods at issue, will immediately be perceived as meaning that those goods are directed at travellers.
98      It follows from the foregoing that the fifth complaint of the first plea cannot be upheld. Consequently, the first plea in law must be rejected in its entirety as being unfounded.
The second plea in law: infringement of Article 7(1)(b) of Regulation No 40/94
99      The second plea consists in two parts. The applicant first alleges that Article 7(1)(c) of Regulation No 40/94 was misinterpreted ‘in the context of Article 7(1)(b) of that regulation’. Second, the applicant complains that the Board of Appeal erred in finding that the contested mark was sufficiently distinctive for trunks and bags on the ground that the word ‘nomad’, in its second meaning, was not laudatory ‘in a purely positive sense’.
100    As provided in Article 7(1)(b) of Regulation No 40/94, ‘trade marks which are devoid of any distinctive character’ are not to be registered.
101    For a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 34, and of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 29).
102    The marks referred to in Article 7(1)(b) of Regulation No 40/94 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 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 (judgments of 27 February 2002, EUROCOOL, T‑34/00, EU:T:2002:41, paragraph 37, and of 29 September 2009, The Smiley Company v OHIM (Representation of half a smiley smile), T‑139/08, EU:T:2009:364, paragraph 14).
103    The distinctive character of a mark must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (see judgment of 20 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35 and the case-law cited).
104    It is in the light of those considerations that it falls to be examined whether the Board of Appeal was correct in finding that the contested mark was not devoid of distinctive character as provided in Article 7(1)(b) of Regulation No 40/94.
The first part: alleged misinterpretation of Article 7(1)(c) of Regulation No 40/94 ‘in the context of Article 7(1)(b) of that regulation’
105    The applicant submits that, since the contested mark is descriptive of the goods at issue for the purposes of Article 7(1)(c) of Regulation No 40/94, it is also devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation.
106    EUIPO maintains that, since the Board of Appeal did not err in finding that the contested mark was not descriptive, it also did not err in finding that that mark was not devoid of distinctive character.
107    The intervener is of the view that the Board of Appeal correctly applied Article 7(1)(b) of Regulation No 40/94 in the present case.
108    In the context of the first part of the second plea, the applicant does no more than claim that the descriptive character of the contested mark, as provided for in Article 7(1)(c) of Regulation No 40/94, ought to have prompted the Board of Appeal to find that that mark was also devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation.
109    Given that it is apparent from the analysis carried out in the context of the first plea that the Board of Appeal did not err in finding that the contested mark was not descriptive of the goods at issue, the arguments put forward by the applicant under the present part of the plea must also be rejected as being unfounded.
The second part: the Board of Appeal erred in finding that the contested mark was sufficiently distinctive for trunks and bags on the ground that the English word ‘nomad’, in its second meaning, was not laudatory ‘in a purely positive sense’
110    The applicant submits that a particular word, even if it is not clearly descriptive of the goods concerned, may be caught by the absolute ground for refusal laid down in Article 7(1)(b) of Regulation No 40/94 if it is perceived by the relevant public as providing solely information on the nature of those goods and not as indicating their commercial origin. The applicant argues that it is accordingly apparent from settled case-law that, except where it is purely descriptive, a mark is also devoid of sufficient distinctive character if it does not display sufficient originality or resonance or does not set off any cognitive process in the mind of the relevant public. Consequently, according to settled case-law, for a finding that a word mark lacks distinctive character, it is sufficient to find that its semantic content indicates to the consumer a characteristic of the product relating to its market value which, whilst not specific, comes from information designed to promote or advertise, which the relevant public will perceive first and foremost as such rather than as an indication of the commercial origin of the goods.
111    According to the applicant, the English word ‘nomad’ is common for trunks and bags. It immediately evokes the idea of travelling in the mind of the relevant public, as is demonstrated by EUIPO’s refusal of the application for registration of the expression ‘digital nomads’ for, inter alia, bags in Class 18. The applicant adds that the general indication ‘trunks’ and ‘bags’ includes travelling trunks and travelling bags and that the word ‘nomad’ provides direct and immediate information about the nature, object and purpose of those goods.
112    Lastly, the applicant disputes that the word ‘nomad’ is not laudatory for trunks and bags. That word has a positive connotation in the fashion sector, as demonstrated by the frequent use of expressions such as ‘nomad fashion’, ‘nomad style’ and ‘nomad chic’. The applicant adds that ‘a positive laudatory effect is also legally immaterial’, since neutral words or even words with a negative connotation can be devoid of the necessary distinctive character.
113    EUIPO is of the view that the word ‘nomad’ is at most suggestive, allusive, vague or indirect in relation to the relevant goods and does not directly describe any particular characteristic. It is perceived simply as a fanciful and quirky allusion to adventure. Furthermore, EUIPO agrees with the Board of Appeal’s assessment that that word was not laudatory. EUIPO observes that the applicant failed to explain the laudatory meaning of the expressions on which it relies and that, in any event, the contested mark is the word ‘nomad’ and not those combinations or words.
114    The intervener disputes the applicant’s allegations.
115    It is apparent from the arguments submitted by the applicant before the adjudicating bodies of EUIPO and in its application that it takes the view that the word ‘nomad’, in particular in its second meaning, is devoid of any distinctive character on the ground that, when associated with the goods at issue, it immediately suggests the idea of travel in the mind of the relevant public and is therefore purely laudatory.
116    In that regard, first of all, it is necessary to reject the applicant’s allegation that, in paragraph 47 of the contested decision, the Board of Appeal relied on the finding that the word ‘nomad’ was not laudatory ‘in a purely positive sense’ for the goods at issue to conclude that the contested mark had a sufficiently distinctive character. Apart from the fact that that paragraph does not contain such a statement, it must be observed that, contrary to the applicant’s assertions, by definition, a word must have a positive connotation, namely to highlight the positive qualities of the goods and services for the presentation of which it is used, in order for it to be characterised as laudatory.
117    Next, it must be found that, for the reasons already set out in paragraphs 87 to 92 above, the relevant public will not, immediately and without further thought, perceive the word ‘nomad’, in its second meaning, as referring to the idea of travel, but will at most understand it as alluding to adventure and freedom.
118    In addition, and in any event, it is difficult to understand how the reference to the simple, and relatively neutral, idea of travel would directly convey a laudatory or promotional message, emphasising a positive quality of the goods in question or suggesting that they are superior to what is usually expected.
119    In that regard, it is necessary to reject the applicant’s argument that the existence, in the fashion sector, of expressions such as ‘nomad fashion’, ‘nomad style’ and ‘nomad chic’ demonstrate that the word ‘nomad’ has a positive connotation. Indeed, as EUIPO correctly points out, the contested mark does not consist of a combination of words.
120    It must therefore be concluded that the applicant has not established that the contested mark was laudatory. In addition, the applicant does not put forward any other evidence capable of demonstrating that that mark is incapable of identifying the goods in question as originating from a particular undertaking and therefore of distinguishing those goods from other undertakings’ goods, with the exception of the mere assertion that the word ‘nomad’ provides direct and immediate information about the nature, object and purpose of the goods in question, which include travelling trunks and travelling bags. As regards that assertion, it is sufficient to refer to what is stated in paragraph 117 above.
121    It follows that the second part of the second plea must be rejected as being unfounded and, consequently, that that plea must be rejected in its entirety.
122    In the light of all the foregoing, the action must be dismissed in its entirety.
Costs
123    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.
124    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders MCM Products AG to pay the costs.
Collins
Kreuschitz
Csehi
Delivered in open court in Luxembourg on 30 June 2021.
E. Coulon
Registrar
President
*      Language of the case: English.