JUDGMENT OF THE GENERAL COURT (First Chamber)

13 December 2018 ( *1 )

(EU trade mark — Application for EU word mark upgrade your personality — Absolute ground for refusal — Lack of distinctive character — Advertising slogan — Article 7(1)(b) of Regulation (EU) 2017/1001)

In Case T‑102/18,

Martin Knauf, residing in Berlin (Germany), represented by H. Jaeger, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by R. Manea and A. Folliard-Monguiral, acting as Agents,

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 18 December 2017 (Case R 1011/2017-4), relating to an application for registration of the word sign upgrade your personality as an EU trade mark.

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová (Rapporteur), President, P. Nihoul and J. Svenningsen, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 19 February 2018,

having regard to the response lodged at the Court Registry on 30 April 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 15 August 2016, the applicant, Martin Knauf, 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 upgrade your personality.

3 The goods in respect of which registration was sought are in, inter alia, Classes 9 and 28 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, to the following description: – Class 9: ‘Recorded computer programs; computer programs [downloadable software]; software; games software; software programs for video games; computer programmes for data processing; computer graphics software; virtual reality game software; virtual reality software; optical data carriers bearing recorded software; pre-recorded magnetic data carriers; video game cassettes; videotapes; pre-recorded videos; integrated circuits; recording apparatus; interfaces for computers’; – Class 28: ‘Game consoles’.

4 On 3 May 2017, the examiner refused the trade mark application for all the goods listed in paragraph 3 above on the ground that it did not comply with Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001). However, he did not raise any objections to the application as regards the other goods and services, in Classes 9, 28 and 42. On 15 May 2017, the applicant filed a notice of appeal with EUIPO against the examiner’s decision in so far as it refused that application in part.

5 By decision of 18 December 2017, the Fourth Board of Appeal of EUIPO dismissed the appeal in its entirety on the sole basis of Article 7(1)(b) of Regulation No 207/2009 (‘the contested decision’). It found, in essence, that the word sign upgrade your personality had a purely laudatory and promotional function and was not capable of performing the basic function of a trade mark, which is to provide information on commercial origin. That finding applies to all the goods in respect of which registration had been refused.

Forms of order sought by the parties

6 The applicant claims that the Court should: – annul the contested decision; – register the trade mark applied for.

7 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs.

Law

The applicant’s second head of claim

8 By his second head of claim, the applicant requests that the General Court ‘register the trade mark applied for’.

9 EUIPO contends that that request should be rejected as inadmissible.

10 It should be noted, in that regard, that the applicant’s second head of claim must be interpreted as an application for alteration, for the purpose of Article 72(3) of Regulation 2017/1001, which provides that, where an appeal is brought against a decision of the Boards of Appeal, ‘the General Court shall have jurisdiction to annul or to alter the contested decision’.

11 It should be borne in mind that the Court’s power to alter decisions operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation 2017/1001 (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraphs 29 and 30; of 11 February 2009, Bayern Innovativ v OHIM — Life Sciences Partners Perstock (LifeScience), T‑413/07, not published, EU:T:2009:34, paragraphs 14 to 16, and of 9 September 2011, Deutsche Bahn v OHIM — DSB (IC4), T‑274/09, not published, EU:T:2011:451, paragraph 22).

12 Accordingly, the admissibility of a head of claim seeking alteration by the Court of the decision of a Board of Appeal must be assessed in the light of the powers conferred on that Board by Regulation 2017/1001.

13 In particular, in proceedings brought against a decision of the examiner, a Board of Appeal does not have the power to take cognisance of an application requesting that it register an EU trade mark (see, to that effect, order of 1 February 2018, ExpressVPN v EUIPO (EXPRESSVPN), T‑265/17, EU:T:2018:79, paragraphs 18 to 24 and the case-law cited).

14 In those circumstances, nor is it for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect (order of 30 June 2009, Securvita v OHIM (Natur-Aktien-Index), T‑285/08, EU:T:2009:230, paragraph 23).

15 It follows from all of the foregoing considerations that the applicant’s second head of claim must be rejected as inadmissible.

The applicant’s first head of claim

16 In support of his application for annulment of the contested decision, the applicant raises, in essence, a single plea in law, alleging infringement of Article 7(1)(b) of Regulation No 2017/1001. He submits, in essence, that, in that decision, the Board of Appeal incorrectly assessed the specific distinctive character of the trade mark applied for.

17 Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of distinctive character are not to be registered. According to settled case-law, the trade marks referred to in that provision are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (judgments of 27 February 2002, Eurocool Logistik v OHIM(EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37, and of 15 September 2009, Wella v OHIM (TAME IT), T‑471/07, EU:T:2009:328, paragraph 14).

18 According to settled case-law, registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use. However, a trade mark which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is distinctive for the purposes of Article 7(1)(b) of Regulation 2017/1001 only if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the proprietor of the trade mark from those of a different commercial origin (judgments of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 21, and of 15 September 2009, TAME IT, EU:T:2009:328, paragraph 15).

19 For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the product or service in question (judgments of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 31, and of 15 September 2009, TAME IT, EU:T:2009:328, paragraph 16).

20 However, the Court found that a trade mark could be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. In such a case, it ruled that, in so far as the public perceives the trade mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula had no bearing on its distinctive character (judgment of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraph 45).

21 The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark has been applied for and, secondly, by reference to the perception of that mark by the relevant public, which consists of average consumers of those goods or those services (judgments of 29 April 2004, Henkel v OHIM, C‑456/01 P and C‑457/01 P, EU:C:2004:258, paragraph 35, and of 15 September 2009, TAME IT, EU:T:2009:328, paragraph 17).

The relevant public

22 The Board of Appeal rightly found, without being challenged on that point by the parties, that the goods in respect of which registration was refused concerned the field of software and video games and were aimed primarily at the average consumer, and that, since the trade mark applied for is composed of words that are part of basic English vocabulary, and the use of English is customary in the IT field, including in Germany, it was appropriate to take into account English-speaking consumers in the European Union, who were not limited to those based in the United Kingdom or Ireland.

The lack of distinctive character of the trade mark applied for

23 The Board of Appeal found, in essence, that the word element ‘upgrade your personality’ had a purely laudatory and promotional function, the aim of which was to encourage the consumer to use the applicant’s goods to develop his own personality. Given that the slogan was aimed exclusively at the consumer and that it made certain promises, it cannot perform the basic function of a trade mark, which is to provide information on commercial origin.

24 The applicant submits, in that regard, that the trade mark applied for is not just a laudatory and promotional message and that, in particular, the Board of Appeal’s assertion that that mark does not require any linguistic interpretation is incorrect.

25 EUIPO disputes the applicant’s arguments.

26 The applicant submits that the invitation contained in the phrase ‘upgrade your personality’ is not readily comprehensible. He submits that the concept of personality, which covers all the personal qualities of an individual, is a concept which is inherently neutral and, to a large extent, open to interpretation. Given that the term ‘upgrade’, indicating a technical upgrade, is, in principle, incompatible with the reference to a living being and their personality traits, there is a conceptual conflict within the trade mark applied for. Since the target public is then encouraged to make its own interpretation as to the result ultimately to be achieved, that phrase also invites the target public to turn its attention inwards in order to recognise personal strengths and weaknesses. The applicant states that, in the context of computer games in particular, it is possible to improve a playable character as the game progresses, and that the phrase suggests that achieving such success in the game will be reflected in the real life of the target public. He refers to other comparable trade marks which have been registered by EUIPO. Finally, he notes that the Board of Appeal did not give any objective reasons justifying the eligibility for registration of the trade mark applied for in respect of some goods and services, and not others.

27 It should be noted that the applicant’s arguments cannot constitute a valid challenge to the Board of Appeal’s assessment.

28 First, contrary to what the applicant states, the message conveyed by the trade mark applied for is readily comprehensible. The slogan ‘upgrade your personality’ contains an invitation to the consumer to improve or develop his personality with the help of the goods covered by the trade mark applied for, which may be associated with the promise that those goods will make such an improvement or development possible or easier to achieve. The fact that there could be subtle differences in the way that slogan is understood does not imply that its meaning is vague, imprecise or ambiguous. In particular, the fact that the concept of personality may be interpreted in a number of ways will not prevent the consumer from understanding the message conveyed by the slogan based on his own understanding of that concept.

29 Secondly, the fact that the term ‘upgrade’ originates from the field of IT does not create any ‘conceptual conflict’, as is claimed by the applicant. On the one hand, that term is currently used in contexts which go far beyond the field of IT, and on the other, account must be taken of the fact that the goods covered by the trade mark applied for fall precisely within the field of IT, so the use of that term appears natural and would not surprise the relevant public.

30 Thirdly, there is no need to consider whether, as the applicant submits, it is possible to make a technical improvement (upgrade) to the human personality, since this is an advertising slogan, and the extent to which it is based in reality is not a relevant criterion for assessment. The consumer is accustomed to advertisements which, implicitly or explicitly, make unrealistic promises.

31 It follows that the semantic content of the trade mark applied for indicates to the consumer a characteristic of the goods covered relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive as such, rather than as an indication of the commercial origin of the goods in question, within the meaning of the case-law cited in paragraph 19 above.

32 The Board of Appeal was therefore correct to conclude that the trade mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 for all the goods in respect of which the application for registration had been refused.

33 In so far as the applicant relies on the registration as a trade mark, by EUIPO, of word signs similar to the mark applied for, namely the ‘upgrade your life’, ‘upgrade your garden’ and ‘upgrade yourself’ signs, it should be recalled that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal take under Regulation 2017/1001 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 and not on the basis of any previous decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 24 November 2005, Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 71).

34 Although, in the light of the principles of equal treatment and sound administration, EUIPO must take into account decisions already taken and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality (judgment of 17 July 2014, Reber Holding v OHIM, C‑141/13 P, EU:C:2014:2089, paragraph 45; see also, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 75).

35 Consequently, a person who files an application for registration of a sign as a trade mark may not rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 76).

36 Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a trade 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 (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77).

37 In this case, it has become apparent that the present application for registration was caught by one of the grounds for refusal set out in Article 7(1) of Regulation 2017/1001 because of some of the goods in respect of which registration was sought and because of the way it was perceived by the relevant consumers (see paragraph 32 above).

38 Finally, the applicant notes that the Board of Appeal did not provide objective reasons justifying the difference in the assessment of, on the one hand, the goods in respect of which it had refused registration of the trade mark applied for and, on the other, the goods in respect of which the examiner had not raised any objections. That omission on the part of the Board of Appeal seems, to the applicant, to be arbitrary.

39 In that regard, it is sufficient to note that the subject matter of the appeal brought against the examiner’s decision was limited to the examiner’s refusal to register the trade mark for certain goods, and that the absence of objections from the examiner concerning the other goods referred to in the application for registration did not, therefore, form part of the dispute before the Board of Appeal, as was explained, moreover, in paragraph 9 of the contested decision. There was therefore no reason for that Board to take a position on the reasons justifying the fact that the examiner did not raise any objections in relation to certain goods, or on the question of how the goods in respect of which the examiner had not raised any objections differed from those in respect of which he had refused registration.

40 It follows from the foregoing that the single plea in law raised by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.

Costs

41 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, he must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds, THE GENERAL COURT (First Chamber), hereby:

1. Dismisses the action;

2. Orders Martin Knauf to bear his own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).

Pelikánová Nihoul Svenningsen Delivered in open court in Luxembourg on 13 December 2018. [Signatures]

( *1 ) Language of the case: German.