JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

14 February 2019 ( *1 )

(EU trade mark — Application for an EU figurative mark representing a heart — Absolute ground for refusal — No distinctive character — Article 7(1)(b) of Regulation (EU) 2017/1001)

In Case T‑123/18,

Bayer Intellectual Property GmbH, established in Monheim am Rhein (Germany), represented by V. von Bomhard and J. Fuhrmann, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Graul, S. Hanne and D. Walicka, acting as Agents,

defendant,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 7 December 2017 (Case R 145/2017-1) concerning an application for registration of a figurative sign representing a heart 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 27 February 2018,

having regard to the response of EUIPO lodged at the Court Registry on 15 May 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 27 July 2016, the applicant, Bayer Intellectual Property GmbH, 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 following figurative sign:

3 The services in respect of which registration was applied for are in Classes 42 and 44 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 42: ‘Conducting scientific studies in the field of cardiovascular diseases’; – Class 44: ‘Medical services in the field of cardiovascular diseases’.

4 By decision of 24 November 2016, the examiner refused registration of the mark applied for in respect of the services referred to in paragraph 3 above on the basis of Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001).

5 On 20 January 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 7 December 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal brought by the applicant on the basis of Article 7(1)(b) of Regulation 2017/1001 on the ground that the mark applied for would be perceived by the relevant public as the representation of a heart and, therefore, as a reference to the fact that the services in question concern the field of cardiology.

Forms of order sought

7 The applicant claims that the Court should: – annul the contested decision; – vary the contested decision by granting the appeal against the examiner’s 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 raises, in essence, two pleas in law alleging, first, infringement of Article 7(1)(b) of Regulation 2017/1001 and, second, infringement of the principles of equal treatment and sound administration.

First plea in law: infringement of Article 7(1)(b) of Regulation 2017/1001

10 In support of the first plea, the applicant raises, in essence, two complaints. By the first complaint, the applicant submits that the Board of Appeal failed in its analysis to take account of the relevant public’s high level of attention. By the second complaint, the applicant criticises the Board of Appeal for finding that the mark applied for is devoid of any distinctive character.

11 EUIPO disputes the applicant’s arguments.

Preliminary observations

12 According to Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered. Article 7(2) of that regulation states that Article 7(1) of the regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

13 According to settled case-law, a trade mark has distinctive character, within the meaning of Article 7(1)(b) of Regulation 2017/1001, if that trade mark serves to identify the goods or services in respect of which registration is sought as originating from a particular undertaking and thus to distinguish those goods or services from those of other undertakings (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 23 and the case-law cited).

14 The distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration of the mark is sought and, second, by reference to the perception of that mark by the relevant public, which is composed of average consumers of those goods or services (see judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraph 24 and the case-law cited).

15 It is in the light of those considerations that both complaints put forward by the applicant in support of the first plea in law should be examined in turn.

The first complaint: the Board of Appeal failed to take account of the high level of attention of the relevant public

16 By the first complaint, the applicant submits that, although the Board of Appeal rightly stated that the relevant public’s level of attention was high, it did not take that level of attention into account in assessing the distinctiveness of the mark applied for.

17 In that regard, it should be noted that a mark must allow the relevant public to distinguish the products covered by that mark from those of other undertakings without paying particular attention (see, to that effect, judgment of 7 October 2004, Mag Instrument v OHIM, C‑136/02 P, EU:C:2004:592, paragraph 32), so that the distinctiveness threshold necessary for registration of a mark cannot depend on the public’s level of attention (see, to that effect and by analogy, judgment of 12 July 2012, Smart Technologies v OHIM, C‑311/11 P, EU:C:2012:460, paragraphs 48 to 50).

18 The lack of any impact of the relevant public’s level of attention on the assessment of the distinctiveness of the mark applied for is, moreover, confirmed by the fact that the applicant has, in its application, not specified the consequences that the Board of Appeal should, in the present case, have inferred from the relevant public’s high level of attention.

19 The Court therefore rejects the first complaint of the first plea as ineffective.

The second complaint: lack of distinctive character of the mark applied for

20 By the second complaint, the applicant submits that the Board of Appeal wrongly found that the mark applied for was devoid of any distinctive character. In particular, it maintains that the relevant public will perceive the mark applied for, not as the representation of a heart, but as the letter ‘v’ of the word ‘vericiguat’. It adds that, even if the mark at issue were perceived as the representation of a heart, in any event, the Board of Appeal disregarded the unusual nature of that heart, in particular in respect of the services in question.

21 In the first place, it must be noted that the applicant does not challenge the definition of the relevant public, as determined by the Board of Appeal, according to which the relevant public for the purposes of the perception of the distinctiveness of the mark applied for is composed, inter alia, of the public in the European Union specialised in the field of cardiovascular diseases.

22 In the second place, it must first be noted that the services in question relate to cardiovascular diseases.

23 Second, contrary to what the applicant submits, the mark applied for is not likely to be perceived as representing the letter ‘v’ of the word ‘vericiguat’. The curved shape towards the inside of the sign from both ends of the black element of the mark applied for differs from the ordinary representation of the letter ‘v’ and renders it closer to that of a heart. In those circumstances, and in view of the fact that the services in question concern the heart, it must be held that the mark applied for will be perceived by the relevant public as the representation of a heart, even if it were established that that public is aware of the active ingredient vericiguat.

24 The Court therefore finds, as did the Board of Appeal, that the relevant public will perceive the mark applied for as an indication that the services in question relate to the heart, despite the fact that that mark does not represent an anatomical heart.

25 It follows that the Board of Appeal rightly found that the mark applied for was not capable of indicating the commercial origin of the services in question, and therefore that that mark was not distinctive within the meaning of Article 7(1)(b) of Regulation 2017/1001.

26 That finding is not called into question by the applicant’s arguments.

27 The Board of Appeal cannot be criticised for not having relied on the case-law cited in paragraph 20 of the application, that a mark which departs significantly from the norm or customs of the sector is capable of being distinctive, as applied in the judgment of 15 December 2016, Novartis v EUIPO (Representation of a grey curve and representation of a green curve) (T‑678/15 and T‑679/15, not published, EU:T:2016:749, paragraphs 23 and 24). That case-law concerned situations in which the mark applied for is either a three-dimensional mark consisting of the appearance of the goods it designates or a figurative mark consisting of a two-dimensional representation of those goods. In the present case, in so far as the services are not, as such, tangible, the mark applied for is not capable of being constituted by the appearance of the services in question or a two-dimensional representation of them.

28 In addition, it should be noted that the stylised character of the heart represented by the mark applied for cannot, in any event, in itself, confer on that mark a distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

29 In that regard, the applicant claims, in essence, that the stylised character of the heart represented by the mark applied for results, first, from the increased thickness of the bottom-left outline of that heart, second, from the fact that the heart is less symmetrical than the 306 representations that it presented before the Board of Appeal and, third, from the fact that the top-left of the heart is not downward facing.

30 However, the Court notes that such characteristics are not likely to transmit a message which the relevant public could remember, so that the mark applied for will indicate to the relevant public only that the services in question relate to the heart. Consequently, as is clear from paragraphs 24 and 25 above, it must be held that the mark applied for is not capable of indicating the commercial origin of the services in question, despite the stylised character of the heart represented by that mark.

31 Furthermore, the Court also rejects the applicant’s argument that, unlike the representation of a non-stylised heart, the heart represented in the mark applied for is distinctive on the ground that it is not likely to evoke the idea of ‘recovery’. That argument, moreover which has not been substantiated, is not capable of calling into question the fact that the mark applied for will indicate to the relevant public only that services covered by it concern the heart.

32 It therefore follows from the above that the second complaint of the first plea is unfounded. It follows that this complaint must be rejected and, accordingly, that the first plea in law must be dismissed in its entirety.

The second plea: infringement of the rights of equal treatment and of the principle of sound administration

33 By its second plea, the applicant claims, in essence, that EUIPO infringed the principles of equal treatment and of sound administration by refusing to register the mark applied for despite the fact that it had already accepted registration of an identical trade mark covering pharmaceutical preparations in Class 5.

34 In that regard, it should be noted that, in accordance with settled 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).

35 It follows from those principles, first, that it is incumbent on the Boards of Appeal, when deciding to take a different view from the one adopted in decisions already taken in respect of similar applications relied on before them, to provide an explicit statement of their reasoning for departing from those decisions (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 66). However, such a duty to state reasons on a divergence from previous decisions is less important in relation to an assessment which strictly depends on the mark applied for than to factual findings which do not depend on that same mark (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 77 and 81).

36 Second, it also follows from the case-law cited in paragraph 34 above that decisions concerning the registration of a sign as an EU trade mark taken by the Boards of Appeal pursuant to Regulation 2017/1001 fall within the scope of circumscribed powers and are not a matter of discretion and, accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union (see judgment of 6 September 2018, Bundesverband Souvenir — Geschenke — Ehrenpreise v EUIPO, C‑488/16 P, EU:C:2018:673, paragraph 72 and the case-law cited). Accordingly, the Boards of Appeal cannot be bound by the previous decisions of EUIPO.

37 In the present case, first, it should be noted that an examination of the distinctiveness of a mark applied for depends strictly on that mark, and not on findings of fact relied on by the applicant. Thus, the Board of Appeal was able to limit itself to indicating that the applicant was not entitled to rely on previous decisions of EUIPO in order to reject the finding that the mark applied for was caught by the ground of refusal based on Article 7(1)(b) of Regulation 2017/1001. Moreover, it cannot be disputed that the Board of Appeal, in any event, explicitly stated the reason why it departed from the finding made in the previous decision relied on by the applicant. It found, in essence, that the goods then at issue were not specifically related to cardiology, so that those goods did not, contrary to the services at issue in the present proceedings, have a ‘directly and immediately recognisable relationship with a human heart’.

38 Second, the applicant cannot challenge the merits of that reasoning without calling into question the merits of the refusal to register the mark applied for. However, it must be noted, as is clear from paragraphs 21 to 32 above, that the Board of Appeal was correct to find that the mark applied for was caught by the ground for refusal of infringement of Article 7(1)(b) of Regulation 2017/1001.

39 Accordingly, it follows from the foregoing that the second plea in law must be dismissed as unfounded and, therefore, the action in its entirety.

Costs

40 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 Bayer Intellectual Property GmbH to pay the costs.

Gervasoni Kowalik-Bańczyk Mac Eochaidh Delivered in open court in Luxembourg on 14 February 2019. [Signatures]

( *1 ) Language of the case: German.