ORDER OF THE COURT (Sixth Chamber)

11 September 2018 ( )

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Application for registration of the word mark DRIVEWISE — Dismissal of the application — Regulation (EC) No 207/2009 — Article 7(1)(c) — Article 7(2) — Article 75 — Descriptive character — Neologism composed of elements each of which is descriptive of the characteristics of the goods or services concerned — Intended purpose of the goods or services — Distortion — Duty to state reasons)

In Case C‑542/17 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 14 September 2017,

Allstate Insurance Company, established in Northfield (United States of America), represented by G. Würtenberger and R. Kunze, Rechtsanwälte,

appellant,

the other party to the proceedings being:

European Union Intellectual Property Office (EUIPO), represented by K. Markakis, acting as Agent,

defendant at first instance,

THE COURT (Sixth Chamber),

composed of C.G. Fernlund, President of the Chamber, A. Arabadjiev (Rapporteur) and S. Rodin, Judges,

Advocate General: M. Bobek,

Registrar: A. Calot Escobar,

having regard to the decision taken, after hearing the Advocate General, to give a decision by reasoned order in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1 By its appeal, the appellant, Allstate Insurance Company (‘Allstate Insurance’) seeks an order setting aside the judgment of the General Court of the European Union of 5 July 2017, Allstate Insurance v EUIPO (DRIVEWISE) (T‑3/16, not published, ‘the judgment under appeal’, EU:T:2017:467), in so far as the General Court, in that judgment, dismissed its claims for annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 October 2015 (Case R 956/2015 2) concerning an application to register the word sign ‘DRIVEWISE’ as an EU trade mark (‘the decision at issue’).

Legal context

2 Article 7 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1), entitled ‘Absolute grounds for refusal’, provides in paragraph 1(c):

‘1. The following shall not be registered:

...

(c) 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 services.’

3 Article 7(2) of that regulation provides:

‘Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the [Union].’

4 Article 75 of that regulation, entitled ‘Statement of reasons on which decisions are based’, reads as follows:

‘Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had [an] opportunity to present their comments.’

Background to the dispute

5 On 13 November 2014, Allstate Insurance filed an application for registration of an EU trade mark at EUIPO under Regulation No 207/2009.

6 The mark in respect of which registration was sought is the word sign ‘DRIVEWISE’.

7 The goods and services in respect of which registration was sought fall in particular within Classes 9 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 9: ‘Computer software for mobile data devices; computer software for the collection, analysis, storage, management, manipulation and processing of multi-source information and data; computer software for data collection and data analytics; computer software for data analytics and databases; computer databases; computer software for creating searchable databases of information and data; telematics devices; parts and fittings for any of the aforesaid goods’;

– Class 42: ‘Scientific and technological services and research and design relating thereto; design and development of computer hardware and computer software; computer software consultancy services; technical advisory services; technical advisory services relating to data processing; data analytics services; providing temporary use of non-downloadable computer software to analyse data and for consumer research; installation and maintenance of computer software; software writing services; data mining; information and advisory services relating to the aforementioned services, including the provision of all of these services online from a computer network or via the internet’.

8 By decision of 16 March 2015, the examiner rejected the application for registration of the mark DRIVEWISE on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation, in respect of the goods and services at issue on the grounds that that mark was descriptive of those goods and services and therefore devoid of any distinct character.

9 On 18 May 2015, Allstate Insurance filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

10 By the decision at issue, the Second Board of Appeal of EUIPO dismissed that appeal.

The procedure before the General Court and the judgment under appeal

11 By application lodged at the Registry of the General Court on 4 January 2016, Allstate Insurance brought an action for the annulment of the decision at issue.

12 In support of its action, Allstate Insurance relied on two pleas in law, the first alleging infringement of Article 7(1)(b) and (c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation, and the second alleging infringement of Article 75 of that regulation.

13 By the judgment under appeal, the General Court dismissed that action.

Forms of order sought by the parties before the Court of Justice

14 Allstate Insurance claims that the Court should:

– set aside the judgment under appeal;

– uphold the action at first instance, and

– order EUIPO to pay the costs.

15 EUIPO contends that the Court should:

– dismiss the appeal and

– order Allstate Insurance to pay the costs.

The appeal

16 In support of its appeal, Allstate Insurance relies on three grounds of appeal, the first alleging infringement of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation, the second, alleging infringement of Article 75 of that regulation, and the third, alleging a distortion of the facts concerning the assessment of the descriptive character of the sign applied for.

17 The first ground of appeal is divided into two parts. It is first of all necessary to examine the first part of the first ground of appeal in conjunction with the third ground of appeal, then the second part of the first ground of appeal, and finally the second ground of appeal.

The first part of the first ground of appeal and the third ground of appeal

Arguments of the parties

18 By the first part of the first ground of appeal, Allstate Insurance alleges that the General Court applied erroneous legal criteria in order to find that the mark DRIVEWISE was descriptive. In that regard, it claims that the General Court incorrectly assessed the characteristics of the goods and services covered by the application for registration and, in particular, their intended purpose in such a way that it did not carry out the assessment of the descriptive character of the sign applied for by reference to the goods and services for which registration of that sign was sought.

19 In addition, by its third ground of appeal, Allstate Insurance alleges that the General Court distorted the characteristics of the goods and services at issue, in particular their intended purpose, and incorrectly assessed the descriptive character of the sign applied for by reference to goods and services other than those covered by the application for registration of the sign ‘DRIVEWISE’. According to Allstate Insurance, the goods and services to which the General Court referred in the judgment under appeal and, in particular, those referred to in paragraph 23 of that judgment do not correspond to the goods and services in respect of which registration was sought.

20 EUIPO disputes those arguments.

Findings of the Court

21 In the first part of the first ground of appeal, Allstate Insurance claims that the General Court applied erroneous legal criteria in order to find that the mark DRIVEWISE was descriptive, in that the General Court examined whether that mark had a descriptive character having regard, not to the goods or services at issue, but to other goods or services.

22 In that respect, it is clear from the arguments seeking to develop that part that, in criticising the General Court for having carried out an assessment of the descriptive character of the sign applied for by reference to goods and services other than those covered by the application for registration of that sign, Allstate Insurance in fact disputes the factual assessments carried out by the General Court with regard to the characteristics of the goods and services at issue and, in particular, those relating to their intended purpose.

23 It should be recalled that, in an appeal, the Court of Justice has no jurisdiction to establish the facts or to examine the evidence which the General Court accepted in support of those facts, except when there is an allegation of distortion. It is for the General Court alone to assess the value to be attached to the evidence submitted to it. That assessment does not therefore constitute, save where the clear sense of that evidence has been distorted, a point of law which, as such, is subject to review by the Court of Justice (see, to that effect, order of 14 December 2017, Verus v EUIPO, C‑101/17 P, not published, EU:C:2017:979, paragraph 28).

24 It should be added in that respect that a distortion of the facts and evidence is exceptional in nature (see judgment of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 21) and must be obvious from the documents submitted, without any need for a new assessment of the facts and the evidence (judgment of 18 March 2010, Trubowest Handel and Makarov v Council and Commission, C‑419/08 P, EU:C:2010:147, paragraph 32).

25 In the present case, although, in its third ground of appeal, Allstate Insurance claims that the characteristics of the goods and services at issue, in particular their intended purpose, were distorted, and consequently criticises the General Court for having carried out an assessment by reference to goods and services other than those covered by the application to register the sign ‘DRIVEWISE’, it is not manifestly apparent from the description of the goods and services covered by the application for registration in paragraph 3 of the judgment under appeal that the goods and services to which the General Court refers in that judgment, in particular those mentioned in paragraphs 23, 25 and 29, do not correspond to the goods and services in respect of which registration was sought.

26 Furthermore, it must be considered that the arguments of Allstate Insurance derive from an incorrect reading of the judgment under appeal, in particular paragraphs 13, 16, 17 and 19 of that judgment.

27 After confirming in paragraph 17 of that judgment that the assessment of the Board of Appeal concerns the goods and services at issue, as they appear in the application for registration, the General Court, in paragraph 19 of that judgment, stated that it was necessary to examine whether there is, from the relevant public’s point of view, a sufficiently clear and specific relationship between the sign applied for and the goods and services at issue, by expressly referring to the case-law recalled in paragraph 13 of the judgment under appeal, according to which the assessment of the descriptive character of a sign may only be carried out, first, by reference to the relevant public’s perception of it and, secondly, by reference to the goods and services concerned.

28 In addition, in paragraph 16 of that judgment, the General Court states that, at the hearing, Allstate Insurance claimed for the first time that the goods and services at issue were directed only at professionals with a high level of attention and, in particular, engineers and IT specialists in the automobile industry responsible for developing data collection devices and combining them with software such as that covered by the mark applied for.

29 It is in the context of that analysis that the General Court, in paragraphs 23 and 25 of the judgment under appeal, examined the decision at issue and the arguments of Allstate Insurance and, in paragraph 29 of that judgment, upheld the Board of Appeal’s assessment that the sign applied for, taken as a whole, designates, in at least one of its possible meanings, the efficient, safe and optimum performance of a vehicle, by holding that the element ‘wise’, in combination with the element ‘drive’, may be used to describe goods or services covered by the mark applied for.

30 In doing so, the General Court also relied on the interpretation of Article 7(1)(c) of Regulation No 207/2009 as set out in the case-law of the Court of Justice and recalled in paragraph 28 of the judgment under appeal.

31 Therefore, it cannot be claimed that the General Court distorted the facts and incorrectly assessed the descriptive character of the sign applied for by reference to goods and services other than those covered by the application for registration of the sign ‘DRIVEWISE’.

32 It follows from the foregoing that the first part of the first ground of appeal and the third ground of appeal must be rejected as manifestly unfounded.

The second part of the first ground of appeal

Arguments of the parties

33 Allstate Insurance claims that the General Court disregarded the principle established by case-law, according to which a mark consisting of a neologism, composed of elements each of which is descriptive, is itself descriptive of the characteristics of the goods or services at issue, unless there is a perceptible difference between the neologism and the mere sum of its parts.

34 Furthermore, Allstate Insurance claims that the General Court should have provided evidence of the meaning of the term making up the sign applied for, ‘DRIVEWISE’, given that it is a neologism the meaning of which is not defined in the dictionaries. According to Allstate Insurance, there is no evidence that the relevant public would perceive that sign overall as being connected with the goods and services at issue. In addition, the view could not be taken that that public would split the sign up in order to examine it.

35 EUIPO disputes those arguments.

Findings of the Court

36 With regard to the first complaint in the second part of the first ground of appeal, suffice it to state that the General Court, in paragraphs 31 to 38 of the judgment under appeal, carried out a detailed and exhaustive examination of the issue whether there is a perceptible difference between the neologism ‘drivewise’ and the mere sum of its parts.

37 After an in-depth examination, first, of the syntactic and grammatical aspects of that neologism in paragraphs 31 and 32 of the judgment under appeal and, secondly, of the perception of that neologism by the relevant public in paragraphs 33 to 35 of that judgment, the General Court found that that neologism is not a word which, by reason of its unusual character with regard to the goods and services at issue, would have a meaning of its own that would take precedence over the meaning resulting from the simple juxtaposition of the words of which it is composed.

38 Thus, the General Court did not err in law when it rejected Allstate Insurance’s line of argument.

39 Consequently, the first complaint must be rejected as manifestly unfounded.

40 With regard to the second complaint in the second part of the first ground of appeal, suffice it to recall that the proceedings before the EU Courts are inter partes and that, with the exception of pleas involving matters of public policy which the Courts are required to raise of their own motion, it is for the applicant to raise pleas in law against the decision under appeal and to adduce evidence in support of those pleas (see, to that effect, judgment of 22 September 2016, Pensa Pharma v EUIPO, C‑442/15 P, not published, EU:C:2016:720, paragraph 26 and the case-law cited). Therefore, the General Court cannot be reproached for not providing evidence relating to the meaning of the term making up the sign applied for, ‘DRIVEWISE’.

41 Consequently, the second complaint must be rejected as manifestly unfounded.

42 It is apparent from all of the above considerations that the second part of the first ground of appeal must be rejected as manifestly unfounded.

The second ground of appeal

Arguments of the parties

43 Allstate Insurance claims that, in so far as the General Court carried out an assessment of the descriptive character of the sign applied for by reference to goods and services other than those covered by the application to register that sign, it did not set out in any way the reasons why the sign applied for had to be regarded as descriptive of the goods and services at issue, and therefore infringed its duty to state reasons. Therefore, the General Court, like the Board of Appeal, infringed Article 75 of Regulation No 207/2009.

44 EUIPO disputes that line of argument.

Findings of the Court

45 It is apparent from the examination of the first part of the first ground of appeal and from the third ground of appeal that the General Court did not distort the characteristics of the goods and services at issue, in particular their intended purpose, and therefore did not carry out its assessment by reference to goods and services other than those covered by the application to register the sign applied for. The second ground of appeal should therefore be rejected as manifestly unfounded.

46 The appeal must therefore be rejected in its entirety as manifestly unfounded.

Costs

47 Under Article 137 of the Rules of Procedure, applicable to proceedings on appeal by virtue of Article 184(1) of those rules, a decision on costs is to be given in the order which closes the proceedings.

48 Under Article 138(1) of the Rules of Procedure, also applicable to proceedings on appeal by virtue of Article 184(1) of those rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has applied for costs and Allstate Insurance has been unsuccessful, the latter must be ordered to pay the costs.

On those grounds, the Court (Sixth Chamber) hereby orders:

1. The appeal is dismissed as manifestly unfounded.

2. Allstate Insurance Company shall pay the costs.

Luxembourg, 11 September 2018.





A. Calot Escobar C.G. Fernlund