Provisional text

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

9 March 2017 ( )

(EU trade mark — Application for the EU word mark MAXPLAY — Absolute ground for refusal — Descriptiveness — Article 7(1)(c) of Regulation (EC) No 207/2009)

In Case T‑400/16,

Maximum Play, Inc., established in San Francisco (California) (United States of America), represented by M. Graf, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Zaera Cuadrado, acting as Agent,

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 26 May 2016 (Case R 2273/2015-4), concerning an application for registration of the word sign MAXPLAY as an EU trade mark,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins, President, R. Barents (Rapporteur) and J. Passer, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 27 July 2016,

having regard to the response lodged at the Court Registry on 5 September 2016,

having regard to the fact that no request for a hearing was submitted by the main 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 11 May 2015, the applicant, Maximum Play, Inc., 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).

2 Registration as a mark was sought for the word sign MAXPLAY.

3 The goods and services in respect of which registration was sought are in Classes 9, 41 and 42 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, following alterations, to the following description:

– Class 9: ‘Computer hardware; wearable computers; wearable computer peripherals; Computer software; Computer game software; computer for video game and computer game development and operation, media authoring, and game authoring; computer game software for use on mobile devices; virtual reality game software’;

– Class 41: ‘Entertainment services, namely, providing online computer, video and electronic games; providing temporary use of non-downloadable electronic, interactive, computer and video games; providing temporary use of non-downloadable game software, namely, virtual reality and game authoring software; conducting alternate reality games via the Internet; providing online augmented reality games; production of video and computer game software; providing a website featuring non-downloadable game authoring software; providing information on-line relating to computer games, computer game development and information relating to electronic games; multimedia entertainment software production services for video games and computer games’;

– Class 42: ‘Computer programming for computer and video games; designing, developing and modifying computer game software and virtual reality software; electronic game development and programming services; Software as a service (SAAS) services featuring software for electronic game development, analytics and monetization’.

4 By letter of 29 May 2015, the examiner informed the applicant that the mark applied for was not eligible for registration on the ground that it was descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009 and devoid of any distinctive character within the meaning of Article 7(1)(b) of that regulation.

5 By letter of 28 July 2015, the applicant replied, in essence, that the mark applied for was not descriptive and that it had distinctive character.

6 By decision of 7 October 2015, the examiner rejected the application for registration on the ground that the mark applied for came within the scope of the grounds for refusal set out in Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

7 On 13 November 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

8 By decision of 26 May 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. As is apparent from paragraph 12 of the contested decision, it found that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009. The Board of Appeal took the view, in paragraph 10 of the contested decision, that the mark applied for would be perceived immediately and intuitively, in view of the goods and services covered, which are computer/video games, devices for computer/video games and connected services such as entertainment or programming, as meaning ‘maximum play’ or ‘best play’. The Board of Appeal stated, in paragraph 11 of the contested decision, that bringing a number of descriptive elements together without introducing any unusual variations, in particular as to syntax or meaning, could not result in anything other than a mark that was descriptive as a whole.

9 The Board of Appeal added, in paragraph 15 of the contested decision, that the mark applied for was devoid of any distinctive character and, in paragraph 16 of that decision, that the fact that the mark applied for had been accepted for registration in other States did not permit the inference that it was distinctive. Lastly, in paragraph 17 of the contested decision, the Board of Appeal stated that EUIPO is not bound by its previous decisions as each case has to be dealt with separately and with regard to its own particularities.

Forms of order sought

10 The applicant claims that the Court should:

– annul the contested decision;

– order EUIPO to pay the costs.

11 EUIPO contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

12 In support of its application for annulment of the contested decision, the applicant relies on two pleas in law. The first plea alleges infringement of Article 7(1)(c) of Regulation No 207/2009 and the second plea alleges infringement of Article 7(1)(b) of that regulation.

13 As regards the first plea, the applicant complains, in essence, that the Board of Appeal erred in finding that the word sign at issue was descriptive as regards the goods and services covered by the trade mark application.

14 Article 7(1)(c) of Regulation No 207/2009 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 must not be registered. Furthermore, Article 7(2) of Regulation No 207/2009 states that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

15 According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31; of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 27; and of 19 April 2016, Spirig Pharma v EUIPO (Daylong), T‑261/15, not published, EU:T:2016:220, paragraph 17).

16 Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, pursuant to Article 7(1)(c) of Regulation No 207/2009, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 18).

17 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (see judgment of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 19 and the case-law cited).

18 For a mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of those elements be found to be descriptive. The neologism or word itself must also be found to be descriptive (judgments of 12 January 2005, Wieland-Werke v OHIM (SnTEM, SnPUR, SnMix), T‑367/02 to T‑369/02, EU:T:2005:3, paragraph 31, and of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 20; see also, by analogy, judgments of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 96, and Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 37).

19 A trade mark consisting of a neologism or of a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That presupposes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is far enough removed from that conveyed by a simple combination of the meanings of its constituent elements that it is more than the sum of its parts. In that connection, analysis of the words at issue in light of the appropriate lexical and grammatical rules is also relevant (see judgment of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 21 and the case-law cited).

20 It must also be borne in mind that the assessment of whether a sign is descriptive can be conducted only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 22).

21 As regards the relevant public, it is necessary to uphold the Board of Appeal’s finding, in paragraph 9 of the contested decision, a finding which has not, moreover, been disputed by the applicant, that the goods and services covered by the mark applied for are aimed at the general public in the European Union, which has an average level of attention.

22 It must also be stated that, since the mark applied for consists of elements in English, the examiner, who has not been contradicted by the Board of Appeal in that regard, was right in finding that the existence of absolute grounds for refusal had to be examined with regard to English-speaking consumers. That finding has also not been disputed by the applicant.

23 Consequently, in accordance with Article 7(2) of Regulation No 207/2009, the relevant public by reference to which the absolute ground for refusal must be assessed is an English-speaking public, since the word sign at issue consists of word elements derived from English (see, to that effect, judgment of 27 February 2015, Universal Utility International v OHIM (Greenworld), T‑106/14, not published, EU:T:2015:123, paragraph 22 and the case-law cited).

24 Accordingly, it is necessary, for the purposes of applying Article 7(1)(c) of Regulation No 207/2009, to consider, on the basis of a given meaning of the mark applied for, whether there is, from the point of view of the relevant public, a sufficiently direct and specific link between the word sign MAXPLAY and the goods and services in respect of which registration is sought (see, to that effect, judgments of 26 November 2003, HERON Robotunits v OHIM (ROBOTUNITS), T‑222/02, EU:T:2003:315, paragraph 38, and of 27 February 2015, Greenworld, T‑106/14, not published, EU:T:2015:123, paragraph 23 and the case-law cited).

25 In the first place, the applicant submits that the mark applied for is a coined word, with the result that it cannot be artificially dissected, as it claims the Board of Appeal did. The applicant takes the view that that mark should not therefore be divided into two separate elements, namely ‘max’ and ‘play’. Furthermore, it maintains that the mark applied for is an invented word which is not listed in any dictionary.

26 That argument cannot be accepted.

27 It must be borne in mind at the outset that, as the case-law has recognised, in the case of compound word signs, in order to assess whether or not a mark is devoid of any distinctive character, the overall impression created by that mark should be taken into consideration. That does not, however, mean that an examination may not first be made of each of the various components of that mark. It may be useful, in the course of the overall assessment, to examine each of the components of the mark concerned (see judgment of 8 February 2011, Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, EU:T:2011:33, paragraph 50 and the case-law cited).

28 It follows that, as regards verbal expressions which consist of a combination of elements, the issue of their descriptiveness may be assessed, in part, in relation to each of those elements, taken separately, but must, in any event, also be established in relation to the whole which they comprise (see judgment of 15 March 2012, Strigl and Securvita, C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 23 and the case-law cited). Since the relevant public will perceive the mark applied for as a whole, it is any descriptiveness of the mark as a whole, and not of the various elements of that mark, considered separately, which is important.

29 It is sufficient to state that the applicant is misreading the contested decision, from which it is not obvious that the Board of Appeal merely split the mark applied for into two separate elements. On the contrary, in paragraph 10 of the contested decision, the Board of Appeal examined the overall impression created by the mark applied for and it is only in paragraph 11 of that decision that the Board of Appeal added that bringing a number of descriptive elements together without introducing any unusual variations could not result in anything other than a mark that is descriptive as a whole.

30 It follows that the applicant errs in claiming that the Board of Appeal carried out a separate examination of each of the elements without carrying out an examination of the overall impression created by the neologism.

31 In that regard, it must be stated that the word sign MAXPLAY consists of the two elements ‘max’ and ‘play’, which are easily and immediately recognisable in the mark applied for.

32 First, as regards the term ‘max’, it is well known that that term is widely used in English as an abbreviated version of the word ‘maximum’, with the result that the relevant public, faced with the word ‘max’, will immediately and unquestionably make a link with the word ‘maximum’.

33 Secondly, the word ‘play’ is also an extremely common and banal English word.

34 Thirdly, the expression ‘maxplay’, which is merely the juxtaposition of the words ‘max’ and ‘play’, is, as the Board of Appeal pointed out in paragraph 11 of the contested decision, consistent with English lexical and grammatical rules and does not contain any unusual element in its syntax which would make it possible for that expression to be anything other than the mere combination of the words ‘max’ and ‘play’.

35 Associated with the goods and services at issue, the mark applied for will therefore inform consumers immediately, without any thought being necessary, of the quality and intended purpose of those goods and services, in the sense that they offer ‘maximum play’ or ‘best play’. As EUIPO has correctly stated, the relevant consumer will perceive the mark applied for as referring, for instance, to the extended abilities, enhanced performance or best solutions offered by the software, devices or services of the applicant. A simple combination of the terms ‘max’ and ‘play’ without any addition does not therefore create an impression which is far enough removed from that conveyed by a simple combination of the meanings of ‘max’ and of ‘play’.

36 It must be added that the fact that the term ‘maxplay’ does not as such appear in dictionaries in no way alters the finding that the sign MAXPLAY is descriptive of the goods and services at issue for the purposes of Article 7(1)(c) of Regulation No 207/2009.

37 In that regard, it must be borne in mind that, in paragraph 26 of the judgment of 12 January 2000, DKV v OHIM (COMPANYLINE) (T‑19/99, EU:T:2000:4), the General Court held that coupling together the terms ‘company’ and ‘line’, without any graphic or semantic modification, did not imbue them with any additional characteristic such as to render the sign, taken as a whole, capable of distinguishing the applicant’s services from those of other undertakings, and added that the fact that the word ‘companyline’ as such did not appear in dictionaries — whether as one word or otherwise — did not in any way alter that finding (a point confirmed in paragraph 23 of the judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506).

38 That same finding must be made in the present case, with the result that the fact, relied on by the applicant, that the term ‘maxplay’ does not as such appear in dictionaries — whether as one word or otherwise — does not in any way alter the finding that the sign MAXPLAY is descriptive of the goods and services concerned for the purposes of Article 7(1)(c) of Regulation No 207/2009, particularly because, according to the case-law referred to in paragraph 15 above, that provision pursues an aim in the public interest, which requires that such signs or indications may be freely used by all.

39 Lastly, as regards the applicant’s argument based on the judgment of 12 May 2016, Chung-Yuan Chang v EUIPO — BSH Hausgeräte (AROMA) (T‑749/14, not published, EU:T:2016:286), it is sufficient to point out that the Court held in that judgment that the mark applied for, AROMA, was merely suggestive, since the purpose of the goods at issue was not to give aroma. By contrast, in the present case, there is a direct link between the term ‘maxplay’ and the goods and services at issue, in the sense that it will inform the relevant consumer immediately, without any thought being necessary, of the fact that the applicant’s goods and services will serve to ensure an optimal playing experience or a best play experience.

40 In the second place, as regards the applicant’s argument that the term ‘max’ is a male first name, it must be borne in mind that, according to settled case-law, the fact that an expression may have a number of meanings does not preclude a lack of distinctive character. Accordingly, for a mark that has been applied for to be refused registration on the basis of Article 7(1)(c) of Regulation No 207/2009, it is sufficient that at least one of its possible meanings could be used to describe the goods and services at issue (judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 97).

41 It follows that, even were the term ‘max’ also capable of referring to a first name, it could not be deduced that the expression ‘maxplay’ could be held to be non-descriptive, since at least one of its meanings describes one of the qualities or characteristics of the goods and services at issue.

42 In the third place, the fact, relied on by the applicant, that the mark applied for is not descriptive because it has been registered in the United States can also not be held to be relevant.

43 It must be borne in mind that registrations already made in a Member State of the European Union are merely to be taken into consideration and not given decisive weight for the purposes of registering an EU trade mark. The Board of Appeal is not bound by such registrations. The same is necessarily true of previous registrations in other English-speaking countries which are not Member States of the European Union, in that the registration of trade marks in those countries is governed by a different system than that in force in the European Union (see judgment of 25 September 2015, August Storck v OHIM (2good), T‑366/14, not published, EU:T:2015:697, paragraph 42 and the case-law cited).

44 In the fourth place, the applicant complains that EUIPO has accepted the registrations of a large number of word marks in respect of the term ‘max’ for all kinds of goods and thus the Board of Appeal should have accepted the registration of the mark applied for.

45 In that regard, it must at this juncture be pointed out that the applicant merely referred to some of the annexes to its application, without stating the reasons why the word marks to which it referred are, in its view, identical or similar to the mark applied for. It follows that that complaint must be declared inadmissible (see, to that effect, order of 14 April 2016, Best-Lock (Europe) v EUIPO, C‑451/15 P, not published, EU:C:2016:269, paragraph 14).

46 Moreover and in any event, first, it must be borne in mind that, according to settled case-law, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice of EUIPO (judgments of 16 February 2000, Procter & Gamble v OHIM (Soap bar shape), T‑122/99, EU:T:2000:39, paragraphs 60 and 61; of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraphs 46 and 47; and of 30 June 2004, Norma Lebensmittelfilialbetrieb v OHIM (Mehr für Ihr Geld), T‑281/02, EU:T:2004:198, paragraph 35). Accordingly, EUIPO is not bound either by national registrations or by its own previous decisions.

47 Secondly, even if, by that argument, the applicant were, in essence, complaining that the Board of Appeal infringed the principle of equal treatment, it would have to be pointed out that, in the light of the principles of equal treatment and of sound administration, it has indeed been held that EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74, and of 25 September 2015, 2good, T‑366/14, not published, EU:T:2015:697, paragraph 38).

48 However, those principles must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 75 and 76, and of 25 September 2015, 2good, T‑366/14, not published, EU:T:2015:697, paragraph 39).

49 Moreover, for reasons of legal certainty and 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 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 (judgments of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 77, and of 25 September 2015, 2good, T‑366/14, not published, EU:T:2015:697, paragraph 40).

50 In the present case, it is apparent from the contested decision that the Board of Appeal carried out a full and specific examination of the mark applied for before refusing to register it. In addition, it is apparent from the examination of the applicant’s other complaints that that examination led the Board of Appeal, correctly, to oppose registration of the mark applied for on the basis of the absolute ground for refusal referred to in Article 7(1)(c) of Regulation No 207/2009. Since the examination of the mark applied for in the light of that provision has not, in itself, reached a different conclusion, the applicant’s claims relating to a failure to take into consideration the registration of identical marks cannot succeed. The applicant may not therefore invoke previous decisions of EUIPO in order to cast doubt on the conclusion that the registration of the mark applied for is incompatible with Regulation No 207/2009.

51 It follows from of all the foregoing that the first plea in law must be rejected.

52 As regards the second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, inasmuch as the word sign MAXPLAY has distinctive character it must be borne in mind that, as is clear from the wording of Article 7(1) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign to be ineligible for registration as an EU trade mark (order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 27, and judgment of 19 April 2016, Daylong, T‑261/15, not published, EU:T:2016:220, paragraph 67).

53 In the present case, since the mark applied for has been held to be descriptive of the goods and services at issue, it follows that the second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, must be rejected.

54 It follows from all of the foregoing that the action must be dismissed.

Costs

55 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 (Eighth Chamber)

hereby:

1. Dismisses the action;

2. Orders Maximum Play Inc. to pay the costs.





Collins Barents Passer

Delivered in open court in Luxembourg on 9 March 2017.





E. Coulon S. Gervasoni