ORDER OF THE COURT (Fifth Chamber)

14 March 2011 ( )

(Appeal – Community trade mark – Community word mark MEMORY – Invalidity proceedings – Absolute ground for refusal – Descriptive character – Regulation (EC) No 40/94 – Article 7(1)(c))

In Case C‑369/10 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 July 2010,

Ravensburger AG, established in Ravensburg (Germany), represented by H. Harte-Bavendamm and M. Goldmann, Rechtsanwälte,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant at first instance,

Educa Borras SA, established in Barcelona (Spain),

party to the proceedings before the Board of Appeal,

THE COURT (Fifth Chamber),

composed of J.-J. Kasel, President of the Chamber, A. Borg Barthet (Rapporteur) and M. Ilešič, Judges,

Advocate General: N. Jääskinen,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1 By its appeal, Ravensburger AG seeks to have set aside the judgment of the General Court of the European Union of 19 May 2010 in Case T-108/09 Ravensburger v OHIM – Educa Borras (MEMORY) (‘the judgment under appeal’), by which the General Court dismissed its action brought against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 8 January 2009 (Case R 305/2008-2), relating to invalidity proceedings between Educa Borras SA and Ravensburger AG (‘the contested decision’).

Legal context

2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC) No 422/2004 of 19 February 2004 (OJ 2004 L 70, p. 1) (‘Regulation No 40/94’), was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, in view of the date of the facts, the present dispute is governed by Regulation No 40/94.

3 Article 7 of Regulation No 40/94, entitled ‘Absolute grounds for refusal’, provided in paragraph 1:

‘The following shall not be registered:

…

(b) trade marks which are devoid of any distinctive character;

(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 service;

…’

4 Article 51 of that regulation, entitled ‘Absolute grounds for invalidity’, provided in paragraph 1:

‘A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings,

(a) where the Community trade mark has been registered contrary to the provisions of Article 7;

…’

Facts

5 On 11 June 1999, the appellant filed at OHIM an application for registration of the word sign MEMORY as a Community trade mark, under Regulation No 40/94.

6 The goods in respect of which registration was sought are in 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 (‘the Nice Agreement’), and correspond, for each of those classes, to the following description:

– Class 9: ‘Games recorded on data carriers of all kinds’;

– Class 28: ‘Board games’.

7 On 20 August 2001, the mark MEMORY was registered as a Community trade mark (‘the mark at issue’) for the goods referred to in the previous paragraph.

8 On 17 December 2004, Educa Borras SA filed an application for a declaration that the mark at issue was invalid, on the grounds referred to in Article 51(1)(a) and Article 7(1)(b) and (c) of Regulation No 40/94.

9 By decision of 3 September 2006, the OHIM Cancellation Division granted the application for a declaration of invalidity on the basis of Article 7(1)(b) and (c) of Regulation No 40/94 and declared the mark at issue invalid.

10 The Cancellation Division held that the goods covered by the mark at issue were games for which ‘the use of the power of memory is [a] means to achieve success’. It also found that the average English-speaking consumer understands the word ‘memory’ to mean the facility by which the mind stores and recalls information. Consequently, the Cancellation Division concluded that the word ‘memory’ was likely to be regarded by the average English-speaking consumer as a description of the goods in question and not as an indication of their commercial origin. Furthermore, it found that, according to the evidence in the file, the word ‘memory’ was currently used for descriptive purposes for the goods in question in English-speaking territories, such as the United States of America and Canada. The Cancellation Division further noted that the appellant used the word ‘memory’ both in a descriptive manner and also as a trade mark on its website directed at the United Kingdom market.

11 On 5 November 2007, the appellant filed a notice of appeal at OHIM against the decision of the Cancellation Division.

12 By the contested decision, the Second Board of Appeal of OHIM upheld the Cancellation Division’s decision and dismissed the appellant’s appeal.

13 In this case, the Board of Appeal considered that the Cancellation Division had correctly taken account of the perception of English-speaking consumers of the mark at issue, since it consists of an English word, namely ‘memory’, meaning the power or process of reproducing or recalling what has been learned and retained.

14 Furthermore, the Board of Appeal noted that, despite certain spelling variations between United Kingdom and American English, there is only one English language. Consequently, it found that the fact that most of the evidence in the file originated from websites outside the European Union was not very important for the assessment of the descriptive character of the mark at issue.

15 Relying both on the lexicographical meaning of the English word ‘memory’ and on the use of that word on the appellant’s English-language websites, the Board of Appeal concluded that that word was descriptive of the kind, the intended purpose and the characteristics of the goods in question and that there was a sufficiently direct and specific association between the mark at issue and the categories of goods in question. The Board of Appeal also found that the mark at issue was devoid of any distinctive character in relation to those goods.

Procedure before the General Court and the judgment under appeal

16 By application lodged at the Registry of the General Court on 18 March 2009, the appellant brought an action against the contested decision.

17 In support of its action, the appellant put forward three pleas in law alleging infringement, first, of Article 51(1)(a) and Article 7(1)(b) and (c) of Regulation No 40/94, second, of Article 74 of that regulation and, third, of Article 75 of the regulation.

18 In the light of the terms of the present appeal, only the findings of the General Court in relation to the infringement of Article 51(1)(a) and Article 7(1)(b) and (c) of Regulation No 40/94, set out in paragraphs 25 to 39 of the judgment under appeal, need be taken into consideration, since the appeal relates only to those findings.

19 After recalling, in paragraphs 26 to 29 of the judgment under appeal, the provisions of Article 7(1)(c) of Regulation No 40/94 and the case-law relating to them, the General Court found, in paragraph 30 of the judgment, that the goods in question are directed at general consumers and held, in view of the fact that ‘memory’ is an English word, that descriptive character was to be assessed from the point of view of the average English-speaking consumer, who is reasonably well-informed and reasonably observant and circumspect.

20 In paragraph 31 of the judgment under appeal, the General Court noted that it is not disputed that the goods for which the mark at issue was registered include, in particular, memory games, in which the key element for success is that the participants use and develop their memory well. According to the General Court, it was therefore clear that the word ‘memory’ describes directly and specifically one of the characteristics and purposes of the games for which the mark at issue was registered.

21 The General Court held, in paragraphs 32 and 33 of the judgment under appeal, that the Board of Appeal cannot be criticised for having relied on English-language websites outside the European Union to conclude that the word ‘memory’ is descriptive, for the purpose of Article 7(1)(c) of Regulation No 40/94, for the goods in question in the English-speaking countries of the European Union since, in spite of some differences of vocabulary between United Kingdom and American English, words and expressions generally have identical connotations in these two variants of English. The General Court also noted that, in the present case, the appellant had not put forward any valid argument showing that this is not the case for the word ‘memory’.

22 In paragraphs 34 to 36 of the judgment under appeal, the General Court rejected as unfounded the appellant’s argument that the Board of Appeal did not take into account the situation prevailing in the European Union at the time of the registration of the mark at issue, inasmuch as the word ‘memory’ was not used, on that date, to describe the goods in question. The General Court similarly rejected the argument relating to the interest that competitors may have in using the signs or indications of which the mark consists.

23 The General Court concluded by holding that the Board of Appeal had correctly found that the mark at issue is descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94. Therefore, it considered that it was not necessary to examine the complaint alleging infringement of Article 7(1)(b) of that regulation, since it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a Community trade mark.

24 The General Court accordingly rejected the plea alleging infringement of Article 51(1)(a) and Article 7(1)(b) and (c) of Regulation No 40/94.

Forms of order sought before the Court of Justice

25 By its appeal, the appellant claims that the Court should:

– set aside the judgment under appeal and annul the contested decision and, as appropriate, the decision of the Cancellation Division of 3 September 2006;

– as appropriate, remit the case to OHIM and

– order OHIM to pay the costs.

26 OHIM contends that the appeal should be dismissed as unfounded and that the appellant should be ordered to pay the costs.

Consideration of the appeal

27 Under Article 119 of its Rules of Procedure, where an appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order dismiss the appeal in whole or in part, without opening the oral procedure.

28 In support of its appeal, the appellant puts forward four pleas in law.

29 Although, in the heading of each of those four pleas, distortion of evidence is mentioned, it should be pointed out that the appellant alleges, in part, that the General Court made errors of law which are different in nature from the distortion of evidence.

30 The first plea thus alleges a distortion of the facts in that the General Court misrepresented the appellant’s statements relating to the list of goods covered by the mark at issue. The second plea alleges infringement of Article 51(1)(a) and Article 7(1)(c) of Regulation No 40/94 in that the General Court erred in its assessment of the descriptive character of that trade mark. By its third plea, the appellant argues that the General Court misapplied Article 51(1)(a) and Article 7(1)(b) of Regulation No 40/94 in assessing the trade mark’s lack of distinctiveness. By its fourth plea, the appellant alleges that the General Court relied on evidence which it was not allowed to take into account.

The first plea

Arguments of the parties

31 The appellant claims that the General Court distorted the facts in so far as, in paragraph 31 of the judgment under appeal, it described the goods covered by the mark at issue as ‘memory games’. However, paragraph 3 of that judgment states that the mark concerns ‘games recorded on data carriers of all kinds’ and ‘board games’ within Classes 9 and 28 respectively of the Nice Agreement.

32 The appellant maintains that it has always referred to the games marketed under the mark at issue as ‘placing card games’ or ‘matching card games’.

33 OHIM considers that that plea must be rejected as manifestly unfounded.

34 According to OHIM, the General Court found, in paragraph 31 of the judgment under appeal, not that the goods covered by the mark at issue are ‘memory games’ but rather that those goods ‘include, in particular, memory games, in which the key element for success is that the participants use and develop their memory well’. In so doing, the General Court merely confirmed the well-known and undisputed fact that within the broader category of board games, whether in physical or electronic form, there is a subcategory of games for which memory skills are important.

35 In addition, according to OHIM, the General Court cannot be said to have distorted the facts when it held that the existence of that subcategory of games was an undisputed fact. It is apparent both from the appellant’s application before the General Court and from the present appeal that the appellant conceded that there are games that require a good memory or that help the development of the players’ memory skills.

Findings of the Court

36 As regards the goods for which the mark at issue was registered, the General Court held, in paragraph 31 of the judgment under appeal, that it is not disputed that those goods include, in particular, memory games, in which the key element for success is that the participants use and develop their memory well.

37 By that finding, the General Court indicated that, in the category of goods in Classes 9 and 28 of the Nice Agreement covered by the mark at issue, there is a subcategory of goods for which memory skills are important. The General Court accordingly called them ‘memory games’.

38 The documents in the file show that the expression ‘memory games’ was used both by the Cancellation Division and by the Board of Appeal of OHIM to designate a category of games for which memory skills are important and which fall within a broader category of games, such as those covered by the mark at issue. The Board of Appeal stated in that regard that the goods in question corresponded to ‘a kind of game that consists of matching the same cards in pairs, by turning them over two at a time, in which the key to success and to winning the game is to correctly remember where each card with each symbol was placed so as to form the greatest number of pairs’.

39 While it is true that the appellant essentially refers to the goods covered by the mark at issue as being placing card games, the fact remains that it did not contest before the General Court the existence of a game such as that described by the Board of Appeal or the fact that a certain ability to memorise was necessary in order to be able to play with success.

40 On the contrary, the appellant conceded, in its application, that there are games related to the player’s skill in memorising certain game items and that there is no doubt that the word ‘memory’ suggests that the goods covered by the mark at issue are connected with the ability to memorise.

41 In those circumstances, the General Court cannot validly be criticised for having considered that there is a subcategory of games, within the category of games covered by the mark at issue, for which memory skills are important and for having called that category ‘memory games’.

42 Consequently, the first plea must be rejected as clearly unfounded.

The second plea

Arguments of the parties

43 The appellant criticises the General Court for having applied an over-restrictive test for the descriptive character of a word mark in holding that the word ‘memory’ designated a characteristic of the games at issue and having thus disregarded the requirements set out in Article 7(1)(c) of Regulation No 40/94.

44 The appellant claims that the word ‘memory’, in itself, does not directly describe the goods covered by the mark at issue. Even if the combined term ‘memory game’ might be regarded as descriptive for a certain category of games for which the skill of memory plays a role, that would be due to the presence of the word ‘game’ in that combined term and not to the word ‘memory’.

45 According to the appellant, the word ‘memory’ directly refers to the human capacity to memorise or remember something. It is thus only allusive where it is used in relation to the games at issue, since it does not describe a quality, or a characteristic or the purpose of the games. Since the purpose of the game is to win, the word ‘memory’ cannot be perceived, immediately and without further thought, as meaning that the purpose of the game is to memorise. The memory skills or ability required to play concern the players and not the game itself.

46 OHIM maintains, first, that the second plea is inadmissible since the appellant challenges the assessment of the General Court relating to the identification of the essential characteristics of the goods in question and to the examination of how direct is the link between the meaning of the word ‘memory’ and those characteristics, which is purely factual.

47 Second, OHIM submits that the second plea should be rejected as unfounded.

48 It states in that regard that, where the expression ‘memory game’ is descriptive of a subcategory of games, it is immaterial in law that the goods in question have been described as ‘games recorded on data carriers of all kinds’ and ‘board games’ in Classes 9 and 28 respectively of the Nice Agreement. It is settled case-law that if the mark is descriptive in respect of any of the items falling within the designated category, the mark is to be rejected for the entire category, unless the applicant excludes the problematic goods from the list of goods covered by the mark at issue.

49 According to OHIM, the omission of the generic name of the product (‘game’) does not make the word ‘memory’ suggestive, contrary to the arguments of the appellant. Where the public sees the word ‘memory’ affixed on games, the context in which that word is encountered is sufficient immediately to inform the public that the word actually refers to the game which it designates.

50 OHIM maintains that the word ‘memory’ gives a clear and immediate indication of the skills required to play as well as the skills that can be improved by playing. That word therefore directly describes one of the principal characteristics of the games covered by the mark, the registration of which is contested, and it is not necessary to determine whether that characteristic attaches more to their nature, their kind or their purpose.

Findings of the Court

51 As regards the admissibility of the second plea, it should by noted that, by this plea, the appellant criticises the General Court for having applied an over-restrictive test for the descriptive character of a word mark in holding, in paragraph 31 of the judgment under appeal, that it is clear that the word ‘memory’ describes directly and specifically one of the characteristics and purposes of the games for which the mark at issue was registered. This second plea thus raises a question of law which is subject, as such, to review by the Court of Justice on appeal and, accordingly, it is admissible.

52 As regards the merits of this plea, it should be recalled that Article 7(1)(c) of Regulation No 40/94 seeks to ensure that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see, inter alia, Case C-191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 31, and Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑0000, paragraph 37).

53 The use, in Article 7(1)(c) of Regulation No 40/94, of the word ‘characteristics’ highlights the fact that the signs referred to in that provision are 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. It must be reasonable to believe that the sign will actually be recognised as such by the relevant public (see, to that effect, Agencja Wydawnicza Technopol v OHIM, paragraph 50 and case-law cited).

54 In the present case, as regards the relevant public, the General Court noted, in paragraph 30 of the judgment under appeal, that the goods in question were directed at general consumers. It pointed out that, since ‘memory’ is an English word, the descriptive character of the mark at issue was to be examined with regard to the average English-speaking consumer, who is reasonably well-informed and reasonably observant and circumspect.

55 It should be noted, in this regard, that the appellant does not contest the semantic content given to the word ‘memory’ by the Board of Appeal and according to which that word means the power or process of reproducing or recalling what has been learned and retained.

56 As regards the goods covered by the mark at issue, the General Court held, in paragraph 31 of the judgment under appeal, that they include memory games and pointed out, without being challenged by the appellant on that point, that the key element for success at memory games is that the participants use and develop their memory well.

57 By that clarification, the General Court identified the fact that an essential characteristic of the games in question is the use and development of the players’ memory.

58 In so far as the purpose of a game is, in principle, to succeed at it and win and the use and development of the players’ memory is an essential characteristic for success at the games covered by the mark at issue, it is reasonable to believe, as the General Court held at paragraph 31 of the judgment under appeal, that the word ‘memory’, which relates to the human skill of memorisation, will actually be recognised by the relevant class of persons as a description of one of the characteristics of the games for which the mark was registered.

59 It follows that the General Court did not misapply the provisions of Article 7(1)(c) of Regulation No 40/94 in assessing the descriptive character of the mark at issue and that the second plea must therefore be dismissed as unfounded.

The third plea

Arguments of the parties

60 The appellant claims that the arguments put forward in the context of the second plea apply a fortiori to the error of law made by the General Court in assessing the lack of distinctive character of the mark at issue.

61 OHIM submits that, if the conclusions of the judgment under appeal as to the descriptive character of the mark at issue are correct, there is no need to examine whether the word ‘memory’ also falls foul of Article 7(1)(b) of Regulation No 40/94, since, according to the case-law, for registration to be refused it is sufficient that one of the absolute grounds for refusal applies.

Findings of the Court

62 The third plea is based on the premiss that the General Court assessed the distinctive character of the mark at issue.

63 However, it is sufficient to state in that respect that the General Court did not carry out such an assessment, and rightly so, since, as the General Court observed in paragraph 38 of the judgment under appeal, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 40/94 applies for the sign at issue not to be registrable as a Community trade mark (see, inter alia, Case C‑104/00 P DKV v OHIM [2002] ECR I‑7561, paragraphs 28 and 29).

64 It follows that the third plea is ineffective and must therefore be dismissed.

The fourth plea

Arguments of the parties

65 The appellant claims that the General Court was incorrect in basing its findings on evidence originating from web sites from English-speaking countries situated outside the European Union, since the relevant territory for the purposes of assessing the registrability of a mark is that of the European Union.

66 OHIM argues, first, that the fourth plea is inadmissible since it concerns the assessment of the evidence by the General Court, which has sole jurisdiction to decide whether evidence is relevant to the case and to what extent it may be so.

67 Second, OHIM submits that the fourth plea must be rejected as unfounded since, although the General Court referred to the use of the word ‘memory’ in English-speaking countries which are not part of the European Union, it is only for linguistic reasons, to demonstrate the possible uses of the word in the English language, and not for territorial reasons.

Findings of the Court

68 As regards the admissibility of the fourth plea, it should be noted that the plea raises the question as to whether the General Court was entitled to take into consideration evidence published outside the territory of the European Union in so far as the registrability of a trade mark is to be assessed with regard to the territory of the European Union. This is therefore a question of law which is subject, as such, to review by the Court of Justice on appeal and, accordingly, the plea is admissible.

69 As regards the merits of the plea, it must be stated that it is based on a misinterpretation of the judgment under appeal.

70 In paragraphs 32 and 33 of that judgment, the General Court held that the Board of Appeal could not be criticised for having relied on websites from English-speaking countries outside the European Union, on the ground that, while there are some differences of vocabulary between United Kingdom and American English, it is well known that words and expressions have identical connotations in these two variants of the English language. The General Court also noted that the appellant had not put forward any valid argument showing that this is not the case for the word ‘memory’.

71 It follows that the General Court referred to that evidence not for territorial reasons or in order to establish the situation of the mark at issue on the English‑speaking markets of countries outside the European Union, but only for purely linguistic reasons, in order to demonstrate the possible uses of the word ‘memory’ in English.

72 In those circumstances, the General Court cannot be validly criticised for having referred to that evidence in order to assess the semantic content of the word ‘memory’ in the English-speaking territory of the European Union.

73 It follows that the fourth plea must be rejected as clearly unfounded.

74 It follows from the foregoing considerations that none of the pleas relied on by the appellant in support of its appeal can be accepted and, accordingly, the appeal must be dismissed in its entirety.

Costs

75 Under Article 69(2) of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 118 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 OHIM has applied for costs and the appellant has been unsuccessful, the latter must be ordered to pay the costs.

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

1. The appeal is dismissed.

2. Ravensburger AG shall pay the costs.

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