Case T-28/10

Euro-Information – Européenne de traitement de l’information

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Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Application for Community word mark EURO AUTOMATIC PAYMENT — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009’

Judgment of the General Court (Fourth Chamber), 12 April 2011 II - 1541

Summary of the Judgment

Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Examination of the grounds for refusal having regard to each of the goods or services covered by the application for registration — Duty to state reasons for refusal of registration — Scope

A head of claim asking the Court to alter the decision of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) within the meaning of Article 65(3) of Regulation No 207/2009 on the Community trade mark, by adopting the decision which the Board of Appeal ought to have taken, is inadmissible. The competent bodies of the Office do not adopt formal decisions recording the registration of a Community trade mark which could be the subject of an appeal. Consequently the Board of Appeal does not have power to take cognisance of an application that it should register a Community trade mark. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to amend the decision of a Board of Appeal to that effect. (see paras 13-14)

Under Article 7(1)(c) of Regulation No 207/2009 on the Community trade mark, ‘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’ are not to be registered. Such descriptive signs are deemed incapable of fulfilling the indication-of-origin function of the trade mark. The signs and indications referred to in the said article are those which may serve in normal usage from the point of view of the relevant public to designate, either directly or by reference to one of their essential characteristics, goods or services in respect of which registration is sought. It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics. Accordingly, the descriptive character of a mark must be assessed, first, in relation to the goods or services for which registration of the sign is sought, and, second, by reference to the perception of the relevant public comprising the consumers of those goods or services. The fact that the trade mark applied for may have other meanings does not preclude the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009. A word sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. (see paras 38-41, 50)

With regard to the substantive requirements for the examination of an application for a Community trade mark, regarding the obligation to state reasons, first, an examination of the absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and, second, the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services. That duty to state reasons arises from the essential requirement for any decision of an authority refusing the benefit of a right conferred by Community law to be subject to judicial review which is designed to secure effective protection for that right and which, accordingly, must cover the legality of the reasons for the decision. However, where the same ground of refusal is given for a category or group of goods or services, that authority may use only general reasoning for all the goods and services concerned. None the less, the fact that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is able to use general reasoning with regard to the application of an absolute ground for refusal to a category or group of goods or services must not frustrate the objective of the duty to state reasons under Article 253 EC and the first sentence of Article 75 of Regulation No 207/2009, which is to subject a decision refusing registration of a Community trade mark to effective judicial review. Accordingly, the goods or services concerned must be interlinked in a sufficiently direct and specific way, to the point where they form a category or group of goods or services sufficiently homogeneous to permit OHIM to use general reasoning. The mere fact that the goods or services in question come within the same class of the Nice Agreement is not sufficient for that purpose, since the classes often contain a wide variety of goods or services which are not necessarily interlinked in a sufficiently direct and specific way. With regard to the substantive examination of an application for a Community trade mark, under Regulation No 207/2009, the Office must examine the application in relation to all the goods or services on the list of goods or services for which registration is sought, on the understanding that, if the list includes one or more categories of goods or services, the Office is not under any obligation to make an assessment of each of the goods or services coming within each category, but must direct its examination to the category in question, as such. Therefore, with regard to the substantive requirements for the examination of an application for a Community trade mark, the Office may carry out a general examination for each category of goods or services only if the goods or services concerned are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services. (see paras 54-57)