CELEX: 62006TJ0118
Language: en
Date: 2009-04-02
Title: Judgment of the Court of First Instance (Third Chamber) of 2 April 2009. # Zuffa, LLC v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). # Community mark. # Case T-118/06.

Case T-118/06
      Zuffa, LLC
      v
      Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
      (Community trade mark – Application for the Community word mark ULTIMATE FIGHTING CHAMPIONSHIP – Absolute grounds for refusal – Lack of distinctive character – Descriptive character – Duty to state reasons – Articles 7(1)(b) and (c) and 73 of Regulation (EC) No 40/94)
      Summary of the Judgment
      1.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Separate examination
            of the various grounds for refusal
      (Council Regulation No 40/94, Art. 7(1)(b) and (c))
      2.      Community trade mark – Definition and acquisition of the Community trade mark – Absolute grounds for refusal – Separate examination
            of the grounds for refusal with regard to each of the goods or services covered by the application for registration
      (Council Regulation No 40/94, Arts 7(1) and 73)
      1.      Each of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 on the Community trade mark must be interpreted
         in the light of the public interest underlying each of them, each being independent of the others and calling for separate
         examination. The public interest taken into account in the examination of each of those grounds for refusal may, or even must,
         reflect different considerations, depending on which ground for refusal is at issue.
      
      In that context, the public interest underlying Article 7(1)(b) of Regulation No 40/94 relates, first, to the need not unduly
         to restrict the availability of the sign for which registration is sought for the other traders who offer for sale goods or
         services of the same type as those in respect of which registration is sought and, second, to guarantee the identity of the
         origin of the marked products or services to the consumer or end-user by enabling him, without any possibility of confusion,
         to distinguish those goods or services from others which have a separate origin. Such a guarantee constitutes the essential
         function of the trade mark.
      
      Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications
         relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all.
         That provision accordingly precludes such signs or indications from being reserved to one undertaking alone on the ground
         that they have been registered as trade marks.
      
      It follows that there is a clear overlap between the respective scopes of the grounds set out in Article 7(1)(b) and (c) of
         Regulation No 40/94. In particular, it is clear from the case-law that a word mark which is descriptive of characteristics
         of goods or services within the meaning of Article 7(1)(c) of Regulation No 40/94 is, for that reason, liable in principle
         to be regarded as also lacking distinctive character with regard to those same goods or services within the meaning of Article
         7(1)(b) of that regulation. However, that is a matter which must be separately demonstrated.
      
      (see paras 23-26)
      2.      It follows that there is a clear overlap between the respective scopes of the grounds set out in Article 7(1)(b) and (c) of
         Regulation No 40/94 on the Community trade mark. In particular, it is clear from the case-law that a word mark which is descriptive
         of characteristics of goods or services within the meaning of Article 7(1)(c) of Regulation No 40/94 is, for that reason,
         liable in principle to be regarded as also lacking distinctive character with regard to those same goods or services within
         the meaning of Article 7(1)(b) of that regulation. However, that is a matter which must be separately demonstrated.
      
      It follows that, where registration of a mark is sought in respect of various goods or services, the Office for Harmonisation
         in the Internal Market (Trade Marks and Designs) must determine specifically that none of the grounds for refusal of registration
         listed in Article 7(1) of Regulation No 40/94 applies to the mark in question, in relation to each of those goods or services
         claimed, and may reach conclusions which differ depending upon the goods or services in question. Therefore, when refusing
         registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods
         and services specified in the application for registration, regardless of the manner in which that application was formulated.
         However, where the same ground for refusal is given for a category or group of goods or services, the competent authority
         may limit itself to using general reasoning for all of the goods or services concerned.
      
      In that context, the option for the Board of Appeal to use general reasoning for a series of goods or services can extend
         only to goods or services which have a sufficiently direct and specific link to each other to the extent that they form such
         a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision
         in question, first, to explain adequately the reasoning followed by the Board of Appeal for each of the goods and services
         belonging to that category and, second, to be applied without distinction to each of the goods or services concerned. The
         mere fact that the goods and services in question are in the same class under the Nice Agreement is not sufficient, for that
         purpose, since those classes often contain a wide variety of goods or services which do not necessarily have a sufficiently
         direct and specific link to each other.
      
      (see paras 26-28)
JUDGMENT OF THE COURT OF FIRST INSTANCE (Third Chamber)
      2 April 2009 (*)
      
      (Community trade mark – Application for the Community word mark ULTIMATE FIGHTING CHAMPIONSHIP – Absolute grounds for refusal – Lack of distinctive character – Descriptive character – Duty to state reasons – Articles 7(1)(b) and (c) and 73 of Regulation (EC) No 40/94)
      In Case T‑118/06,
      Zuffa, LLC, established in Las Vegas, Nevada (United States), represented by S. Malynicz, Barrister, M. Blair and C. Balme, Solicitors,
      
      applicant,
      v
      Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
      
      defendant,
      ACTION brought against the decision of the First Board of Appeal of OHIM of 30 January 2006 (Case R 931/2005‑1) concerning
         registration of the word sign ULTIMATE FIGHTING CHAMPIONSHIP as a Community trade mark,
      
      THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
      composed of J. Azizi, President, E. Cremona and S. Frimodt Nielsen (Rapporteur), Judges,
      Registrar: J. Palacio González, Principal Administrator,
      having regard to the application lodged at the Registry of the Court of First Instance on 12 April 2006,
      having regard to the response lodged at the Registry of the Court on 13 July 2006,
      having regard to the order of the President of the Third Chamber of 13 November 2008 joining the present case with Case T‑379/05
         for the purposes of the oral procedure,
      
      further to the hearing on 16 December 2008,
      gives the following
      Judgment
       Background to the dispute 
      1        On 25 July 2002, the applicant, Zuffa, LLC, filed an application under Council Regulation (EC) No 40/94 of 20 December 1993
         on the Community trade mark (OJ 1994 L 11, p. 1), as amended, for registration of a Community word mark with the Office for
         Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
      
      2        The mark in respect of which registration was sought is the word mark ULTIMATE FIGHTING CHAMPIONSHIP.
      
      3        The goods and services in respect of which registration of the mark was sought are, in particular, in Classes 9, 16, 25, 28
         and 41 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 (‘the Nice Agreement’), and correspond, for each of those classes, to
         the following description:
      
      –        ‘Pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital
         video discs; digital versatile discs; CD-ROM discs all featuring mixed martial arts competitions, events and programs; computer
         game programs; computer software; motion picture films in the field of mixed martial arts; eyeglasses; sunglasses’ in Class
         9;
      
      –        ‘Books and printed instructional and teaching manuals in the field of sports and entertainment; note paper dispensers; general
         features, sports, fitness and entertainment magazines; newspapers in the field of sports, fitness and entertainment; calendars;
         mounted and unmounted photographs; trading cards; road maps; books and journals featuring athletic contests and games; catalogues
         for the sale of athletic merchandise; envelopes; cartoon prints on paper and cardboard; blank and picture poster cards; note
         cards; note pads; greeting cards; cookbooks; adult and children’s activity and colouring books; puffy stickers; adhesive stickers;
         photograph albums; memorandum books; pens; pencils; folders and portfolios for papers; notebooks and binders; letter openers;
         memo holders; pennants made of paper and mounted on sticks; diaries; clipboards; book covers; book marks; bulletin boards;
         erasable memo boards; pen and pencil holders; paper clip holders; paper weights; paper napkins and towels; posters; event
         programs; writing paper and stationery; drawing paper; gift wrapping paper; luminous paper; graphics paper; stickers; paper
         banners; decals and windshield decals strips; collector decals and collector decals with display sheets; bumper stickers and
         strips; memo pads; non-electric erasers; electric erasers; stationery holders; maps; desk sets; colour lithograph sticker
         books; postcard books; holographic greeting and trading cards; pencil bags; pencil sharpeners; gift wrapping paper sets; decorative
         gift boxes; comic books; bookmarks; posterbooks; paper, party and lawn signs; stamp pads; rubber stamps for impressing illustrated
         images; score, check and autograph books; adhesive tape dispensers for stationery or household use; corrugated cardboard storage
         boxes and corrugated closet wardrobes and storage boxes; reflective paper stock’ in Class 16;
      
      –        ‘Clothing and wearing apparel, namely, warm-up suits, sweatshirts, sweatpants; tee-shirts; polo shirts; golf shirts; sports
         shirts; tank tops; vests; pants for babies; baby booties; belts; neckties; suspenders; bandanas; beach sandals; infant and
         toddler sleepwear; robes; nightshirts and night gowns; pyjamas and loungewear; bathing suits; beach wear; diaper sets; toddler
         short sets; jogging suits; rompers; boys short sets; socks; playsuits; coveralls; wristbands; union suits; henley suits; shorts;
         skirts; blouses; pants; slacks; shirts; jackets; referees and umpires uniforms; athletic uniforms; team uniform reproductions;
         sweaters; parkas; turtlenecks; mittens and gloves; underwear; jerseys; bowties; headwear and scarves; ear muffs; earbands
         and headbands; hosiery; rainwear, namely rain ponchos and jackets; footwear, namely shoes, boots and slippers; bath thongs;
         shell suit; hats; caps; visors; aprons; cloth and ski bibs; canvas footwear; knickers; wind resistant jackets; masquerade
         costumes; blazers; legwarmers; jeans; leotards; workout and sports apparel, namely shorts, jackets, slacks, shirts’ in Class
         25;
      
      –        ‘Rubber balls; action figures and accessories; action skill games; bean bag dolls; plush toys; balloons; golf balls; tennis
         balls; bath toys; Christmas tree ornaments; boards games; building blocks; equipment sold as a unit for playing card games;
         dolls and doll clothing; doll playsets; children’s play cosmetics; crib toys; electric action toys; manipulative games; golf
         gloves; golf ball markers; jigsaw puzzles; kites; mobiles; music box toys; party favours in the nature of small toys; inflatable
         pool toys; multiple activity toys; wind-up toys; target games; disc-type toss toys; bows and arrows; toy vehicles; toy cards;
         toy trucks; toy bucket and shovel sets; roller skates; toy model hobbycraft kits; toy rockets; toy guns; toy holsters; musical
         toys; badminton sets; bubble making wands and solution sets; toy figurines; toy banks; puppets; yo-yos; skateboards; scooters;
         face masks; hand-held electronic games; playing cards; plastic water-filled snow globes’ in Class 28;
      
      –        ‘Live stage shows; presentation of live performances; theatre productions; amusement park and theme park services; entertainer
         services; pleasure-ground services; educational and entertainment services rendered in or relating to theme parks; production,
         presentation, distribution and rental of television and radio programs; production, presentation, distribution and rental
         of motion picture films; production, presentation, distribution and rental of sound and video recordings; entertainment information;
         production of entertainment shows and interactive programs for distribution via television, cable, satellite, audio and video
         media, cartridges, laser discs, computer discs and electronic means; production and provision of entertainment, news and information
         via communication and computer networks’ in Class 41.
      
      4        By decision of 31 May 2005, the examiner refused the trade mark application, pursuant to Article 38 of Regulation No 40/94,
         in respect of all the goods and services in Classes 9, 16, 25, 28 and 41, on the ground that the mark applied for was descriptive
         as well as devoid of any distinctive character and that it could not be registered by reason of Article 7(1)(b) and (c) and
         Article 7(2) of Regulation No 40/94.
      
      5        On 29 July 2005, the applicant filed an appeal against the examiner’s decision under Articles 57 to 62 of Regulation No 40/94.
      
      6        By decision of 30 January 2006 (‘the contested decision’), the First Board of Appeal annulled the examiner’s decision, dismissed
         the applicant’s appeal in so far as it challenged the examiner’s finding that the mark ULTIMATE FIGHTING CHAMPIONSHIP was
         devoid of any distinctive character or was descriptive in respect of all the goods and services in Classes 9, 16, 25, 28 and
         41 referred to in the trade mark application, and remitted the case to the examiner with regard to the question whether the
         conditions under Article 7(3) of Regulation No 40/94 were met.
      
      7        The Board of Appeal first of all held that the public targeted was the average English-speaking consumer who attends live
         shows and entertainment and buys consumer goods, such as clothing, stationery or toys (see paragraph 13 of the contested decision).
      
      8        The Board of Appeal then went on to point out that the trade mark applied for was a combination of English words which, taken
         together, had a clear and unequivocal meaning: ‘ULTIMATE’ means ‘conclusive, final’, ‘FIGHTING’ means ‘combat, contest’ and
         ‘CHAMPIONSHIP’ is a competition held to determine a champion. The expression ‘ultimate fighting championship’ would thus be
         understood by any person conversant in the English language as meaning ‘a competition organised in ultimate fighting’, since
         the words ‘ultimate fighting’ would be perceived as designating a type of combat which ends when one of the combatants is
         no longer able to fight (see paragraphs 14 and 15 of the contested decision). 
      
      9        In addition, the Board of Appeal held that the services in Class 41 covered by the trade mark application related directly
         to the organisation of sporting events. The mark ULTIMATE FIGHTING CHAMPIONSHIP was descriptive of those services because
         it indicated the content of such events. For the goods in other classes, the mark applied for could not be considered to be
         descriptive but was nevertheless devoid of any distinctive character. The mark ULTIMATE FIGHTING CHAMPIONSHIP would not be
         perceived as indicating the commercial origin of the goods covered by the application, but as designating a sporting event
         in generic terms. In matters of sporting tournaments or championships, consumers were, moreover, used to the terms ‘European
         Football Championship ‘or ‘Masters Golf Tournament’, for example, identifying the event in question and were used to products,
         for example, clothes bearing the name of that event, also bearing the manufacturer’s name (see paragraphs 16 to 25 of the
         contested decision).
      
      10      Finally, after having pointed out, at paragraph 20 of the contested decision, that it could not be ruled out that, following
         a process of education, the targeted public would familiarise itself with the name of a sporting activity to the extent of
         associating it with a particular undertaking, the Board of Appeal remitted the case to the examiner in respect of the question
         whether the mark ULTIMATE FIGHTING CHAMPIONSHIP had acquired distinctiveness through use (see paragraphs 26 to 28 of the contested
         decision). 
      
       Forms of order sought
      11      The applicant claims that the Court should:
      
      –        annul the contested decision in so far as it dismisses its application on the basis of Article 7(1)(b) and (c) of Regulation
         N 40/94;
      
      –        order OHIM to pay the costs.
      12      OHIM contends that the Court should:
      
      –        dismiss the action;
      –        order the applicant to pay the costs.
       Law 
       The subject-matter of the dispute
      13      At the hearing, in response to questions from the Court, OHIM acknowledged that the examiner had not yet ruled on whether
         the mark applied for (ULTIMATE FIGHTING CHAMPIONSHIP) had acquired distinctiveness through use, within the meaning of Article
         7(3) of Regulation No 40/94, pending the decision of the Court bringing the present proceedings to an end. Consequently, the
         applicant retains an interest in requesting annulment of the contested decision, since the form of order which it seeks has
         not become devoid of purpose.
      
      14      When questioned on that point at the hearing, the parties also confirmed that the question as to whether the mark applied
         for (ULTIMATE FIGHTING CHAMPIONSHIP) had acquired distinctiveness though use, within the meaning of Article 7(3) of Regulation
         No 40/94, was not relevant to the present dispute.
      
       The legality of the contested decision
       Arguments of the parties
      15      Essentially, the applicant claims that, in adopting the contested decision, the Board of Appeal infringed Article 7(1)(b)
         and (c) of Regulation No 40/94. In that regard, it states that the Board of Appeal erred in its assessment of the meaning
         of the sign ULTIMATE FIGHTING CHAMPIONSHIP and in its assessment of the relationship between the sign ULTIMATE FIGHTING CHAMPIONSHIP
         and the goods and services covered by the trade mark application. In addition, it submits that certain names of sporting competitions
         may be used as trade marks and are not devoid of distinctive character.
      
      16      OHIM contests all of the applicant’s claims.
      
       Findings of the Court
      17      Although, in the present case, the applicant has not invoked a failure to state reasons, compliance with the duty to state
         reasons, which applies to all acts subject to judicial review by the Community Courts, is a matter of public policy that must
         be raised, if necessary, of the Court’s own motion (see, to that effect, Case 18/57 Nold v High Authority [1959] ECR 41, at p. 52; Case C-166/95 P Commission v Daffix [1997] ECR I-983, paragraph 24; and Case T‑388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II‑4301, paragraph 59). The Court finds it necessary to consider of its own motion whether the contested decision
         contains an adequate statement of reasons. The parties were questioned at the hearing on the adequacy of the statement of
         the reasons given in the contested decision.
      
      18      Under Article 73 of Regulation No 40/94, decisions of OHIM must state the reasons on which they are based and may be based
         only on reasons on which the parties concerned have had an opportunity to present their comments. In addition, Rule 50(2)(h)
         of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides
         that the Board of Appeal’s decision must contain the reasons therefore. The duty to state reasons set out in those provisions
         has the same scope as that enshrined in Article 253 EC (see Joined Cases T-124/02 and T-156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II-1149, paragraph 72, and Case T-168/04 L & D v OHIM – Sämann (Aire Limpio) [2006] ECR II-2699, paragraph 113 and the case-law cited).
      
      19      It is settled case-law that the statement of reasons required under Article 253 EC must set out clearly and unequivocally
         the reasoning of the body which adopted the act in question. Accordingly, the duty incumbent on the Board of Appeal to set
         out the reasons for its decisions has two purposes: first, to allow interested parties to know the justification for the measures
         taken so as to enable them to protect their rights and, second, to enable the Community Courts to review the legality of those
         decisions (see VITATASTE and METABALANCE 44, paragraph 73, and Aire Limpio, paragraph 114 and the case-law cited).
      
      20      Whether the statement of reasons for a decision satisfies those requirements is a matter to be assessed by reference not only
         to its wording but also to its context and the whole body of legal rules governing the matter in question (see VITATASTE and METABALANCE 44, paragraph 73 and the case-law cited).
      
      21      In that regard, under Article 4 of Regulation No 40/94, the decisive factor for a sign capable of being represented graphically
         to be eligible for registration as a Community trade mark is its capacity to distinguish the goods of one undertaking from
         those of another. It follows, in particular, that the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation
         No 40/94, respectively the absence of distinctive character and the descriptive character of the sign, can be assessed only
         in relation to the goods or services in respect of which registration of the sign is sought (see Case T-135/99 Taurus-Film v OHIM (Cine Action) [2001] ECR II-379, paragraph 25, and Case T-136/99 Taurus-Film v OHIM(Cine Comedy) [2001] ECR II-397, paragraph 25 and the case-law cited).
      
      22      Consequently, the existence of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation No 40/94
         must form the subject of a specific assessment, taking account of all the relevant facts and circumstances, by reference,
         first, to the goods or services in respect of which registration has been sought and, second, to the perception of the relevant
         persons, namely the consumers of those goods or services (see Case T-315/03 Wilfer v OHIM (ROCKBASS) [2005] ECR II-1981, paragraph 51 and the case-law cited, and Case T‑441/05 IVG Immobilien v OHIM (I) [2007] ECR II‑1937, paragraph 41; see also, by way of analogy, Case C-218/01 Henkel [2004] ECR I-1725, paragraphs 50 and 51).
      
      23      Furthermore, each of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 must be interpreted in the light
         of the public interest underlying each of them, each being independent of the others and calling for separate examination
         (see Joined Cases C-456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 45 and the case-law cited). The public interest taken into account in the examination of each
         of those grounds for refusal may, or even must, reflect different considerations, depending on which ground for refusal is
         at issue (see Case C‑304/06 P Eurohypo v OHIM [2008] ECR I‑0000, paragraphs 54 and 55 and the case-law cited, and Case T‑302/03 PTV v OHIM (map&guide) [2006] ECR II‑4039, paragraph 33). 
      
      24      In that context, the public interest underlying Article 7(1)(b) of Regulation No 40/94 relates, first, to the need not unduly
         to restrict the availability of the sign for which registration is sought for the other traders who offer for sale goods or
         services of the same type as those in respect of which registration is sought and, second, to guarantee the identity of the
         origin of the marked products or services to the consumer or end-user by enabling him, without any possibility of confusion,
         to distinguish those goods or services from others which have a separate origin. Such a guarantee constitutes the essential
         function of the trade mark (see, to that effect, Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraphs 23, 26 and 27, and the case-law cited, and Eurohypo v OHIM, paragraphs 59 and 62).
      
      25      Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications
         relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all.
         That provision accordingly precludes such signs or indications from being reserved to one undertaking alone on the ground
         that they have been registered as trade marks (see ROCKBASS, paragraph 50 and the case-law cited).
      
      26      It follows that there is a clear overlap between the respective scopes of the grounds set out in Article 7(1)(b) and (c) of
         Regulation No 40/94. In particular, it is clear from the case-law that a word mark which is descriptive of characteristics
         of goods or services within the meaning of Article 7(1)(c) of Regulation No 40/94 is, for that reason, liable in principle
         to be regarded as also lacking distinctive character with regard to those same goods or services within the meaning of Article
         7(1)(b) of that regulation. However, that is a matter which must be separately demonstrated (see, to that effect, Eurohypo v OHIM, paragraphs 69 and 70).
      
      27      It follows that, where registration of a mark is sought in respect of various goods or services, the Board of Appeal must
         determine specifically that none of the grounds for refusal of registration listed in Article 7(1) of Regulation No 40/94
         applies to the mark in question, in relation to each of those goods or services claimed, and may reach conclusions which differ
         depending upon the goods or services in question (see, by way of analogy, Case C-363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraphs 33 and 73). Therefore, when refusing registration of a trade mark, the Board of Appeal is required
         to state in its decision its conclusion for each of the goods and services specified in the application for registration,
         regardless of the manner in which that application was formulated. However, where the same ground for refusal is given for
         a category or group of goods or services, the competent authority may limit itself to using general reasoning for all of the
         goods or services concerned (see, by way of analogy, Case C‑239/05 BVBA Management, Training en Consultancy [2007] ECR I-1455, paragraph 38).
      
      28      In that context, the option for the Board of Appeal to use general reasoning for a series of goods or services can extend
         only to goods or services which have a sufficiently direct and specific link to each other to the extent that they form such
         a sufficiently homogenous category as to enable all the factual and legal considerations constituting the grounds of the decision
         in question, first, to explain adequately the reasoning followed by the Board of Appeal for each of the goods and services
         belonging to that category and, second, to be applied without distinction to each of the goods or services concerned. The
         mere fact that the goods and services in question are in the same class under the Nice Agreement is not sufficient, for that
         purpose, since those classes often contain a wide variety of goods or services which do not necessarily have a sufficiently
         direct and specific link to each other (see, to that effect, Case T‑329/06 Enercon v OHIM (E), not published in the ECR, paragraphs 34 and 35, and Case T‑297/07 TridonicAtco v OHIM(Intelligent Voltage Guard), not published in the ECR, paragraphs 22 to 24; also see, to that effect and by way of analogy, Case T-392/04 Gagliardi v OHIM – Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), not published in the ECR, paragraphs 91 and 92).
      
      29      In the present case, the trade mark applied for covers more than 215 goods falling within four separate classes under the
         Nice Agreement, as well as at least 13 kinds of different services, including pre-recorded audio cassettes, cookery books,
         baby booties, bows and arrows, or the provision of information in the field of sports via computer networks (see paragraph
         3 above). The goods and services covered by the trade mark applied for thus demonstrate such differences between them, by
         reason of their nature, characteristics, intended purpose and methods of marketing, that they cannot be regarded as constituting
         a homogenous category that would allow the Board of Appeal to adopt a general statement of reasons in their regard.
      
      30      The Board of Appeal merely distinguished between the services in Class 41, on the one hand, for which it indicated that the
         trade mark applied for was descriptive (see paragraph 17 of the contested decision), and all the goods covered by the applicant’s
         trade mark application, on the other hand, for which it indicated that the trade mark applied for could not be regarded as
         descriptive, but that it was in any event devoid of distinctive character, since it would be perceived, not as an indicator
         of origin, but as a generic term identifying a sporting event (see paragraph 18 of the contested decision).
      
      31      By reason of its very broad nature, such a statement of reasons is clearly not sufficient to enable the Court to exercise
         its power to review the validity of the contested decision. 
      
      32      As regards the services in Class 41 of the Nice Agreement, the Board of Appeal pointed out that, since the words ‘ultimate
         fighting championship’ indicated the contents of those services, the trade mark applied for was descriptive as far as those
         services were concerned. However, it is apparent from the list in paragraph 3 above that the services covered by the mark
         applied for – which include live stage shows, entertainer services, educational and entertainment services rendered in or
         relating to theme parks, rental of motion picture films, entertainment information, interactive programs for distribution
         via television – do not have a sufficiently direct and specific link to each other to the extent that they form a sufficiently
         homogenous category as to enable the Board of Appeal to have recourse to a general statement of reasons in their regard. First,
         the mere fact that the goods or services in question come within the same class of the Nice Agreement is not sufficient (see
         paragraph 28 above). Second, the heterogeneity of those services is such that the statement of reasons set out by the Board
         of Appeal is excessively general and abstract, regard being had to the nature and characteristics of those services.
      
      33      As regards all the goods in Classes 9, 16, 25 and 28 of the Nice agreement, in respect of which the Board of Appeal pointed
         out that the sign ULTIMATE FIGHTING CHAMPIONSHIP, as it could not be perceived as an indication of origin but could only be
         regarded as alluding to a sporting event, was devoid of distinctive character, the heterogeneity of those goods is even more
         significant than that of the services in Class 41, with the result that they do not have a sufficiently direct and specific
         common link to each other to the extent of forming such a sufficiently homogenous category as to allow the Board of Appeal
         to have recourse to a general statement of reasons in their regard, and the reasoning contained in the contested decision
         is, as far as they are concerned, excessively general and abstract with regard to their nature and characteristics.
      
      34      Consequently, the division into two categories by the Board of Appeal leaves in place a very strong heterogeneity between
         the goods and services rearranged in that manner, with the result that they cannot, by reason of that distinction alone, constitute
         homogenous categories capable of justifying the Board of Appeal’s recourse to a general statement of reasons with regard to
         each of those categories.
      
      35      In those circumstances, the reasons set out by the Board of Appeal for each of the two categories which it established fail
         sufficiently to explain the reasoning followed by it with regard to each of the goods and services in respect of which registration
         of the mark ULTIMATE FIGHTING CHAMPIONSHIP has been sought.
      
      36      It follows that the contested decision is vitiated by an inadequate statement of reasons and must for that reason be annulled.
      
       Costs
      37      Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay
         the costs if they have been applied for in the successful party’s pleadings. As OHIM has been unsuccessful, it must be ordered
         to pay the costs, in accordance with the form of order sought by the applicant. 
      
      On those grounds,
      THE COURT OF FIRST INSTANCE (Third Chamber)
      hereby:
      1.      Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs)
            (OHIM) of 30 January 2006 (Case R 931/2005-1) in so far as it dismisses the appeal brought by Zuffa, LLC, on the basis of
            Article 7(1)(b) and (c) of Council Regulation (EC) N0 40/94 of 20 December 1993 on the Community trade mark;
      2.      Orders OHIM to pay the costs.
      
               Azizi 
            
            
               Cremona 
            
            
               Frimodt Nielsen
            
         Delivered in open court in Luxembourg on 2 April 2009.
      [Signatures]
      * Language of the case: English.