1. By its appeal, Eurohypo AG (‘the appellant’) seeks to have set aside the judgment of the Court of First Instance of the European Communities of 3 May 2006 in Case T‑439/04 Eurohypo v OHIM (EUROHYPO) [2006] ECR II-1269 (‘the judgment under appeal’) in which the Court of First Instance dismissed the appellant’s action brought against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 August 2004 (Case R 829/2002-4) (‘the contested decision’).
2. By the contested decision, OHIM had refused to register the word sign EUROHYPO as a Community trade mark for services in Class 36 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’), corresponding to the following description: ‘financial affairs; monetary affairs; real estate affairs; provision of financial services; financing …’. Legal context
3. Article 7 of 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 3288/94 of 22 December 1994 (OJ 1994 L 349, p. 83) (‘Regulation No 40/94’), provides: ‘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; (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; … 2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. …’
4. Article 38(1) of Regulation No 40/94 provides: ‘Where, under Article 7, a trade mark is ineligible for registration in respect of some or all of the goods or services covered by the Community trade mark application, the application shall be refused as regards those goods or services.’
5. Article 74(1) of Regulation No 40/94 provides: ‘1. In proceedings before it the Office shall examine the facts of its own motion; …’ Background
6. On 30 April 2002, the appellant applied to OHIM for registration of the word sign EUROHYPO for services in Class 36 of the Nice Agreement and corresponding to the following description: ‘Financial affairs; monetary affairs; real estate affairs; provision of financial services; financing; financial analysis; investment affairs; insurance affairs’.
7. Since the application was rejected by the OHIM examiner by decision of 30 August 2002, pursuant to Article 7(1)(b) and (c) and Article 7(2) of Regulation No 40/94, the appellant filed an appeal at OHIM.
8. In the contested decision OHIM partially upheld the appeal and annulled the examiner’s decision as regards ‘financial analysis; investment affairs; insurance affairs’.
9. The appeal was, however, dismissed as regards the other services in Class 36, namely, ‘financial affairs; monetary affairs; real estate affairs; provision of financial affairs; provision of financial services; financing’.
10. Essentially, OHIM held that the components EURO and HYPO contained a clearly understandable indication of the characteristics of the five services mentioned above and that the combination of those two components in one word did not render the mark less descriptive. Therefore, it held that the word sign EUROHYPO was descriptive of ‘financial affairs; monetary affairs; real estate affairs; provision of financial services; financing’ and that it was, therefore, devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, at least in German-speaking countries, and that that ground was sufficient, under Article 7(2) of that regulation, to justify a refusal of protection. The proceedings before the Court of First Instance and the judgment under appeal
11. On 5 November 2004, the appellant brought an action before the Court of First Instance for annulment of the contested decision. In support of that action, the appellant raised two pleas in law claiming, respectively, infringement of Article 74(1), and of Article 7(1)(b), of Regulation No 40/94.
12. By its first plea, alleging infringement of Article 74(1) of Regulation No 40/94, the appellant claimed that, in the contested decision, OHIM did not exhaustively examine the public’s perception of the word sign EUROHYPO.
13. The Court of First Instance rejected that plea, holding, at paragraph 20 of the judgment under appeal that ‘… the fact that the Board of Appeal, being sufficiently convinced of the descriptiveness of the elements “euro” and “hypo” and the word “eurohypo” to refuse registration, chose not to carry out further research is not contrary to the first sentence of Article 74(1) of Regulation No 40/94’.
14. By its second plea, the appellant claimed infringement of Article 7(1)(b) of Regulation No 40/94 inasmuch as the Fourth Board of Appeal of OHIM had held that the word sign EUROHYPO was descriptive of the financial services at issue.
15. As regards the basis of the contested decision, the Court of First Instance first observed, at paragraphs 41, 43 and 44 of the judgment under appeal: ‘41 … contrary to OHIM’s submissions, it is clear from paragraph 12 et seq. of the contested decision that the decision to refuse registration of the word sign EUROHYPO, in respect of “financial affairs; monetary affairs; real estate affairs; financial services; financing”, refers only to Article 7(1)(b) of Regulation No 40/94. However, the analysis carried out in paragraphs 13 to 16 underpinning that decision to refuse registration concerns the descriptiveness of the word sign EUROHYPO. … 43 However, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b) to (d) of that provision …. 44 It is also clear from the case-law of the Court of Justice and the Court of First Instance that a word mark which is descriptive of the characteristics of the goods or services concerned for the purposes of Article 7(1)(c) of Regulation No 40/94 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) … ’
16. The Court of First Instance then stated at paragraph 45 of the judgment under appeal that ‘… the assessment of the legality of the contested decision requires verification as to whether the Board of Appeal has established that the word sign EUROHYPO was descriptive of “financial affairs; monetary affairs; real estate affairs; financial services; financing” within Class 36. If that is the case the refusal to register is the result of a correct application of both Article 7(1)(b) of Regulation No 40/94 and Article 7(1)(c) and the contested decision must be upheld. …’.
17. The Court of First Instance then examined whether the word sign EUROHYPO was descriptive for the services at issue.
18. First, it held, at paragraphs 51 and 52 of the judgment under appeal, that OHIM had rightly found that the individual components EURO and HYPO were descriptive of the services at issue.
19. Second, the Court of First Instance examined whether the descriptive character of the components which comprised the word sign EUROHYPO also existed for the compound word itself. At paragraph 55 of the judgment under appeal, the Court found in the affirmative in the following terms: ‘In the present cases the word sign EUROHYPO is a straightforward combination of two descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. The applicant has not shown that that compound word had become part of everyday language and had acquired a meaning of its own. It argues, to the contrary, that the word sign EUROHYPO has not become part of everyday German for describing financial services.’
20. In addition, at paragraph 56 of the judgment under appeal the Court of First Instance held that the solution identified in the judgment of the Court of Justice in Case C‑383/99 P Proctor & Gamble v OHIM [2001] ECR I-6251 (‘ Baby-dry ’) could not be transposed to the present case given that ‘… the term at issue in that case was a lexical invention which had an unusual structure, which is not the case for the word sign EUROHYPO’.
21. Consequently, the Court of First Instance held, at paragraph 57 of the judgment under appeal: ‘The Board of Appeal … lawfully found that the word sign EUROHYPO was descriptive of “financial affairs; monetary affairs; real estate affairs; financial services and financing” in Class 36 and was, therefore, devoid of any distinctive character. It follows that, in accordance with the findings in paragraph 45 above, there is no need to examine whether the Board of Appeal put forward other grounds for finding that the mark applied for was devoid of any distinctive character.’
22. Finally, at paragraph 58 of the judgment under appeal, the Court of First Instance held that the claim based on the widespread use of the mark was inadmissible as that claim was raised for the first time before the Court of First Instance.
23. Therefore, the Court of First Instance dismissed the action in its entirety. Forms of order sought
24. In its appeal, the appellant claims that the Court should: - set aside the judgment under appeal; - annul the contested decision; - order OHIM to pay the costs.
25. OHIM claims the Court should dismiss the appeal and order the appellant to pay the costs. The appeal
26. In support of its appeal, the appellant relies on two pleas in law alleging, respectively, infringement of Article 74(1), and of Article 7(1)(b), of Regulation No 40/94. The first plea in law Arguments of the parties
27. By its first plea, the appellant claims that Article 74(1) of Regulation No 40/94 requires OHIM to carry out in-depth analyses in order to establish with certainty whether there are grounds for refusing registration. In the present case, OHIM restricted itself to an analysis of the descriptive character of the individual components EURO and HYPO without making findings of fact on the word mark EUROHYPO as a whole.
28. In addition, the appellant criticises OHIM for having carried out internet research in relation to the mark EUROHYPO and that it knowingly concealed the results in so far as they did not show that the mark was used in a descriptive way. In so doing, OHIM misrepresented the facts.
29. The Court of First Instance accordingly erred in law by holding that the absence of references to Internet research in relation to the descriptive character of the mark EUROHYPO in the reasoning of the contested decision was not contrary to Article 74(1) of Regulation No 40/94.
30. OHIM contends that it is not bound by strict evidential requirements. In particular, under the principle of unfettered evaluation of the evidence, it may make its decision on the basis of its own belief whether it considers a fact has been proved. Therefore, once it considers that it has sufficient evidence to make a decision, it is not obliged to continue its investigation and analysis.
31. OHIM contends, in addition, that the descriptive use of a newly-created word is not a relevant criterion in the application of Article 7(1)(b) of Regulation No 40/94 and, therefore, that the Board of Appeal could not be criticised for not mentioning it. Findings of the Court
32. It should be stated, at the outset, that by its first plea, even though it has formally pleaded an error in law, the appellant is seeking, in essence, to call into question the factual assessment carried out by the Court of First Instan ce and, in particular, to dispute the probative value of a number of facts which led the Court of First Instance to find that OHIM was not obliged to undertake additional research where it was sufficiently certain as regards the descriptive character of the components EURO and HYPO and of the word EUROHYPO.
33. It follows from settled case-law that the Court of Justice has no jurisdiction to establish the facts or, in principle, to examine the evidence which the Court of First Instance accepted in support of those facts. Provided that the evidence has been properly obtained and the general principles of law and the rules of procedure in relation to the burden of proof and the taking of evidence have been observed, it is for the Court of First Instance alone to assess the value which should be attached to the evidence produced to it. Save where the clear sense of the evidence has been distorted, that appraisal does not therefore constitute a point of law which is subject as such to review by the Court of Justice (see, to that effect, Case C‑185/95 P Baustahlgewebe v Commission [1998] ECR I-8417, paragraph 24; Case C‑40/03 P Rica Foods v Commission [2005] ECR I-6811, paragraph 60; and Case C‑551/03 P General Motors v Commission [2006] ECR I-3173, paragraph 52).
34. In that regard, it should be recalled that there is distortion of the clear sense of the evidence where, without recourse to new evidence, the assessment of the existing evidence appears to be clearly incorrect (Case C‑229/05 P PKK and KNK v Council [2007] ECR I-439, paragraph 37, and Case C‑326/05 P Industrias Químicas del Vallés v Commission [2007] ECR I-6557, paragraph 60).
35. However, it must be pointed out that, in the context of the first plea, the appellant limits itself to challenging the assessment of the facts carried out by OHIM in the contested decision and, in particular, the alleged incomplete nature of that assessment. By contrast, it has not shown, nor even alleged, that the Court of First Instance carried out a clearly incorrect assessment of the evidence.
36. Therefore, the first plea in law must be held to be inadmissible. The second plea in law
37. By its second plea, the appellant claims that the Court of First Instance erred in law in the interpretation of Article 7(1)(b) of Regulation No 40/94. That plea is divided into three separate parts.
38. By the first part, the appellant criticises the Court of First Instance for failing to take into account the overall impression produced by the EUROHYPO mark. By the second part, the appellant claims that the Court of First Instance incorrectly interpreted the criteria for refusal of registration set out in Article 7(1)(b) and (c) of Regulation No 40/94. Finally, as regards the third part, the appellant maintains that the Court of First Instance incorrectly applied the principles identified in the Baby-Dry judgment. The first part of the second plea - Arguments of the parties
39. According to the appellant, the Court of First Instance examined only the descriptive character of the components EURO and HYPO taken separately, and examined the overall impression produced by the mark only as a secondary issue. The Court of First Instance based its decision, in the judgment under appeal, on the presumption that, where the components which comprise a composite mark are descriptive, the mark as a whole is, in principle, also descriptive.
40. OHIM contests that line of argument contending that the Court of First Instance devoted a part of its reasoning precisely to the direct and specific assessment of the distinctive character of the compound trade mark as a whole and did not rely solely on a presumption. - Findings of the Court
41. As regards a compound trade mark, such as that at issue in the present case, the assessment of its distinctive character cannot be limited to an evaluation of each of its words or components, considered in isolation, but must, on any view, be based on the overall perception of that mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character (see, to that effect, Case C‑329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraph 35). The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character (Case C‑37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 29).
42. At paragraph 54 of the judgment under appeal, the Court of First Instance rightly held that in order to assess the distinctive character of a compound mark, not only must the various elements of which it is composed be examined but also the mark as a whole.
43. Admittedly, in the same paragraph, the Court of First Instance stated that a mark consisting of a word composed of elements, each of which is descriptive of the characteristics of those goods or services in respect of which registration is sought, is itself descriptive of the characteristics of those goods and services.
44. However, that finding did not affect the analysis of the Court of First Instance on that point, since it did not limit itself to assessing, as a secondary issue, the overall impression produced by the trade mark applied for, but devoted a part of its reasoning to evaluating, with regard to a compound mark, the descriptive character of the sign as a whole.
45. At paragraph 55 of the judgment under appeal, the Court of First Instance held that the impression created by the mark at issue was not sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts and that the appellant had not shown that that compound word had become part of everyday language and had acquired a meaning of its own.
46. Moreover, at paragraph 56 of the judgment under appeal, the Court of First Instance examined whether the mark at issue was a lexical invention which had an unusual structure, finding that that was not the case.
47. Finally, at paragraph 57 of the judgment under appeal, the Court of First Instance held that the mark EUROHYPO, considered as a whole, was descriptive of the services in question.
48. Therefore, the Court of First Instance cannot be criticised for not having verified whether the mark, taken as a whole, had a descriptive character or for having done so merely as a secondary point.
49. It follows that the first part of the second plea in law must be rejected as unfounded. The second part of the second plea - Arguments of the parties
50. The appellant claims that the Court of First Instance incorrectly applied, in an assessment carried out on the basis of Article 7(1)(b) of Regulation No 40/94, a criterion which is relevant solely for the purposes of the application of Article 7(1)(c) of that regulation. The Court of First Instance held that a compound mark composed of descriptive elements met the conditions for registration where the word in question had become part of everyday language and had acquired a meaning of its own, whereas, according to the appellant, that criterion is relevant only in the context of the application of Article 7(1)(c) of Regulation No 40/94.
51. The appellant also maintains that while it is true that there is overlap between the respective scope of the grounds for refusal set out in Article 7(1)(b) to (d) of Regulation No 40/94, that does not relieve the Court of First Instance of having to interpret, independently, the grounds for refusal in the light of the different general interest objectives pursued by each of those provisions.
52. OHIM replies to those arguments by stating that the scope of the grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 40/94 are overlapping and, by that token, a descriptive sign normally falls within the scope of the grounds for refusal set out in both provisions.
53. According to OHIM, the fact that the provisions in question pursue separate general interests does not require a different interpretation of the concept of descriptive character depending on the provision at issue. Therefore, the Court of First Instance did not err in law in interpreting Article 7(1)(b) of Regulation No 40/94. Findings of the Court
54. It must, first, be borne in mind that, while the Court of Justice has had occasion to find a degree of overlap between the respective scope of the absolute grounds for refusal to register a trade mark set out in Article 7(1)(b) to (d) of Regulation No 40/94 (see, by analogy, as regards the identical provisions of Article 3(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 67, and Case C‑265/00 Campina Melkunie [2004] ECR I-1699, paragraph 18), it is nevertheless the case that, according to established case-law, each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and requires separate examination (see Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I-5089, paragraph 45; Case C‑64/02 P OHIM v Erpo Möbelwerk [2004] ECR I-10031, paragraph 39; and Case C‑173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 59).
55. The Court of Justice has also had occasion to make it clear that the various grounds for refusal must be interpreted in the light of the public interest underlying each of them. The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending upon which ground for refusal is at issue ( Henkel v OHIM , paragraphs 45 and 46; SAT.1 v OHIM , paragraph 25; and BioID v OHIM , paragraph 59).
56. In that regard, it should be noted that the notion of general interest underlying Article 7(1)(b) of Regulation No 40/94 is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin ( SAT.1 v OHIM , paragraphs 23 to 27, and BioID v OHIM , paragraph 60).
57. In the present case, the reasoning followed by the Court of First Instance is based on an incorrect interpretation of the principles mentioned in paragraphs 54 to 56 of this judgment.
58. It is apparent from paragraphs 45, 54, 55 and 57 of the judgment under appeal that the Court of First Instance assessed the distinctive character of the mark EUROHYPO by carrying out solely an analysis of its descriptive character within the meaning of Article 7(1)(c) of Regulation No 40/94. Consequently, the judgment under appeal contains no separate examination of the ground for refusal laid down in Article 7(1)(b) of that regulation on the basis of which, however, the Court of First Instance rejected the second plea, raised at first instance, against the contested decision.
59. In so doing, the Court of First Instance assessed the mark EUROHYPO without, in particular, taking into account the public interest which Article 7(1)(b) of Regulation No 40/94 aims specifically to protect, that is, to guarantee the identity of the origin of the designated product or service.
60. Moreover, in the context of such an assessment, the Court of First Instance used an incorrect criterion to determine whether the mark in question could be registered.
61. According to that criterion, a mark composed of descriptive elements could meet the conditions for registration where the word has become a part of everyday language and has acquired a meaning of its own. But, while that criterion is relevant in the context of Article 7(1)(c) of Regulation No 40/94, it cannot form a basis for the interpretation of Article 7(1)(b).
62. Although that criterion permits excluding the use of a trade mark to describe a product or a service, nevertheless, it does not allow it to be determined whether a mark is capable of guaranteeing the identity of the origin of the designated product or service to the consumer or end user.
63. In those circumstances, the appellant is right to claim that the judgment under appeal is vitiated by an error in law in the interpretation of Article 7(1)(b) of Regulation No 40/94.
64. It follows from the foregoing, without it being necessary to examine the third part of the second plea of the appeal, that the judgment under appeal must be set aside inasmuch as the Court of First Instance held that the Fourth Board of Appeal of OHIM did not infringe Article 7(1)(b) of Regulation No 40/94 by refusing, in the contested decision, to register the term EUROHYPO as a Community trade mark for the services, ‘financial affairs, monetary affairs, real estate affairs, provision of financial services, financing …’, in Class 36 of the Nice Agreement. The action before the Court of First Instance
65. Pursuant to the second sentence of the first paragraph of Article 61 of the Statute of the Court of Justice, the Court of Justice, where it has quashed the decision of the Court of First Instance, may itself give final judgment in the matter, where the state of the proceedings so admits. Such is the case in the present proceedings.
66. As a preliminary point, it should be borne in mind, as is apparent from paragraph 56 of this judgment, that for a trade mark to possess a distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings ( Henkel v OHIM , paragraph 34 and the case-law cited).
67. In that regard, it is apparent from settled case-law that that distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (Joined Cases C‑473/01 P and C‑474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, paragraph 33, and Case C‑25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 25).
68. In the present case, it should be noted that, as the Board of Appeal stated in the contested decision, without it being disputed by the appellant, the relevant services are aimed at all consumers. Moreover, it is common ground that the absolute ground for refusal was invoked only in relation to one of the languages spoken in the European Union, namely German. Consequently, the relevant public against which the distinctive character of the trade mark must be measured is the average German-speaking consumer, reasonably well informed and reasonably observant and circumspect.
69. As OHIM correctly stated in the contested decision, the relevant public, in the field covered by the trade mark application, understand the word sign EUROHYPO as referring, as a whole and in general, to financial services requiring real securities and, in particular, to mortgage loans paid in the currency of the European Economic and Monetary Union. Furthermore, there is no additional element which would allow the view to be reached that the combination, created by the current and usual components EURO and HYPO, is unusual or might have its own meaning which, in the perception of the relevant public, distinguishes the services offered by the appellant from those of a different commercial origin. Therefore, the relevant public perceives the trade mark in question as providing details of the type of services which it designates and not as indicating the origin of those services.
70. It follows that the trade mark for which registration is sought does not have a distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. In those circumstances, the appellant’s action against the contested decision must be dismissed. Costs
71. Under Article 122 of the Rules of Procedure of the Court of Justice, where the appeal is well founded and the Court itself gives final judgment in the case, the Court shall make a decision as to costs.
72. Under Article 69(2) of the Rules of Procedure of the Court of Justice, applicable in the procedure on appeal pursuant to Article 118 of those rules, the unsuccessful party shall be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As OHIM has applied for costs against the appellant and the latter has been unsuccessful, the appellant should be ordered to pay the costs of the proceedings at both instances.