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Cite as: [2011] EUECJ T-87/10

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JUDGMENT OF THE GENERAL COURT (Second Chamber)

11 October 2011 (*)

(Community trade mark – Application for registration of the Community word mark PIPELINE – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009 – Obligation to state the reasons on which the decision is based – Article 75 of Regulation No 207/2009)

In Case T-87/10,

Chestnut Medical Technologies, Inc., established in Menlo Park, California (United States), represented by H. P. Kunz-Hallstein and R. Kunz-�Hallstein, lawyers,

applicant,

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 10 December 2009 (Case R 968/2009-�2) concerning an application for registration of the word mark PIPELINE as a Community trade mark,

THE GENERAL COURT (Second Chamber),

composed of N.J. Forwood, President, J. Schwarcz (Rapporteur) and A. Popescu, Judges,

Registrar: S. Spyropoulos, Administrator,

having regard to the application lodged at the Court Registry on 23 February 2010,

having regard to the response lodged at the Court Registry on 17 May 2010,

further to the hearing on 12 April 2011,

gives the following

Judgment

Background to the proceedings

1 On 24 January 2009, the applicant, Chestnut Medical Technologies, Inc., filed at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) an application for registration of a Community trade mark under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The mark in respect of which registration was sought is the word sign PIPELINE.

3 The goods in respect of which registration was sought are in Class 10 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, as revised and amended, and correspond to the following description: ‘Medical devices, namely, devices used in the treatment of aneurysms’.

4 By decision of 23 June 2009, the examiner rejected the application for registration on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

5 On 19 August 2009 the applicant filed an appeal with OHIM against the examiner’s decision.

6 By decision of 10 December 2009 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. The Board of Appeal essentially took the view that:

– having regard to the highly specialised nature of the goods at issue, the relevant public was made up solely of professionals from the medical sector who were deemed to be particularly well informed and reasonably attentive, and thus better able to understand the descriptive connotations of a given term;

– since the mark applied for consists of an English word, the relevant public to be taken into account was the English-speaking public and the assessment essentially had to relate to territories in which English is the official language;

– according to the definition in the Compact Oxford English Dictionary, the noun ‘pipeline’ means a long pipe for conveying oil, gas, etc. over a distance, and that is the meaning that the average consumer would attach to the mark applied for;

– none the less, what mattered was the perception of the professionals who use medical devices for treating aneurysms;

– according to an article in the Chicago Tribune of 18 February 2009, a medical expert had stated that a device that could revolutionise treatment for brain aneurysm was commonly called ‘the pipeline’;

– the relevant public would therefore perceive the word ‘pipeline’ as referring to the product itself rather than as an indication of its commercial origin, regardless of whether the applicant was or was not at the time the sole manufacturer of that type of device;

– the fact that there was no specific dictionary entry for the word ‘pipeline’ in relation to the goods at issue did not deprive the word of its descriptive character, since the device in question could cover a relatively long distance within an artery of the human body and transport blood in it;

– the conventional meaning of the word ‘pipeline’ and its generic use in the specific field of surgery were sufficient to show that the sign in question contained, as a whole, information about the type of goods in question for the relevant public that was immediate, direct and easily understandable;

– neither the applicant’s argument that the word ‘pipeline’ had been registered as a mark for comparable goods, nor its request in the alternative to have certain goods excluded from application for registration, could affect the outcome of the assessment under Article 7(1)(c) of Regulation No 207/2009.

Forms of order sought

7 The applicant claims that the Court should:

– annul the contested decision;

– order OHIM to pay the costs.

8 OHIM contends that the Court should:

– dismiss the application;

– order the applicant to pay the costs.

Law

9 In support of its action, the applicant relies, in essence, on two pleas alleging breach of Article 7(1)(c) and of Article 75 of Regulation No 207/2009.

The first plea in law: breach of Article 7(1)(c) of Regulation No 207/2009

Arguments of the parties

10 The applicant first of all claims that the Board of Appeal erred in its assessment of the consumer’s perception of the goods in question. Whether the consumer’s level of attention is higher or lower is a criterion relevant to the likelihood of confusion, and not to the assessment of descriptive character. Professionals in the medical sector are deemed to know precise technical terms and would call a device for treating aneurysms a ‘catheter’, not a ‘pipeline’. The applicant supports its argument by means of an extract from the internet encyclopaedia Wikipedia, which describes the treatment of aneurysms without any reference to the word ‘pipeline’, using instead the word ‘catheter’.

11 Second, the applicant submits that the Board of Appeal misinterpreted what the Chicago Tribune article said and consequently based its findings on mistaken facts. In the first place, that newspaper is not a scientific publication. In the second place, it did not quote a medical expert, but rather a patient, who stated that the surgeon had suggested using an experimental device commonly called ‘the pipeline’. The applicant claims in this regard that, in all probability, the surgeon explained to the patient, as is his duty, that he was going to use a specific device named ‘pipeline’ and not an ordinary catheter. The surgeon thus used the commercial name for the device to refer to the specific product manufactured by the applicant and not to a general class of devices. Such use does not allow the conclusion to be drawn that the word ‘pipeline’ is descriptive or may be used in a descriptive way.

12 Third, the applicant claims that, in stating that it ‘sees no reason not to consider the … product [at issue] as a pipeline’, the Board of Appeal substituted its own view for that of an endovascular surgeon, that is to say, someone who represents the relevant public, and thereby erred in law.

13 Fourth, as the Board of Appeal concedes, there is no lexical reference to the word ‘pipeline’ for a medical device for the treatment of aneurysms. That word does not therefore currently serve as a descriptive term in the field in question. It is for that reason necessary to make a prediction as to how the relevant consumer will perceive the sign in the future, which should be based on a study and analysis of the relevant available facts. As is clear from the foregoing, however, those facts have not been correctly established.

14 The applicant argues that the word ‘pipeline’ will also not be used in the future to describe a device for the treatment of aneurysms. In that regard, it will be used only in reference to the applicant’s product since there are already other generic terms to describe that type of device. The word ‘pipeline’ also has a clear and direct meaning in a separate field, which prevents there being a sufficiently direct and concrete connection with the goods at issue in this case, which are, moreover, totally different from an oil or gas pipeline, since they are neither long nor rigid and are also not pipes.

15 Consequently, the Board of Appeal erred in finding that the word ‘pipeline’ would be understood by the relevant public, immediately and without further thought, as referring directly to the type of goods at issue and their characteristics and not as an indication of origin.

16 OHIM disputes the merits of the applicant’s arguments.

Findings of the Court

17 Article 7(1)(c) of Regulation No 207/2009 provides that ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ may not be registered. Furthermore, Article 7(2) of Regulation No 207/2009 provides that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

18 According to settled case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (Case C-�191/01 P OHIM v Wrigley [2003] ECR I-�12447, paragraph 31; Case T-�219/00 Ellos v OHIM (ELLOS) [2002] ECR II-�753, paragraph 27; and judgment of 12 June 2007 in Case T-�339/05 MacLean-Fogg v OHIM (LOKTHREAD), not published in the ECR, paragraph 27).

19 Furthermore, signs or indications which may serve, in trade, to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as being incapable of fulfilling the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service. This function enables the consumer who acquired the goods or service designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (OHIM v Wrigley, cited in paragraph 18 above, paragraph 30; ELLOS, cited in paragraph 18 above, paragraph 28; and LOKTHREAD, cited in paragraph 18 above, paragraph 28).

20 It follows that, for a sign to fall within the scope of the prohibition set out in that provision, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned to perceive immediately, without further thought, a description of the goods and services in question (Case T-�106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-�723, paragraph 40, and LOKTHREAD, cited in paragraph 18 above, paragraph 29).

21 It should also be borne in mind that a sign’s descriptiveness can be assessed only by reference to the goods or services concerned and to the way in which it is perceived by the target public (judgment of 23 October 2008 in Case T-�158/06 Adobe v OHIM (FLEX), not published in the ECR, paragraph 40, and judgment of 21 January 2009 in Case T-�307/07 Hansgrohe v OHIM (AIRSHOWER), not published in the ECR, paragraph 23). The attention of the target public is also taken into account in the context of the analysis of the absolute grounds for refusal to register (see, to that effect, Case T-320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-�3411, paragraphs 38 to 46).

22 Finally, it follows from settled case-law that registration of a word sign must be refused if at least one of its possible meanings designates a characteristic of the goods or services concerned (OHIM v Wrigley, cited in paragraph 18 above, paragraph 32, and order in Case C-�326/01 P Telefon & Buch v OHIM [2004] ECR I-�1371, paragraph 28; Case T-�387/03 Proteome v OHIM (BIOKNOWLEDGE) [2005] ECR II-�191, paragraph 32).

23 In the present case, since the mark applied for consists of an English term and since the goods to which it relates are devices for the surgical treatment of aneurysms, it follows that the relevant public, by reference to which the absolute ground for refusal must be assessed, is made up of highly specialised English-speaking professionals who are particularly well informed and attentive.

24 It is therefore necessary to examine whether, in accordance with the case-law cited in paragraphs 18 to 22 above, there is, from the point of view of the relevant public thus defined, a sufficiently direct and specific relationship between the sign at issue and the goods concerned.

25 As the Board of Appeal indicated in paragraph 22 of the contested decision, it is apparent from the Oxford English Dictionary that an aneurysm is a morbid dilatation of an artery, due to disease in the arterial coats or to a tumour caused by their rupture.

26 It is common ground between the parties that one of the methods for treating an aneurysm is to insert through the groin up into the brain, via a stent, a pipe-like device which resembles a tiny metal Chinese finger cuff, which has the effect of redirecting the flow of blood in order to help seal off the hole in the artery.

27 In this regard, it is true that the word ‘pipeline’ certainly does not evoke in the mind of an average English-speaking consumer a device used for the treatment of the pathology described above, but rather installations for the long-distance conveyance of certain hydrocarbons. However, that public is not relevant in the present case. As the Board of Appeal rightly stated in paragraph 30 of the contested decision, a medical professional specialising in the treatment of aneurysms will immediately understand the word ‘pipeline’, as used in the context of his specialisation, as being a direct and specific indication of the characteristics of the goods in question.

28 Indeed, such a medical professional will understand without much difficulty that the product designated by the mark applied for has the purpose, in the same way as a pipeline for oil or gas, of allowing blood to move to a part of the human body. Furthermore, and contrary to what the applicant claims, professional training and experience will allow the relevant public more easily to understand the descriptive connotations of the mark applied for.

29 The holder of such a mark would thus prevent the other producers of devices of the same or similar nature from using the same sign to describe their functioning or characteristics and could also mislead the relevant public with regard to their origin.

30 The other arguments put forward by the applicant cannot call that assessment into question.

31 First, in relation to the applicant’s argument that the word ‘pipeline’ has other meanings which are not descriptive of the goods at issue and, also, that that word is not currently used to describe the product in question, suffice it to point out that it is clear from established case-law that a word sign must be refused registration under Article 7(1)(c) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (OHIM v Wrigley, cited in paragraph 18 above, paragraph 32, and order in Telefon & Buch v OHIM, cited in paragraph 22 above, paragraph 28).

32 Second, the applicant claims that there are other generic terms used in medicine to designate the type of product at issue, in particular the word ‘catheter’, and that the word ‘pipeline’ therefore has no descriptive meaning. It must be borne in mind that it is irrelevant whether there are other more usual signs or indications for designating the same characteristics of the goods or services referred to in the application for registration than those of which the mark concerned consists. Although Article 7(1)(c) of Regulation No 207/2009 provides that, if the ground for refusal set out there is to apply, the mark must consist ‘exclusively’ of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not, by contrast, require that those signs or indications should be the only way of designating such characteristics (see, by analogy, Case C-�363/99 Koninklijke KPN Nederland [2004] ECR I-�1619, paragraphs 57 and 101).

33 Third, so far as concerns the effect of the article published in the Chicago Tribune, suffice it to state that it is apparent from a reading of that article, and in particular from the expressions ‘device commonly called the Pipeline’, ‘[t]hat creates a bridge or a pipeline’, or ‘[s]ince the pipeline device is made of tightly woven metal’, that the usage in that context of the word ‘pipeline’ does not in any way refer to a particular commercial origin, let alone a producer, but serves to describe an innovative device for the treatment of aneurysms.

34 Furthermore, it is apparent from a reading of the article in question that the applicant’s contention that that article merely reflects the words of a patient, and not those of a specialist, has no basis in fact. On the one hand, the article is not uniquely based on the words of a patient and, on the other, even though the article mentions the patient’s words, that article refers to the statements of a doctor.

35 Fourth, and finally, the argument that the Board of Appeal, in paragraph 27 of the contested decision, substituted its own view for that of a medical expert cannot be accepted. Even though the first sentence of that paragraph, in stating that ‘the Board sees no reason not to consider the applicant’s product as a pipeline covered by the abovementioned definition, namely a long pipe for conveying oil, gas, etc. over a distance’, could lead to confusion, it is important to read it in the light of the entire statement of reasons for the contested decision, as follows, in particular, from paragraphs 15 to 18, 21, 24 and 29, from which it is abundantly clear that the Board of Appeal examined the descriptive character of the mark applied for from the point of view of the relevant public, that is to say, medical professionals specialising in the treatment of aneurysms.

36 It follows that the first plea in law must be rejected.

The second plea in law: breach of Article 75 of Regulation No 207/2009

Arguments of the parties

37 By its second plea, the applicant claims, in essence, that, in ignoring the argument that the correct name of the device at issue is a ‘catheter’, the Board of Appeal infringed its obligation to examine all the arguments put forward by the applicant in its application.

38 OHIM disputes the merits of this plea of the applicant.

Findings of the Court

39 It must be borne in mind that, under Article 75 of Regulation No 207/2009, decisions of OHIM must state the reasons on which they are based. That obligation has the same scope as that enshrined in Article 296 TFEU. It is settled case-law that the statement of reasons required under Article 296 TFEU must set out clearly and unequivocally the reasoning of the body which adopted the act in question. That duty has two purposes: first, to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and, second, to enable the European Union Courts to exercise their power to review the legality of that act. Whether a statement of reasons satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see, to that effect, Case T-�7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-�3085, paragraph 73 and case-law cited).

40 It follows that, when OHIM refuses registration of a sign as a Community trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal, absolute or relative, which precludes that registration and the provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify application of the provision relied on. Such a statement of reasons is, in principle, sufficient to satisfy the requirements set out in the preceding paragraph (see, to that effect, Case T-�304/06 Reber v OHIM - Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-�1927, paragraph 46).

41 However, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (Mozart, cited in paragraph 40 above, paragraph 55).

42 It is in the light of those considerations that the Court will examine whether this plea is well founded.

43 In the present case, it should be noted that the Board of Appeal, in paragraph 29 of the contested decision, found that the word ‘pipeline’ contained, at least for the relevant public, that is to say, particularly well-informed medical professionals, obvious and direct information on the kind of goods at issue. It concluded that the mark applied for was descriptive and had therefore to be refused registration, in accordance with Article 7(1)(c) of Regulation No 207/2009. Such a conclusion, based on the analysis of the term as set out in paragraphs 14 to 30 of the contested decision, necessarily renders ineffective the argument that the term ‘catheter’ constitutes a generic name to describe the goods at issue. Indeed, first, the analysis of the Board of Appeal turns on the description of the term ‘pipeline’ in relation to the goods referred to in the application for registration and, second, the existence of another term which may, where appropriate, also designate some or all of those goods is neither such as to call into question the descriptive character of the mark applied for, as established by the Board of Appeal, nor such as to preclude its registration, in accordance with the case-law cited in paragraph 32 above.

44 In view of the foregoing, it must be held that the reasoning outlined by the Board of Appeal rules out, admittedly by implication, but necessarily, the argument put forward by the applicant, with the result that the contested decision meets the requirements as to the statement of reasons referred to in paragraphs 39 to 41 above.

45 It follows that the second plea in law must also be rejected, and the action therefore dismissed in its entirety.

Costs

46 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1. Dismisses the action;

2. Orders Chestnut Medical Technologies, Inc. to pay the costs.

Forwood

Schwarcz

Popescu

Delivered in open court in Luxembourg on 11 October 2011.

[Signatures]

* Language of the case: English.