Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE COURT (Ninth Chamber)

22 November 2018 (*)

(EU trade mark — Application for the EU work mark STRAIGHTFORWARD BANKING — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EU) 2017/1001)

In Case T‑9/18,

Addiko Bank AG, established in Vienna (Austria), represented by A. Seling, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and D. Walicka, acting as Agents,

defendant,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 25 October 2017 (Case R 1090/2017-2), relating to an application for registration of the word sign STRAIGHTFORWARD BANKING as an EU trade mark,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 8 January 2018,

having regard to the response lodged at the Court Registry on 27 March 2018,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 6 December 2016, the applicant, Addiko Bank AG, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the word sign STRAIGHTFORWARD BANKING.

3        The services in respect of which registration was sought fall within, inter alia, Class 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Financial affairs; monetary affairs’.

4        By decision of 24 March 2017, the examiner refused to register the mark applied for in respect of the services referred to in paragraph 3 above on the basis of Article 7(1)(b) and (c) and (2) of Regulation No 207/2009 (now Article 7(1)(b) and (c) and (2) of Regulation 2017/1001).

5        On 19 May 2017, the applicant filed a notice of appeal at EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the examiner’s decision.

6        By decision of 25 October 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal brought on the basis of Article 7(1)(b) and (c) and (2) of Regulation 2017/1001. More specifically, first, it found that the words ‘straightforward banking’ designate objectively the kind and quality of services in question. Second, it found that the mark applied for would be understood as a promotional message and not as an indication of the commercial origin of the services in question.

 Forms of order sought

7        The applicant contends that the Court should:

–        annul the contested decision;

–        register the mark applied for;

–        order EUIPO to pay the costs.

8        EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

9        In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of Article 7(1)(c) and, second, infringement of Article 7(1)(b) of Regulation 2017/1001.

 First plea in law: infringement of Article 7(1)(c) of Regulation 2017/1001

10      In support of that plea, the applicant puts forward, in essence, two complaints, alleging, first, that the Board of Appeal was wrong to hold that the mark applied for was not capable of identifying the commercial origin of the services concerned and, second, that the Board of Appeal infringed the principle of equal treatment by departing from the decision-making practice of EUIPO.

11      EUIPO disputes the applicant’s arguments.

 The first complaint, alleging misinterpretation of the distinctive character of the mark applied for

12      By this complaint, the applicant submits that the mark applied for is devoid of any descriptive character because, first, the word ‘straightforward’ may have several meanings and, second, the expression ‘straightforward banking’ is an unusual combination of words in light of the complexity of the services in question. It also criticises the Board of Appeal for having found that the mark applied for had a promotional character and argues that, in any event, in the banking sector, the relevant public is accustomed to perceiving descriptive terms as an indication of the origin of the services in question.

13      It must be recalled that, under Article 7(1)(c) of Regulation 2017/1001, ‘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. Article 7(2) of that regulation states that Article 7(1) shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.

14      According to the case-law, Article 7(1)(c) of Regulation 2017/1001 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (judgments of 27 February 2002, Ellos v OHIM (ELLOS), T‑219/00, EU:T:2002:44, paragraph 27, and of 2 May 2012, Universal Display v OHIM (UniversalPHOLED), T‑435/11, not published, EU:T:2012:210, paragraph 14; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).

15      Moreover, signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation 2017/1001, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquires the goods or services designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 2 May 2012, UniversalPHOLED, T‑435/11, not published, EU:T:2012:210, paragraph 15; see also, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).

16      It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE), T‑458/13, EU:T:2014:891, paragraph 16 and the case-law cited).

17      However, for EUIPO to refuse registration of a trade mark on the basis of Article 7(1)(c) of Regulation 2017/1001, it is not necessary that the signs and indications referred to in that article, of which the mark is made up, actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application has been submitted, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 32).

18      Finally, it must be recalled that the descriptiveness of a sign may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (see judgment of 7 June 2005, Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 26 and the case-law cited).

19      In the present case, first, it must be pointed out that the applicant does not challenge the definition of the relevant public, as correctly determined by the Board of Appeal, according to which the relevant public for the purposes of the perception of the descriptive character of the mark applied for is the English-speaking public in the European Union, composed, inter alia, of the general public.

20      Secondly, it should be noted that the Board of Appeal correctly held that the mark applied for would be understood by the relevant public as making reference to the simplicity of the services provided by the applicant.

21      It must therefore be held that the mark applied for will be perceived as a promotional formula for the quality of the services in question, since, as the applicant observes, the fact that those services are easy to use constitutes a ‘desirable’ quality of them.

22      It follows that the mark applied for is such as to designate the quality of the services in question, with the result that the Board of Appeal rightly held that this mark had a descriptive character within the meaning of Article 7(1)(c) of Regulation 2017/1001.

23      That conclusion cannot be invalidated by the applicant’s arguments.

24      First, the fact that the relevant public will perceive the expression ‘straightforward banking’, not as meaning that the banking services are simple, but as meaning that the applicant will seek to provide services relating to financial and monetary affairs in an understandable way, even though they are complex, does not confer on that term an unusual character capable of indicating the commercial origin of the services in question.

25      Secondly, it should be recalled that, having regard to the case-law cited in paragraph 17 above, the fact, if proved, (i) that the expression ‘straightforward banking’ has never been used before the submission of the application for registration in a way that is descriptive of the services at issue and (ii) that the word ‘straightforward’ may have several meanings, is not in itself sufficient to conclude that the mark applied for is devoid of any descriptive character, since, as is apparent from paragraph 22 above, that mark may, in at least one of its possible meanings, designate a characteristic, within the meaning of Article 7(1)(c) of Regulation 2017/1001, of the services in question.

26      Thirdly, it must be pointed out that, in accordance with the case-law cited in paragraph 15 above, descriptive marks within the meaning of Article 7(1)(c) of Regulation 2017/1001 are deemed incapable of performing their essential function, namely that of identifying the commercial origin of the goods or services at issue; moreover, there is no exception in that respect with regard to the banking sector.

27      In the present case, it follows from paragraphs 21 and 22 above that the mark applied for refers to a quality commonly sought by the relevant public concerning the services at issue; as a result, that mark is not capable of specifically identifying the applicant as the commercial origin of those services.

28      Consequently, the applicant cannot validly rely on the argument that, in the banking sector, descriptive marks are, in principle, capable of indicating the commercial origin of the services which they cover.

29      Therefore, it is necessary to reject the first complaint of the first plea in law.

 The second complaint, alleging failure to observe the decision-making practice of EUIPO

30      By this complaint, the applicant submits that the Board of Appeal breached the principle of equal treatment by departing from the decision-making practice of EUIPO according to which, in the banking sector, it should be considered that the relevant public perceives marks with a descriptive character as an indication of the commercial origin of the services in question.

31      In that regard, it should be noted that, in accordance with settled case-law, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, having regard to the principles of equal treatment and of sound administration, EUIPO must take into account the decisions previously taken in respect of similar applications and consider with special care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered or annulled. Accordingly, such an examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 76). Furthermore, in its review of legality, the Court is not bound by EUIPO’s decision-making practice (see, to that effect, judgment of 3 September 2015, iNET 24 Holding v OHIM (IDIRECT 24), T‑225/14, not published, EU:T:2015:585, paragraph 60 and the case-law cited).

32      In the present case, as is apparent from paragraphs 19 to 29 above, the Board of Appeal correctly held the mark applied for was caught by the ground for refusal laid down in Article 7(1)(c) of Regulation 2017/1001, with the result that the applicant cannot successfully rely on previous decisions of EUIPO in order to invalidate that conclusion.

33      It follows that the fact that EUIPO has held that descriptive marks were capable of indicating the commercial origin of the services which they cover does not lead to the conclusion that the Board of Appeal, in the present case, infringed Article 7(1)(c) of Regulation 2017/1001.

34      Therefore, it is necessary to reject the second complaint of the first plea in law and, accordingly, to reject the first plea in law in its entirety.

 Second plea in law: infringement of Article 7(1)(b) of Regulation 2017/1001

35      The applicant argues that the mark applied for is sufficiently distinctive to identify the services that it covers as originating from a specific undertaking.

36      EUIPO disputes the applicant’s arguments.

37      It should be noted that, as is clear from Article 7(1) of Regulation 2017/1001, it is sufficient that one of the absolute grounds for refusal applies for the sign at issue not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 7 October 2015, Cyprus v OHIM(XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 74).

38      Consequently, since, as is apparent from paragraphs 22 and 33 above, the Board of Appeal rightly considered that the sign applied for had a descriptive character within the meaning of Article 7(1)(c) of Regulation 2017/1001 and that in itself justifies the refusal of the contested registration, there is no need, in the present case, to consider the merits of the plea alleging infringement of Article 7(1)(b) of that regulation (see, to that effect, order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 28).

39      Therefore, it follows from the foregoing that the second plea in law must be rejected as ineffective and the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.

 Costs

40      Under Article 134(1) 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 EUIPO.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Addiko Bank AG to pay the costs.

Delivered in open court in Luxembourg on 22 November 2018.

*      Language of the case: English.

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