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

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

23 September 2020 (*)

(EU trade mark – Invalidity proceedings – EU figurative mark Wi-Fi Powered by The Cloud – Absolute grounds for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – No descriptive character – Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001))

In Case T‑738/19,

Clouds Sky GmbH, established in Cologne (Germany), represented by C. Weil, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by L. Rampini and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

The Cloud Networks Ltd, established in London (United Kingdom),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 2 September 2019 (Case R 696/2019-5) relating to invalidity proceedings between Clouds Sky and The Cloud Networks,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and B. Berke, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 4 November 2019,

having regard to the response lodged at the Court Registry on 19 March 2020,

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 24 September 2010, the other party to the proceedings before the Board of Appeal of EUIPO, The Cloud Networks Ltd, 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 following figurative sign:

3        The goods and services in respect of which registration was sought are in, inter alia, Classes 9, 28, 38 and 41 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, for each of those classes, to the following description:

–        Class 9: ‘Electronic, electrical apparatus and instruments for the input, storage, processing and transmission of data; digital apparatus and instruments; electronic games; cinematographic, signalling and measuring apparatus and instruments; fault finding apparatus and instruments; data processing, storage and retrieval apparatus and instruments; computer apparatus and instruments; computer software; computer peripherals; networking apparatus and instruments; telecommunications, communications and satellite apparatus and instruments; electronic, electrical and digital entertainment, music, video and gaming apparatus and instruments; televisions; radios; visual and audio recording and reproduction apparatus and instruments; gaming apparatus and instruments; mobile telephone ring tones (downloadable); videos, CDs, DVDs, CD-ROMs, tapes and cassettes; electronic, digital and magnetic media and data storage, reproduction and retrieval apparatus and instruments; electronic publications; juke boxes; automatic vending apparatus and instruments; coin-operated apparatus and instruments; parts and fittings for all of the aforesaid goods’;

–        Class 28: ‘Gambling apparatus and instruments’;

–        Class 38: ‘Telecommunications, communications, satellite and digital communications services; telecommunication services for the provision and down-loading of mobile telephone ring tones and of television, radio, film, video and audio material; networking services; internet service provider services; provision of communication services enabling commerce to be conducted over networks and the internet; television, satellite, digital and radio broadcasting, transmission and diffusion services; rental of telecommunications, communications, digital and satellite communications apparatus and instruments; advice, information and consultancy services relating to all of the aforesaid services’;

–        Class 41: ‘Entertainment services; leisure, sport and cultural services; provision of leisure activities; provision of sports and cultural activities; rental of electronic, electrical and digital entertainment, video, music, gaming, gambling and sports apparatus and instruments; education and training services; gaming, gambling and lottery services; provision and commission of television and radio programmes and videos; publishing services; advice, information and consultancy services relating to all of the aforesaid services’.

4        The EU trade mark application was published in the Community Trade Marks Bulletin of 25 October 2010 and the mark was registered on 7 February 2011.

5        On 20 June 2016, the applicant, Clouds Sky GmbH, filed an application for a declaration of invalidity of the registered mark with EUIPO. That application was based inter alia on the grounds set out in Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001), in respect of all the goods and services referred to in paragraph 3 above.

6        By decision of 29 January 2019, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. In essence, it found that the applicant had not provided sufficient evidence to show that the contested mark, taken as a whole, was descriptive on the date of filing the application for registration at issue and thus devoid of distinctive character within the meaning of Article 7(1)(b) and (c) of Regulation No 207/2009.

7        On 27 March 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

8        By decision of 2 September 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the decision of the Cancellation Division and dismissed the applicant’s appeal. First, it found that the evidence submitted by the applicant did not make it possible to establish the descriptiveness of the contested mark at the time of filing the application for registration at issue, namely on 24 September 2010, with the result that that mark could not be regarded as falling within the scope of the prohibition laid down by Article 7(1)(c) of Regulation 2017/1001. Second, according to the Board of Appeal, in so far as the applicant had claimed that the contested mark was devoid of distinctive character in relation to all the goods and services covered by it on account of its descriptive character, that mark could not be regarded as falling within the scope of the prohibition in Article 7(1)(b) of that regulation either. The Board of Appeal thus concluded that the applicant had failed to demonstrate to the requisite legal standard that the presumption of validity enjoyed by the mark at issue, in accordance with the case-law interpreting Article 59(1)(a) and Article 62 of that regulation, could be overturned.

 Forms of order sought

9        The applicant claims that the Court should:

–        alter the contested decision to the effect that the contested mark is declared invalid;

–        order EUIPO to pay the costs.

10      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

11      As a preliminary point, it should be noted that, by its first head of claim, the applicant formally seeks the alteration of the contested decision without seeking the annulment of that decision of the Board of Appeal. In that regard, it must nevertheless be considered that it follows from the content of the application that that claim for alteration also necessarily includes claims for annulment and that, by the present action, the applicant seeks, in essence, the annulment and the alteration of the contested decision, on the ground, inter alia, that the Board of Appeal erred in concluding that the applicant had failed to demonstrate to the requisite legal standard that the contested mark had to be declared invalid pursuant to ‘Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation’ (see, to that effect, judgment of 22 May 2019, Andrea Incontri v EUIPO – Higicol (ANDREA INCONTRI), T‑197/16, not published, EU:T:2019:347, paragraph 19 and the case-law cited).

 The ratione temporis application of the EU Trade Mark Regulations

12      It should be noted, first, that the application for registration of the contested mark was made on 24 September 2010, under Regulation No 207/2009, so far as concerns the provisions relevant to the present dispute. Second, the decision of the Cancellation Division and the contested decision were taken on 29 January and 3 September 2019 respectively, under Regulation 2017/1001, which entered into force on 1 October 2017. In paragraph 10 of the contested decision, the Board of Appeal stated that all references to the ‘EUTMR’ in that decision referred, unless specifically stated otherwise, to Regulation 2017/1001, codifying Regulation No 207/2009 as amended. The parties, in their respective written pleadings, also refer to the provisions of Regulation 2017/1001, in particular Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation.

13      It must be borne in mind that, according to settled case-law, procedural rules are generally taken to apply from the date on which they enter into force, as opposed to substantive rules, which are usually interpreted as applying to situations established before their entry into force only in so far as it clearly follows from their terms, their objectives or their general scheme that such an effect must be given to them (see judgment of 6 June 2019, Torrefazione Caffè Michele Battista v EUIPO – Battista Nino Caffè (BATTISTINO), T‑221/18, not published, EU:T:2019:382, paragraph 19 and the case-law cited). Furthermore, the determinative date for the purposes of identifying the applicable substantive law is the date on which the application for registration was made (judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

14      Consequently, since it does not follow from the terms, objectives or general scheme of the relevant substantive rules of Regulation 2017/1001 that they are intended to apply to situations established before their entry into force, the substance of the present dispute is governed by the provisions of Regulation No 207/2009.

15      Admittedly, both the Board of Appeal, in the contested decision, and the parties, in their written submissions, refer to the provisions of Regulation 2017/1001. Nevertheless, the references in the contested decision to that regulation can be understood as referring to the corresponding provisions of Regulation No 207/2009 as amended, without affecting the legality of the contested decision (see, to that effect, judgment of 6 June 2019, BATTISTINO, T‑221/18, not published, EU:T:2019:382, paragraph 22), given that the content of those provisions has not been affected by the entry into force of Regulation 2017/1001. Furthermore, the Court must, according to the case-law, interpret the parties’ written submissions in terms of their substance rather than of their classification (see, by analogy, judgment of 6 June 2019, BATTISTINO, T‑221/18, not published, EU:T:2019:382, paragraph 23 and the case-law cited). Accordingly, the pleas in law raised by the applicant must be regarded as alleging, first, infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof, and, second, infringement of Article 52(1)(a) of that regulation, read in conjunction with Article 7(1)(b) thereof.

 Admissibility

16      EUIPO submits that Annexes 4 to 12 to the application must be dismissed as inadmissible, since they were produced for the first time before the Court.

17      In that regard, it must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of evidence produced for the first time before it (see judgment of 13 May 2020, Global Brand Holdings v EUIPO (XOXO), T‑503/19, not published, EU:T:2020:183, paragraph 20 and the case-law cited).

18      The review of legality must therefore be carried out in the light solely of the evidence which was produced during the administrative proceedings before EUIPO as it appears in the latter’s case file (see judgment of 13 May 2020, Divaro v EUIPO – Grendene (IPANEMA), T‑288/19, not published, EU:T:2020:201, paragraph 70).

19      In the present case, the documents contained in the annexes in question, intended to substantiate, in essence, the descriptiveness of the element ‘the cloud’ of the contested mark in relation to the goods and services covered by it, were not produced by the applicant in the administrative proceedings before EUIPO, but were produced for the first time before the Court. Those documents, being printouts of pages of websites and specialist bibliographic publications, could have been produced before EUIPO.

20      In those circumstances, the annexes in question must be declared inadmissible, in accordance with the case-law cited in paragraphs 17 and 18 above, without it being necessary to examine their probative value.

 Substance

21      The applicant raises two pleas in law, the first alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof, and the second alleging infringement of Article 52(1)(a) of that regulation, read in conjunction with Article 7(1)(b) thereof.

 The first plea, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) thereof

22      The applicant submits, in essence, that the Board of Appeal erred in finding in the contested decision that the contested mark was not descriptive of the goods and services covered by it at the time of filing the application for registration at issue.

23      First of all, the applicant states that the element ‘the cloud’ of the contested mark refers to a model of the use of IT resources on the internet known as ‘cloud computing’, which has existed since the 1970s and enables ubiquitous, convenient, on-demand network access to a shared pool of configurable computing resources.

24      Next, the applicant submits that the relevant public consists of English-speaking consumers and professionals in the IT field. According to the applicant, in view of the goods and services covered by the contested mark, those average consumers will establish a direct and specific link between the element ‘the cloud’ of that mark and the goods and services, which they will also understand to be associated with or provided by cloud computing.

25      Furthermore, the applicant considers that the common use of the expression ‘the cloud’ as a reference to cloud computing and the descriptiveness of that expression at the time of filing the contested mark are apparent from the extract from the Wikipedia encyclopaedia dated 1 March 2016, which it produced as evidence in the proceedings before EUIPO.

26      Lastly, the applicant submits that, in addition to the element ‘the cloud’, the element ‘wi-fi powered by’ of the contested mark is also descriptive of the goods and services covered by it. In that regard, it notes that the term ‘wi-fi’ refers to a wireless network. It also notes that the element ‘wi-fi powered by’ is written in smaller letters and in a lighter colour than the element ‘the cloud’. In addition, those word elements are framed by a cloud, which is in turn descriptive of the element ‘the cloud’.

27      EUIPO contests those claims.

28      Under Article 52(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid, in particular on application to EUIPO, where it has been registered contrary to the provisions of Article 7 of that regulation.

29      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’ are not to be registered.

30      Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 27 June 2017, Aldi Einkauf v EUIPO – Fratelli Polli (ANTICO CASALE), T‑327/16, not published, EU:T:2017:439, paragraph 17 and the case-law cited).

31      It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 207/2009, there must be a sufficiently direct and specific link between the sign and the goods or services at issue to enable the public concerned immediately to perceive, without further thought, a description of the goods or services or one of their characteristics (see judgment of 27 June 2017, ANTICO CASALE, T‑327/16, not published, EU:T:2017:439, paragraph 18 and the case-law cited).

32      Accordingly, descriptive character must be assessed, first, by reference to the goods and services in respect of which registration was sought and, second, by reference to the perception of the relevant public (see judgment of 27 June 2017, ANTICO CASALE, T‑327/16, not published, EU:T:2017:439, paragraph 19 and the case-law cited).

33      The applicant’s arguments must be assessed in the light of those considerations.

34      As a preliminary point, as regards the relevant public, it must be stated, as the Board of Appeal found in paragraph 22 of the contested decision, that the goods and services at issue are directed at the public at large as well as professionals, including professionals in the field of computer technology. That public’s level of attention may therefore vary, as the Board of Appeal also correctly stated, from average to high, depending on the price and sophistication of the goods and services offered. Furthermore, since the contested mark consists of English words, the Board of Appeal was correct to find, in paragraph 23 of that decision, that the assessment of its descriptiveness had to be made with regard to English-speaking consumers in the European Union, which is not, moreover, disputed by the applicant.

35      As regards the question whether the relevant public will perceive the contested mark as being descriptive in relation to the goods and services at issue, it should be noted, first of all, as the Board of Appeal stated in paragraph 31 of the contested decision, that the mark consists of the word elements ‘wi-fi powered by’ and ‘the cloud’, arranged on two lines, in which the first word element is depicted in a smaller font size than the second element. Those word elements are also contained in a figurative element in the shape of a cloud.

36      Lastly, as correctly noted by the Board of Appeal in paragraph 18 of the contested decision, in accordance with Articles 52 and 55 of Regulation No 207/2009, an EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. The contested mark therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration. In those circumstances, it is for the person who has filed the application for a declaration of invalidity to place before EUIPO the specific facts which call the validity of the contested mark into question, such as, for example, its alleged descriptiveness (see, to that effect, judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraphs 27 to 29).

37      In the present case, in order to substantiate its argument as to the descriptiveness of the element ‘the cloud’ of the contested mark, the applicant produced an extract from the online encyclopaedia Wikipedia, dated 1 March 2016, on cloud computing, according to which, in essence, the expression ‘the cloud’ has been used since the 1970s to refer to a model of the use of IT resources on the internet which makes it possible to share data over a network with computers and other devices on-demand.

38      It should be noted in that regard that, according to the case-law, while, admittedly, references to certain online databases, such as the Wikipedia encyclopaedia, may be used to demonstrate the descriptiveness of a sign, such information can be accepted only if it has confirmatory value and simply corroborates information from other sources, such as scientific studies, extracts from technical publications, press articles and statements from professionals, traders and consumers (see, to that effect, judgment of 25 September 2018, EM Research Organization v EUIPO – Christoph Fischer and Others (EM), T‑180/17, not published, EU:T:2018:591, paragraph 79).

39      In the present case, the extract from the Wikipedia encyclopaedia is the only evidence produced by the applicant during the administrative proceedings before EUIPO. It must therefore be held, as the Board of Appeal found in paragraph 33 of the contested decision, that that extract has no confirmatory value, nor is it intended to corroborate information from other sources, as required by the case-law cited in paragraph 39 above. In those circumstances, even supposing, as the applicant claims, that the element ‘the cloud’ of the contested mark is an expression which has become increasingly well known in the field of computer technology and telecommunications since the 1970s when referring to goods or services provided on the internet, such a claim cannot be regarded as having been duly substantiated.

40      It follows that, as the Board of Appeal correctly found in paragraph 34 of the contested decision, it cannot be inferred from the single piece of evidence submitted by the applicant in the administrative proceedings before EUIPO that the relevant public would immediately perceive, without further thought, the element ‘the cloud’ of the contested mark as a description of cloud computing at the time of filing the application for registration at issue or as a reference to one of the characteristics of the goods or services at issue. Moreover, as the Board of Appeal also correctly noted, the filing date predates the extract provided by the applicant by more than five years. Taking into account the constant developments of technology in the field of computing and telecommunications, a gap of more than five years between the filing date and the publication date of the extract provided by the applicant does not allow the conclusion to be drawn that the relevant public would have perceived the element in question as a descriptive reference to the goods and services at issue on the filing date.

41      It follows that the Board of Appeal did not err in finding, in paragraph 35 of the contested decision, that the evidence submitted by the applicant did not make it possible to establish the descriptiveness of the contested mark at the time of filing the application for registration at issue with regard, in particular, to the element ‘the cloud’ of that mark.

42      Moreover, it should be noted, in the first place, that most of the arguments put forward by the applicant, both before EUIPO and before the Court, are intended to show that the element ‘the cloud’ of the contested mark invites consumers to believe that all the goods and services covered by that mark fall within the field of cloud computing.

43      In that regard, it must be recalled that, as regards trade marks which consist of several elements, descriptiveness may be assessed, in part, in relation to each of those elements, taken separately, but must, in any event, also be established in relation to the whole which they comprise (see, to that effect, judgment of 19 December 2019, Südwestdeutsche Salzwerke v EUIPO (Bad Reichenhaller Alpensaline), T‑69/19, not published, EU:T:2019:895, paragraph 22 and the case-law cited).

44      In the present case, while the applicant claims that, first, the element ‘wi-fi powered by’ of the contested mark, as a reference to wireless networks, and, second, the figurative element of that mark representing a cloud, as a reference to cloud computing, are both descriptive individually, it does not put forward any evidence making it possible to find that that mark, taken as a whole, was perceived by the relevant public as descriptive of the characteristics of the goods and services at issue at the time of filing the application for registration at issue. In that regard, it must be stated, as noted by EUIPO, that the applicant has failed to explain and demonstrate how the meaning of the sign as a whole was capable of showing the description of those goods or services or one of their characteristics.

45      In particular, the applicant has not explained how the relevant public, on the date of filing the application for registration at issue, would perceive all the components of the contested mark, taken as a whole, as a mere indication of the kind, quality or intended purpose of those goods or services or to what extent the relevant public would immediately and without further thought associate all those elements with cloud computing. Furthermore, it should be noted, as observed by EUIPO, that, by merely referring to the goods and services at issue without distinguishing between them on the basis of their nature or purpose by defining at least specific categories, the applicant also failed to specify which goods or services, among all those covered by the contested mark, were described by that mark or had one or more characteristics described by it.

46      It follows that the applicant has not demonstrated that there was, at the time of filing the application for registration at issue, a sufficiently direct and specific link between the contested mark and the goods or services in respect of which registration of that mark was sought to enable the relevant public immediately to perceive, without further thought, a description of the goods and services at issue or one of their characteristics within the meaning of the case-law cited in paragraph 31 above.

47      In the second place, as regards the case-law relied on by the applicant, inter alia the judgments of 28 October 2009, Juwel Aquarium v OHIM – Potschak (Panorama) (T‑339/07, not published, EU:T:2009:415), of 19 May 2010, Ravensburger v OHIM – Educa Borras (Memory) (T‑108/09, not published, EU:T:2010:213), and of 12 November 2014, Murnauer Markenvertrieb v OHIM – Healing Herbs (NOTFALL) (T‑188/13, not published, EU:T:2014:942), it is sufficient to note, as the Board of Appeal noted in paragraph 38 of the contested decision, that the factual situations underlying the cases that gave rise to those judgments are different to those of the case at hand, given that those judgments relate to trade marks consisting of a single word, the meaning of which is clear and directly descriptive of an important characteristic of the goods and services in question, and that, even if such judgments all concern cases in which trade marks have been declared invalid, in particular because of their descriptiveness, the applicant does not explain how such judgments would be relevant for the purposes of assessing the descriptiveness of the contested mark in the present case.

48      In the light of the foregoing, the Board of Appeal did not err in finding that the evidence submitted by the applicant did not make it possible to establish the descriptiveness of the contested mark as a whole at the time of filing the application for registration at issue and that, consequently, that mark could not be regarded as falling within the scope of the prohibition laid down by Article 7(1)(c) of Regulation 2017/1001.

49      The first plea in law must be rejected.

 The second plea, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) thereof

50      The applicant submits that, since the contested mark is descriptive in relation to the goods and services at issue, the mark is also devoid of any distinctive character in relation to those goods and services. Furthermore, it again claims that the descriptiveness of that mark is derived from the fact that the expression ‘the cloud’ has been commonly used on the internet since the 1970s.

51      EUIPO disputes those arguments.

52      According to settled case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services 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 (judgments of 3 July 2003, Best Buy Concepts v OHIM (BEST BUY), T‑122/01, EU:T:2003:183, paragraph 20; of 21 January 2011, BSH v OHIM (executive edition), T‑310/08, not published, EU:T:2011:16, paragraph 23; and of 23 January 2014, Novartis v OHIM (CARE TO CARE), T‑68/13, not published, EU:T:2014:29, paragraph 12).

53      It also follows from the case-law that a descriptive mark for the purposes of Article 7(1)(c) of Regulation No 207/2009 is devoid of any distinctive character and is also caught by Article 7(1)(b) of that regulation, on the ground that a descriptive mark is necessarily devoid of any distinctive character (see judgment of 5 February 2015, nMetric v OHIM (SMARTER SCHEDULING), T‑499/13, not published, EU:T:2015:74, paragraph 21 and the case-law cited).

54      The applicant argued before the Board of Appeal that, since the contested mark was descriptive of the goods and services covered by that mark, it was also devoid of distinctive character. For its part, in paragraph 40 of the contested decision, the Board of Appeal found, in essence, that that argument had to be rejected, since the contested mark had not been found to be descriptive.

55      In that regard, it is sufficient to recall that, in accordance with the case-law cited in paragraph 37 above, it is for the person who has filed the application for a declaration of invalidity to place before EUIPO the specific facts which call the validity of the contested mark into question.

56      In the present case, the applicant merely claimed, under the present plea, that the descriptiveness of the contested mark for the purposes of Article 7(1)(c) of Regulation No 207/2009 should have led the Board of Appeal to find that that mark was also devoid of any distinctive character, within the meaning of Article 7(1)(b) of that regulation. However, it follows from the analysis carried out under the first plea that the Board of Appeal did not err in finding that the evidence submitted by the applicant did not make it possible to establish the descriptiveness of that mark.

57      Accordingly, in the light of the arguments put forward by the applicant and in so far as the descriptiveness of the contested mark had not been duly demonstrated, the Board of Appeal did not err in law in not finding that the contested mark lacked distinctive character.

58      As to the remainder, although the applicant claims that the expression ‘the cloud’ has been used very often on the internet since the 1970s, it is sufficient to refer to the finding in paragraph 40 above that the applicant has failed to substantiate the content of such a claim. Furthermore, in so far as, by the present plea, the applicant suggests that the contested mark should have been regarded by the Board of Appeal as a descriptive neologism, it is sufficient to refer to the considerations set out in paragraph 46 above, according to which the applicant has not demonstrated that there was, at the time of filing the application for registration at issue, a sufficiently direct and specific link between the contested mark and the goods or services in respect of which registration was sought.

59      In the light of the foregoing, it must be held that the Board of Appeal did not err in law in finding that the contested mark could not be regarded as falling within the prohibition in Article 7(1)(b) of Regulation No 207/2009 either.

60      The second plea must be rejected.

61      Since none of the pleas in law put forward by the applicant is well founded, the claims for annulment of the contested decision and, consequently, the claims for alteration of that decision must be dismissed. The action is dismissed.

 Costs

62      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.

63      Since the applicant has been unsuccessful in the present case, it must be ordered to pay the costs incurred by EUIPO, in accordance with the form of order sought by the latter.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Clouds Sky GmbH to pay the costs.

Delivered in open court in Luxembourg on 23 September 2020.

*      Language of the case: English.

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