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

JUDGMENT OF THE GENERAL COURT (Fifth Chamber)

30 March 2022 (*)

(EU trade mark – Invalidity proceedings – International registration designating the European Union – Word mark SCRUFFS – Absolute grounds for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – Descriptiveness – Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001))

In Case T‑720/20,

Perry Street Software, Inc., established in New York, New York (United States), represented by M. Hawkins, Solicitor, and by T. Dolde, lawyer,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Toolstream Ltd, established in Yeovil (United Kingdom), represented by J. Hourigan, Solicitor,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 September 2020 (Case R 550/2020-4), relating to invalidity proceedings between Perry Street Software and Toolstream,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann (Rapporteur), President, U. Öberg and R. Mastroianni, Judges,

Registrar: J. Pichon, Administrator,

having regard to the written part of the procedure,

further to the hearing on 24 November 2021,

gives the following

Judgment

 Background to the dispute

1        On 23 July 2013, The BSS Group Ltd, the predecessor in law to the intervener, Toolstream Ltd, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration No 1171590, designating the European Union, in respect of the word mark SCRUFFS. That registration, which had the priority date of 25 January 2013, on which the application for registration had been filed, was notified to 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        The goods in respect of which registration was sought are in Classes 9 and 25 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: ‘Protective clothing, footwear and headgear; protective work clothing, footwear and headgear; clothing, footwear and headgear for protection against injury or accident; safety clothing, footwear and headgear; safety work clothing, footwear and headgear; clothing, footwear and headgear for prevention of injury or accident’;

–        Class 25: ‘Clothing, footwear, headgear; articles of workwear’.

3        On 20 October 2017, the applicant, Perry Street Software, Inc., filed an application for a declaration that that mark was invalid in respect of all of the goods referred to in paragraph 2 above on the basis of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation.

4        On 13 February 2020, the Cancellation Division of EUIPO rejected the application for a declaration of invalidity in its entirety, finding that the contested mark was neither descriptive of the goods in respect of which it had been registered nor devoid of any distinctive character.

5        On 17 March 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against that decision on the part of the Cancellation Division.

6        By decision of 29 September 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, as regards the relevant public, it found that that public consisted of English-speaking professionals who use protective clothing and of the general public and that that relevant public displayed a level of attention which varied from average to high. It found that no reference source for the English language contained a relevant definition of the term comprising the contested mark and that neither the evidence provided by the applicant purporting to show use of that term in common parlance, nor the slang definition provided were capable of demonstrating descriptive use of that term. It therefore found that the applicant had not shown that the contested mark was descriptive of a specific characteristic of the goods in question. Furthermore, it took the view that the contested mark was not devoid of any distinctive character.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and, as the case may be, the intervener to pay the costs, including those relating to the invalidity proceedings before the Cancellation Division and before the Board of Appeal.

8        EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

9        It must be pointed out at the outset that, given the date on which the application for registration at issue was filed, namely 25 January 2013, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and 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).

10      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to the provisions of Regulation 2017/1001 must be understood as referring to the substantively identical provisions of Regulation No 207/2009.

11      Furthermore, it must be borne in mind that it is apparent from settled case-law that, for the adjudicating bodies of EUIPO, the date on which the application for registration of the mark was filed is the relevant date for the assessment of whether the absolute grounds referred to in Article 7(1) of Regulation No 207/2009 (now Article 7(1) of Regulation 2017/1001) preclude the registration of a mark or must result in a previously registered mark being declared invalid (see judgment of 8 May 2019, VI.TO. v EUIPO – Bottega (Shape of a golden bottle), T‑324/18, not published, EU:T:2019:297, paragraph 17 and the case-law cited).

12      In support of its action, the applicant puts forward three pleas in law, alleging (i) failure to carry out a full examination and distortion of the facts and evidence, (ii) infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) of that regulation (now Article 59(1)(a) and Article 7(1)(c) of Regulation 2017/1001 respectively) and (iii) infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) of that regulation (now Article 7(1)(b) of Regulation 2017/1001).

13      It is appropriate to examine, first, the second plea, secondly, the first plea and, thirdly, the third plea.

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

14      The applicant submits, as regards the definition of the relevant public, that that public consists of the English-speaking consumers in the European Union, which includes English speakers in the United Kingdom and in Ireland. The applicant claims, in the first place, that the Board of Appeal erred in finding that no reference source for the English language contained a relevant definition of the term ‘scruffs’. According to the applicant, that error was instrumental in the Board of Appeal’s assessment relating to the descriptiveness of the contested mark.

15      In the second place, the applicant claims that the Board of Appeal misconstrued the definition of the term ‘scruffs’ which appeared in a dictionary of slang terms which was available on the internet and from which it had provided an extract, and also distorted the evidence. In particular, it argues that there is nothing in the slang definition that it provided which could suggest that that term necessarily refers to items which are worn, old or in a devalued state. Furthermore, the applicant submits that the definition of the word ‘scruffs’ which appears in the Cambridge Dictionary clearly contradicts the Board of Appeal’s assessment, because that definition, first, refers to an intrinsic characteristic of the goods concerned and, secondly, does not necessarily refer to old clothing. In addition, the applicant claims that there is nothing in the applicable regulation that suggests that, for a mark to be descriptive, it must refer to new products. In that regard, it submits that, according to the case-law of the Court of Justice, a trade mark is capable of being put to genuine use even if its proprietor only resells second-hand goods. The applicant adds that the fact that the dictionary of slang terms which it provided contains words which may be perceived as disparaging is irrelevant for the purposes of the assessment of the descriptiveness of the contested mark.

16      In the third place, the applicant claims that it provided before the Board of Appeal comprehensive evidence from a variety of sources, such as press articles, showing that the term ‘scruffs’ is used by the relevant public in common parlance to refer to casual clothing, footwear and headgear, clothing, footwear or headgear which is worn for carrying out activities or work which is likely to get them soiled, or clothing, footwear or headgear which is used for protective purposes.

17      In the fourth place and lastly, the applicant claims that the Board of Appeal erred in finding that the term ‘scruffs’ was not synonymous with ‘loungewear’. In particular, it states that the comparison of the definitions which appear in English-language dictionaries shows that both terms refer to informal clothing designed to be worn at home and therefore have the same meaning. According to the applicant, the fact that the term ‘scruffs’ does not appear in any dictionary as synonymous with the term ‘loungewear’ cannot mean that the two words are not synonymous.

18      EUIPO and the intervener dispute the applicant’s arguments.

19      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 must not be registered. Furthermore, Article 7(2) of Regulation No 207/2009 states that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

20      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 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 thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31, and of 7 July 2011, Cree v OHIM (TRUEWHITE), T‑208/10, not published, EU:T:2011:340, paragraph 12).

21      Furthermore, signs or indications which may serve, in trade, to designate the characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, 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 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 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 13).

22      The signs and indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal usage from the target public’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (judgments of 20 September 2001, Procter & Gamble v OHIM, C‑383/99 P, EU:C:2001:461, paragraph 39, and of 5 July 2012, Deutscher Ring v OHIM (Deutscher Ring Sachversicherungs-AG), T‑209/10, not published, EU:T:2012:347, paragraph 17).

23      It follows that, for a sign to be caught by the prohibition set out in the abovementioned 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 immediately to perceive, without further thought, a description of the goods or services in question or of one of their characteristics (see judgment of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 14 and the case-law cited).

24      It must also be borne in mind that whether a sign is descriptive can be assessed only, first, by reference to the relevant public’s perception of that sign and, secondly, by reference to the goods or services concerned (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 38, and of 7 July 2011, TRUEWHITE, T‑208/10, not published, EU:T:2011:340, paragraph 17).

25      In the present case, it was therefore for the Board of Appeal to examine whether, on the basis of a given meaning of the contested mark, there was, at the relevant date, a sufficiently direct and specific relationship between that mark and the characteristics of the goods in respect of which it had been registered, in accordance with Article 7(1)(c) of Regulation No 207/2009.

26      First of all, it must be pointed out, as observed by the Board of Appeal and by the applicant, that, since the contested mark consists of an English term, it is necessary to rely on the meaning of that term as it is perceived by the English-speaking public in the European Union. Furthermore, as the Board of Appeal found and as the applicant admitted at the hearing, the relevant public consists of professionals and tradespeople who use protective clothing and of the general public and its level of attention varies from average to high.

27      Next, as regards the meaning of the term ‘scruffs’, the Board of Appeal found that the evidence provided established that there was colloquial use of that term in order to designate clothes worn for comfort and not appearance, which could be exposed to dirt or destroyed without consequence and which did not constitute an objective category of clothing. According to the Board of Appeal, the meaning thus derived and borne out by the definition taken from the extract from the dictionary of slang terms provided by the applicant did not pertain to items for purchase, but to any clothing which had become worn and could be ruined. On the basis of those findings, the Board of Appeal found that the contested mark had not been shown to be descriptive of a specific characteristic in concreto.

28      The applicant’s arguments do not make it possible to call that assessment on the part of the Board of Appeal into question.

29      In particular, and contrary to what the applicant claims, it is not apparent either from the dictionary of slang terms which is available on the website www.peevish.co.uk or from the examples of use of the term ‘scruffs’ in print media and online which were provided, that that term is used to designate one of the inherent characteristics of the goods concerned. In that regard, it must be pointed out that, according to the abovementioned dictionary, the term ‘scruffs’ refers to ‘less important clothes in which one relaxes or completes tasks likely to dirty or ruin them’. It must be pointed out, as was stated by the Board of Appeal, that such a definition refers to clothing which, because of its state, is unimportant in the eyes of its owner and which does not constitute new clothing, including protective clothing, in the eyes of prospective consumers of those goods.

30      In that regard, the reference which the Board of Appeal made, in paragraph 20 of the contested decision, to other terms included in the list of words taken from the dictionary of English slang which is available on the internet seeks only to show the context in which the term ‘scruffs’ is referred to. Consequently, contrary to what the applicant claims, the Board of Appeal was not required to substantiate further its statement that the remainder of that list which was taken from the dictionary of slang was made up of words which are deeply disparaging in the main, of a sexual, scatalogical and/or oblique nature. In addition to the fact that a mere reading of the list of slang words which appears in that extract which the applicant provided makes it possible to conclude that there are a number of words or expressions of a sexual nature on that list, it must be stated that the Board of Appeal referred to those terms only in a purely supplementary manner in the context of the assessment of whether the contested mark was descriptive.

31      Furthermore, the Board of Appeal confirmed the meaning of the term ‘scruffs’ which it had adopted by referring to a number of examples of use of that term in print media and online. In particular, it referred to, inter alia, phrases such as ‘I did actually go to work in my scruffs once’, ‘I have been stopped in a supermarket, shopping in my scruffs’, ‘I put on my scruffs and went out the back to clean out the shed’, ‘I’d always take my “scruffs” or clothes I could chuck away at the end of the festival as they’d be ruined’, ‘I can wander around in my scruffs with my hair back and without makeup’ and ‘after dinner I got changed into my scruffs and headed out to what was needed in the garden’.

32      It is apparent from all those examples of everyday use of the term ‘scruffs’ that that term is associated with worn goods which are already in the possession of their owner and which, as the Board of Appeal pointed out, are suitable for private activities or activities which are hard on clothes. Consequently, the Board of Appeal did not make any error of assessment in finding that the evidence showed colloquial use of the term ‘scruffs’ to designate clothes worn for comfort and not appearance, which may be exposed to dirt or destroyed without consequence. It also did not err in finding that those goods did not constitute an objective category of clothing, in that their worn state was not perceived as constituting an intrinsic or essential characteristic of shop-bought items, since even recycled or second-hand goods were in principle sold in a good state and consumers did not expect to purchase clothes which were in a devalued state.

33      Furthermore, the other arguments which the applicant has put forward are not capable of calling into question the assessments which have been set out in paragraph 32 above.

34      In the first place, it is necessary to reject the applicant’s claim that the Board of Appeal erred in finding that no reference source for the English language contained a relevant definition of the term ‘scruffs’ and that that error was instrumental in the Board of Appeal’s assessment that the contested mark was not descriptive.

35      In this respect, it must be borne in mind that, pursuant to the provisions of Article 52 and Article 55 of Regulation No 207/2009 (now Article 62 of Regulation 2017/1001), an EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It 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 (see judgment of 28 September 2016, European Food v EUIPO – Société des produits Nestlé (FITNESS), T‑476/15, EU:T:2016:568, paragraph 47 and the case-law cited).

36      By virtue of that presumption of validity, EUIPO’s obligation, under Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by the examiners of EUIPO and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. However, in invalidity proceedings, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (see judgment of 28 September 2016, FITNESS, T‑476/15, EU:T:2016:568, paragraph 48 and the case-law cited).

37      In the present case, it is common ground that the applicant produced the extract containing the definition of the term ‘scruffs’ which appears in the Cambridge Dictionary for the first time before the Court. In the light of the principles which have been referred to in paragraphs 35 and 36 above, it must be held that, in the invalidity proceedings, the Board of Appeal was not required, contrary to what the applicant claims, to examine of its own motion the relevant facts which might have led it to apply the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009.

38      In addition, as has already been pointed out in paragraph 9 above, in the context of an application for a declaration of invalidity based on Article 52(1)(a) of Regulation No 207/2009, the relevant date for the purpose of examining whether an EU trade mark complies with Article 7 of that regulation is that on which the application for registration was filed. The fact that the case‑law allows material subsequent to that date to be taken into account, far from weakening that interpretation of Article 52(1)(a) of Regulation No 207/2009, reinforces it, since it is only possible to take such material into account if it relates to the situation on the date of filing of the trade mark application (see, to that effect, judgment of 3 June 2009, Frosch Touristik v OHIM – DSR touristik (FLUGBÖRSE), T‑189/07, EU:T:2009:172, paragraph 19).

39      In the present case, the extract from the Cambridge Dictionary relating to the term ‘scruffs’ which the applicant has provided as Annex A.10 to the application is dated 7 December 2020. Consequently, the Board of Appeal could not have taken the definition which appears in that dictionary into account, since that item of evidence postdates the date of filing of the application for registration, namely 25 January 2013.

40      It is true that the applicant argues that EUIPO had to take the definition of the term ‘scruffs’ which appears in the Cambridge Dictionary into account of its own motion, since that definition, in the applicant’s view, constitutes a well-known fact. It submits in that regard that entries in dictionaries are sources which are generally accessible to the general public and provide a relevant definition of the word in question in the relevant language.

41      That argument cannot, however, be accepted. First, in the light of what has been pointed out in paragraph 39 above, the applicant has not established that that definition of the term ‘scruffs’ constituted a relevant well-known fact as at the date of filing of the application for registration of the contested mark. In that regard, it must be stated that, by contrast with the present case, it is apparent from paragraphs 73 to 75 of the judgment of 15 October 2020, smart things solutions v EUIPO – Samsung Electronics (smart:)things) (T‑48/19, not published, EU:T:2020:483), on which the applicant has relied, that the extract from the dictionary concerned in that case dated from a period prior to the date of the application for registration of the mark concerned.

42      Secondly, the applicant’s reference to the judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN) (T‑57/03, EU:T:2005:29), is also not relevant. By contrast with the present case, the case which gave rise to the abovementioned judgment related to opposition proceedings based on Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (now Article 8(1)(b) of Regulation 2017/1001). Furthermore, by contrast with the present case, which concerns the meaning of a term as referred to in a dictionary, in paragraph 59 of the abovementioned case, the Court pointed out the usefulness of dictionaries for the purpose of providing a pertinent indication of the correct pronunciation of a word in a host language.

43      Thirdly, as has been pointed out in paragraph 24 above, in the context of the examination carried out pursuant to Article 7(1)(c) of Regulation No 207/2009, whether the contested mark is descriptive with regard to the goods or services concerned must be assessed by taking into account the relevant public’s perception of that mark. The Court has already held that the mere inclusion of a term in one or more dictionaries cannot suffice to show that the relevant public will immediately perceive its meaning, even if they are native speakers of the language concerned (see, to that effect, judgment of 21 June 2017, Rare Hospitality International v EUIPO (LONGHORN STEAKHOUSE), T‑856/16, not published, EU:T:2017:412, paragraph 38). In that regard, it must be stated that, in the present case, as has been pointed out in paragraphs 29 to 32 above, the Board of Appeal took all the evidence which the applicant had provided into account in order to find that the term ‘scruffs’ was not descriptive. Consequently, even if the definition of that term which appears in the Cambridge Dictionary were a well-known fact which was capable of being taken into account by the Board of Appeal, it cannot be maintained that the Board of Appeal did not rely on evidence which was sufficient to assess the relevant public’s perception of that term.

44      Lastly and fourthly, it must be pointed out that the Cambridge Dictionary defines the term ‘scruffs’ as follows: ‘clothes that are not formal or suitable for work or special occasions, especially old or worn clothes’. Consequently, it must be stated, as observed by EUIPO, that the extract from that dictionary bears out the Board of Appeal’s assessment regarding the meaning of the term ‘scruffs’.

45      In the light of the foregoing, the applicant’s claim that the Board of Appeal erred in finding that no reference source for the English language contained a relevant definition of the term ‘scruffs’ must be rejected.

46      In the second place, it is also necessary to reject the applicant’s argument that, even if the term ‘scruffs’ alluded to old clothing or worn clothing, that would not prevent the contested mark from being descriptive of the goods concerned. In that regard, the applicant observes that the Court of Justice has already accepted, in its judgment of 22 October 2020, Ferrari (C‑720/18 and C‑721/18, EU:C:2020:854), that a trade mark is capable of being put to genuine use even if its proprietor markets only second-hand goods under that mark. It submits that, since there can be genuine use of a mark for second-hand goods, there is no reason for concluding that a trade mark cannot be descriptive in relation to ‘old, second-hand goods’.

47      In that regard, it must be stated that, even if the case-law on which the applicant relies could be understood as accepting that it is possible that a trade mark might also be considered to be descriptive with regard to second-hand goods, it is not relevant in the present case. The question which arises in the present case is that of whether the term ‘scruffs’ is perceived by the relevant public as a description of the goods in question or of one of their characteristics. As has already been pointed out in paragraph 32 above, the worn state of the clothing designated by the term ‘scruffs’ is not perceived as being an intrinsic or essential characteristic of shop-bought items, since even second-hand goods are in principle sold in a good state and consumers do not expect to purchase clothes which are in a devalued state.

48      In the third place, contrary to what the applicant claims, the term ‘scruffs’ can also not be regarded as synonymous with the term ‘loungewear’. In that regard, it must be stated that, as the Board of Appeal correctly pointed out, the dictionaries referred to by the applicant which contain the definition of the term ‘loungewear’ do not mention the term ‘scruffs’ as a synonym of that term. Furthermore, although those two terms can designate informal clothing that is suitable for wearing at home, the term ‘loungewear’ refers more to the casual and comfortable nature of clothing which is worn for lounging in. Unlike the clothing designated by the word ‘scruffs’, that referred to by the term ‘loungewear’ is not, as a general rule, meant to be worn for carrying out work or tasks that are likely to dirty or ruin it.

49      In the light of the foregoing, the Board of Appeal’s assessment that the relevant public would perceive the term ‘scruffs’ as an amusing or surprising allusion, which is imprecise enough to be suggestive and entertaining, must be upheld. The Board of Appeal did not therefore err when examining the contested mark in the light of Article 7(1)(c) of Regulation No 207/2009.

50      The second plea must thus be rejected as unfounded.

 The first plea, alleging infringement of Article 65(2) of Regulation No 207/2009

51      The applicant claims that the Board of Appeal infringed Article 65(2) of Regulation No 207/2009 by not carrying out a full examination of the evidence and by distorting the facts and evidence. In particular, the applicant observes that the Board of Appeal found that no reference source for the English language contained a relevant definition of the term ‘scruffs’. However, it submits that the Cambridge Dictionary is a reference source for the English language, as it is one of the most highly regarded English-language dictionaries in the world. According to the applicant, the Board of Appeal should have taken into account the entry corresponding to that term which appears in that dictionary, since it is a source that is generally accessible and the definition of that term given by that dictionary therefore constitutes a well-known fact. The applicant adds that the Board of Appeal also distorted the evidence provided, because its assessment of that evidence is clearly incorrect.

52      EUIPO and the intervener dispute the applicant’s arguments.

53      It must be borne in mind that, in the context of its second plea, the applicant submitted that the Board of Appeal had erred in finding that no reference source for the English language contained a relevant definition of the term ‘scruffs’ and that that error had been instrumental in the Board of Appeal’s assessment that the contested mark was not descriptive with regard to the goods in question.

54      It must be pointed out that, in paragraphs 35 to 45 above, it has been held that, in the present case, the definition of the term ‘scruffs’ which appears in the Cambridge Dictionary could not be considered to be a relevant well-known fact and that that definition, in any event, bore out the Board of Appeal’s assessment that the relevant public perceived that term as designating old clothing or worn clothing. Furthermore, since, as has been pointed out in paragraph 49 above, the Board of Appeal did not make any error of assessment when examining that term, no lack of a full examination or distortion of the facts or evidence can be established in that regard.

55      The first plea must therefore be rejected as unfounded.

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

56      The applicant claims that, since the contested mark is descriptive of all the goods in question, it is devoid of any distinctive character. It submits that, consequently, the Board of Appeal also erred in the assessment of the distinctive character of the contested mark and therefore infringed Article 7(1)(b) of Regulation No 207/2009. The applicant adds that the contested mark, which consists of a dictionary word, does not enable the relevant public to distinguish the intervener’s goods in Classes 9 and 25 from other goods which can be described as ‘scruffs’.

57      EUIPO and the intervener dispute the applicant’s arguments.

58      It must be pointed out that the applicant’s line of argument is based on the claim that the contested mark, since it is descriptive with regard to the goods concerned and therefore falls within the scope of Article 7(1)(c) of Regulation No 207/2009, is consequently also devoid of any distinctive character.

59      However, it must be stated that, first, it follows from the responses to the first two pleas that the Board of Appeal did not err in finding that the contested mark was not descriptive and did not fall foul of the ground for refusal of registration set out in Article 7(1)(c) of Regulation No 207/2009. Secondly, the applicant has not put forward any other evidence seeking to establish that that mark has no distinctive character (see, to that effect, judgment of 12 June 2012, Stichting Regionaal Opleidingencentrum van Amsterdam v OHIM – Investimust (COLLEGE), T‑165/11, not published, EU:T:2012:284, paragraph 38).

60      In particular, the applicant has not established that there is any error which vitiates the Board of Appeal’s assessment that the relevant public perceived the contested mark as an amusing or surprising allusion, which was imprecise enough to be suggestive and entertaining, with the result that that mark was perceived as an indicator of the commercial origin of the goods concerned and was not therefore devoid of any distinctive character.

61      In view of all of the foregoing, the third plea in law must be rejected and the action must therefore be dismissed in its entirety.

 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, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Perry Street Software, Inc. to pay the costs.

Delivered in open court in Luxembourg on 30 March 2022.

*      Language of the case: English.

© European Union
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