ORDER OF THE GENERAL COURT (Seventh Chamber)

16 September 2014 (*)

(Community trade mark — Application for Community word mark PRECISION SPECTRA — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 — Action in part manifestly inadmissible and in part manifestly lacking any foundation in law)

In Case T‑497/13,

Boston Scientific Neuromodulation Corp., established in Valencia, California (United States), represented by P. Rath and W. Festl-Wietek, lawyers,

applicant,

v

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

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 17 May 2013 (Case R 2099/2012-5), concerning an application for registration of the word sign PRECISION SPECTRA as a Community trade mark,

THE GENERAL COURT (Seventh Chamber),

composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 16 September 2013,

having regard to the response lodged at the Court Registry on 24 March 2014,

having regard to the decision of 20 May 2014 refusing to authorise the lodging of a reply,

makes the following

Order

 Background to the dispute

1        On 10 February 2011, the applicant — Boston Scientific Neuromodulation Corp. — filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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 PRECISION SPECTRA.

3        The goods in respect of which registration was sought fall within Classes 9 and 10 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: ‘Clinician computer programs used in programming, monitoring and controlling an implantable pulse generator; handheld remote control units for controlling the implantable pulse generator; programming software for the clinician programmers and/or handheld remote control units, namely for programming the stimulation parameters used by the implantable pulse generator;’

–        Class 10: ‘Implantable neurostimulation systems, namely an implantable pulse generator having a rechargeable battery for providing controlled electrical stimulation pulses, leads and electrode arrays used with the implantable pulse generator, and accessories used therewith, namely an external trial stimulator, a handheld programmer for use with the implantable pulse generator, a battery charger for recharging the rechargeable battery in the implantable pulse generator, a clinician programmer for use with the handheld programmer, the implantable pulse generator and/or trial stimulator; artificial limbs, eyes and teeth; orthopaedic articles; suture materials.’

4        By decision of 29 October 2012, the examiner, on the one hand, allowed registration of the mark PRECISION SPECTRA for ‘artificial limbs, eyes and teeth; orthopaedic articles; suture materials’ in Class 10. On the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009, on the other hand, the examiner refused the application for registration in respect of the goods in Class 9 and the other goods in Class 10 (‘the goods at issue’).

5        On 14 November 2012, the applicant lodged an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

6        By decision of 17 May 2013 (‘the contested decision’), the Fifth Board of Appeal of OHIM dismissed the appeal. The Board of Appeal found that the mark applied for, PRECISION SPECTRA, was descriptive of the goods at issue for the purposes of Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation, and accordingly devoid of any distinctive character for the purposes of Article 7(1)(b) of the regulation.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        declare that the trade mark applied for is eligible for registration;

–        order OHIM to pay the costs.

8        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

9        Under Article 111 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, without taking further steps in the proceedings, give a decision on the action by reasoned order.

10      In the present case, the Court considers that it has sufficient information from the documents in the file and decides, pursuant to that provision, to give a decision without taking further steps in the proceedings.

11      First of all, it must be noted that, by its second head of claim, the applicant seeks to obtain a declaratory judgment from the Court. However, it is apparent from Article 65(2) and (3) of Regulation No 207/2009 that the purpose of bringing actions before the Court is to have the lawfulness of decisions of the Boards of Appeal examined and to obtain, as the case may be, the annulment or alteration of those decisions (see judgment of 15 June 2010 in Actega Terra v OHIM (TERRAEFFEKT matt & gloss), T‑118/08, not published in the ECR, paragraph 10 and the case-law cited). Consequently, such an action cannot have the objective of obtaining confirmatory or declaratory rulings in respect of those decisions.

12      The applicant’s second head of claim must therefore be dismissed as manifestly inadmissible.

13      In support of its action, the applicant relies on three pleas in law, alleging respectively: (i) infringement of Article 7(1)(c) of Regulation (EC) No 207/2009; (ii) infringement of Article 7(1)(b) of that regulation; and (iii) infringement of Article 65(2) of the regulation through the abuse of discretion and breach of the principle of equal treatment.

 First plea in law: infringement of Article 7(1)(c) of Regulation No 207/2009

14      Under Article 7(1)(c) of Regulation No 207/2009, 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. Article 7(2) of Regulation No 207/2009 states that Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

15      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 point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (judgment of the Court of 20 September 2001 in Procter & Gamble v OHIM, C‑383/99 P, ECR I‑6251, paragraph 39, and judgment of the General Court of 22 May 2008 in Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, not published in the ECR, paragraph 28).

16      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 relationship between the sign, on the one hand, and the goods and services in question, on the other, to enable the relevant public immediately to perceive, without further thought, a description of the category of goods and services concerned or one of their characteristics (judgments of 22 June 2005 in Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, ECR II‑2383, paragraph 25, and RadioCom, paragraph 15 above, paragraph 29).

17      The descriptiveness of a sign may be assessed only in relation to the goods or services concerned and to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgments of the General Court of 27 February 2002 in Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, ECR II‑683, paragraph 38, and RadioCom, paragraph 15 above, paragraph 33).

18      In the present case, the Board of Appeal found that the goods at issue were aimed both at a professional public and at average consumers, the latter possibly being assisted by a doctor or a specialist when purchasing the goods. Consequently, the Board of Appeal found that the relevant public was composed of particularly well informed and attentive specialised professionals. It noted that, as the sign PRECISION SPECTRA was composed of English words, the relevant public was the English-speaking public.

19      The Board of Appeal noted that the expression ‘precision spectra’ follows the rules of English grammar. As regards the meaning of the words ‘precision’ and ‘spectra’ and the expression ‘precision spectra’, the Board of Appeal referred to the reasoning set out in the decision of the examiner, who had found that that expression ‘inform[ed] consumers without further reflection that the goods [at issue] [we]re precision instruments in the field of light, wavelengths and frequencies, apparatus connected therewith, and/or that the goods [at issue] [we]re able to provide an accurate, usually a two-dimensional plot, of a compound signal, depicting the components by another measure’.

20      The Board of Appeal accordingly found that the expression ‘precision spectra’ meant that ‘the whole range of electric impulses generated by the implantable pulse generator [we]re characterised by a high degree of exactness and accuracy and/or that the goods provide[d] an accurate representation of it’.

21      It should be held that those assessments regarding the relevant public and the meaning of the expression ‘precision spectra’, which are not disputed by the applicant, were sufficient for the Board of Appeal to find that the expression ‘precision spectra’ informed the relevant public without further reflection about the characteristics of the goods at issue.

22      The Board of Appeal was therefore right in concluding that the mark applied for was descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009.

23      The applicant does not put forward any argument capable of undermining that conclusion.

24      First, the applicant submits that, as regards the ‘clinician computer programs used in monitoring and controlling …, handheld remote control units …, programming software for the clinician programmers and/or handheld remote control units …’ in Class 9, and the ‘implantable neurostimulation systems, external trial stimulator, handheld programmer, battery charger and clinician programmer’ in Class 10, the trade mark PRECISION SPECTRA is descriptive neither of those goods nor of their characteristics.

25      That argument cannot succeed because it is based on a presentation of those goods which does not match the description given in the application for registration (see paragraph 3 above). In the application for registration, each of those goods is described as being linked to an ‘implantable pulse generator’, on account of which the Board of Appeal correctly established that the PRECISION SPECTRA mark was descriptive. In that regard, it should be noted that, according to the case-law, it may be that all the goods specified in the trade mark application are inseparably linked, since it may be possible to use some of those goods only in connection with the others, and a solution which is common to all the goods should therefore be adopted (see, to that effect, judgment of the General Court of 2 December 2008 in Ford Motor v OHIM (FUN), T‑67/07, ECR II‑3411, paragraph 43, and the case-law cited).

26      Second, the applicant submits that the mark applied for is not immediately descriptive of the goods at issue and that several ‘mental steps’ must be taken to establish a link between the goods at issue and the mark applied for. According to the applicant, the fact that the Board of Appeal had to provide explanations in order to establish a link between the goods at issue and the meaning of the expression ‘precision spectra’ shows that the mark applied for is not purely descriptive.

27      In that regard, suffice it to note that the Board of Appeal took the meaning of the expression ‘precision spectra’ into account and found that the relevant public — which is a specialised public — understands that meaning and understands immediately that the expression refers to the characteristics of the goods at issue. That reasoning satisfies the requirements as regards the statement of reasons for the contested decision and establishes that the relationship between the mark applied for and the goods at issue is sufficiently direct to enable the relevant public immediately to perceive a description of the goods at issue or their characteristics.

28      Third, as regards the applicant’s argument that the mark applied for is not purely descriptive of the goods at issue, suffice it to note that, according to settled case-law, to fall under Article 7(1)(c) of Regulation No 207/2009, it is sufficient that the word sign in at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of the Court of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR I‑12447, paragraph 32, and judgment of the General Court of 12 April 2011 in Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, ECR II‑1535, paragraph 50) and the test based on whether the mark is ‘exclusively descriptive’ is not the test laid down in that provision (OHIM v Wrigley, paragraph 34).

29      Fourth, as regards the applicant’s argument that the expression ‘precision spectra’ is not used by third parties to refer to the goods at issue or their characteristics, it is sufficient to recall that, according to the case-law, in order to refuse to register a trade mark under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark that are referred to in that provision 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 is filed, 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 (OHIM v Wrigley, paragraph 28 above, paragraph 32; PAPERLAB, paragraph 16 above, paragraph 34; and RadioCom, paragraph 15 above, paragraph 32).

30      It follows that the first plea in law must be rejected as being manifestly unfounded.

 Second plea in law: infringement of Article 7)(1)(b) of Regulation No 207/2009

31      The applicant submits that the mark applied for must not be regarded as purely descriptive, but as having a sufficient degree of distinctiveness.

32      As is clear from Article 7(1) of Regulation No 207/2009, for a sign to be ineligible for registration as a Community trade mark, it is sufficient that one of the absolute grounds for refusal applies (judgment of the Court of 19 September 2002 in DKV v OHIM, C‑104/00 P, ECR I‑7561, paragraph 29, and judgment of the General Court of 12 November 2008 in EOS v OHIM (PrimeCast), T‑373/07, not published in the ECR, paragraph 45).

33      Furthermore, according to settled case-law, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) of that regulation (see judgment of the General Court of 8 July 2004 in Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS), T‑289/02, ECR II‑2851, paragraph 24 and the case-law cited; and PrimeCast, paragraph 32 above, paragraph 46).

34      In the present case, as the Board of Appeal had correctly established that the mark PRECISION SPECTRA was descriptive of the goods at issue for the purposes of Article 7(1)(c) of Regulation No 207/2009, it was fully entitled not to examine whether that mark was devoid of distinctive character within the meaning of Article 7(1)(b) and to conclude that registration had also to be refused on that basis.

35      Consequently, the second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, must be rejected as being manifestly unfounded.

 Third plea in law: infringement of Article 65(2) of Regulation No 207/2009 through the abuse of discretion and breach of the principle of equal treatment

36      By its first complaint, the applicant submits that the fact that the Board of Appeal ignored earlier registrations containing the word ‘precision’ or the word ‘spectra’ constitutes an infringement of Article 65(2) of Regulation No 207/2009, that is to say, an abuse of discretion on the part of the Board of Appeal.

37      On the one hand, Article 65(2) of Regulation No 207/2009 clearly constitutes the legal basis for the lodging of appeals against decisions of the Boards of Appeal of OHIM on grounds of lack of competence; infringement of essential procedural requirements; infringement of the Treaty, or of Regulation No 207/2009, or of any rule of law relating to the application of those acts; or misuse of powers. That provision is unlikely, therefore, to be infringed by the Board of Appeal.

38      On the other hand, suffice it to point out that decisions concerning registration of a sign as a Community trade mark that the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion (judgment of the Court of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR I‑7975, paragraph 47, and judgment of the General Court of 17 January 2006 in Henkel v OHIM (Red and white rectangular tablet with an oval blue centre), T‑398/04, not published in the ECR, paragraph 53).

39      It follows that the first complaint must be rejected as being manifestly unfounded.

40      By its second complaint, the applicant submits that, by ignoring registrations of earlier marks containing the word ‘precision’ or the word ‘spectra’, the Board of Appeal acted in breach of the principle of equal treatment.

41      In that regard, suffice it to point out that, as is apparent from the case-law cited in paragraph 38 above, decisions that the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers. Accordingly, the question whether a sign is eligible for registration as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of the Boards of Appeal (see the judgment in BioID v OHIM, paragraph 38 above, paragraph 47, and the judgment of the General Court of 2 May 2012 in Universal Display v OHIM (UniversalPHOLED), T‑435/11, not published in the ECR, paragraph 37 and the case-law cited).

42      It must also be borne in mind that the way in which the principle of equal treatment is applied must be consistent with respect for the principle of legality. According to the latter principle, no person may rely to his advantage on an unlawful act committed in another procedure (judgment of the Court of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR I‑1541, paragraphs 75 and 76, and judgment of the General Court of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR II‑1927, paragraph 65).

43      In the present case, the Community trade mark application submitted by the applicant was rendered ineligible on one of the grounds for refusal set out in Article 7(1) of Regulation No 207/2009. In so far as it has been found that the Board of Appeal was fully entitled to conclude that registration of the sign PRECISION SPECTRA as a mark for the goods at issue was incompatible with Regulation No 207/2009, the applicant could not reasonably rely on OHIM’s earlier decisions for the purposes of casting doubt on that conclusion.

44      It follows that the second complaint must be rejected as being manifestly unfounded.

45      It is clear from the foregoing that the third plea in law must be rejected as being manifestly unfounded.

46      The action must therefore be dismissed in its entirety as being in part inadmissible and in part manifestly lacking any foundation in law.

 Costs

47      Under Article 87(2) of the Rules of Procedure, 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 (Seventh Chamber)

hereby orders:

1.      The action is dismissed.

2.      Boston Scientific Neuromodulation Corp. shall pay the costs.

Luxembourg, 16 September 2014.

E. Coulon

       M. van der Woude
Registrar

President