JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

18 September 2015 (*)

(Community trade mark — Invalidity proceedings — Community word mark Tafel — Absolute grounds for refusal — Distinctive character — Lack of descriptive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)

In Case T‑710/13,

Bundesverband Deutsche Tafel eV, established in Berlin (Germany), represented by T. Koerl, E. Celenk and S. Vollmer, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by A. Pohlmann, and subsequently by M. Fischer, acting as Agents,

defendant,

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

Tiertafel Deutschland eV, established in Rathenow (Germany), represented by M. Nitschke, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 17 October 2013 (Case R 1074/2012-4) relating to invalidity proceedings between Tiertafel Deutschland eV and Bundesverband Deutsche Tafel eV,

THE GENERAL COURT (Sixth Chamber),

composed of S. Frimodt Nielsen, President, F. Dehousse (Rapporteur) and A.M. Collins, Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Registry of the General Court on 23 December 2013,

having regard to the response of OHIM lodged at the Registry of the General Court on 11 April 2014,

having regard to the response of the intervener lodged at the Registry of the General Court on 16 April 2014,

Having regard to the decision du 11 June 2014 refusing to allow the lodging of a reply,

further to the hearing on 18 March 2015,

gives the following

Judgment

 Background to the dispute

1        The applicant, Bundesverband Deutsche Tafel eV, is the proprietor of Community word mark Tafel, applied for on 26 March 2010 and registered on 27 September 2010 under No 8985541 at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        The services in respect of which registration was applied for are in Classes 39 and 45 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:

–        Class 39: ‘Gathering, collection, transportation and distribution of essential goods, including foodstuffs, for others, in particular for those in need’;

–        Class 45: ‘Personal and social services rendered by others to meet individual needs’.

3        On 4 November 2010, the intervener, Tiertafel Deutschland eV, filed an application with OHIM, on the basis of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) and (c) of the same regulation, and of Article 52(1)(b) of that regulation, for a declaration that the Community trade mark Tafel was invalid.

4        By decision of 16 April 2012, the Cancellation Division of OHIM rejected the application for a declaration of invalidity on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation.

5        On 6 June 2012, the intervener filed a notice of appeal with OHIM against the decision of the Cancellation Division.

6        By decision of 17 October 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld the appeal and annulled the decision of the Cancellation Division. It held that the German word ‘Tafel’ had a sufficiently clear and specific connection to the services in question and that it was therefore descriptive. It also decided that, as a descriptive indication, the meaning of which is immediately understood by the targeted public without any analytical reflection, that term was also devoid of any distinctive character in respect of the services concerned. It therefore declared the mark in question invalid, on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009. Lastly, the Board of Appeal held that there was no need to adjudicate on the plea based on Article 52(1)(b) of that regulation, the plea of bad faith, which had not been discussed further by the parties in the appeal proceedings.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

8        OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

9        In support of its action, the applicant relies on two pleas for annulment: first, infringement of Article 7(1)(c) of Regulation No 207/2009 and, secondly, infringement of Article 7(1)(b) of that regulation.

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

10      The applicant disputes the finding of the Board of Appeal that the trade mark in question is descriptive. It maintains inter alia that there is no direct relationship between the German term ‘Tafel’, within the meaning indicated by the Board of Appeal of a ‘large table laid for a festive meal’, and the services for which the mark is registered. The German term ‘Tafel’ does not indicate the kind, quality, intended purpose or any other characteristics of the services concerned. With regard to services in Class 39, they have no connection with a table, which would be inappropriate as a place for providing such services. Furthermore, there is inconsistency between the idea of a festive meal conveyed by the German term ‘Tafel’ and the protected services intended to provide essential goods and foodstuffs, amounting to minimum subsistence. So far as services in Class 45 are concerned, the applicant contends that the Board of Appeal misconstrued their purpose and confused them with the services for providing food and drink included in Class 43, not covered by the Tafel mark.

11      OHIM contends that the Board of Appeal was right to declare registration of the sign Tafel in respect of the services in question invalid. It notes that one of the meanings of the German term ‘Tafel’ given in the Duden dictionary is the provision of foodstuffs to those in need and that a similar meaning is given for the German keyword ‘Tafel-Initiativen’ in the 2006 edition of the Brockhaus encyclopaedia and in the on-line edition of the Meyers dictionary.

12      With regard to services in Class 39, OHIM contends that they are logistical services which are essential for the proper operation of a food bank and that there is therefore a direct and clear connection between them and the German term ‘Tafel’. Furthermore, it contends that the public concerned, when presented with the German term ‘Tafel’ in connection with services in Class 45, will immediately think of the services of a food bank, that is to say, a social service providing food and other essential goods. It adds that the services in Classes 39 and 45 are effectively designed for food banks.

13      The intervener contends that the Board of Appeal was right to find that the sign Tafel was descriptive. In its view, the German term ‘Tafel’ is a generic name for welfare institutions. It cites in that regard various studies conducted in 2008 and 2009 and works such as the Brockhaus and Meyers lexicons and the Duden dictionary. The descriptive character of the term stems also from the existence of organisations whose names are variations on the German term ‘Tafel’. That term does not relate specifically to the applicant, but to the food bank movement known as ‘Tafeln’. The documents produced by the applicant moreover show that the German term ‘Tafel’ refers to an institution. That term therefore has a generic meaning not only for the German public, but also for the Austrian public. The intervener maintains in addition that the German term ‘Tafel’ is descriptive of the services in question. Thus, the German term ‘Tafel’ designates inter alia the place where the services in question are provided, and its semantic content varies, namely the term ‘table’ or ‘(notice) board’, is directly descriptive of the services in question, generally provided at a table.

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 may not be registered. In addition, 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.

15      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 that is in the public interest, which requires that such signs and indications may be freely used by all (judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31, and of 7 July 2011 in Cree v OHIM (TRUEWHITE), T‑208/10, EU:T:2011:340, paragraph 12).

16      Furthermore, signs or indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, in order thereby to enable the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see OHIM v Wrigley, cited in paragraph 15 above, EU:C:2003:579, paragraph 30, and TRUEWHITE, cited in paragraph 15 above, EU:T:2011:340, paragraph 13).

17      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 (judgments of 20 September 2001 in Procter & Gamble v OHIM, C‑383/99 P, ECR, EU:C:2001:461, paragraph 39, and of 5 July 2012 in Deutscher Ring v OHIM (Deutscher Ring Sachversicherungs-AG), T‑209/10, EU:T:2012:347, paragraph 17).

18      It follows that, in order for a sign to be caught by the prohibition set out in the abovementioned provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment in TRUEWHITE, cited in paragraph 15 above, EU:T:2011:340, paragraph 14 and the case-law cited).

19      It should also be noted that a sign’s descriptive nature can only be assessed, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (Case T‑34/00 Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, ECR, EU:T:2002:41, paragraph 38, and TRUEWHITE, cited in paragraph 15 above, EU:T:2011:340, paragraph 17).

20      It is in the light of those principles that the first plea raised in the present action must be considered.

21      First of all, it should be noted, as the Board of Appeal found, that the services in question concern essential goods and individual needs, and are aimed at the general public. Furthermore, since the sign in question is a German term it is necessary to assess the descriptiveness of the mark in question by reference to the way in which it is understood by the average German-speaking consumer in the European Union, a point which is not moreover disputed by the applicant.

22      Next, it is clear from the material in the case file that the German term ‘Tafel’ has several meanings. The term refers in particular, on the one hand, to the concept of a table and, on the other hand, to the concept of food banks and social projects relating inter alia to providing those in need with free or inexpensive foodstuffs not sold in the trade but still in good condition or meals prepared therefrom. This point is not challenged by the parties.

23      However, it is clear from the contested decision that in the present case the Board of Appeal took its decision only on the basis of the first meaning of the German term ‘Tafel’, namely the concept of a table.

24      In paragraph 30 of the contested decision, the Board of Appeal referred to the on-line edition of the Duden universal dictionary, in so far as it stated that the German term ‘Tafel’ was understood to mean inter alia ‘a large table laid for a festive meal’ and the ‘meal’. The expressions ‘at the table’ and ‘to leave the table’ are also mentioned in that paragraph.

25      Clearly the Board of Appeal took the German term ‘Tafel’ to mean only ‘table’ when it found that there was in the present case a sufficiently clear and specific connection to the services in question. Accordingly, it stated in paragraph 31 of its decision, with regard to services in Class 39, that the German term ‘Tafel’ described the fact that essential goods were gathered, collected, transported and distributed at a food bank, and that meals and foodstuffs were offered at the food bank. With regard to services in Class 45, it also stated that the German term ‘Tafel’ described the fact that the personal and social services offered by others to meet individual needs, such as for example the providing of foodstuffs and meals, were offered at a food bank.

26      It should be noted that in paragraph 32 of the contested decision the Board of Appeal quoted the further definition of the term ‘Tafel’ given in the online edition of the Duden dictionary, according to which the German term ‘Tafel’ meant ‘providing those in need with free or inexpensive foodstuffs not sold in the trade but still in good condition or meals prepared therefrom’ and which stated that ‘many voluntary helpers [were] involved with the Mannheimer Tafel’. It also referred to the 2006 Brockhaus encyclopaedia and the 2007 Meyers dictionary, which explained, with regard to the German term ‘Tafel-Initiative’, that ‘surplus food [was] collected … and passed on free of charge to social institutions and people in need’.

27      However, it is clear also from paragraph 32 of the contested decision that reference is thus made to those other definitions of the German term ‘Tafel’ only to ‘confirm’ that that term, in connection with the services in question, is understood by the general public ‘in the sense that they are offered at a “food bank”’.

28       Similarly, in paragraph 33 of the contested decision, the Board of Appeal refers to the fact that, even though a large number of food banks are organised by the applicant, the descriptive meaning of the German term ‘Tafel’ remains in relation to the services in Classes 39 and 45, ‘which may all be offered at a food bank’.

29      Lastly, the last sentence of paragraph 34 of the contested decision also mentions the fact that the German term ‘Tafel’, ‘in relation to the services in classes 39 and 45, is understood in the sense that they are provided on a laid table’.

30      It is clear therefore from the contested decision that the Board of Appeal based that decision only on the meaning ‘table’ of the German term ‘Tafel’ and not on the meaning ‘food bank’.

31      However, the German term ‘Tafel’ in the sense of ‘table’ is not descriptive of the services in question in the present case.

32      First, it should be borne in mind that services in Class 39 consist in gathering, collection, transportation and distribution of essential goods, including foodstuffs, for others, in particular for those in need.

33      It should be noted that the gathering, collection and transportation of goods do not appear to be connected with the concept of a table. The distribution of essential goods, including foodstuffs, is the ultimate purpose of all the services in question and may be done from a table. However, this is not necessarily the case. Furthermore, so far as foodstuffs are concerned, as the applicant states, the idea of a festive meal underlying the German term ‘Tafel’ is the opposite of the services designed to provide basic essentials at issue in the present case. The services in Class 39 are thus intermediate services, which are not directly associated with the term ‘table’, including the services in question relating to foodstuffs.

34      Therefore, the German term ‘Tafel’ in the sense of ‘table’ does not have, in relation to the services in Class 39, namely the gathering, collection, transportation and distribution of essential goods, including foodstuffs, for persons in need, a direct and specific relationship enabling the public concerned immediately to perceive, without further thought, a description of those services.

35      Secondly, nor can the services in Class 45, namely personal and social services rendered by others to meet individual needs, be associated, directly and without further thought, with the concept of a table. Even though in some cases they may be provided at a table — inter alia services for providing food and drink — that is not necessarily the case.

36      It follows that the Board of Appeal’s assessment that the sign Tafel, in the sense of ‘table’, has a sufficiently clear and specific connection to the services concerned in Classes 39 and 45, is incorrect.

37      Therefore, without prejudice to any ruling that may be given concerning other meanings of the German term ‘Tafel’ not analysed by the Board of Appeal, the latter was wrong to hold that the sign Tafel, in the sense of ‘table’, is descriptive of the services in question, for the purposes of Article 7(1)(c) of Regulation No 207/2009.

38      It follows from the above that the first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, must be upheld.

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

39      According to settled case-law, it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies for a sign not to be registrable as a Community trade mark (judgments of 19 September 2002 in DKV v OHIM, C‑104/00 P, ECR, EU:C:2002:506, paragraph 29; of 10 July 2014 in BSH v OHIM, C‑126/13 P, EU:C:2014:2065, paragraph 33; and of 19 May 2010 in Ravensburger v OHIM — Educa Borras (Memory), T‑108/09, EU:T:2010:213, paragraph 38).

40      Since the assessment of the descriptive character of the sign Tafel, in the sense of ‘table’, made with regard to Article 7(1)(c) of Regulation No 207/2009 in the contested decision, must be set aside (paragraph 38 above), it is necessary to consider whether the assessment by the Board of Appeal that the sign Tafel lacked distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 is for its part well founded.

41      The applicant maintains that the contested decision should be annulled, since the Board of Appeal did not conduct a separate examination of the ground for refusal based on Article 7(1)(b) of Regulation No 207/2009. The Board of Appeal inferred the lack of distinctive character of the sign Tafel merely on the basis of its descriptive character, which is moreover wrong.

42      OHIM contends that, even though each of the grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 207/2009 is independent and must be interpreted in the light of the public interest underlying it, if a sign is purely descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009 it will normally be devoid of the distinctive character required by Article 7(1)(b) of that regulation. Furthermore, even if the sign Tafel is not purely descriptive of the services concerned, it has a direct and specific relationship with them. The relevant public thus perceives it as providing information on the nature of the services which it covers and not as indicating their origin in a way that permits a distinction to be drawn between the services provided by the applicant and those of competitors.

43      The intervener contends that the lack of distinctive character of the sign Tafel stems from its purely descriptive semantic content. It also notes that public interest requires that it should be possible for that designation to continue to be used freely.

44      Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered. In accordance with the settled case-law of the Court, the distinctive character of a mark within the meaning of that provision means that the mark serves to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings. Moreover, the distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation No 207/2009, must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the mark (see, by analogy, order of 26 April 2012 in Deichmann v OHIM, C‑307/11 P, EU:C:2012:254, paragraphs 49 and 50 and the case-law cited).

45      In the present case, suffice it to note that the Board of Appeal merely mentioned that, as a descriptive indication, the meaning of which is immediately understood by the targeted public without any analytical reflection, the term Tafel was also devoid of any distinctive character in relation to the services in question, within the meaning of Article 7(1)(b) of Regulation No 207/2009.

46      In doing so, the Board of Appeal inferred the lack of distinctive character of the trade mark in question from its descriptive character and did not therefore analyse the distinctive character of the sign Tafel in the light of the criteria laid down by the relevant case-law.

47      Consequently, the Board of Appeal’s reasoning regarding the lack of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 must be rejected, since it is based on the error found in paragraphs 31 to 38 above.

48      It follows from the foregoing that the second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009, must also be upheld and, consequently, so must the action in its entirety.

49      The contested decision must therefore be annulled.

 Costs

50      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.

51      Since OHIM has been unsuccessful, it must be ordered to bear its own costs and those of the applicant, and the intervener must be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 17 October 2013 (Case R 1074/2012-4);

2.      Orders OHIM to bear its own costs and those incurred by Bundesverband Deutsche Tafel eV;

3.      Orders Tiertafel Deutschland eV to bear its own costs.

Frimodt Nielsen

Dehousse

Collins

Delivered in open court in Luxembourg on 18 September 2015.

[Signatures]