JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

22 October 2015 (*)

(Community trade mark — Application for Community word mark ELITEPAD — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009)

In Case T‑470/14,

Hewlett Packard Development Company LP, established in Houston, Texas (United States), represented by T. Raab and H. Lauf, lawyers,

applicant,

v

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 27 March 2014 (Case R 884/2013-2), concerning an application for registration of the word sign ELITEPAD as a Community trade mark,

THE GENERAL COURT (Sixth Chamber),

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

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 24 June 2014,

having regard to the response lodged at the Court Registry on 26 September 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

gives the following

Judgment

 Background to the dispute

1        On 5 November 2012, the applicant, Hewlett Packard Development Company LP, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council 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 ELITEPAD.

3        The goods in respect of which registration was sought are in Class 9 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: ‘Computers; personal computers; laptop computers; notebook computers; tablet computers; computer hardware; computer peripherals’.

4        By decision of 10 April 2013, the examiner rejected the Community trade mark application in respect of all the goods concerned, on the ground that the mark applied for was descriptive and devoid of any distinctive character within the meaning of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009. In particular, the examiner found that the conjoined words ‘elite’ and ‘pad’ would be understood by consumers as an expression informing them, without further reflection, that the goods designated by the mark applied for contain an exclusive panel that is constructed so as to be responsive to pressure or touch.

5        On 14 May 2013, the applicant filed a notice of appeal against the decision of the examiner with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009.

6        By decision of 27 March 2014 (‘the contested decision’), the Second Board of Appeal of OHIM essentially upheld the examiner’s assessment. It dismissed the applicant’s appeal. It found that the mark applied for, being composed of the conjoined words ‘elite’ and ‘pad’ and not presenting any unusual variation, would be understood, in particular, by English-speaking consumers of normal attentiveness in the European Union, as referring to the goods designated by it, informing them immediately, and without further reflection, that they relate to or consist of a panel which is exclusive, has exclusive and special characteristics, or is of excellent quality. In those circumstances, the Board of Appeal found that the mark applied for was capable of describing the characteristics of the goods designated by it.

7        The Board of Appeal found that the link between the mark applied for and the goods designated by it was sufficiently close to regard that mark as falling within the scope of Article 7(1)(c) of Regulation No 207/2009. In addition, it found that since the mark applied for was descriptive in relation to the goods designated by it, it could not guarantee the identity of the origin of those goods to the consumer or end-user and would, consequently, be devoid of any distinctive character. Therefore, the mark applied for also fell within the scope of Article 7(1)(b) of Regulation No 207/2009. Moreover, the decisions relied on by the applicant relating to Community trade marks containing the element ‘elite’ were irrelevant, since the factual circumstances underlying those decisions were not comparable to those in the present case. The Board of Appeal therefore concluded that the mark applied for had to be refused registration as a Community trade mark under Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

 Forms of order sought

8        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

9        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

10      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 7(1)(c) and Article 7(2) of Regulation No 207/2009 and, secondly, infringement of Article 7(1)(b) and Article 7(2) of that regulation.

11      In the context of the first plea in law, the applicant complains that the Board of Appeal erred in finding that the sign ELITEPAD was descriptive of the goods designated by it.

12      The applicant claims that the sign ELITEPAD will not directly and immediately be understood by the relevant public as descriptive of the quality or one of the characteristics of the goods designated by the mark applied for. On the one hand, it submits that the word ‘pad’ does not obviously refer to computer hardware since its original meaning was connected to traffic signals and, therefore, the association of that sign with a touch panel or pad on a computer would require some reflection. In any case, such a panel would not necessarily be a descriptive element of a personal computer. On the other, it submits that the word ‘elite’ describes a group of persons or [one of their] qualities and would not commonly be used to describe goods in the sense of ‘exclusive’, let alone as referring to excellent quality. In addition, it submits that consumers would perceive the sign as a whole without carrying out a lexical analysis of its components. Accordingly, the sign ELITEPAD does not form part of ordinary language and cannot be perceived, without further reflection, as descriptive of an essential characteristic of the goods designated by the mark applied for. Lastly, the applicant claims that the Board of Appeal arbitrarily departed from OHIM’s practice in relation to trade marks containing the word ‘elite’.

13      OHIM disputes the applicant’s arguments.

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. In addition, Article 7(2) of Regulation No 207/2009 provides that Article 7(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 in the public interest, which requires that such signs or 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; 27 February 2002 Ellos v OHIM (ELLOS), T‑219/00, ECR, EU:T:2002:44, paragraph 27; and 7 July 2011 Cree v OHIM (TRUEWHITE), T‑208/10, EU:T:2011:340, paragraph 12).

16      In addition, 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 service, 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 (judgments in 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      It follows that, in order for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further reflection, 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).

18      It should also be recalled that the descriptiveness of a sign may only be assessed, first, in relation to the relevant public’s perception of it and, secondly, in relation to the goods or services concerned (judgments of 27 February 2002 in 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).

19      It is in the light of those principles that the Court must examine the first plea in law relied on by the applicant, alleging infringement of Article 7(1)(c) and Article 7(2) of Regulation No 207/2009.

20      In the present case, as regards the relevant public, the Board of Appeal found, in paragraph 14 of the contested decision, that, as the examiner’s decision had found, the goods covered by the mark applied for were aimed at both average consumers and professionals in the European Union. In addition, since the sign at issue is composed of English words, it was with regard to the English-speaking public of the European Union that the Board of Appeal assessed the descriptiveness of the mark applied for.

21      That definition of the relevant public, which moreover the applicant does not dispute, must be upheld.

22      As regards the meaning of the sign ELITEPAD, the Board of Appeal confirmed, in paragraphs 16 and 20 of the contested decision, the examiner’s finding that that sign, perceived as a whole and in relation to the goods designated by it, was capable of referring to computers or computer hardware containing a panel which is responsive to pressure or touch and which is exclusive or has exclusive and special characteristics or which is of excellent quality.

23      First of all, it must be observed that, in accordance with the case-law cited in paragraph 18 above, the Board of Appeal correctly carried out an analysis of the descriptiveness of the mark applied for in relation to the goods designated by it, namely computers and computer hardware, and the perception of the relevant public, namely, the English-speaking public in the European Union.

24      Next, it should be observed that the Board of Appeal was correct in finding, in paragraph 21 of the contested decision, that — in English — the simple combination of the components ‘elite’ and ‘pad’, brought together in the mark applied for, did not constitute an unusual variation from a syntactic or semantic point of view, and that that combination would not result in a specific meaning different from that conveyed by the two components. It is common in English to create words by coupling together two words each of which has a meaning (see, to that effect, judgment of 13 November 2008 in Duro Sweden v OHIM (EASYCOVER), T‑346/07, EU:T:2008:496, paragraph 52 and the case-law cited).

25      Lastly, as regards the meaning of the words ‘elite’ and ‘pad’, first, the Board of Appeal confirmed, in paragraph 17 of the contested decision, the examiner’s finding that the word ‘elite’ can be used in English as an adjective that qualifies a noun, which is not disputed by the applicant. In view of the possible meanings of the English word ‘elite’ in the Oxford English Dictionary mentioned by the applicant, in particular, to the effect that it denotes a select group that is superior in terms of ability or qualities to the rest of a group or society, the Board of Appeal did not err in finding, in paragraph 20 of the contested decision, that the word ‘elite’ refers to the notion of exclusivity.

26      Indeed, it is apparent from the very case-law cited by the applicant that the word ‘elite’ can be used to convey a positive image or connotation, linking the idea of something superior to that of a privilege or a selection, even of exclusivity, including in relation to goods or services (see, to that effect, judgment of 9 April 2014 in Elite Licensing v OHIM — Aguas De Mondariz Fuente del Val (elite BY MONDARIZ), T‑386/12, EU:T:2014:198, paragraphs 94 to 97).

27      Secondly, as regards the noun ‘pad’, the applicant does not dispute, as such, the meaning in English adopted by the examiner and confirmed by the Board of Appeal, namely a panel or patch of material which is constructed so as to be responsive to pressure or touch, which is one of the possible meanings found in the dictionary. Having regard to the goods designated by the mark applied for, the Board of Appeal was correct in upholding that meaning. The alternative meanings put forward by the applicant, namely that referring to rubber strips used for traffic signals and that relating to a flat or curved component set into the surface of a door, wall or ceiling, cannot be regarded as realistic meanings in relation to the goods designated by the mark applied for.

28      Having regard to the meaning of the components of the sign ELITEPAD accepted in paragraphs 25 to 27 above, the Board of Appeal was correct in finding, in paragraph 20 of the contested decision, that that sign would be understood by the relevant public as referring to computers or computer hardware containing a panel which is responsive to pressure or touch and which is exclusive or has exclusive and special characteristics or which is of excellent quality.

29      Therefore, the Board of Appeal did not err in law in concluding, in paragraph 24 of the contested decision, that the sign ELITEPAD presented a sufficiently close link with the goods designated by the mark applied for for that sign to fall within the scope of the prohibition laid down in Article 7(1)(c) of Regulation No 207/2009.

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

31      First, as regards the applicant’s argument that the word ‘elite’ is not used in ordinary language to describe goods, particularly consumer goods relating, inter alia, to computers, it must be recalled that, according to the case-law, in order for a mark to be refused registration 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 article 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 (judgments in OHIM v Wrigley, cited in paragraph 15 above, EU:C:2003:579, paragraph 32; of 22 June 2005 in Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, ECR, EU:T:2005:247, paragraph 34; and 22 May 2008 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), T‑254/06, EU:T:2008:165, paragraph 32).

32      Second, as regards the applicant’s argument that exclusivity is not a commercially relevant essential characteristic or specific advantage for manufacturers of computer hardware, suffice it to recall that it is irrelevant whether the characteristics of the goods or services which may be described by a sign are commercially essential or merely ancillary. The wording of Article 7(1)(c) of Regulation No 207/2009 does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see, by analogy, judgment of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraph 102).

33      Third, as regards the applicant’s arguments relating to previous decisions of OHIM accepting registration of marks containing the word ‘elite’, suffice it to recall that, according to settled case-law, decisions concerning registration of a sign as a Community trade mark which 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. Accordingly, the question of whether a sign may be registered 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 any previous practice of the Boards of Appeal (judgment of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 47, and order of 13 February 2008 in Indorata-Serviços e Gestão v OHIM, C‑212/07 P, EU:C:2008:83, paragraphs 43 and 44).

34      Admittedly, it is clear from the case-law that OHIM must, when examining an application for registration of a Community trade mark, take account of the decisions already made in respect of similar applications and consider with especial care whether it should follow them or not (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 74). However, the application of the principles of equal treatment and sound administration must respect the law. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgment in Agencja Wydawnicza Technopol v OHIM, EU:C:2011:139, paragraphs 75 to 77).

35      In the present case, because of the goods designated by the mark applied for and the way in which the sign ELITEPAD would be perceived by the relevant public, the application for registration was caught by the ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009. Therefore, the applicant cannot successfully rely, for the purposes of casting doubt on the conclusion reached by the Board of Appeal in the contested decision, on OHIM’s previous decisions (see, to that effect, judgments in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 34 above, EU:C:2011:139, paragraphs 78 and 79, and of 13 January 2014 in LaserSoft Imaging v OHIM (WorkflowPilot), T‑475/12, EU:T:2014:2, paragraph 32).

36      Moreover, as indicated in paragraph 7 above, the Board of Appeal duly gave its reasons for not following the decisional practice relied on by the applicant. Consequently, the latter’s argument that that was unjustified cannot succeed.

37      It follows from the foregoing considerations that the Board of Appeal did not infringe Article 7(1)(c), nor, therefore, Article 7(2) of Regulation No 207/2009, in finding that the sign ELITEPAD was descriptive of the goods designated by it and that it could not, as a result, be registered as a Community trade mark. The first plea in law must therefore be rejected.

38      As regards the second plea in law, suffice it to recall that, 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 the sign at issue not to be registrable as a Community trade mark (see judgment of 12 January 2005 in Wieland-Werke v OHIM (SnTEM, SnPUR, SnMIX), T‑367/02 to T‑369/02, ECR, EU:T:2005:3, paragraph 45 and the case-law cited). It follows that there is no need to give a ruling on the second plea in law, alleging infringement of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009.

39      The action must therefore be dismissed in its entirety.

 Costs

40      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Hewlett Packard Development Company LP to pay the costs.

Frimodt Nielsen

Dehousse

Collins

Delivered in open court in Luxembourg on 22 October 2015.

[Signatures]