JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

22 October 2015(*)

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

In Case T‑563/14,

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 19 May 2014 (Case R 1539/2013-2), concerning an application for registration of the word sign ELITEDISPLAY 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 29 July 2014,

having regard to the response lodged at the Court Registry on 14 October 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 4 February 2013, 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 ELITEDISPLAY.

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: ‘Computer monitors; computer displays’.

4        By decision of 25 June 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. The examiner found that the sign in question consisted of a simple combination of the words ‘elite’ and ‘display’ and that the word ‘elite’ would be associated with the goods in respect of which registration was sought as meaning, inter alia, ‘exclusive’. He consequently concluded that the mark applied for would be understood, without reflection, as describing the kind and quality of the goods designated by it.

5        On 8 August 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 19 May 2014 (‘the contested decision’), the Second Board of Appeal of OHIM essentially upheld the examiner’s assessment. It dismissed the appeal and refused registration of the mark applied for pursuant to Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

7        In particular, as regards, first, the descriptiveness of the mark for the purposes of Article 7(1)(c) of Regulation No 207/2009, the Board of Appeal found that the sign ELITEDISPLAY consisted of two conjoined word elements, ‘elite’ and ‘display’. Therefore, in relation to the goods in respect of which registration was sought, it would be understood as referring to a computer screen or similar piece of equipment that shows information, selected as the best. It found, inter alia, that although initially the word ‘elite’ referred to the most powerful, gifted or educated members of a group of persons or community, it was nowadays also understood — in English — as relating to or suitable for an elite or as exclusive. In addition, it noted that the meaning of the word ‘display’, referring to a computer screen or similar piece of equipment that shows information, was not disputed.

8        In short, the Board of Appeal found that the sign ELITEDISPLAY, as a whole, did not amount to anything more than or different from the combination of its individual elements and that, as the sum of two descriptive elements, it was itself descriptive. It found that the meaning of that sign would immediately and without further reflection be understood by the relevant public. As to OHIM’s practice relied on by the applicant, the Board of Appeal stated that it was bound only by Regulation No 207/2009 and that, in any event, the precedents relied on by the applicant were not comparable to the present case.

9        As regards, secondly, the mark’s lack of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009, the Board of Appeal found that the mark applied for had also to be refused pursuant to that provision, since it would be perceived as descriptive and laudatory in relation to the goods designated by it and, therefore, could not guarantee the identity of the commercial origin of those goods to the consumer or end-user.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

11      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

12      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.

13      In the context of the first plea in law, the applicant complains that the Board of Appeal erred in finding that the sign ELITEDISPLAY was descriptive of the goods in respect of which registration was sought.

14      The applicant claims that the sign ELITEDISPLAY does not constitute, in ordinary language, an indication descriptive of any essential characteristic of the goods in question that would immediately, and without further reflection, be perceived by the relevant public. The meaning given to the sign ELITEDISPLAY by the Board of Appeal was not supported by any lexical proof or any example. The applicant claims that breaking down the mark applied for into two elements, ‘elite’ and ‘display’, was the result of a misinterpretation of the sign. Such an interpretation does not reflect the understanding of the relevant public, who normally perceive a mark as a whole.

15      In particular, the applicant claims that the word ‘elite’ refers to persons or groups of persons and that it is not used to designate such objects as the goods covered by the mark applied for. In addition, in ordinary language, the word ‘elite’ is used as a noun and not as an adjective. The Board of Appeal’s interpretation therefore does not reflect the conventional meaning of that word. The applicant submits that, even if the relevant public perceived the word ‘elite’, in relation to the goods concerned, as indicating excellent quality, that [mental] leap could not be made immediately and without some reflection. Lastly, the applicant claims that the Board of Appeal arbitrarily departed from OHIM’s practice in relation to trade marks containing the word ‘elite’.

16      OHIM disputes the applicant’s arguments.

17      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.

18      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).

19      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 18 above, EU:C:2003:579, paragraph 30, and TRUEWHITE, cited in paragraph 18 above, EU:T:2011:340, paragraph 13).

20      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 18 above, EU:T:2011:340, paragraph 14 and the case-law cited).

21      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 18 above, EU:T:2011:340, paragraph 17).

22      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.

23      In the present case, as regards the relevant public, the Board of Appeal found, in paragraph 15 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.

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

25      As regards the meaning of the sign ELITEDISPLAY, the Board of Appeal found that, in relation to the goods in respect of which registration was sought, that sign was capable of referring to a computer screen or similar piece of equipment that shows information and that has been selected as the best.

26      First of all, it must be observed that, in accordance with the case-law cited in paragraph 21 above, the Board of Appeal correctly carried out an analysis of the descriptiveness of the mark applied for in relation to the goods in question, namely computer monitors and displays, and the perception of the relevant public, namely, the English-speaking public in the European Union.

27      Next, it should be observed that the Board of Appeal was correct in finding, in paragraphs 21 and 25 of the contested decision, that — in English — the simple combination of the components ‘elite’ and ‘display’, coupled 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).

28      Lastly, as regards the meaning of the words ‘elite’ and ‘display’, first, the Board of Appeal was correct in finding, in paragraphs 18 and 19 of the contested decision, that the word ‘elite’ was used in English to describe not only persons, but also objects. In addition, in view of the possible meanings of the English word ‘elite’ in the Oxford English Dictionary cited 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 19 of the contested decision, that the word ‘elite’ refers to the notion of exclusivity.

29      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).

30      Secondly, as regards the word ‘display’, it is not disputed, as the Board of Appeal noted in paragraph 20 of the contested decision, that its meaning calls to mind a computer screen or similar piece of equipment that shows information.

31      Therefore, the Board of Appeal did not err in concluding, in paragraph 34 of the contested decision, that the sign ELITEDISPLAY, conveying the meaning set out in paragraph 25 above, presented a sufficiently close link with the goods designated by the mark applied for, namely computer monitors and displays, for that sign to fall within the scope of the prohibition laid down in Article 7(1)(c) of Regulation No 207/2009.

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

33      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 18 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).

34      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).

35      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).

36      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).

37      In the present case, because of the goods designated by the mark applied for and the way in which the sign ELITEDISPLAY 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 36 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).

38      Moreover, as indicated in paragraph 8 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.

39      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 ELITEDISPLAY was descriptive of the goods in respect of which registration was sought and that it could not, as a result, be registered as a Community trade mark. The first plea in law must therefore be rejected.

40      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.

41      The action must therefore be dismissed in its entirety.

 Costs

42      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]