JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

3 December 2015 (*)

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

In Case T‑628/14,

Hewlett Packard Development Company LP, established in Dallas, 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 L. Rampini, acting as Agent,

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 3 June 2014 (Case R 249/2014‑2), concerning an application for registration of the word sign FORTIFY 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 20 August 2014,

having regard to the response lodged at the Court Registry on 4 November 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, applicable in the present case pursuant to Article 227(7) of the Rules of Procedure of the General Court,

gives the following

Judgment

 Background to the dispute

1        On 26 April 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        Registration as a mark was sought for the word sign FORTIFY.

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: ‘Software for analysing source code; software for detecting and describing vulnerabilities and associated mitigation techniques based on an analysis of source code; software for preventing hacking of or attacks on computer programs and software systems based on runtime analysis of software behaviour and use; computer software’.

4        By decision of 20 November 2013, the examiner refused the 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 under Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

5        On 20 January 2014, 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 3 June 2014 (‘the contested decision’), notified to the applicant on 17 June 2014, the Second Board of Appeal of OHIM dismissed the appeal and upheld the examiner’s decision, holding that the application for registration of the word sign FORTIFY as a Community trade mark had to be rejected in respect of all the goods in question under the absolute ground for refusal in Article 7(1)(c) of Regulation No 207/2009. It held that there was no need to determine whether the mark applied for had also to be refused registration under Article 7(1)(b) of Regulation No 207/2009.

7        In particular, the Board of Appeal found that the examiner had not erred in concluding that the sign FORTIFY described the intended purpose of the goods in question, namely to strengthen a computer system and reinforce it against external threats. It found that it was clear from the wording [of the specifications] of the goods, in particular, of software for preventing hacking or attacks on computer programs and software systems, that a computer system was reinforced or fortified by the action of such software. It observed that a computer system was comparable to a living organism, and therefore capable of receiving treatment and being fortified thereby. It concluded that consumers would, without further reflection, assume that the sign at issue describes the function of the goods in question and that it is not intended to indicate a trade origin.

8        As regards the Community word mark FORTIFY, relied on by the applicant as a precedent, registered under No 2871622 on 2 April 2004 in respect of goods in Class 9 corresponding to the description ‘software’, and which expired on 27 September 2012, the Board of Appeal found that, the fields of computing and telecommunications having evolved significantly in recent years, it was not possible to draw a definitive conclusion regarding the registrability of the sign at issue. It held, in addition, that it was not bound in the present case by the decisions of OHIM and a decision of the US authorities, also relied on by the applicant as precedents, which had allowed the registration of trade marks containing the word ‘fortify’.

 Forms of order sought

9        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

10      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

11      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.

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

13      In particular, it claims that the Board of Appeal misinterpreted the term ‘fortify’, inasmuch as the meaning ascribed to it by the Board of Appeal, namely ‘to reinforce’ or ‘to strengthen’, does not describe a characteristic of the goods in question. Observing that the ground for refusal of registration set out in Article 7(1)(c) of Regulation No 207/2009 applies only to signs and indications which directly describe, without further reflection, the goods or services, the applicant claims that software can only protect a computer system from external threats, but cannot fortify it because that would necessitate an alteration of that system. Therefore, any link between the goods concerned and the sign FORTIFY is not one that would be drawn directly and without further reflection on the part of the relevant public, but only following further mental steps, which would preclude the application of the ground for refusal in question. In addition, it submits that the fact that no descriptive use of the term ‘fortify’ has been established in practice in relation to the goods in question constitutes evidence that that term is not suitable for describing the goods in question. The applicant also claims, in essence, that the Board of Appeal arbitrarily departed from previous decision-making practice, disregarding the principles of equality and legal certainty. It refers, inter alia, to the Community word mark FORTIFY No 2871622 (see paragraph 8 above), to other Community trade marks and to a US trade mark, which contain the word ‘fortify’ and which cover goods which, for the purposes of assessing its descriptive character, are comparable to those covered by the mark applied for.

14      OHIM disputes the applicant’s arguments.

15      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.

16      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).

17      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 16 above, EU:C:2003:579, paragraph 30, and TRUEWHITE, cited in paragraph 16 above, EU:T:2011:340, paragraph 13).

18      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 16 above, EU:T:2011:340, paragraph 14 and the case-law cited).

19      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 16 above, EU:T:2011:340, paragraph 17).

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

21      In the present case, as regards the relevant public, as correctly found, in essence, in paragraphs 14 and 15 of the contested decision, a finding that is not disputed by the applicant, the goods at issue are aimed at average consumers, a public that is deemed to be reasonably well informed and reasonably observant and circumspect. In addition, in the light of the fact that the sign at issue consists of an English word, it is with regard to the average English-speaking consumer that the descriptiveness of the mark applied for must be assessed (see, to that effect, judgment in TRUEWHITE, cited in paragraph 16 above, EU:T:2011:340, paragraph 18 and the case-law cited).

22      The sign in respect of which registration as a Community word mark is sought consists of the English term ‘fortify’.

23      It is necessary, therefore, for the purposes of applying Article 7(1)(c) of Regulation No 207/2009, to consider, on the basis of a given meaning of the word sign at issue, whether, from the point of view of the relevant public, there is a sufficiently direct and specific relationship between the sign and the categories of goods in respect of which registration is sought (judgments of 26 November 2003 in HERON Robotunits v OHIM (ROBOTUNITS), T‑222/02, ECR, EU:T:2003:315, paragraph 38, and 7 November 2014 Kaatsu Japan v OHIM (KAATSU), T‑567/12, EU:T:2014:937, paragraph 32).

24      As regards the meaning of the word of which the mark applied for consists, it is not disputed, as the Board of Appeal observed in paragraph 13 of the contested decision, that that word means, in ordinary English, ‘to strengthen, support or reinforce’.

25      The Board of Appeal was correct in finding that the term ‘fortify’ designated an intended purpose of the goods concerned, namely to strengthen or reinforce a computer system.

26      Thus, by means of software dedicated, inter alia, to detecting vulnerabilities and preventing hacking of or attacks on computer programs and software systems, the operation or performance of a computer system is improved and that system may be regarded as ‘fortified’. Therefore, when faced with the goods covered by the trade mark application, the relevant public will immediately and without further reflection perceive the intended purpose.

27      The Board of Appeal was therefore fully entitled to conclude that the mark applied for was descriptive of the goods in question for the purposes of Article 7(1)(c) of Regulation No 207/2009.

28      That conclusion is not called into question by the applicant’s arguments.

29      First, the applicant submits that the interpretation of the term ‘fortify’ accepted by the Board of Appeal, whereby that term refers to the reinforcement of a computer system, constitutes merely a claim as to a certain characteristic of the goods in question, and not a description of a characteristic of those goods. It submits that because software is not capable of altering computer systems, but only of protecting them from the outside, software is not capable of ‘making them stronger’. Consequently, according to the applicant, the relevant public would not directly and without further reflection establish a connection between the sign at issue and the meaning ascribed to it by the Board of Appeal, since a further mental step would be necessary.

30      In this connection, it should be observed that the distinction drawn by the applicant between fortifying a computer system through an alteration and protecting it from the outside has not been substantiated. As OHIM has observed, those two actions have the same intended purpose, namely to improve in some way the operation or performance of a computer system. The fact that the interventions take place from the inside or from the outside of a computer system does not alter the fact that the sign at issue will be perceived as descriptive by the relevant public, consisting of average consumers. Therefore, the sign FORTIFY directly describes the intended purpose of the goods in question.

31      Secondly, although the applicant submits that the fact that no descriptive use of the term ‘fortify’ has been established in practice in relation to the goods concerned constitutes evidence that that term is not suitable for describing the goods in question, such an argument cannot succeed.

32      In order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs 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 such as those in relation to which the application is filed, or of characteristics of those goods. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A word sign must accordingly be refused registration under that provision if, as in the present case, it designates a characteristic of the goods in question (order of 5 February 2004 in Telefon & Buch v OHIM, C‑326/01 P, ECR, EU:C:2004:72, paragraph 28; judgments of 15 November 2012 in Verband Deutscher Prädikatsweingüter v OHIM (GG), T‑278/09, EU:T:2012:601, paragraph 37, and 30 January 2015 Siemag Tecberg Group v OHIM (Winder Controls), T‑593/13, EU:T:2015:58, paragraph 47). In applying that provision, the Board of Appeal did not therefore have to look for actual use of the sign at issue in a way that is descriptive of the goods in question. Furthermore, the absence of such actual use cannot be regarded as evidence that the sign at issue is not descriptive.

33      Thirdly, the applicant claims that the Board of Appeal arbitrarily departed from relevant previous decision-making practice. In particular, as regards the Community word mark FORTIFY No 2871622 (see paragraph 8 above), the applicant disputes the validity of the Board of Appeal’s proposition that, the field of computing having evolved, it was not possible to draw conclusions from the registration of such a trade mark. It submits that the concept of protective software existed at the time trade mark No 2871622 was registered, and that if the sign FORTIFY is descriptive of the goods in question, that issue ought to have been raised at the time of registration of that mark.

34      It is true that, according to the case-law, 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 in question and the perception of the relevant public, the application for registration is caught by the ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009. It follows that 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 and, a fortiori, on decisions of other courts (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 LaserSoft Imaging v OHIM (WorkflowPilot), T‑475/12, EU:T:2014:2, paragraph 32).

36      Moreover, the Board of Appeal duly gave its reasons for not following the previous 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 FORTIFY was descriptive of the intended purpose 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 substance of 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 bear its own costs and to pay the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

Frimodt Nielsen

Dehousse

Collins

Delivered in open court in Luxembourg on 3 December 2015.

[Signatures]