JUDGMENT OF THE GENERAL COURT (Third Chamber)

21 September 2011 (*)

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

In Case T-512/10,

Nike International Ltd, established in Beaverton, Oregon (United States of America), represented by M. de Justo Bailey, lawyer,

applicant,

v

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

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 25 August 2010 (case R 640/2010-4), concerning an application for registration of the word sign DYNAMIC SUPPORT as a Community trade mark,

THE GENERAL COURT (Third Chamber),

composed of O. Czúcz, President, I. Labucka (Rapporteur) and D. Gratsias, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 26 October 2010,

having regard to the response lodged at the Court Registry on 25 January 2011,

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 give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

1        On 14 May 2009 the applicant, Nike International Ltd, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation 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 DYNAMIC SUPPORT.

3        The goods in respect of which registration was sought fall within Class 25 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: ‘Footwear’.

4        By decision of 18 February 2010 the examiner rejected the Community trade mark application in respect of the goods referred to in paragraph 3 above on the ground that the trade mark applied for was descriptive. Thus, he considered that it could not be registered in accordance with Article 7(1)(b) and (c) and (2) of Regulation No 207/2009.

5        On 19 April 2010, the applicant filed an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.

6        By decision of 25 August 2010 (‘the contested decision’) the Fourth Board of Appeal of OHIM dismissed the appeal. It considered, in essence, that the expression ‘dynamic support’ was descriptive for footwear and would be perceived by consumers, without further thought, as an indication that the footwear provides dynamic and adapted support. It found, furthermore, that the evidence put forward by the applicant was not sufficient to establish distinctive character acquired through use of the trade mark applied for.

 Forms of order sought

7        The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

8        OHIM contends that the Court should:

–        dismiss the application;

–        order the applicant to pay the costs.

 Law

9        The applicant raises a single plea alleging infringement of Article 7(1)(c) of Regulation No 207/2009. It claims that the Board of Appeal was wrong in finding that the trade mark applied for was descriptive for the goods covered by it, namely footwear.

10      OHIM disputes the applicant’s arguments.

11      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. Furthermore, Article 7(2) of the regulation provides that Article 7(1) is to apply notwithstanding that the grounds for refusal exist in only part of the European Union.

12      Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, paragraph 31, and Case T-322/03 Telefon & Buch v OHIM – Herold Business Data (WEISSE SEITEN) [2006] ECR II-835, paragraph 89).

13      From that point of view, the signs and indications referred to in the provision cited are those which may serve in normal usage from the point of view of the relevant 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 (Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 39). A sign’s descriptiveness can be therefore assessed only by reference to the goods or services concerned and to the way in which it is understood by the relevant public (WEISSE SEITEN, paragraph 90). Furthermore, registration of a Community word mark is excluded when that mark is descriptive in one of the official languages of the European Union (see, to that effect, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 40).

14      For the purposes of the application of Article 7(1)(c) of Regulation No 207/2009 it should be examined whether there is a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the relevant public immediately to perceive, without further thought, a description of those goods or those services or of one of their characteristics (see, to that effect, judgment of 2 April 2008 in Case T-181/07 Eurocopter v OHIM (STEADYCONTROL), not published in the ECR, paragraph 36).

15      Furthermore, where an application is made to register a sign as a Community trade mark, without distinction, for an entire category of goods and that sign is descriptive of only some of the goods in that category, the ground for refusal referred to in Article 7(1)(c) of Regulation No 207/2009 nevertheless precludes registration of that sign for the whole of that category (see, to that effect, Case T‑106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II‑723, paragraph 46, and Case T‑458/05 Tegometall International v OHIM – Wuppermann (TEK) [2007] ECR II‑4721, paragraph 94, and the case-law cited).

16      As regards signs consisting of a neologism or of a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, it should be borne in mind that, according to case-law, the combination of descriptive terms is itself, in principle, descriptive of those goods or services, unless, because of the unusual nature of the combination, the sign in question creates an impression which is sufficiently far removed from that produced by the mere combination of meanings of its component elements, with the result that the word is more than the sum of its parts (judgment of 17 October 2007 in Case T‑105/06 InterVideo v OHIM (WinDVD Creator), not published in the ECR, paragraph 34, and STEADYCONTROL, paragraphs 36 and 37).

17      Firstly, as regards the relevant public, the Board of Appeal stated, in paragraph 17 of the contested decision, that it would not only include consumers of English-speaking Member States of the European Union but may also include other speakers throughout the territory of the European Union who are able to understand the meaning of the sign composed of English words which are relatively common and are similar in several languages.

18      The applicant submits that, by also including consumers whose maternal language is not English in the relevant public, the Board of Appeal broadened the scope of the relevant public to the detriment of the applicant.

19      In that regard, it must be noted firstly that, under Article 7(2) of Regulation No 207/2009, signs will not be registered even if the grounds for refusal exist in only part of the European Union. In addition, as pointed out in paragraph 13 above, registration of a trade mark application is excluded when the mark is descriptive in one of the official languages of the European Union. It follows that, in the present case, to be refused registration, it was sufficient for the sign applied for to be descriptive in at least one of the English-speaking countries of the European Union. Therefore, the fact that the Board of Appeal included the non English-speaking public who are able to understand the meaning of the expression ‘dynamic support’ in the relevant public did not in any way lessen the requirement imposed on OHIM to establish the existence of a descriptive character of the trade mark applied for in at least part of the European Union.

20      For the sake of completeness, it must be noted that the applicant has not specified in what respect the broadening of the scope of the relevant public by the Board of Appeal is to its detriment.

21      Furthermore, the Court has already held that, for signs composed of English words, the relevant public may include a public having a sufficient knowledge of the English language (see, to that effect, Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II‑3411, paragraph 76, and judgment of 12 March 2008 in Case T‑128/07 Suez v OHIM (Delivering the essentials of life), not published in the ECR, paragraph 22).

22      Finally, it is possible, as was correctly found by the Board of Appeal, that a sign composed of standard words of the English language, like that in the present case, may be understood by non English-speaking consumers because of the existence of similar words in their own language. It follows that the arguments of the applicant relating to the assessment of the relevant public must be rejected.

23      Secondly, in respect of the descriptive character of the trade mark applied for, the Board of Appeal found at paragraph 15 of the contested decision that the expression ‘dynamic support’ would be understood as referring to something which is not static, but active and serves to support or sustain something else. In the context of footwear, which are in this case the goods covered by the trade mark applied for, this expression would be understood by consumers, without further thought, as an indication that the footwear provides dynamic and adapted support to the consumer who wears them.

24      The applicant claims that the expression ‘dynamic support’ is not descriptive but merely allusive for the goods in question. Likewise, a conceptual contradiction exists between the terms ‘dynamic’ and ‘support’ the combination of which does not constitute a familiar expression in the English language to refer to the essential characteristics of footwear.

25      As the Board of Appeal found, the expression ‘dynamic support’ is comprised of the terms ‘dynamic’ and ‘support’, themselves descriptive, which the applicant does not dispute. It must be noted that the combination of those two elements is not an unusual expression likely to create an impression which is sufficiently far removed from that which results from the mere combination of meanings of those two elements, in accordance with the case-law cited at paragraph 16 above. Indeed, faced with the trade mark applied for in relation to the goods covered by it, the consumer will identify immediately and without further thought the expression ‘dynamic support’ as describing the characteristics of the footwear. Furthermore, it is noteworthy, in this respect, that to offer dynamic and adapted support during any sporting activities is one of the essential characteristics of sports footwear, which is part of the category of goods covered by the trade mark applied for.

26      Moreover, the applicant’s arguments that the terms comprising the trade mark applied for are conceptually contradictory are without foundation. It is evident that support can be dynamic and adapted as is the case with footwear which, as support for the feet of the runner, adapts in a dynamic manner to running conditions.

27      Furthermore, in relation to the arguments of the applicant that the term ‘dynamic’ may be understood many ways, particularly when it refers to footwear, it should be borne in mind that the fact that the trade mark applied for can have several meanings does not prevent the application of the absolute ground for refusal provided for in Article 7(1)(c) of Regulation No 207/2009. According to settled case-law, a word sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (OHIM v Wrigley, paragraph 32, and judgment of 9 March 2010 in Case T‑15/09 Euro-Information v OHIM (EURO AUTOMATIC CASH), not published in the ECR, paragraph 39).

28      Therefore the Board of Appeal was fully entitled to find that the trade mark applied for was descriptive for footwear.

29      It follows that the single plea in law must be rejected and, therefore, the action as a whole dismissed.

 Costs

30      Under Article 87(2) 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.

31      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 (Third Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Nike International Ltd to pay the costs.

Czúcz

Labucka

Gratsias

Delivered in open court in Luxembourg on 21 September 2011.

[Signatures]