JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

5 February 2015 (*)

(Community trade mark — International registration designating the European Community — Word mark SMARTER SCHEDULING — Absolute ground for refusal — Lack of distinctiveness — Article 7(1)(b) of Regulation (EC) No 207/2009)

In Case T‑499/13,

nMetric LLC, established in Costa Mesa, California (United States), represented by T. Fuchs and A. Münch, lawyers,

applicant,

v

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

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 17 June 2013 (Case R 887/2012-2), concerning the international registration, designating the European Community, of the word mark SMARTER SCHEDULING,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 9 September 2013,

having regard to the response lodged at the Court Registry on 9 December 2013,

having regard to the reply lodged at the Court Registry on 17 March 2014,

having regard to the rejoinder lodged at the Court Registry on 28 May 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 and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 22 August 2011, the applicant — nMetric LLC — obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) the international registration, bearing the reference IR 1093837 and designating the European Community, of the word mark SMARTER SCHEDULING (‘the trade mark applied for’).

2        On 8 November 2011, the international registration was notified to 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).

3        The goods in respect of which registration was sought fall within Class 9 of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended, and correspond to the following description: ‘Business management systems, namely, suite of computer programs for use in the scheduling, planning, coordination, and execution of business, engineering, manufacturing, services, projects and/or supply chain activities which may include, order management, inventory management, resource allocation, and management, manufacturing processes and management, services coordination and management, maintenance coordination and management, project and portfolio coordination and management, logistics, data analysis and management.’

4        By notification of 25 November 2011, the Office’s examiner notified the applicant that, pursuant to Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, the trade mark applied for was not capable of registration.

5        The applicant did not submit any observations in response to the examiner.

6        By decision of 29 February 2012, the examiner maintained her initial objections and, on the basis of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009, refused the application for registration in respect of all the goods referred to in paragraph 3 above, on the ground that the trade mark applied for was devoid of distinctive character. The examiner found, in particular, that the expression ‘smarter scheduling’ was linked to the goods referred to in the application and would be perceived by the relevant public as a promotional laudatory message whose purpose was to highlight the positive aspects of the goods concerned and which, accordingly, would not enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods concerned.

7        On 27 April 2012, the applicant lodged an appeal with OHIM against the examiner’s decision, under Articles 58 to 64 of Regulation No 207/2009.

8        By decision of 17 June 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal on the same grounds as those relied on by the examiner. It found, in particular, that the relevant public is composed of attentive and observant professionals, who would none the less perceive the term ‘smarter scheduling’ in the same way as those members of the general public who have knowledge of the English language. According to the Board, the definitions of ‘smarter’ and ‘scheduling’ relate directly to the goods covered by the trade mark applied for, which are supposed to make smart scheduling easier. The Board stated, moreover, that a trade mark consisting of a banal expression which merely makes a claim about the merits of the goods on which it is displayed is unlikely to serve as an indication of commercial origin. Accordingly, in view of the fact that the term ‘smarter scheduling’ contained no fanciful element which, beyond its obvious promotional meaning, might enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned, the Board of Appeal held that the trade mark applied for should be regarded as devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.

 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      The applicant raises a single plea in law in support of its action, alleging infringement of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009. That plea is subdivided into two parts, by which it is respectively submitted that: (i) the trade mark applied for is not descriptive and (ii) the trade mark applied for is distinctive.

12      Under Article 4 of Regulation No 207/2009, a Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

13      The essential function of a trade mark is to identify the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service 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 of 12 June 2007 in MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, EU:T:2007:172, paragraph 28, and of 14 June 2007 in Europig v OHIM (EUROPIG), T‑207/06, ECR, EU:T:2007:179, paragraph 25).

14      Under Article 7(1)(b) of Regulation No 207/2009, trade marks which are devoid of any distinctive character are not to be registered.

15      According to settled case-law, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (judgments of 29 April 2004 in Henkel v OHIM, C‑456/01 P and C‑457/01 P, ECR, EU:C:2004:258, paragraph 34, and of 21 January 2010 in Audi v OHIM, C‑398/08 P, ECR, EU:C:2010:29, paragraph 33).

16      That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration or the protection of the mark has been applied for and, second, by reference to the perception of the relevant public (judgments in Henkel v OHIM, paragraph 15 above, EU:C:2004:258, paragraph 35, and Audi v OHIM, paragraph 15 above, EU:C:2010:29, paragraph 34).

 The first part

17      The applicant first contests the view that the word elements ‘smarter’ and ‘scheduling’ are capable of referring directly to the goods covered by the trade mark applied for. The relevant public would need several stages of reasoning in order to link the expression ‘smarter scheduling’ with the goods covered by the trade mark applied for, which are specific business management systems.

18      However, the descriptive character of the trade mark applied for is not at issue in the present case. Neither the Board of Appeal in the contested decision nor OHIM before the Court has argued that, pursuant to Article 7(1)(c) of Regulation No 207/2009, the trade mark cannot be registered because of its descriptive character — a point which is acknowledged, moreover, by the applicant.

19      It should nevertheless be noted that the Board of Appeal of OHIM considered, in paragraphs 13 to 16 of the contested decision, the meaning of the expression ‘smarter scheduling’ in relation to the goods covered by the trade mark applied for and that OHIM also referred in its reply to the case-law according to which a sign must be refused registration where at least one of its possible meanings refers to a characteristic of the goods or services concerned (judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 32, and of 12 July 2012 in medi v OHIM (medi), T‑470/09, EU:T:2012:369, paragraph 29).

20      Although that case-law is in essence based on Article 7(1)(c) of Regulation No 207/2009, it has also been used, by analogy, as a ground for refusal under Article 7(1)(b) of Regulation No 207/2009 (see, to that effect, judgment of 29 April 2010 in Kerma v OHIM (BIOPIETRA), T‑586/08, EU:T:2010:171, paragraph 35 and the case-law cited).

21      It should further be noted that, according to the case-law, a descriptive mark for the purposes of Article 7(1)(c) of Regulation No 207/2009 is devoid of any distinctive character and is also caught by Article 7(1)(b) of that regulation, on the ground that a descriptive word mark is necessarily devoid of any distinctive character (see, to that effect and by analogy, judgment of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraphs 85 and 86, and judgment of 29 March 2012 in Kaltenbach & Voigt v OHIM (3D eXam), T‑242/11, EU:T:2012:179, paragraph 39).

22      However, if a mark is not descriptive for the purposes of Article 7(1)(c) of Regulation No 207/2009, it is not, by the same token, necessarily distinctive. In such a case, consideration should also be given to whether the mark is not inherently covered by the rule set out in Article 7(1)(b), that is to say, it is necessary to determine whether it is incapable of fulfilling the essential function of a trade mark, which is to guarantee to the consumer or end-user the identity of the origin of the goods or services covered by the mark by enabling him, without any possibility of confusion, to distinguish those goods or services from others which have another origin (see, to that effect, judgment of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 60, and judgment of 8 May 2008 in Eurohypo v OHIM, C‑304/06 P, ECR, EU:C:2008:261, paragraph 56).

23      There is thus a measure of overlap between the scope of Article 7(1)(b) of Regulation No 207/2009 and the scope of Article 7(1)(c) of that regulation, Article 7(1)(b) nevertheless being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (see judgment of 25 April 2013 in Bayerische Motoren Werke v OHIM (ECO PRO), T‑145/12, EU:T:2013:220, paragraph 19 and the case-law cited).

24      Consequently, the applicant’s argument alleging that the mark is not descriptive must be understood as in fact challenging one of the grounds which led the Board of Appeal to find that the trade mark applied for was devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009, and it is on the basis of that understanding that the argument falls to be examined.

 The second part

25      It should be noted that the distinctiveness of a mark must be assessed, first, by reference to the goods or services in respect of which registration or the protection of the mark has been applied for and, second, by reference to the perception of the relevant public (paragraph 16 above).

26      With respect to the definition of the relevant public, it must be stated at the outset that the applicant does not dispute the Board of Appeal’s finding that the relevant public is composed of English-speaking professionals, who will pay a higher than average degree of attention to the goods at issue. The applicant argues, however, that this is not sufficient to support a finding that that English-speaking public will make a direct link between the term ‘smarter scheduling’ and business management systems such as the software covered by the trade mark applied for.

27      However, the assessment by the relevant public of the term ‘smarter scheduling’ is a question more closely related to the substantive issue of whether the trade mark applied for is distinctive than to the actual definition of ‘the relevant public’ for the purposes of that analysis. It is appropriate, therefore, to confirm the finding made by the Board of Appeal in the contested decision to the effect that the relevant public is composed of attentive and observant English-speaking professionals whose degree of attention is higher than average.

28      As regards, on the one hand, the reference to the goods covered by the trade mark applied for, the applicant disputes the view that it would not be possible for that mark to be perceived as an indication of the commercial origin of those goods.

29      The applicant submits, first, that the simple fact that the word ‘smart’ is frequently used in computer technology is not sufficient, in itself, to support the conclusion that that word is descriptive. In various earlier decisions, moreover, the Board of Appeal has accepted marks containing the word element ‘smart’ or ‘smarter’ where the second word element was perceived as unclear or devoid of any obvious descriptive character. The applicant submits, secondly, that the trade mark applied for does not have only a promotional meaning, but also enables the relevant public to remember it, as it is fanciful with regard to those goods. The fanciful nature of the mark derives both from its word elements considered separately and from those elements taken together.

30      As regards, on the other hand, the reference to the relevant public, the applicant argues that that public could associate the term ‘smarter scheduling’ with any goods, not just those covered by the trade mark applied for. For members of the relevant public, according to the applicant, it will not only be business management systems, in particular software, that come to mind in that context. The applicant adds that the term ‘smarter scheduling’ has been registered for the same goods in the United States, where the relevant public is also composed of English-speaking professionals and consumers.

31      OHIM disputes the applicant’s arguments.

32      In the circumstances, the Board of Appeal found in paragraphs 13 and 14 of the contested decision that the word ‘smart’ means ‘appearing to have a degree of intelligence; capable of some independent action’ and is frequently used in computer technology to denote how sophisticated and intelligent a program or machine is. The same is true of the comparative ‘smarter’ which refers to a degree of sophistication and intelligence which is yet higher. The word ‘scheduling’ refers directly to the planning and coordination capacities of the software covered by the trade mark applied for.

33      The Board of Appeal was therefore correct in finding that the trade mark applied for simply informed the relevant public that the software covered by that mark assisted with scheduling, in which planning, coordination, and execution may be considered essential steps, in a more intelligent manner than other systems. The relevant public will therefore not perceive it as an indication of the commercial origin of the goods at issue enabling the consumer who purchased them 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, to that effect, judgment of 3 July 2003 in Best Buy Concepts v OHIM (BEST BUY), T‑122/01, ECR, EU:T:2003:183, paragraph 20).

34      Moreover, as OHIM observes, the applicant’s website (www.nMetric.com) clearly indicates — through the use of expressions such as ‘schedule more effectively and more realistically’ or ‘schedule faster and more easily’, which give direct information on the nature of the goods concerned — that one of the main characteristics of the software covered by the trade mark applied for is to make the job of scheduling easier.

35      Accordingly, the fact that the term ‘smarter scheduling’ may possibly be associated with other goods or services of other brands such as goods made from paper or cardboard is not sufficient to cast doubt on the Board of Appeal’s conclusion that the trade mark applied for does not make it possible to identify or distinguish the goods concerned from those of other manufacturers of similar goods, since at least one of the possible meanings of the trade mark at issue refers to goods covered by the registration or one of their characteristics (see, to that effect, judgment of 23 November 2011 in Geemarc Telecom v OHIM — Audioline (AMPLIDECT), T‑59/10, EU:T:2011:690, paragraph 53).

36      Such an argument must therefore be declared ineffective ab initio (see, to that effect, judgment of 15 September 2009 in Wella v OHIM (TAME IT), T‑471/07, ECR, EU:T:2009:328, paragraph 27).

37      In the light of the case-law mentioned in paragraph 21 above, therefore, the Board of Appeal could simply have found that the trade mark applied for was not distinctive because it described the goods covered by the registration or one of their characteristics.

38      The Board of Appeal nevertheless examined the argument that, as a mark composed of a combination of two word elements, the trade mark applied for could be perceived as a promotional formula with specific characteristics giving it a distinctive character.

39      From that point of view also, the line of reasoning adopted by the Board of Appeal must be approved.

40      First, in the case of a trade mark composed of a number of word elements, such as the trade mark applied for, distinctiveness may, in part, be examined in relation to each of those terms or elements, considered separately, but must in any event depend on an appraisal of the whole which those terms or elements go to make up. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot be distinctive (see, to that effect, judgment of 16 September 2004 in SAT.1 v OHIM, C‑329/02 P, ECR, EU:C:2004:532, paragraph 28).

41      Secondly, it should be recalled that the mere fact that a mark is perceived by the relevant public as a promotional formula and that, in the light of its laudatory nature, it could in principle be used by other companies is not in itself sufficient to support the conclusion that the mark is devoid of any distinctive character (judgment in Audi v OHIM, paragraph 15 above, EU:C:2010:29, paragraph 44).

42      In that regard, it should be noted that the laudatory connotation of a word mark does not prevent that mark from none the less providing consumers with a guarantee of the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of the goods or services concerned. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character (judgment in Audi v OHIM, paragraph 15 above, EU:C:2010:29, paragraph 44).

43      A word mark consisting of an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 207/2009 (see, to that effect and by analogy, judgment in Audi v OHIM, paragraph 15 above, EU:C:2010:29, paragraph 39 and the case-law cited).

44      However, although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan is distinctive, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character (see, to that effect, judgment in Audi v OHIM, paragraph 15 above, EU:C:2010:29, paragraph 47).

45      In the light of that case-law, it is appropriate to confirm the Board of Appeal’s finding, set out in paragraph 25 of the contested decision, that the term ‘smarter scheduling’ contains no fanciful element which, beyond its obvious promotional meaning, could enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned.

46      Moreover, since the applicant has not succeeded in demonstrating that the trade mark applied for has other, special characteristics capable of making that mark distinctive, the Board of Appeal was correct in concluding that the term ‘smarter scheduling’ does not indicate the commercial origin of the goods and is accordingly caught by Article 7(1)(b) of Regulation No 207/2009.

47      Lastly, it is necessary to reject the applicant’s argument that the trade mark applied for has already been registered in the United States or that earlier OHIM decisions have allowed the registration of word marks containing the word ‘smart’, thus illustrating that the mark is not devoid of distinctive character.

48      It should be recalled that the Community trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see judgment of 12 December 2013 in Rivella International v OHIM, C‑445/12 P, ECR, EU:C:2013:826, paragraph 48 and the case-law cited).

49      The registrability of a sign as a Community mark can therefore be assessed only on the basis of the relevant EU legislation. OHIM, and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State, or in a third country, that the sign in question is registrable as a national mark (judgments of 25 March 2014 in Deutsche Bank v OHIM (Leistung aus Leidenschaft), T‑539/11, EU:T:2014:154, paragraph 53, and of 24 June 2014 in 1872 Holdings v OHIM — Havana Club International (THE SPIRIT OF CUBA), T‑207/13, EU:T:2014:570, paragraph 32).

50      Furthermore, the lawfulness of the decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 as interpreted by the Courts of the European Union and not on the basis of a previous decision-making practice (see judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 65 and the case-law cited).

51      In the light of all those considerations, it must be held that the Board of Appeal did not make an error of assessment in finding that the trade mark applied for was devoid of any distinctive character and that, accordingly, its registration should be refused pursuant to Article 7(1)(b) of Regulation No 207/2009.

52      Moreover, it must be held that Article 7(2) of Regulation No 207/2009, which provides that Article 7(1) is applicable notwithstanding that the grounds of non-registrability obtain in only part of the Community, is of no help to the applicant. The Board of Appeal was therefore correct in finding that it was unnecessary to examine whether the trade mark applied for was capable of being registered in Member States in which English would not be understood.

53      The applicant’s single plea in law must therefore be rejected.

 Costs

54      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.

55      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 (Ninth Chamber)

hereby:

1.      Dismisses the action.

2.      Orders nMetric LLC to pay the costs.

Berardis

Czúcz

Popescu

Delivered in open court in Luxembourg on 5 February 2015.

[Signatures]