JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

17 December 2015 (*)

(Community trade mark — Application for the Community figurative mark 3D — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009)

In Case T‑79/15,

Olympus Medical Systems Corp., established in Tokyo (Japan), represented by A. Ebert-Weidenfeller and C. Opatz, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by K. Doherty and A. Folliard-Monguiral, acting as Agents,

defendant,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 December 2014 (Case R 1708/2014-2) relating to an application for registration of the figurative sign 3D as a Community trade mark

THE GENERAL COURT (Ninth Chamber),

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

Registrar: A. Lamote, Administrator,

having regard to the application lodged at the Court Registry on 18 February 2015,

having regard to the response lodged at the Court Registry on 12 May 2015,

having regard to the decision of 8 June 2015 refusing leave to lodge a reply,

further to the hearing on 26 October 2015,

gives the following

Judgment

 Background to the dispute

1        On 14 February 2014, the applicant, Olympus Medical Systems Corp., 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 following figurative sign:

3        The goods in respect of which registration was sought are in Class 10 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: ‘Medical and surgical apparatus and instruments, namely endoscopic videoscope system comprising 3D processors, 3D light sources, LCD monitors and 3D medical endoscopes’.

4        By decision of 14 May 2014, confirming the notice of 19 February 2014, the examiner rejected the Community trade mark application for all the goods referred to in paragraph 3 above.

5        On 3 July 2014 the applicant filed a notice of appeal with OHIM pursuant to Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.

6        By decision of 11 December 2014 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal.

7        In that connection, the Board of Appeal considered essentially, first, that the relevant public consisted of medical professionals in the European Union, secondly, that, in the eyes of such persons, the word element ‘3D’ of the mark applied for referred directly to the universally used abbreviation for the concept of three-dimensionality and, thirdly, that the reference to that concept was reinforced by the figurative elements of the mark in question. That mark was therefore descriptive of the goods to which it referred, for the purposes of Article 7(1)(c) of Regulation No 207/2009. The Board of Appeal also noted that the mark applied for was devoid of distinctive character, within the meaning of Article 7(1)(b) of Regulation No 207/2009, not only on account of its descriptive character but also because it consisted of a sign which was too simple to be able to perform the essential function of a trade mark, namely that of identifying the commercial origin of goods or services.

 Forms of order sought by the parties

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 puts forward two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation No 207/2009 and the second infringement of Article 7(1)(b) of that regulation.

 The first plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

11      The applicant complains that the Board of Appeal focused its assessment on the word element ‘3D’ of the mark applied for, at the expense of its figurative elements, which are imaginative and not simply decorative.

12      While acknowledging that that word element can be an abbreviation of the term ‘three-dimensional’, the applicant claims that the presence of the above-mentioned figurative elements means that the mark applied for, when viewed as a whole, contains only vague references to the goods concerned and is therefore not perceived, immediately and without further thought, as being a description of them.

13      In that respect, the applicant submits that the Board of Appeal failed to take into account the fact that the figurative elements of the mark applied for were not limited to the background on which the word element ‘3D’ appears but also related to its written form. Furthermore, the applicant claims that, while the figurative elements can be interpreted as relating to the concept of three-dimensionality, they also have other meanings.

14      OHIM disputes the applicant’s arguments.

15      It should be noted that, 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’ may not be registered.

16      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, namely 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, and 2 May 2012 in Universal Display v OHIM (UniversalPHOLED), T‑435/11, EU:T:2012:210, paragraph 14).

17      Furthermore, signs or indications which may serve, in trade, to designate 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, deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service designated by the mark, thus enabling the consumer who acquires the goods 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 in OHIM v Wrigley, cited in paragraph 16 above, EU:C:2003:579, paragraph 30, and UniversalPHOLED, cited in paragraph 16 above, EU:T:2012:210, paragraph 15).

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 public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (judgment in UniversalPHOLED, cited in paragraph 16 above, EU:T:2012:210, paragraph 16 and the case-law cited).

19      It should also be noted that a sign’s descriptiveness can only be assessed, first, by reference to the way in which it is understood by the relevant public and, secondly, by reference to the goods or services concerned (see judgment in UniversalPHOLED, cited in paragraph 16 above, EU:T:2012:210, paragraph 19 and the case-law cited).

20      In the present case, it must be observed as a preliminary point that the relevant public is made up of medical professionals, as the Board of Appeal correctly noted in paragraph 14 of the contested decision, which the applicant, moreover, does not dispute.

21      Furthermore, it should be noted that, in order to conclude that the mark applied for was descriptive of the kind and intended purpose of the goods referred to in paragraph 3 above, in so far as it immediately informed the relevant public of the fact that those goods used or were associated with three-dimensional technology, the Board of Appeal examined that mark taking into account all its elements, as is clear in particular from paragraphs 15 and 19 to 24 of the contested decision.

22      The Board of Appeal observed, in essence, first, that the word element ‘3D’, which was a universally understood abbreviation of the term ‘three-dimensional’ itself contained figurative elements, in so far as it is depicted in a very large font and in a stylised script, with parts in dark grey fading to light grey and white and, secondly, was accompanied by other figurative elements. In that regard, the Board of Appeal stated that that word element was placed against a grey, square background whose corners were cut off by diagonal lines and that that square contained straight horizontal lines and angled vertical lines which faded towards the middle of the square. The Board of Appeal concluded that, overall, the square gave a very clear impression of three-dimensional space.

23      Next, the Board of Appeal considered that on account of its large size and the fact it was the only word element of the mark applied for, the term ‘3D’ would be, primarily, clearly and instantly perceived by the relevant public. While the Board of Appeal ruled out the possibility that the figurative elements might go unnoticed amid the overall impression given by that mark, it considered that those elements were capable of conveying the same concept of three-dimensionality as that immediately suggested by the term in question. In particular, the Board of Appeal stressed that that was the case as regards the lines of the square which faded away in the middle of the contested sign, if this impression of ‘fading away’ was even immediately perceivable.

24      Finally, the Board of Appeal stated that, even supposing, in spite of the applicant’s failure to provide more detailed explanations in that respect, that the figurative elements of the mark applied for can refer to the idea of a pair of glasses or concepts other than of three-dimensionality, that would not be sufficient to establish that the relevant public, on account of those figurative elements, would detect, in the mark applied for, messages capable of distracting its attention from the word element and other figurative elements of that mark, perceived, immediately and without further thought, as being a description of the characteristics of the goods referred to.

25      It follows that the applicant is not justified in maintaining that the Board of Appeal did not take into account all the figurative elements of the mark applied for and gave excessive weight to its word element. It is apparent from paragraphs 22 to 24 above that the Board of Appeal carried out a full examination of the mark applied for and clearly explained, without flaws in its reasoning, why that mark, when viewed as a whole, described one of the essential characteristics of the goods concerned, namely the fact that those goods made use of technology to obtain three-dimensional images.

26      Furthermore, it should be noted that the validity of the Board of Appeal’s reasoning is confirmed by settled case-law to the effect that when a sign has several meanings, it must be refused registration if at least one of its possible meanings designates a characteristic of the goods, a principle which applies in the same way to word signs and figurative signs (judgments of 19 May 2010 in Zeta Europe v OHIM (Superleggera), T‑464/08, EU:T:2010:212, paragraph 28; 8 September 2010 in Micro Shaping v OHIM (packaging), T‑64/09, EU:T:2010:360, paragraph 43, and 28 June 2011 in ReValue Immobilienberatung v OHIM (ReValue), T‑487/09, EU:T:2011:317, paragraph 44).

27      It must be noted that the applicant itself acknowledges that the figurative elements of the mark applied for may be interpreted as conveying the same meaning as that of the word element ‘3D’, while adding that they cannot be confined to that meaning alone.

28      Since the figurative elements of the mark applied for either reinforce or do not change the descriptive meaning of its word element, the Board of Appeal was justified in considering that the absolute ground for refusal under Article 7(1)(c) of Regulation No 207/2009 precluded registration of that mark (see, to that effect, judgment of 15 May 2015 in Katjes Fassin v OHIM (Yoghurt-Gums), T‑366/12, EU:T:2014:256, paragraphs 30 and 33).

29      That finding is not called into question by the applicant’s argument that the Board of Appeal did not take due account of the high level of attention of the relevant public.

30      In that respect, it should be noted that, as the Board of Appeal essentially found, on the basis of the judgment of 11 October 2011 in Chestnut Medical Technologies v OHIM (PIPELINE) (T‑87/10, EU:T:2011:582, paragraphs 27 and 28), even if the relevant public displays a high level of attention, it will be no less subject to the absolute ground for refusal in Article 7(1)(c) of Regulation No 207/2009. Training and professional experience will enable that public to grasp more easily the descriptive connotations of the mark applied for in respect of the goods at issue, whose characteristics it knows very well. The fact that Pipeline (EU:T:2011:582) concerned a word mark, while, in the present case, the mark applied for is figurative, does not mean that the same reasoning cannot be applied, contrary to the applicant’s claim.

31      In view of the foregoing considerations, the first plea in law must be rejected.

 The second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

32      The applicant submits that the mark applied for is sufficiently distinctive for registration not to be refused pursuant to Article 7(1)(b) of Regulation No 207/2009. It is neither descriptive of the goods covered nor does it consist of an excessively simple sign, as, the applicant claims, the Board of Appeal acknowledged, at least implicitly.

33      OHIM disputes the applicant’s arguments.

34      It should be noted that it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies for a sign to be ineligible for registration as a Community trade mark. Accordingly, there is no need to examine the plea in law alleging that the mark applied for is distinctive (see judgment in UniversalPHOLED, cited in paragraph 16 above, EU:T:2012:210, paragraph 41 and the case-law cited).

35      In any event, it is clear from the examination of the first plea in law that the mark applied for is descriptive of the goods covered. In that respect, according to settled case-law, the descriptive signs referred to in Article 7(1)(c) of Regulation No 207/2009 are also devoid of distinctive character for the purposes of Article 7(1)(b) of that regulation (see judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 33 and 46 and the case-law cited).

36      In the light of all the foregoing, the present action must be dismissed in its entirety.

 Costs

37      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 (Ninth Chamber),

hereby:

1.      Dismisses the action;

2.      Orders Olympus Medical Systems Corp. to pay the costs.

Berardis

Czúcz

Popescu

Delivered in open court in Luxembourg on 17 December 2015.

[Signatures]