JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

19 May 2010 (*)

(Community trade mark – Invalidity proceedings – Community word mark MEMORY – Absolute ground for refusal – Descriptive character – Article 7(1)(c) and Article 75 of Regulation (EC) No 40/94 (now Article 7(1)(c) and Article 77 of Regulation (EC) No 207/2009))

In Case T‑108/09,

Ravensburger AG, established in Ravensburg (Germany), represented by G. Würtenberger and R. Kunze, lawyers,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court, being

Educa Borras, SA, established in Barcelona (Spain), represented by I. Valdelomar Serrano, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 8 January 2009 (Case R 305/2008-2) relating to invalidity proceedings between Educa Borras SA and Ravensburger AG,

THE GENERAL COURT (Eighth Chamber),

composed of M. E. Martins Ribeiro, President, N. Wahl (Rapporteur) and A. Dittrich, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court on 16 March 2009,

having regard to the response of OHIM lodged at the Registry of the Court on 2 July 2009,

having regard to the response of the intervener lodged at the Registry of the Court on 16 June 2009,

further to the hearing on 10 December 2009,

gives the following

Judgment

 Background to the dispute

1        On 11 June 1999, the applicant, Ravensburger AG, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The trade mark for which registration was sought is the word sign MEMORY.

3        The goods in respect of which registration was sought are in Classes 9 and 28 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, for each of those classes, to the following description:

–        Class 9: ‘Games recorded on data carriers of all kinds’;

–        Class 28: ‘Board games’.

4        On 20 August 2001, the mark MEMORY was registered as a Community trade mark (‘the mark at issue’) for the goods referred to in paragraph 3 above.

5        On 17 December 2004, the intervener, Educa Borras, SA, filed an application for a declaration that the mark at issue was invalid. The grounds relied on in support of the application for a declaration of invalidity were those envisaged in Article 51(1)(a) and Article 7(1)(b) and (c) of Regulation No 40/94 (now Article 52(1)(a) and Article 7(1)(b) and (c) of Regulation No 207/2009).

6        By decision of 3 September 2006, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 7(1)(b) and (c) of Regulation No 40/94, declared the mark at issue invalid and ordered the applicant to pay the costs.

7        The Cancellation Division held that the goods covered by the mark at issue were games for which ‘the use of the power of memory is [a] means to achieve success’. The Cancellation Division also found that the average English-speaking consumer understands the word ‘memory’ to mean the facility by which the mind stores and recalls information. Consequently, the Cancellation Division concluded that the word ‘memory’ was likely to be regarded by the average English-speaking consumer as a description of the goods in question and not as an indication of their commercial origin. Furthermore, the Cancellation Division found that, according to the evidence in the file, the word ‘memory’ was currently used for descriptive purposes for the goods in question in English-speaking territories, such as the United States of America and Canada. The Cancellation Division further noted that the applicant used the word ‘memory’ both in a descriptive manner and also as a trade mark on its website directed at the United Kingdom market.

8        On 5 November 2007, the applicant filed a notice of appeal at OHIM against the Cancellation Division’s decision. In the course of the proceedings before the Board of Appeal, the applicant requested an oral hearing.

9        By decision of 8 January 2009 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the Cancellation Division’s decision, dismissed the applicant’s appeal as well as its request for an oral hearing and ordered the applicant to pay the costs.

10      In particular, in the contested decision, the Board of Appeal observed that the descriptive character of a mark, for the purposes of Article 7(1)(c) of Regulation No 40/94, must be assessed in relation, first, to the goods or services in respect of which registration is applied for and, secondly, to the perception of the mark by the relevant public.

11      According to the Board of Appeal, in the assessment of the descriptive character of a mark, it is not necessary that that mark be already used as a descriptive indication, it is sufficient that this can be reasonably expected in future.

12      In this case, the Board of Appeal found that the goods in question are board games in Class 28, as well as games recorded on data carriers of all kinds in Class 9, and that the Cancellation Division had correctly taken account of the perception of English-speaking consumers of the mark at issue, since it consists of an English word, namely ‘memory’, meaning the power or process of reproducing or recalling what has been learned and retained.

13      Furthermore, the Board of Appeal noted that, despite certain spelling variations between United Kingdom and American English, there is only one English language. Accordingly, the Board of Appeal found that the fact that most of the evidence in the file originated from websites outside the European Union was not very important for the assessment of the descriptive character of the mark at issue.

14      Relying both on the lexicographical meaning of the English word ‘memory’ and on the use of that word on the applicant’s English-language websites, the Board of Appeal concluded that that word is descriptive of the kind, the intended purpose and the characteristics of the goods in question and that there is a sufficiently direct and specific association between the mark at issue and the categories of goods in question.

15      The Board of Appeal also found that the mark at issue was devoid of any distinctive character in relation to the goods in question.

16      Finally, the Board of Appeal refused the applicant’s request for an oral hearing, maintaining that the parties concerned had had an opportunity to present their defence in writing and that the applicant had not explained why the holding of an oral hearing would be necessary for the presentation of evidence.

 Forms of order sought by the parties

17      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

18      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

19      In support of its action, the applicant raises three pleas in law, alleging infringement of, respectively, Article 51(1)(a) in conjunction with Article 7(1)(b) and (c) of Regulation No 40/94, Article 74 of that regulation (now Article 76 of Regulation No 207/2009), and Article 75 of the regulation (now Article 77 of Regulation No 207/2009).

 The first plea in law, alleging infringement of Article 51(1)(a) in conjunction with Article 7(1)(b) and (c) of Regulation No 40/94

 Arguments of the parties

20      The applicant puts forward identical arguments in support of its two complaints, alleging, respectively, infringement of Article 7(1)(c) of Regulation No 40/94 and infringement of Article 7(1)(b) of Regulation No 40/94.

21      The applicant argues that the Board of Appeal did not take into account the situation prevailing in the European Union at the time of the registration of the mark at issue. According to the applicant, the Board of Appeal relied principally on evidence, namely websites, originating from countries outside the European Union without examining the dates on which those sites came into existence.

22      The applicant also contends that the fact that the word ‘memory’ was used for 55 years as a mark without any European competitor using that word in order to describe the characteristics of memory games proves that the mark at issue is not, in the English language as spoken in the United Kingdom and Ireland, descriptive of the goods in question.

23      At the hearing, the applicant maintained that OHIM was required to take into account in invalidity proceedings the legitimate expectation that the proprietor of the mark at issue had acquired through the registration of its mark.

24      OHIM and the intervener argue essentially that the word ‘memory’ is likely to be regarded by the average English-speaking consumer as a description of the goods in question and not as an indication of their commercial origin.

 Findings of the Court

25      It should be borne in mind at the outset that, contrary to the applicant’s contention, the registration of a Community trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings, since the rules applicable expressly allow for that registration to be challenged subsequently in an application for a declaration of invalidity or a counterclaim in infringement proceedings.

26      As regards Article 7(1)(c) of Regulation No 40/94, it is important to note that that provision prohibits the registration as trade marks of signs and 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’. Those descriptive signs are incapable of fulfilling the indication-of-origin function which forms an integral part of the trade mark (Case C-191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 31, and the judgment of 2 April 2008 in Case T-181/07 Eurocopter v OHIM(STEADYCONTROL), not published in the ECR, paragraph 35).

27      From that point of view, the signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve, in normal usage from the point of view of the public concerned, to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration was sought (Case T‑207/06 Europig v OHIM (EUROPIG) [2007] ECR II‑1961, paragraph 26, and the judgment of 21 May 2008 in Case T‑329/06 Enercon v OHIM (E), not published in the ECR, paragraph 21).

28      According to settled case-law, a sign will be descriptive if there is 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 one of the characteristics of the goods and services in question (EUROPIG, paragraph 27, and STEADYCONTROL, paragraph 36).

29      It should also be noted that the descriptiveness of a sign may be assessed only, first, in relation to the relevant public’s understanding of that sign and, secondly, in relation to the goods or services in question (STEADYCONTROL, paragraph 38, and E, paragraph 23). A mark’s descriptive character must be assessed in relation to the goods for which the mark was registered and in the light of the presumed perception of an average consumer of the category of goods in question, who is reasonably well-informed and reasonably observant and circumspect.

30      In the present case, as the Board of Appeal pointed out at paragraph 19 of the contested decision, the goods in question are directed at general consumers. Therefore, in view of the fact that the word ‘memory’ is an English word, it should be determined whether the average English-speaking consumer, who is reasonably well-informed and reasonably observant and circumspect, will perceive the mark at issue as a description of one of the characteristics of the goods in question.

31      It is not disputed in the present case that the goods for which the mark at issue was registered include, in particular, memory games, in which the key element for success is that the participants use and develop their memory well. It is therefore clear that the word ‘memory’ describes directly and specifically one of the characteristics and purposes of the games for which the mark at issue was registered.

32      In that regard, the Board of Appeal cannot be criticised for having relied on English‑language websites outside the European Union to conclude that the word ‘memory’ was descriptive for the purpose of Article 7(1)(c) of Regulation No 40/94 for the goods in question in the English-speaking countries of the European Union.

33      While there are some differences of vocabulary between United Kingdom and American English, it is well known that, as a general rule, words and expressions have identical connotations in these two variations of English. In the present case, the applicant did not put forward any valid argument showing that this is not the case for the word ‘memory’.

34      Finally, the applicant’s argument that the Board of Appeal did not take into account the situation prevailing in the European Union at the time of the registration of the mark at issue must be rejected, in that the word ‘memory’ was not, on that date, used to describe the goods in question.

35      For OHIM to refuse to register a trade mark on the basis of Article 7(1)(c) of Regulation No 40/94, 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. A word sign must therefore 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).

36      Similarly, whether the number of competitors who may have an interest in using the signs or indications of which the mark consists is large or small is not decisive. Any operator at present offering, as well as any operator who might in the future offer, goods or services which compete with those in respect of which registration was sought must be able freely to use the signs or indications which may serve to describe characteristics of its goods or services (see, by analogy, Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 58).

37      The Board of Appeal therefore correctly found that the mark at issue was descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94.

38      It follows that it is not necessary to examine the complaint alleging infringement of Article 7(1)(b) of Regulation No 40/94. It is evident from the wording of that article that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a Community trade mark (see, to that effect, Case C-104/00 P DKV v OHIM [2002] ECR I‑7561, paragraphs 27 to 29).

39      It follows from all the above that the first plea in law must be rejected.

 The second plea in law, alleging infringement of Article 74 of Regulation No 40/94

40      By its second plea, the applicant claims that the Board of Appeal did not exhaustively examine the arguments put forward in the course of the proceedings before that board.

41      In that regard, in the application, the applicant has not put forward any specific argument to support that plea. It merely contended that the Board of Appeal had not dealt ‘in an encompassing manner’ with the arguments it had put forward in the course of the proceedings before that board.

42      The Court finds that the application does not satisfy, in that regard, the minimum requirements for the admissibility of an application laid down in Article 21 of the Statute of the Court of Justice and Article 44(1)(c) of the Rules of Procedure of the General Court, provisions which apply to intellectual property matters pursuant to Article 130(1) and Article 132(1) of those Rules. That conclusion is not affected by the fact that the applicant developed this plea at the hearing. In order to ensure legal certainty and the sound administration of justice, it is necessary, for an action to be admissible, that the essential elements of fact and law on which it is based be apparent, at least in summary, and in a coherent and intelligible form, from the text of the application itself (see, to that effect, Case T‑247/01 eCopy v OHIM (ECOPY) [2002] ECR II‑5301, paragraphs 15 to 17).

43      In the present case, the applicant’s plea, as submitted in the application, does not include any argument to demonstrate how the Board of Appeal infringed Article 74 of Regulation No 40/94.

44      It follows that the second plea in law must be dismissed as inadmissible.

 The third plea in law, alleging infringement of Article 75 of Regulation No 40/94

45      By its third plea, the applicant criticises the Board of Appeal for having refused to grant it an oral hearing in the course of the proceedings before the Board. According to the applicant, the present case is of a complex nature, giving rise to the need for the parties concerned to present their arguments at an oral hearing. The applicant states that it is common for a decision-making authority to change its position after it has had the opportunity to hear and put questions to the parties involved in a complex dispute.

46      In that regard, it should be recalled that it follows both from the wording of Article 75 of Regulation No 40/94 and from the case-law that the Board of Appeal enjoys a discretion as to whether, where a party requests that they be held, oral proceedings before it are really necessary (Case T‑115/02 AVEX v OHIM – Ahlers (a) [2004] ECR II-2907, paragraph 30).

47      In the present case, it should be pointed out that the applicant essentially criticises the Board of Appeal because it did not have the possibility of submitting orally before the board the same facts and arguments previously set out in its written pleadings. Therefore, the applicant does not even claim that the Board of Appeal did not have before it all the information needed as a basis for the operative part of the contested decision.

48      It follows that the refusal of the Board of Appeal to hold an oral hearing cannot be criticised.

49      It follows that the third plea must also be dismissed.

50      Therefore, the action must be dismissed in its entirety.

 Costs

51      Under Article 87(2) of the Rules of Procedure, 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 forms of order sought by OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Ravensburger AG to pay the costs.

Martins Ribeiro

Wahl

Dittrich

Delivered in open court in Luxembourg on 19 May 2010.

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