JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

12 June 2012 (*)

(Community trade mark – Invalidity proceedings – Community word mark COLLEGE – Absolute ground for refusal – Absence of descriptive character – Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)

In Case T‑165/11,

Stichting Regionaal Opleidingencentrum van Amsterdam, established in Amsterdam (Netherlands), represented by R. van Leeuwen, lawyer,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being Investimust SA, established in Geneva (Switzerland),

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 12 January 2011 (Case R 508/2010‑4), concerning invalidity proceedings between Stichting Regionaal Opleidingencentrum van Amsterdam and Investimust SA,

THE GENERAL COURT (Fourth Chamber),

composed of I. Pelikánová, President, K. Jürimäe and M. van der Woude (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 11 March 2011,

having regard to the response lodged at the Court Registry on 10 June 2011,

having regard to the order of 10 November 2011 dismissing the application by Investimust SA for leave to intervene,

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

 Background to the dispute

1        On 28 March 2002, Investimust SA filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to 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 mark in respect of which registration was sought is the word sign COLLEGE.

3        On 30 November 2004, the sign was registered as a Community trade mark under No 002645489.

4        The goods and services in respect of which the mark was registered, following the restriction made during the procedure before OHIM, are in Classes 39 and 43 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, for each of those classes, to the following description:

–        Class 39: ‘Tourist and travel agencies; arranging sightseeing and cultural tours; arranging of cruises and tours; information about transport and travel; passenger transport; chauffeur services; transit services; escorting of travellers; sightseeing (tourism)’;

–        Class 43: ‘Hotel, temporary accommodation and boarding house reservations; providing of food and drink, and hotel accommodation; rental of temporary accommodation; accommodation in holiday villages; rental of meeting rooms; accommodation bureaux; tourist home services; holiday village services’.

5        On 19 June 2008, the applicant, Stichting Regionaal Opleidingencentrum van Amsterdam, submitted an application to OHIM for a declaration of invalidity of that Community trade mark under Article 51(1)(a) of Regulation No 40/94, read in combination with Article 7 of that regulation, (now, respectively, Articles 52(1)(a) and 7 of Regulation No 207/2009).

6        By decision of 8 February 2010, the Cancellation Division rejected the application for a declaration of invalidity in respect of each of the absolute grounds invoked by the applicant.

7        On 1 April 2010, the applicant filed an appeal with OHIM against the Cancellation Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.

8        By decision of 12 January 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal.

9        In the contested decision, the Board of Appeal held, first, that the application for a declaration of invalidity was limited to Article 7(1)(c) of Regulation No 207/2009, read in combination with Article 52(1)(a) thereof. In that regard, first, the Board of Appeal stated that the applicant had not put forward any specific argument capable of establishing that Article 7(1)(b) of Regulation No 207/2009 had been breached. Second, it set out a number of general considerations regarding the relationship between points (b) and (c) of Article 7(1) of that regulation.

10      With regard to the breach of Article 7(1)(c) of Regulation No 207/2009, the Board of Appeal held that the applicant had not adduced any evidence capable of establishing a sufficient link, within the meaning of the case-law, between the term ‘college’ and the tourism and hotel accommodation services in respect of which the contested trade mark had been registered. With regard to the ‘college lifestyle’ in particular, the Board held that it was doubtful whether such a thing existed and that, in any event, the link with the services concerned was not clear. It held, further, that the fact that a hotel had, for example, been created in a former college was not such as to create a relevant category of hotel but, on the contrary, served to emphasise the distinctive character of that hotel. Concerning the evidence put forward by the applicant following the Cancellation Division’s decision, the Board of Appeal did not take this into consideration as it was out of time and clearly irrelevant. For all of those reasons, the Board of Appeal held that it could not be established that Article 7(1)(c) of Regulation No 207/2009 had been breached.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

12      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      In support of its action, the applicant puts forward, in essence, a single plea in law, alleging breach of Article 7(1)(b) and (c) of Regulation No 207/2009.

14      OHIM contests the applicant’s arguments.

15      Article 52(1)(a) of Regulation No 207/2009 provides that a Community trade mark is to be declared invalid in the case where that trade mark has been registered contrary to the provisions of Article 7 of that regulation. 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      It should be borne in mind that 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 (see Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 31 and the case-law cited).

17      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. Furthermore, it is not necessary, in order for OHIM so to refuse its registration, that the sign in question actually be in use in a way that is descriptive, but merely that it could be used for such purposes (OHIM v Wrigley, paragraph 32). Moreover, it is irrelevant whether the characteristics of the goods or services which may be the subject of the description by the sign in question are commercially essential or merely ancillary (see, by analogy, Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 102).

18      It is also important to bear in mind that the descriptive character of a mark may be assessed, firstly, only in relation to the understanding of the mark by the relevant public and, secondly, in relation to the goods or services concerned (see Case T‑160/07 Lancôme v OHIMCMS Hasche Sigle (COLOR EDITION) [2008] ECR II‑1733, paragraph 44 and the case-law cited). Accordingly, for a sign to be caught by the prohibition set out in that provision, it must have a sufficiently direct and specific relationship to 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 (see, to that effect, Case T‑311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II‑2957, paragraph 30 and the case-law cited).

19      Before examining the arguments put forward by the applicant in the light of those principles, it should be noted that the applicant does not dispute the definition of the relevant territory adopted by the Board of Appeal, according to which the target territory, in relation to which the analysis of the likelihood of confusion must be carried out, is the entirety of the European Union. Inasmuch as that finding is not vitiated by error, the present action must be examined with regard to that territory.

20      First, the applicant submits that the Board of Appeal erred in law in holding, in paragraphs 23 and 25 of the contested decision, that the descriptive character must be related to a significant subcategory of the goods and services in question, in the present case hotel services. On the contrary, according to the applicant, a sign is descriptive when it describes any characteristic whatsoever, regardless of what the significance of that characteristic may be. The fact that the term ‘college’ is not often used to designate those services is irrelevant, as it is sufficient that such use could take place in the future.

21      In that regard, first, it should be observed that it follows from paragraph 17 of the contested decision that the Board of Appeal correctly began its analysis by establishing the meaning of the term ‘college’ for the relevant public. In paragraphs 18 to 26 of the contested decision, the Board of Appeal assessed the relevance of the applicant’s arguments seeking to establish a direct and specific link, within the terms of the case-law, between the registered sign and the characteristics of the goods or services concerned.

22      Second, it must be stated that the assessments made by the Board of Appeal in paragraphs 23 and 25 of the contested decision and disputed by the applicant were intended merely to point out that, under the settled case-law cited in paragraphs 16, 17 and 18 above, a trade mark must be refused registration under Article 7(1)(c) of Regulation No 207/2009 if that trade mark is, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned or if it is reasonable to envisage that it will be so in the future. Accordingly, the view must be taken that the Board of Appeal did not err in law with respect to the criteria to be applied when assessing whether, in the present case, Article 7(1)(c) of Regulation No 207/2009 had been breached.

23      Next, the applicant claims that the term ‘college’ is descriptive because its registration as a trade mark would hinder its use by organisers of educational trips to places such as Oxford or Trinity College. Similarly, hotel owners would no longer be able to use the term to designate certain characteristics of their services or establishments, characteristics that are linked to the term ‘college’ by reason of their decoration, their location or their history.

24      In that regard, first, it must be stated that it is clear from paragraph 17 of the contested decision that the Board of Appeal has established, with the help of dictionaries, that the term ‘college’, in English and French, as well as in other relevant EU languages, designates an educational institution, with no links to tourist or hotel services. That finding has not been challenged by the applicant.

25      Second, with regard to the tourism services in Class 39, it must be stated that, in the present case, the applicant merely submits that registration of the term ‘college’ as a Community trade mark would hinder its use by certain organisers of educational or school trips to certain destinations.

26      That argument, however, is not in any way sufficient in itself to establish that Article 7(1)(c) of Regulation No 207/2009 has been breached. In order to establish that such a breach had taken place, it was for the applicant, pursuant to the case-law cited in paragraph 18 above, to show that there was a sufficiently direct and specific relationship, in the mind of the relevant public, between the trade mark concerned and the category of goods or services in question. The applicant has failed to identify either the specific image that the relevant public would be likely to retain of the contested trade mark or the link between that image and the relevant goods and services in Class 39.

27      In any event, the Court notes that it cannot be considered to be a well‑known fact that the term ‘college’ is capable in itself of evoking, in a sufficiently direct and specific way, the services in Class 39 in the mind of the relevant public.

28      In those circumstances, inasmuch as the applicant has failed to establish that the contested trade mark is descriptive in character, it must be concluded that, in the present case, there is no general interest requiring that the term ‘college’ be capable of being used by all operators offering the relevant goods and services in Class 39.

29      Third, with regard to the hotel services in Class 43, first, it should be observed that, as with the goods in Class 39, the applicant has failed to define the image that the contested trade mark would be capable of evoking in the mind of the relevant public (see paragraph 26 above).

30      In particular, the applicant has failed to explain what the user of a college-style establishment can expect. It merely refers, in essence, with the help of examples, to the decoration, location or history of a few existing hotel establishments, and to the existence of a specialised guide, none of which is capable, as OHIM points out, of establishing to the requisite legal standard the existence of characteristics which are directly and specifically recognised by the relevant consumer when that consumer contemplates using the contested services in Class 43. In that regard, it may also be stated that the website extracts produced by the applicant as annexes to the application, while capable of establishing the existence of a limited number of hotels the name, decoration or use of which evoke the term ‘college’, are not capable of establishing the existence of a direct and specific link within the terms of the case-law cited in paragraph 18 above.

31      Second, the Board of Appeal did not err in holding that the term ‘college’ does not generally call to mind those services. A student or any other person interested in a college does not, generally, go to a college with the object or expectation of staying there or spending a night there, and a person seeking a hotel establishment will not, generally, refer to a college, as the Board of Appeal noted in paragraph 25 of the contested decision.

32      As OHIM rightly points out, a user of a hotel accommodation service which uses the term ‘college’ cannot predict with sufficient precision the characteristics of that service that are linked to the term ‘college’. A former college converted into a hotel will not necessarily be decorated like a college, just as a hotel using the name ‘college’ will not necessarily be situated near an educational institution. In the same way, the building used by a hotel decorated like a college may have had other uses in the past and may be situated in an area without schools or colleges.

33      The same is, moreover, true of the fact that certain universities offer rooms. Even if one were to proceed on the assumption that a university corresponds to a college, it must be noted that that offer of rooms is then generally addressed to persons who, by reason of their profession or studies, are deemed to be attending a university for a prolonged period. Even though certain universities offer hotel accommodation services to the general public in cases where some student accommodation is vacant, such an offer is ancillary or complementary to the main activity of a university, namely teaching and research, as the Board of Appeal rightly points out in paragraph 24 of the contested decision.

34      Accordingly, the applicant’s arguments relating to the services in Class 43 must be rejected as unfounded.

35      Third, concerning the documentary evidence, the applicant submits that the Board of Appeal made an error of assessment by rejecting certain items of evidence as being clearly irrelevant, and thus inadmissible, as that evidence merely supported the arguments previously expounded.

36      In that regard, suffice it to state that it has already been established in paragraphs 25 to 34 above that those documents, produced as annexes to the application in the present action, were not capable of casting doubt on the lawfulness of the contested decision. Indeed, as has been recognised by the applicant, those documents merely corroborate the applicant’s arguments. Moreover, as those arguments have been shown to be unfounded, the applicant’s argument relating to that evidence must be rejected in any event.

37      In the light of paragraphs 24 to 36 above, the view must be taken that the Board of Appeal did not breach Article 7(1)(c) of Regulation No 207/2009 in dismissing the applicant’s appeal.

38      Lastly, with regard to the alleged breach of Article 7(1)(b) of Regulation No 207/2009, it must be stated that the applicant’s argument is based solely on the fact that the contested sign, being descriptive of the services concerned within the meaning of Article 7(1)(c) of Regulation No 207/2009, would also, accordingly, have no distinctive character. Since, first, it is clear from the foregoing that the Board of Appeal did not err in concluding that no such breach had occurred and, second, the applicant has not put forward any evidence capable of establishing that the sign has no distinctive character, the applicant’s argument cannot be accepted.

39      It follows that the single plea in law, alleging breach of Article 7(1)(b) and (c) of Regulation No 207/2009, must be rejected as unfounded. Accordingly, the present action must be dismissed in its entirety.

 Costs

40      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 form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Stichting Regionaal Opleidingencentrum van Amsterdam to pay the costs.

Pelikánová

Jürimäe

Van der Woude

Delivered in open court in Luxembourg on 12 June 2012.

[Signatures]