JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

2 May 2012 (*)

(Community trade mark – International registration designating the European Community – Application for Community word mark UniversalPHOLED – Absolute ground for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 207/2009)

In Case T‑435/11,

Universal Display Corp., established in Ewing, New Jersey (United States), represented by A. Poulter and C. Lehr, Solicitors,

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 18 May 2011 (Case R 215/2011‑2) concerning an application for registration of the work sign UniversalPHOLED as a Community trade mark,

THE GENERAL COURT (Eighth Chamber),

composed of L. Truchot, President, M.E. Martins Ribeiro (Rapporteur) and A. Popescu, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 8 August 2011,

having regard to the response lodged at the Court Registry on 7 November 2011,

having regard to the decision of 16 December 2011 refusing leave to lodge a reply,

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 16 September 2009, the applicant, Universal Display Corp., obtained an international registration designating the European Community for the word sign UniversalPHOLED.

2        The goods in respect of which registration was sought fall within Class 1 of the Nice Agreement on 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: ‘chemicals for use in the manufacture of organic light‑emitting devices and other organic electronic devices’.

3        By letter of 19 January 2010, the examiner notified to the applicant an ex officio provisional refusal of protection of the international registration, on the ground that the mark applied for was descriptive of the goods in question, since it is composed of the words ‘universal’ and ‘pholed’ – an acronym for phosphorescent organic light-emitting diode’ – which convey clear and direct information on the kind and quality of those goods. The examiner therefore took the view that the mark applied for fell within Article 7(1)(c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). The examiner also considered that the mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of that regulation.

4        By letter of 22 March 2010, the applicant submitted its observations on the examiner’s objections.

5        By decision of 24 November 2010, the examiner maintained his initial objections and therefore refused registration of the mark applied for, pursuant to Article 7(1)(b) and (c) of Regulation No 207/2009.

6        On 21 January 2011, the applicant lodged an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the examiner’s decision.

7        By decision of 18 May 2011 (‘the contested decision’), first, the Second Board of Appeal essentially took the view that the word sign UniversalPHOLED was composed of two descriptive English words. The element ‘pholed’ in the mark applied for was considered to be descriptive of the goods in question and the element ‘universal’ to indicate that the goods have an all-round application. Second, the Board of Appeal was of the view that the relevant consumer would regard the mark applied for as a mere description of the materials used in the manufacture of the goods. The Board of Appeal therefore concluded that the mark applied for was descriptive of the goods, so that it was precluded from registration under Article 7(1)(c) of Regulation No 207/2009. The Board of Appeal did not consider it necessary to examine whether the mark applied for was devoid of distinctive character within the meaning of Article 7(1)(b) of the regulation.

 Forms of order sought by the parties

8        The applicant claims that the Court should:

–        overturn OHIM’s decisions;

–        accept the mark applied for and allow it to proceed to publication.

9        OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

10      In support of its action for annulment of the contested decision, the applicant relies on two pleas in law, alleging, first, infringement of Article 7(1)(b) of Regulation No 207/2009 and, second, infringement of Article 7(1)(c) of that regulation.

11      It is appropriate to examine the second plea in law first.

12      The applicant submits, in essence, that the Board of Appeal incorrectly concluded that the word sign UniversalPHOLED is descriptive of the goods covered by the application for registration.

13      Article 7(1)(c) of Regulation No 207/2009 provides that, ‘[t]rade 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 Regulation No 207/2009 states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.

14      According to 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 (Case C‑191/01 P OHIM v Wrigley [2003] ECR I‑12447, paragraph 31; Case T‑219/00 Ellos v OHIM (ELLOS) [2002] ECR II‑753, paragraph 27; and judgment of 7 July 2011 in Case T‑208/10 Cree v OHIM (TRUEWHITE), not published in the ECR, paragraph 12).

15      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, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or service, thus enabling the consumer who acquires the goods or service designated by the mark 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 (OHIM v Wrigley, paragraph 14 above, paragraph 30, and TRUEWHITE, paragraph 14 above, paragraph 13).

16      It follows that, 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 (see TRUEWHILE, paragraph 14 above, paragraph 14 and the case-law cited).

17      For a trade mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so (Joined Cases T‑367/02 to T‑369/02 Wieland‑Werke v OHIM (SnTEM; SnPUR, SnMIX) [2005] ECR II‑47, paragraph 31, and TRUEWHITE, paragraph 14 above, paragraph 15; see also, by analogy, Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 96, and Case C‑265/00 Campina Melkunie [2004] ECR I‑1699, paragraph 37).

18      A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that regard, the analysis of the term in question in the light of the appropriate lexical and grammatical rules is also relevant (see TRUEWHITE, paragraph 14 above, paragraph 16 and the case‑law cited).

19      It should also be noted that the distinctiveness of a sign may only be assessed, first, in relation to the perception of the mark by the relevant section of the public and, second, in relation to the goods or services concerned (Case T-34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 38, and TRUEWHITE, paragraph 14 above, paragraph 17).

20      With regard to the target public, as is apparent from paragraph 17 of the contested decision and is not disputed by the applicant, the goods in question are intended for specialist consumers. Moreover, under Article 7(2) of Regulation No 207/2009, the target public by reference to whom the absolute ground for refusal must be assessed is English-speaking, since the word sign in question is composed of elements in English (see TRUEWHITE, paragraph 14 above, paragraph 18 and the case‑law cited).

21      Accordingly, for the purposes of Article 7(1)(c) of Regulation No 207/2009, it is necessary to consider, on the basis of a given meaning of the word sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign UniversalPHOLED and the goods in respect of which registration is sought (see, to that effect, Case T‑222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II‑4995, paragraph 38, and TRUEWHITE, paragraph 14 above, paragraph 19 and the case‑law cited).

22      First of all, with regard to the meaning of the word ‘universal’, it may be perceived, as is apparent from paragraph 14 of the contested decision, as merely indicating that goods are of general application. Taken in isolation, it may therefore be understood to describe goods fit for general or universal use.

23      Second, as regards the meaning of the term ‘pholed’, it is common ground that the term is an acronym for ‘phosphorescent organic light-emitting diode’.

24      With regard to the applicant’s argument that, as leader in the field of phosphorescent organic light-emitting diodes, it coined the term ‘pholed’ in order to make the term distinctive, the Board of Appeal was correct in considering, at paragraph 15 of the contested decision, that the applicant had not demonstrated that it held any intellectual property rights in the term ‘pholed’ and that its purported position as leader in the field of phosphorescent organic light-emitting diode technology did not mean that it was entitled to claim any exclusive right to the term or guarantee that the term has distinctive character when used in conjunction with another descriptive term.

25      It follows from those considerations that the target public is able to understand the meaning of the terms ‘universal’ and ‘pholed’, considered in isolation (see, to that effect, Case T‑19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II‑2383, paragraph 30).

26      Considered as a whole, in the field concerned by the Community trade mark application, the term ‘universalpholed’ describes materials for use in the manufacture of phosphorescent organic light-emitting diodes which have a universal application, as the Board of Appeal correctly pointed out at paragraph 17 of the contested decision. The Board of Appeal was entitled to take the view, at paragraph 18 of the contested decision, that the trade mark applied for cannot function as an indication of trade origin because it designates the type and nature of the goods.

27      The applicant nevertheless claims that the relevant public will perceive the word ‘universal’, which forms part of its company name, as referring to the company itself, so that the term ‘universalpholed’ will be understood as designating phosphorescent organic light‑emitting diodes produced by Universal.

28      In that regard, it must be noted, first, as OHIM correctly pointed out, that the word ‘universal’ is a commonly used descriptive word with a clear and specific meaning, so that when it is used in conjunction with a technical term or one designating the nature of a given product, the sign at issue will be perceived as indicating that the products in question are compatible with various specifications or applications in the phosphorescent organic‑light emitting diode field.

29      Second, according to the case‑law cited at paragraph 18 above, a mark consisting of a neologism or word composed of elements, each of which is descriptive of the characteristics of the goods in respect of which registration is sought, is itself descriptive of the characteristics of those goods for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between the neologism or word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts.

30      In the present case, it is clear that the mere combination of the words ‘universal’ and ‘pholed’, each of which is in itself descriptive of the type and nature of the goods in question, is itself also descriptive of the type and nature of those goods.

31      Moreover, such a combination of words complies with English grammatical and syntactical rules and is not unusual in English, contrary to what the applicant claims. The fact that the sign UniversalPholed does not appear as such in dictionaries does not in any way alter the finding that that sign is descriptive of the goods at issue for the purpose of Article 7(1)(c) of Regulation No 207/2009, especially since, according to the case‑law cited at paragraph 14 above, that provision pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all.

32      The applicant also claims that the mark applied for is not descriptive of the goods at issue because phosphorescent organic light‑emitting diodes, which cannot be regarded as chemical substances, fall in Class 9, not in Class 1.

33      In that regard, it should be noted, first, that chemical substances, such as phosphorus, are used in the manufacture of phosphorescent organic light‑emitting diodes, which is not disputed by the applicant, as is clear from the evidence which it submitted in the administrative procedure (see paragraph 15 of the contested decision), even though such diodes are not chemical substances.

34      Second, it is clear in any event that, far from relating to chemical substances in a general manner, the application for registration specifically concerns chemical substances used to manufacture organic light-emitting devices and other organic electronic devices, which specifically covers phosphorescent organic light‑emitting diodes.

35      The applicant also claims that it is the leader in the field of phosphorescent organic light‑emitting diode technology and has an excellent reputation, so that the target public will establish a close link between the terms ‘universal’ and ‘pholed’ and believe that the goods bearing the mark applied for are manufactured by the applicant.

36      While the applicant essentially claims by that argument that the mark applied for has acquired distinctive character through the use which has been made of it, it must be noted that it has neither proved nor even claimed that the mark applied for has acquired distinctive character within the meaning of Article 7(3) of Regulation No 207/2009.

37      With regard to the applicant’s argument that it has a portfolio of trade marks registered by OHIM, the first of which is the word ‘universal’, it is sufficient to point out that, according to settled case‑law, decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of any previous practice of the Boards of Appeal (Case C‑37/03 P BioID v OHIM [2005] ECR I‑7975, paragraph 47; Case T‑36/01 Glaverbel v OHIM (Surface of a sheet of glass) [2002] ECR II‑3887, paragraph 35; Joined Cases T-79/01 and T-86/01 Bosch v OHIM (Kit Pro and Kit Super Pro) [2002] ECR II-4881, paragraph 32; and Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 71).

38      Lastly, with regard to the claim alleging infringement of the principle of equal treatment, on the basis that OHIM has registered various trade marks containing the word ‘universal’, alone or in conjunction with another term, it must be recalled that the principle of equal treatment must be applied in a manner that is consistent specifically with the principle of legality. According to the latter principle, a person may not rely, in support of his claim, on an unlawful act committed in another procedure (Case C‑51/10 P Agencja Wydawnicza Technopol v OHMI [2011] ECR I‑0000, paragraphs 75 and 76, and Case T‑304/06 Reber v OHMI – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 65).

39      In the present case, it has been established that, on account of the goods at issue and how the sign is perceived by the relevant section of the public, the application for registration is caught by the ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009. It follows that the applicant cannot reasonably rely, for the purposes of casting doubt on the conclusion reached by the Board of Appeal in the contested decision, on OHIM’s previous decisions (see, to that effect, Agencja Wydawnicza Technopol v OHMI, paragraph 38 above, paragraphs 78 and 79).

40      It follows from all of the foregoing that the second plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, must be rejected.

41      With regard to the first plea, is should be recalled that it is settled case‑law that it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies for the sign at issue not to be registrable as a Community trade mark (see SnTEM, SnPUR, SnMIX, paragraph 17 above, paragraph 45 and the case‑law cited). It follows that there is no need to adjudicate on the second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.

42      Accordingly, the action must be dismissed without there being any need to rule on the admissibility of either the applicant’s claim that the Court should order that the Community trade mark application be suspended pending the outcome of its decision or its claim that the examiner’s decision should be annulled (see, to that effect, Case T‑286/02 Oriental Kitchen v OHIMMou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 46, and the judgment of 11 June 2009 in Case T‑67/08 Hedgefund Intelligence v OHIM – Hedge Invest (InvestHedge), not published in the ECR, paragraph 58).

 Costs

43      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Universal Display Corp. to pay the costs.

Truchot

Martins Ribeiro

Popescu

Delivered in open court in Luxembourg on 2 May 2012.

[Signatures]