JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

29 September 2016 (*)

(EU trade mark — Application for registration of an EU figurative mark representing a body-builder — Absolute grounds for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009

In Case T‑335/15,

Universal Protein Supplements Corp., established in New Brunswick, New Jersey (United States), represented by S. Malynicz QC,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented initially by H. O’Neill, and subsequently by A. Folliard-Monguiral, acting as Agents,

defendant,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 6 March 2015 (Case R 2958/2014-5) concerning an application for registration of a figurative sign representing a body-builder as an EU trade mark,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis (Rapporteur), President, V. Kreuschitz and D. Spielmann, Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 23 June 2015,

having regard to the response lodged at the Court Registry on 15 October 2015,

further to the hearing on 18 July 2016,

gives the following

Judgment

 Background to the dispute

1        On 7 July 2014, the applicant, Universal Protein Supplements Corp., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2        The trade mark in respect of which registration was sought is the following figurative sign:

3        The goods and services in respect of which registration was sought are in Classes 5, 25 and 35 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 5: ‘Nutritional supplements’;

–        Class 25: ‘Clothing; footwear’;

–        Class 35: ‘On-line retail store services featuring nutritional supplements; health and diet-related products; clothing and footwear’.

4        By letter of 18 July 2014, the examiner informed the applicant that the mark applied for was not eligible for registration because it lacked any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 and was descriptive for the purpose of Article 7(1)(c) of that regulation.

5        By letter of 18 September 2014, the applicant contended, in essence, that the mark applied for had distinctive character.

6        By decision of 3 October 2014, the examiner rejected the application for registration because the mark applied for was caught by the grounds for refusal under Article 7(1)(b) and (c) of Regulation No 207/2009.

7        On 19 November 2014, the applicant lodged an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

8        By decision of 6 March 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. It held that the message conveyed by the sign related to ‘body-building’ or a ‘body-builder’ and that the relevant public, consisting of average consumers in the European Union who are reasonably well informed and reasonably observant and circumspect, would perceive immediately and without further thought a direct and specific link between the sign and the goods and services designated by the mark applied for, as the sign depicted the nature and intended purpose of those goods and services. According to the Board of Appeal, the representation of the sign at issue featured no stylistic element enabling consumers to perceive it as conveying a message which goes beyond the simple message related to a ‘body-builder’. Therefore, it held that the mark applied for was caught by the prohibition laid down by Article 7(1)(c) of Regulation No 207/2009. It also found that the mark applied for was devoid of any distinctive character, within the meaning of Article 7(1)(b) of Regulation No 207/2009, on the ground that it consists of a representation of a body-builder which does not enable the relevant public to perceive it as an indication of the commercial origin of goods or services.

 Forms of order sought

9        The applicant claims that the Court should:

–         annul the contested decision;

–        order EUIPO to pay the costs.

10      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

11      In support of its action, 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.

12      The Court will begin by examining the second ground.

13      By that plea, the applicant claims, in essence, that the Board of Appeal committed three errors. First, it failed to consider the mark as a whole, in that it did not take into account the applicant’s choice to stylise the image of a body-builder, in a particular pose and with particular proportions, giving it a character which is not ‘exclusively’ descriptive.

14      Secondly, the image of the body-builder, because of its specific, stylised and aesthetic representation, has several meanings and conveys a message which goes beyond that related to a ‘body-builder’ or ‘body-building’. Thus, the mark applied for is not understood, either immediately or without further thought, as descriptive, but is at most allusive.

15      Thirdly, because of the practically unlimited ways of depicting body-builders, the mark applied for, unlike word marks, does not impair the public interest aim pursued by Article 7(1)(c) of Regulation No 207/209, namely the requirement that descriptive signs should not be monopolised by economic operators.

16      EUIPO contests the applicant’s arguments.

17      Article 7(1)(c) of Regulation No 207/2009 provides that 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 services, are not to be registered.

18      According to the case-law, Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, namely that signs or indications that are descriptive of the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision, therefore, prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (judgments of 23 October 2003, OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 31 and of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 37).

19      Furthermore, signs or indications which may serve, in trade, to designate the 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 services, thus enabling the consumer who acquired 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 (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30, and of 27 February 2015, Universal Utility International v OHIM (Greenworld), T‑106/14, not published, EU:T:2015:123, paragraph 15).

20      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 such as to enable the public concerned to perceive immediately, without further reflection, a description of the goods and services in question or one of their characteristics (see judgment of 27 February 2015, Universal Utility International v OHIM (Greenworld), T‑106/14, not published, EU:T:2015:123, paragraph 16 and the case-law cited).

21      It should also be noted that a sign’s descriptive nature can only be assessed, first, by reference to the way in which it is perceived by the relevant public and, second, by reference to the goods or services concerned (see judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, ECR, EU:T:2002:41, paragraph 38, and of 27 February 2015, Greenworld, T‑106/14, not published, EU:T:2015:123, paragraph 19).

22      The question whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 by finding that the mark applied for was descriptive of the products and services in respect of which registration is sought must be examined in the light of those considerations.

23      First of all, as regards the relevant public, it should be noted, as the Board of Appeal found in paragraph 10 of the contested decision, that, having regard to the relevant goods and services, which are, essentially, nutritional supplements, clothing, footwear and online retail services relating to those goods, it consists of average consumers, deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, the mark applied for being strictly figurative and lacking any verbal element, the Board of appeal was right to state, in paragraph 11 of the contested decision, that the existence of absolute grounds for refusal must be assessed in the light of the public of the whole of the European Union.

24      That definition of the relevant public, which moreover the applicant does not dispute, must be upheld.

25      In addition, it must be noted that the sign at issue consists of a silhouette, represented in black, of a person adopting a typical body-building pose displaying the muscles of his body.

26      It will thus be perceived by the relevant public as the representation of a body-builder, which the applicant does not contest. Therefore, the Board of Appeal did not err in finding that, in paragraph 12 of the contested decision, the message conveyed by that sign was related to body-building.

27      As regards goods in Class 5, namely ‘nutritional supplements’, it should be observed that they help, in particular, to build muscles and therefore are part of the diet of body-builders, who can purchase them in shops specialised in sports equipment. It must therefore be held that the sign at issue, consisting of the representation of a body-builder, is descriptive of the goods covered by the registration application for Class 5 goods.

28      As far as the ‘clothing’ and ‘footwear’, covered by Class 25, are concerned, the representation of a body-builder is also descriptive of those goods, in that they include clothing items and shoes specifically designed for body-building.

29      Finally, as regards ‘On-line retail store services featuring nutritional supplements; health and diet-related products; clothing and shoes’ in Class 35, it must be noted that, to the extent that they relate to the sale of the goods described in paragraphs 27 and 28 above, the same considerations are valid.

30      In that respect, the Board of Appeal was fully entitled to state, in paragraph 16 of the contested decision, without challenge from the applicant, that it is common knowledge that drawings and photos of body-builders posing are often reproduced on the products themselves or in advertisements in order to indicate the intended purpose of the goods and services at issue, all relating, in particular, to the practice of body-building.

31      Thus, the mark applied for shows a sufficiently direct and specific relationship to the goods and services covered by the application for registration, enabling the relevant public to perceive immediately the nature and intended purpose of those goods and services, which the Board of Appeal was fully entitled to point out in paragraphs 13 to 15 of the contested decision.

32      In that regard, it must also be stated that, even if the categories of goods and services at issue were to also include services with no link to body-building and that, accordingly, the sign at issue were not descriptive of all the goods and services in those categories, the applicant has applied for the registration of the sign at issue for each of these as a whole without making any distinction. It is therefore appropriate to confirm the assessment of the Board of Appeal in so far as it relates to those categories of goods and services as a whole (see, to that effect, judgment of 28 June 2011, ReValue Immobilienberatung v OHIM (ReValue), T‑487/09, not published, EU:T:2011:317, paragraph 74). Indeed, first, that finding was not challenged by the applicant in the context of the present action and, second, it follows from settled case-law that the finding of the descriptive character of a mark applies not only to the goods and services for which it is directly descriptive, but also to the broader categories to which those goods and services belong in the absence of a suitable restriction of the trade mark by the applicant (judgments of 7 June 2001, DKV v OHIM (EuroHealth), T‑359/99, EU:T:2001:151, paragraph 33; of 15 September 2009, Wella v OHIM (TAME IT), T‑471/07, EU:T:2009:328, paragraph 18; and of 8 July 2010, Trautwein v OHIM (Representation of a horse), T‑386/08, not published, EU:T:2010:296, paragraph 32).

33      It must be concluded, therefore, that, informing the relevant public that the goods and services concerned are made or adapted for body-building, the mark applied for has a sufficiently direct and specific link with nutritional supplements, clothing, footwear, as well as online retail store services of those goods and goods related to health and diet, for the sign to fall within the prohibition under Article 7(1)(c) of Regulation No 207/2009.

34      That finding cannot be called in question by the arguments put forward by the applicant in its pleadings and reiterated during the hearing.

35      In the first place, the Court rejects the argument to the effect that the choice to stylise the image of a body-builder, by representing it with the shape of a silhouette, does not allow that sign to be held to be ‘exclusively’ descriptive.

36      In that respect, it must be noted that the technique known as ‘silhouette’, used for the representation of the sign at issue, does not, contrary to the applicant’s assertions, amount to a particularly stylised form of representation. Indeed, the image in question represents in a fairly realistic way the silhouette of a body-builder in a typical pose which highlights the body’s muscles and, in particular, those of the arms. As EUIPO states, no detail or characteristic of that image goes beyond the standard representation of a body-builder. The artistic and creative choices, the pose and the specific proportions of the mark applied for, assuming they are established, are merely details of the representation of a body-builder and are not capable of being remembered by the consumer (see, to that effect, judgments of 8 July 2010, Trautwein v OHIM (Representation of a dog), T‑385/08, not published, EU:T:2010:295, paragraph 37, and Trautwein v OHIM (Representation of a horse), T‑386/08, not published, EU:T:2010:296, paragraph 49). Furthermore, when questioned in that regard during the hearing, the applicant was not able to identify other elements in support of its argument.

37      Moreover, it must be stated that, contrary to what the applicant appears to claim, although Article 7(1)(c) of Regulation No 207/2009 provides that, for the application for registration to be covered by the ground for refusal set out therein, the mark must be composed ‘exclusively’ of signs and indications which may serve to designate the characteristics of the goods or services concerned, it does not, however, require that those signs or indications should be the only way of designating those characteristics. Therefore, the possibility of drawing a body-builder slightly differently does not alter the fact that the mark applied for is descriptive of the goods and services at issue (see, to that effect, judgment of 11 May 2005, Naipes Heraclio Fournier v OHIM — France Cartes (Sword in a pack of cards), T‑160/02 to T‑162/02, EU:T:2005:167, paragraph 50).

38      Therefore, the Board of Appeal was right to consider simply, in paragraph 12 of the contested decision, that the sign at issue referred to body-building.

39      In the second place, as regards the argument that the sign at issue has several meanings and conveys a message that goes beyond that related to a ‘body-builder’ or ‘body-building’, preventing the relevant public from perceiving the mark applied for as merely descriptive, it must be stated that, contrary to the applicant’s claims, the alleged aesthetic character of the stylised image does not require any mental effort on behalf of the relevant public, the latter being immediately able to perceive the meaning of the sign at issue, which refers to the concept of ‘body-builder’ or ‘body building’. Furthermore, it must be stated that, according to settled case-law, where a sign has several meanings — assuming that this is the case here — it must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned, that principle being equally valid for both word signs and figurative signs (judgments of 28 June 2011, ReValue Immobilienberatung v OHIM (ReValue), T‑487/09, not published, EU:T:2011:317, paragraph 44, and of 17 December 2015, Olympus Medical Systems v OHIM (3D), T‑79/15, not published, EU:T:2015:999, paragraph 26).

40      In the third place, the applicant’s claim that there is no general interest in requiring that a representation such as that in the present case be available because there are practically unlimited ways of depicting bodybuilders is irrelevant. Indeed, in that respect, it is sufficient to note, as stated by EUIPO, that, according to settled case-law, the application of Article 7(1)(c) of Regulation No 207/2009 does not depend on the existence of a real, current or serious need to leave a sign free. By contrast, it suffices only to note, on the basis of the relevant meaning of the word sign at issue, that there exists, as stated in paragraph 31 above, from the viewpoint of the relevant public, a sufficiently direct and specific relationship such as to enable that public to perceive immediately, and without further reflexion, one of the characteristics of the goods or services at issue (judgments of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, not published, EU:T:2002:43, paragraphs 39 and 40, and of 9 February 2010, PromoCell bioscience alive v OHIM (SupplementPack), T‑113/09, not published, EU:T:2010:34, paragraph 27; see also, by analogy, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 35). The Board of Appeal was therefore correct to point out, in paragraph 18 of the contested decision, that, where a sign is perceived as a merely descriptive indication of the goods or services, the application for registration must be refused under Article 7(1)(c) of Regulation No 207/2009, irrespective of whether other options to convey the same message exist.

41      It follows from the above that the Board of Appeal was correct to conclude that the sign in question is descriptive, for the purpose of Article 7(1)(c) of Regulation No 207/2009.

42      The second plea in law must therefore be rejected.

43      In these circumstances, it is not necessary to consider the applicant’s first plea in law, regarding the distinctive character of the mark applied for within the meaning of Article 7(1)(b) of Regulation No 207/2009. It is apparent from the wording of Article 7(1) of Regulation No 207/2009 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign to be ineligible for registration as an EU trade mark (judgments of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 29, and of 9 July 2008, Coffee Store v OHIM (THE COFFEE STORE), T‑323/05, not published, EU:T:2008:265, paragraph 49).

44      The present action must therefore be dismissed in its entirety.

 Costs

45      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.

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

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Universal Protein Supplements Corp. to pay the costs.

Berardis

Kreuschitz

Spielmann

Delivered in open court in Luxembourg on 29 September 2016.

[Signatures]