Powerserv Personalservice v OHMI- Manpower (MANPOWER) (Intellectual property) [2009] EUECJ C-553/08P (2 December 2009)

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(Appeals - Community trade mark - Regulation (EC) No 40/94 - Article 7(1)(c) and Article 51(1) and (2) - Application for a declaration of invalidity - Cross-appeal - Community word mark MANPOWER - Absolute grounds for refusal - Descriptive character - Distinctive character acquired through use)

APPEAL under Article 56 of the Statute of the Court of Justice brought on 15 December 2008,

Powerserv Personalservice GmbH, established in Sankt Pölten (Austria), represented by B. Kuchar, Rechtsanwältin,

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

Manpower Inc., established in Milwaukee (United States), represented by A. Bryson, Barrister, instructed by V. Marsland, Solicitor,

composed of C. Toader, President of the Chamber, C.W.A. Timmermans and P. Kūris (Rapporteur), Judges,

1 By its appeal, Powerserv Personalservice GmbH (‘Powerserv’) asks the Court to set aside the judgment of the Court of First Instance of the European Communities (now ‘the General Court’) of 15 October 2008 in Case T-405/05 Powerserv Personalservice v OHIM - Manpower (MANPOWER) [2008] ECR II-2883 (‘the judgment under appeal’) dismissing Powerserv’s action against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 22 July 2005 (Case R 499/2004-4; ‘the contested decision’).

2 Article 7 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994, L 11, p. 1), entitled ‘Absolute grounds for refusal’ provides as follows:

(c) 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;

2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.

3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.’

3 Under the title ‘Absolute grounds for invalidity’, Article 51(1) and (2) of the regulation provide as follows:

‘1. A Community trade mark shall be declared invalid on application to [OHIM] or on the basis of a counterclaim in infringement proceedings,

(a) where the Community trade mark has been registered in breach of the provisions of Article 5 or of Article 7;

(b) where the applicant was acting in bad faith when he filed the application for the trade mark.

2. Where the Community trade mark has been registered in breach of the provisions of Article 7(1) (b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.’

4 Under the title ‘Examination of the facts by the Office of its own motion’, Article 74(1) of Regulation No 40/94 states:

‘1. In proceedings before it [OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.’

5 Regulation No 40/94 was repealed by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, given the date on which the facts of the case occurred, the present case remains governed by Regulation No 40/94.

6 On 26 March 1996, Manpower Inc. (‘Manpower’) applied to OHIM for registration of the word mark MANPOWER as a Community trade mark in respect of goods and services in Classes 9, 16, 35, 41 and 42 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 described as follows:

- ‘audio cassettes; audio-visual teaching apparatus; audio compact discs; video compact discs; computer software; computer programs; tape recorders; video tapes; video recorders; parts and fittings for all the aforesaid goods’, in Class 9;

- ‘books; printed matter; handbooks; manuals; magazines; printed publications; transparencies; instructional materials; teaching materials; parts and fittings for all the aforesaid goods’, in Class 16;

- ‘arranging and conducting of conferences and seminars; rental of movie projectors and accessories; rental of video recordings, audio recordings and cine-films; organisation of exhibitions; production of video and audio tapes; educational, instructional, teaching and training services, all relating to the tuition and assessment of office, industrial, driving and technical staff; information and advisory services, all relating to the foregoing’, in Class 41;

- ‘professional consultancy and expert services, all relating to personnel vocational testing and guidance, personality testing, psychological examination and career advice; personality and psychological testing services; career and vocational counselling; testing individuals to determine employment skills; occupational psychology services; computer software design and development; consultancy services relating to the assessment, development and application of human resources; provision of temporary accommodation; information and advisory services and preparation of reports, all relating to the aforesaid; catering services’, in Class 42.

7 Initially, the application for registration was rejected on the basis of Article 7(1)(c) of Regulation No 40/94 but in the light of evidence submitted by the proprietor of the mark intended to show that the trade mark had acquired distinctive character through use, the mark was ultimately registered on 13 January 2000 and published in the Community Trade Marks Bulletin of 28 February 2000.

8 On 27 October 2000, Powerserv filed an application for a declaration of invalidity of the trade mark in question on the basis of Article 51(1) of Regulation No 40/94, on the grounds that the mark had been registered in breach of Article 7(1)(c) and Article 7(3) of that regulation and that the documents produced in support of the assertion that the trade mark had acquired distinctive character through use did not demonstrate that such a distinctive character had been acquired in all the relevant substantial parts of the Community.

9 That application was rejected by a decision of the Cancellation Division of OHIM of 29 April 2004. The latter considered that the ground for refusal of registration based on Article 7(1)(c) of Regulation No 40/94 was applicable only in the Member States in which English is an official language, namely, the United Kingdom of Great Britain and Northern Ireland and Ireland, the reason being that, since the word ‘manpower’ is descriptive only in English, consumers in other Member States would not identify it as descriptive. However, as regards the United Kingdom and Ireland, Manpower had proved that the mark had acquired distinctive character through use. In order to arrive at that conclusion, the Cancellation Division of OHMI took into account evidence which post-dated the registration of the trade mark.

10 On 22 July 2005, the appeal against that decision was dismissed by the Fourth Board of Appeal of OHIM. The latter concluded that registration of the trade mark fell to be refused by virtue of Article 7(1)(c) of Regulation No 40/94 inasmuch as it had a descriptive character in eight Member States, namely, the United Kingdom, Ireland, Germany, Austria, the Netherlands, Sweden, Finland and Denmark. None the less, the Board of Appeal accepted that, in those eight Member States, the mark had, at the time that the application for the declaration of invalidity was lodged, acquired distinctive character through the use that had been made of it within the meaning of Article 51(2). In addition, the Board of Appeal accepted as ‘the public concerned’ ‘possible employers of temporary staff and people in charge of such employment’.

11 On 14 November 2005, Powerserv brought an action before the General Court seeking annulment of the contested decision on the basis, in the final version of its claims, of two pleas in law. The first plea alleged a breach of Article 7(1)(b) and (c) of Regulation No 40/94 on the ground that the trade mark registered was devoid of any distinctive character and was descriptive, throughout the Community, of the goods and services for which it was registered, that is to say, it is descriptive also in the Member States where the Board of Appeal had concluded that it was not descriptive. The second plea alleged a breach of Articles 51(2) and 74(1) of Regulation No 40/94.

12 Manpower intervened in those proceedings and applied to the General Court for variation of the contested decision inasmuch as, in its view, Article 7(1)(c) of Regulation No 40/94 does not prohibit the registration of the MANPOWER trademark since it is not descriptive in any of the eight Member States referred to in the contested decision, namely, Denmark, Germany, Ireland, the Netherlands, Austria, Sweden, Finland and the United Kingdom.

13 After holding in paragraph 56 of the judgment under appeal that the assessment of the alleged descriptiveness of the trade mark registered consists in replying to the question whether the word ‘manpower’ can, in normal usage from the point of view of the target public, serve to designate - either directly or by reference to one of their essential characteristics - the goods or services protected by that trade mark and, in paragraph 57 thereof, that the target public is made up of the entire population of working age, the General Court considered, in paragraph 58 of the judgment, that the Board of Appeal had been correct in concluding that that word was descriptive, in the United Kingdom and in Ireland, of the services of an employment agency or a temporary personnel agency.

14 In paragraph 66 of the judgment under appeal, the Court also accepted that in respect of the latter two Member States, the word ‘manpower’ was also descriptive of most of the goods and services protected by the trade mark in Classes 9, 16, 41 and 42.

15 In paragraphs 79 and 80 of the judgment under appeal, the General Court concluded that the word ‘manpower’ was also descriptive in Germany and Austria for all the goods and services protected by the trade mark in question.

16 On the other hand, in paragraph 89 of the judgment, the General Court held that, apart from the fact that the Board of Appeal did not take into consideration the entire relevant public, it had also failed to show that English was used - albeit only as an alternative to the national language - to address the members of the public which it took into consideration. The General Court went on to conclude in paragraph 90 of its judgment that the Board of Appeal had made an error of assessment in finding that, in the Netherlands, Sweden, Denmark and Finland, the trade mark at issue was descriptive of the goods and services in question.

17 However, in paragraph 91 of the judgment under appeal, the General Court concluded that, as regards the remaining non-English-speaking Member States of the Community, the Board of Appeal had been correct in holding that the trade mark registered was not descriptive there.

18 That situation led the General Court to conclude, in paragraph 94 of the judgment under appeal, that the contested decision had to be altered to the effect that the trade mark is not descriptive, in the Netherlands, Sweden, Denmark or Finland, of the goods and services for which it was registered. Consequently, and to that extent, Manpower’s application had to be upheld. The General Court therefore rejected Powerserv’s first plea as unfounded.

19 With regard to Powerserv’s second plea, the General Court held, first, in paragraph 123 of the judgment under appeal, that, in the light of the variation of the contested decision, that plea had become irrelevant in so far as it related to the use of the trade mark in the Netherlands, Sweden, Denmark and Finland.

20 After recalling to mind, in paragraphs 130 to 132 of the judgment under appeal, the evidence which the competent authority must take into consideration in order to determine whether a trade mark has become distinctive in consequence of the use which has been made of it, the General Court concluded, in paragraphs 135, 139 and 140 of the judgment, that the Board of Appeal had been correct in holding it to be established that the trade mark had acquired distinctive character through use in the United Kingdom , Ireland, Germany and Austria.

21 Furthermore, in paragraph 144 of the judgment, the General Court considered that the distinctive character acquired by the trade mark for the services in Class 35 had to extend to the goods and services protected by the trade mark, in the other classes.

22 Lastly, in paragraph 146 of the judgment under appeal, the General Court held that the Board of Appeal had properly taken into account the date of filing the application for a declaration of invalidity as the relevant date for the purposes of determining whether distinctive character had been acquired through use and that, without inconsistency in its reasoning or error of law, it could take account of material which, even though it post-dated the date of the application, enabled conclusions to be drawn regarding the situation as it was on that date.

23 In the light of the foregoing, the General Court varied the contested decision to the effect that the Community trade mark No 76059 MANPOWER ‘is not descriptive, in the Netherlands, Sweden, Finland or Denmark, of the goods and services for which it was registered’ but maintained the operative part of the decision while dismissing the remainder of Powerserv’s action, including Manpower’s cross-action.

24 Powerserv asks the Court, principally, to set aside the judgment under appeal and to declare the Community trade mark MANPOWER invalid in respect of all goods and services designated by it or, in the alternative, to set aside the judgment under appeal inasmuch as it relates to the failure to prove the acquired distinctive character of the trade mark at issue, and refer the case back to the General Court and, in any event, to order OHIM and Manpower to bear their own costs and to pay Powerserv’s costs as regards the proceedings before OHIM, the General Court and the Court of Justice.

25 OHIM contends that the Court should dismiss the appeal and order Powerserv to pay the costs.

26 Manpower, the intervener at first instance, contends that the Court should dismiss the appeal and, in the context of a cross-appeal, seeks the variation of the contested decision to the effect, principally, that the obstacle to registration laid down in Article 7(1)(c) of Regulation No 40/94 does not apply in any of the Member States or, in the alternative, that that obstacle does not apply in either Germany or Austria. It also asks that Powerserv be ordered to pay the costs of the proceedings which Manpower has incurred.

27 Under Article 119 of the Rules of Procedure, where an appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, dismiss the appeal by reasoned order in whole or in part, without opening the oral procedure.

28 Powerserv relies on two grounds of appeal, the first of which is that the MANPOWER trade mark is descriptive throughout the Community of the goods and services for which it was registered, for the purposes of Article 7(1)(c) of Directive 40/94, and the second of which is that there is no evidence that the trade mark has acquired distinctive character in consequence of the use which has been made of it, for the purposes of Article 7(3) of that regulation.

29 In the context of its cross-appeal, Manpower alleges infringement of Article 7(1)(c) of Regulation No 40/94.

30 Given the implications of a finding that the trade mark at issue is descriptive, or that it is not descriptive, it is appropriate to examine the cross-appeal first, before considering Powerserv’s appeal.

31 By its cross-appeal, Manpower seeks acknowledgement that the word ‘manpower’ is not descriptive in the United Kingdom, Ireland, Germany or Austria and, consequently, it is not descriptive throughout the Community.

32 By its first ground of appeal, Manpower argues, with regard to the descriptive character in the United Kingdom and Ireland of the trade mark registered, that the word ‘manpower’, in the sense given to it by the General Court - namely, ‘work-force’ - is descriptive not from the point of view of the worker, but only from that of the employer. However, since the services concerned are employment agency services, provided both to employers and to employees, the conclusion should have been that the word ‘manpower’ does not enable the relevant public in the United Kingdom and Ireland immediately to perceive, without further thought, a description of those services.

33 By its second ground of appeal, Manpower argues, with regard to the descriptive character of the trade mark in Germany and Austria, that the Board of Appeal had found that the word ‘manpower’ is commonly used in German business language. In paragraphs 77 and 79 of the judgment under appeal, the General Court concluded that that concept had been received into the German language, which is incorrect.

34 In fact, according to Manpower, the General Court had widened the ‘target’ group and, consequently, the finding made by the Board of Appeal, which is valid for a more restricted ‘target’ group, is no longer adequate for the wider group. Thus, the evidence on which the Board of Appeal based its findings does not show that the word ‘manpower’ has been received into the German language. The General Court therefore erred in considering that that word is descriptive of the entire population of working age in Germany and Austria. At the very most, that conclusion could be accepted in respect of the persons who use the services in question.

35 With regard to the first ground of appeal, alleging that the meaning of the word ‘manpower’ adopted by the General Court attributes to the word mark at issue a descriptive character only from the point of view of the employer and not from that of the worker, it should be pointed out that, in paragraph 58 of the judgment under appeal, the General Court adopted the definitions of the word ‘manpower’ cited by the Board of Appeal and the Cancellation Division of OHIM and that, consequently, it accepted a meaning of that word which was not limited to ‘work-force’.

36 In those circumstances, when it proceeded, in paragraphs 61 to 63 of the judgment under appeal, to carry out a detailed examination of the different meanings of the word ‘manpower’, on the basis of a body of evidence, the General Court did not commit any error of law of such a nature as to cast doubt on the finding at which it arrived in paragraph 58 of that judgment, which, in any event, cannot be called into question by the Court of Justice in the context of an appeal.

37 Accordingly, the first ground in the cross-appeal must be rejected as clearly unfounded.

38 With regard to the second ground of appeal, Manpower argues, essentially, that there is a contradiction between, on the one hand, the fact that the General Court confirmed the position of the Board of Appeal to the effect that the word ‘manpower’ had been received into German business language and, on the other, the fact that it widened the ‘target’ public as compared with the Board’s understanding of that notion, without carrying out a new assessment of the word in relation to that wider public.

39 It should be stated in that regard that, in paragraph 57 of the judgment under appeal, the General Court defined the ‘target’ public as being the entire population of working age, whereas, in paragraph 16 of the contested decision, the Board of Appeal had held, on the one hand, that the word ‘manpower’ is known to a substantial part of the relevant consumers, namely ‘possible employers of temporary staff and people in charge of such employment’, within the United Kingdom, Ireland, Germany and Austria and, on the other, that ‘[t]he services of an agency for temporary personnel are not only offered to people looking for employment but also to employers seeking employees’.

40 It follows that Manpower is correct in arguing that the General Court took as its benchmark a wider ‘target’ public than the Board of Appeal.

41 However, contrary to Manpower’s argument, in paragraphs 79 and 80 of the judgment under appeal, the General Court correctly took account of that change in the target public when assessing the evidence.

42 In paragraph 79, the General Court was able, on the basis of various evidence intended to show the general meaning of the term in German, to establish the way in which the word ‘manpower’ is understood by German-speaking consumers in general and not merely by a section of those consumers.

43 Thus, the General Court did not err in law when it found that ‘the target public’, as redefined by it, understands the MANPOWER trade mark as descriptive of the goods and services referred to, and Manpower’s second ground of appeal must therefore be rejected as clearly unfounded.

44 In the light of all the above considerations, Manpower’s cross-appeal must be dismissed.

The first ground of appeal: the MANPOWER trade mark is, for the purposes of Article 7(1)(c) of Directive 40/94, descriptive throughout the Community of the goods and services for which it was registered

45 Powerserv argues, essentially, that the General Court erred in law in paragraph 69 et seq. of the judgment under appeal by holding that the MANPOWER word mark did not have a descriptive character in Member States of the Community other than the United Kingdom, Ireland, Germany and Austria.

46 Powerserv argues that the question is whether the word ‘manpower’ has been received into everyday language and has therefore become an assimilated anglicism which the relevant public can understand. Powerserv regards as unfounded the General Court’s limitation, in paragraph 76 of the judgment under appeal, of its analysis to ‘English as a specialised language’ and its statement that ‘the sole fact of a widespread knowledge of English, on the part of the relevant public or a significant section thereof, is not sufficient if English is not actually used … to address that public’. In addition, the General Court did not state the reason for denying that the population of those Member States had even a basic knowledge of English. In that way, the General Court decided the case in a way which ran counter to its own case-law (Case T-87/00 Bank für Arbeit und Wirtschaft v OHIM(EASYBANK) [2001] ECR II-1259).

47 OHIM contends that that plea is inadmissible since assessment of the relevant public’s knowledge of languages is a question of fact which is not open to review by the Court on appeal.

48 Manpower argues that there is no contradiction between the situation examined by the General Court and Bank für Arbeit und Wirtschaft v OHIM(EASYBANK), inasmuch as only the English-speaking Member States were concerned. Moreover, Manpower considers that the claims relating to the percentage of persons who speak English in the Community and to English as a subject of study are irrelevant, since it is unlikely that persons with only a basic knowledge of English would know the meaning of the word ‘manpower’.

49 It should be borne in mind that it is clear from Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice that an appeal lies on points of law only. Accordingly, the General Court has sole jurisdiction to find and assess the relevant facts and evidence. The appraisal of the facts and evidence thus does not constitute, save where they have been distorted, a point open to review by the Court of Justice on appeal (see Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 26 and the case-law cited).

50 It should also be borne in mind that the descriptive character of a trade mark for the purposes of Article 7(1)(c) of Regulation No 40/94 must be assessed with regard, first, to the goods or services for which registration is sought and, second, to the perception of the trade mark by the relevant public (Case C-104/01 Libertel [2003] ECR I-3793, paragraph 62).

51 It should be noted in that regard that Powerserv’s ground of appeal amounts, essentially, to calling into question the analysis made by the General Court, in paragraphs 58 to 94 of the judgment under appeal, concerning the understanding of an English word by the relevant public. The General Court considered, in paragraph 79 of its judgment, that, in Germany and Austria, the word ‘manpower’ had been received into German business language but considered, in paragraph 84, that that was not so in the other non-English-speaking Member States. In addition, the General Court found, in paragraph 89 of its judgment, that the Board of Appeal had not established that, in Denmark, the Netherlands, Sweden or Finland, English was used - albeit only as an alternative to the national language - whereas, as regards the remaining non-English-speaking Member States, it confirmed the Board’s view that there was a certain reluctance to use English.

52 In so ruling, the General Court made findings of a factual character which, save where the facts have been distorted, and that is not alleged in the present case, cannot be called into question by the Court of Justice on appeal.

53 Consequently, the first ground put forward by Powerserv in support of its appeal must be rejected as clearly inadmissible.

The second ground of appeal: there is no evidence that the trade mark had acquired a distinctive character, for the purposes of Article 7(3) of Regulation No 40/94, in consequence of the use which had been made of it

54 This ground of appeal is essentially composed of four parts: (i) the determination of the relevant public, carried out by the General Court, required a fresh assessment of the ‘evidence’; (ii) the General Court erred in extending to Ireland the finding of distinctive character made with regard to the United Kingdom without expressly considering the situation of the trade mark in Ireland; (iii) the General Court accepted an extension, to other goods and services, of the distinctive character acquired by the trade mark for services in Class 35; and (iv) the General Court erred in law in its application of Article 51(1)(a) of Regulation No 40/94.

The first part of the second ground of appeal: the determination by the General Court of the relevant public required a fresh assessment of the ‘evidence’

55 Powerserv argues that, unlike the Board of Appeal, the General Court, in paragraph 57 of the judgment under appeal, did not limit the relevant public exclusively to a specialised group of people but extended it to almost the entire population of the 15 Member States of the Community. Such an extension of the relevant public makes it essential to carry out a fresh assessment of the existing evidence on the basis of which the proprietor of the Community trade mark is seeking to prove that that mark has acquired distinctive character. According to Powerserv, the General Court should have annulled the decision of the Board of Appeal and referred the case back to the Board, at least as regards the assessment of the relevant public in the United Kingdom, Ireland, Germany and Austria.

56 OHIM argues that that claim is unfounded inasmuch as the General Court itself examined the evidence when it assessed the facts. In paragraphs 132 to 141 of the judgment under appeal, each item of evidence is examined in detail and the Court concluded that, even with a wider relevant public, the distinctive character acquired through use is established as regards the Member States considered in the judgment.

57 Manpower argues that the General Court did not consider the question whether the trade mark registered had acquired a distinctive character in business circles. It took a wider group as its benchmark and assessed the evidence with regard to that group. In addition, the form of words used by the Court did not allow the conclusion to be drawn that the distinctive character had been acquired solely through use in the eyes of the business public. Manpower infers from this that a reassessment of the evidence was not necessary, whether with regard to the wider public or to the business public alone, since the Board of Appeal had considered those factors.

58 It should be pointed out that, under Article 7(1)(c) of Regulation No 40/94, read in conjunction with Article 7(2), registration of a trade mark must be refused if it consists exclusively of signs or indications which give it a descriptive character in part of the Community.

59 In addition, under Article 7(3) of that regulation, Article 7(1)(c) does not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it (see, to that effect, Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 82).

60 It follows that a mark can be registered under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it initially had descriptive character for the purposes of Article 7(1)(c) (see, to that effect, Case C-25/05 P Storck v OHIM, paragraph 83).

61 It should be noted in that regard that, as far as the United Kingdom, Ireland, Germany and Austria are concerned, the General Court considered that the word ‘manpower’ was descriptive but had acquired distinctive character through the use which had been made of it, thus confirming the assessment made by the Board of Appeal. However, as was pointed out in paragraph 40 above, the General Court modified the ‘target’ public by extending it to the entire population of working age.

62 Nevertheless, contrary to Powerserv’s contention, in paragraphs 132 to 141 of the judgment under appeal, the General Court carried out, on the basis of all the relevant evidence and with regard to the target public so defined, an examination of the distinctive character which the trade mark registered had acquired through use in relation to that public.

63 Consequently, the first part of Powerserv’s second ground of appeal - alleging that the determination by the General Court of the relevant public required a fresh assessment of the ‘evidence’ - must be rejected as clearly unfounded.

The second part of the second ground of appeal: the General Court erred in extending to Ireland the finding of distinctive character made with regard to the United Kingdom, without expressly considering the situation of the trade mark in Ireland (‘spillover effect’)

64 Powerserv submits that the General Court erred when, in paragraphs 138 and 139 of the judgment under appeal, it confirmed the position of the Board of Appeal by accepting that there was a spillover effect from the United Kingdom to Ireland so far as concerns any possible reputation of the mark. The Court did not indicate the basis for that approach. To suppose the existence of such an effect runs counter both to the case-law of the General Court, according to which the grounds of non-registrability must be refuted wherever they exist (Case T-91/99 Ford Motor v OHIM(OPTIONS) [2000] ECR II-1925), and to the case-law of the Court of Justice, according to which the grounds of non-registrability must be refuted in the framework of a stringent and full examination (Libertel).

65 OHIM contends that the possibility that the distinctive character of a mark acquired through use might have spread from one Member State to another does not, in itself, meet the requirements of a full and detailed examination of such a distinctive character. On the other hand, Powerserv’s contention that the General Court based its findings on such a spillover effect is unfounded and constitutes a distortion of the facts. It is clear that the General Court also made a specific assessment of the distinctive character acquired through use in Ireland by pointing, in paragraph 138 et seq. of the judgment under appeal, to the long period in which the trade mark had been used in Ireland, to Manpower’s turnover and to the evidence based on advertisements in newspapers and telephone directories.

66 Manpower argues that, unlike the Board of Appeal, the General Court did not take account of the spillover effect but based its findings on the long-standing use of the trade mark in Ireland, on Manpower’s turnover and on the evidence based on advertisements in newspapers and telephone directories.

67 It should be pointed out that, in paragraph 138 of the judgment under appeal, the General Court merely set out the position of the Board of Appeal in the contested decision.

68 On the other hand, in paragraph 139 of that judgment, the General Court considered, ‘in the light of the case-file, that the long-standing use of the trade mark in Ireland and the turnover, as well as the evidence drawn from the advertisements in newspapers and telephone directories, enable it to be concluded that the Board of Appeal did not make an error of assessment’. It follows that the General Court did not base its findings solely on a spillover effect, but carried out a detailed examination of the use of the trade mark in Ireland.

69 Accordingly, the second part of Powerserv’s second ground of appeal is clearly unfounded.

The third part of the second ground of appeal: the General Court accepted the extension to other goods and services of the distinctive character acquired by the trade mark for services in Class 35

70 Powerserv claims that, in paragraph 144 of the judgment under appeal, the General Court erred when it accepted that the distinctive character of the registered trade mark in relation to the services in Class 35 could be extended to the other goods and services protected by the trade mark, namely, those in Classes 9, 16, 41 and 42.

71 Thus, Powerserv claims that the ‘the activity of recruitment’ and ‘staff recruitment services’ are two entirely different services, which were prohibited in Austria for a long time. In its view, Manpower merely provides employment agency services and not a recruitment activity. Furthermore, in respect of Classes 9, 16, 41 and 42, no document was produced before the General Court and the latter merely stated that the MANPOWER trade mark was either fanciful or ‘may be understood as indicating the content of those goods and services when used in connection with the services of a recruitment agency’. Lastly, Powerserv argues that that extension, to the other classes of the Nice Agreement at issue in the present dispute, of the proven reputation with regard to the specific services in Class 35 is at odds with Libertel.

72 In addition, with regard to Class 35, Powerserv disputes the reputation of employment agency services and temporary personnel services and also the fact that the relevant public associates together the books, compact discs and similar goods designated by Manpower’s trademark.

73 OHIM contends that, with regard to Class 35, such a restrictive delimitation of the provision of staff and recruitment services cannot be regarded as plausible, since those two activities frequently overlap.

74 With regard to the other goods and services, the claim that the General Court extended the distinctive character of the registered trade mark in relation to services in Class 35 to the other goods and services protected by the trade mark in Classes 9, 16, 41 and 42 is misleading and clearly unfounded. In paragraph 143 of the judgment under appeal, the General Court did not extend that distinctive character automatically but took account of the fact that the undertaking actually used the goods and services in question in connection with the trade mark concerned.

75 Manpower argues that Powerserv fails to take account of the fact that the obstacle to registration laid down in Article 7(1)(c) of Regulation No 40/94 was accepted with regard to goods and services in Classes 9, 16, 41 and 42 only in connection with the provision of employment agency services.

76 It should be borne in mind that registration of a sign as a trade mark is always applied for in respect of the goods or services mentioned in the application for registration. Accordingly, a trade mark’s distinctiveness must be assessed by reference, first, to the goods or services in respect of which registration is sought, and, second, by reference to the relevant public’s perception of that mark (see, to that effect, Case C-299/99 Philips [2002] ECR I-5475, paragraph 59, and Libertel, paragraph 75).

77 With regard to the extension of the registered trade mark’s distinctive character for the services in Class 35 to the goods and services in Classes 9, 16, 41 and 42, it should be pointed out that, after setting out the reasoning of the Board of Appeal based, essentially, on the fact that the word ‘manpower’ had a secondary meaning for temporary employment services, the General Court considered, in paragraph 144 of the judgment under appeal, that the Board of Appeal had been correct in concluding that the distinctive character acquired by that trade mark for the services in Class 35 had to be extended to the goods and services in Classes 9, 16, 41 and 42.

78 However, inasmuch as Powerserv complains that the General Court merely extended the reputation for Class 35 to the other classes of goods and services, the third part of the second ground of appeal relied on by Powerserv is designed, in reality, to have the Court of Justice substitute its own assessment of the facts for the assessment made by the General Court.

79 The same is true with regard to the assessment of the reputation of the services in Class 35.

80 The General Court held, in paragraphs 133 to 141 of the judgment under appeal, that the distinctive character acquired through use by the trade mark registered had been demonstrated in the United Kingdom, Ireland, Germany and Austria for the goods and services in Class 35.

81 Furthermore, the General Court also pointed out, in paragraphs 143 to 145 of the judgment under appeal, that the distinctive character acquired by the trade mark for the services in Class 35 should be extended to the goods and services protected by that mark in the other classes, on the basis that the trade mark is descriptive only in relation to some of the goods and services in Classes 9, 16, 41 and 42 and that the word ‘manpower’ is likely to be understood by the consumer as indicating the origin of those goods and services.

82 Such findings of the General Court constitute appraisals that are factual in nature. However, in accordance with the case-law referred to in paragraph 49 above, an appeal lies on points of law only and such appraisals cannot, save where the facts have been distorted, be challenged on appeal.

83 Since it has not been alleged in the present case that the General Court distorted the facts or evidence submitted to it, the third part of the second ground of appeal must be rejected as clearly inadmissible.

The fourth part of the second ground of appeal: the General Court erred in law in its application of Article 51(1)(a) of Regulation No 40/94

84 Powerserv argues that the General Court erred in paragraph 127 of the judgment under appeal when it held that a registered trade mark which has been proved to have acquired distinctive character through use cannot be declared invalid under Article 51(1)(a) of Regulation No 40/94, because it is not a trade mark registered in breach of the provisions of Article 7 of that regulation. The position of the General Court in that regard amounts to a finding that it is absolutely impossible to challenge a trade mark which, at first glance, has no distinctive character but which was registered on the basis of insufficient evidence of reputation.

85 OHIM contends that the fourth part of the second ground of appeal is clearly unfounded. A trade mark registered on the basis of proof of distinctive character acquired through use cannot be declared invalid on the basis of Article 51(1)(a) of Regulation No 40/94.

86 Manpower agrees with the findings of the General Court and maintains that Powerserv takes no account of Article 51(2) of Regulation No 40/94.

87 It follows from the very terms of Article 7(3) of Regulation No 40/94 that the fact that, in consequence of the use which has been made of it, a trade mark has become distinctive in relation to the goods or services for which registration was requested prevents the application of an absolute ground for refusal of registration under Article 7(1)(a) to (c).

88 Under Article 51(1) of Regulation No 40/94, a Community trade mark may be declared invalid only if it was registered in breach of the provisions, inter alia, of Article 7 of that regulation.

89 On the other hand, Article 51(2) of Regulation No 40/94 must be interpreted restrictively in so far as it establishes an exception to the absolute grounds for invalidity governed by Article 51(1) and cannot therefore serve as a basis for reasoning by analogy in the interpretation of Article 7(3) of that regulation (Case C-542/07 P Imagination Technologies v OHIM [2009] ECR I-4937, paragraph 54).

90 Contrary to Powerserv’s argument, the General Court did not hold in paragraph 127 of the judgment under appeal that a trade mark which, at first glance, has no distinctive character but which was registered on the basis of insufficient evidence of reputation is immune to any form of challenge.

91 The General Court merely pointed out that the scope of Article 51(1) of Regulation No 40/94 is different from the scope of Article 51(2). Thus, Article 51(1) cannot serve as the legal basis for an action for a declaration of invalidity in the case of a trade mark which became distinctive in consequence of the use made of it prior to the filing of the application for its registration, since such a trade mark was not registered in breach of the provisions of Article 7 of the Regulation. Article 51(2), on the other hand, merely refers to trade marks which have acquired distinctive character through the use which has been made of them after registration, even though registration was made in breach of Article 7(1)(b) to (d) of the Regulation and should therefore have been declared invalid on that ground.

92 Consequently, the fourth part of the second ground of appeal must be rejected as clearly unfounded.

93 It follows from all of the foregoing that Powerserv’s appeal is, in part, clearly inadmissible and, in part, clearly unfounded, and must therefore be dismissed.

94 Under Article 69(2) of the Rules of Procedure, applicable in appeal proceedings by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM and Manpower have applied for costs against Powerserv and the latter has been unsuccessful, Powerserv must be ordered to bear the costs.

1. The principal appeal brought by Powerserv Personalservice GmbH is dismissed.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Powerserv Personalservice v OHMI- Manpower (MANPOWER) (Intellectual property) [2009] EUECJ C-553/08P (2 December 2009) URL: http://www.bailii.org/eu/cases/EUECJ/2009/T40505P.html Cite as: EU:C:2009:745, ECLI:EU:C:2009:745, [2009] EUECJ C-553/8P, [2009] EUECJ C-553/08P

Court of Justice of the European Communities (including Court of First Instance Decisions)