Smarter Travel Media v EUIPO (SMARTER TRAVEL) (Judgment) [2016] EUECJ T-290/15 (09 November 2016)

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(EU trade mark — Application for the figurative EU trade mark SMARTER TRAVEL — Absolute grounds for refusal — Descriptive character — No distinctive character — Article 7(1)(b) and (c) and Article 7(2) of Regulation (EC) No 207/2009 — Equal treatment)

Smarter Travel Media LLC, established in Boston, Massachusetts (United States), represented by P. Olson, lawyer,

European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 20 March 2015 (Case R 1986/2014-2), relating to an application for registration of the figurative sign SMARTER TRAVEL as an EU trade mark,

composed of A. Dittrich, President, J. Schwarcz (Rapporteur) and V. Tomljenović, Judges,

1 On 23 December 2013, the applicant, Smarter Travel Media LLC, 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).

3 The services in respect of which registration was sought are in Classes 35, 38, 39, 42 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 35: ‘Advertising, marketing and promotional services; Commercial trading and consumer information services; Business assistance, management and administrative services; Business analysis, research and information services; Price comparison services in the field of travel for use by consumers in determining the cost of transportation and accommodations, available electronically via computer networks and global information networks’;

– Class 38: ‘Telecommunication services; Providing online electronic bulletin boards and forums for transmission of messages and multimedia among users in the field of travel’;

– Class 39: ‘Distribution by pipeline and cable; Transport; Packaging and storage of goods; Parking and vehicle storage, mooring; Travel information services; providing an online computer database in the field of travel; providing reviews of travel service providers, travel destinations, tours, and local attractions via computer and global information networks; providing an interactive website and searchable database in the field of transportation, travel and travel planning’;

– Class 42: ‘IT services; Science and technology services; Testing, authentication and quality control; Design services; Computer services, namely, providing search engines for obtaining travel data, information and reviews via computer networks and global information networks’;

– Class 43: ‘Temporary accommodation; Animal boarding; Rental of furniture, linens and table settings; Provision of food and drink; Travel information services, namely, providing information concerning lodging and restaurants; providing reviews of accommodations and restaurants via computer networks and global information networks’.

4 On 15 January 2014, the examiner informed the applicant of his objections to registration of the mark applied for as regards the following services:

– Class 35: ‘Commercial trading and consumer information services; business analysis, research and information services; price comparison services in the field of travel for use by consumers in determining the cost of transportation and accommodations, available electronically via computer networks and global information networks’;

– Class 38: ‘Telecommunication services; providing online electronic bulletin boards and forums for transmission of messages and multimedia among users in the field of travel’;

– Class 39: ‘Transport; Packaging and storage of goods; parking and vehicle storage, mooring; travel information services; providing an online computer database in the field of travel; providing reviews of travel service providers, travel destinations, tours, and local attractions via computer and global information networks; providing an interactive website and searchable database in the field of transportation, travel and travel planning’;

– Class 42: ‘IT services; computer services, namely, providing search engines for obtaining travel data, information and reviews via computer networks and global information networks’.

5 By decision of 16 June 2014, the examiner rejected the application for registration in respect of the services referred to in paragraph 4 above, on the ground that the mark applied for was descriptive and devoid of any distinctive character within the meaning of Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

6 On 30 July 2014, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.

7 By decision of 20 March 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.

8 As regards the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009, the Board of Appeal held, first, that since the sign is made up of the English words ‘smarter’ and ‘travel’, the English-speaking public in the European Union must be taken into consideration and that, second, the services applied for targeted the general public, which is reasonably well informed and reasonably observant and circumspect.

9 The Board of Appeal next recalled, referring to the judgment of 16 September 2004, SAT.1 v OHIM (C‑329/02 P, EU:C:2004:532, paragraph 24), that while the distinctive character of a mark could, in part, be assessed for each of its elements taken separately, it must, in any event, depend on an appraisal of the sign in question as a whole. In that respect, it found, in essence, that the fact that the different elements are capable of being registered on their own is not relevant, since even if a mark contained elements capable of being registered on their own, the context in which the element was placed could result in the mark as a whole having no distinctive character.

10 On that basis, the Board of Appeal found that the figurative sign containing the word element ‘smarter travel’ was descriptive of the services at issue and that it was devoid of any distinctive character. It considered that the terms ‘smarter’ and ‘travel’, the first of which is the comparative of the adjective ‘smart’ meaning, inter alia, ‘clever’, ‘astute’, ‘intelligent’, ‘knowledgeable’ or ‘capable’, and the second of which means ‘to go’, ‘move’ or ‘journey from one place to another’, will be understood by consumers, immediately and without further reflection, as referring to the characteristics and, in some cases, the subject matter or kind of the services referred to in paragraph 4 above. Moreover, the combination of words was not, according to the Board of Appeal, unusual from the point of view of syntax.

11 As regards the graphic element of the sign applied for, the Board of Appeal confirmed the examiner’s findings that it underlined the descriptive nature of the expression ‘smarter travel’. The stylised representation of a suitcase in light blue with darker borders, slightly modified at the bottom, was insufficient, according to the Board of Appeal, to confer distinctive character on the mark applied for. Since it depicted a direct link with the word ‘travel’ and was frequently used to identify services relating to travel, the design at issue was not likely to divert the consumer’s attention away from the clear descriptive message conveyed by the word combination ‘smarter travel’, and thus it merely had secondary importance in the mark applied for. The combination of words was therefore the dominant element of the sign.

12 In the Board of Appeal’s opinion, on seeing the mark applied for, the relevant public will immediately perceive a clear, descriptive indication of the type, purpose and other characteristics of the services at issue, namely services consisting of cleverer or more intelligent travel or enabling the consumer to travel in a cleverer, more intelligent or more knowledgeable way than if they had not used the services offered by applicant. The relevant public will not be likely to identify the services concerned as originating from a particular undertaking or to memorise the figurative elements of the sign or their combination with word elements. Therefore, and taking account of all the components of the mark applied for as a whole, the Board of Appeal held that the mark applied for demonstrates a sufficiently close link with all the services at issue for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) of Regulation No 207/2009.

13 Furthermore, as regards the applicant’s arguments concerning the registration of similar marks in the past, the Board of Appeal considered, in essence, referring to the principle of legality, that previous decisions are not binding on EUIPO. Nonetheless, a concrete examination of the mark applied for leads to the conclusion that it cannot be registered. That is all the more the case, according to the Board of Appeal, since the decisions cited by the applicant were made at first instance, and the board had not had an opportunity to express its position on them.

14 Finally, in the light of the descriptive character of the sign applied for and its inability to perform the essential function of a mark, namely to identify the origin of the services concerned, the Board of Appeal also found that the mark at issue is devoid of distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.

17 In support of its action, the applicant raises five pleas in law alleging, first, the distinctive character of the mark applied for; secondly, that the Board of Appeal misapplied the order of 12 February 2009, Bild digital and ZVS (C‑39/08 and C‑43/08, not published, EU:C:2009:91, paragraphs 17 and 18); thirdly, the existence of an independently registrable element; fourthly, earlier registrations of a logo and simpler versions of the mark applied for; and, fifthly, the absence of a global assessment.

18 In view of the issues which they raise, the arguments presented can be grouped into three pleas in law, alleging, respectively, an infringement of Article 7(1)(c) of Regulation No 207/2009, an infringement of Article 7(1)(b) of that regulation, and an infringement of the principles of equal treatment and sound administration.

The first plea, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

19 In its first plea in law, the applicant contests the Board of Appeal’s conclusion that the mark applied for is descriptive of the services at issue.

20 In particular, the applicant complains that the Board of Appeal, first, focused its assessment on the word element of the mark applied for to the detriment of the figurative element, which has an independent distinctive character within that mark. Secondly, as a result of the ‘arbitrary’ character of the word ‘smarter’ in relation to the services provided, the public concerned would not expect that expression.

22 In that regard, 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 service, are not to be registered.

23 According to settled case-law, 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 (judgments of 28 April 2015, Saferoad RRS v OHIM (MEGARAIL), T‑137/13, not published, EU:T:2015:232, paragraph 20, and of 25 September 2015, Grundig Multimedia v OHIM (DetergentOptimiser), T‑707/14, not published, EU:T:2015:696, paragraph 12), and prevents an undertaking from monopolising the use of a descriptive term to the detriment of other undertakings, including its competitors, whose choice of available vocabulary for describing their own goods and services is thereby reduced (judgments of 10 September 2015, Laverana v OHIM (BIO organic), T‑610/14, not published, EU:T:2015:613, paragraph 15, and of 25 November 2015, Ewald Dörken v OHIM — Schürmann (VENT ROLL), T‑223/14, not published, EU:T:2015:879, paragraph 20).

24 In order for a sign to fall under the prohibition laid down by that provision, there must be a sufficiently direct and specific link between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of those goods or services or of one of their characteristics (judgments of 3 June 2015, Bora Creations v OHIM — Beauté prestige international (essence), T‑448/13, not published, EU:T:2015:357, paragraph 21, and of 10 September 2015, Volkswagen v OHIM (STREET), T‑321/14, not published, EU:T:2015:619, paragraph 12).

25 The descriptive character of a mark must be assessed, first, in relation to the goods or services for which the registration of the sign has been applied for and, second, in relation to the understanding of the mark by the relevant public which is made up of consumers of those goods and services (judgments of 14 June 2007, Europig v OHIM (EUROPIG), T‑207/06, EU:T:2007:179, paragraph 30, and of 10 September 2015, STREET, T‑321/14, not published, EU:T:2015:619, paragraph 13).

26 The Court must examine the applicant’s various arguments in the light of those principles.

27 In the present case, as the Board of Appeal stated in paragraph 17 of the contested decision, the services concerned are targeted at the general public, which is reasonably well informed and reasonably observant and circumspect.

28 Furthermore, given that the sign at issue is composed of elements derived from English, it must be held, as the Board of Appeal found in paragraph 16 of the contested decision, that the public in relation to which the assessment of whether there is an absolute ground for refusal must be made, is the English-speaking public. In that regard, it must be borne in mind that Article 7(2) of Regulation No 207/2009 states that paragraph 1 is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

29 Accordingly, it must be considered whether, from the viewpoint of that public, there is a sufficiently direct and specific relationship between the mark applied for and the services in respect of which registration has been refused.

30 The mark applied for is composed of the word elements ‘smarter’ and ‘travel’, which are slightly stylised and between which, represented in colour, is the following figurative element:

31 The meaning of each of the words comprising the mark applied for is clear. The word ‘smarter’ is the comparative of the adjective ‘smart’, which means, as the Board of Appeal rightly stated, inter alia, ‘clever’, ‘astute’, ‘intelligent’, ‘knowledgeable’, ‘capable’, and ‘knowing’ or ‘shrewd’. As regards the term ‘travel’, that word refers, in particular, to, ‘journey’, ‘to move’, ‘to go’. As the Board of Appeal held in paragraphs 22 and 23 of the contested decision, it must be held that, in compliance with English syntax rules, the relevant public would immediately and without further thought understand the expression ‘smarter travel’ as the combination of an adjective and a noun which, taken together, means a more intelligent, more astute, more knowledgeable, cleverer, more capable, more knowing or shrewder way to journey, go or move.

32 Therefore, and as stated in paragraphs 20 to 24 of the contested decision, when the public concerned is faced with the expression ‘smarter travel’ in the context of the services at issue, namely travel services, relating to travel or facilitating it, it will immediately understand it to be a reference to one of their possible characteristics, or even their subject matter.

33 At the hearing, the applicant submitted that as regards telecommunication services within Class 38 and IT services within Class 42, the mark applied for was not descriptive, since those services are not within the travel field.

34 On being invited by the Court to specify to what extent such a claim was made in its application, the applicant referred to paragraph 9 thereof, which asserts that there was not, in the present case, a sufficiently direct and specific link between the mark applied for and the services at issue. Following a remark by the Court that that paragraph did not identify any particular service which was not related to the travel sector, the applicant accepted that such an explanation should have appeared in its application, but did not.

35 In that regard, since the application does not contain any arguments as to why certain services applied for do not relate to the travel sector, or provide a list of such services, the claim that the mark applied for is not descriptive as regards telecommunication and IT services, owing to the alleged lack of connection with travel, cannot be held to be an amplification of the claim set out in the application that commenced the proceedings, since that claim was formulated in a way that was vague and lacking in detail. Consequently, that new claim must be rejected as inadmissible pursuant to Article 84(1) of the Rules of Procedure (see judgment of 30 April 2015, VTZ and Others v Council, T‑432/12, not published, EU:T:2015:248, paragraphs 156 to 158 and the case-law cited).

36 As regards the figurative elements, it must be borne in mind that, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods or services in question by citing the name rather than describing the figurative element of the mark (judgments of 17 September 2015, Bankia v OHIM — Banco ActivoBank (Portugal) (Bankia), T‑323/14, not published, EU:T:2015:642, paragraph 43, and of 7 October 2015, Atlantic Multipower Germany v OHIM — Nutrichem Diät + Pharma (NOxtreme), T‑186/14, not published, EU:T:2015:754, paragraph 48).

37 In the present case, the design placed between the words ‘smarter’ and ‘travel’ consists only of a suitcase in a light blue colour with darker borders, the lower part of which is slightly modified, and which represents, according to the applicant, the combination of a suitcase and a speech bubble. It is no bigger in size than the word elements comprising the mark applied for. Moreover, the figurative element is placed centrally between the words ‘smarter’ and ‘travel’, which occupy a much larger part of the space. As a result, as the Board of Appeal found in paragraph 26 of the contested decision, the word elements of the sign at issue are dominant, the figurative element being of secondary importance within the mark applied for.

38 Having regard to the nature of the services in respect of which the application for registration has been made, namely travel services and services relating to or facilitating travel, the public will immediately understand the symbol, not as a speech bubble, but as a suitcase which is slightly modified at the bottom. An average consumer will not question the meaning of the modification to the bottom part of the suitcase. That is all the more so given that the image precedes the term ‘travel’, the meaning of which is recalled in paragraph 31 above. Travelling often includes the obligation or need to carry suitcases.

39 Therefore, the Board of Appeal held, correctly, that the stylised representation of a suitcase in light blue with darker borders, slightly modified at the bottom, was not capable of rendering the applicant’s sign fanciful or unusual. The depiction of a stylised suitcase can, at most, merely underline and reinforce the idea of travel conveyed by the expression at issue. The figurative element thus constitutes a mere decorative element which is incapable of diminishing the descriptive message given by the mark applied for.

40 That finding cannot be called into question by the applicant’s argument that the figurative element consisting of the combination of a suitcase and a speech bubble is a distinctive, attention-grabbing element and that the placement of the words enhances the visual pun of those words since they are unexpectedly outside the speech bubble. In that respect, as the words are positioned, according to the applicant’s own statements, ‘unexpectedly’ outside the box, it is therefore very unlikely that the public concerned would understand the figurative element to represent a speech bubble. When questioned at the hearing, the applicant was unable to explain how the public could, in those circumstances, understand the figurative element in the manner construed by the applicant.

41 As regards the typeface of the words, that is of no consequence. As the Board of Appeal and the examiner found, in essence, owing to its simplicity it is hardly noticeable, so that it is unlikely, on the facts of the present case, to change in any way the understanding that the consumer might have of the word elements that comprise the mark applied for (see, to that effect, judgment of 14 January 2016, Zitro IP v OHIM (TRIPLE BONUS), T‑318/15, not published, EU:T:2016:1, paragraph 30).

42 Therefore, the Board of Appeal did not err in concluding, in paragraph 28 of the contested decision, that mark applied for, conveying the meaning set out in paragraph 31 above, presented a sufficiently close link with the services designated by the mark applied for, namely travel services, services related to or facilitating travel, for that mark to fall within the scope of the prohibition laid down in Article 7(1)(c) of Regulation No 207/2009.

44 In the first place, the argument that the word element ‘smarter’, which is not usually used to designate the services covered, is an arbitrary term for those services, must be rejected. According to settled case-law, it is not necessary that the sign in question should actually be used, at the time that registration is applied for, for the purpose of describing the services concerned. It suffices that the sign could be used for such purposes (judgments of 10 February 2015, IOIP Holdings v OHIM (GLISTEN), T‑648/13, not published, EU:T:2015:83, paragraph 15, and of 7 October 2015, Sonova Holding v OHIM (Flex), T‑187/14, not published, EU:T:2015:759, paragraph 24). It must be held that the word element ‘smarter’, combined with the word element ‘travel’, identifies, in at least one of the potential meanings set out in paragraph 31 above, one of the characteristics of the services at issue.

45 In the second place, the applicant submits, in essence, that the Board of Appeal did not take into account the importance of the figurative element and did not sufficiently take into account the overall impression created by all the elements of the mark applied for.

46 As has been held above, in paragraph 36 to 41 et seq., the Board of Appeal did indeed take into account the figurative element at issue, but found, correctly, that it was not fanciful or unusual, merely reinforced the idea of travel conveyed by the word elements themselves, and was secondary within the mark applied for. Thus, it cannot confer distinctiveness on the mark (see paragraphs 25 to 28 of the contested decision).

47 In the third place, the applicant’s argument that registration of the mark applied for is ‘very much’ in the public interest must be rejected. It is apparent from the case-law cited in paragraph 23 above that the general interest or public interest in keeping descriptive marks free for third parties to use is pre-established and presumed. It follows that, where the mark applied for is descriptive, it is sufficient for the Board of Appeal to make the finding of that descriptive character and it does not have to examine the question whether, notwithstanding its descriptive character, there is in fact a public interest in keeping the mark applied for free for third parties to use (judgment of 7 October 2015, Cyprus v OHIM (XAΛΛOYMI and HALLOUMI), T‑292/14 and T‑293/14, EU:T:2015:752, paragraph 55).

The second plea, alleging infringement of Article 7(1)(b) of Regulation No 207/2009

49 According to the applicant, the Board of Appeal was wrong to deny that the mark applied for has a minimum degree of distinctive character for the services at issue.

50 In particular, the applicant alleges that the Board of Appeal committed an error by basing its reasoning as to the lack of distinctive character on the analysis of the descriptive character of the sign at issue carried out under Article 7(1)(c) of Regulation No 207/2009. Moreover, the applicant submits, the mark applied for, which is made up of unusual word elements and a totally fanciful figurative element, exceeds the minimum distinctive character that is required.

52 Pursuant to Article 7(1)(b) of Regulation No 207/2009 trade marks which are devoid of any distinctive character are not to be registered (judgments of 25 September 2015, BSH v OHIM (PerfectRoast), T‑591/14, not published, EU:T:2015:700, paragraph 37, and of 7 October 2015, JP Divver Holding Company v OHIM (EQUIPMENT FOR LIFE), T‑642/14, not published, EU:T:2015:753, paragraph 12). According to consistent case-law, the marks referred to in Article 7(1)(b) of Regulation No 207/2009 are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who acquired them 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 (judgments of 17 September 2015, Volkswagen v OHIM (COMPETITION), T‑550/14, EU:T:2015:640, paragraph 12, and of 22 October 2015, Volkswagen v OHIM (CHOICE), T‑431/14, not published, EU:T:2015:793, paragraph 13).

53 In accordance with the case-law, the distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration or protection of the mark has been applied for and, secondly, by reference to the perception of the relevant public, which consists of average consumers of those goods or services (judgments of 30 September 2015, Volkswagen v OHIM (ULTIMATE), T‑385/14, not published, EU:T:2015:736, paragraph 12, and of 8 October 2015, Société des produits Nestlé v OHIM (NOURISHING PERSONAL HEALTH), T‑336/14, not published, EU:T:2015:770, paragraph 30).

54 A minimum degree of distinctive character is sufficient, however, to render the absolute ground for refusal set out in Article 7(1)(b) of Regulation No 207/2009 inapplicable (judgments of 16 April 2015, Drogenhilfe Köln Projekt v OHIM (Rauschbrille), T‑319/14, not published, EU:T:2015:208, paragraph 33, and of 7 October 2015, The Smiley Company v OHIM (Shape of a smiley with heart-shaped eyes), T‑656/13, not published, EU:T:2015:758, paragraph 22).

55 The finding that a mark has distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009 is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services it covers and to distinguish them from those of other undertakings (judgments of 6 November 2014, Vans v OHIM (Representation of a wavy line), T‑53/13, EU:T:2014:932, paragraph 69, and of 3 December 2015, Compagnie des fromages & Richesmonts v OHIM — Grupo Lactalis Iberia (Representation of a red and white Vichy motif), T‑327/14, not published, EU:T:2015:929, paragraph 60).

56 Furthermore, any distinctive character of a compound mark may be assessed, in part, in respect of each of the terms or elements, taken separately, but must, in any event, be based on the overall perception of that trade mark by the relevant public and not on a presumption that elements individually devoid of distinctive character cannot, on being combined, present such character. The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character (judgment of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 29).

57 In the present case, it follows, first of all, from the assessment of the first plea that the mark applied for is descriptive of the services that it covers. It is sufficient that one of the absolute grounds for refusal enumerated in Article 7(1) of Regulation No 207/2009 applies for a sign to be ineligible for registration as an EU trade mark. That conclusion is sufficient in itself in order to reject the second plea as ineffective (judgments of 22 May 2014, NIIT Insurance Technologies v OHIM (EXACT), T‑228/13, EU:T:2014:272, paragraph 63, and of 3 December 2015, Infusion Brands v OHIM (DUALSAW), T‑647/14, not published, EU:T:2015:932, paragraph 39).

58 Moreover, according to settled case law, the descriptive signs referred to in Article 7(1)(c) of Regulation No 207/2009 are also devoid of distinctive character for the purposes of Article 7(1)(b) of that regulation, the second of those provisions differing from the first in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings (judgments of 12 November 2015, Orthogen v OHIM — Arthrex (IRAP), T‑253/13, not published, EU:T:2015:843, paragraph 45, and of 17 December 2015, Olympus Medical Systems v OHIM (3D), T‑79/15, not published, EU:T:2015:999, paragraph 35).

59 In any event, it suffices to hold that, first, as has already been stated in paragraphs 30 to 41 above, the Board of Appeal found, correctly, that the expression ‘smarter travel’, which is the dominant element in the mark applied for, will be immediately understood, by the relevant public, and perceived as a description of the services at issue and not as an indication of their commercial origin (see, to that effect, judgment of 5 February 2015, nMetric v OHIM (SMARTER SCHEDULING), T‑499/13, not published, EU:T:2015:74, paragraphs 21, 33 and 37 and the case-law cited). Second, as regards the figurative elements, it has been held, in paragraphs 36 to 41 above, that the representation of a suitcase, in light blue with darker borders and slightly modified at the bottom, was secondary within the mark applied for, was decorative in nature, and, at the most, underlined and reinforced the idea of travel conveyed by the word ‘travel’. As to the stylisation of the word element of the mark applied for, its simplicity would not in any way grab the attention of consumers. Rather, it would pass unnoticed. Hence, considered as a whole, the mark applied for, which is dominated by its word element, is not more distinctive as regards the services in question than the sum of the elements of which it is composed (order of 24 June 2015, in Wm. Wrigley Jr. v OHIM (Extra), T‑552/14, not published, EU:T:2015:462, paragraph 16, and judgment of 10 September 2015, EE v OHIM (Representation of white dots on an ivory background), T‑144/14, not published, EU:T:2015:615, paragraph 45).

60 It is therefore necessary to confirm the finding made by the Board of Appeal, in paragraphs 46 to 49 of the contested decision, that the mark applied for, taken as a whole, is devoid of any distinctive character, not only because a descriptive word mark necessarily lacks distinctiveness but also because, in the present case, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the services concerned.

The third plea, alleging infringement of the principles of equal treatment and sound administration

62 By this plea, the applicant alleges, in essence, that the Board of Appeal departed from its previous decisional practice, thereby infringing the principles of equal treatment and sound administration, and its obligation to carry out a global assessment.

63 In particular, the applicant alleges that the Board of Appeal misconstrued the order of 12 February 2009, Bild digital and ZVS (C‑39/08 and C‑43/08, not published, EU:C:2009:91, paragraphs 17 and 18), by disregarding similar registrations without beforehand having established their unlawfulness, indeed without examining them in concreto. The contested decision is irreconcilable with the registrations of other marks that include the word element ‘smarter’ and the earlier versions of the mark applied for, of which the latter is merely a modernised version, or its figurative element for similar or identical services to those covered in the present case, as regards the applicant’s marks.

– the mark smarter TRAVEL, registered on 16 April 2008 with the number 005563201, designating services included in Classes 39 and 43, reproduced as follows:

– the mark smarter TRAVEL registered on 12 November 2009 with the number 006975288, designating services included in Classes 35, 39, 41, 42 and 43, reproduced as follows:

– the mark registered on 16 May 2014 with the number 12459566, designating services included in Classes 35, 38, 39, 42 and 43, reproduced as follows:

66 In that regard, in the first place, it must be recalled that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (see judgments of 14 January 2015, Melt Water v OHIM (MELT WATER Original), T‑69/14, not published, EU:T:2015:8, paragraph 37 and the case-law cited, and of 7 October 2015, Shape of a smiley with heart-shaped eyes, T‑656/13, not published, EU:T:2015:758, paragraph 43 and the case-law cited).

67 Having regard to those two principles, EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not (see judgment of 7 October 2015, Shape of a smiley with heart-shaped eyes, T‑656/13, not published, EU:T:2015:758, paragraph 44 and the case-law cited).

68 Nevertheless, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as an EU trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see judgment of 7 October 2015, Shape of a smiley with heart-shaped eyes, T‑656/13, not published, EU:T:2015:758, paragraph 45 and the case-law cited).

69 Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as an EU trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 7 October 2015, Shape of a smiley with heart-shaped eyes, T‑656/13, not published, EU:T:2015:758, paragraph 46 and the case-law cited).

70 It also follows from the case-law of the Court of Justice that the considerations set out in paragraphs 66 to 69 above apply even if the sign in respect of which registration is sought as an EU trade mark is composed in a manner identical to that of a mark in respect of which EUIPO has already approved registration as an EU trade mark and which relates to goods or services identical or similar to those in respect of which registration of the sign in question is sought (see judgment of 7 October 2015, Shape of a smiley with heart-shaped eyes, T‑656/13, not published, EU:T:2015:758, paragraph 47 and the case-law cited).

71 Furthermore, it must be pointed out that, in accordance with settled case-law, decisions concerning registration of a sign as an EU 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. Therefore, whether a sign may be registered as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice of those boards of appeal (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; 9 October 2002, Glaverbel v OHIM (Glass-sheet surface), T‑36/01, EU:T:2002:245, paragraph 35; and of 12 June 2007, Sherwin-Williams v OHIM (TWIST & POUR), T‑190/05, EU:T:2007:171, paragraph 38).

72 In the present case, it is apparent from the assessment made in paragraphs 27 to 42 and paragraphs 59 and 60 above that the Board of Appeal correctly held, on the basis of a thorough examination and taking into account the perception of the relevant public, that the applicant’s application for an EU trade mark was caught by the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation No 207/2009. It follows that, in accordance with the case-law referred to in paragraphs 66 to 71 above, that assessment cannot be called into question on the sole ground that it does not follow EUIPO’s decision-making practice. It must be noted, in particular, that EUIPO’s earlier decisions cannot give rise to legitimate expectations (see, to that effect, order of 11 September 2014, Think Schuhwerk v OHIM, C‑521/13 P, EU:C:2014:2222, paragraphs 57 and 58, and judgment of 7 October 2015, Shape of a smiley with heart-shaped eyes, T‑656/13, not published, EU:T:2015:758, paragraph 48).

73 Furthermore, the earlier decisions relied on by the applicant, which concern it or similar marks, were adopted by EUIPO examiners. It suffices to observe that neither the Board of Appeal nor the Court can be bound by the decisions adopted by them (see, to that effect, judgment of 27 March 2014, Oracle America v OHIM — Aava Mobile (AAVA MOBILE), T‑554/12, not published, EU:T:2014:158, paragraph 65). In particular, it would be contrary to the Board of Appeal’s purpose, as defined in recital 13 and in Articles 58 to 64 of Regulation No 207/2009, for its jurisdiction to be restricted by the requirement to respect the decisions of the first-instance adjudicating bodies of EUIPO.

74 In the second place, it also follows that the Board of Appeal cannot be criticised for not having set out in the contested decision all the possible differences between the case in question and all the other cases that gave rise to the decisions to which the applicant refers.

75 In so far as the applicant alleges that the Board of Appeal failed to state adequate reasons, it must be recalled that Article 75(1) of Regulation No 207/2009 provides that the decisions of EUIPO must state the reasons on which they are based. According to the case-law, that obligation has the same scope as that laid down by the second paragraph of Article 296 TFEU and its purpose is, first, to allow interested parties to know the justification for the measure so as to enable them to protect their rights and, secondly, to enable the Court to review the legality of the decision (see judgments of 6 September 2012 in Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86 and the case-law cited, and of 9 July 2008, Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, EU:T:2008:268, paragraph 43 and the case-law cited).

76 In that regard, it should be noted that the Boards of Appeal are not required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit provided that it enables the persons concerned to ascertain the reasons for which the Board of Appeal adopted the decision and the competent court to exercise its power of review (judgment of 16 September 2009, Alber v OHIM (Hand grip), T‑391/07, not published, EU:T:2009:336, paragraph 74; see also, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraph 65).

77 It must furthermore be observed that the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision. It follows that the fact that the Board of Appeal did not reproduce all of the arguments of one party, or did not reply to each of those arguments, cannot by itself, lead to a finding that the Board of Appeal refused to take them into account (judgment of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, EU:T:2010:505, paragraph 46).

78 In the present case, it must be held that Board of Appeal stated that it was not bound by the earlier decisions taken by EUIPO and that, in any event, each case must be assessed on the basis of its own merits. Furthermore, there is nothing in the contested decision that prevents it from being understood that the Board of Appeal’s reasoning was based on the fact, set out in particular in paragraph 72 above, that registration of the mark applied for was caught by two absolute grounds for refusal. That line of reasoning shows, as required by the case-law referred to in paragraph 75 above, the Board of Appeal’s reasoning as regards the earlier registrations relied on by the applicant, which is based on the applicable case-law on the matter (see, to that effect, judgment of 6 November 2014, Representation of a wavy line, T‑53/13, EU:T:2014:932, paragraphs 32 and 33).

79 In any event, and having regard to the finding that the mark applied for is caught by two absolute grounds for refusal, the infringement alleged by the applicant could not have had a decisive effect on the contested decision and cannot result in its annulment.

80 In the third place, contrary to the argument advanced by the applicant, in order not to follow an earlier decision, the Board of Appeal of EUIPO is not required to show that that decision was illegal. It follows from the case-law cited in paragraph 68 above that the person who applies for registration of a sign as a mark cannot rely, to his advantage and in order to secure an identical decision, on a ‘possibly unlawful act’ committed in his or someone else’s favour.

81 In the fourth place, while the Board of Appeal did not specify, in the contested decision, all the possible differences between the case in question and the cases that led to the decisions at first instance by EUIPO to which the applicant refers, it did refer to its own decision-making practice upheld by the Court in the judgment of 5 February 2015, SMARTER SCHEDULING (T‑499/13, not published, EU:T:2015:74). It is clear inter alia from paragraphs 21, 33 and 37 of that judgment that both the Board of Appeal and the Court held that the sign in question was descriptive of the goods for which registration had been sought and was therefore devoid of any distinctive character.

82 Contrary to the submission made by the applicant, the fact that that mark had been sought for various business management systems in Class 9 within the meaning of the Nice Agreement, whilst, in the present case, the word element ‘smarter’ is attached to the old-fashioned and low-technology tradition of travel does not reduce at all the relevance of the reference made by the Board of Appeal to the case giving rise to the SMARTER SCHEDULING judgment. The important aspect is that in both cases the marks that included the word element ‘smarter’ were of such a nature as to inform the public concerned of the qualities or kinds of the goods or services in question.

83 Likewise, the applicant cannot successfully rely on the fact that the mark applied for, SMARTER SCHEDULING, was a word mark whilst the mark applied for in the present case was figurative. It suffices to recall that it has already been held, in paragraph 39 above, that the figurative element of the mark applied for can, at most, merely underline and reinforce the idea of travel conveyed by its word element. The figurative element is therefore simply a decorative element that is not capable of extending the descriptive message conveyed by the mark applied for. Thus, the applicant has not shown the lack of any relevance of the reference by the Board of Appeal to the case leading to the SMARTER SCHEDULING judgment.

84 In the fifth place, as regards the applicant’s argument that the Board of Appeal did not sufficiently take into account the registration of the earlier and simpler form of the figurative element of the mark applied for, creating a presumption that that element in its current form was also registrable, it suffices to recall that the present application for registration does not only concern the figurative element in question, but the sign as a whole, which also includes the word element, as represented in paragraph 2 above.

85 In any event, it is not at all inconceivable that a figurative element has, in itself, a minimum degree of distinctive character, whilst a more complex sign, within which that element is integrated, is, in the light of the overall impression that it creates, devoid of distinctive character. In the present case, it must be noted that it has already been held that the Board of Appeal had correctly found that the verbal element of the sign in question in this case was dominant, whereas its figurative element was of secondary importance within it (see paragraphs 30 to 41 above), and that, considered as a whole, the mark applied for was caught by two absolute grounds for refusal (paragraphs 27 to 42, 59 and 60 above).

86 In the sixth place, the applicant cannot usefully rely on Article 15(1)(a) of Regulation No 207/2009. While it is true that that provision enables the proprietor of an EU mark to use that mark in a different form but without altering its distinctive character in the form in which it was registered, the registration of the updated mark is not however guaranteed. Registration depends on specific criteria, which apply in the factual circumstances of each case, intended to ascertain whether the sign at issue is caught by a ground for refusal, pursuant to Article 7 of that regulation (see paragraph 70 above).

87 For the same reason, the applicant’s argument that the existence of registrations of older versions of the mark applied for creates a strong presumption that the mark is registrable is unfounded.

The argument that the applicant’s appeal should not have been decided by a single member of the Board of Appeal

89 With reference to Decision 2014-3 of the Presidium of the Boards of Appeal of EUIPO of 26 May 2014 on the devolution to a single member of cases on appeal against decisions of examiners taken according to Article 7 of Regulation No 207/2009, the applicant states that, in the light of the issues it raises, the present case should not have been decided by a single member of the Board of Appeal, but rather by a three-member panel.

90 It must be held however that, in the first place, that argument, raised for completeness following the conclusion of the application that commenced the proceedings, has in no way been presented by the applicant as a ground in support of its application for annulment of the contested decision. In particular, the applicant has not submitted that it is owing to that fact that the contested decision must be held to be unlawful. Whilst it should be acknowledged that the statement of pleas in the application need not conform with the terminology and layout of the Rules of Procedure and may be expressed in terms of the substance of those pleas rather than of their legal classification, the application must nonetheless set out those pleas with sufficient clarity (order of 20 January 2012, Groupe Partouche v Commission, T‑315/10, not published, EU:T:2012:21, paragraph 20). In those circumstances, the lack of clarity as to the nature of that argument did not allow EUIPO to prepare its defence, which is corroborated, in particular, by the absence, in EUIPO’s written submissions, of a reply to that argument. Therefore, even if the applicant intended to raise that argument as a plea in its application for annulment, it must be held that the requirements for clarity and precision flowing from Article 76(d) of the Rules of Procedure are clearly infringed.

91 In the second place, and in any event, the attribution of this case to a single member does not infringe Decision 2014-3 in any way.

‘Decisions on appeal against decisions of the examiners taken according to Article 7 [of Regulation No 207/2009] shall, in principle, be taken by a single member.

Where the single member considers that the conditions set out in Article 135(5) [of Regulation No 207/2009] are not met or where the single member considers that the contested decision taken by the examiner has to be annulled in part or in its entirety, she or he shall submit a draft decision for deliberation of the Board in composition of three members.’

‘To determine which specific cases fall under the authority of a single member, account should be taken of the lack of difficulty of the legal or factual matters raised, the limited importance of the individual case or the absence of other specific circumstances …’

94 The applicant, challenged on this matter by EUIPO, merely submits that ‘the points raised in this case — in particular the fact the device element itself is registered, and the applied for mark is a mere modernisation of an earlier registration — are not common and not clearly the type of case to be decided by a Single Member’.

95 First of all, having regard to the foregoing considerations, and in particular in application of well-established case-law, in must be held that the present case does not raise any factual or legal difficulty. Next, the applicant does not in any way show that the present case is important from the point of view of the development of the law of the European Union, or even from the point of view of its financial interests. Lastly, the applicant does not advance any matter that could lead to the conclusion that there are particular circumstances which justify the attribution of this case to a Board of Appeal composed of three members.

97 It follows from all the foregoing that the application must be dismissed in its entirety.

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Smarter Travel Media v EUIPO (SMARTER TRAVEL) (Judgment) [2016] EUECJ T-290/15 (09 November 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T29015.html Cite as: [2016] EUECJ T-290/15, EU:T:2016:651, ECLI:EU:T:2016:651

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