Wenger v EUIPO - Swissgear (SWISSGEAR) (Intellectual, industrial and commercial property - Trade marks : Judgment) [2018] EUECJ T-869/16 (23 January 2018)

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(EU trade mark — Invalidity proceedings — EU word mark SWISSGEAR — Absolute grounds for refusal — No distinctive character — Descriptiveness — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009 (now Article 7(1)(b) and (c) of Regulation (EU) 2017/1001) — Article 52(1)(a) and Article 76 of Regulation No 207/2009 (now Article 59(1)(a) and Article 95 of Regulation 2017/1001))

Wenger SA, established in Delémont (Switzerland), represented by K. Ikas and A. Sulovsky, lawyers,

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Swissgear Sàrl, established in Baar (Switzerland), represented by J. Hacke, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 20 September 2016 (Case R 2098/2015-5), relating to invalidity proceedings between Swissgear and Wenger,

composed of I. Pelikánová, President, P. Nihoul and J. Svenningsen (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 7 December 2016,

having regard to the response of EUIPO lodged at the Court Registry on 1 February 2017,

having regard to the response of the intervener lodged at the Court Registry on 21 February 2017,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 20 August 2008, the applicant, Wenger SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Classes 9, 12, 14, 16, 18, 20, 22 and 25 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 9: ‘Computer carrying cases; camera cases; electronic travel accessories, namely adapters, converters, transformers and battery chargers for electronic devices’;

– Class 12: ‘Vehicles; apparatus for locomotion by land, air or water; bicycles and tricycles, including their spare parts and their structural parts, included in this class; baby buggies; rain covers for baby buggies; mosquito nets for baby buggies; sunscreens for baby buggies; buggy boards; prams; child safety seats for vehicles; sun-blinds for automobiles; stirrups for children, for automobiles; bicycle seats for children; covers for vehicles (fitted); pram covers (fitted); bump belts for mothers-to-be; bump belts for children; tightening cushions for car seats for children; car seats booster cushions for children; seat covers for vehicles’;

– Class 18: ‘All-purpose dry bags; luggage; backpacks; daypacks; duffel bags; utility bags; shoulder bags; casual bags; briefcases; non-motorized wheeled packs; cosmetic cases sold empty and toiletry cases sold empty; travel bags; small personal leather goods, namely, wallets, and shaving bags sold empty; umbrellas and name and calling card cases; cosmetic cases sold empty; toiletry cases sold empty; luggage tags; waist packs; bags worn on the body; business cases; travel bags; all-purpose personal care bags; small personal leather goods, namely, billfolds, credit card cases, neck and necklace wallets; leather airline ticket holders’;

– Class 20: ‘Sleeping and nap mats; sleeping bags; air mattresses for use when camping, inflatable mattresses for use when camping; folding furnitures, cots and neckpillows; non-metallic buckles for safety belts for children’;

– Class 22: ‘Tents; screen houses in the nature of a tent; gazebo-like shelters in the nature of a tent’;

– Class 25: ‘Clothing for men, women and children, namely, footwear, shoes, athletic footwear, slippers, sandals, boots, jackets, hats, sweat pants, sweat shirts, sweaters, shirts, t-shirts, polo shirts, dress shirts, blouses, dresses, skirts, scarves, socks, hosiery, pants, shorts, undergarments, coats, parkas, wind resistant jackets, rainwear, headwear’.

4 On 16 June 2009, the word sign SWISSGEAR was registered as an EU trade mark in respect of the goods referred to in paragraph 3 above (‘the contested mark’).

5 On 17 June 2014, the intervener, Swissgear Sàrl, filed an application for a declaration that the contested mark was invalid pursuant to Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) and (c) of that regulation (now Article 7(1)(b) and (c) of Regulation 2017/1001), in respect of all the goods covered by that mark.

6 On 19 August 2015, the Cancellation Division rejected the application for a declaration of invalidity except as regards the goods in question in Class 14, namely ‘watches of Swiss origin’.

7 On 19 October 2015, the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision, seeking the annulment of that decision in so far as it had rejected the application for a declaration of invalidity in respect of all the goods in question except for those in Class 14. The applicant itself brought an appeal against that decision in so far as it had upheld the application for a declaration of invalidity in respect of the goods in question in Class 14.

8 By decision of 20 September 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the intervener’s appeal and dismissed that of the applicant, finding that the registration of the contested mark was invalid in the light of the grounds set out in Article 7(1)(b) and (c) of Regulation No 207/2009.

9 In the contested decision, the Board of Appeal found that the relevant public was the general public, which consisted of reasonably well-informed and reasonably observant and circumspect consumers in respect of all of the goods in question except for the ‘vehicles’ and ‘apparatus for locomotion by land, air or water’ in Class 12, in respect of which consumers would display a higher level of attention. Furthermore, the Board of Appeal’s assessment was limited to the public in the Member States in which English is an official language.

10 First, in the context of its examination in respect of Article 7(1)(c) of Regulation No 207/2009, the Board of Appeal found that the word ‘gear’ was descriptive with regard to all of the goods in question. The Board of Appeal took the view that among other meanings, it referred, first, to all kinds of personal belongings, equipment and accessories, which concerned all the goods at issue with the exception of the ‘vehicles’, ‘apparatus for locomotion by land, air or water’ and ‘bicycles and tricycles’ in Class 12, and, secondly, to ‘parts of the engine’ and ‘cogwheels’, which concerned those ‘vehicles’, ‘apparatus for locomotion by land, air or water’ and ‘bicycles and tricycles’. Consequently, it found that the combination of the words ‘gear’ and ‘swiss’ would be understood by the relevant public as ‘things/accessories from/made in Switzerland’.

11 As regards the word ‘swiss’, first of all, the Board of Appeal found that it constituted, simultaneously, an indication of geographical origin, an indication of quality in the light of the reputation of goods or services which come from Switzerland, and an evocation of that country’s nature and tourist attractions and of the tourism-related activities which take place there. It therefore found that that term conveyed the idea of the particular quality or the particular purpose of the goods in question when it was used in connection with the marketing of those goods.

12 Next, the Board of Appeal found that there was a link between the geographical indication and all the goods in question. It took the view that the contested mark described:

– the goods in question in Classes 9, 16 and 18, namely personal belongings, accessories and various types of cases, especially useful in travelling, as high quality goods, ‘gear’, of Swiss origin;

– the ‘vehicles’, ‘apparatus for locomotion by land, air or water’ and ‘bicycles and tricycles’ in Class 12 purely as containing high quality engine parts and cogwheels of Swiss origin;

– the other goods in question in Class 12, namely accessories for means of transportation, as being high quality accessories from Switzerland;

– the ‘watches of Swiss origin’ in Class 14 as watches with gear mechanisms of Swiss origin;

– the goods in question in Classes 20 and 22, namely accessories necessary for camping, as high quality, robust accessories designed for outdoor activities, such as tourism in the Swiss Alps;

– the goods in question in Class 25 as high quality items of clothing of Swiss origin.

13 Lastly, the Board of Appeal took the view that, since there was no indication to suggest that the goods in question had features which would lead the relevant public not to associate the term ‘swiss’ with the geographical origin of those goods, it had to be found that, at the time when the application for registration of the sign SWISSGEAR as an EU trade mark was filed, that sign was perceived by that public as a designation of geographical origin for the goods in question. It found that, it would, in any event, at least be reasonable to take the view that the sign SWISSGEAR could, in the mind of the relevant public, designate not only the geographical origin, but also, by reference to Switzerland, an indication of quality and exclusivity.

14 Secondly, in the context of its examination in respect of Article 7(1)(b) of Regulation No 207/2009, the Board of Appeal found, on the basis of its findings referred to in paragraphs 10 to 13 above, that the registration of the contested mark also came within the scope of the ground for refusal set out in that provision. It took the view that the lack of distinctive character of the sign SWISSGEAR arose out of its semantic content, the information which that sign conveyed regarding the geographical characteristic of the goods in question and the overlap between the respective scopes of Article 7(1)(b) and (c) of Regulation No 207/2009.

17 Following the communication to the parties, on 5 December 2017, of the date of delivery of the present judgment, the applicant and the intervener, by joint letter dated 22 December 2017, requested that the Court stay the proceedings on the ground that they were conducting negotiations with the aim of settling the case amicably.

18 By decision of 15 January 2018, after hearing EUIPO, the President of the First Chamber rejected that request for a stay of proceedings, which had been submitted after the communication of the date of delivery of the present judgment.

19 EUIPO disputes the admissibility of Annexes 9 and 10 to the application initiating proceedings, on the ground that the documents of which those annexes consist were not produced in the course of the administrative proceedings. The intervener disputes the admissibility of Annex 8 to that application on the same ground.

20 Annexes 8 and 9 to the application are the results of two internet image searches carried out on the basis of the terms ‘gear’ and ‘swissgear’ respectively.

21 In that regard, it must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001). It is not therefore the Court’s function to review the facts in the light of evidence produced for the first time before it (see, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 14 and the case-law cited).

22 Consequently, Annex 9 to the application, which relates to the results of an internet image search carried out on the basis of the term ‘swissgear’, cannot be taken into consideration in the context of the present action and must therefore be excluded, since those results were not produced in the course of the administrative proceedings before EUIPO.

23 By contrast, Annex 8, which relates to the results of an internet image search carried out on the basis of the term ‘gear’ should not be excluded, since the results of such a search were already produced in the course of the proceedings before EUIPO, as is apparent from paragraph 9, fourth indent of the contested decision.

24 Annex 10 to the application, which consists of five extracts from EUIPO’s register of trade marks which relate to trade marks containing the term ‘swiss’, should likewise not be excluded.

25 In that regard, it must be borne in mind that facts which EUIPO had to take into account of its own motion may be put forward for the first time before the Court (see, to that effect, judgment of 29 September 2010, Interflon v OHIM — Illinois Tool Works (FOODLUBE), T‑200/08, not published, EU:T:2010:414, paragraph 11). 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 especial care whether it should decide in the same way or not (see judgment of 12 May 2016, GRE v EUIPO (Mark1), T‑844/14, not published, EU:T:2016:289, paragraph 43 and the case-law cited).

26 According to that case-law, which is applicable by analogy in examining an application for a declaration of invalidity, it is for EUIPO to examine of its own motion whether it has adopted decisions concerning similar applications for registration, with the result that a party is entitled to submit for the first time before the Court extracts from EUIPO’s register of trade marks which, according to that party, relate to similar marks. Furthermore, such extracts are not evidence in the strict sense, but relate to EUIPO’s decision-making practice, inasmuch as they partially explain how that practice is applied. A party has the right to refer to EUIPO’s practice in support of a plea alleging that the Board of Appeal infringed a provision of Regulation No 207/2009 (see, to that effect, judgment of 2 July 2015, BH Stores v OHIM — Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 26).

27 Having regard to the foregoing, only Annex 9 to the application must be excluded.

28 In support of its action, the applicant puts forward, in essence, two pleas in law, alleging infringement of Article 7(1)(c) and Article 7(1)(b) of Regulation No 207/2009 respectively.

29 Furthermore, in the last part of its application, the applicant submits that EUIPO has registered a number of trade marks containing the term ‘swiss’, although it states that EUIPO is not under any legal duty owing to those registrations. Although it adds that the principle of sound administration means that EUIPO must consider its earlier decisions relating to similar applications, the applicant does not make any specific complaint in this respect as regards the contested decision. Consequently, that part of the application must be regarded not as the statement of a specific plea, but as being part of the line of argument in support of the two pleas referred to in the preceding paragraph of the present judgment.

30 It must be pointed out at the outset that, in the context of the present action, there has been no challenge to either the Board of Appeal’s assessments that the relevant public is the general public in the European Union, which consists of reasonably well-informed and reasonably observant and circumspect consumers in respect of all of the goods in question except for the ‘vehicles’ and ‘apparatus for locomotion by land, air or water’ in Class 12, in respect of which consumers would display a higher level of attention, or to its decision to take into consideration the public in the Member States in which English is an official language in examining the applicability, in the present case, of the absolute grounds for refusal laid down in Article 7(1)(b) and (c) of Regulation No 207/2009.

31 It is therefore in the light of those considerations, which must be accepted, that the merits of the pleas put forward by the applicant must be assessed.

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

32 By its first plea, the applicant submits that the Board of Appeal erred in law in finding that the registration of the contested mark came within the scope of the absolute ground for refusal laid down in Article 7(1)(c) of Regulation No 207/2009.

34 It must be pointed out, to begin with, that the applicant admits, first, that the word ‘swiss’ is a geographical indication and, secondly, that the term ‘gear’ is descriptive of gears and cogwheels, without disputing the findings, made both by the Board of Appeal and by the Cancellation Division, first, that gears and cogwheels are part of the mechanism which controls the movement of the hands in watches and, secondly, that Switzerland has a reputation for watch manufacturing.

35 It must therefore be held that the present action, even though it formally seeks the annulment of the contested decision in its entirety, and thus also in so far as that decision did not uphold the applicant’s cross-appeal before the Board of Appeal, which sought the annulment of the Cancellation Division’s decision declaring the registration of the mark invalid in respect of ‘watches of Swiss origin’ in Class 14, does not concern the contested decision in so far as that decision implicitly confirmed the Cancellation Division’s decision in that regard.

36 Consequently, in the remainder of the examination of the present plea, the lawfulness of the contested decision will be examined only in so far as that decision relates to the descriptiveness of the contested mark with regard to the goods in question in Classes 9, 12, 16, 18, 20, 22 and 25.

37 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, inter alia, the kind, quality, intended purpose, geographical origin or other characteristics of the goods must not be registered. According to paragraph 2 of that article, that is so notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

38 In the present case, the contested mark consists of two English terms, namely ‘swiss’ and ‘gear’, both of which are, according to the contested decision, descriptive and the combination of which is itself regarded as descriptive. The three findings thus made by the Board of Appeal must be examined in succession.

39 The applicant admits that the word ‘swiss’ is a well-known geographical indication of origin. It also admits that that word may be regarded as an indicator of a particularly good quality, but disputes, by contrast, the Board of Appeal’s opinion that that descriptiveness of quality is general and applies to all types of goods. It submits that Switzerland has a particular reputation only for certain goods, such as knives, pharmaceuticals, watches, cheese or chocolate, but not for others, such as those in the car, electronics or fashion sectors and those intended for open-air activities or travelling. It takes the view that the Board of Appeal did not establish with regard to each category of goods in question that the word ‘swiss’ has a positive connotation or that there is a particular connection with Switzerland. Furthermore, the applicant submits it cannot be held that the contested mark, which consists of two elements, only one of which has a geographical connotation, is a merely descriptive indication of geographical origin.

40 It must be pointed out, in the first place, that all of the signs and indications expressly referred to in Article 7(1)(c) of Regulation No 207/2009, including indications of geographical origin, must be regarded as characteristics of goods or services, that is to say properties, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration of a sign is sought. A sign must therefore be refused registration on the basis of that provision if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of the characteristics of the goods or services concerned (see, to that effect, judgment of 10 July 2014, BSH v OHIM, C‑126/13 P, not published, EU:C:2014:2065, paragraphs 20 to 22 and the case-law cited).

41 In the second place, geographical names come within the scope of Article 7(1)(c) of Regulation No 207/2009 not only where they designate specific geographical locations which are already famous or are known for the category of goods concerned and which are therefore in that regard associated with those goods in the mind of the relevant class of persons, but also where they are liable to be used by undertakings and must remain available to such undertakings as indications of geographical origin. That is the case, as regards categories of goods for which the geographical area concerned is not well known, if it is reasonable to take the view that those goods may in future be associated with the geographical name in question in the minds of the relevant persons, with the result that that name is capable of indicating to the relevant persons the geographical origin of the designated goods (see, to that effect, judgment of 15 October 2003, Nordmilch v OHIM (OLDENBURGER), T‑295/01, EU:T:2003:267, paragraphs 31, 44 and 45).

42 Consequently, although the ability of a name constituting an indication of geographical origin also to convey information relating to the quality of the goods or services designated is liable to reinforce the descriptiveness of the sign of which that indication is an element (see, to that effect, judgment of 7 June 2005, Münchener Rückversicherungs-Gesellschaft v OHIM (MunichFinancialServices), T‑316/03, EU:T:2005:201, paragraph 35), it is not, however, necessary, for such a name to come within the scope of Article 7(1)(c) of Regulation No 207/2009, for it to be capable of indicating the quality of the categories of goods or services concerned.

43 In the present case, it is apparent at least from paragraphs 28 and 34 to 41 of the contested decision that the Board of Appeal considered it to be reasonable that, at the time when registration of the contested mark was sought, the relevant public perceived the element ‘swiss’ in that mark as an indication relating to the origin of the goods in question. In that regard, it is clear from the contested decision that the goods in question do not have any characteristics which are capable of precluding such an association from being made, inter alia because the geographical name concerned would be unknown to the relevant class of persons as the designation of a geographical location or because, on account of the type of place designated, such persons would be unlikely to believe that the goods in question come from there.

44 Consequently, irrespective of whether the term ‘swiss’ generally conveys a positive connotation associated with the reputation for quality of goods that come from Switzerland, the Board of Appeal’s assessment that the element of the contested mark consisting of that word comes within the scope of Article 7(1)(c) of Regulation No 207/2009 is, in any event, justified for legal purposes since that assessment is based on the ability of that word, in the contested mark and having regard to the goods in question, to indicate the geographical origin generally with regard to all of the goods in question and, in particular, with regard to the various categories of goods in question in Classes 9, 12, 14, 16, 18 and 25.

45 Furthermore, regarding the goods in question in Classes 20 and 22, which it categorised as accessories necessary for camping, the Board of Appeal found, in addition, that the word ‘swiss’ was associated with notions of quality and robustness connected with the purpose of those goods, that of engaging in outdoor tourist activities in that country’s famous mountains, and that that word could therefore create positive feelings on the part of the relevant public in connection with the marketing of the goods concerned.

46 Although the applicant maintains that countries other than Switzerland are also renowned for their nature and maintains that those various countries are not, for that reason alone, known for the quality of the goods intended for the abovementioned activities which come from those countries, it does not specifically dispute that the reference to Switzerland with regard to those types of goods could create a positive feeling on the part of the relevant public. In any event, it is necessary to uphold the finding that the evocation of Switzerland, which, associated with equipment intended for outdoor tourist activities, implicitly refers to the mountains which, in the eyes of the general public, characterise that country’s scenery, is capable of conveying the idea that that equipment may be used in an imposing environment and is designed to withstand difficult conditions, and is therefore capable of creating positive feelings. It is clear from the case-law that Article 7(1)(c) of Regulation No 207/2009 also covers indications which may serve to designate a geographical origin that have the effect of associating goods with a place that may give rise to positive feelings (see, to that effect, judgment of 15 October 2003, OLDENBURGER, T‑295/01, EU:T:2003:267, paragraph 30).

47 As regards, lastly, the argument that the contested mark, on account of the presence of the element ‘gear’, is not a merely descriptive indication of geographical origin, it must be pointed out that that argument is not part of the assessment as to whether the element ‘swiss’ is descriptive, but of the examination as to whether the combination of the two elements of which the contested mark consists is descriptive or not.

48 It must therefore be held that the Board of Appeal was right in finding, in the contested decision, that the element ‘swiss’ in the contested mark is descriptive with regard to all the goods in question.

49 As regards the issue of whether the word ‘gear’ is descriptive, the applicant submits, in essence, that, although that word has various meanings, the relevant public uses it to designate cogwheels or gears and associates it with goods of that kind, with the result that it is not descriptive of the goods in question which do not have any connection with cogwheels or gears. The applicant takes the view that the other meanings are in any event too vague in relation to the other goods in question for the element ‘gear’ to be regarded as clearly descriptive with regard to those goods.

50 In that regard, it must be borne in mind that a word sign must be refused registration under Article 7(1)(c) of Regulation No 207/2009 if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 28 June 2016, salesforce.com v EUIPO (SOCIAL.COM), T‑134/15, not published, EU:T:2016:366, paragraph 15 and the case-law cited).

51 Furthermore, the signs or indications referred to in Article 7(1)(c) of Regulation No 207/2009 are those which may serve in normal use from the point of view of the consumer to designate, either directly or by reference to one of its essential characteristics, the goods or services in respect of which registration is sought. Accordingly, whether a sign is descriptive can be assessed only by reference to the way in which it is understood by the relevant public and to the goods or services concerned (see judgment of 7 June 2005, MunichFinancialServices, T‑316/03, EU:T:2005:201, paragraph 26 and the case-law cited).

52 That case-law is applicable by analogy as regards the assessment as to whether an element of a sign is descriptive.

53 In the present case, according to the Cancellation Division’s findings as reproduced in the contested decision, the word ‘gear’ has a number of meanings, namely those of a toothed wheel that engages with another toothed wheel or with a rack in order to change the speed or direction of transmitted motion, personal equipment and accoutrements, belongings, equipment and supplies for a particular operation such as a sport, and up-to-date clothes and accessories, especially those bought by young people. The applicant relies on a definition which corresponds, in essence, to that mentioned above, but submits that only the first meaning should be taken into account, because the relevant public immediately, that is to say without further thought, associates the word ‘gear’ only with cogwheels or gears.

54 However, it must be stated at the outset that such a contention is based on an abstract approach, without regard to the goods in question. According to the case-law referred to in paragraph 51 above, whether a sign, or an element of a sign, is descriptive must be assessed inter alia by reference to the goods in respect of which registration of that sign as an EU trade mark is sought. In other words, for a sign or an element of a sign to be regarded as descriptive, it is necessary, but also sufficient, for one of the possible meanings of that sign or element to be capable of designating, in the eyes of the relevant public, the goods concerned or at least one of the characteristics of those goods.

55 That is indeed the case here. First, it does not follow from an image search carried out on the basis of the word ‘gear’ with the help of a search engine that the use of that term must be regarded as being confined, out of all the meanings of that word which are identified by ordinary dictionaries, to the meaning or meanings which correspond to the images gathered. Furthermore, it has not been claimed that the meanings of the word ‘gear’ other than that relating to cogwheels, which the applicant regards as the only relevant meaning, belong to specialist sectors, which might lead to the conclusion that they are generally unknown to the general public consisting of reasonably well-informed and reasonably circumspect consumers which constitutes the relevant public in the present case.

56 Secondly, as is stated in the contested decision, all the categories of goods in question may be linked directly and specifically with one of the possible meanings of the word ‘gear’, namely that of ‘equipment’ as regards the goods in question in Classes 9, 16 and 18, which correspond to personal belongings, accessories and various types of cases, especially useful in travelling, that of ‘gear’ as an ‘engine part’ or ‘cogwheel’ as regards the ‘vehicles’, ‘apparatus for locomotion by land, air or water’ and the ‘bicycles and tricycles’ in Class 12, that of ‘accessory’ as regards the other goods in question in Class 12, which correspond to travel accessories, and the goods in question in Classes 20 and 22, which correspond to accessories necessary for camping, and lastly that of ‘clothing’ as regards the goods at issue in Class 25. In the present case, each of the meanings set out by the Board of Appeal is capable of being perceived by the relevant public without an in-depth analysis or any reasoning processes being necessary.

57 In that regard, the applicant’s claim that the meaning of the word ‘gear’ is too vague is irrelevant.

58 First, the fact that a word has a number of meanings does not, for that reason, make it vague. The uncertainty which may result from the use of such a word outside of any context is lifted if, as is the consequence of correctly applying Article 7(1)(c) of Regulation No 207/2009, that word is examined by reference to a specific product or service, which makes it possible to assess whether or not one of its meanings must be regarded as descriptive of that product or service or of a characteristic thereof, irrespective of whether or not that meaning is, in absolute terms, the most common. The case-law referred to in paragraphs 50 and 51 above requires all the possible meanings that are generally known to the relevant public to be taken into account, and not a possible main meaning.

59 Secondly, the fact that the sole meaning of a word is a broad one or that some of its meanings are broad does not have the effect of eliminating its descriptiveness, but, on the contrary, of increasing it. Consequently, the fact that, in the present case, the word ‘gear’ serves, in the mind of the relevant public, to designate, inter alia, belongings, equipment or accessories makes it descriptive, as far as the perception of that public is concerned, of a wide range of belongings, equipment or accessories. That is, moreover, what the applicant implicitly admits when it acknowledges that terms such as ‘swissthings’ or ‘swissstuff’ would be understood as descriptive by the English-speaking public.

60 It must therefore be held that the Board of Appeal was right in finding, in the contested decision, that the element ‘gear’ in the contested mark is descriptive with regard to all the goods in question.

61 In the alternative, the applicant submits that the combination of the terms ‘swiss’ and ‘gear’ is not descriptive. It takes the view that it is an unusual and original combination, in particular on account of its being written as one grammatically incorrect word, which creates an impression that means more than the mere sum of its constituent terms and which is perceived as a trade mark.

62 In that regard, it must be borne in mind that a trade mark consisting of a neologism or of a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services and is therefore covered by the absolute ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009 unless there is a perceptible difference between the neologism or word and the mere sum of its parts. That presupposes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is far enough removed from that conveyed by a simple combination of the meanings of its constituent elements that it is more than the sum of its parts (see, to that effect, judgment of 11 May 2017, Bammer v EUIPO — mydays (MÄNNERSPIELPLATZ), T‑372/16, not published, EU:T:2017:331, paragraph 19 and the case-law cited).

63 It must, however, be stated that, as is pointed out in the contested decision, the combination of the two descriptive terms of which the contested mark consists is not of an unusual nature which is capable of diverting the relevant public’s attention from those two descriptive terms.

64 The only factor invoked by the applicant in support of its claim to the contrary is the grammatically incorrect nature of that mark which stems exclusively from the fact that the adjective ‘swiss’ has been placed next to the noun ‘gear’ without the two words being separated by a space.

65 However, the fact that a neologism is composed in that way is not in itself capable of eliminating the descriptiveness of the elements of which the contested mark consists (see, to that effect, judgment of 12 June 2007, MacLean-Fogg v OHIM (LOKTHREAD), T‑339/05, not published, EU:T:2007:172, paragraph 54). That is so particularly because the two words of which the contested mark consists are readily capable of being discerned by the relevant public, which consists of English-speaking consumers (see, to that effect and by analogy, judgment of 12 July 2006, Rossi v OHIM — Marcorossi (MARCOROSSI), T‑97/05, not published, EU:T:2006:203, paragraph 24).

66 Furthermore, as the intervener points out, since the contested mark is a word mark, which is intended to be pronounced as well as read, the examination as to whether the combination of elements of which it consists is descriptive must be carried out both from a phonetic standpoint and from a visual standpoint (see, to that effect, judgment of 12 February 2004, Campina Melkunie, C‑265/00, EU:C:2004:87, paragraph 40). It must be stated that the characteristic put forward by the applicant is totally eliminated from a phonetic standpoint.

67 Furthermore, as regards the fact that the term ‘swissgear’ is not commonly used, it must be borne in mind that, for the ground for refusal of registration set out in Article 7(1)(c) of Regulation No 207/2009 to apply, it is not necessary that the signs and indications which are referred to in that provision, of which the mark at issue consists, actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those referred to in the application for registration, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A word sign must thus be refused registration under that provision if, as in the present case, at least one of its possible meanings designates a characteristic of the goods or services concerned (see, to that effect, judgment of 30 January 2015, Siemag Tecberg Group v OHIM (Winder Controls), T‑593/13, not published, EU:T:2015:58, paragraph 47 and the case-law cited).

68 Lastly, as regards the applicant’s reference to a number of EUIPO’s decisions which allowed signs including the word ‘swiss’ to be registered as EU trade marks, it must be observed that the legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (see order of 24 June 2015, Wm. Wrigley Jr. v OHIM (Representation of a sphere), T‑625/14, not published, EU:T:2015:444, paragraph 25 and the case-law cited).

69 It is true that, in the light of the principles of equal treatment and of sound administration, it has been held that 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 especial care whether it should decide in the same way or not (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 74).

70 That said, 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 in his favour or for the benefit of someone else (see judgment 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 45 and the case-law cited).

71 It must therefore be held that the Board of Appeal was right in finding, in the contested decision, that the contested mark is descriptive.

72 In the light of all of the foregoing considerations, the first plea must be rejected as unfounded.

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

73 By its second plea, the applicant submits that the Board of Appeal erroneously applied Article 7(1)(b) of Regulation No 207/2009. It maintains that, as the sign of which the contested mark consists is not a descriptive indication or a word which is part of everyday language, that mark has at least the minimum degree of distinctiveness that is, according to the case-law, sufficient for that provision to be inapplicable.

74 According to settled case-law, each of the absolute grounds for refusal to register a mark set out in Article 7(1)(b) to (d) of Regulation No 207/2009 is independent of the others and requires separate examination. It is nevertheless the case that there is a degree of overlap between the respective scopes of those grounds (see judgment of 8 May 2008, Eurohypo v OHIM, C‑304/06 P, EU:C:2008:261, paragraph 54 and the case-law cited).

75 The overlap between the absolute grounds for refusal means, in particular, that a word mark which is descriptive of the characteristics of goods or services may, on that account, be devoid of any distinctive character in relation to those goods or services, without prejudice to other reasons why it may be devoid of distinctive character (see order of 18 March 2010, CFCMCEE v OHIM, C‑282/09 P, EU:C:2010:153, paragraph 52 and the case-law cited).

76 In the present case, it has already been held that the Board of Appeal was right in finding, in the contested decision, that the mark applied for was descriptive (see paragraph 71 above). It was therefore also right in finding that, on account of that descriptiveness, the mark applied for did not enable the consumer to determine the origin of the goods and that it was therefore devoid of any distinctive character.

77 The second plea must therefore be rejected and consequently the action must be dismissed in its entirety.

78 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.

79 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and the intervener, in accordance with the forms of order sought by them.

2. Orders Wenger SA to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Swissgear Sàrl.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Wenger v EUIPO - Swissgear (SWISSGEAR) (Intellectual, industrial and commercial property - Trade marks : Judgment) [2018] EUECJ T-869/16 (23 January 2018) URL: http://www.bailii.org/eu/cases/EUECJ/2018/T86916.html Cite as: ECLI:EU:T:2018:23, EU:T:2018:23, [2018] EUECJ T-869/16

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