Forex Bank v EUIPO - Coino UK (FOREX) (EU trade mark - Judgment) [2020] EUECJ T-26/20 (02 December 2020)

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(EU trade mark – Invalidity proceedings – EU word mark FOREX – Declaration of partial invalidity – Absolute grounds for refusal – Descriptive character – Article 7(1)(c) of Regulation (EC) No 40/94 (now Article 7(1)(c) of Regulation (EU) 2017/1001))

Forex Bank AB, established in Stockholm (Sweden), represented by A. Jute, lawyer,

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 4 October 2019 (Case R 2460/2018‑2), relating to invalidity proceedings between Coino UK and Forex Bank,

composed of A. Marcoulli, President, S. Frimodt Nielsen and C. Iliopoulos (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 16 January 2020,

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 25 January 2006, the applicant, Forex Bank AB, 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), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), as amended, 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 54, p. 1)).

2 Registration as a mark was sought for the word sign FOREX, which is the mark in dispute in the present proceedings.

3 The goods and services in respect of which registration was sought are in Classes 6, 9, 16 and 36 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 6: ‘Security equipment in the form of apparatus and instruments for safe-keeping of money, valuable documents and other valuables’;

– Class 9: ‘Coded and uncoded magnetic cards, in the form of bank- and debit cards; apparatus for cashing money and information about transfer of funds (cash dispensers); computers, computer peripheral devices and registered software for transfer of funds and information about funds; security equipment in the form of alarm devices for transportation and safe-keeping of funds and valuables; apparatus for money exchange and currency exchange’;

– Class 16: ‘Printed matter, printed information material, printed publications, printed forms and valuable documents; uncoded debit cards of plastic and/or paper’;

– Class 36: ‘Factoring; leasing of real estate; real estate agencies; real estate management, real estate appraisals; numismatic appraisal; accident insurance underwriting; pawn brokerage’.

4 The trade mark application was published in Community Trade Marks Bulletin No 2006/48 of 27 November 2006 and the disputed mark was registered on 3 May 2010 under number 4871836.

6 On 17 November 2016, the other party to the proceedings before EUIPO, Coino UK Ltd, filed an application for a declaration that the disputed mark was invalid in respect of all the goods and services covered by that mark, relying on the absolute grounds for invalidity set out in Article 7(1)(b) to (d) of Regulation No 207/2009 (now Article 7(1)(b) to (d) of Regulation 2017/1001), read in conjunction with Article 52(1)(a) of that regulation (now Article 59(1)(a) of Regulation 2017/1001).

7 By decision of 31 October 2018, the Cancellation Division granted the application for a declaration of invalidity in respect of certain goods in Classes 9 and 16 (‘the goods at issue’) and declared the disputed mark to be partially invalid, on the basis of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(c) and Article 7(2) thereof, in respect of the following goods:

– Class 9: ‘Coded and uncoded magnetic cards, in the form of bank- and debit cards; apparatus for cashing money and information about transfer of funds (cash dispensers); computers, computer peripheral devices and registered software for transfer of funds and information about funds; apparatus for money exchange and currency exchange’;

– Class 16: ‘Printed forms; Printed matter, printed information material, printed publications’.

8 On 14 December 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the Cancellation Division’s decision, in so far as it had declared the disputed mark to be invalid in respect of the goods at issue.

9 By decision of 4 October 2019 (Case R 2460/2018‑2) (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it found, first, that the goods at issue targeted both professionals and the general public, the degree of attention of which was generally high in relation to the technical goods in Class 9. As regards the other goods at issue, the degree of attention of the professional public was higher than that of the general public, which was average. Taking into consideration the perception of the English-speaking part of the relevant public, the Board of Appeal found that the disputed mark was descriptive of the goods at issue for the purposes of Article 7(1)(c) and Article 7(2) of Regulation 2017/1001. In that regard, in the context of the assessment of the meaning of that mark, it stated, secondly, that the evidence submitted by Coino UK had established that the term ‘forex’ was known as the abbreviation of ‘foreign exchange market; foreign exchange’ by professionals such as traders, business people and economic experts and by part of the English-speaking general public. Thirdly, as regards the goods in Class 9, it stated that the sign ‘Forex’ indicated to consumers that those goods related to the cashing and transfer of currency and was thus descriptive of the kind and intended purpose of those goods. Fourthly, according to the Board of Appeal, as regards the goods in Class 16, the term ‘forex’ described the subject matter of ‘printed matter; printed information material, printed publications’, given that forex was a topic that had been the subject of various publications. Furthermore, the sign ‘Forex’ described the intended purpose of ‘printed forms’, as there could be forms to be sent which were especially made for currency-trading operations.

– annul the contested decision in so far as it declared the disputed mark to be invalid for certain of the goods in Classes 9 and 16;

– annul the Cancellation Division’s decision in so far as it declared that mark to be invalid for certain of the goods in those classes;

– order EUIPO to pay the costs, including those incurred before the Cancellation Division and the Board of Appeal.

12 EUIPO submits that Annexes A7 and A8, submitted by the applicant in support of the application, are inadmissible on the ground that they were submitted for the first time before the Court. Those annexes contain two studies relating to the perception of the term ‘forex’ in Finland and Denmark and seek to establish that that term was known by only 15% and 10%, respectively, of those questioned as having the meaning ‘foreign exchange’.

13 In that regard, it must be noted that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 72 of Regulation 2017/1001. It follows that the Court cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. Indeed, the legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (judgments of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraphs 24 and 25, and of 5 November 2019, APEDA v EUIPO – Burraq Travel & Tours General Tourism Office (SIR BASMATI RICE), T‑361/18, not published, EU:T:2019:777, paragraph 17).

14 It should be noted that the two studies submitted in Annexes A7 and A8 to the application were carried out after the contested decision had been given on 4 October 2019, that is to say, between 22 November and 1 December 2019, and do not appear in the administrative file of the proceedings before EUIPO. It follows that they must be rejected as inadmissible and may therefore not be taken into consideration for the purposes of the Court’s assessment of the validity of the contested decision (see, to that effect, judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraphs 26 and 27).

Admissibility of the application, in so far as it makes a general reference to the arguments submitted before EUIPO

15 The applicant, in paragraphs 2.1 and 3.1.2 of the application, makes a general reference to the arguments which it submitted before the Cancellation Division and before the Board of Appeal in the proceedings before EUIPO.

16 In that regard, it should be recalled that, in accordance with the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure of the General Court, the application must contain the pleas and arguments on which the application is based as well as a summary of those pleas. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (see judgment of 22 June 2017, Biogena Naturprodukte v EUIPO (ZUM wohl), T‑236/16, EU:T:2017:416, paragraph 11 and the case-law cited).

17 Furthermore, while the text of the application can be supported by references to extracts in documents annexed to it, it is not for the Court to seek and identify in the annexes the pleas and arguments on which it may consider the action to be based, the annexes having a purely evidential and instrumental function. It follows that an application, in so far as it refers to pleadings submitted to EUIPO, is inadmissible to the extent to which the general references in it cannot be linked to the pleas and arguments put forward in that application itself (see judgment of 22 June 2017, ZUM wohl, T‑236/16, EU:T:2017:416, paragraph 12 and the case-law cited). Likewise, an application that merely refers to arguments submitted before EUIPO, without even specifying whether those arguments were presented orally or in writing, is inadmissible in so far as the general references in it cannot be linked to the pleas and arguments put forward in that application itself.

18 In the present case, since, in the application, the applicant simply made a general reference to the facts and pleas relied on before EUIPO, without providing further details, it must be held that the application, in so far as it refers to the arguments submitted before EUIPO, is inadmissible.

19 As a preliminary point, it should be recalled that it is clear from settled case-law that, for the adjudicating bodies of EUIPO, the date on which the application for registration of the mark was filed is the relevant date for the assessment of whether the absolute grounds referred to in Article 7(1) of Regulation No 40/94 preclude the registration of a mark or must result in a previously registered mark being declared invalid (see, to that effect, judgments of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3, and of 13 May 2020, SolNova v EUIPO – Canina Pharma (BIO-INSECT Shocker), T‑86/19, EU:T:2020:199, paragraph 23 and the case-law cited).

20 In view of the date on which the application for registration at issue in the present case was filed, namely 25 January 2006, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

21 Consequently, in the present case, as regards the substantive rules, the references to Article 7 and Article 59(1)(a) of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the applicant in the arguments raised should be understood as referring to Article 7 and Article 51(1)(a) of Regulation No 40/94, which are identical in content.

22 In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 40/94 and of Article 7(1)(c) thereof.

23 The applicant alleges, in essence, that the Board of Appeal, first, erred in its assessment of the level of attention of the relevant public, secondly, erred in its assessment of the meaning of the term ‘forex’ and, thirdly, erred in finding that the disputed mark was descriptive of the goods at issue in Classes 9 and 16.

25 Under Article 51(1)(a) of Regulation No 40/94, an EU trade mark is to be declared invalid, on application to EUIPO, where the EU trade mark has been registered contrary to the provisions of Article 7 of that regulation.

26 It follows from Article 7(1)(c) of Regulation No 40/94, 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. In addition, Article 7(2) of that regulation states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the [European Union]’.

27 According to the case-law, Article 7(1)(c) of Regulation No 40/94 prevents the signs and indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all (see, to that effect, judgment of 11 April 2019, Adapta Color v EUIPO – Coatings Foreign IP (ADAPTA POWDER COATINGS), T‑223/17, not published, EU:T:2019:245, paragraph 67 and the case-law cited).

28 Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) of Regulation No 40/94, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquires the goods or services designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (see, to that effect, judgment of 11 April 2019, ADAPTA POWDER COATINGS, T‑223/17, not published, EU:T:2019:245, paragraph 68 and the case-law cited).

29 It follows that, in order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or of one of their characteristics (see, to that effect, judgment of 11 April 2019, ADAPTA POWDER COATINGS, T‑223/17, not published, EU:T:2019:245, paragraph 69 and the case-law cited).

30 It must also be borne in mind that the assessment as to whether a sign is descriptive can be carried out only, first, in relation to the perception which the public concerned has of that sign and, secondly, in relation to the goods or services at issue (see, to that effect, judgment of 11 April 2019, ADAPTA POWDER COATINGS, T‑223/17, not published, EU:T:2019:245, paragraph 70 and the case-law cited).

31 It was therefore for the Board of Appeal to determine, on the basis of a given meaning of the disputed mark, whether, at the relevant date, there was, from the point of view of the relevant public, a sufficiently direct and specific relationship between the disputed mark and the characteristics of the goods at issue, within the meaning of Article 7(1)(c) of Regulation No 40/94.

32 It is in the light of those considerations that it is necessary to examine the applicant’s arguments concerning the Board of Appeal’s assessment in the contested decision.

33 First, the Board of Appeal found that the relevant public consisted of both professionals and the general public. According to the Board of Appeal, the level of attention of the professional public was higher than that of the general public, which was average, except with regard to the goods at issue in Class 9 that were technical goods in respect of which the level of attention was generally high.

34 The applicant does not dispute that the goods at issue target professionals and the general public. By contrast, it calls into question the Board of Appeal’s assessment concerning the level of attention of the relevant public by claiming that, in the field of financial services, such a level of attention is generally high. The level of attention of that public should, consequently, it submits, be considered to be higher than average. Furthermore, a slightly weaker distinctive character of a sign is sufficient, in the light of the specific nature of financial services, to preclude that sign from coming under the ground for refusal set out in Article 7(1)(b) or (c) of Regulation No 40/94 on account of the higher level of attention of the average consumer who does not use financial services on a daily basis.

35 In that regard, it must be stated that the goods at issue do not include services.

36 Therefore, the applicant’s argument that the level of attention of the relevant public in relation to financial services is generally high is irrelevant. The evidence relied on by the applicant in support of its argument, namely that decisions to use financial services are not common decisions and are generally preceded by a detailed examination, does not apply to the part of the goods at issue in respect of which the Board of Appeal found that the relevant public had at least an average degree of attention, namely all of those goods, with the exception of the technical goods in Class 9.

37 It cannot therefore be argued that the various types of printed matter in Class 16 are comparable to financial services in that the decision relating to their purchase is of high importance and is generally preceded by a more detailed examination.

38 Since it is not possible to treat the goods at issue as being comparable to financial services, it is also necessary to reject the applicant’s argument that, having regard to the specific characteristics of those services, a slightly weaker distinctive character of a sign is sufficient to preclude that sign from coming under the ground for refusal set out in Article 7(1)(c) of Regulation No 40/94, on account of the higher level of attention of the average consumer who does not use those financial services on a daily basis.

39 Furthermore, for the sake of completeness, it should be noted that the fact that the relevant public is specialised cannot have a decisive influence on the legal criteria used to assess whether a sign is descriptive (see judgment of 7 May 2019, Fissler v EUIPO (vita), T‑423/18, EU:T:2019:291, paragraph 14 and the case-law cited). According to the case-law, the level of attention of the relevant public is not decisive in assessing whether a mark comes under the ground for refusal referred to in either Article 7(1)(b) or Article 7(1)(c) of Regulation No 40/94 (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph 14 and the case-law cited). Thus, it follows from that case-law that the principle that, in order to assess whether or not a mark has any distinctive character, the overall impression given by it must be considered, might be undermined if the distinctiveness threshold of a sign depended generally on the degree of specialisation of the relevant public. That is a consideration which also applies to the assessment as to whether a sign is descriptive (see judgment of 7 May 2019, vita, T‑423/18, EU:T:2019:291, paragraph14 and the case-law cited).

40 Secondly, as regards the perception of the disputed mark by the relevant public, it should be noted that, in the contested decision, the Board of Appeal took into account the English-speaking public, made up of both professionals and part of the general public, in order to reach the conclusion that the term ‘forex’ was known to be the abbreviation of ‘foreign exchange market; foreign exchange’.

41 Although the applicant does not dispute the Board of Appeal’s assessment that the term ‘forex’ means ‘foreign exchange market; foreign exchange’, it nevertheless maintains that that meaning is understood only by professionals. It claims that the evidence provided by Coino UK does not prove that that meaning is widely known to the general public. In the first place, the fact that that term is included in a number of dictionaries does not prove that it is widely known by the general public. In the second place, it argues, two marketing studies carried out in November 2019 in Finland and Denmark proved that that term was, on the contrary, known by only 15% and 10%, respectively, of respondents as having the meaning in question. In the third place, the ‘group of highly professional traders’ is not sufficient to fulfil the definition of a non-negligible part of the target group.

42 In that regard, it must be borne in mind that, according to the case-law, in order for a sign to come within the scope of the prohibition in Article 7(1)(b) or (c) of Regulation No 40/94, it is sufficient that a ground of refusal exists in relation to a non-negligible part of the target public and that it is unnecessary in that regard to examine whether other consumers belonging to the relevant public are also aware of that sign. Furthermore, according to Article 7(2) of that regulation, paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union (see judgments of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 55 and the case-law cited, and of 6 October 2017, Karelia v EUIPO (KARELIA), T‑878/16, not published, EU:T:2017:702, paragraph 27 and the case-law cited).

43 It must be stated that the applicant has not provided any evidence capable of establishing that the part of the relevant public which understands the term ‘forex’ as being the abbreviation of ‘foreign exchange market; foreign exchange’ represents a negligible part of that public.

44 In the first place, the circumstance, highlighted by the applicant, that only a proportion of the general public understands the term ‘forex’ to mean ‘foreign exchange market; foreign exchange’ and that the evidence provided by Coino UK does not prove that that meaning is widely known by the general public, is irrelevant.

45 In that regard, it is sufficient to note that, even if it were established, that circumstance would not permit a finding that the Board of Appeal erred in finding that the meaning of the term ‘forex’ was known to English-speaking professionals and to some of the English-speaking general public.

46 In that regard, in the second place, the applicant has also failed to demonstrate, and it is in no way apparent from the documents before the Court, that English-speaking professionals and part of the English-speaking general public constitute a negligible part of the relevant public. Although the applicant claims that the ‘group of highly professional traders’ is not sufficient to fulfil the definition of a non-negligible part of the target group, it does not substantiate its claim with any specific and detailed evidence. On the contrary, as EUIPO submits, some of the goods at issue are intended exclusively for professionals, such as apparatus for cashing money and information about transfers of funds (cash dispensers) and apparatus for money exchange and currency exchange in Class 9.

47 In the third place, as is apparent from paragraphs 12 to 14 above, the two marketing studies carried out in November 2019, referred to in paragraph 12 above, cannot be taken into consideration for the purposes of assessing the validity of the contested decision.

48 In any event, even if the two studies at issue could be taken into consideration, it must be stated that they relate only to the knowledge of the general public in Denmark and Finland in 2019 and do not allow any conclusions to be drawn with regard to the relevant public, namely professionals as well as the general public. In addition, the relevant public by reference to whom the absolute ground for refusal must be assessed is an English-speaking public, since the word sign at issue is composed of elements in the English language. As EUIPO correctly submits, although it is not disputed that the general public in Denmark and Finland generally has a basic knowledge of English, it cannot be inferred from the evidence that the same perception of the word ‘forex’ exists in countries in which the official language is English. Furthermore, the fact that, according to those studies, 15% of respondents in Finland and 10% of respondents in Denmark are aware of the meaning of the term ‘forex’, namely ‘foreign exchange’, is not capable of calling into question the Board of Appeal’s finding that part of the English-speaking general public recognises the meaning of that term.

49 Consequently, the Board of Appeal was right in finding, in paragraphs 26 to 28 of the contested decision, that the evidence submitted by Coino UK showed that the term ‘forex’ is known to be the abbreviation of ‘foreign exchange market; foreign exchange’ by professionals such as traders, business people and economic experts and by part of the English-speaking general public.

50 Thirdly, as regards the relationship between the meaning of the term ‘forex’ and the goods in Class 9, the Board of Appeal found that, in connection with ‘coded and uncoded magnetic cards, in the form of bank- and debit cards; apparatus for cashing money and information about transfer of funds (cash dispensers); computers, computer peripheral devices and registered software for transfer of funds and information about funds; apparatus for money exchange and currency exchange’ in that class, the sign Forex indicated to consumers that those goods related to the cashing and transfer of currency in so far as they were specifically ‘for transfer of funds and information about funds’ and ‘apparatus for money exchange and currency exchange’. Furthermore, the goods are specific enough to cover goods used for foreign exchange. That sign is thus descriptive of the kind and intended purpose of those goods.

51 The applicant claims that none of the goods at issue in Class 9 relates to the ‘foreign exchange’ market, meaning the professional marketplace for currency trade conducted for the purpose of profiting from fluctuating rates. As regards the transfer of funds, the disputed mark has no direct and specific link with those goods.

52 In that regard, it must be borne in mind, as is apparent from the case-law cited in paragraph 29 above, that, in order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics.

53 In the present case, it must be held that the Board of Appeal was right in finding, in paragraph 33 of the contested decision, that the sign Forex indicated to consumers that the goods at issue in Class 9 were related to the cashing and transfer of currency and that those goods were specific enough to cover goods used for foreign exchange.

54 In that regard, in the first place, it must be stated that, according to the case-law cited in paragraph 29 above, it is not necessary that the relationship between the meaning of the sign and the goods or services concerned refers to all the possible characteristics of a product or service, but that it is sufficient for it to refer to one of its characteristics. As regards the terms ‘apparatus for money exchange and currency exchange’ and ‘apparatus for cashing money and information about transfer of funds (cash dispensers)’, it is apparent from their wording that they have a connection with the cashing and transfer of foreign currency. ‘Computers, computer peripheral devices and registered software for transfer of funds and information about funds’ can be used for both foreign exchange and the transfer of foreign currency. As regards ‘coded and uncoded magnetic cards, in the form of bank- and debit cards’, as EUIPO correctly notes, these also have a sufficiently direct and specific relationship with the cashing and transfer of foreign currency in so far as they may be used by professionals in order to carry out currency-trading operations or to cash currency.

55 In the second place, in so far as the applicant calls into question the fact that none of the goods at issue in Class 9 refers to the ‘foreign exchange’ market, it should be noted, as rightly found by the Board of Appeal, that those goods are specific enough to cover goods used for foreign exchange. Foreign exchange is not limited to an exchange of information, but is essentially based on tools that enable transactions to be carried out, namely the cashing and transfer of currency.

56 In the light of the foregoing, it must be held that, as regards the goods at issue in Class 9, the Board of Appeal did not err in finding that the sign Forex was descriptive for the relevant public of the nature and intended purpose of those goods.

57 Fourthly, as regards the relationship between the meaning of the term ‘forex’ and the goods at issue in Class 16, the Board of Appeal found, in paragraph 35 of the contested decision, that that term was descriptive both of the subject matter of ‘printed matter; printed information material, printed publications’, given that foreign exchange had been the subject of various publications, and of the intended purpose of ‘printed forms’, as there could be forms to be sent which were especially made for currency-trading operations.

58 The applicant submits that there is no link between the foreign exchange market and the goods at issue in Class 16 and that, therefore, the disputed mark cannot provide details of the type of those goods.

59 In the first place, it should be noted that, contrary to what the applicant claims, it is not apparent from the contested decision that the term ‘forex’ was descriptive of the type of goods at issue in Class 16. It is apparent from the contested decision solely that that term described the subject matter and intended purpose of those goods.

60 In the second place, it must be stated that the applicant has not challenged the Board of Appeal’s finding that it is apparent from the evidence that the foreign exchange market has been the subject of various publications. In paragraphs 26 and 27 of the contested decision, the Board of Appeal gave examples of publications dating from 1997 to 2007 and intended both for a specialised public and for the general public.

61 As noted by EUIPO, in that context, the term ‘forex’ will not be recognised by the relevant public as an indicator of the commercial origin of the goods at issue in Class 16, such as ‘printed matter; printed information material, printed publications’, but as a description of one of the characteristics of those goods, namely their subject matter.

62 In the third place, the Board of Appeal did not err in finding, in paragraph 35 of the contested decision, that the term ‘forex’ was descriptive of the intended purpose of the ‘printed forms’, as there could be forms to be sent which are especially made for currency-trading operations. Moreover, the applicant has not put forward any argument to refute that finding, which was also made by the Cancellation Division in its decision and expressly referred to in the contested decision. According to the Cancellation Division’s decision, there are forms especially made for currency-trading operations which are used as part of telephone trading in order to make effective and quick transactions.

63 It follows from the foregoing that the Board of Appeal was right to find that the disputed mark was descriptive for the relevant public of the subject matter and intended purpose of the goods at issue in Class 16.

64 For all of those reasons, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second and third heads of claim.

65 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

66 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) >> Forex Bank v EUIPO - Coino UK (FOREX) (EU trade mark - Judgment) [2020] EUECJ T-26/20 (02 December 2020) URL: http://www.bailii.org/eu/cases/EUECJ/2020/T2620.html Cite as: ECLI:EU:T:2020:583, [2020] EUECJ T-26/20, EU:T:2020:583, [2021] ETMR 21

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