Allstate Insurance v EUIPO (DRIVEWISE) (EU word mark DRIVEWISE - Absolute ground for refusal : Judgment) [2017] EUECJ T-3/16 (05 July 2017)

Judgment Background to the dispute On 13 November 2014, the applicant, Allstate Insurance Company, 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 Community trade mark (OJ 2009 L 78, p. 1). The mark in respect of which registration was sought is the word sign DRIVEWISE. The goods and services in respect of which registration was sought fall in particular within Classes 9 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description: – Class 9: ‘Computer software for mobile data devices; computer software for the collection, analysis, storage, management, manipulation and processing of multi-source information and data; computer software for data collection and data analytics; computer software for data analytics and databases; computer databases; computer software for creating searchable databases of information and data; telematics devices; parts and fittings for any of the aforesaid goods’; – Class 42: ‘Scientific and technological services and research and design relating thereto; design and development of computer hardware and computer software; computer software consultancy services; technical advisory services; technical advisory services relating to data processing; data analytics services; providing temporary use of non-downloadable computer software to analyse data and for consumer research; installation and maintenance of computer software; software writing services; data mining; information and advisory services relating to the aforementioned services, including the provision of all of these services on-line from a computer network or via the Internet’. By decision of 16 March 2015, the examiner rejected the application for registration on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation, in respect of the goods and services at issue, on the grounds that the mark applied for was descriptive of the goods and services at issue and therefore devoid of any distinct character. On 18 May 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision. By decision of 8 October 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the application; – order the applicant to pay the costs. Law In support of its action, the applicant puts forward two pleas in law, alleging, first, infringement of Article 7(1)(b) and (c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation and, second, infringement of Article 75 of that regulation. The first plea, alleging infringement of Article 7(1)(b) and (c) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation The applicant claims that the Board of Appeal erred when it found that the mark applied for was descriptive of the goods and services at issue and devoid of any distinctive character within the meaning of Article 7(1)(c) and (b) of Regulation No 207/2009, read in conjunction with Article 7(2) of that regulation. As a preliminary remark, it should be borne in mind that, with regard to the absolute ground of refusal based on the descriptive character of the mark applied for, Article 7(1)(c) of Regulation No 207/2009 pursues an aim in the public interest that requires indications or signs descriptive of the characteristics of goods or services in respect of which registration is sought to be capable of being used freely by all (judgments of 23 October 2003, OHIM v Wrigley , C‑191/01 P, EU:C:2003:579 , paragraph 31, and of 20 July 2016, Internet Consulting v EUIPO — Provincia Autonoma di Bolzano-Alto Adige (SUEDTIROL) , T‑11/15, EU:T:2016:422, paragraph 29). For a sign to fall within the scope of the prohibition in that provision, it must suggest a sufficiently direct and specific link to the goods or services in question to enable the public concerned to perceive immediately, and without further thought, a description of the category of goods and services in question or of one of their characteristics (judgments of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB) , T‑19/04, EU:T:2005:247 , paragraph 25, and of 28 June 2016, salesforce.com v EUIPO (SOCIAL. COM) , T‑134/15, not published, EU:T:2016:366 , paragraph 14). The descriptive character of a sign may be assessed only, first, in relation to the relevant public’s perception of it and, secondly, in relation to the goods or services concerned (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL) , T‑34/00, EU:T:2002:41, paragraph 38; and of 20 July 2016, SUEDTIROL , T‑11/15, EU:T:2016:422, paragraph 35). A sign may be refused registration on the basis of Article 7(1)(c) of Regulation No 207/2009 only if it may reasonably be believed that it will actually be recognised by the relevant class of persons as a description of one of those characteristics referred to in that provision (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM , C‑51/10 P, EU:C:2011:139 , paragraph 50 and the case-law cited; judgments of 10 July 2014, BSH v OHIM , C‑126/13 P, not published, EU:C:2014:2065, paragraph 22, and of 28 June 2016, SOCIAL. COM , T‑134/15, not published, EU:T:2016:366 , paragraph 14). First, with regard to the relevant public, the Board of Appeal held, in paragraphs 22 and 30 of the contested decision, that the goods and services at issue were directed at a public composed of both professionals and the general public of the English-speaking countries of the European Union. At the hearing, the applicant submitted for the first time that the goods and services at issue were not directed at the general public, but only at professionals with a high level of attention. The latter are engineers and IT specialists in the automobile industry, responsible for developing data collection devices and combining them with software such as those covered by the mark applied for. So, a car-driver, being part of the general public, is not in a position to know what software is installed in his car and would not have the opportunity of choosing it. The goods and services covered by the mark applied for are, therefore, not aimed at him. In that regard, it suffices to note that the Board of Appeal’s assessment relates to the goods and services at issue as set out in the application for registration, which are as likely to be directed at the professional section of the public as at the general public. There is therefore no reason to call into question the Board of Appeal’s findings concerning the definition of the relevant public. It should then be considered whether, from the point of view of the relevant public, there is a sufficiently direct and specific link between the sign applied for and the goods and services at issue within the meaning of the case-law cited in paragraph 13 above. In paragraph 22 of the contested decision, the Board of Appeal noted that the sign applied for was composed of the combination of the terms ‘drive’ and ‘wise’ which, in the eyes of the relevant public, would convey the message that the goods and services at issue ‘have the aim of helping or assisting to drive better or more safely’. With those considerations in mind, the Board of Appeal found, in paragraph 24 of the contested decision, that ‘if the relevant consumer saw the [mark ‘DRIVEWISE’] on said software, the initial reaction would be one of immediate recognition of the purpose of the goods’. In paragraphs 25 and 26 of the contested decision, the Board of Appeal concluded that the refusal of registration applied to all the software goods and telematics devices covered by the mark applied for, and to the services in Class 42 covered by the mark applied for. On the one hand, the applicant criticises the Board of Appeal for not troubling to assess the mark applied for as a whole and for basing its reasoning solely on the impression conveyed by each of the elements of the mark separately. In that regard, it should be noted that the Board of Appeal referred many times to the term ‘drivewise’ in the contested decision. It concluded, in paragraph 23 of the contested decision, that ‘when “wise” is added to “drive” the result is an unambiguous term which, in relation to the software goods, tells the consumer that such software will assist in the efficient, safe and optimum performance of a vehicle’. Furthermore, in paragraph 28 of the contested decision, it considered that the EU marks registered at EUIPO containing only one or the other of the terms ‘wise’ and ‘drive’ referred to by the applicant were irrelevant to the examination of the application, on the grounds that, in the present case, ‘[the refusal to register] the mark [applied for] is based on the overall meaning of the words ‘drive’ and ‘wise’ conjoined in relation to a highly specific software’. On the other hand, the applicant claims that the Board of Appeal disregarded the unusual and fanciful character of the combination of terms ‘drive’ and ‘wise’ and failed to draw any conclusions from its observation that the relevant public might perceive the expression ‘drivewise’ in the same way as other expressions where the term ‘-wise’ is used as a suffix and means ‘manner’. On that point, it should be noted that the applicant does not challenge the fact the elements constituting the sign applied for can refer, with regard to the first element, to the fact that the software covered by the mark applied for relate to the driving of vehicles and, with regard to the second, to the fact that the purpose of that software is to enable the driver to drive better, more wisely, more safely or more efficiently. With regard to the term ‘wise’, the applicant does acknowledge that the term means ‘to be wise’ when used as an adjective, but claims that it does not have a sufficiently clear intrinsic meaning, in that its sense depends on the adjusted structure it takes within a word combination or as a single word. It is, however, clear that that argument is irrelevant for the purpose of an assessment of the descriptive character of the sign applied for in respect of the goods and services at issue. For EUIPO to refuse to register a trade mark under Article 7(1)(c) of Regulation No 207/2009, it is not necessary for the signs and indications that make up the mark referred to in that article actually to be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is made, or of characteristics of those goods or services. It is sufficient, as indicated by the wording of that provision itself, that such signs and indications can be used for such purposes. A word sign must therefore be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23 October 2003, OHIM v Wrigley , C‑191/01 P, EU:C:2003:579 , paragraph 32; see also judgment of 16 October 2014, Larrañaga Otaño v OHIM (GRAPHENE) , T‑458/13, EU:T:2014:891 , paragraph 20 and the case-law cited; see also, by analogy, judgments of 12 February 2004, Koninklijke KPN Nederland , C‑363/99, EU:C:2004:86 , paragraph 97, and of 12 February 2004, Campina Melkunie , C‑265/00, EU:C:2004:87 , paragraph 38). Therefore, even if; as the Board of Appeal rightly held in paragraph 22 of the contested decision, the word ‘drivewise’ is not normally used in English common parlance in connection with driving a vehicle, it is not impossible that the element ‘wise’, in combination with the element ‘drive’, may be used to describe goods or services such as those covered by the mark applied for. So, as the Board of Appeal also rightly found in paragraphs 22 and 23 of the contested decision, at least one of the potential meanings of the sign applied for, considered as a whole, refers to the efficient, safe and optimum use of a vehicle. As regards the applicant’s argument relating to the unusual and fanciful character of the combination of terms ‘drive’ and ‘wise’, it should be noted that, according to settled case-law, a 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, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. This implies that, by reason of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression sufficiently far removed from that produced by the mere combination of meanings of the elements of which it is composed, with the result that the word is more than the sum of its parts. In that regard, analysis of the term at issue in light of the appropriate lexical and grammatical rules is also relevant (judgments of 22 June 2005, PAPERLAB , T‑19/04, EU:T:2005:247 , paragraph 27, and of 6 July 2011, i-content v OHIM (BETWIN) , T‑258/09, EU:T:2011:329, paragraph 30; see also judgment of 18 October 2016, Raimund Schmitt Verpachtungsgesellschaft v EUIPO (Brauwelt) , T‑56/15, EU:T:2016:618 , paragraph 34 and the case-law cited). In the present case, it should be noted that, even if the Board of Appeal acknowledged, contrary to the applicant’s claims, that the term ‘drivewise’ was an invention that the relevant public might perceive in the same way as the adverbs ‘clockwise’, ‘anticlockwise’ or ‘likewise’, where the suffix ‘wise’ means ‘manner’, the fact that the neologism ‘drivewise’ may give the impression, grammatically speaking, that it is an adverb, while being a combination of a verb and an adjective, does not lead to the conclusion that the neologism is more than the sum of its parts. The Board of Appeal was right to note that it was common knowledge that some adverbs and adjectives are naturally used interchangeably in English and, in particular, that the expression ‘drive safe’ will be perceived by the relevant public as the equivalent of ‘drive safely’. It follows that, with regard to the goods and services at issue, the term ‘drivewise’ can immediately be understood by the relevant public as the grammatically correct expression ‘drive safely’. Contrary to what the applicant claims, the association of the terms ‘drive’ and ‘wise’ is therefore not ambiguous in so far as it is common to link verbs to adjectives in English. In that regard, contrary to what the applicant claims, the Board of Appeal did not disregard the fact that grammatical rules play a role in the assessment of the potential distinctive and unusual character of a trade mark. It is also improbable that the relevant public would have to take a first mental step to recognise that the element ‘wise’ has the meaning of ‘wisely’, followed by a second mental step to deduce that ‘to drive wisely’ could mean ‘to drive safely’ or ‘to drive carefully’. Furthermore, the neologism ‘drivewise’ is composed of English terms easily identifiable by the relevant English-speaking public and is not a word that, by reason of its unusual character with regard to the goods and services at issue, would have a meaning of its own that would take precedence over the simple juxtaposition of the words that it is composed of. There is, therefore, no reason to accept the applicant’s argument that the term ‘drivewise’ requires an effort of interpretation in such a way that the relevant public cannot attribute a precise and direct meaning to it. Consequently, there is no perceptible difference between the neologism ‘drivewise’ and the sum of its parts. As EUIPO contends, the word sign applied for is devoid of any fanciful character and is merely an invented term, in so far as it is a conjunction of two individually descriptive terms that are not mentioned together in the dictionary consulted by the Board of Appeal. In response to the applicant’s argument that the Board of Appeal’s findings are manifestly flawed, owing in particular to the fact that no dictionary contains a definition of the term ‘drivewise’, it suffices to note that, in accordance with the case-law, EUIPO is not obliged to prove that the sign at issue is to be found in the dictionary. The question of whether a sign may be registered as an EU trade mark must be assessed solely on the basis of relevant regulation as interpreted by the Courts of the European Union (see judgment of 22 June 2005, PAPERLAB , T‑19/04, EU:T:2005:247 , paragraph 34 and the case-law cited; judgment of 24 April 2012, Leifheit v OHIM (EcoPerfect) , T‑328/11, not published, EU:T:2012:197, paragraph 29). It follows from all of the above that the mark sought is descriptive of the goods and services at issue within the meaning of Article 7(1)(c) of Regulation No 207/2009. As regards the absolute ground for refusal, based on the mark applied for being devoid of any distinctive character, pursuant to Article 7(1)(b) of Regulation No 207/2009, it is relevant to note that a word mark that is descriptive of characteristics of goods or services is, on that account, necessarily devoid of any distinctive character in relation to those goods or services (see judgments of 8 July 2004, Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS) , T‑289/02, EU:T:2004:227, paragraph 24 and the case-law cited, and of 15 January 2015, MEM v OHIM (MONACO) , T‑197/13, EU:T:2015:16 , paragraph 67 and the case-law cited). Furthermore, it is sufficient that one of the absolute grounds for refusal listed applies for a sign to not be registrable as an EU mark (see judgments of 6 July 2011, BETWIN , T‑258/09, EU:T:2011:329, paragraph 65 and the case-law cited, and of 27 October 2016, Caffè Nero Group v EUIPO (CAFFÈ NERO) , T‑29/16, not published, EU:T:2016:635 , paragraph 41 and the case-law cited). It follows that the Board of Appeal rightly concluded that, because the mark applied for was to be refused registration in its entirety, pursuant to Article 7(1)(c) of Regulation No 207/2009, it was not necessary to examine whether the refusal to register under Article 7(1)(b) of Regulation No 207/2009 was well founded. Finally, contrary to what the applicant claims, it is appropriate to conclude that there was no reason either for the Board of Appeal to take into account the EU mark DRIVEWISE No 004602322, registered in respect of goods and services other than the goods and services at issue for the purposes of its assessment. It suffices to bear in mind that, according to settled case-law, decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal are called upon to take, in accordance with Regulation No 207/2009, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as an EU trade mark must be assessed solely on the basis of that regulation, as interpreted by EU Courts, and not on the basis of any previous practice of the Boards of Appeal (see judgment of 22 October 2015, Hewlett Packard Development Company v OHIM (ELITEDISPLAY) , T‑563/14, not published, EU:T:2015:794 , paragraph 35 and the case-law cited). Moreover, for reasons of legal certainty and, specifically, of sound administration, the examination of any trade mark application must be stringent and exhaustive, in order to prevent trade marks being improperly registered. That examination must be undertaken in every individual case (see judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM , C‑51/10 P, EU:C:2011:139 , paragraph 77 and the case-law cited; judgment of 27 October 2016, CAFFÈ NERO , T‑29/16, not published, EU:T:2016:635 , paragraph 53). Contrary to what the applicant claims, it follows that the Board of Appeal was right to conclude that the EU marks relied upon by the applicant were not relevant. In that regard, it is clear that the EU marks relied upon contain only one of the elements that make up the mark applied for, and that the applicant has produced no evidence that might establish how far the EU marks relied upon were comparable to the sign applied for. The Board of Appeal was also right to conclude that there was no reason to take the registration of the mark DRIVEWISE in the United States into account in the contested decision. The EU trade mark system is an independent system, made up of a body of rules and pursuing objectives that are specific to it (see, to that effect, judgments of 25 October 2007, Develey v OHIM , C‑238/06 P, EU:C:2007:635, paragraph 65, and of 15 September 2016, Trinity Haircare v EUIPO — Advance Magazine Publishers (VOGUE) , T‑453/15, not published, EU:T:2016:491 , paragraph 26). It follows from all the above considerations that the first plea must be rejected. The second plea, alleging infringement of Article 75 of Regulation No 207/2009 The applicant claims, in essence, that the Board of Appeal failed to give any reasons in order to justify its finding that the mark applied for is descriptive of the services at issue in Class 42. It is settled case-law that reasons for excluding a mark from registration must in principle be given for each of the goods or services concerned. The competent authority may, however, confine itself to stating general reasons where the same ground for refusal holds for a category or group of goods or services which are sufficiently directly and specifically connected, to the point that they comprise a category or group of goods of sufficient homogeneity (see judgment of 16 October 2014, GRAPHENE , T‑458/13, EU:T:2014:891 , paragraph 26 and the case-law cited; see also, by analogy, judgment of 15 February 2007, BVBA Management, Training en Consultancy , C‑239/05, EU:C:2007:99, paragraphs 34 to 38). In the present case, the Board of Appeal specified that the mark applied for was to be refused registration in respect of services in Class 42 on the grounds that the software and computer products in Class 9 cannot be separated from their developmental design, or from the associated development and consultancy services which provide the support platform for the main software covered by the mark applied for. In the light of the foregoing, the Board of Appeal duly gave reasons for its contested decision in respect of all the goods and services at issue. It follows that the second plea is to be rejected and, consequently, that the present application is to be dismissed in its entirety. Costs 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. On those grounds, THE GENERAL COURT (First Chamber) hereby: 1. Dismisses the action; 2. Orders Allstate Insurance Company to pay the costs. Pelikánová Valančius Öberg Delivered in open court in Luxembourg on 5 July 2017. E. Coulon A. M. Collins * Language of the case: English. © European Union The source of this judgment is the Europa web site. 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