CNH Industrial v EUIPO (CROPXPLORER) (EU trade mark - Judgment) [2022] EUECJ T-301/21 (26 January 2022)

Judgment Background to the dispute On 30 March 2020, the applicant, CNH Industrial NV, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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). Registration as a mark was sought for the word sign CROPXPLORER. The goods in respect of which registration was sought are in Classes 7 and 9 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 7: ‘Agricultural implements for monitoring and analysing plants; agricultural implements for analysing plants and providing measurements and calculations for the application of fertiliser, growth regulators, and other agricultural chemicals; and parts therefor’; – Class 9: ‘Computer software for analysing plants and providing measurements and calculations for the application of fertiliser, growth regulators, and other agricultural chemicals’. By decision of 21 December 2020, the examiner dismissed the application for registration of that mark on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001. On 22 February 2021, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the examiner. By decision of 26 March 2021 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, first of all, it defined the relevant public for the goods referred to in the application for registration as being composed of professionals and decided to take into account the English-speaking part of that public, located in Ireland and Malta. Next, examining the descriptive character of the mark applied for, it found that that mark would be perceived by the relevant public as the English expression ‘crop explorer’, which would be understood as designating the intended purpose of the goods at issue and not as a mark capable of indicating their commercial origin. It inferred from this that the mark applied for was purely descriptive of those goods. Finally, examining the distinctive character of that mark, the Board of Appeal found that the relevant public would perceive that mark as mere information referring strictly to the purpose of the goods at issue. It added that the relevant public, first, would read and pronounce that mark as the expression ‘crop explorer’ and, secondly, would perceive the fact that the word ‘explorer’ is written as ‘xplorer’ and the fact that the words ‘crop’ and ‘xplorer’ are joined as inaudible graphic artifices not conferring distinctive character on the mark applied for. Forms of order sought The applicant claims that the Court should: – annul the contested decision and allow registration of the mark applied for or, in the alternative, refer the case back to EUIPO in order that it may adopt the consequent measures; – order EUIPO to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law The applicant relies on two pleas in law, the first alleging infringement of Article 7(1)(c) of Regulation 2017/1001, the second alleging infringement of Article 7(1)(b) of that regulation. In the first plea, the applicant criticises the Board of Appeal for having infringed Article 7(1)(c) of Regulation 2017/1001 in finding that the mark applied for was descriptive of the goods referred to in the application for registration. In particular, first, it complains that the Board of Appeal attributed an incorrect meaning to the word ‘explorer’ and, consequently, erred in its assessment of the influence of the element ‘xplorer’ on the perception of the relevant public. Secondly, it criticises the Board of Appeal for having erred in finding that the mark applied for contained the element ‘xplore’ instead of the element ‘xplorer’. Thirdly, it submits that the Board of Appeal erred in finding that the relationship between the mark applied for and the goods at issue was sufficiently direct and specific to hold that that mark was directly descriptive of those goods. EUIPO disputes the applicant’s arguments. According to Article 7(1)(c) of Regulation 2017/1001, 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. Under Article 7(2) of that regulation, Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. For a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM) , T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB) , T‑19/04, EU:T:2005:247 , paragraph 25 and the case-law cited). In the present case, the Board of Appeal found that the relevant public consisted of professionals with a high level of awareness and attention and that, since the mark applied for has a meaning in English, the perception of the English-speaking public situated in Ireland and Malta had to be taken into consideration. The applicant does not dispute those findings. The meaning attributed to ‘xplorer’ The Board of Appeal, endorsing the examiner’s assessments and referring to one of its earlier decisions, found that the terms ‘explorer’ and ‘xplorer’ were pronounced identically, with the result that the term ‘xplorer’ would immediately be understood as an alternative spelling of the term ‘explorer’, which is a common English word referring, inter alia, to a specialist or a tool who or which explores, investigates, conducts research, discovers, checks, finds out and so forth. The applicant claims that several online dictionaries, such as the Cambridge Dictionary , the Collins Dictionary , the Merriam-Webster Dictionary , the Oxford Learner’s Dictionary and the Macmillan Dictionary , from which it produces extracts, define the word ‘explorer’ as referring to a ‘person’ or ‘someone’ who travels to unknown places in order to discover what is there. Therefore, the expression ‘crop explorer’ personifies the mark applied for in the context of the goods at issue, which makes that mark fanciful and unusual in appearance, so as to confer distinctive character on the element ‘xplorer’ and on the mark applied for. The Board of Appeal erred in basing its decision on a definition of the word ‘explorer’ that results from some of its earlier decisions and not on dictionary definitions or the usual and commonly accepted meaning of that word. EUIPO disputes the applicant’s arguments. In the first place, it should be noted that the definition of the word ‘explorer’ adopted by the Board of Appeal refers to ‘a specialist or a tool’ who or which explores, investigates, conducts research, discovers, checks and finds out. Since that definition includes ‘a specialist’, that is to say a person, it does not contradict the definitions relied on by the applicant. In the second place, as EUIPO correctly submits, one of the definitions of the word ‘explorer’ given by the Oxford English Dictionary is ‘a vessel, vehicle, etc., used for exploration, esp. underwater or (in later use) in space’. That definition is accompanied by examples, dating from 1830 to 1992, of the use of the word ‘explorer’ in a way illustrating that definition, such as ‘submarine explorer’, ‘lunar explorer’ and ‘robotic mobile explorer’. It follows that the applicant is wrong to argue that the Board of Appeal took into consideration an incorrect definition of the word ‘explorer’, which is not derived from a dictionary or from the usual meaning of that word. Accordingly, the applicant’s argument based on the personification of the mark applied for, which gives it an unusual appearance and a fanciful and distinctive character, is based on a false premiss and, therefore, must also be rejected. The erroneous taking into consideration of an element which is not present in the mark applied for The applicant complains that the Board of Appeal assessed the descriptive character of the mark applied for by erroneously taking into account the element ‘xplore’ instead of the element ‘xplorer’. Since those two elements have a different meaning, the Board of Appeal’s assessments are necessarily vitiated by that error. EUIPO disputes the applicant’s arguments. It should be observed that, in paragraph 44 of the contested decision, the Board of Appeal noted the following: ‘in the present case, the element “crop”, in combination with the element “xplore” (perceived as “explore”), could be used to describe the intended use or other characteristics of the goods covered by the mark applied for’. It is true that, since the mark applied for consists of the word sign ‘cropxplorer’, the assessment of the Board of Appeal referred to in the preceding paragraph, which takes into account the element ‘xplore’ and not the element ‘xplorer’, cannot be regarded as being relevant to assessing the descriptive character of the mark applied for. However, it must be pointed out that paragraphs 22, 23, 24, 25, 35, 36, 41 and 51 of the contested decision all contain a mention of the sign ‘cropxplorer’ or to the element ‘xplorer’. Therefore, the mention of an element ‘xplore’ in paragraph 44 of that decision, which is moreover the only mention, is not capable of casting doubt on whether the Board of Appeal did indeed assess the descriptive character of the mark applied for, and not of another sign, and that, to that end, it took into consideration the element ‘xplorer’ contained in that mark. Accordingly, the applicant’s argument must be rejected. The absence of a sufficiently direct and specific relationship between the mark applied for and the goods at issue The applicant complains that the Board of Appeal erred in finding that the mark applied for had a sufficiently direct and specific relationship with the goods referred to in the application for registration, within the meaning of the case-law cited in paragraph 14 above, to support the finding that that mark was descriptive. In that regard, the applicant submits that it is apparent from the contested decision that at least three mental steps are necessary in order for the relevant public to perceive the mark applied for as having the meaning adopted by the Board of Appeal, which, according to the applicant, is incompatible with the finding of a sufficiently direct and specific relationship between that mark and the goods at issue. Thus, in the first step, the Board of Appeal observed that the relevant public would perceive the mark applied for as meaning ‘crop explorer’. In the second step, it found that the public, in order to give meaning to that expression in the context of the goods at issue, would make a connection with crop exploration. In the third step, it considered that the public would understand that crop exploration referred to monitoring and analysing plants and providing measurements and calculations for the application of fertiliser, growth regulators, and other agricultural chemicals. EUIPO disputes the applicant’s arguments. In the present case, the Board of Appeal, endorsing the examiner’s findings, noted that the term ‘crop’ designated ‘plants such as wheat and potatoes that are grown in large quantities for food’, ‘any agricultural product, growing or harvested, or collected, as wheat, cotton, fruit, honey, etc.’ and that the mark applied for would be perceived by the relevant public as the expression ‘crop explorer’. The applicant does not dispute those findings. The Board of Appeal added that, having regard to the perception of the relevant public, the mark applied for merely informs that public that the goods at issue were software, apparatus and implements for crop exploration, that is to say for monitoring and analysing plants and providing measurements and calculations for the application of fertiliser, growth regulators, and other agricultural chemicals, which are generally used in modern agriculture to increase productivity. It inferred from those findings that the mark applied for directly indicated the intended purpose of the goods at issue, thus constituting a purely descriptive message. In that regard, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that the element ‘crop’ could be understood by the relevant public only as a reference to the definition of that word, recalled in paragraph 32 above. Nor does it dispute, as regards the element ‘xplorer’, that that element would be perceived as an alternative spelling of the noun ‘explorer’, derived from the verb ‘to explore’, and that it is, for that reason, easily associated with notions such as ‘searching’, ‘examining’, ‘investigating’ or ‘inspecting’. In the light of the foregoing undisputed considerations, it must be held that the relevant public will understand the mark applied for as meaning ‘crop explorer’ without making any particular mental effort. Moreover, having regard to the composition of the relevant public, consisting of professionals with a high level of awareness and attention, it must be held that it is without making any further effort that that public will associate the mark applied for with crop exploration. Furthermore, in the light of the nature of the goods referred to in the application for registration, recalled in paragraph 3 above, the Board of Appeal did not make an error of assessment in finding that the mark applied for merely informs the relevant public that those goods were software, apparatus and implements for crop exploration, that is to say for monitoring and analysing plants and providing measurements and calculations for the application of fertiliser, growth regulators, and other agricultural chemicals. Accordingly, contrary to the applicant’s assertions, the Board of Appeal was right in finding that there was a sufficiently direct and specific relationship between the mark applied for and the goods at issue, based on the fact that that mark would be understood by the relevant public as indicating directly, without further thought, the intended purpose of those goods. Therefore, the Board of Appeal was fully entitled to find that the mark applied for was descriptive of those goods for the purposes of Article 7(1)(c) of Regulation 2017/1001. Consequently, the first plea in law must be rejected. In addition, since it is quite evident from Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision apply in order for a sign not to be registrable as an EU trade mark (judgments of 19 September 2002, DKV v OHIM , C‑104/00 P, EU:C:2002:506 , paragraph 29, and of 14 September 2004, Applied Molecular Evolution v OHIM (APPLIED MOLECULAR EVOLUTION) , T‑183/03, EU:T:2004:263, paragraph 29), the action must be dismissed in its entirety, without there being any need to rule on the second plea, alleging infringement of Article 7(1)(b) of Regulation 2017/1001. 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 (Fifth Chamber) hereby: 1. Dismisses the action; 2. Orders CNH Industrial NV to pay the costs. Spielmann Öberg Brkan Delivered in open court in Luxembourg on 26 January 2022. E. Coulon M. van der Woude Registrar President * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII