European Lotto and Betting v EUIPO - Tipp24 Services (Cash4Life) (EU trade mark - Judgment) [2022] EUECJ T-554/21 (21 December 2022)

Judgment By its action under Article 263 TFEU, the applicant, European Lotto and Betting Ltd, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 July 2021 (Case R 264/2020‑1) (‘the contested decision’). Background to the dispute On 22 May 2018, Tipp24 Services Ltd filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 2 February 2016 in respect of the word sign Cash4Life. The services covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 35, 41 and 42 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 corresponded, for each of those classes, to the following description: – Class 35: ‘Advertising, marketing and promotional services’; – Class 41: ‘Entertainment’; – Class 42: ‘IT Services; technology Services’. The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 59(1)(a) of 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), read in conjunction with Article 7(1)(b) and (c) and Article 59(1)(b) of that regulation. On 4 December 2019, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (c) of that regulation, and declared the contested mark invalid in respect of the services referred to in paragraph 3 above. On 3 February 2020, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division. By the contested decision, the Board of Appeal dismissed the appeal on the ground that the contested mark had been registered in breach of Article 7(1)(b) and (c) of Regulation 2017/1001. First, the Board of Appeal found that the relevant public consisted of the professional public providing the services in question and the general public of the European Union and decided to take into consideration the English-speaking part of that public. It took the view that the relevant public was reasonably observant. Second, it noted that the contested mark consisted of the English word elements ‘cash’ and ‘life’, linked by the number 4, to which the relevant public would attribute the meaning of the English word ‘for’. It found, in essence, that the contested mark would be understood directly and without further reflection by the relevant public as meaning ‘cash for the rest of your life’ and concluded that that mark was descriptive of all the services in question. Third, the Board of Appeal found that, irrespective of the findings relating to the descriptive character of the contested mark, that mark was also devoid of any distinctive character on the ground that it would be understood as offering the possibility of winning money for life. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order EUIPO and Tipp24 Services to pay the costs. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law First of all, it should be noted that, in view of the date on which the application for registration in question was filed, namely 2 February 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (see, to that effect, judgment of 21 April 2021, Apologistics v EUIPO - Kerckhoff (APO) , T‑282/20, not published, EU:T:2021:212 , paragraph 12). Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the provisions of Regulation 2017/1001 should be understood as referring to the identically worded provisions of Regulation No 207/2009. Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain , C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present case is governed by the procedural provisions of Regulation 2017/1001. In support of its action, the applicant raises, in essence, two pleas in law, alleging, first, infringement of Article 7(1)(c) of Regulation No 207/2009 (now Article 7(1)(c) of Regulation 2017/1001) and, second, infringement of Article 7(1)(b) of that regulation (now Article 7(1)(b) of Regulation 2017/1001). The first plea: infringement of Article 7 (1)( c ) of Regulation No 2 07/2009 The applicant claims, in essence, that the Board of Appeal erred in finding that the contested mark was descriptive of the services in question for the purpose of Article 7(1)(c) of Regulation No 207/2009. EUIPO disputes the applicant’s arguments. Under Article 7(1)(c) of Regulation No 207/2009, read in conjunction with Article 52(1)(a) of that regulation, ‘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. Article 7(1)(c) of Regulation No 207/2009 pursues an aim which is in the public interest, which requires that signs which may serve, in trade, to designate characteristics of the goods or services for which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 15 January 2013, BSH v OHIM (ecoDoor) , T‑625/11, EU:T:2013:14 , paragraph 14 and the case-law cited). In order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the category of goods and services in question or of 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). Furthermore, in order for EUIPO to refuse registration on the basis of Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the sign in question actually be in use in a way that is descriptive, but merely that it could be used for such purposes. A word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 16 December 2010, Deutsche Steinzeug Cremer & Breuer v OHIM (CHROMA) , T‑281/09, EU:T:2010:537, paragraph 28 and the case-law cited). In that regard, it must be stated that the fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 207/2009 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, goods or services in respect of which registration is sought. A sign can thus be refused registration on the basis of Article 7(1)(c) of Regulation No 207/2009 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (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). Furthermore, for a trade mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must also be found to be so (see judgment of 22 June 2005, PAPERLAB , T‑19/04, EU:T:2005:247 , paragraph 26 and the case-law cited). A trade mark consisting of a neologism or 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 for the purposes of Article 7(1)(c) of Regulation No 207/2009, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. This assumes 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 sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (see judgment of 22 June 2005, PAPERLAB , T‑19/04, EU:T:2005:247 , paragraph 27 and the case-law cited). Lastly, it should be noted that the descriptive character of a sign may be assessed only, first, by reference to the way in which it is understood by the relevant public and, secondly, by reference to the goods or services concerned (judgment of 7 July 2011, Cree v OHIM (TRUEWHITE) , T‑208/10, not published, EU:T:2011:340, paragraph 17). The applicant’s arguments regarding the Board of Appeal’s assessment set out in the contested decision must be examined in the light of those principles. The relevant public It must be held that, as the Board of Appeal correctly stated, in essence, in paragraphs 23 to 26 of the contested decision, the services in question are aimed both at professionals providing those services and at the general public, each of those groups being reasonably attentive. That definition of the relevant public and of its degree of attention is, moreover, not disputed by the parties. Furthermore, since the contested mark consists of the terms ‘cash’ and ‘life’ which have a meaning in English, linked by the number 4, the Board of Appeal was right to find that the assessment of its descriptive character had to be carried out, at least, with regard to English-speaking consumers in the European Union, a finding which is, moreover, not disputed by the parties. The meaning of the contested mark The Board of Appeal found, in paragraphs 29 and 30 of the contested decision, that the contested mark consisted of the English word elements ‘cash’ and ‘life’, linked by the number 4, to which the relevant public would attribute the meaning of the English word ‘for’. It concluded that, since the word element ‘cash’ meant ‘money in cash form’ and the expression ‘for life’ meant, inter alia, ‘for an entire life’, the contested mark would be translated as ‘cash for the rest of your life’ as referring to a kind of life annuity. First, the applicant claims that, contrary to what the Board of Appeal stated in paragraph 37 of the contested decision, it disputed that meaning adopted by the Cancellation Division. The applicant states, in essence, that it stated clearly in its observations before the Cancellation Division that the term ‘cash’ and the number 4 had a variety of meanings. According to the applicant, if its observations and arguments relating to the conceptual meaning of the contested mark had been correctly taken into consideration, the Board of Appeal ought to have concluded that it had a distinctive and ambiguous meaning as a neologism, and that it could not be assumed that it would be understood as ‘cash for the rest of your life’. The applicant, referring to the observations which it submitted to the Cancellation Division, also states that the contested mark could be understood in a broader sense, namely ‘use life’ or ‘use the economic opportunities in life’. That reasoning cannot be upheld. Regard should be had to the case-law cited in paragraph 20 above, according to which, in order to come within the scope of Article 7(1)(c) of Regulation No 207/2009, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods or services concerned. As the Board of Appeal found, in essence, the word elements ‘cash’ and ‘life’ are common, everyday words which can be understood by anyone who has a knowledge of English and, a fortiori, by the English-speaking part of the relevant public. As for the number 4, it is true that, as stated by EUIPO, it may be presumed, having regard, in particular, to the very widespread use of the language known as ‘SMS language’ in the course of communication on the internet by means of instant messaging or electronic mail, in internet forums and blogs or even in online games, that the number 4, if it is associated with an English word, will itself generally be read in English and understood as referring to the English preposition ‘for’ (see, to that effect, judgment of 16 January 2014, Aloe Vera of America v OHIM - Detimos (FOREVER) , T‑528/11, EU:T:2014:10, paragraph 69 and the case-law cited). It is therefore reasonable to take the view that, as a whole, the contested mark will be understood directly and without further reflection as meaning ‘cash for life’, which is translated as ‘cash for all of your life’ or ‘cash for the rest of your life’. Having regard to its structure, which is not unusual, and to the fact that it complies with the rules of the English language, that mark does not create an impression on the part of the relevant public that is sufficiently removed from that produced by the mere juxtaposition of the words comprising it to change their meaning or scope (see, to that effect, judgment of 22 June 2005, PAPERLAB , T‑19/04, EU:T:2005:247 , paragraph 32). The mere fact that the contested mark could have another meaning is irrelevant for the purposes of assessing its descriptive character (see, to that effect, judgment of 15 May 2018, Wirecard v EUIPO (mycard2go) , T‑676/16, not published, EU:T:2018:266 , paragraph 34). Second, the applicant claims that the Board of Appeal also erred in taking into account the evidence submitted by Tipp24 Services in order to determine the meaning of the contested mark when all of that evidence referred to the ‘Cash4Life’ lottery in the United States and not to the European Union. That argument must be rejected. Irrespective of whether all of that evidence relates to the ‘Cash4Life’ lottery in the United States, as the applicant claims, it is sufficient to note, as observed by EUIPO, that that evidence was cited by the Board of Appeal only in order to support its analysis of the meaning of the contested mark and that it did not serve as a basis for that analysis. Consequently, the applicant’s arguments challenging the Board of Appeal’s finding relating to the meaning of the contested mark must be rejected as unfounded. The existence of a sufficiently direct and specific relationship between the contested mark and the services in question In the contested decision, the Board of Appeal found that the contested mark was descriptive of the services in question. It held, in essence, that, when the relevant public was faced with the contested mark for those services which may be provided in the context of gambling or games of chance and lotteries, that public would associate that mark, immediately and without further thought, with cash winnings for life. The applicant claims, in essence, that the Board of Appeal failed to explain or show in any way how the word element ‘cash4life’ is descriptive of all those services, even when they relate to lotteries and games of chance. First, it submits that the meaning of the contested mark adopted by the Board of Appeal is incorrect. Second, even if that meaning were correct, it takes the view that it refers, at most, to a vague and imperfect idea of potential winnings with regard to the services in Class 41 on the ground, inter alia, that no indication as to the nature or frequency of winnings can be inferred from the contested mark. Third, the applicant claims that it is absurd to regard the neologism ‘cash4life’ as descriptive of any IT or technological service in Class 42, even for a subcategory of services associated with gambling or games of chance and lotteries. In that regard, first, contrary to what the applicant claims, it must be noted that it is apparent from paragraphs 28 to 35 above that the Board of Appeal did not err in finding that, since the word element ‘cash’ meant ‘money in cash form’ and that the expression ‘for life’ meant, inter alia, ‘for an entire life’, the contested mark would be translated as ‘cash for the rest of your life’ referring to a kind of life annuity. Second, it must be stated that the argument that the Board of Appeal did not in any way explain or demonstrate how the word element ‘cash4life’ is descriptive of the services in question is based on a partial reading of the contested decision. After determining the meaning of the contested mark, the Board of Appeal found, in essence, that the services in question either could be provided in the context of gambling or games of chance and lotteries or included, inter alia, games of chance, online games of chance and services relating to games of chance. In particular, it stated, in paragraph 43 of the contested decision, that, in the event of the designation of games of chance using the word element ‘cash4life’, the relevant public would immediately understand, without further thought, that the games of chance involved a chance to win money for life. It added, in paragraph 44 of the contested decision, that the mere fact that the target public might imagine being able to win money for life in the event of participation in leisure services was sufficient on the ground that, with regard to those services, the word element ‘cash4life’ would communicate to the public the promise that the winners of the lottery or game of chance would obtain money for their entire life. First, it must be held that the reasoning set out in paragraphs 43 and 44 of the contested decision applies not only to the services in question in Class 41 but also, mutatis mutandis , to the services in question in Classes 35 and 42, since those services may be provided in the context of gambling or games of chance and lotteries, a fact which, moreover, the applicant does not dispute. Second, given that participation in gambling or games of chance and lotteries is motivated by, inter alia, the desire to win money, there is a clear link between winning money for life and the services designated by the contested mark where those services are provided in the context of gambling or games of chance and lotteries, with the result that the word element ‘cash4life’ is descriptive of those services. The applicant is therefore wrong to claim that the word element ‘cash4life’ has a vague and imperfect meaning in relation to the services in Class 41 and that it does not convey precise information or a specific meaning concerning those services or their characteristics. In any event, as EUIPO points out, the fact that no indication as to the nature or frequency of the winnings can be inferred from the contested mark is irrelevant. In accordance with the case-law, it is irrelevant whether a characteristic which describes a mark is commercially essential or ancillary, it being stated that a characteristic, as provided for in Article 7(1)(c) of Regulation No 207/2009, must nevertheless be objective and inherent to the nature of that product or service and intrinsic and permanent with regard to that product or service (see, to that effect, judgment of 7 May 2019, Fissler v EUIPO (vita) , T‑423/18, EU:T:2019:291 , paragraph 44 and the case-law cited). Furthermore, as has been pointed out in paragraph 20 above, a word sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned, which is the case here. As regards the applicant’s assertion that the word element ‘cash4life’ cannot be regarded as descriptive of any IT or technological service in Class 42, suffice it to note that, according to the case-law, the fact that a mark is descriptive as regards only some of the goods or services in a category for which the mark is registered does not preclude that mark from being declared invalid for that category of goods or services as a whole. In accordance with settled case-law, the finding that a mark has descriptive character applies not only to the goods or services for which it is directly descriptive, but also to the more general category to which those goods belong in the absence of a suitable restriction of the trade mark by the applicant (see, to that effect, judgment of 15 July 2015, Australian Gold v OHIM - Effect Management & Holding (HOT) , T‑611/13, EU:T:2015:492 , paragraph 44 and the case-law cited). It follows from the foregoing considerations that the applicant’s arguments which challenge the Board of Appeal’s finding relating to the descriptive character of the contested mark as regards the services in question must be rejected as unfounded. The first plea must therefore be rejected. The second plea: infringement of Article 7 (1)(b) of Regulation No 2 07/2009 The applicant criticises the Board of Appeal, in essence, for finding that, on the date on which the application for registration of the contested mark was filed, that mark was devoid of distinctive character with regard to the services in question. In that regard, it must be borne in mind that, as is apparent from Article 52(1)(a) of Regulation No 207/2009, it is sufficient that one of the absolute grounds for refusal set out in Article 7 of that regulation applies for the EU trade mark to be declared invalid. Consequently, since, as is apparent from paragraphs 15 to 44 above, on the date on which the application for registration of the contested mark was filed, that mark was descriptive within the meaning of Article 7(1)(c) of Regulation No 207/2009, it is not necessary, in the present case, to examine the merits of the applicant’s arguments concerning the assessment of the distinctive character of that mark. It follows that the applicant’s arguments seeking to show that the contested mark was distinctive must be rejected. The second plea must therefore be rejected, and the action 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 European Lotto and Betting Ltd to pay the costs. Spielmann Valančius Tóth Delivered in open court in Luxembourg on 21 December 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